In Synopsys, Inc. v. Mentor Graphics Corp., the Federal Circuit in a split panel (2-1) rejected Synopsys' argument that Patent Trial and Appeal Board (PTAB) must review all of the challenged claims raised in its petition for inter partes review. The Federal Circuit stated 35 U.S.C. § 318(a) only requires PTAB address claims as to which review was granted.
This blesses PTAB's current practice which reduces the value of IPR challenges in that those claims not accepted for review are "still out there" and may serve as grounds for patent infringement.
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