1. 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

2. 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)

3. 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

4. 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”

5. 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

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

7. 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

8. 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

9. Example Supplement

10. Example Institution Decision
Yet...

11. 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

12. 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

13. 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

14. 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)

15. SAS Institute v. Complementsoft IPR2013-00226

16. 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.

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

18. 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.”

19. SAS Institute v. Complementsoft IPR2013-00226

20. SAS Institute v. Complementsoft IPR2013-00226