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PTAB Not Required to Address All Claims from Petition in Final Decision: Fed. Cir.
Practical Law Legal Update w-001-4417 (Approx. 3 pages)
PTAB Not Required to Address All Claims from Petition in Final Decision: Fed. Cir.
by Practical Law Intellectual Property & Technology
| Published on 11 Feb 2016 • USA (National/Federal) |
In Synopsys, Inc. v. Mentor Graphics Corp., the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) is not required to address every claim raised in a petition for inter partes review (IPR) in a final decision.
On February 10, 2016, the US Court of Appeals for the Federal Circuit held in Synopsys, Inc. v. Mentor Graphics Corp. that the Patent Trial and Appeal Board (PTAB) is not required to address every claim raised in a petition for inter partes review (IPR) in a final decision ( (Fed. Cir. Feb. 10, 2016)).
Synopsys, Inc. filed a petition at the PTAB challenging the validity of claims 1-15 and 20-33 of US Patent No. 6,240,376, owned by Mentor Graphics Corp. and covering a method of tracing coding errors in computer chip design. The PTAB granted review of claims 1-9, 11, and 28-29, and later found claims 5, 8, and 9 invalid as anticipated in a final decision.
In the final decision, the PTAB only addressed the validity of those claims on which it had granted review. Synopsys appealed to the Federal Circuit, arguing that the PTAB erred by making a final decision that did not address the validity of all the claims challenged in its IPR petition.
Synopsys argued that 35 U.S.C. § 318(a) of the America Invents Act (AIA) requires the PTAB to address every claim raised in an IPR petition in a final decision. The Federal Circuit, however, held that:
- Differing language—in 35 U.S.C. § 314(a), describing claims raised in an IPR petition as "the claims challenged in the petition," and Section 318(a), describing the requirement for a final decision on any "claim challenged by the petitioner,"—indicates that Congress intended for the two sections to cover different claims.
- The conditional phrase "if an inter partes review is instituted" in Section 318(a) suggests that "challenged" claims under that section refer only to the claims on which the IPR is instituted.
- The record in IPR cases is only developed on the claims for which review is granted, and it would not make sense to require the PTAB to issue a final decision on claims for which the record is not developed.
- Section 314 indicates that the PTAB can choose specific claims in its institution decision.
- The US Patent and Trademark Office (USPTO) has promulgated a regulation allowing the PTAB to institute review of some or all of the challenged claims.
The Federal Circuit also upheld the PTAB's ruling that claims 1 and 28 of the patent were invalid as anticipated rejecting Mentor's argument that Synopsys's petition was time-barred.
In a dissenting opinion, Judge Newman argued that the majority opinion was inconsistent with the AIA's text, purpose, and policy, and would cause the patent validity review process to be incomplete. Specifically, Judge Newman asserted that:
- The idea that the PTAB can choose which claims to decide is contrary to the AIA, and leads to duplicative proceedings in the PTAB and district courts, prolonged uncertainty, and increased costs.
- The USPTO regulation is not in accordance with the AIA, and not entitled to deference.
- The majority misapplied the AIA provision stating that decisions to institute IPRs are not appealable. The provision does not mean that substantive rulings material to the final decision or the propriety of the proceeding as a whole cannot be appealed solely because the rulings occur at the institution phase.
- The majority wrongly eliminated the statutory designation of different decision-makers for the institution and trial phases—the USPTO Director for the institution phase and the PTAB for the trial phase.