Partial decisions not allowed in Inter Partes Review – SAS Institute Inc. v. Iancu

A patent is a government granted monopoly on an invention for a limited period of time, issued to the invention of an invention. An inventor can apply for a patent in the United States by filing a patent application with the United States Patent and Trademark Office. For the patent application to be granted by the United States Patent and Trademark Office the inventor must demonstrate that the invention new, useful and nonobvious. If the United States Patent and Trademark Office grants the patent application, the inventor is granted the exclusive right to use make sell and import the machine into the United States. If someone other than the inventor exercises one of the exclusive rights granted by a patent, this is known as patent infringement. A patent owner can request and injunction from a court to stop patent infringement and can sue to recover monetary damages for patent infringement which has occurred.

When an accusation of patent infringement is made the person accused of infringement has two primary defenses. The first defense available is that the patent was not actually infringed because the allegedly infringing activity does not involve each of the claims of a patent. The second defense is that infringement did not occur because the patent is invalid.

The America Invents Act introduced inter partes review, which is a method to get a patent declared invalid. Inter partes review is a trial proceeding conducted at the Patent Trial and Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

The America Invents Act is a law that enabled the United States Patent and Trademark Office to promulgate regulations on how the Patent Trial and Appeal Board should conduct an inter partes review. One of the regulations allowed the Director of the United States Patent and Trademark Office to institute an inter partes review on less than all of the patent claims challenged. In SAS Institute Inc. v. Iancu, 16-969 (U.S. 2017) the United States Supreme Court held that the United States Patent and Trademark Office must review all challenged patent claims. A partial review is not allowed.

Briefly, SAS Institute Inc. v. Iancu is as follows: SAS requested an inter partes review of 16 claims of a patent owned by ComplementSoft. The Director of the United States Patent and Trademark Office, Iancu, instituted a review on less than 16 patent claims and the Patent Trial and Appeal Board only issued a decision on the patent claims on which the Director had instituted a review. SAS appealed the Patent Trial and Appeal Board’s decision, arguing that all the patent claims challenged should be reviewed by the Patent Trial and Appeal Board. The United States Court of Appeals for the Federal Circuit sided with the United States Patent and Trademark Office and SAS appealed that decision to the United States Supreme Court.

The United States Supreme Court found for SAS. The court held that when the United States Patent and Trademark Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged. The plain text of the statute which creates inter partes review contains the terms, shall and any, which makes the review of all the challenged patent claims compulsory.

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