Deciding all patent claims
SAS Institute v. Iancu
In brief
The Supreme Court overturned the Federal Circuit’s ruling and sent SAS Institute’s case back to that court.
- Where it stands
- Decided
Decided 5-4 · April 24, 2018 · Opinion by Justice Gorsuch
- What it’s about
- In a patent review brought by SAS Institute, the dispute was whether the Patent Trial and Appeal Board could decide only some challenged claims or had to decide them all.
- Who it affects
- The Federal Circuit’s ruling was overturned, and SAS Institute’s case returns to that court for further proceedings.
Summary: written with AI from the case record.
What it's about
The Supreme Court overturned the appeals court’s ruling and sent the case back to it (reversed and remanded).
The Federal Circuit had said the Board could issue a final decision on only some claims challenged in a patent review.
Question presented
Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review "shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner," require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?
What the Court decided
Holding
Judgment REVERSED and case REMANDED. Gorsuch, J., delivered the opinion of the Court, in which Roberts, C. J., and Kennedy, Thomas, and Alito, JJ., joined. Ginsburg, J., filed a dissenting opinion, in which Breyer, Sotomayor, and Kagan, JJ., joined. Breyer, J., filed a dissenting opinion, in which Ginsburg and Sotomayor, JJ., joined, and in which Kagan, J., joined except as to Part III-A.
- Result
- Reversed
The vote
What's next
The Federal Circuit will handle the case again after the Supreme Court sent it back.
Documents
Docket activity
New analysis added
AI analysis generated: Case Briefing
AI analysis generated: Decision Record
Case data updated: summary, question_presented, generation_metadata
Case data updated: question_presented, extraction_metadata
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Opinion added: Iancu
Opinion added: opinion
Brief added: Questions Presented
Sources
Primary materials plus reporting. Best-effort analysis: this explainer relies on a mix of primary materials and trusted secondary sources. Official filings and opinions remain authoritative.