This case has been decided. See how it turned out!
SAS Institute challenged a patent using the inter partes review process.
SAS included 16 claims against the patent. The review board did not address all of SAS’s claims. It only issued a decision on some of them.
On November 27, 2017, SAS will argue to the Supreme Court that the law requires the board to address all of its claims.
Why does it matter if the board addresses all claims?
Besides that SAS would like a chance at invalidating the aspects of the patent that the board did not address, there is another argument.
If the board just ignores certain claims, it’s unclear whether those claims will be considered as a failed challenge or as not challenged at all.
Right now, SAS cannot appeal those claims because they were not actually decided on. Others who may want to challenge on the same grounds later do not know if the claims stand a chance; or whether they will be barred as having been heard before.
Chevron Deference
Chevron Deference may be an issue in this case. Read about what Chevron Deference is in our bonus graphic!
An earlier version of this report incorrectly stated Matal was the patent owner. Matal is the acting director of the U.S. Patent and Trademark Office, and the patent owner is the other respondent, ComplementSoft.
