The United States Supreme Court heard oral arguments in SAS Institute v. Matal on Monday, November 27, 2017. This case should give the Supreme Court the opportunity to declare whether the Patent Trial and Appeal Board must issue a written decision covering all claims challenged in an inter partes review proceeding, and based on the oral argument transcript, the Court may also decide whether partial IPR institutions are permissible under the statute.

The issue specifically taken by the Supreme Court is as follows:

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?

After reviewing the oral argument transcript, my thoughts continue to be that the statute is very simple and mandates the PTAB to issue a final written decision on all claims challenged. This seemed to be consistent with what Justice Alito and Justice Gorsuch were saying during the oral arguments. However, Justice Sotomayor dominated questioning throughout the early stages of the oral argument, continually saying that what was being sought was a reversal of the Court’s decision in Cuozzo.

The Supreme Court does not need to reverse Cuozzo to rule that the PTAB must follow the rather clear language of the statute, but Mr. Castanias, who argued on behalf of the petitioner, continually talked about this giving the Federal Circuit the ability to review everything on appeal. His inartful  argument understandably confused what should otherwise be a straightforward issue. Justice Breyer, who seemed clearly in favor of the respondent, sought to re-write the statute to find the actions of the PTAB to be in keeping with the text of the statute.

I continue to believe this is an easy, straightforward case, but the oral arguments suggest there will be a split among the justices, perhaps along political lines (i.e., liberal wing vs. conservative wing). Should the conservative viewpoint of Justices Alito and Gorsuch prevail, there is also a chance that the Supreme Court will rule that the PTAB cannot grant partial institutions. While impossible to predict based on oral argument alone, a 9-0 decision either way seems unlikely.

For the predictions of a panel of experts who who have been watching this case, please see: Predicting SAS Institute v. Matal after SCOTUS Oral Arguments.

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