Appeals

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PTAB Remand Not Always Deja Vu

When appealing a decision of an administrative agency such as the Patent Trial & Appeal Board (PTAB), reversal is quite rare. This is because rarely will a pure question of law (with no facts in dispute) control the outcome of such an appeal  Rather, a typical PTAB appeal to the Federal Circuit will dispute whether the agency record fully supports its decision, or is complete with respect to required fact finding. In these cases vacatur and remand are appropriate.

Since 2016, as the volume of appeals from the PTAB has increased, so to has the number of remands to the agency. Where a PTAB record is incomplete, one might expect the agency to simply remedy the shortcoming on remand to maintain its earlier decision. However, two years of recent statistics reflect a more balanced outcome.
Continue Reading PTAB Remands from the CAFC: Mixed Outcomes

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week.
Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC

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Next Week: PTAB BoardSide Chat & PatentsPostgrant.Com Webinar

Next week, brings back-to-back programs on PTAB appeals, both with a unique focus.

First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit…

WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent

The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB).

For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b).  The Federal Circuit announced last Friday that it can now consider this precedent, post WiFi One.Continue Reading CAFC to Consider Popular IPR Time Bar Exception

January Webinar to Focus on PTAB Appeals to the CAFC

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. With the Federal Circuit’s affirmance rate for PTAB appeals hovering at around…

WiFi One Touchstone: Closely Related to Patentability Determination?

As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom (here) that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal.
Continue Reading CAFC Softens PTAB Appeal Bar

Remand or Reversal?

Appeals from the Patent Trial & Appeal Board (PTAB) have now become a major component of the Federal Circuit’s docket. Given the deferential “substantial evidence” standard accorded PTAB decisions, upward of 60% of such appeals are simply affirmed — many without further comment. The remainder of PTAB appeals  include a mixed bag of partial affirmances, reversal and/or remands. While both reversal and remand outcomes are appellate “wins” for Patent Owners, a remand for a Patent Owner is often a winning of the Federal Circuit appeal battle only to lose the PTAB war.
Continue Reading PTAB Revisited: Avoiding Federal Circuit Remands

PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent

As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.”

The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the USPTO assesses indefiniteness pursuant to the Federal Circuit’s guidance in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

While some have expressed shock at the PTAB pronouncing a different standard than that expressed in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), this is just a restatement of the Board’s status quo since the Packard decision. (It is not exactly shocking that the Board is following the guidance of its reviewing court).

The more interesting issue is whether the Court’s reasoning in Packard is equally applicable to AIA trial proceedings?
Continue Reading New PTAB Precedent Endorses In re Packard….But For How Long?