In SAS Institute Inc., v. Iancu et al. (584 U.S. ___ (2018)), the U.S. Supreme Court addressed whether the Patent Trial and Appeals Board (PTAB) is required to decide the patentability of every claim challenged by a petitioner when it issues a final decision in an Inter Partes Review (IPR) under the America Invents Act. Petitioner SAS had challenged all 16 claims of ComplementSoft’s software patent in a petition for IPR. The PTAB instituted review on some of the claims, but denied review of other challenged claims. Later, the PTAB issued a final decision that only addressed the patentability of the claims for which it had instituted review. On appeal, the U.S. Court of Appeals for the Federal Circuit rejected SAS’s argument that § 318(a) required the final decision to address the patentability of every claim challenged by the petitioner, and that was not the first time that the Federal Circuit had rejected such an argument. Nonetheless, the Supreme Court disagreed. Basing its decision on the plain text of § 318(a), the Supreme Court held that a final IPR decision must decide the patentability of all the claims challenged by a petitioner. The Supreme Court indicated the statute allows the petitioner, not the PTAB, to define the scope of the IPR, and the USPTO’s policy reasons to follow a different process should be addressed to Congress.

The USPTO issued guidance on IPR proceedings before the PTAB in view of the SAS Institute decision. In the guidance, the USPTO indicates that, going forward, if the PTAB institutes a trial, it will do so on all challenges raised by the petitioner. Pending trials in which the PTAB has already instituted trial on all of the challenges raised in the petition will continue in the normal course. For pending trials in which the PTAB has instituted trial on only some of the challenges raised, the PTAB may supplement the institution decision by issuing an order to institute on all challenges raised. In these cases, further actions to manage trial proceedings may be taken to allow all parties a full and fair opportunity to be heard. These actions include extending due dates, including statutory deadlines, and adding briefing, discovery, and/or oral arguments.

One effect of SAS Institute is that petitioners will have to be more careful selecting which claims to challenge in reviews. Before SAS Institute, the board was likely to leave inadequate claim challenges out of a review proceeding. Now, inadequate challenges are likely to result in affirmation of a claim’s validity — theoretically strengthening the value of the patent at issue.