Justices to Determine Scope of Patent-Appeal Decisions

(CN) – The Supreme Court agreed Monday to decide whether federal law allows the Patent Trial and Appeal Board to issue written decisions covering only certain patent claims it decided to review, instead of all claims challenged in a review petition.

SAS Institute is an analytics software developer based in North Carolina. It filed an inter partes review, or IPR, petition with the Patent Trial and Appeal Board to review the patentability of a patent held by ComplementSoft LLC, after that company sued SAS for patent infringement in 2012.

IPR allows a third party to ask the board to reexamine claims in an already issued patent and to cancel claims it finds to be unpatentable “in light of prior art.”

The patent at issue involves an “integrated development environment for generating and maintaining source code,” according to court records.

SAS argued that all 16 of the patent’s claims were unpatentable as anticipated or obvious under federal patent law.

The Patent Trial and Appeal Board reviewed some, but not all, of ComplementSoft’s patent claims, and ultimately found all but one reviewed claim unpatentable in view of the prior art.

SAS appealed, arguing the board misconstrued a claim term and erred by not addressing in its final written decision patent claims that SAS petitioned against but that the board did not take up as part of its review.

The Federal Circuit, citing its 2016 decision in Synopsis v. Mentor Graphics, ruled 2-1 last summer that the board did not need to address claims it did not review for its written decision.

Synopsys presented the same question that SAS raises here: Must a final written decision by the Board address every patent claim challenged in an IPR petition?” the ruling states. “The petitioner argued, as does SAS, that the text of the final written decision statutory subsection, 35 U.S.C. § 318(a), compels the Board to address every petition-challenged claim. We found, however, ‘no statutory requirement that the Board’s final decision address every claim raised in a petition for inter partes review. Section 318(a) only requires the Board to address claims as to which review was granted.’”

Unhappy with that decision, SAS filed a petition for a writ of certiorari with the U.S. Supreme Court in January, asking the nation’s highest court to weigh in.

The software developer argued that the Federal Circuit’s ruling goes against the America Invents Act.

“The Federal Circuit’s contrary reading of the statute not only violates the canons of statutory construction; it also guts the America Invents Act of its intended effect—it ‘negates the AIA’s purpose of providing an alternative and efficient forum for resolving patent validity issues’…and throws a wrench into the works of a carefully crafted statutory regime,” the petition states, citing the dissent from the Federal Circuit’s ruling. “Certiorari should be granted so that the America Invents Act may be restored to its proper, intended scope.”

On Monday, the Supreme Court agreed to hear the case and decide whether the Patent Trial and Appeal Board must consider all patent claims challenged in an IPR petition or whether it can issue a final written decision covering only certain claims that it decided to review.

Per its custom, the high court did not comment on its decision to take up the case.

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