USPTO declines petition for inter partes review - marking the first time since the proceeding has become available under AIA

Written by: Dorothy Whelan and Karl Renner

Synopsys, Inc. v. Mentor Graphics Corp., slip op. IPR2012-00041 (PTAB Feb. 2, 2013)

The PTAB's decision in Synopsys, Inc. v. Mentor Graphics Corp. marks the first time that the PTAB has declined to adopt any of the grounds set forth in a petition for inter partes review. The decision underscores the importance of preparing a robust petition that prospectively addresses key claim construction issues, provides a thorough analysis of the grounds for patentability, and includes the petitioner's best available evidence supporting its positions.

In Synopsys, the petitioner declined to propose or offer evidence of specific constructions for any terms in the claims at issue, opting instead to urge that the claims be given their ordinary and customary meaning.[1] However, the PTAB deemed the meaning of one of the terms (the "independent clock signal limitation") to be critical in determining whether the prior art references disclosed the particular limitation.[2] The patent owner, in its patent owner's statement, argued for a meaning that distinguished the petitioner's prior art.[3] The PTAB performed its own claim construction analysis and agreed with the patent owner, finding that the patent owner's construction undermined the petitioner's arguments for unpatentability.[4] It was important that at this stage of the proceedings there was no mechanism available to the petitioner for establishing a competing construction.[5]

By not proposing a construction for a key claim term in its initial petition along with argument and evidence supporting the construction, the petitioner left itself defenseless when the patent owner proposed a different construction. This result illustrates an important difference between inter partes review and inter partes reexamination. In inter partes review, the patent owner has the ability to submit a preliminary patent owner's response rebutting the petitioner's positions before the PTAB considers whether to grant the petition. The same was not true of inter partes reexamination, where an examiner decided the request based solely on the arguments and evidence that the requester presented. The availability of the preliminary patent owner's response in inter partes review means that the petitioner who decides not to advance certain arguments or offer supporting evidence under the expectation that it can always supplement positions later in the proceedings runs a significant risk that its petition will be denied outright.

In addition, the PTAB considered the petitioner's substantive arguments for unpatentability and found them lacking. The petitioner raised grounds for unpatentability under both §102 and §103 based upon three different references. With respect to the §102 grounds, the PTAB criticized the petition on the ground that neither the text nor the claim charts explained how individual elements found in the prior art references were arranged as recited in the claims.[6] The PTAB also criticized the claim charts because they did not clearly map claim limitations to the prior art references.[7] As a result, the PTAB held that the petitioner had not established a reasonable likelihood that the claims were anticipated.[8]

The PTAB also dismissed the petitioner's arguments based on obviousness. In its petition, the petitioner offered obviousness as an alternative to anticipation. However, the only explanation of the obviousness grounds that the petitioner provided stated that to the extent not anticipated by the reference the claims would have been obvious and each challenged claim element would have been obvious.[9] The PTAB dismissed these conclusory statements as insufficient to demonstrate a reasonable likelihood that the claims were obvious.

Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of '€˜’191's disclosure of independent clocks, to use clock signals from any of the described clocks in the manner required by the challenged claims.

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Petitioner does not clearly explain the reasoning behind this assertion. The Petitioner does not clearly point out the differences between the claimed invention and Sample '760. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences.

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Again, Petitioner does not clearly explain the reasoning behind this assertion. The Petitioner does not point out the differences between the claimed invention and Agarwal. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences.[10]

The PTAB's dismissal of the petitioner's substantive arguments demonstrates that the PTAB is closely scrutinizing arguments and supporting evidence for unpatentability and is holding petitioners to a high standard—higher, perhaps, than the standards previously seen in the early stage of inter partes and ex parte reexamination. In particular, while it is acceptable to include obviousness grounds as alternatives to anticipation grounds, petitioners should be prepared to present a full-blown obviousness analysis based on the Graham factors. While it is true that during typical ex parte prosecution examiners often make the same obviousness-based rejections as the petitioner did here, the Synopsys decision suggests that such a presentation will not pass muster for purposes of an inter partes review.

Although the PTAB denied Synopsys' petition, Synopsys is not without recourse. Because the petition was denied and thus did not result in a "final written decision," the estoppel provisions of 35 U.S.C. 315(e) do not apply. Therefore, in the co-pending district court litigation between Synopsys and Mentor Graphics, Synopsys is free to raise the same grounds for invalidity as a defense. In addition, Synopsys can also file a new petition for inter partes review that addresses the deficiencies of its initial petition. However, Synopsys will have to pay another filing fee as well as the cost of preparing a second petition. Although the filing fee may be offset by a partial refund of the fees from the initial petition, it still will be expensive. Synopsys is also fortunate that as of the date the petition was denied less than one year had elapsed from the time Mentor Graphics filed the suit against Synopsys; thus, a second petition remains a viable option. Other petitioners may not be so fortunate.