PTAB: A written decision on “every claim challenged”

SAS Institute v. Lee (Supreme Court 2017)

New petition for writ of certiorari from SAS asks the following question:

Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?

The basic issue – under the statute, can the PTO (the PTAB acting as the Director’s delegate) institute inter partes review to a subset of the challenged claims?  Or, does the requirement for a “final written decision as to every claim challenged” require that the Board grant or deny the petitions as a whole.

[sas-petition-for-certiorari][SCOTUS Docket 16-969]

52 thoughts on “PTAB: A written decision on “every claim challenged”

  1. 35 USC315 provides:

    (e) Estoppel.—
    (1)Proceedings before the office.—
    The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
    (2)Civil actions and other proceedings.—
    The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

    So estoppel only attached to claim subject to a final written decision, (like 1-3) and not the claims challenged in the petition (like 1-10). Wherein PTO said yes to 1-3 but no as to 4-10). Is that what case law is saying as well?

  2. It seems the statute should have used “all” or “every” if that was what was intended (or just “the claims challenged by the petitioner”). It seems “any” in this context could be interpreted different ways, including “one or more.”

    1. If it said your mechanic shall repair any malfunctioning component of your car, would you say that could be interpreted to mean she could pick one to fix and leave the others untouched?

      1. If a law firm partner told an associate to draft an infringement claim chart for any claim in the patent, would the associate get in trouble for drafting a claim chart only for independent claim 1?

        1. I know of one law firm that [not surprisingly] got in trouble with a client for an opinion that simply ignored one of the claims of the subject patent.

  3. I give this zero chance of moving forward. First, the section of the patent act at issue plainly relates only to those claims for which the PTAB has granted the request for IPR. Second, if Congress wanted to require petitions to be an “all or none” affair (i.e., either all challenged claims are deemed likely to be unpatentable, or the petition fails in its entirety) then it would have said so. I’m not aware of any indications to the contrary.

    If there’s some arbitrary or unreasonable parsing between claims by the PTAB (accepting some but unreasonably denying others), then an APA suit would seem to be the appropriate way to address that, as Paul Morgan suggests downthread.

    1. MM, I respectfully disagree.

      The PTAB has authority institute trial and to render judgment if any challenged claim meets the threshold. Thus the institution decision only has to look at the best case presented by the petition and only has to decide that issue. If that best case is sufficient to meet the threshold, i.e. that there is a “reasonable likelihood,” etc., the petition may be instituted with respect to all challenged claims. Given that the final written decision calls for the final written decision to address all challenged claims, the trial itself, and the final written decision, must be with respect to all challenged claims.

      I think it is manifest that the PTAB itself got everything screwed up and backwards. The point of the final decision with respect to any challenged claim is to protect the patentee from further harassment from this petitioner in trial with respect to the challenged claims. They get one shot and only one shot. They cannot keep filing petitions which is what the lack of final decision with respect to any challenged claim allows.

      1. The point of the final decision with respect to any challenged claim is to protect the patentee from further harassment from this petitioner in trial with respect to the challenged claims.

        I agree with this, and I agree that parsing the estoppel provisions as finely as the courts and PTAB are doing right now defeats the statutory purpose of the estoppel. It seems to me, however, that the solution to this is not to say that the PTAB must opine on claims where the challenger failed to convince the PTAB to institute.

        Rather, the solution is just to apply the estoppel as a broad brush. The challenger gets one chance to invalidate, whether in court or in front of the PTAB. If they take their chance and lose in front of the PTAB, they are done. That is to say, if the challenger petitions on Claims 1–10, and the PTAB institutes on Claims 1–3, then the challenger just has to live with the idea that there will be no further 102/103 challenges against Claims 4–10.

        Perhaps fewer challengers will present in front of the PTAB if those are the rules. That just is as it is. In any event, this system would prevent the serial harassment of patentees that you and I both favor, but without taking up valuable PTAB resources to no purpose.

        1. Greg, I agree with Malcolm. The trial has to be with respect to all challenged claims otherwise the petitioner is denied a full and fair opportunity before he is bound.

          1. Agreed. The petitioner could raise a serious due process challenge if held estopped to ever challenge a claim which the petitioner was denied the opportunity to even try to prove in the IPR trial was invalid.

            P.S. Note that this cert petition is not an IPR institution issue, and is not covered by the IPR institution statute. [Even if it was, Cuozo does not preclude due process challenges.]

