Patent: Inter partes review:
A few years ago Congress created “inter partes review.” The new procedure allows private parties to challenge previously issued patent claims in an adversarial process before the Patent Office that mimics civil litigation. Recently, the Court upheld the inter partes review statute against a constitutional challenge. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, ante, p. ___. Now we take up a question concerning the statute’s operation. When the Patent Office initiates an inter partes review, must it resolve all of the claims in the case, or may it choose to limit its review to only some of them? The statute, we find, supplies a clear answer: the Patent Office must “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.” 35 U. S. C. §318(a). In this context, as in so many others, “any” means “every.” The agency cannot curate the claims at issue but must decide them all.
Because SAS challenged all 16 claims of Complement Soft’s patent, the Board in its final written decision had to address the patentability of all 16 claims. Much as in the civil litigation system it mimics, in an inter partes review the petitioner is master of its complaint and normally entitled to judgment on all of the claims it raises, not just those the decisionmaker might wish to address.
(U.S.S.C., April 24, 2018, SAS Institute Inc. v. Iancu, Docket No. 16-969, J. Gorsuch)
Cette décision complète l'affaire Oil States Energy Services, LLC v. Greene's Energy Group, LLC (2018). La présente précise que le PTO doit rendre une décision qui se prononce sur toutes les contestations de revendications, sans pouvoir choisir de se prononcer sur certaines seulement.