Federal Circuit Confirms PTAB Need Not Address Every Claim Raised in a Petition

In an appeal from a Patent Trial and Appeal Board (PTAB) decision, a split Federal Circuit panel affirmed that (1) the final order of the PTAB need not address every claim raised in the petition for review, and (2) the PTAB did not err in denying Mentor’s motion to amend and substitute claims. Synopsys, Inc. v. Mentor Graphics Corp. Nos. 2014-1516, -1530 (Fed. Cir. February 10, 2016).

First, the Court held that there is “no statutory requirement that the Board’s final decision address every claim raised in a petition for inter partes review.” Guided by text of the statute, the Court distinguished the claims that must be addressed in the final decision from the claims raised in the petition, and found that the PTAB can pick and choose which claims to institute on a claim-by-claim basis. Moreover, the Court saw little sense in requiring the PTAB to issue final decisions on validity of uninstituted patent claims without the benefit of argument and record created after institution.

Second, the Court held that the PTAB correctly assigned the burden of proving patentability to the patent owner for the claims that were not challenged in the petition but were proposed for substitution by the patent owner. Such finding was consistent, the Court reasoned, with the case law where the PTAB placed burden of proof on patent owner based on the prior art of record, as was the case here. Further, statutory language placed the burden of proof on petitioner specifically for claims that were challenged in a petition, the Court found.

In a lengthy dissent, Judge Newman advanced four arguments. First, allowing the PTAB to pick and choose which claims to institute creates an “absence of finality negat[ing] the AIA’s purpose of providing an alternative and efficient forum for resolving patent validity issues.” Second, substantive rulings made during the institution determination should be appealable if such rulings were material to the final decision on validity. Third, the PTO’s practice of assigning the institution decision to the PTAB is contrary to the AIA, which assigns the decision to institute to the Director and assigns the trial and final decision to the PTAB. Finally, the PTO’s practice of regularly denying amendments in IPR proceedings undermines the balance struck between allowing amendment and lowering the evidentiary standard of invalidity applied by the courts.