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In this IPR proceeding brought by Synopsys challenging claims of Mentor’s patent, the PTAB held that the IPR itself was not time-barred due to Synopsys acquiring a company whom Mentor had sued more than a year before the filing of the IPR, held that Mentor would not be permitted to replace claims with new claims, because Mentor had not proven that these new claims would be valid over the asserted prior art or valid in general, and held that two of the claims were not anticipated by the asserted prior art. 

On appeal, the Federal Circuit held that the issue of whether Synopsys was time-barred from instituting the IPR was not appealable, as it goes to the issue of whether the institution of the IPR was proper, and, regardless, the determination of whether an IPR is time-barred applies to the facts as they were when the IPR was instituted, and, here, Synopsys had not acquired the other company when it filed the IPR petition. 

Synopsys argued on appeal that 35 U.S.C. § 318(a), requiring that the PTAB issue a final written decision with respect to “any patent claim challenged by the petitioner,” requires that the PTAB address every claim, even those for which it did not institute the IPR.  The Federal Circuit rejected this argument, however, because there is no full record developed for claims for which an IPR was not instituted.  Thus, Section 318(a) only requires the PTAB to address in its final determination only claims as to which review was granted. 

As to the issue of the PTAB’s finding of no anticipation of two of the claims, the Federal Circuit affirmed.  In so doing, the Federal Circuit reiterated that there is no requirement that a party in an IPR proceeding submit expert testimony, although in very complex cases, it may be essential. 

Lastly, Mentor appealed the PTAB’s decision precluding it from replacing certain existing claims with new claims.  Mentor challenged the requirement that, to submit amended claims, the patentee bears the burden of proving that the new claims are patentable over the prior art at issue in the IPR and are generally patentable over the prior art.  The Federal Circuit rejected this argument, citing Proxyconn and Prolitec

In her lengthy dissent, Judge Newman lays out her litany of disagreements with the court’s recent decisions interpreting the new AIA statutes on IPRs. 

Synopsys, Inc. v. Mentor Graphics Corporation, Case Nos. 2014-1516, -1530 (February 10, 2016); Opinion by: Dyk, joined by Wallach; Dissenting opinion by Newman; Appealed From: United States Patent Trial and Appeal Board.  Read the full opinion here.

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