## Facts

- SAS Institute, Inc. petitioned for inter partes review (IPR) under 35 U.S.C. § 311 challenging all 16 claims of a software patent owned by ComplementSoft, LLC.
- Acting through the Patent Trial and Appeal Board (PTAB), the Patent and Trademark Office instituted IPR on only a subset of the challenged claims, relying on an agency regulation permitting institution “on all or some” challenged claims.
- In its final written decision, the PTAB addressed only the instituted subset and found most of those instituted claims unpatentable, leaving the non-instituted claims untouched.
- SAS argued that the IPR statute required the PTAB to decide the patentability of every claim it challenged in its petition once IPR was instituted.

## Issues

1. Whether 35 U.S.C. § 318(a) requires the PTAB, after instituting IPR, to issue a final written decision on the patentability of all claims challenged in the petition.
2. Whether the PTO may lawfully use “partial institution” to limit IPR and the final written decision to fewer than all petition-challenged claims.

## Decision

- The Supreme Court reversed the Federal Circuit in a 5–4 decision and remanded.
- The Court held that when the PTO institutes IPR, the PTAB must decide the patentability of all claims the petitioner challenged in the petition.
- The Court concluded that the statute does not authorize partial institution and that the agency regulation permitting partial institution could not override the statute.
- The Court declined to defer to the PTO’s interpretation because it found the statutory command clear.

## Legal Principles

- Under 35 U.S.C. § 318(a), if IPR is instituted and not dismissed, the PTAB “shall” issue a final written decision addressing the patentability of “any patent claim challenged by the petitioner,” which the Court read to require a decision on every petition-challenged claim.
- The Director’s discretion under § 314(a) concerns whether to institute IPR at all; it does not include authority to institute review on only some claims challenged in the petition.
- Because the statute was unambiguous under traditional tools of statutory construction, the PTO was not entitled to Chevron deference for a contrary regulatory interpretation.

## Conclusion

The Court held that IPR is petition-centered: once the PTO institutes review, the PTAB must issue a final written decision on the patentability of all claims challenged in the petition, eliminating the agency’s partial-institution practice.


SAS Inst., Inc. v. Iancu, 584 U.S. 357 (2018)