            1. Due processes challenges…?

              Like, you mean Constitutional Due Process…?

              LOL – for all the running away you have done in the past as to such challenges, the thought that you are bringing it up here is rather comical.

              Thanks for the Friday laugh, Paul.

      2. if the challenger petitions on Claims 1–10, and the PTAB institutes on Claims 1–3, then the challenger just has to live with the idea that there will be no further 102/103 challenges against Claims 4–10

        I think you’d have to be able to appeal that non-institution decision on the merits before it could have estoppel effect in court.

        1. think you’d have to be able to appeal that non-institution decision on the merits

          You haven’t been paying attention, have you?

          1. I interpreted his comment to mean that if a non-institution decision were to have an estoppel effect against the petitioner (as Mr. DeLassus proposes), the statute ought to be changed to permit appeals of non-institution decisions.

            1. Thanks Pilgrim, as you can see by the below comments (and the lack of either contrition about the oversight, not any mention that the existing law should be changed to allow the view that you ascribe to), your view is simply far too generous and was not what the person (the sAme person that claims to be “Oh, I’ve been paying about as close attention as anybody possibly can.” was saying.

              If this were a “one-off” I might have been inclined to have given the benefit of a doubt, but this is not like that.

          2. You haven’t been paying attention, have you?

            Oh, I’ve been paying about as close attention as anybody possibly can.

            If you’d care to make a comment with an ounce of substance, go right ahead.

            1. …you want to appeal a institution decision – on its own – “on its merits”…

              And you say that you have been paying attention…?

              The lack of an ounce of substance comment – quite clearly, your oh so typical meme of Accuse Others Of Thant Which Malcolm Does…

              1. you say that you have been paying attention

                I say that because it’s true.

                Also true: you’re an buff 00n. P lease crawl back inside Gene’s c0 l0n like a good little gerbil. He misses you.

                1. In the mean time, please remind yourself of the ability (or lack thereof) to appeal the institution decision on the merits, as you have now twice in a row suggested (all the while, “paying about as close attention as anybody possibly can“).

                2. Keep digging, “anon”!

                  You’re a very serious person. As far as you know, nobody can see that you failed English Reading Comprehension 101. So just keep peddling your b a l0ney as if everything in your tiny imagination were true.

                  It’s very effective! Yup.

          3. I actually think MM raises a good point.

            He’s not saying that you can appeal a non-institution decision on the merits. He is saying you should be able to appeal a non-institution decision on at least those claims that were not instituted which would be given estoppel effect.

            Were it otherwise, a decision not to institute would result in an estoppel effect, which would seem to be an unintended consequence.

            Greg’s solution of applying the estoppel as a broad brush doesn’t work. Now, if your whole IPR is not instituted, you cannot appeal, but you are also not estopped from refining and re-raising your issues in District Court, another IPR, or another post-grant action.

            The PTAB’s decision not to institute certain claims would infect your rights.

            So, without the ability to appeal non-institution of whatever claims the PTAB deems unfit for IPR, the estoppel effect must be individually applied.

            In Greg’s scenario, let’s say PTAB doesn’t take up Claims 4-10 because of 112 issues. The petitioner wins and claims 1-3 are invalidated under 103. The patent owner gets past the 112 issues in Court (because PTAB can use 112 as an arbitrary reason not to review certain claims). Now the petitioner cannot argue in Court that claims 4-10 are obvious because she is estopped from doing so? If claim 4 recites “the diddly of claim 1, wherein the snogort is tinted” and that is obvious, then petitioner is screwed.

            1. TLG: He’s not saying that you can appeal a non-institution decision on the merits. He is saying you should be able to appeal a non-institution decision on at least those claims that were not instituted which would be given estoppel effect.

              Were it otherwise, a decision not to institute would result in an estoppel effect, which would seem to be an unintended consequence.

              Exactly. Although I’m not sure that this consequence (unacceptable, IMHO) was “unintended”. You’d have to ask Greg about that.

      3. Don’t forget that the one-year infringement suit bar will also prevent serial IPR filings. This a reason why petitioners might also want a rule requiring all challenged claims to be addressed in the final written decision. If the PTAB does not institute on all challenged claims, or if the FWD does not address all challenged claims, then some claims that are the subject of an infringement suit might survive without being addressed, and the petitioner might be out of time to file a new IPR to address those claims.

