by Dennis Crouch
In SAS Institute, Inc. v. Iancu (2018) [16-969_f2qg], the Supreme Court issued a split 5-4 decision holding that:
When the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.
Although quite narrow, the decision reversed the PTO’s prior interpretation of the IPR statutes and will likely impact IPR strategies both for petitioners and patentees.
Any Patent Claim Challenged: Private parties may challenge an issued patent by filing an inter partes review (IPR) petition. The petition must specify which claims are being challenged, and explain why the challenge is likely to succeed. Under the statutory provisions, the USPTO Director must then decide whether or not to grant the petition and institute a trial before the Patent Trial and Appeal Board (PTAB or Board). At the conclusion of the trial, the Section 318(a) of the Patent Act indicates that 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 IPR].” 35 U.S.C. §318(a). The Supreme Court decision here is tightly focused on statutory interpretation — holding that the statute requires that the PTO decide the patentability of all challenged claims (that are not dismissed). The PTO had interpreted the statute to allow for partial-institution-decisions.
In the case before the court, SAS had challenged all 16 claims of the ComplementSoft U.S. Patent No. 7,110,936. However, rather than instituting on all claims, the PTO only instituted review of 9 claims. Writing for the majority, Justice Gorsuch explained:
The Director (in truth the Board acting on the Director’s behalf) . . . instituted review on only some (claims 1 and 3–10) and denied review on the rest.
Once a final judgment was issued by the PTAB (finding eight of the nine unpatentable), SAS appealed — arguing that the statute required decisions on the remaining five claims.
Now, SAS will get its opportunity. For SAS, the potential to challenge these additional claims may help the company avoid having to fight those claims in court. In addition, the all-challenged-claims rule may also serve as a bargaining chip for the patent challenger in any settlement hearings.
Although the patent-challenger may benefit in this particular case, I expect that the overall benefit from the decision will help patentees. In particular, most non-instituted claims are ones that would likely have been confirmed as patentable. That decision from the PTAB will lend strength to patentee claims in court and also raise estoppel problems down the road for patent challengers.
Simplifying petitions decisions: The decision here should simplify the petition institution decisions. Following SAS, the question should simply be whether there is at least 1 challenged claim where the petitioner has presented a “reasonable likelihood” of prevailing on the merits. 35 U.S.C. 314(a).
The majority did not spend time on policy determinations — instead simply stating that the PTO should take its case to Congress.
The Director’s policy argument—that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others—is properly addressed to Congress, not this Court.
It will be interesting to see whether new PTO Director Iancu will go to congress on this point – I expect not, unless there are clear efficiency concerns. At this point, the Office only provided the following statement:
The USPTO is carefully considering the Supreme Court’s decisions and determining their impact on various proceedings at the PTAB.
Deference: An important element of the decision for administrative law folks is the majority statements regarding Chevron deference:
[W]hether Chevron should remain is a question we may leave for another day. Even under Chevron, we owe an agency’s interpretation of the law no deference unless, after “employing traditional tools of statutory construction,” we find ourselves unable to discern Congress’s meaning.
Here, the majority found no ambiguity — and thus gave no deference to the PTO. I expect that the 5-4 split between the justices in this case largely comes down this particular question — when should courts give deference to legal interpretations made by expert administrative agencies? Supreme Court precedent on the issue continues to be messy, although there remains some thought that Congress will solve the problem by actually spelling out whether deference applies when it writes its statutes.
On a final issue, the PTO argued that the question before the court was effectively a challenge to the PTO petition decision — something made expressly unappealable by the Patent Act §314(d). “Even if the statute forbids his partial institution practice, the Director suggests we lack the power to say so.” However, the majority disagreed with the PTO Director — holding that the case here involves “exactly the sort” of “shenanigans” that serve as exceptions to the Cuozzo rule.
Writing in dissent, Justice Ginsberg, joined by the other three most liberal justices, calls Gorsuch’s reading “wooden” and lacking of any true understanding or indication of congressional intent: “Court’s opinion offers no persuasive answer to that question, and no cause to believe Congress wanted the Board to spend its time so uselessly.”
Coming back to Deference: A more thorough dissent by Justice Breyer explains his position that the statute offers enough of a gap in certainty to allow the PTO to fill-in its interpretation and be given deference for that gap-filling.
Because I believe there is such a gap and because the Patent Office’s interpretation of the ambiguous phrase is reasonable, I would conclude that the Patent Office’s interpretation is lawful.
(Breyer in dissent.) Overall, this is a set of nicely written decisions that serve as an example in the patent law field of the broader and ongoing administrative law debate over the role of administrative agencies in interpreting their governing statutes.