PTAB has no obligation to issue a final decision on all claims raised in a petition for inter partes review, and may place the burden of proving patentability of substitute claims on the patentee

Synopsys, Inc. v. Mentor Graphics Corp., Nos. 2014-1516 and 2014-1530 (Fed. Cir. Feb. 10, 2016)

The petitioner filed for inter partes review (IPR) of certain claims of the patentee’s method patent. The petitioner appealed the Patent Trial and Appeal Board’s (PTAB’s) ruling, and the patentee cross-appealed. 

The petitioner appealed the final PTAB decision on the grounds that it did not rule on all of the claims raised in the IPR petition, arguing that the statutes governing IPR direct the PTAB to address “every” claim in a petition. The Federal Circuit disagreed, finding that there was no statutory requirement to address claims beyond those for which IPR was granted. It held that 35 U.S.C. § 314(a) authorizes a “claim-by-claim inquiry” into a petition, and thus “strongly implies” that the PTAB has no obligation either to institute IPR or issue a final decision on every claim raised in the petition. The Federal Circuit further found that 35 U.S.C. § 318(a) requires only that the PTAB “issue a final decision with respect to claims on which IPR has been initiated,” rather than all challenged claims.

The patentee separately appealed the PTAB’s denial of the patentee’s motion to substitute certain claims on which IPR had been instituted. The Federal Circuit denied the appeal, citing its prior rulings inMicrosoft Corp. v. Proxyconn, Inc. and Prolitec Inc. v. ScentAir Technologies, Inc. to affirm that the PTAB may place the burden of proving patentability of substitute claims on the patentee for the prior art of record in the IPR.

A copy of the opinion can be found here.