Patents—Inter Partes Review

SAS Institute Inc. v. Lee, No. 16-96

The Leahy-Smith America Invents Act permits third parties to ask the U.S. Patent and Trademark Office to reexamine claims in a patent that has already been issued—a process called “inter partes review.”  Today, the Supreme Court agreed to decide whether, in conducting such a review, the Patent Trial and Appeal Board must “issue a final written decision as to every claim challenged by the petitioner,” or whether it may “issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner.”  In the proceedings below, SAS petitioned for inter partes review of 16 claims held by ComplementSoft.  The Board reviewed only four of the claims and issued a written decision as to those four.  The Federal Circuit held that this partial written decision was permissible.