Federal Circuit Dismisses an Appeal from District Court APA Action as Moot

Author: Ashley M. WinklerEditor: Alex Kwan-Ho Chung, Ph.D.

In Synopsys, Inc. v. Lee, a split Federal Circuit dismissed as moot an appeal from a U.S. district court and vacated the district court’s opinion. No. 2015-1183 (Fed. Cir. February 10, 2016).

Synopsys brought the district court action under the Administrative Procedure Act (APA) to invalidate the United States Patent and Trademark Office’s (USPTO) regulation under 37 C.F.R. § 42.108, which allows the Board to institute inter partes review (IPR) on “all or some of the challenged claims.” Additionally, Synopsis challenged the USPTO’s practice of issuing final decisions on fewer than all of the claims challenged in a petition. Finding that Congress intended to preclude it from reviewing the IPR proceedings under the APA, the district court dismissed the case. Synopsis appealed.

The Federal Circuit dismissed the appeal as moot, because a companion case decided concurrently by the same panel resolved all of the substantive issues raised–the validity of the regulation and the practice of the USPTO. Synopsys, Inc. v. Mentor Graphics Corp., No. 14-1771 (Fed. Cir. February 10, 2016). The Court noted that the current case no longer presented a “sufficient prospect that the decision will have an impact on the parties,” in violation of the “well settled” case-or-controversy requirement, including mootness.

Judge Newman dissented, noting that the America Invents Act (AIA) intended review of AIA issues (i.e., IPR proceedings) to be consolidated before the Federal Circuit and not subject to the APA. The district court was therefore correct to dismiss the APA action for lack of jurisdiction. The dissent found that the district court ruling should have been affirmed, not vacated, because “[a]bsence of jurisdiction does not render a case moot…for there is nothing to moot.”

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