On May 22, the U.S. Supreme Court granted SAS Institute’s Petition for Cert seeking review of the Board’s practice of instituting review of some challenged claims but not others.  In the Federal Circuit’s decision on appeal, Judge Newman offered her dissent, opining that “partial review cannot be inferred from the statute or accommodated to its purpose.”  Federal Circuit later denied SAS’s petition for en banc review without opinion.  Judge Newman again dissented, opining that “[t]he practice, called ‘partial’ or ‘selective’ institution, leaves the unselected claims dangling lacking both finality and estoppel, preventing the expediency and economy and efficiency that motivated the America Invents Act.”

SAS presented the following question in its petition: 

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?

Under the current partial institution practice, if a petitioner challenges a claim and the Board determines the challenge was insufficient to support institution, no estoppel attaches for that claim.  A decision requiring the Board’s final written decision to determine the validity of all challenged claims would mean that, if review is instituted, the petitioner would be barred from later raising the same invalidity grounds for any challenged claim in court.  The Supreme Court’s review of this issue underscores the importance for petitioners to develop strong invalidity grounds for all challenged claims.