Authored by Brian S. Mudge
In a split decision, the Federal Circuit has approved the PTAB’s practice of deciding to institute AIA trials on a claim-by-claim basis. The case, Synopsys, Inc. v. Mentor Graphics Corp., No. 2014-1516 (Feb. 10, 2016), involved an appeal of a PTAB final decision that did not address all claims that were initially challenged in the IPR petition. Rejecting the petitioner’s argument that the PTAB’s final decision must address each claim challenged in an IPR petition, the Federal Circuit held that the PTAB had discretion to institute inter partes review on less than all claims initially presented in the petition. The Federal Circuit also ruled that the PTAB’s determination on the issue of a potential time bar could not be appealed, and that the PTAB properly handled the patent owner’s motion to amend.