# United States **Court of Appeals**  **for the Federal Circuit**

______________________ SYNOPSYS, INC., Plaintiff

- Appellant

v.
MICHELLE K. LEE, DIR ECTOR, U.S. PATENT A ND

TRADEMARK OFFICE , AND UNDER SECRETARY OF COMMERCE FOR INTE LLECTUAL PROPERTY, UNITED STATES PATENT AND TRADEMARK OFFICE, MENTOR GRAPHICS CORPORATION, Defendants

- Appellees

______________________
2015

- 1183

______________________ Appeal from the United States District Court for t he Eastern District of Virginia in No. 1:14

- cv

- 00674

- JCC

IDD, Judge James C. Cacheris.

______________________
Decided: February 10, 2016

______________________
R OBERT M. L OEB , Orrick, Herrington & Sutcliffe LLP, Washington, DC, argued for plaintiff

- app ellant. Also represented by E RIC A. S HUMSKY , J EREMY P ETERMAN ; I NDRA N EEL C HATTERJEE , Menlo Park, CA; A NDREW D. S ILVERMAN , New York, NY.SYNOPSYS , INC

. v. LEE 2

M ELISSA N. P ATTERSON , Appellate Staff, Civil Div ision, United States Department of Justice, Washington, DC , argued for defendant s- appellee s Michelle K. Lee, United States Patent and Trademark Office . Also repr esented by B ENJAMIN C. M IZER , D ANA J. B OENTE , M ARK 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 S IMPSON , S COTT W EIDENFELLER , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

R OBERT A LLEN L ONG , J R

. , Covington & Burling LLP, Washington, DC, argued for defendant -appellee Mentor Graphics Corporation. Also represented by K EVIN F. K ING ; B RADLEY C HARLES W RIGHT , Banner & Witcoff, Ltd.
, Washington, DC.

______________________
Before N EWMAN , D YK , and W ALLACH , 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 th at 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 challenge d the PTO’s practice of issuing final decisions on fewer than all of the claim s 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 part es review provides an adequateSYNOPSYS , 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 addres s every claim challenged in the petition for inter partes review. In resolving the case, we upheld the validity of the regul ation 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 wil l 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 requirement,” 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 effect ual relief whatever’ inSYNOPSYS , INC

. v. LEE 4

favor of the appellant.” Calderon v. Moore , 518 U.S. 149, 150 (1996) (per curiam)

. Where a party challe nges agency action alternatively in two separate suits
, and a decision in one case resolves the issues presented in the compa nion case, the companion case becomes moot

. See Dep't of Commerce v. U.S. House of Representatives , 525 U.S. 316, 344 (1999) ; Phar machemie 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 Proc edure § 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 Appe llant at 3 4, n.6, Synopsys
, No. 14

- 1516 (Fed. Cir. Feb. 10
, 2016). This case, thus, is now moot.
DISMISSED AS MOOT
C OSTS
No Costs

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ SYNOPSYS, INC., Plaintiff

- Appellant

v.
MICHELLE K. LEE, DIR ECTOR, U.S. PATENT A ND

TRADEMARK OFFICE , AND UNDER SECRETARY OF COMMERCE FOR INTE LLECTUAL PROPERTY, UNITED STATES PATENT AND TRADEMARK OFFICE, MENTOR GRAPHICS CORPORATION, Defendants

- Appellees

______________________
2015

- 1183

______________________ Appeal from the United States District Court for t he 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. A s the complexity of government pr ogress ed, the Administrative Procedure Act (APA) took its place at the core of how the Nation operates. In at tuning these aspects to the complexities of patent law, the Ame rica Invents Act removed from th e standard path of APA review those issues relating to th e America Invents Act. Thus by statute all judicial review is consolidated i n theSYNOPSYS , INC

. v. LEE 2

Federal Circuit. As such , the district court correctly dismissed this appeal for absence of jurisdiction.
Because the district court d id not have jurisdiction
, it
app ropriately 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 nece ssary role is to decide the question of jurisdiction, for that is w hat was appealed

. The district court’s ruling was in accordance with the statute, and should be affirmed. To the e xtent that th e pane l majority has reached some other conclusion, I respectfully dissent.