Docket No. 2014-1516. -1530 (IPR2012-00042)
CHEN, MAYER, STOLL
February 10, 2016
Brief Summary: Board decision after IPR affirmed and FC finds “the Board need only issue a final written decision with respect to claims on which [IPR] has been initiated”.
Summary: Synopsys appealed Board IPR decision that claims 1 and 28 of Mentor’s US 6,240,376 relating to “a method of tracing bugs, i.e., errors in coding, in the design of computer chips” were not anticipated. Mentor appealed decision that claims 5, 8 and 9 were anticipated and that Synopsys’s petition was time barred under § 315(b). Synopsys petitioned for IPR of claims ‘376 1-15 and 20-33, arguing the claims were invalid as anticipated or obvious. The Board instituted review of claims 1-9, 11 and 28-29 based on anticipation and denied the petition as to the other claims, ultimately finding as set out above. Synopsys argued the Board erroneously failed to address every new claim raised in its petition as directed by § 318. The FC panel explained that this appeal could be heard because Synopsys was appealing the final decision, not the decision to institute (§ 314(d); In re Cuozzo (FC 2015); § 319; Versata (FC 2015). The PTO argued “that the ‘logical import’ of Synopsys’s challenge is a challenge to the decision to institute” but the FC disagreed. Regarding § 318, the FC panel concluded that “the Board need only issue a final written decision with respect to claims on which [IPR] has been initiated and which are challenged by the petitioner after the institution stage” (“[T]he statute [§ 314(a)] is quite clear that the PTO can choose whether to institute [IPR] on a claim-by-claim basis.”) It also found the PTO was properly authorized (Chevron, US 1984) to promulgate 37 CFR § 42.108 which “authorize[s] the review to proceed on all or some of the grounds of unpatentability for each claim.” Regarding the findings of no anticipation, Synopsys argued the prior art disclosed the “execution status” implicitly or inherently but the Board required explicit disclosure; the FC panel disagreed. Synopsys also argued the Board improperly required it to provide expert testimony, and while the FC panel explained that while the Board can require expert testimony where the technology is complex (Centricut, FC 2004; Belden, FC 2015), it found the Board did not do so here. It also explained that while the Board must “articulate ‘logical and rational’ reasons” for its decision, it is not required “to address every argument raised by a party or explain every possible reason supporting its conclusion” (Allentown Mack, US 1998; In re Sang Su Lee, FC 2002). The FC panel also rejected Mentor’s appeal regarding the § 315(b) time bar and the real party in interest as non-appealable issues. Mentor also appealed the Board’s denial of its motion to substitute claism 5, 8 and 9 because it “had not shown general patentability over the prior art” (Proxyconn, FC 2015; Prolitec, FC 2015) but the FC panel found no error with the Board’s decision on this point (“§ 316(e) does not alter our analysis…this provision specifically relates to claims for which [IPR] was initiated, ie., the original claims of the patent that a party has challenged…[IPR] was not initiated for the claims put forward in the motion to amend.”) The Board decision was therefore affirmed. Judge Newman’s argued the decision “depart[s] from the text, purpose, and policy of the AIA” and lists several concerns (e.g., “the PTAB can ‘pick and choose’ which of the challenged patent claims and issues it will decide”).