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

Last Updated: February 22 2016
Article by Sangeeta G. Shah

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 decision, however, the Federal Circuit ruled that it was able to consider whether the PTAB was required to address all the challenged claims in its final decision.

The appeals court held that the PTAB's practice of reviewing some, but not all, challenged patent claims in an IPR proceeding was consistent with both the text of the AIA and the USPTO's regulations governing the AIA trial proceedings. The court pointed to language in the AIA that directs the USPTO to initiate review when a petitioner demonstrates a reasonable likelihood that it would prevail as to one or more of the "claims challenged in the petition[,]" 35 U.S.C. § 314(a), but the statute provides that the PTAB final written decision must include any "claim challenged by the petitioner." 35 U.S.C. § 318(a). The court found the different words used by Congress a strong indication that they have different meanings, suggesting that the claims addressed in the final decision could be different from those challenged in the petition for review. In addition, the court noted that since a full record is created at trial only for claims for which the PTAB instituted review, it would make no sense to require the PTAB to rule on the validity of all claims challenged in the petition with an incomplete record. The court noted:

[The AIA] is quite clear that the PTO can choose whether to institute inter partes review on a claim-by-claim basis. In deciding when to institute IPR, the statute requires a claim-by-claim inquiry to determine whether "there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C. § 314(a) (emphasis added). Unless at least one of the claims satisfies this inquiry, the [PTAB] cannot institute. The statute strongly implies that the initiation decision be made on a claim-by-claim basis and that the [PTAB] can pick and choose among the claims in the decision to institute. In fact, nothing in § 314 requires institution of inter partes review under any circumstance.

Slip op. at 10. Furthermore, the court held that the regulations adopted to implement § 314(a), 37 C.F.R. § 41.108, were a reasonable interpretation of the statute and a proper exercise of regulatory authority. The court was not persuaded by isolated statements in the AIA legislative history indicating that AIA trials were intended to be a "complete substitute" for federal court litigation. It noted that, "[f]loor statements by a few members of the legislative branch cannot supplant the text of the bill as enacted." Slip op. at 11. Thus, the Federal Circuit ruled that the AIA only requires that the IPR final written decision address the claims for which review was initiated.

On the merits of the PTAB's decision, the Federal Circuit affirmed the PTAB's decision that three claims in the '376 patent were invalid. The Court also turned aside the points on appeal raised by Mentor. First, it held that the PTAB's decision that the petition for review was not time-barred was not appealable. Slip op. at 24, citing Achates Reference Publ'g, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). The court also affirmed the PTAB's ruling denying Mentor's request to amend claims during the IPR proceeding. Consistent with recent Federal Circuit decisions, the court ruled that the PTAB rules properly place the burden on the patent owner to demonstrate that a proposed amendment presents claims that are patentable, and Mentor failed to demonstrate patentability over the very prior art cited by Synopsys in its petition.

Circuit Judge Pauline Newman wrote a lengthy dissent, arguing that the result was at odds with the purpose of the AIA by avoiding "finality" in administrative challenges to patent validity, and resulting in duplicative and potentially inconsistent federal court and PTAB rulings.

Practical Significance

Since the statutory and public policy arguments in Judge Newman's dissent substantially overlap with appellant's argument in Cuozzo, which will be argued at the Supreme Court this term, the Supreme Court's decision in Cuozzo will likely shed some light on the divided opinion in Synopsys. While the specific issue of the proper scope of a final decision may not get addressed in Cuozzo, the ultimate issue of whether an institution decision is reviewable after final decision will be decided.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions