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  • Posts by Diane Ragosa

    Diane is a Partner with PIB Law and focuses her practice on the representation of clients in connection with commercial, business and intellectual property litigation.

    Prior to joining PIB Law, Diane was an Associate at Axinn ...

On April 24, 2018, in SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office, [Docket # 16-969], , the United States Supreme Court held that “[w]hen the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged.”  The Court relied on the plain language of 35 U.S.C. § 318, which states that “[i]f . . . review is instituted and not dismissed,” the Patent Trial and Appeal Board “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”  The Court further held that the word “shall” imposes a nondiscretionary duty to address every claim the petitioner has challenged, and that “any” means “every.”  In reliance on the plain language of the statute, the Court held that “[w]here a statute’s language carries a plain meaning, the duty of an administrative agency is to follow its commands as written, not to supplant its command with others it may prefer.”

On April 24, 2018, in a widely anticipated decision, the United States Supreme Court held in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., [Docket # 16-712], that the inter partes review process instituted under the 2011 America Invents Act – whereby private parties can challenge issued patent claims in an adversarial process before the Patent Office that mimics civil litigation – is constitutional. 


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