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IP Alert: Federal Circuit Confirms PTAB Need Not Address All Claims in IPR Petition

June 10, 2016

Today, in SAS Institute, Inc. v. ComplementSoft, LLC, the Court of Appeals for the Federal Circuit again rejected a petitioner’s assertion that the Patent Trial and Appeal Board (PTAB) must address in its final written decision all of the claims raised by a challenger in a petition for inter partes review. On the heels of a case decided earlier this year that reached the same result, Synopsys, Inc. v. Mentor Graphics Corp., today’s decision appears to cement this rule. The panel decision was 2–1, with Judge Newman dissenting.

The challenger based its position on the text of 35 U.S.C § 318(a), which provides that “the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).” While seemingly clear, another section, 35 U.S.C § 314, specifies that the Director of the USPTO may initiate an inter partes review where “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This language appears to give the PTAB discretion to hear some, but not all, of the challenged claims. Accordingly, today’s Federal Circuit panel determined that the PTAB’s claim-by-claim approach is permissible.


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