  4. Would seem between Chevron (while it lives) and noting each claim by number as “representative” or some similar treatment, they could slide by.

    I’d guess the odds of cert on this are rather low at the moment until Gorsuch is settled in and things shake out in Congress on the administrative law front…

    1. I beg to differ. The odds are rather high given that the Director and the Federal Circuit are both obviously wrong. The issue is very important to the patent system as a whole.

  5. The impractical aspect of this cert petition’s asserted statutory interpretation is this: what about IPR’s in which the PTAB finds some of the petitioned claims unquestionably ambiguous, or having application-amended claim terms that clearly lacked any 112 support in the patent or elsewhere? An IPR lacks jurisdiction to render any such decisions.
    N.B. this does not require any application of the Chevron Doctrine.

    1. P.S. if a PTAB refusal to act on a petitioned claim while acting on others is arbitrary and unreasonable, would not an APA suit be the appropriate recourse?

      1. The PTAB could refuse to institute on all claims because at least one claim could not be properly construed.

        This is a ridiculous outcome, no? “All 25 of these claims look like obvious junk but we can’t do anything about any of them because one of the claims contains an undefined term that doesn’t exist in the English language.”

    2. what about IPR’s in which the PTAB finds some of the petitioned claims unquestionably ambiguous, or having application-amended claim terms that clearly lacked any 112 support in the patent or elsewhere? An IPR lacks jurisdiction to render any such decisions.

      This issue with indefinite claims being “excused” from IPRs is a problem that needs fixing. If Congress wants to take a stab at it, they should simultaneously expand the scope of IPRs to include eligibility challenges which they should have done in the first place (query: is the PTO also barred from applying the printed matter doctrine? because that’s an eligibility analysis).

      Given that the claims are being re-examined, however, it seems that pretty much every 112 issue should be addressable by BRI. Let the patentee try to define the term narrowly, if they can. Otherwise they get the hammer.

      1. MM, your proposals to expand the scope of IPR issues, even if it had any political support, would defeat the intent to keep IPRs and reexaminations simple and fast by limiting them to [far less disputable] patent and publication contents issues. That also limits them to issues which the PTO has long time expertise in dealing with.

        1. Except that eligibility and 102/103 are tied very closely together and in many cases it’s far easier and faster to deal with the ineligibility of a claim than the obviousness of the claim (e.g., where the alleged non-obviousness resides entirely and admittedly in the ineligible inventive concept).

          Also: eligibility analysis works just fine in the CBM context. There’s no reason to expect it wouldn’t work just fine in the vanilla IPR context.

          As a matter of public policy, there is virtually no opposition to this expansion and support would be precisely as widespread as the number of people who could be informed about the possibility. The only opposition comes from a tiny tiny tiny tiny handful of extremely loudmouthed and entitled wealthy guys who want to turn the clock back to State Street.

        2. [T]o expand the scope of IPR issues… would defeat the intent to keep IPRs and reexaminations simple and fast…

          That cannot be right. PGRs are expected to be just as simple and fast as IPRs, but PGRs are allowed to consider 101 and 112 issues. Meanwhile the PTO handles 101 and 112 just as routinely as it handles 102 and 103, so I cannot understand what the allusion to “long time expertise” is meant to convey.

          Really, what this comes down to is that Congress has created a system in which you get 9 months to speak now or forever hold your peace about 101/112, but unlimited time to raise new issues in 102/103. This is not arbitrary. It is very plausible that new art might be discovered after nine months, while it is far less likely that a 112(b) issue should appear at month ten that was not apparent at month 1. Still, I think that a 9 month cut-off is too short. I would expand the cut-off for filing PGRs to ~3 years post-grant.

          I have no strong opinion as to whether PGRs should be available to pre-AIA patents, although I agree that it would be a very heavy political lift if one were to try to do so.

          1. Greg and MM, in the pre-AIA AIPLA discussions about PGRs, with their virtually unlimited scope of costly invalidity challenges [and estoppels], but only being available for the first few months after the patent issues, the intent was to provide an equivalent of an “opposition system.” Unlike IPRs, PGRs are NOT typically a defense proceeding for to an existing lawsuit that must be conducted faster than the lawsuit gets to trial in order to be effective. Not surprisingly, especially with their high fees, the number of PGRs has been minuscule. Why would someone normally want to research and present every possible invalidity defense, and pay all the costs, with such a high estoppel risk, for a patent so new that no one has even yet been threatened by it?
            Yes, some CBM’s are being used for 101 [Alice-Mayo et al] invalidity challenges, among the relatively few parties who can validly use CBMs. But considering all the confusion over the scope of 101 claim invalidity, there would be great opposition to extending it to IPRs, which will not sunset in just a few years like CBMs.

