Federal Circuit Upholds IPR Final Decisions That Address Fewer Than All of the Challenged Claims

Authored by Mark Chapman, Caryn Harsche, and Kulsoom Hasan

Digest of Synopsys, Inc. v. Mentor Graphics Corp., Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016) (precedential). On appeal from PTAB IPR No. 2012-00042. Before Newman, Dyk, Wallach.

Procedural Posture: Petitioner Synopsys appeals an IPR final decision where the Board found claims 5, 8, 9 of U.S. Patent No. 6,240,376 invalid as anticipated but declined to find claims 1 and 28 anticipated.

  • Invalidity: The Board did not err in ruling that claims 1 and 28 were not invalid because the sole prior art reference in the IPR did not disclose the “execution status” limitation in claims 1 and 28, either expressly or inherently.
  • IPR—Final Decision: The Board did not err by failing to specifically refer to one of Synopsys’s arguments in the final decision where the Board generally addressed the issue. An agency is not required “to address every argument raised by a party or explain every possible reason supporting its conclusion.”
  • IPR—Final Decision: The Board’s final decision need not address every claim raised in the petition for inter partes review. In the first stage of an IPR, the Board reviews the petition to determine whether “there is a reasonable likelihood that the petitioner will prevail on at least 1 of the claims challenged.” 35 U.S.C. § 314(a). USPTO regulations allow the Board to initiate an IPR “on all or some of the challenged claims.” 37 C.F.R. § 42.108(a). Afterwards the Board issues a final decision with respect to “any patent claim challenged by the petitioner.” 35 U.S.C. § 318(a). The decision to institute an IPR cannot be appealed, but the final decision can be appealed. 35 U.S.C. § 314(d); 35 U.S.C. § 319. The text of 35 U.S.C. §§ 314(a) and 318(a) make clear that the claims that the Board must address in the final decision are different than the claims raised in the petition. Additionally, it would not make sense to issue a final decision which addresses claims for which inter partes review was not initiated.
  • Motion to Amend: The Board did not err in denying patent owner Mentor’s motion to amend. There was no error in placing the burden on Mentor to show that substitute claims are patentable over the only piece of prior art in the IPR.
  • Time Bar: USPTO decisions concerning the 35 U.S.C. § 315(b) time bar, including determinations regarding the real party in interest and discovery related to these determinations, are not appealable.
  • Scope of Reply: The Board properly rejected one of Synopsys’s invalidity arguments regarding the “execution status” limitation because “the argument [was] presented for the first time in Synopsys’s reply and is not responsive to arguments made in Mentor Graphic’s response.”
  • Dissent (Newman J.): Final decisions which only address the claims for which an IPR was instituted lead to duplicative proceedings at district courts, prolonging uncertainty and increasing costs. The majority misapplies the statutory provision that the decision to institute post-grant proceedings is not appealable. Information presented and rulings made during the institution decision are appealable when they are material to the final decision. The elimination of different decision-makers for the institution phase and the trial phase of an IPR would be contrary to the America Invents Act.

Digest of Synopsys, Inc. v. Lee, No. 2015-1183 (Fed. Cir. Feb. 10, 2016) (precedential). On appeal from E.D.Va. Before Newman, Dyk, Wallach.

Procedural Posture: Synopsys Inc. brought suit under the Administrative Protection Act to invalidate the USPTO’s regulation that allows the Board to institute an IPR on “all or some of the challenged claims” and the USPTO’s practice of issuing final decisions on fewer than all of the claims raised in the petition. The district court dismissed the suit on alternative grounds: that the district court is not authorized to review IPR proceedings and/or that judicial review was barred because an appeal from a final decision in an IPR proceeding provides adequate remedy. The CAFC dismissed the appeal.

  • Case-or-Controversy: The CAFC dismissed Synopsys’s appeal as moot because the Synopsys, Inc. v. Mentor Graphics Corp., Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016) companion cases upheld the validity of the regulations and practices of the Board to issue decisions on fewer than all of the claims raised in an petition for IPR.
  • Dissent (Newman J.): The district court properly dismissed the suit because all review of the America Invents Act is consolidated at the CAFC. This appeal to the CAFC is for the purpose of deciding the question of the district court’s jurisdiction; the district court’s decision that it lacked jurisdiction is in accordance with the America Invents Act and should be affirmed.

Leave a Reply