Patent Riffs and Links – Pre-argument Discussion on SAS Institute SCOTUS Case

While might be another PTAB case to be argued in front of the US Supreme Court on Monday, Nov. 27, 2017 with lots of buzz, SAS may have just as much impact with concepts of estoppel and Chevron deference bubbling up to the surface. Take a look:

SAS Institute v. Matal, Supreme Court No. 16-969 | NATLAWREVIEW
“What is the case about? Under current practice, the Board institutes IPR on a claim-by-claim and ground-by-ground basis, after considering the petition and any preliminary response from the patent owner. As a result, the Board may (and sometimes does) institute an IPR on a subset of the claims challenged in the petition. The conflict with § 318 arises because the Board issues a final written decision only on those claims for which review was instituted—i.e., sometimes on less than the number of claims originally challenged in the petition. According to the petitioner SAS, the Board’s practice cannot be squared with § 318.”

SAS Institute: Will the Supreme Court End the Partial Institution of IPRs? | PTABBLOG.LAW
Heart of SAS’s arguments: “SAS, however, argues that the distinction in language between Sections 314(a) and 318(a) can be explained simply by the fact that a patent owner may, post-petition, cancel claims under 35 U.S.C. § 316(d)(1)(A).12 Thus, ‘§ 318(a)’s reference to ‘any patent claim challenged by the petitioner’ makes sense as referring to all of the claims challenged in the petition under § 314(a), less any claim that has been cancelled by the patent owner, post-petition, under § 316(d)(1)(A).’13 Accordingly, since SAS has never abandoned its challenges to the claims the Board declined to institute, the company argues that the Board is still required under Section 318(a) to issue a final written decision with respect to those claims.14 Furthermore, SAS reasons, even if the PTO’s partial-institution regulation is an otherwise valid exercise of the Office’s authority under Section 316(a)(2) to promulgate regulations interpreting Section 314(a)—and is therefore entitled to Chevron deference—Section 318(a), on the other hand, is not open to interpretation. Therefore, the PTO cannot use its own regulation to justify disobeying Congress’s clear directive in Section 318(a) requiring ‘the Board’s final written decision [to] address all, not just some, of th[e] challenged claims.’15 According to SAS, ‘[w]hatever the wisdom of Chevron, its step two cannot be allowed such free rein as to allow the agency tasked with implementing the statute—here, the Patent and Trademark Office—to fundamentally rewrite the law’s procedures to serve its interests in convenience.’16″

Why SAS Institute Matters More Than Oil States | IPWATCHDOG
David Thibodeau: “That case involves 35 U.S.C. § 318(a), which requires PTAB to ‘issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.’ Despite the plain meaning of the statute, current PTAB practice is to only issue a final decision on some of the claims.
For example, if a post-grant petition only meets the ‘reasonably likely to succeed’ standard on some claims, the PTAB trial only goes forward on those claims and the PTAB does not make any formal rulings on the patentability of the other claims. This practice was seen as proper by the Court of Appeals for the Federal Circuit (CAFC) in SAS Institute and in their prior decision in Synopsis v. Mentor Graphics , to enable the Patent Office to ‘secure the just, speedy, and inexpensive resolution’ of post-grant proceedings. If the Supreme Court reverses the CAFC, the PTAB will be forced to address both the reasonable and unreasonable grounds in writing in every case.”

SAS Institute v. Lee: Partial Institution of Inter Partes Review | PATENTLYO
Links to the PTAB and CAFC decisions, too: “Although a somewhat sideline issue, it will likely have its biggest impact on estoppel resulting from AIA trials and, as a result, may also shift filing strategy.”

SAS Institute v. Matal | SUBSCRIPTLAW
With an infographic! “If the board just ignores certain claims, it’s unclear whether those claims will be considered as a failed challenge or as not challenged at all…Right now, SAS cannot appeal those claims because they were not actually decided on. Others who may want to challenge on the same grounds later do not know if the claims stand a chance; or whether they will be barred as having been heard before…Chevron Deference may be an issue in this case. Read about what Chevron Deference is in our bonus graphic!”

Predicting SAS Institute in Advance of SCOTUS Oral Arguments | IPWATCHDOG
Check the link for some predictions: “The United States Supreme Court will hear oral arguments in SAS Institute v. Matal on Monday, November 27, 2017. This case will give the Supreme Court the opportunity to declare whether the Patent Trial and Appeal Board must issue a written decision covering all claims challenged in an inter partes review proceeding. “