Synopsys, Inc. v. Lee

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Patents
  • Date Filed: 10-09-2014
  • Case #: 1:14cv674
  • Judge(s)/Court Below: Eastern District of Virgina
  • LexisNexis Citation: 2014 U.S. Dist. LEXIS 144089
  • Westlaw Citation: none
  • Full Text Opinion

The America Invents Act places exclusive jurisdiction in the Court of Appeals for the Federal Circuit when reviewing decision of the United States Patent and Trademark Office

Opinion (Cacheris):

Synopsys, Inc. ("Synopsys") is a software company which filed a petition for inter partes review of a Mentor Graphics Patent (“Mentor”) number ‘376.

Synopsys alleges that the ‘376 patent is "invalid due to anticipation (lack of novelty) and obviousness”.

Inter parted review, per 35 USC §§ 311-319, is one of the mechanisms for review of patentability conducted by the USPTO under the AIA.

Mentor sued the USPTO to enjoin the partial review proceeding. Synopsys then intervened and filed a motion to dismiss. The USPTO also filed a motion to dismiss, which the Court granted. In its decision, the Court found that inter partes reviews are not final APA decisions, and it also “lacked jurisdiction to review the Board’s decision” due to a remedy available in the Court of Appeals for the Federal Circuit.

The Board continued to review some of the claims of the ‘376 patent and ultimately decided that three of the claims be cancelled. The other claims, alleged by Synopsys to be unpatentable, were left as valid.

Synopsys filed a Complaint alleging that the USPTO violated the APA by exceeding statutory authority. Under the AIA, they allege, the Board is “required to institute inter partes review of the petition as a whole” instead of deciding only to review some of the claims outlined in the Synopsys petition.

The USPTO argues that this Court has no jurisdiction to “to consider those claims” and moves to dismiss based on Rule 12(b)(1) of the Federal Rules of Civil Procedure.

This Court finds that the APA does not confer jurisdiction, and though a party aggrieved by agency action is “entitled to judicial review”, there are statutes that may “strip a federal court of jurisdiction”.

Furthermore, this Court analyzed the AIA and determined that “Congress explicitly barred appeals from the threshold determination to institute inter partes review”. And, if Synopsys is dissatisfied with a final decision, jurisdiction for that matter lies with the Court of Appeals for the Federal Circuit.

In conclusion, this Court found that the plain language of the AIA, as well as the legislative history of the AIA, show that Congress “intended to preclude this Court from reviewing inter partes proceedings under the APA”.

The motion is granted and the Complaint is therefore DISMISSED.

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