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-JCCIDD, Judge James C. Cacheris.

______________________ 

Decided: February 10, 2016

______________________ 

 ROBERT M. LOEB, Orrick, Herrington & Sutcliffe LLP, 

Washington, DC, argued for plaintiff-appellant. Also 

represented by ERIC A. SHUMSKY, JEREMY PETERMAN;

INDRA NEEL CHATTERJEE, Menlo Park, CA; ANDREW D.

SILVERMAN, New York, NY.
2 SYNOPSYS, INC. v. LEE

 MELISSA N. PATTERSON, Appellate Staff, Civil Division, United States Department of Justice, Washington, 

DC, argued for defendants-appellees Michelle K. Lee, 

United States Patent and Trademark Office. Also represented by BENJAMIN C. MIZER, DANA J. BOENTE, MARK R.

FREEMAN; DAVID MOSKOWITZ, Office of the United States 

Attorney for the Eastern District of Virginia, Alexandria, 

VA; NATHAN K. KELLEY, JAMIE LYNNE SIMPSON, SCOTT 

WEIDENFELLER, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA.

 ROBERT ALLEN LONG, JR., Covington & Burling LLP, 

Washington, DC, argued for defendant-appellee Mentor 

Graphics Corporation. Also represented by KEVIN F. KING;

BRADLEY CHARLES WRIGHT, Banner & Witcoff, Ltd., 

Washington, DC.

______________________ 

Before NEWMAN, DYK, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK. 

Dissenting opinion filed by Circuit Judge NEWMAN. 

DYK, 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 
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 regulation 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 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 effectual relief whatever’ in 
4 SYNOPSYS, INC. v. LEE

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 companion 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 Procedure § 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 Appellant 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
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-JCCIDD, Judge James C. Cacheris.

______________________ 

NEWMAN, Circuit Judge, dissenting.

Our Nation’s patent system is a foundational aspect of 

our republic. As the complexity of government progressed, 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 America 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 
2 SYNOPSYS, INC. v. LEE

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 necessary 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.