Background
SAS Institute filed an IPR petition with the PTAB challenging all 16 claims of a software patent held by ComplementSoft. The PTAB applied its own internal practice of “partial institution” — instituting review on only 9 of the 16 challenged claims and declining to adjudicate the remaining 7. This partial institution approach had been used by the PTAB for years, allowing the Board to focus its resources on challenges it found most meritorious while leaving other challenged claims untouched by the IPR proceeding.
SAS argued that 35 U.S.C. § 318(a) — which says the PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” — required the Board to rule on all 16 claims, not just the 9 it chose to institute. The Federal Circuit affirmed the PTAB’s partial institution practice, and the Supreme Court granted certiorari.
The Court’s Holding
The Supreme Court reversed, 5-4. The majority held that § 318(a)’s text is unambiguous: when the PTAB institutes IPR, it “shall” issue a final written decision on “any patent claim challenged by the petitioner.” The word “any” means all — not some subset the Board selects. The statute leaves no room for a partial institution practice in which the Board picks which claims to review and leaves others in limbo.
The Court rejected the PTO’s argument that its partial institution practice was entitled to Chevron deference, finding that the statutory text was clear. The majority also rejected the argument that § 314(a)’s grant of discretion to institute review necessarily implied discretion over which claims to include — the threshold institution decision and the scope of review decision are distinct, and § 318(a) controls the latter unambiguously.
Key Takeaways
- When the PTAB institutes IPR, it must adjudicate every claim the petitioner challenged — partial institution (reviewing some claims but not others) is not permitted under the statute.
- The ruling required the PTAB to overhaul its institution practice: either institute on all challenged claims or decline to institute the entire petition; there is no middle ground of selective claim institution.
- Petitioners filing IPR petitions now face an all-or-nothing institution decision — the PTAB cannot selectively institution the strongest challenges while leaving weaker challenged claims untouched.
- The decision increased the importance of petition drafting: every claim challenged in the petition will be adjudicated if the IPR is instituted, so petitioners must be confident in all challenges they raise or risk adverse final written decisions on weaker challenges.
Why It Matters
SAS Institute v. Iancu significantly reshaped PTAB practice by eliminating partial institution — a procedure the Board had used routinely since the IPR program began in 2013. After SAS, the PTAB moved to an all-or-nothing institution model, which had several downstream effects on IPR practice. Patent challengers could no longer rely on the Board to select only their best claim challenges for adjudication; instead, every challenged claim became part of a full IPR if the petition was granted.
The ruling also had implications for estoppel: since IPR estoppel under § 315(e) applies to grounds the petitioner “raised or reasonably could have raised,” an all-or-nothing institution approach combined with full adjudication increased the breadth of the estoppel bar facing unsuccessful petitioners in subsequent district court litigation. The decision made IPR petitions simultaneously higher-stakes and more complex, reinforcing the importance of rigorous pre-filing analysis of all challenged claims.