Federal Circuit Okays PTAB Practice of Reviewing Fewer Than All Challenged Claims in IPR

In a recent decision, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) acted properly in issuing a final decision as to some - but not all - claims challenged in an inter partes review proceeding under the America Invents Act. Synopsys, Inc. v. Mentor Graphics Corp., No. 2014-1516 (Fed. Cir. Feb. 10, 2016). As a result, the PTAB's practice of declining to initiate review of all patent claims challenged in AIA trials, leaving the status of some patent claims in limbo, will continue.

Practice Points

Divided Federal Circuit panel rules that PTAB may conduct IPR proceedings on less than all claims challenged in a petition, applying the "reasonable likelihood" test on a claim-by-claim basis. Following earlier decisions, the court effectively held that the PTAB's decision whether to institute review is immune from appellate review. At least until the PTAB's practice is reviewed by the Supreme Court, IPR final decisions may leave patents "wounded, but not dead" by invalidating some claims, but leaving others in place. Background

Mentor owns U.S. Patent No. 6,240,376, relating to a process for tracing coding errors in the design of computer chips. Synopsys filed a petition for inter partes review (IPR) challenging 29 claims in the '376 patent on the grounds that they were invalid in light of cited prior art. The PTAB instituted review of 12 of the challenged claims, but declined to review 17 claims as Synopsys' petition failed to meet the "reasonable likelihood" of success threshold. See 35 U.S.C. § 314(a). At the same time, the PTAB rejected Mentor's argument that the petition was time-barred. During the ensuing IPR proceeding, the PTAB denied Mentor's motion to amend several challenged claims. In its final decision, the PTAB found that three claims under review were invalid as anticipated, but the remaining 14 claims under review were not invalid. Both parties appealed to the Federal Circuit.

Federal Circuit Decision

In a 2-1 decision written by Circuit Judge Timothy B. Dyk, the Federal Circuit affirmed the PTAB proceedings in all respects. The court noted that, under its decision in In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015), which will be argued at the Supreme Court later this year, the PTAB's decision to institute an IPR is not reviewable on appeal. Since Synopsys challenged the scope of the PTAB's final...