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IP Alert: Supreme Court to Consider PTAB’s IPR Policy in SAS Institute v. Lee

May 22, 2017

Today the U.S. Supreme Court granted a writ of certiorari in SAS Institute Inc. v. Lee, agreeing to consider whether the American Invents Act (AIA) allows the Patent Trial and Appeal Board (PTAB) to review only some rather than all patent claims in an inter partes review.

SAS Institute filed the petition in January, arguing that the Federal Circuit’s ruling that the PTAB need not address every claim that SAS had challenged when requesting a review of ComplementSoft LLC’s software patent was in contradiction of the AIA’s purpose and federal law. SAS points to the provision in Section 318(a) of the Patent Act stating that if a post-grant review is instituted, the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added” during the proceeding.

The Court will consider the following question:

Whether, in a case in which the PTO agrees to review the patentability of only a subset of the claims in a patent, the Board may address in its final written decision only the patentability of those claims the agency agreed to review.

Fitch Even attorneys are monitoring the SAS case and will report on the Court’s decision in a future alert.

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