The Supreme Court has granted certiorari in another inter partes review dispute, this time in SAS Institute v. Lee. The Court will decide whether the PTAB may properly institute partial review (i.e., institute review on less than all claims in a challenged patent). The PTAB’s rules—particularly 37 C.F.R. § 42.108(a)—allow the Board to “authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.” However, the statute—particularly 35 U.S.C. § 318(a)—requires that, if review is instituted, then the “Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner….” The question for the Supreme Court is whether the Board’s partial review option is allowed by this statutory provision.
The Court’s decision will impact the application of IPR estoppel, because estoppel only attaches after review is instituted, and—under the current law—does not apply to claims for which review is not instituted. If the PTAB is required to issue a final written decision for all claims after review is instituted, then estoppel would affect more claims than under the current state of the law.