PTAB / Estoppel / PTAB Procedures and Rules / Supreme Court

Supreme Court rejects PTAB “partial institution” practice in IPR proceedings

By Deakin T. Lauer Published April 25, 2018

Yesterday, the Supreme Court issued its decision in SAS Institute Inc. v. Iancu, rejecting the Patent Office’s practice of instituting IPR proceedings for some, but not all, claims challenged in a petition. In a 5-4 decision, the Supreme Court held that when the Patent Office institutes an IPR, it must decide the patentability of all claims challenged.

The majority decision (written by Gorsuch and joined by Roberts, Kennedy, Thomas, and Alito) focused on the plain text of §318(a). That section addresses “Final Written Decisions” and states:

If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).

This language, according to the majority, carries the plain meaning that the “Board must address every claim the petitioner has challenged.” The majority rather summarily dismissed the policy arguments in favor of partial institution as well as the dissenting opinion’s argument that the statutes are ambiguous, thereby leaving a gap that the Patent Office had implicit delegated authority to fill under Chevron. (A not-so subtle battle about the future of the 1984 Chevron decision is found in both the majority and dissenting opinions.)

This decision will likely have significant implications on petitioner estoppel under §315(e). Currently, under the Federal Circuit’s decision in Shaw, grounds raised in an IPR petition that are not addressed in the written decision are not subject to estoppel. Thus, partial institutions had the effect of sheltering some challenged claims–presumably, the ones most likely to be upheld–from estoppel. After SAS Institute, once an IPR is instituted, all challenged claims will be addressed in a final written decision. It’s worth noting, however, that SAS Institute did not address the Patent Office’s practice of not instituting trial on redundant grounds. Such redundant grounds, if not part of the institution decision, may still be subject to Shaw’s safe harbor from estoppel.