January 17, 2021

Volume XI, Number 17


January 15, 2021

Subscribe to Latest Legal News and Analysis

Do PTAB Final Decisions Addressing a Portion of the Challenged Claims Create Work for Overburdened Courts?

As discussed in USPTO FIRES BACK, Synopsys Inc. recently filed a lawsuit against the United States Patent and Trademark Office (USPTO) arguing that the USPTO regularly violates 35 U.S.C. § 318(a) by issuing final written decisions that reach some, but not all of the challenged claims in a petition for Inter Partes Review (IPR). Synopsis, like many petitioners, challenged claims on a variety of grounds. Yet when the Patent Trial and Appeal Board (PTAB) instituted trial, it did not review all of the challenged claims. This led to a final written decision on the patentability of some of the challenged claims, even though the PTAB found a reasonable likelihood Synopsys would prevail on its challenge to the patentability ofall challenged claims.

SAS Institute Inc. (SAS) filed a brief in support of Synopsys’ challenge to the PTAB’s current IPR practice. At issue is whether the PTAB’s current practice of reviewing only a subset of challenged claims in post grant proceedings undermines Congress’s intended efficiencies in the America Invents Act (AIA). SAS has an interest in the present case because it had also petitioned for an IPR and the PTAB only instituted review on partial grounds.

In its brief in support of Synopsys, SAS addresses three important points that were not fully previously addressed by the parties’ briefs:

1. Final written decisions directed to less than all the challenged claims have impacted over 20% of PTAB proceedings and will continue to impact a substantial amount of proceedings.

2. By not addressing all of the challenged claims, the USPTO creates more work for the district courts, which undermines the intended efficiencies of the AIA.

3. The district court is the proper venue to address this issue, and should not dismiss this case since the Federal Circuit does not have jurisdiction over claims that were not actually addressed in a final written decision of the PTAB.

All parties agree that the intention of the AIA is to streamline patent cases. According to SAS, a stayed case is simplified when the USPTO reviews claims and they are either canceled or survive review. The canceled claims entirely disappear from litigation, and the surviving claims return to district court with a statutory estoppel. Thus, the accused infringer is prevented from making the same invalidity arguments again. However, any claims that are challenged, but not reviewed at the USPTO are returned to the stayed cases, saddling the district courts with additional work instead of streamlining the case.

Though not addressed in the SAS brief, the plaintiffs and defendants are also forced to perform redundant work by readdressing arguments already presented during the IPR under different standards of proof. Thus, instead of simplifying a stayed case, the PTAB might actually be creating more work for courts that have petitioners simultaneously challenging claims at the PTAB.

© Copyright 2020 Armstrong Teasdale LLP. All rights reserved National Law Review, Volume IV, Number 259



About this Author

Practice Group

Armstrong Teasdale LLP, with more than 250 lawyers in offices across the U.S. and China and double-digit revenue growth in 2011, has a demonstrable track record of delivering sophisticated legal advice and exceptional service to a dynamic client base. Whether an issue is local or global, practice area specific or industry related, Armstrong Teasdale provides each client with an invaluable combination of legal resources and practical advice in nearly every area of law. The firm is a member of Lex Mundi, a global association of 160 independent law firms with locations in more than 100...