2019 Report: Federal Circuit Appeals from the PTAB – Summaries of Key 2018 Decisions

Introduction

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act (AIA) cases in 2014, and cases from the USPTO remain the largest contributor to the Federal Circuit’s docket. Despite the volume, average appeal pendency appears to have stabilized in 2018 at around 15 to 16 months.

Looking at outcomes for Patent Trial and Appeal Board (PTAB) cases, the Court affirmed about 75% of all decisions, remanded about 20%, and reversed only 5%. In 2017, we saw a marked decrease in the use of Rule 36 summary affirmances, but that trend reversed in 2018, where roughly 55% of affirmances saw no opinion from the Court. For the remainder of the cases, roughly 28% were resolved with non-precedential opinions, with only 17% receiving precedential decisions. For a more complete summary of statistical trends, see the middle spread of this report.

On the merits, 2018 saw several significant decisions related to PTAB practice and procedure, including two decisions from the U.S. Supreme Court. The cases we selected cover important issues, including appellate scope, standing, sovereign immunity, assignor estoppel, collateral estoppel, constitutionality, and obviousness. After most cases, we list related cases that have further clarified the law on those points.

Developing summaries and statistics, like those on the following pages, is a collaborative process. We 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