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IP Alert: Federal Circuit Confirms PTAB Need Not Address Patentability of Every Claim Raised in IPR Petition

February 11, 2016

Yesterday, in Synopsys, Inc. v. Mentor Graphics Corp. a divided panel of the Court of Appeals for the Federal Circuit held that the Patent Trial and Appeals Board (PTAB) is not required to address in its final written decision every patent claim challenged in a petition for inter partes review (IPR). In the IPR proceeding, the PTAB instituted trial with respect to some, but not all the claims challenged by appellant Synopsis’s IPR petition, and then issued a final written decision determining the patentability of only the instituted claims, in accordance with its common practice. In an attempt to get the non-instituted claims reviewed, Synopsis argued on appeal that the PTAB’s practice of only addressing instituted claims in its final written decision is contrary to the AIA.

The panel majority disagreed, holding that the AIA only requires the PTAB to address claims as to which review was granted. Judge Newman dissented, arguing, inter alia, that the PTAB’s issuance of partial decisions on patentability leads to multiplied proceedings, contrary to the purpose of the AIA, which created the IPR procedure.

Because the decision by the PTAB whether to institute trial on a challenged claim is not appealable by statute (as confirmed in In re Cuozzo Speed Techs.), and the PTAB only decides the patentability of instituted claims in a final written decision, the Synopsis decision confirms that the patentability of non-instituted claims remains unreviewable on appeal.

For more information about this decision, please contact Fitch Even partner Paul B. Henkelmann, the author of this alert.

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