SAS Institute v. Ianca

Summarized by:

  • Court: United States Supreme Court
  • Area(s) of Law: Patents
  • Date Filed: April 24, 2018
  • Case #: 16–969
  • Judge(s)/Court Below: Gorsuch, J., delivered the opinion of the Court, in which Roberts, C. J., and Kennedy, Thomas, and Alito, JJ., joined. Ginsburg, J., filed a dissenting opinion, in which Breyer, Sotomayor, and Kagan, JJ., joined. Breyer, J., filed a dissenting opinion, in which Ginsburg and Sotomayor, JJ., joined, and in which Kagan, J., joined except as to Part III–A. 
  • Full Text Opinion

In an inter partes review pursuant to 35 U.S.C. §§311-319, the Patent Office must decide the patentability of every claim challenged by the petitioner.

Respondent is the Director of the United States Patent and Trademark Office. Petitioner, a software company, sought Respondent’s inter partes review of a competitor’s software patent, pursuant to 35 U. S. C. §§311–319. Respondent instituted review on some – but not all – of the patent claims. Respondent relied on 37 CFR § 42.108(a), which recognizes the Director’s power to institute such partial review at its discretion. The lower court found for Respondent, and rejected Petitioner’s argument that 35 U.S.C. §318(a) required Respondent to decide every claim Petitioner challenged. The Supreme Court granted certiorari to determine whether Respondent must indeed resolve all of the claims in the case or whether Respondent may limit its review to only some of the claims. Reasoning that the language of 35 U.S.C. § 318(a) imposed a nondiscretionary duty on the Respondent to review “any patent claim challenged by the petitioner” the Court determined that the word any means that Respondent must address every claim. Additionally, the Court construed the language of the statue to require the Petitioner’s petition to guide the litigation, not Respondent’s discretion. Thus, the Court held that Petitioner is entitled to a final written decision on all the claims it challenged. REVERSED and REMANDED.

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