Earlier this week in Synopsys, Inc. v. Mentor Graphics Corp. v. Lee, __ F.3d __ (Fed. Cir. 2016)(Dyk, J.), where the PTAB had granted a petition for review of some of the claims of a patent, appellant challenged the PTAB’s refusal to provide a merits examination of all claims.
The panel majority rebuffed this challenge: The Court “find[s] no statutory requirement that the [Patent Trial and Appeal] Board’s final decision address every claim raised in a petition for inter partes review. [35 USC §] 318(a) only requires the Board to address claims as to which review was granted.”
Disharmony at the Federal Circuit: Once again, the Great Dissenter challenged a majority ruling, this time in her very lengthy dissent laced with public policy concerns and references to legislative history. Synopsys, __ F.3d at ___ (Newman, J.). Every dissent she issues in a patent case breaks her own record for the number of patent dissents by an individual jurist, by far the largest number for any judge in the history of the United States.
Onward to the Supreme Court: Fueled by the lengthy dissent, the losing party may be expected to take its challenge to the Supreme Court.