2018 Report: Federal Circuit Appeals from the PTAB – Summaries of Key 2017 Decisions

Introduction

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the America Invents Act (AIA) spurred this explosive growth. While the total number of Federal Circuit appeals from the Patent Office declined slightly in 2017 relative to the previous year, the PTO’s Patent Trial and Appeal Board (PTAB) remains the primary contributor to the Federal Circuit’s docket.

The Federal Circuit has accumulated numerous opportunities to weigh in on the PTAB’s handling of post grant proceedings, with over 300 decisions and 150 opinions rendered through the end of 2017. This growing volume of case law has enhanced predictability, both at the Federal Circuit and at the PTAB. And increased predictability, in turn, seems likely to contribute to a stemming of the tide of decisions appealed from the PTAB.

One notable trend to emerge from the Federal Circuit’s decisions in 2017 included panels’ increasing reliance on short nonprecedential opinions to shed light on their reasoning. These concise opinions effectively replace a portion of the Rule 36 summary affirmances that had sometimes frustrated parties in the past. For a more complete summary of statistical trends, see the middle spread of this report.

In this year’s review of important decisions, we focused on what we believe are the ten most significant precedential Federal Circuit cases coming from the PTAB, most of these cases arising from the PTAB’s AIA trials. The most common theme in the Federal Circuit’s decisions was the Board’s failure to adhere to the requirements of the Administrative Procedure Act, either by failing to adequately explain its decision or by failing to provide adequate procedural safeguards to the parties. Another common theme was some push back on the Board’s application of its “broadest reasonable interpretation” standard. Finally, we discuss two significant en banc determinations.

Developing summaries and statistics like those on the following pages is a collaborative process. We want to thank our co-authors—Byron Pickard, Deirdre Wells, Kristina Caggiano Kelly, Pauline Pelletier, and William Milliken.

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