Fed Cir Says PTAB Can Consider Less Than All Challenged Patent Claims in IPR

The Leahy-Smith America Invents Act (AIA) created post-grant proceedings at the USPTO to provide members of the public an efficient way to challenge the validity of issued patents without the expense of federal court litigation. The USPTO Patent Trial and Appeal Board (PTAB) has adopted a claim-by-claim approach to instituting post-grant proceedings under the AIA. But is this technique really more efficient? Or does it end up creating more litigation in the future in direct conflict with the efforts of Congress to displace that litigation? This week, the Court of Appeals for the Federal Circuit reinforced the PTAB’s interpretation that the AIA gives it authority to institute proceedings using the claim-by-claim approach. 

In Synopsys, Inc. v. Mentor Graphics v. LeeSynopsys argued that, because the AIA statute directs the PTAB to issue a final written decision with respect to “any patent claim challenged by the petitioner” for inter partes review (IPR), the PTAB’s final decision must address every claim raised in the petition rather than reviewing only a subset of the challenged claims. Otherwise, Synopsys argued, patent owners may be subject to future attacks on the validity of the undecided claims.   

The majority of the Fed Cir panel disagreed and held that the PTAB can decide to institute trial based on a subset of the challenged claims and need only issue a final written decision with respect to claims on which inter partes review has been initiated and which are challenged by the petitioner after the institution stage.

Judge Pauline Newman dissented, arguing, amongst other things, that the PTAB’s policy of conducting partial reviews (i) creates an “absence of finality [that] negates the AIA’s purpose of providing an alternative and efficient forum for resolving patent validity issues”; and (ii) leads to duplicative proceedings in the PTAB and the district courts. Judge Newman states that these glitches are readily remediable by requiring a final written decision for each of the claims challenged.   

However, absent a petition for cert, the PTAB’s partial-review practice will not be reversed any time soon.



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