2017 Report: Federal Circuit Appeals from the PTAB – Summaries of Key 2016 Decisions

Introduction

The post-grant procedures created by the America Invents Act have been phenomenally popular. Today, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) reviews over 1,500 patents each year. But, because final written decisions from the PTAB are directly appealable to the Federal Circuit, many expected and predicted a surge in appeals (ourselves included). And that has in fact happened. Appeals from the USPTO to the Federal Circuit grew from under 150 in 2013 to over 600 in 2016—an increase of over 400% in just three years.

The Federal Circuit has affirmed nearly 80% of the PTAB’s final written decisions. That said, a growing number of remands and reversals issued by the Federal Circuit in recent months reveal its willingness to police procedural violations and legal errors committed by the PTAB. As the number of Federal Circuit decisions on final written decisions have grown, we have seen the rate of affirmance decline.

We have also seen PTAB proceedings reach a greater level of maturity and predictability— from an initial surge to a fairly stable rate of roughly 400 petition filings per quarter. We expect to see a similar maturation of appeals to the Federal Circuit. Assuming there will be roughly 700-800 appealable decisions out of the PTAB each year, we should expect a steady state of appeals to settle around 350-400 per year.

Reaching that more predictable steady state will require the appellate bar to develop a deeper understanding of the grounds upon which PTAB decisions are remanded or reversed. This report is a first step in that direction. We have summarized the outcomes of the top 10 most important Federal Circuit appeals in 2016 from the PTAB. We believe there are important insights associated with each of these decisions, and we know the appellate bar is learning from these experiences.

Developing summaries and statistics like those on the following pages takes a real team effort. We want to thank our co-authors—Byron Pickard, Pauline Pelletier, Deirdre Wells— as well as Rachel Wertheim, who provided invaluable editing. Thank you for your interest. Please feel free to reach out to either of us if you have questions or want to discuss the current state and future of Federal Circuit appeals.

Best Regards,

Jon E. Wright, Co-Chair, Appellate Practice

Michael E. Joffre, Co-Chair, Appellate Practice