When Congress directs the Patent Office to resolve “any” patent claims a petitioner challenges, must the Patent Office resolve every challenged claim or does the Director have the discretion to only resolve some of the claims? And if the Director chooses to only resolve some claims, is that decision entitled to any Chevron deference? Those questions took center stage in SAS v. Iancu, resulting in a rare 5-4 decision in an intellectual property case.
Writing for the majority, Justice Gorsuch found that “[i]n this context, as in so many others, any means every.” If Congress wanted to allow the Patent Office to select certain claims for inter partes review, it could have done so. Inter partes review was created as part of the 2011 Leahy-Smith America Invents Act, creating a litigation-like proceeding before the Patent Office where a petitioner can ask the Patent Office to reexamine one or more issued patent claims. If the Patent Office finds a question of patentability as to at least one challenged patent claim, it institutes inter partes review. Until now, the Patent Office interpreted the statute as allowing it to review some claims but decline to review others. A decision not to review claims is not judicially appealable, but a final decision on patentability in an IPR proceeding estops the petitioner from challenging validity in later district court litigation. Under the new regime, the Patent Office will be forced to review all challenged patent claims and issue a final written decision. This will change strategies for patent litigations. This will also create more work for the Patent Office, a point Justice Breyer emphasized in his dissent, arguing for “respect [for the] leeway which Congress intended the agencies to have.”
This teleforum discusses both the statutory interpretation and Chevron deference issues raised by this case, as well as the practical implications for inter partes review proceedings before the Patent Office.
Featuring:
Mr. Matthew J. Dowd, Founder, Dowd PLLC
Mr. Brian Pandya, Partner, Wiley Rein LLP

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