On February 10, 2016, in a 2-to-1 decision, the Federal Circuit upheld the Patent Trial & Appeal Board’s (the “PTAB’s”) policy of conducting partial reviews of patents challenged under inter partes review petitions. In Synopsys, Inc. v. Mentor Graphics Corp., the Court found no statutory requirement that the PTAB’s final written decision must address every claim raised in a petition. The decision marks yet another failed attempt at bypassing the rule barring appeals of institution decisions under 35 U.S.C. § 314(d).
In 2012, Synopsys, Inc. (“Synopsys”) petitioned for review of claims 1-15 and 20-33 of Mentor Graphics Corporations’ U.S. Patent No. 6,240,376. The PTAB instituted review of and issued a final written decision on only a subset of those claims. Synopsis appealed, arguing, inter alia, that the PTAB erred in not addressing the validity of all claims raised in the petition, i.e., including those on which the PTAB did not institute review.
On appeal, Synopsys argued that the PTAB must address every claim raised in the petition because 35 U.S.C. § 318(a) directs the PTAB to issue a final written decision with respect to “any patent claim challenged by the petitioner.” Writing for the majority, Judge Dyk disagreed, holding that the word “challenged” in the statute references only the claims for which inter partes review is instituted, and the statute makes clear that the PTAB is under no obligation to institute an inter partes review. Moreover, the U.S.P.T.O. explicitly authorizes the PTAB to institute review as to some or all of the claims under 37 C.F.R. 42.108. In her dissent, Judge Newman argued that allowing the PTAB to “pick and choose” which claims it reviews negates the AIA’s purpose of providing an “alternate and efficient forum for resolving patent issues.”
In a footnote, the Court suggested that Synopsys’ argument turned on the theory that if the PTAB were required to address every claim in its final written decision, Synopsys could then appeal the PTAB’s decision not to institute review of some claims. Although the Federal Circuit nixed Synopsys’ attempt at circumventing § 314(d), the Supreme Court will soon hear arguments this spring in Cuozzo Speed Tech v. Lee, which may shed new light on the reviewability of PTAB institution decisions.