{"id":2024,"date":"2018-04-24T12:04:35","date_gmt":"2018-04-24T16:04:35","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2024"},"modified":"2018-04-24T12:05:24","modified_gmt":"2018-04-24T16:05:24","slug":"inter-partes-review-if-were-going-to-have-them-then-its-all-or-nothing","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2024","title":{"rendered":"Inter Partes Review — If We’re Going to Have Them Then It’s All or Nothing"},"content":{"rendered":"

In SAS Institute Inc. v. Iancu, the Supreme Court held that the when USPTO institutes inter partes<\/em> review, it must all the grounds in the Petition, and cannot choose to limit its review to only some of the grounds.<\/p>\n

The opinion was written by Justice Gorsuch, who if he had his druthers in Oils States (issued the same day) would have thrown out inter partes<\/em> review altogether.\u00a0 SAS petitioned for review of ComplementSoft’s software patent, but the USPTO, relying upon 37 CFR \u00a742.108(a) only instituted inter partes<\/em> review as to some of the challenged claims.\u00a0 SAS unsuccessfully argued before the Federal Circuit that 35 USC\u00a0\u00a7318(a), required the Board to decide the patentability of every claim.<\/p>\n

Justice Gorsuch found that 35 USC\u00a0\u00a7318(a) “provides a ready answer.”\u00a0 He points out that \u00a7318(a)\u00a0directs that if an inter partes review is instituted\u00a0and not dismissed under this chapter, the Board “shall issue a final written decision with respect to the
\npatentability of any<\/em> patent claim challenged by the petitioner. . ..”\u00a0 He said “[t]his directive is\u00a0both mandatory and comprehensive.”\u00a0 After a brief analysis of the grammar, he concludes:<\/p>\n

when \u00a7318(a) says the Board\u2019s final written\u00a0decision \u201cshall\u201d resolve the patentability of \u201cany patent\u00a0claim challenged by the petitioner,\u201d it means the Board\u00a0must address every claim the petitioner has challenged.<\/p><\/blockquote>\n

Judge Gorsuch said it would seem to be an easy case,<\/p>\n

Where a\u00a0statute\u2019s language carries a plain meaning, the duty of an\u00a0administrative agency is to follow its commands as written,\u00a0not to supplant those commands with others it may\u00a0prefer.<\/p><\/blockquote>\n

The USPTO Director’s argued that while every claim instituted must be decided, not every claim has to be instituted.\u00a0 However, Justice Gorsuch dismissed this\u00a0 because \u201cpartial institution\u201d power appears\u00a0nowhere in the text of \u00a7318, or anywhere else in the statute, and\u00a0what can be found in the statutory\u00a0text and context strongly counsels against the Director\u2019s argument.<\/p>\n

Justice Gorsuch examined the statutory scheme for inter partes review, noting that it it a petitioner-driven process, not a PTO drive process.\u00a0 Moreover while the Director is given discretion whether to institute,\u00a0nothing suggests the\u00a0Director enjoys a license to depart from the petition and\u00a0institute a different inter partes review of his own design.\u00a0 While \u00a7314 gives the Director discretion to institute if there is a reasonable likelihood the petitioner will prevail\u00a0on at least one of the claims challenged in the petition, Judge Gorsuch explained that rather than contemplate\u00a0claim-by-claim institution, this language anticipates\u00a0a regime where a reasonable prospect of success on a\u00a0single claim justifies review of all.<\/p>\n

Justice Gorsuch also pointed that that\u00a0\u00a7318’s requirement that the Final Written Decision address “any patent claim challenged by the petitioner.” and rejected that any grammatical discrepancy between\u00a0\u00a7314’s reference to claims found in the petition, and\u00a0\u00a7318’s reference to claims challenged by the petitioner, makes any difference.<\/p>\n

Justice Gorsuch also rejected the Director’s argument for efficiency, finding each side offers plausible reasons why its approach might\u00a0make for the more efficient policy, but ultimately pointing out that\u00a0policy arguments are\u00a0properly addressed to Congress, not the Supreme Court.<\/p>\n

Justice Gorsuch also rejected the Director’s argument for Chevron<\/em> deference, which if still valid, only applies where the Court is unable to discern’s the Congress’ meaning.\u00a0 Justice Gorsuch had no uncertainty about the statutes’ “unmistakable commands.”<\/p>\n

The final issue raised by the Director was whether partial institution was even reviewable, given the unappealability of institution decisions.\u00a0 He pointed out that after\u00a0Cuozzo<\/em>, if a party\u00a0believes the Patent Office has engaged in \u201cshenanigans\u201d\u00a0by exceeding its statutory bounds, judicial review remains\u00a0available consistent with the Administrative Procedure\u00a0Act, which directs courts to set aside agency action \u201cnot in
\naccordance with law\u201d or \u201cin excess of statutory jurisdiction,\u00a0authority, or limitations.\u201d\u00a0 Justice Gorsuch said that was precisely the sort of question before the court.<\/p>\n

Because everything in the statute before it confirmed\u00a0that SAS is entitled to a final written decision addressing\u00a0all of the claims it has challenged, and nothing suggested the Court lacks the power to do so, the Supreme Court reversed the\u00a0judgment of the Federal\u00a0Circuit, and remanded the case for further\u00a0proceedings consistent with this opinion.<\/p>\n

Overall a banner day for the Federal Circuit — its a rare day that they bat .500 at\u00a01 First St NE.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In SAS Institute Inc. v. Iancu, the Supreme Court held that the when USPTO institutes inter partes review, it must all the grounds in the Petition, and cannot choose to limit its review to only some of the grounds. The … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2024","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2024","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2024"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2024\/revisions"}],"predecessor-version":[{"id":2026,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2024\/revisions\/2026"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2024"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2024"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2024"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}