In a patent fight dating back to 2012, SAS has earned a hearing at the Supreme Court where attorneys for the Cary-based software firm will argue that all, not some, patent claims must be reviewed in a case. The U.S. Patent Office and lower court decisions had gone against SAS.

On Monday, the High Court granted a petition from SAS for a hearing to argue its case. The date has yet to be determined.

Tim Wilson, director of patents at SAS, welcomed the Supreme Court decision.

“SAS is very pleased that the Supreme Court granted review of our petition and we look forward to a Supreme Court decision by the end of the next term,” told WRAL TechWire in response to queries about the case.

SAS vs. US P.T.O.

Interestingly, SAS is taking on the U.S. Patent and Trademark Office (citing Michelle K. Lee, Director) in a lawsuit dating back to 2012 when ComplementSoft sued SAS. SAS challenged all 16 claims in that suit. The PTO issued a written decision on nine of those claims, and SAS countered that a review of ALL claims was required by statue.Up until Monday, lower federal court rulings had gone against SAS.

“Under the statute, ‘the patentability of any patent claim challenged by the petitioner’ must be addressed in the Board’s final written decision. 35 U.S.C. § 318(a),” attorneys for SAS said, according to a 123-page filing in the case.

“Here, the petitioner, SAS, challenged the patentability of claims 1-16 of the ComplementSoft patent. App. 42a. Under the plain language of Section 318(a), the Board’s final written decision should have addressed the patentability of all 16 of those claims, and the Federal Circuit should have remanded the case to the Board for decisions on the seven claims it did not address.”

SAS attorneys argued “The Federal Circuit’s Interpretation Also Runs Afoul Of The Act’s Overall Language, Structure, And Manifest Purpose.”

“Frivolous patent litigation”

SAS has been a fighter of so-called “patent trolls” for years, and Wilson says the company’s decision to take the PTO decision to the highest court of the land is part of its commitment to fight what Wilson described as “frivolous” patent claims.

“Frivolous patent litigation threatens innovation and economic growth, and SAS defends itself vigorously against patent infringement suits,” he explained.

“In this case, SAS petitioned the US Patent and Trademark Office (PTO), challenging the validity of all 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.

“However, the governing statute requires the PTO to issue a final decision as to the validity of any challenged patent claim, not just some of them. The Federal Circuit Court of Appeals stood behind the decision of the PTO, so SAS was forced to appeal to the Supreme Court. The Supreme Court agreed to hear the appeal. Next, the parties will file briefs setting forth their positions, and then the Court will set a date for oral argument, which could be as soon as this fall.”

A warning

In its brief, SAS attorneys argued over and over against the PTO ruling and warned of consequences should the partial patent standard be allowed to stand.

“Perhaps most notably, however, the legislative record contains no suggestion whatsoever that final written decisions of the Patent Trial and Appeal Board should extend to fewer than all of the claims challenged by the petitioner,” the attorneys wrote.

They added later:

“Without this Court’s review, and correction, of the Board’s institution and decision procedures, these ultra vires [beoybd the powers – Wex Legal Dictionary] practices will affect hundreds upon thousands of cases in the near future, and will have the further undesired effect of clogging court dockets with redundant patent litigation, ‘thereby adding to the litigants’ [and the courts’] burden rather than lightening it.'”

The Supreme Court is obviously listening.

Coincidentally, on Monday, the Supreme Court issued a unanimous 8-0 decision that is seen as a move to cut down on patent trolling by limiting “cherry picking” of suits filed in certain courts.

Read more about the SAS-PTO case at: