Federal Circuit Sanctions PTO's Authority To Institute IPR On A Claim-By-Claim Basis In Synopsis v. Mentor Graphics

In Synopsys, Inc. v. Mentor Graphics Corp., a split panel of the Federal Circuit found "that there is no statutory requirement that the Board's final decision address every claim raised in a petition for inter partes review." Appeal Nos. 2014-1516, 2014-1530, slip op. at 12 (Feb. 10, 2016). The panel majority held that 35 U.S.C. § 318(a) only requires the Board to address claims as to which review was granted.

The decision arose from Synopsis's petition for inter partes review (IPR) of claims of a patent owned by Mentor relating to a method for tracing bugs in the design of computer chips. The Board instituted review as to some claims, but found that there was no reasonable likelihood of invalidity as to others. The Board ultimately issued a final written decision finding some of the claims subject to IPR to be anticipated but finding others not proven to be invalid.

Synopsys argued that because § 318 directs the Board to issue a final written decision with respect to "any patent claim challenged by the petitioner," the final written decision must address every claim raised in the petition. Id. at 8. The panel majority disagreed, finding that § 318(a) permits the Board to institute on a claim-by-claim basis. Id. at 8-10. The panel majority additionally found that the Board's practice is authorized by 37 C.F.R. § 42.108. Id. at 10-11.

Synopsis additionally appealed the substance of the Board's findings that some of the claims addressed in the Board's final written decision were not proven anticipated. Among other grounds, Synopsis argued that the Board improperly required it to present expert testimony. The court rejected this argument. Referring first to district court cases, the court observed that while expert testimony is not required, when the technology is complex and "beyond the comprehension of laypersons" expert testimony is sometimes essential. Id. at 18-19, quoting Centricut, LLC v. Esab Grp., Inc. 390 F.3d 1361, 1369 (Fed. Cir. 2004). In the context of IPR proceedings, the court acknowledged that the expertise of Board members may make it easier to understand and soundly explain the teachings and suggestion of the prior art without expert assistance. Id. at 19, citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). On the other hand, as observed by the court, "the Board is not precluded from finding that the technology in a particular case is sufficiently complex that expert testimony is essential for a...