The Federal Circuit, in a 2-1 opinion, recently affirmed the Patent Trial and Appeal Board’s (PTAB) regulation that the PTAB only has to provide a written opinion on the claims actually instituted for inter partes review, not on every claim raised in the original IPR petition. Petitioner Synopsys submitted an IPR petition to invalidate a number of claims in Mentor’s patent—the same patent asserted against Synopsys in litigation. The PTAB instituted the IPR on roughly half of the submitted claims and ultimately invalidated only three claims. Synopsys appealed and argued that the AIA requires a written opinion by the PTAB on all claims submitted in the original petition, not just those claims instituted by the PTAB for review. The Federal Circuit rejected Petitioner’s argument, noting the AIA “is quite clear that the PTO can choose whether to institute inter partes review on a claim by claim basis.” After that initial decision by the PTAB, the court held the AIA only requires the PTAB to provide a written opinion on “challenged” claims—“claims for which inter partes review was instituted.” The Federal Circuit recognized “the statue would make little sense if it required the Board to issue final decisions addressing patent claims for which inter partes review had not been initiated.”
Synopsys v. Mentor Graphics, Corp., C. A. No. 14-1516, 14-1530 (Fed. Cir. Feb. 10, 2016)