Federal Circuit allows PTAB’s partial review of patents
The Patent Trial and Appeal Board (PTAB) is not required to review all of the patent claims challenged by an opposing party in an inter partes review (IPR) petition, the US Court of Appeals for the Federal Circuit has ruled.
Yesterday, February 10, the court upheld a PTAB ruling that certain claims in technology company Mentor Graphics’s patent were valid. In a split 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 in 2013, the PTAB only decided to review claims 1-9, 11 and 28-29 and declined to review the other claims.
After the trial was instituted, Mentor filed a motion to amend the challenged claims. In 2014, the PTAB declined that motion and invalidated some of the claims, but not all. Synopsys only challenged the decision not to invalidate certain claims, while Mentor did not seek to overturn the ruling on the invalidated claims.
However, at the federal circuit Judges Timothy Dyk and Evan Wallach sided with the PTAB, concluding that its decision complied with section 318 of the US Code.
“The text of section 318 demonstrates that the PTAB need only issue a final written decision with respect to claims on which [the] IPR has been initiated and which are challenged by the petitioner after the institution stage.
“The statute would make very little sense if it required the PTAB to issue final decisions addressing patent claims for which [the] IPR had not been initiated,” Dyk wrote.
Judge Pauline Newman filed a 36-page dissent (longer than the majority’s opinion) arguing that a partial decision by the PTAB “negates the America Invents Act’s (AIA) purpose of providing an alternative and efficient forum for resolving patent validity issues”.
Newman said a partial ruling could mean there would be duplicate proceedings at both the PTAB and US district courts concerning the validity of the same patent.
She highlighted the fact that both forums have different thresholds of proof for chal lenging parties to invalidate a registered patent.
“Since the AIA provides for a different standard of proof than in the district courts, this system of partial decision does not achieve the reliability and expedition for which the AIA was enacted, but instead can produce prolonged uncertainty and multiplied proceedings, at increased rather than reduced cost,” she concluded.
