SAS Institute, Inc. v. Lee

Summarized by:

  • Court: U.S. Supreme Court Certiorari Granted
  • Area(s) of Law: Patents
  • Date Filed: May 22, 2017
  • Case #: No. 16-969
  • Judge(s)/Court Below: United States Court of Appeals for the Federal Circuit
  • Full Text Opinion

“Whether 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” requires that Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner.”

Petitioner is the owner of a data manipulation language, utilized by Respondent’s graphic user interface patent design, who brought an inter partes challenging their patent on sixteen different grounds. During the review, the Board only partly instituted the challenges brought by Petitioner. In their final, written decision, the Board: 1) determined that claims 1, 3, and 5-10 were unpatentable, 2) determined that claim 4 was patentable, and 3) failed mention the other uninstituted claims. Petitioner petition for a new hearing was denied and Petitioner and Respondent subsequently appealed to the United States Court of Appeals for the Federal Circuit. The Federal Circuit determined that the Board had acted properly by choosing to not mention the uninstituted claims in its final order. However the court also determined that claim 4 was wrongly decided and should be remanded so the claim could be judged consistent with its opinion. Petitioner then petitioned the United States Supreme Court, which granted certiorari. In its petition, Petitioner argues that: 1) 35 U.S.C. § 318(a) requires the Board’s final decision to include any claim challenged by Petitioner, 2) the Federal Circuit’s interpretation directly conflicts with the plain meaning of the statute, 3) the Federal Circuit’s interpretation is linguistically and structurally inconsistent, and 4) Chevron does not save the interpretation.       

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