SAS Institute v. Lee
From Conservapedia
In SAS Institute v. Lee, No. 16-969, the U.S. Supreme Court granted the petition for certiorari in 2017 to consider the following question presented:
- Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?
In a 5-4 decision rendered by Justice Neil Gorsuch, the U.S. Supreme Court held that PTAB must address in writing its decision as to the patentability of every patent claim challenged:
| “ | A few years ago Congress created “inter partes review.” The new procedure allows private parties to challenge previously issued patent claims in an adversarial process before the Patent Office that mimics civil litigation. Recently, the Court upheld the inter partes review statute against a constitutional challenge. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 200 L. Ed. 2d 671, 2018 U.S. LEXIS 2630, ante, p. ___. Now we take up a question concerning the statute’s operation. [1] When the Patent Office initiates an inter partes review, must it resolve all of the claims in the case, or may it choose to limit its review to only some of them? The statute, we find, supplies a clear answer: the Patent Office must “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.” 35 U. S. C. §318(a) (emphasis added). In this context, as in so many others, “any” means “every.” The agency cannot curate the claims at issue but must decide them all. | ” |
SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1352-53 (2018).
