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USPTO Fires Back at Synopsys in IPR Lawsuit

On June 5, 2014, Synopsys, Inc. filed a lawsuit against the USPTO in the United States District Court for the Eastern District of Virginia (Synopsys, Inc. v. Michelle K. Lee; 1:14-cv-00674-JCC-IDD).  In the lawsuit, Synopsys argued that the USPTO has been improperly partially granting petitions for inter partes review and issuing a final written decision that does not reach all of the claims asserted.

During an IPR, Synopsys challenged claims 1-15 and 20-33 of U.S. Patent No. 6,240,376, which was issued to Mentor Graphics in 2001.  In the final written decision of the IPR, the PTAB canceled only some of the claims at issue, but declined to cancel other claims at issue.  Synopsys argued that under 35 U.S.C. § 318(a), if an IPR is granted, the PTAB must issue a final written decision as to the patentability of any claim challenged by the petitioner, and not just a subset of those claims.  Synopsys alleged that the PTAB violates this provision on a regular basis by issuing final written decisions that reach some, but not all, of the claims asserted in a petition for inter partes review.

In response thereto, on September 3, 2014 the USPTO filed a reply in support of its Motion to Dismiss.  In the reply, the USPTO argued that the District Court should dismiss the Synopsys complaint because: (1) the Administrative Procedure Act (APA) is precluded by statute; (2) Synopsys’ challenge should be barred because Synopsys has other adequate remedies in court; and, (3) Synopsys waived its challenge because it conceded that it never raised the objections during the IPR even though it had numerous opportunities to do so.  The USPTO stressed that the complaint should be heard by the Federal Circuit and not the District Court.

Thus, despite attempts – such as the current one by Synopsys – by petitioners to continue to challenge the USPTO’s procedures in IPRs, the USPTO continues to hold its ground and defend its IPR practices.  

© Copyright 2023 Armstrong Teasdale LLP. All rights reserved National Law Review, Volume IV, Number 251
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About this Author

James Heinen, Intellectual Property, Attorney, Armstrong Teasdale, Law Firm
Associate

Jim Heinen, Jr. is a member of the firm’s Intellectual Property practice group. Registered to practice before the U.S. Patent and Trademark Office, his main focus is on the preparation and prosecution of U.S. and foreign patent applications for those in the chemical and biochemical industries.

314-259-4753
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