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Supreme Court Considers Whether USPTO Can Limit Scope of Inter Partes Review

Posted Thursday, April 12, 2018 by Kyle Straughan

While Oil States is drawing most of the attention, the Supreme Court’s docket also has another potentially impactful post-grant patent case on it. Enter SAS Institute v. Matal where the Supreme Court is considering whether the USPTO, in deciding whether to institute an inter partes review after request by a party, can instead choose to only rule on some of the claims in question, referred to colloquially as a partial review. It is understandable then that this case would be somewhat overshadowed by Oil States Energy Services v. Greene’s Energy Group (discussed previously at: http://ruttlermills.com/Blog/Supreme-Court-Considers-Constitutio), given that one result could render SAS Institute’s decision moot. Still, it raises the interesting question of whether an administrative agency given the authority to choose to do something is also intrinsically granted the authority to choose to do that thing in part.

It should be noted that last year in Cuozzo Speed Technologies, LLC v. Lee the court held that the America Invents Act grants the Patent Trial and Appeal Board unreviewable discretion over the decision of whether to institute review. The statute merely bars the board from initiating a proceeding unless it determines that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking that into consideration, Justice Sotomayor questioned SAS Institute’s counsel, the side opposing partial decisions, on whether this was merely an attempt to get around the Cuozzo ruling by forcing the board to issue decisions regarding the unreviewed claims. Justice Kagan noted that the power already appears intrinsic to the board because it is not required to review cancelled claims, which she noted the statute does not differentiate between.

On the other side, Justices Alito and Roberts stuck to the strict language of the statute which they emphasized refers to claims “challenged by the petitioner,” which thus would logically imply that the board must rule on some if not all of the claims. Justice Gorsuch questioned how the discretion granted on the standards for showing sufficient grounds for instituting a review also includes the authority of whether to grant review to individual claims.

While the fate of this case rests in part on the result of Oil States, it would have a distinct impact on the process and procedure of the USPTO’s decisions on whether to institute inter partes review. Challengers knowing that the USPTO will address the merits of all claims if a review is instituted may feel more confident in challenging, while if the board can pick which claims it reviews challengers may be more reticent because the claims they are concerned about may not end up reviewed.

Supreme Court Considers Whether USPTO Can Limit Scope of Inter Partes Review ›› Ruttler Mills PLLC