Supreme Court Decisions on Post-Grant Practice and Patent Validity

The Supreme Court decides only a handful of patent cases each decade, but several of them define how post-grant proceedings work and what arguments can be made in them. This page collects the decisions most often cited in PTAB practice and validity disputes, organized by theme, with a short summary of each and a link to the full opinion.

The summaries are brief and . They are a starting point; the opinions themselves, and later decisions applying them, should be read for any real question.

Summary Table

Case	Year	Holding in brief	Why it matters
Cuozzo v. Lee	2016	Upheld broadest reasonable interpretation in IPR; § 314(d) bars review of institution	Limits appeals of institution decisions
Oil States v. Greene’s Energy	2018	IPR does not violate Article III or the Seventh Amendment	Confirmed IPR’s constitutionality
SAS Institute v. Iancu	2018	Final written decision must address every challenged claim	Ended partial institution
Thryv v. Click-to-Call	2020	§ 314(d) bars appeal of time-bar rulings	Narrowed appellate review further
United States v. Arthrex	2021	APJ decisions must be reviewable by the Director	Created Director Review
Mayo v. Prometheus	2012	Claims to natural correlations plus routine steps ineligible	Foundation of the two-step test
AMP v. Myriad	2013	Isolated natural DNA ineligible; cDNA eligible	Product-of-nature analysis
Alice v. CLS Bank	2014	Two-step framework applies to all subject matter	Governs § 101 analysis
Nautilus v. Biosig	2014	Claims must inform with reasonable certainty	Standard for indefiniteness
Teva v. Sandoz	2015	Subsidiary fact findings in claim construction get deference	Shapes appellate review of claim construction

AIA trial decisions

Cuozzo Speed Technologies, LLC v. Lee (2016). The Court held that 35 U.S.C. § 314(d) bars challenges to the decision to institute IPR where the challenge is closely tied to the institution statutes, and upheld the USPTO’s rule applying the broadest reasonable interpretation to claims in IPR. The Office later moved to a court-style standard for petitions filed on or after November 13, 2018; see claim construction in IPR.

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (2018). The Court held that IPR falls within the public-rights doctrine, so Congress could assign it to the USPTO without violating Article III or the Seventh Amendment jury right. The Court noted the narrowness of its holding.

SAS Institute Inc. v. Iancu (2018). When the Board institutes an IPR, its final written decision must address the patentability of every claim the petitioner challenged. The decision ended the Board’s practice of instituting on only some claims; see PTAB guidance after SAS.

Thryv, Inc. v. Click-to-Call Technologies, LP (2020). The Court held that the Board’s decision that a petition is not time-barred under § 315(b) is part of the institution decision and therefore not appealable under § 314(d).

United States v. Arthrex, Inc. (2021). The Court held that the unreviewable authority of administrative patent judges to issue final decisions was incompatible with their status as inferior officers under the Appointments Clause. The remedy was to allow the Director to review final written decisions, which led to the Director Review process. See the Patent Trial and Appeal Board guide.

Return Mail, Inc. v. U.S. Postal Service (2019). The Court held that a federal agency is not a “person” who may petition for IPR, PGR or CBM review.

Patent-eligibility decisions

Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012). Claims to adjusting drug dosage based on metabolite levels were held ineligible because they recited a natural law plus only routine, conventional steps.

Association for Molecular Pathology v. Myriad Genetics, Inc. (2013). Isolating a naturally occurring DNA segment does not make it eligible, but synthetic cDNA can be eligible. See natural products and diagnostics after Myriad.

Alice Corp. v. CLS Bank International (2014). The Court applied the Mayo framework to computer-implemented claims: ask whether the claim is directed to an exception, then whether it adds an inventive concept. Implementing an abstract idea on a generic computer is not enough.

Eligibility can be raised in post-grant review but not in inter partes review.

Validity and claim-construction decisions

Nautilus, Inc. v. Biosig Instruments, Inc. (2014). A claim is indefinite under § 112 if, read in light of the specification and prosecution history, it fails to inform skilled artisans about the scope of the invention with reasonable certainty. The Court rejected the stricter “insolubly ambiguous” formulation.

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (2015). Claim construction is ultimately a legal question, but when a district court resolves subsidiary factual disputes, such as those based on expert testimony, the Federal Circuit must review those findings for clear error.

Amgen Inc. v. Sanofi (2023). The Court held that a patent claiming a genus by function must enable a skilled artisan to make and use the full scope of what is claimed, without undue experimentation.

Microsoft Corp. v. i4i Ltd. Partnership (2011). The Court held that invalidity defenses in court must be proved by clear and convincing evidence. AIA trials instead use a preponderance standard, which is one reason parties turn to inter partes review.

Key takeaways

• Cuozzo, Oil States, SAS, Thryv and Arthrex define the structure and reviewability of AIA trials.
• Mayo, Myriad and Alice govern § 101 eligibility, which can be raised in PGR but not IPR.
• Nautilus and Teva shape indefiniteness and claim-construction review.
• Microsoft v. i4i explains why the burden of proof differs between court and the PTAB.