            1. considering all the confusion over the scope of 101 claim invalidity,

              There isn’t anything about 101 that is more “confusing” than 103. The more decisions are made, the less “confusion” there will be over all. There is always going to be “confusion” at the margins but there are tons of claims being asserted that aren’t anywhere near the margins.

              Nobody expects 100% accuracy from IPRs. Mistakes will be made! But the PTAB is perfectly capable of dealing with most ineligible claims and they should be allowed to do that.

            2. Paul, I fully agree PGR’s make very little sense in a system where the patents are brand-new and whether they are valuable, or a threat, is completely uncertain. The European opposition system is premised, I believe, in the very, very high presumption that a patent is valid so that one cannot even challenge validity in an infringement trial. That forces companies to pay attention to patents as they issue to make sure that they do not cover too much or the prior art. This clarifies rights so that companies can reliably invest in areas outside of the patent.

              But with United States system, particularly with broadening reissues and with continuations? None of this makes sense.

              1. The European opposition system is premised, I believe, in the very, very high presumption that a patent is valid so that one cannot even challenge validity in an infringement trial.

                Maybe MaxDrei can confirm that for us (seeing how much he detests the US Clear and Convincing standard, my money is that you are not correct Ned)

              2. Ned, good point about attacking claims in a PGR – while broadening reissues are available and divisionals or continuations may still be pending. Also, re the EPO, I do not think EPO or other oppositions have estoppel consequences.
                MM, I doubt if many patent attorneys will agree with you that Alice 101 “abstract” claims [which no court yet even really tries to define] are not more subjective and unpredictable than 103 issues vis a vis published texts for which there is a statutory test and tons of case law, including KSR [which did NOT waffle on the subject of 103]

                1. The term “abstract” is in the dictionary. It’s not that difficult to understand.

                  The reason there is so much case law on 103 is that 103 has been around for a while. Still, the results are highly lawyer dependent, particularly in the predictable arts (bona fide unexpected and valuable results usually seal the deal in the unpredictable arts).

                  I feel pretty comfortable that there isn’t a software claim on the planet that I couldn’t take to the Supreme Court with a high chance of success at showing ineligibility. The fact that other lawyers fail is not my problem. It’s their problem.

                2. You do realize of course that the Supreme Court expressly did not use the dictionary reference for that word.

                  So it simply does not matter in the context of the patent law discussion whether or not the term is in the dictionary.

                  Maybe, just maybe, you should stop trying to obfuscate on such a well known point….

                3. there isn’t a software claim on the planet that I couldn’t take to the Supreme Court with a high chance of success at showing ineligibility

                  Your internet tough guy routine as well as your “software per se is not eligible feelings are noted.

                4. 101 and 103 have been around for the exact same amount of time.

                  Just in case you were wondering about such a factual matter.

  6. Well, if the Court rules that PTAB can’t hand wave it way through a decision, that would imply that the courts shouldn’t either. I don’t think the Court is gonna imply THAT.

  7. Interesting, but I’m not sure that this would change much. The institution decision, when denying some of the claims, usually provides a reason (even if it’s a simple “Petitioner’s evidence was insufficient to demonstrate a reasonable likelihood of success on these claims”). So, if the Final Decision is required to deal with ALL the claims, this portion can be copy/pasted into the Final Decision. No real change in outcome.

    1. Except the estoppel provisions (for what they are worth under current case law) would attach to all of the challenged claims, vs. now where estoppel only appears to apply to those claims in the Final Decision.

      1. So that’s a reason that Patent Owner would want all claims to be included in the trial phase. (Although, I bet most would prefer to have the certainty of the claims not being invalidated as opposed to the estoppel effect in practice.)

        But why is Petitioner appealing here? It seems like any win would be a Pyrrhic victory and ultimately not that good. If the Board didn’t buy your arguments after the Perition, do you really think that is going to be changed by the Reply? And do you really want to waste space trying to do so when you only get 5,600 words.

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