SAS Institute Inc. v. Lee: Challenging Partial Institution

The Supreme court has relisted SAS Institute Inc. v. Lee, 16-969 – an important step in the progress toward grant of certiorari.  The inter partes review case presents the following question:

Whether 35 U.S.C. § 318(a) … requires [the] Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows 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 U.S. Court of Appeals for the Federal Circuit held.

The basic setup here is that SAS argues that the PTO cannot partially institute IPR proceedings since the statute requires that PTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”

Although the Department of Justice has sided with the PTO’s approach here, in a prior filing the DOJ argued that the PTO erred in “picking and choosing some but not all of the challenged claims in its Decision.” See Department of Justice v. Discovery Patents, LLC, Case IPR2016-01041 (Patent Trial & Appeal Bd., Nov. 29, 2016).

The outcome of a rule-change here  is unclear – while the patent challenger (SAS) is petitioner here.  Patentees may prefer the all-or-nothing approach that would hopefully result in final judgments confirming patentability as well as the resulting estoppel.


11 thoughts on “SAS Institute Inc. v. Lee: Challenging Partial Institution

  1. 3

    As what can be presented as a rather straightforward issue of statutory interpretation, this would seem to potentially have a better chance for a cert grant than many of the other, universally unsuccessful, cert attacks on IPR procedures?
    If cert is granted here it will have a significant effect on IPR petitions. Making decisions as to which claims to challenge [given IPR page limits, etc.] far more critical. Especially for D.C.s that do not enforce the clear intent of the elimination of ambiguous FRCP Form 18 style complaints with no indication of which claims and which products are allegedly infringed.

    1. 3.1

      many of the other…

      Is that an implicit jab at the Constitutional questions that you yourself refuse to even discuss on these boards, Paul?

      … attack on IPR procedures

      Slight vested interest there, Paul? Afraid to lose your top cheerleading job?

      1. 3.1.1

        As you know perfectly well I have no “vested interest” in any patent law issues. I do object to confusing lay readers with purely personal constitutional law wistful speculations about overruling entire patent statutes [for which there is no direct modern judicial support*] and endless non-substantive ad hominems.

        *If there ever is any, Dennis will be covering it objectively.


          Your sainthood is misaligned (hiding, no doubt behind your pom-poms).

          Kissing @$$ does not help you – at all, as we both know that Prof. Crouch is not an objective observer here, and fully carries his own biases.

          As to any Constitutionality issue, your snideness is only matched by your cowardice. Perhaps, try engaging in the discussions instead of commenting from the sidelines.

  2. 2

    As I have observed before, trial can be instituted if the Director finds the petition sufficient for any claim. The institution decision may only need to address that one claim and no others, leaving the rest for trial and final decision.

    One can see the PTO implementing the procedure the way it did so as to frontload the process into the institution decision. But that way, the final decision does not cover all the challenged claims, which may leave the petitioner exposed to non cancelled claims; and the estoppel in favor of the patent owner is obviously somewhat curtailed. Either way, litigation regarding the unaddressed claims must go forward, which is contrary to the reason for IPRs in the first place.

  3. 1

    This is a test to see if everything I say goes to moderation of if it was just in other threads.

    1. 1.1

      I have to wonder if the editorial controls reach some type of “desired narrative” level and then act to cease all further attempts at dialogue.

      1. 1.1.1

        …or perhaps some type of “not enough pizza for the guys down at the coffee shop” buffer limit is reached….


    2. 1.2

      …I also wonder if the “email feeds” are a factor in the cludge.

      It appears that some posts never “make it” but are seen by certain people, and it also appears that replies back and forth are released at the same time (which would only be possible if posts are being ‘published’ in a non-systematic and individualized manner).

    3. 1.3

      All kidding aside, I am left wondering just how deeply the narrative is being controlled through the editorial controls.

      Dialogue is being severely truncated, and a read of that dialogue reflects p00rly. If that is the “desired format,” it might be easier to simply not provide any nesting mechanism, limit posts to one post per entity per thread, and stop pretending that the “ecosystem” is concerned with any sense of development through interactions (go ahead and emphasize the monologues, since the controls are not hampering them and ARE hampering the dialogues).

    4. 1.4


      I wanted to provide an answer to your post on that other moderated (narrative controlled) thread.

      You asked:

      Do all comments have to have a legal cogent basis?
      Can none just have a basis in silly snarky tangents?

      I answered:

      anon Your comment is awaiting moderation.
      May 18, 2017 at 3:37 pm

      The obvious answer is that all kinds of comments DO have ONLY a basis in “silly snarky tangents.”

      How do such comments move a dialogue along?

      What objective place do such comments that are of that nature – and only seek to denigrate people that feel differently than Malcolm – have in a meaningful dialogue?

      This is a forum for not only legal discussion, but legal discussion of a particular nature: patent law.

      Comments as you would classify certainly CAN exist. But of what good are they?

      Then consider the source and realize that such classification applies to far more than 90% of what Malcolm posts – in the ENTIRETY of the individual posts.

      It is one thing to have an edge. It is one thing to be able to use cutting wit along with points of cogent legal basis. It is altogether different though the 11 years of
      that Malcolm specializes in.

      Can comments just have a basis in silly snarky tangents?


      But please recognize blight for what it is.

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