SAS Institute Inc. v. Matal (16-969)
argument 16-969SAS Institute Inc. v. Matal
Supreme Court of the United States
59 min
6 speakers
8 chapters
transcribed 7 days ago
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What is the central legal question about the PTAB’s authority to issue final decisions on a subset of patent claims?
We'll hear argument next in case sixteen nine sixty nine, SAS Institute versus uh Mattel. Mr Castanius.
Mr Chief Justice, and may it please the court. For three reasons, the Patent Trial and Appeal Board is not authorised to issue final written decisions on fewer than all of the patent claims challenged by interparties review petitioners. First is the plain language of the statute. It requires the board to issue a final written decision with respect to the patentability of quote any patent claim challenged by the petitioner. That's also supported by the context of the Act. Second That plain and inclusive command is not it doesn't may I I just ask you about what you just quoted, doesn't it the provision begin if an inter parties review is instituted? If there is instituted that Yes. That's that's exactly right, Justice Ginsburg.
The uh the statute starts with a conditional the conditional was met in this case because an interpartase review was con was in fact instituted in this case.
So I have two questions. at all clear what it is you're challenging here. Are you challenging um uh the board's right. to initiate partial adjudications. Or are you challenging the fact that they are not addressing all of the claims in their final decision. What is it that you're actually asking us to review.
Well we are challenging the latter. Our question presented is focused on the language.
That you want the board to do with respect to the claims that it didn't grant adjudication act.
We we believe that section three hundred eighteen A requires the board
So you want them to say We didn't grant review. On these claims. Because Or do you want them to say the patent is valid with respect to these claims that we didn't grant review.
Well I think that the
only the only power they are given is to decide the patentability of claims. So what exactly is it that you're asking them to do?
Well, uh Justice Sotomayor, what we are asking the Board to do is to say in its final written decision that we are not finding, for example, uh claim four of the complement soft patent, as they did in this case. We are not finding that unpatentable. Uh that way we can then appeal that decision.
Ah, you want to get around quozo.
No, I don't think it's not a big thing.
You will come up on appeal and say The board was wrong. in not instituting review of those other claims. That's what Krozo was a about, us saying you can't do that. I didn't agree with Quozo
saying that. Well I certainly under I certainly understand that.
But but but It is what we said and and so assuming I stick with precedent um on this issue. Um Is what other purpose would there be? for the board basically to say Ви made a decision not to institute review.
Well if if first of all, Justice Sonmeur, if you look at what the Board actually did in saying that they were not going to institute review, the Board effectively did make a patentability determination in what it calls its initial determination. So we have a decision by the patent in uh the patent trial and appeal board that has in fact ruled on the question, but because of the way they have ruled on it, we can't appeal it and it can't be a stopping.
You do want to get around quotes. Well it's there is absolutely no way that that's anything other than that. What's the If you're not challenging their decision. not to institute review. Um Why would that make any difference?
Well the the Justice Breyer's opinion for the court in Quozo was very clear in saying that the that the determination in that case was ch a challenge under the Section three fourteen A institution only. We're not challenging the Section three fourteen A institution. What we're saying is that whatever institution means Whatever institution means uh when the board says we're only instituting as to these particular claims, it doesn't take into account the fact, and this was not addressed in quozo, that three hundred eighteen A, by its terms, by its text, requires a final written decision.
Would the review on appeal be on the basis of a motion like a motion to dismiss
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Chapters
8 chapters
1
What is the central legal question about the PTAB’s authority to issue final decisions on a subset of patent claims?
0:00–6:30
2
How do the Justices interpret the plain language of 35 U.S.C. § 318(a) regarding “any patent claim challenged by the petitioner”?
6:30–12:28
3
Why does the petitioner argue that the Board must decide patentability for all sixteen claims, not just the instituted ones?
12:28–19:08
4
What distinction does the Court draw between cancelled claims and non‑instituted claims under the statute?
19:08–25:21
5
How does the statutory context of §§ 311‑314 shape the scope of inter partes review and the Board’s discretion?
25:21–33:31
6
What role do the regulations (e.g., 37 CFR § 41.104) play in interpreting the Board’s partial‑institution power?
33:31–41:02
7
Why does the petitioner claim that partial institution conflicts with the Quoz‑o precedent and the purpose of IPR?
41:02–51:03
8
How does the Court address the efficiency and policy arguments for allowing the Board to institute review on a subset of claims?
51:03–59:40