Synopsys, Inc. v. Mentor Graphics Corporation
814 F.3d 1309
| Fed. Cir. | 2016Background
- Synopsys petitioned for IPR of multiple claims of U.S. Patent No. 6,240,376 (the '376 patent), challenging anticipation/obviousness based primarily on Gregory. Mentor was patent owner and moved to amend claims; Synopsys partially prevailed at the Board.
- The PTAB instituted review as to some (not all) challenged claims (claims 1-9, 11, 28-29) and denied institution as to others; final decision found claims 5, 8, 9 anticipated and claims 1 and 28 not anticipated.
- Key disputed claim limitation: whether Gregory discloses "instrumentation signals" that are "indicative of an execution status" of RTL source-code statements (the ’376 patent uses trace variables/instrumentation preserved into gate-level signals).
- Mentor argued the petition was time‑barred under 35 U.S.C. § 315(b) due to Synopsys’s acquisition of an entity previously sued by Mentor; Board rejected the time‑bar defense and Synopsys was treated as the real party in interest.
- Mentor moved to amend (substitute claims); the Board denied the motion, placing the burden on the patent owner to show patentability of substitute claims over the prior art of record.
- On appeal, Synopsys challenged (1) the Board’s non‑anticipation finding for claims 1 and 28 and (2) that the Board’s final decision did not address every claim raised in the petition; Mentor cross‑appealed the § 315(b) ruling and denial of the motion to amend.
Issues
| Issue | Plaintiff's Argument (Synopsys) | Defendant's Argument (Mentor) | Held |
|---|---|---|---|
| Whether the PTAB must issue a final decision addressing every claim raised in an IPR petition | Section 318(a) requires the Board to decide every claim "challenged by the petitioner" in the final decision | The statute permits the Board to address only claims for which IPR was instituted; §314(a)/37 C.F.R. §42.108 support claim‑by‑claim institution | Court: Board need only decide claims as to which review was instituted; regulation permitting partial institution is a reasonable interpretation and valid under Chevron — affirming partial final decisions |
| Whether Gregory anticipates claims 1 and 28 ("instrumentation signal" indicative of "execution status") | Gregory's "tempout" signals and gate outputs can indicate execution status (implicitly/inherently); anticipation can be shown without explicit disclosure | Gregory's signals are not reliably indicative of execution status; Board correctly credited Mentor's expert; partial/occasional indication is insufficient to meet claim limitation | Court: substantial evidence supports Board’s finding that Gregory does not disclose instrumentation signals indicative of execution status — affirm non‑anticipation of claims 1 and 28 |
| Whether Board required petitioner to present expert testimony improperly | Petitioner need not always supply expert testimony; Board should rely on its technical expertise | Board weighed expert testimony appropriately given complexity and record; Mentor provided expert evidence | Court: Board did not impose a strict expert‑testimony requirement; it permissibly credited Mentor’s expert in a complex technical case |
| Whether Board erred in denying Mentor’s motion to amend by placing burden on patent owner | Mentor argued §316(e) places burden of proving unpatentability on petitioner, so Board cannot require patentee to prove patentability of substitute claims | Board may require patent owner to show substitute claims patentable over prior art of record; Proxyconn precedent permits placing burden on patentee for substitute claims | Court: affirmed denial of motion to amend; Board properly required Mentor to show substitute claims patentable over Gregory (Proxyconn/Prolitec controlling) |
Key Cases Cited
- In re Baxter Int’l, 678 F.3d 1357 (Fed. Cir. 2012) (standard of review: factual findings for substantial evidence; legal conclusions de novo)
- St. Jude Med. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014) (describing two‑stage IPR institution and trial process)
- In re Cuozzo Speed Techs., 793 F.3d 1268 (Fed. Cir. 2015) (institution decision nonappealable; Chevron deference to PTO rules implementing AIA)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (expert testimony not always required; depends on complexity)
- Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361 (Fed. Cir. 2004) (expert testimony may be essential when technology is complex)
- In re Graves, 69 F.3d 1147 (Fed. Cir. 1995) (anticipation is a question of fact)
- Dickinson v. Zurko, 527 U.S. 150 (1999) (administrative factfinding reviewed for substantial evidence)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) (patentee may bear burden to show patentability of substitute claims over prior art of record)
- Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015) (upholding PTO approach requiring patentee to demonstrate patentability of proposed substitute claims)