SAS Institute v. Iancu SAS appeals arguing § 318 requires deciding patentability of all claims challenged ComlimentSoft sues SAS for patent infringement SAS files IPR on all claims of the patent Board institutes review on only some claims

Is Partial Institution Allowed? “…the [Board] shall issue a final written decision with respect to the patentability of any claim challenged by the petitioner…” 35 USC § 318(a)

Partial Institutions NOT Allowed 5-4 decision holding that PTAB must decide all claim challenges when instituting an IPR Majority by Gorsuch (author of Oil States dissent) Dissents by Ginsburg and Breyer

All Claims Must Be Addressed § 314(a) &(b) whether to institute, not what § 316(a)(8) PO response is to petition, not director institution § 318(a) “commands” all claim be addressed in Final Written Decision But…not to be misconstrued as saying patents are not property subject to due process or the takings clause “Petitioner's contentions, not Director’s discretion, define scope of the litigation”

Effects of SAS Decision Shorter Institution Decisions focusing on at least one claim Longer denials covering all grounds Simpler decision to stay litigation when all claims instituted Unclear scope of estoppel

Competing Interpretations Patent owner will interpret estoppel broadly Defendant will interpret estoppel narrowly -Under Shaw and HP, no estoppel if PTAB declines

Will review “all challenges raised in the petition” PTAB’s Response Will review “all challenges raised in the petition” Panel may address one claim/ground or all Panel may state grounds unlikely to prevail

PTAB’s Guidance For pending partial institutions Supplemented Institution decision Additional briefing, discovery, time allowed Withdraw claims/grounds if jointly agree Decide procedural process case-by-case Request rehearing for non-instituted challenges No further action taken on completed IPR

Example Supplement

Example Institution Decision Yet...

Impact on Follow-on Petitions If institution denied… May allow for a few meritorious claims (J. Ginsburg warning) If institution granted… Follow-on likely denied under General Plastic factors

General Plastic factors Previous petition directed to same claims Petitioner knew/should have known of prior art Petitioner already received Preliminary Response or Instituting Decision Delay from discovery of new art to filing of follow-on petition Explanation for delay between petitions PTAB resource Need to issue final decision within 1 year of institution

Cuozzo Speed Techs., LLC v. Lee (2016) Impact on IPR Appeals Cuozzo Speed Techs., LLC v. Lee (2016) Decision to/not to institute is “final and unappealable.” Gorsuch SAS opinion expresses concerned with possible agency “shenanigans” 46% IPRs appeals end in summary affirmance

Scope of patent that can be reviewed in CBM Follow-On S.Ct. Cases Google v. Unwired Planet Scope of patent that can be reviewed in CBM C-Cation Tech. v. Arris Group Constitutionality of one-line Federal Circuit orders (“Rule 36” Opinions)

SAS Institute v. Complementsoft IPR2013-00226

SAS Institute v. Complementsoft IPR2013-00226 2. The integrated development environment as recited in claim 1, where the graphical representations of flows depict data flows. 4. The integrated development environment as recited in claim 1, where the graphical representations of data flows are expandable and collapsible.

SAS Institute v. Complementsoft IPR2013-00226 Claim 2 – Not instituted Claim 4 – Instituted

SAS Institute v. Complementsoft IPR2013-00226 Final Written Decision Data Flow = “icons depicting data processing steps and arrows to depict the movement of data through source code.”

SAS Institute v. Complementsoft IPR2013-00226

SAS Institute v. Complementsoft IPR2013-00226