On the same day the Supreme Court issued its much-anticipated decision in TC Heartland v. Kraft, the Court also granted a petition for writ of certiorari in SAS Institute Inc. v. Lee. The question presented in that petition is whether the PTAB must issue a final written decision as to every claim challenged by the petitioner in an IPR petition or only some of the challenged claims.

SAS, the IPR petitioner, presents the question as one of statutory interpretation. The relevant statute states that the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . . .” 35 U.S.C. § 318(a). The threshold for instituting an IPR is whether there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). SAS argues that every claim in the original petition should be addressed in the final written decision if this threshold is met.

The USPTO argues that the PTAB should not be required to address non-instituted claims in final written decisions. The Federal Circuit agreed, finding a distinction between the threshold decision to institute and the final written decision. More specifically, the Federal Circuit noted that the final written decision statutory subsection describes “claims challenged by the petitioner,” whereas the institution decision statutory subsection describes “claims challenged in the petition.” According to the Federal Circuit, the differing language of these two subsections implies a distinction and does not foreclose a claim-by-claim approach.

If the PTAB must issue a final written decision on each claim regardless of the institution decision, those decisions will be appealable. If non-instituted claims continue are not addressed in final written decisions, arguments about those claims must be heard in district court.