SAS Institute Inc. v. Iancu
Headline: Court limits Patent Office power and requires it to decide every claim a challenger raises in inter partes review, impacting patent challengers, patent owners, and agency claim-selection practices.
Holding:
- Requires the Patent Office to decide every claim a challenger raises in a review.
- Prevents agency reliance on a regulation allowing selective, claim-by-claim institution.
- Keeps judicial review under the Administrative Procedure Act for agency overreach.
Summary
Background
A technology company (SAS Institute) asked the Patent Office to cancel all 16 claims of a software patent owned by another company (ComplementSoft). The agency, relying on a regulation that allowed “partial institution,” opened review for only some claims and declined others. The Patent Trial and Appeal Board issued a final decision on the claims it accepted but left the denied claims unaddressed. The Federal Circuit rejected SAS’s argument that the Board must decide every claim in the petition, and the Supreme Court agreed to review the question.
Reasoning
The Court framed the issue simply: must the agency resolve every claim a challenger includes in its petition? Relying on the statutory phrase that the Board “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” (35 U.S.C. §318(a)), the majority read “shall” as mandatory and “any” to mean every challenged claim. The opinion contrasted the inter partes review rules with other statutes Congress could have used, noted the petition-centered structure of the process, and declined to infer a separate, atextual “partial institution” power. The Court also said the agency’s regulation could not override the clear statutory command and that judicial review remains available under the Administrative Procedure Act when the agency exceeds its statutory bounds.
Real world impact
The decision requires the Patent Office to address all claims challengers put before it in an instituted inter partes review, not only a subset chosen by the Director. That outcome will affect challengers, patent owners, and Board procedures, and it intensifies the debate about efficiency because the agency argued partial institution saved resources while opponents warned it could split disputes across venues. The Court reversed the Federal Circuit and remanded for further proceedings consistent with this ruling.
Dissents or concurrances
Justices Ginsburg and Breyer dissented. Justice Ginsburg argued the Board could reasonably deny broad petitions and ask for narrower ones, while Justice Breyer would have treated the statute as ambiguous and upheld the agency’s regulation as a reasonable interpretation under Chevron deference.
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