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SAS Institute win in Supreme Court is a game-changer for PTAB cases

April 2018

Jones Day represented SAS Institute Inc. in its recent 5-4 win before the U.S. Supreme Court, which will fundamentally transform the way that patents are litigated before the Patent Trial and Appeal Board of the U.S. Patent Office.

In 2011, Congress passed the America Invents Act, which contained controversial provisions allowing issued patents to be re-evaluated for patentability in adversarial proceedings to take place within the Patent Office itself. These "inter partes reviews" (and their cousins under the statute, "post-grant reviews" and "covered business method reviews") require a petitioner to identify the claims of a patent that should be reconsidered by the Patent Trial and Appeal Board, and on what grounds the claims' patentability should be reevaluated. The Director of the Patent Office then has discretion whether—or not—to institute inter partes review, but if the Director does institute such review, then the Board must issue a "final written decision with respect to the patentability of any claim challenged by the petitioner."

After the Act was passed, the Patent Office promulgated a regulation purporting to allow the Director, acting through the Board, to "partially" institute inter partes review on only some of the claims challenged by the petitioner, and the Board was therefore deciding only some of the claims challenged by the petitioner.

SAS Institute brought an inter partes review petition against all 16 claims of a patent owned by a company that had sued SAS in federal district court, and the Director (again, acting through the Board) decided to institute inter partes review on only nine of those 16 claims. SAS argued before the Board, and before the U.S. Court of Appeals for the Federal Circuit, that the statute compelled the Board to issue a final written decision on all of the claims it had challenged, not just a subset selected by the Director. The Board and the Federal Circuit disagreed with SAS and held that the statute, and the Patent Office's promulgated regulation, allowed for such partial institutions and partial decisions.

SAS petitioned the Supreme Court to review the Federal Circuit's decision, and the Court granted certiorari on May 22, 2017. The Court heard oral argument on November 30, 2017, and, on April 24, 2018, issued an opinion agreeing with SAS and reversing the Federal Circuit. The Court's opinion was authored by Justice Gorsuch, and it concluded that SAS was correct: "The agency cannot curate the claims at issue but must decide them all."

SAS Institute was represented by a cross-office, cross-practice Jones Day team.

SAS Institute Inc. v. Iancu, No. 16-969 (U.S. S. Ct.); ComplementSoft, LLC v. SAS Institute Inc., No. 12-cv-7372 (N.D. Ill.) (Judge Gilbert); IPR2013-00226 (PTAB); SAS Institute Inc. v. Lee, No. 16-969 (U.S.)

For additional information about this matter, please contact: Gregory A. Castanias, David B. Cochran, John A. Marlott

Client(s): SAS Institute Inc.