WIPR survey: Federal Circuit wrong on PTAB claims ruling, readers say

The US Court of Appeals for the Federal Circuit was wrong to rule that the Patent Trial and Appeal Board (PTAB) is not required to review all the patent claims challenged by a party in an inter partes review (IPR) petition, WIPR readers have said.

Responding to WIPR’s latest survey, 80% of respondents said the federal circuit’s ruling was incorrect.

Last week, WIPR reported that the court upheld a PTAB ruling that certain claims in a patent owned by technology company Mentor Graphics were valid. In its 2-1 decision, the court also affirmed the decision not to review other claims in the patent.

In an IPR filed in 2012, Mentor’s rival Synopsys challenged claims 1-15 and 20-33 of Mentor’s patent, US number 6,240,376, which covers testing for coding errors in computer chips.

But the PTAB decided to review only claims 1-9, 11 and 28-29, and declined to review the other claims.

Judges Timothy Dyk and Evan Wallach sided with the PTAB, concluding that its decision complied with section 318 of the US Code. Judge Pauline Newman dissented.

For this week’s survey, we ask: “Last week WIPR reported that a US appeals court ruled that a patent owner’s rights are not exhausted when a protected product is first sold outside the country’s borders before being imported into the US. Do you agree?”