On the same day that the Supreme Court issued a decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, upholding the constitutionality of the U.S. Patent and Trademark Office’s (“USPTO”) inter partes review proceeding, the Supreme Court held that the USPTO must consider all of the patents at issue. See SAS Institute, Inc. v. Iancu, (Case No. 16-969) (April 24, 2018). The SAS Institute decision concerned a relatively straightforward issue of statutory interpretation that overruled the interpretation of the statute by the USPTO.

The case was unusual in that it resulted in a 5-4 split by the Justices along ideological lines with the newest Justice, Neil Gorsuch, writing the opinion for the conservative majority. Most intellectual property decisions by the Supreme Court are not decided along ideological lines and do not result in such splits.

The majority held that the plain text of the relevant statute, 35 U.S.C. § 318(a), was unambiguous. Since the statute stated that the word “shall” in the statute imposed “a nondiscretionary duty” by the USPTO to consider all of the claims that are challenged by the petitioner when an inter partes review proceeding is instituted.

The dissent asserted that the USPTO should be entitled to use its discretion and only consider the patentability of some of the challenged claims. Typically, the USPTO would only consider claims that were likely to be invalidated through the proceeding. The dissent recognized that this interpretation was more economical.

Ultimately, the SAS Institute decision is unlikely to result in a substantive change in USPTO practice, but it does serve as an example of the differences in judicial philosophy between the conservative wing and the liberal wing of the Supreme Court.