On April 24, 2018, the US Supreme Court issued its opinion in SAS Institute Inc. v. Iancu (available here).
The Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of all the claims the petitioner has challenged.” The Supreme Court reasoned that:
Section 314(a)’s requirement that the Director find “a reasonable likelihood” that the petitioner will prevail on “at least 1 of the claims challenged in the petition” suggests, if anything, a regime where a reasonable prospect of success on a single claim justifies review of them all. Again, if Congress had wanted to adopt the Director’s claim-by-claim approach, it knew how to do so. See §304. Nor does it follow that, because §314(a) invests the Director with discretion on the question whether to institute review, it also invests him with discretion regarding what claims that review will encompass. The rest of the statute confirms, too, that the petitioner’s petition, not the Director’s discretion, should guide the life of the litigation.
The Director made a policy argument that the power of partial institution is “efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others.” The Court rejected this as an argument for Congress to hear, not the Court, because the partial institution power is not mentioned anywhere in the statute.
Justices Ginsburg, Breyer, Sotomayor, and Kagan dissented from the majority opinion. In her dissent, Justice Ginsburg called the Court’s decision a “wooden reading of 35 U.S.C. §318(a)” and stated that there was “no cause to believe Congress wanted the Board to spend its time so uselessly.”