SAS Institute Inc. v. Iancu
138 S. Ct. 1348
| SCOTUS | 2018Background
- Inter partes review (IPR) is an administrative adversarial process created by Congress allowing private parties to challenge issued patent claims before the Patent Office (35 U.S.C. §§311–319).
- A petitioner files a petition identifying "each claim challenged" and supporting grounds and evidence; the patent owner may file a preliminary response. 35 U.S.C. §§311–313.
- The Director (via the Patent Trial and Appeal Board) decides whether to institute review "pursuant to the petition" if there is a "reasonable likelihood" the petitioner would prevail on at least one challenged claim. 35 U.S.C. §314(a)–(b).
- SAS petitioned to cancel all 16 claims of ComplementSoft's patent; the Director instituted review on some claims only (relying on a PTO regulation authorizing "partial institution") and denied review as to the rest. The Board’s final decision addressed only instituted claims.
- SAS appealed, arguing 35 U.S.C. §318(a) requires the Board to issue a final written decision on every claim the petitioner challenged; the Federal Circuit rejected that argument. The Supreme Court granted certiorari.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the PTAB must issue a final written decision addressing every patent claim challenged in the petition under 35 U.S.C. §318(a) | SAS: §318(a)’s "shall" plus "any patent claim challenged by the petitioner" means the Board must decide every claim the petitioner challenged in its petition. | Director: The Director may institute review on only some challenged claims ("partial institution"); §314(a) requires claim-by-claim evaluation, and §314(d) makes institution decisions final and unreviewable. | Held for SAS: §318(a) is mandatory and comprehensive — the Board must decide the patentability of every claim challenged by the petitioner; the Director lacks a statutory "partial institution" power. |
| Whether statutory text and structure permit the Director to limit instituted review to a subset of petitioned claims | SAS: Statutory scheme makes the petition the centerpiece; language like "pursuant to the petition" and other provisions show Congress meant petition to define the proceeding. | Director: §314(a)’s "at least 1" language and practical efficiency justify claim-by-claim institution. | Held for SAS: Context and comparison with related statutes (e.g., ex parte reexamination) show Congress knew how to grant claim-by-claim authority but did not do so for IPR; the Director’s regulatory "partial institution" has no basis in the statute. |
| Whether Chevron deference or §314(d) preclude judicial review of the Director’s partial-institution practice | SAS: Even under Chevron, the statute is unambiguous; §314(d) does not bar review of claims that exceed statutory limits. | Director: If statute ambiguous, agency interpretation is entitled to Chevron deference; §314(d) makes institution determinations final and nonappealable. | Held for SAS: Traditional tools of statutory construction yield no ambiguity warranting deference; §314(d) does not bar review where the agency exceeds statutory authority. |
Key Cases Cited
- Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984) (framework for judicial deference to reasonable agency interpretations of ambiguous statutes)
- Lexecon Inc. v. Milberg Weiss Bershad Hynes & Lerach, 523 U.S. 26 (1998) (use of "shall" imposes nondiscretionary duty)
- United States v. Gonzales, 520 U.S. 1 (1997) (interpretation of "any" as expansive)
- United States v. Ron Pair Enterprises, Inc., 489 U.S. 235 (1989) (courts should not go beyond plain statutory language when scheme is coherent)
- Barnhart v. Walton, 535 U.S. 212 (2002) (statutory complexity and agency expertise justify delegating detail to agency)
- United States v. Detroit Timber & Lumber Co., 200 U.S. 321 (1906) (syllabus does not constitute part of Court's opinion)