Synopsys, Inc. v. Michelle K. Lee, Director, U.s. Patent

United States Court of Appeals
for the Federal Circuit
______________________
SYNOPSYS, INC.,
Plaintiff-Appellant
v.
MICHELLE K. LEE, DIRECTOR, U.S. PATENT AND
TRADEMARK OFFICE, AND UNDER SECRETARY
OF COMMERCE FOR INTELLECTUAL PROPERTY,
UNITED STATES PATENT AND TRADEMARK
OFFICE, MENTOR GRAPHICS CORPORATION,
Defendants-Appellees
______________________
2015-1183
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:14-cv-00674-JCC-
IDD, Judge James C. Cacheris.
______________________
Decided: February 10, 2016
______________________
ROBERT M. L OEB, Orrick, Herrington & Sutcliffe LLP,
Washington, DC, argued for plaintiff-appellant. Also
represented by ERIC A. SHUMSKY , J EREMY P ETERMAN;
I NDRA N EEL CHATTERJEE, Menlo Park, CA; ANDREW D.
SILVERMAN, New York, NY.

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SYNOPSYS, INC. v. LEE 2
MELISSA N. P ATTERSON, Appellate Staff, Civil Divi-
sion, United States Department of Justice, Washington,
DC, argued for defendants-appellees Michelle K. Lee,
United States Patent and Trademark Office. Also repre-
sented by BENJAMIN C. MIZER, D ANA J. BOENTE, MARK R.
F REEMAN; D AVID M OSKOWITZ, Office of the United States
Attorney for the Eastern District of Virginia, Alexandria,
VA; N ATHAN K. K ELLEY , J AMIE L YNNE SIMPSON, SCOTT
WEIDENFELLER , Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA.
ROBERT ALLEN L ONG, J R., Covington & Burling LLP,
Washington, DC, argued for defendant-appellee Mentor
Graphics Corporation. Also represented by K EVIN F. K ING;
BRADLEY CHARLES WRIGHT , Banner & Witcoff, Ltd.,
Washington, DC.
______________________
Before N EWMAN, D YK, and WALLACH , Circuit Judges.
Opinion for the court filed by Circuit Judge D YK.
Dissenting opinion filed by Circuit Judge N EWMAN.
D YK, Circuit Judge.
Synopsys, Inc. (“Synopsys”) brought a suit in district
court under the Administrative Procedure Act (“APA”)
seeking to invalidate the Patent and Trademark Office’s
(“PTO”) regulation that allows the Patent Trial and
Appeal Board (“the Board”) to institute inter partes
review on “all or some of the challenged claims” 37 C.F.R.
§ 42.108. The suit also challenged the PTO’s practice of
issuing final decisions on fewer than all of the claims
raised in a petition. The district court dismissed the suit,
finding that “Congress intended to preclude this Court
from reviewing inter partes proceedings under the APA”
and, alternatively, that the appeal from a final written
decision of an inter partes review provides an adequate

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SYNOPSYS, INC. v. LEE 3
remedy, thus barring judicial review. Synopsys, Inc. v.
Lee, No. 1:14CV674 (JCC/IDD), 2014 WL 5092291, at *9
(E.D. Va. Oct. 9, 2014). Synopsys appeals.
In a companion case decided today, Synopsys Inc. v.
Mentor Graphics Corp., No. 14-1516, slip op. (Fed. Cir.
Feb. 10, 2015) (“Synopsys 1516”), Synopsys appealed from
a final order of the Board concerning inter partes review
of U.S. Patent No. 6,240,376, alleging that the final order
was defective because it failed to address every claim
challenged in the petition for inter partes review. In
resolving the case, we upheld the validity of the regula-
tion and the practice of the Board issuing decisions on
fewer than all of the claims raised in a petition for inter
partes review. Synopsys 1516, at 8–12. Our decision in
the companion case resolves all of the substantive issues
presented in this case; nothing remains to be decided.
We therefore now vacate the district court’s opinion
and dismiss the appeal as moot. See Anderson v. Green,
513 U.S. 557, 560 (1995); United States v. Munsingwear,
Inc., 340 U.S. 36, 39–40 (1950). We find that, having
resolved the validity of the regulation and the practice of
the PTO in the companion appeal, see Synopsys 1516, this
case no longer presents a “sufficient prospect that the
decision will have an impact on the parties.” See 13B
Charles Alan Wright, Arthur R. Miller & Edward H.
Cooper, Federal Practice and Procedure § 3533 (3d ed.
2008).
It is well settled that the “case-or-controversy re-
quirement,” including mootness, “subsists through all
stages of federal judicial proceedings, trial and appellate.”
Fed. Election Comm’n v. Wisconsin Right To Life, Inc., 551
U.S. 449, 461 (2007) (internal citations and quotation
marks omitted). Thus, “an appeal should [] be dismissed
as moot when, by virtue of an intervening event, a court of
appeals cannot grant ‘any effectual relief whatever’ in

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SYNOPSYS, INC. v. LEE 4
favor of the appellant.” Calderon v. Moore, 518 U.S. 149,
150 (1996) (per curiam). Where a party challenges agency
action alternatively in two separate suits, and a decision
in one case resolves the issues presented in the compan-
ion case, the companion case becomes moot. See Dep't of
Commerce v. U.S. House of Representatives, 525 U.S. 316,
344 (1999); Pharmachemie B.V. v. Barr Labs., Inc., 276
F.3d 627, 631 (D.C. Cir. 2002); 13C Charles Alan Wright
& Arthur R. Miller, Federal Practice and Proce-
dure § 3533.10 (3d ed. 2008) (“Among the circumstances
that create mootness are rulings in other adjudicatory
proceedings, including rulings by the same court in the
same or companion proceedings.”) The plaintiff here
appears to agree. See Response and Reply Brief of Appel-
lant at 34, n.6, Synopsys, No. 14-1516 (Fed. Cir. Feb. 10,
2016). This case, thus, is now moot.
DISMISSED AS MOOT
COSTS
No Costs

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United States Court of Appeals
for the Federal Circuit
______________________
SYNOPSYS, INC.,
Plaintiff-Appellant
v.
MICHELLE K. LEE, DIRECTOR, U.S. PATENT AND
TRADEMARK OFFICE, AND UNDER SECRETARY
OF COMMERCE FOR INTELLECTUAL PROPERTY,
UNITED STATES PATENT AND TRADEMARK
OFFICE, MENTOR GRAPHICS CORPORATION,
Defendants-Appellees
______________________
2015-1183
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:14-cv-00674-JCC-
IDD, Judge James C. Cacheris.
______________________
N EWMAN, Circuit Judge, dissenting.
Our Nation’s patent system is a foundational aspect of
our republic. As the complexity of government pro-
gressed, the Administrative Procedure Act (APA) took its
place at the core of how the Nation operates. In attuning
these aspects to the complexities of patent law, the Amer-
ica Invents Act removed from the standard path of APA
review those issues relating to the America Invents Act.
Thus by statute all judicial review is consolidated in the

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SYNOPSYS, INC. v. LEE 2
Federal Circuit. As such, the district court correctly
dismissed this appeal for absence of jurisdiction.
Because the district court did not have jurisdiction, it
appropriately dismissed the case on that ground. Absence
of jurisdiction does not render a case “moot”, as the panel
majority posits, for there is nothing to moot. Our neces-
sary role is to decide the question of jurisdiction, for that
is what was appealed.
The district court’s ruling was in accordance with the
statute, and should be affirmed. To the extent that the
panel majority has reached some other conclusion, I
respectfully dissent.

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