Law School Case Brief
SAS Inst., Inc. v. Iancu (2018) - 138 S. Ct. 1348 (2018)
35 U.S.C.S. § 318(a) directs that if an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner. This directive is both mandatory and comprehensive. The word "shall" generally imposes a nondiscretionary duty. And the word "any" naturally carries an expansive meaning. When used with a singular noun in affirmative contexts, the word "any" ordinarily refers to a member of a particular group or class without distinction or limitation and in this way implies every member of the class or group. So when § 318(a) says the Board’s final written decision shall resolve the patentability of any patent claim challenged by the petitioner, it means the Board must address every claim the petitioner has challenged.
Petitioner SAS Institute Inc. sought review of respondent ComplementSoft’s software patent, alleging that all 16 of the patent's claims were unpatentable. The Director of the Patent Office concluded that SAS was likely to succeed with respect to at least one of the claims and that an inter partes review was therefore warranted. However, relying on a Patent Office regulation recognizing a power of “partial institution,” 37 CFR §42.108(a), the Director instituted review on some of the claims and denied review on the rest. The Board's final decision addressed only the claims on which the Director had instituted review. On appeal, the Federal Circuit rejected SAS's argument that §318(a) required the Board to decide the patentability of every claim challenged in the petition.
Did §318(a) require the Board to decide the patentability of every claim challenged in the petition?
According to the Court, when the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged. The plain text of §318(a) resolves this case: its directive is both mandatory and comprehensive. The word “shall” generally imposed a nondiscretionary duty, and the word “any” ordinarily implied every member of a group. Thus, §318(a) meant that the Board must address every claim the petitioner has challenged. The Director's “partial institution” power appeared nowhere in the statutory text. And both text and context strongly counsel against inferring such a power. Thus, the Court reversed the judgment of the lower court.
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