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Federal Circuit: PTAB Not Required to Address Every Claim Challenged in IPR

Andrew B. Freistein
February 18, 2016

In Synopsys, Inc. v. Mentor Graphics Corp. (Feb. 10, 2016), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) is not required to address every claim challenged in a petition for inter partes review (IPR).

Mentor Graphics owns U.S. Patent No. 6,240,376, directed to a method of tracing coding errors in the design of computer chips. Synopsys petitioned for IPR of claims 1-15 and 20-33 as being anticipated or obvious over various prior art, including a patent to Gregory. The PTAB instituted review of claims 1-9, 11, 28 and 29 solely on the basis of anticipation by Gregory. The PTAB denied institution over the remaining claims (10, 12-15, 20-27 and 30-33), because Synopsys had not shown any prior art teaching all of the claim limitations.

In its final written decision, the PTAB found claims 5, 8 and 9 invalid as anticipated by Gregory, but claims 1-4, 6, 7, 11, 28 and 29 not anticipated. Synopsys appealed the PTAB’s holding that claims 1 and 28 were not anticipated, asserting that the final written decision failed to address the validity of all claims raised in the petition.
On appeal, the Federal Circuit affirmed the PTAB’s holding that claims 1 and 28 were not invalid, and further held that the final written decision need not address every claim raised in a petition for IPR.

In reaching its conclusion, the court first found that the text of 35 U.S.C. §§ 314(a) and 318(a) makes clear that the claims addressed in the final written decision can be different from the claims raised in the petition. Second, the court found that the statute and rules promulgated by the USPTO make clear that the PTAB can choose whether to institute IPR on a claim-by-claim basis. As a result, it would make little sense for the PTAB to be required to issue final written decisions addressing claims for which IPR had not been instituted.

Judge Newman issued a 36-page dissent, asserting, among other things, that the ruling is contrary to the language of § 318(a), the USPTO’s proposed rules were highly criticized prior to adoption and deserve no Chevron deference, and the majority’s opinion is contrary to the legislative history of the America Invents Act.

The decision is available here: