An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

The Supreme Court issued an order on May 22, 2017, granting SAS Institute’s petition for a writ of certiorari to review the Federal Circuit’s judgment in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir.), reh’g en banc denied, 842 F.3d 1223 (Fed. Cir. 2016) (order).

According to its typical practice, the PTAB instituted an AIA trial on a subset of ComplementSoft’s patent claims that SAS challenged in an inter partes review petition. The PTAB eventually issued a final written decision canceling all but one of the claims in that subset. On appeal, SAS unsuccessfully attempted to persuade the Federal Circuit that 35 U.S.C. § 318(a) requires the PTAB to issue a final written decision on all challenged claims, not a mere subset of those claims. We previously discussed this case here. SAS’s petition presents the following question:

Does 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,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?

The patent owner, ComplementSoft, is no longer participating, and the government has intervened to defend the Federal Circuit’s judgment and the Patent Office’s actions. Accordingly, the case is now captioned SAS Institute Inc. v. Lee. The Court’s docket number for the case is 16-969, and its decision may be expected by early next year.