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The Supreme Court on November 27, 2017 heard oral argument on whether the Patent Trial and Appeal Board (PTAB) is required by 35 U.S.C. 318(a) to address every patent claim challenged in a petition for inter partes review (IPR).  SAS Institute, Inc. v. Lee, U.S., 16-969, oral argument 11/27/2017.  
 

Petitioner’s Argument

  
Appearing for Petitioner SAS, Gregory Castanias of Jones Day pointed out that Section 318(a) of the Patent Act states that, if an IPR is instituted, the PTAB “shall” issue a final written decision on “any patent claim challenged by the petitioner.” Justice Sotomayor pointed out that no IPR was instituted with respect to some of the claims in the petition, and asked Castanias to clarify what relief was being sought. 
 
Castanias replied that a final written decision that addresses all of the claims challenged in the petition, as required by Section 318(a), permits an appeal on non-instituted claims as well as instituted claims. So you’re really looking for a way around the ruling in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), that decisions to institute are non-appealable, Justice Sotomayor observed. She pointed out that there would be no record in the proceeding for an appeal of non-instituted claims. Castanias answered that there is a record for review if the petition is considered, to which Justice Sotomayor replied that the petition contentions on non-instituted claims would not include any response from the other side. You seem to be arguing that there should be no partial institution and that you should be able to litigate all claims in the petition, she said.  That’s correct, Castanias answered.
 
Justice Kagan observed that the Board has broad discretion at the institution stage, and that there appears to be no reason to prohibit partial institution. Justice Breyer agreed that the statutory language supports the SAS position, but confessed difficulty imagining how such a system would work in view of other provisions of the statute. Castanias contended that any ambiguity in applying the statute comes from the PTO regulation on this matter, which introduces partial institution without statutory support and fails to address the requirements of Section 318(a) as to “challenged” claims.
  

Government Argument

 
Assistant to the Solicitor General Jonathan Bond contended that the SAS position fails because the claims it seeks to have included in the final written decision were never part of the instituted proceeding.   Justice Kennedy asked if there is anything to prevent the Board from telling the petitioner it will decline to review unless the petition is tailored to drop certain claims. Bond answered that the Board could do that, but said that would simply introduce a cumbersome process to reach the same result in this case. 
 
Justice Alito asked where the ambiguity is in Section 318(a), and Bond pointed to the words “challenged by the Petitioner” and to the word “any.”  He suggested that it could mean challenged in the IPR or challenged elsewhere. Although Congress may not have foreseen this situation, it clearly left it to the agency to fill in the gaps, he added. Justice Sotomayor noted that Section 314 refers to claims challenged “in the petition” rather than “by the petitioner.”
 
Justice Alito asked if the Board could establish a streamlined procedure for claims that it considers to have no likelihood of success. Bond pointed out that there is no decision on the merits at the institution stage, but rather determining if the issue is worth the time to investigate the merits. He also pointed out that non-institution may also be based on petition arguments that go beyond the scope of the proceedings, such as arguments based on Sections 101 or 112.