Addressing whether it is proper for the Patent Trial and Appeal Board (PTAB or Board) to institute inter partes review (IPR) for only some (not all) claims challenged in an IPR petition, the US Court of Appeals for the Federal Circuit denied en banc review of an earlier decision allowing such practice. SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J, dissenting).

ComplementSoft brought suit against SAS for infringement of a patent relating to an integrated development environment. SAS then filed a request for IPR of all 16 claims of the patent. The PTAB instituted an IPR of some of the challenged claims and eventually issued a final written decision for those claims. SAS appealed the PTAB’s final written decision, arguing that the decision was deficient for failing to address the patentability of all claims challenged in the IPR petition. In a June 2016 decision (IP Update, Vol. 19, No. 7), the Federal Circuit found this argument foreclosed by its Synopsis decision (IP Update, Vol. 19, No. 3) and concluded that the statute only requires the PTAB to address the claims “as to which review was granted.” SAS filed a petition for rehearing and thereafter a petition for rehearing en banc, both of which were denied per curiam.

Judge Newman dissented here, as she did in Synopsis. In dissent, Newman again argued that the PTAB’s practice of deciding the validity of only some of the claims challenged in an IPR petition “foils the legislative purpose of resolving certain patent issues in an administrative forum, newly available to litigants previously confined to the district court.” Newman considered both the statutory language and the legislative record to conclude that the practice of instituting IPR based on some, but not all, claims of a patent is contrary to the provisions of the America Invents Act (AIA). According to Newman, partial institution is improper because it “leaves the unselected claims dangling” without finality or estoppel. A party may therefore be obliged to additionally litigate the claims not reviewed in the IPR. Further, estoppel cannot arise as to claims that the PTAB declines to review. Therefore, Newman argued that partial institution in an IPR proceeding negates the purpose of the AIA—that any patent claim challenged by the petitioner and any new claim added during the proceeding could be fully and finally decided.