SAS lauds US Supreme Court rulings in landmark patent and intellectual property cases

Court majority agrees that US Patent and Trademark Office must render decisions on any challenged claim

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Apr 26, 2018, 01:00 ET

CARY, N.C., April 26, 2018 /PRNewswire/ -- The US Supreme Court ruled in favor of analytics company SAS in a major patent and intellectual property case, SAS Institute v. Iancu. The Court found that the US Patent and Trademark Office (PTO) must issue complete final decisions in a patent review process known as Inter Partes Review (IPR). In a parallel case, the court also upheld the constitutionality of the IPR process.

The 2011 America Invents Act established IPR, a process for petitioning the PTO to cancel patent claims that should not have been granted, often in lieu of more expensive district court proceedings. Before the court's ruling, the PTO could conduct partial reviews, excluding some challenged patent claims from an IPR while letting others proceed. The court's ruling assures the PTO must issue complete and appealable final decisions rather than partial ones.

"We are very pleased the Supreme Court upheld the constitutionality of the IPR process and further agreed with our assertion that when IPR is used, all claims should be reviewed and have a decision issued," said John Boswell, Chief Legal Counsel for SAS. "The court's rulings are a great win for companies battling frivolous patent litigation."

Earlier in this case, SAS petitioned the PTO, challenging the validity of a patent's claims. The PTO decided that some of the claims were likely invalid and should proceed to trial to determine their validity. Others were not allowed to proceed to a final decision. The Federal Circuit Court of Appeals stood behind the decision of the PTO, so SAS was forced to appeal to the Supreme Court.

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