July 2017

By: Sheri L. Gordon

On May 22, 2017, the U.S. Supreme Court granted certiorari in SAS Institute Inc. v. Lee, Docket No. 16-969, to address whether 35 U.S.C. § 318(a) requires the Patent Trial and Appeal Board in an inter partes review to issue a final written decision as to every claim challenged by the petitioner, or whether Section 318(a) allows the PTAB to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner.

In the underlying Federal Circuit decision, the panel majority held that the PTAB can issue a final written decision with respect to patentability of only some of the patent claims challenged by a petitioner. See SAS Institute Inc. v. Complementsoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016). SAS’s request for rehearing and rehearing en banc was denied, paving the way for its petition for writ of certiorari.