Introduction – Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live oral arguments towards the end of the year before returning to telephonic arguments due to the rise of various COVID-19 variants.

Turning to the statistics, appeals from the U.S. Patent and Trademark Office (PTO) dipped for the second straight year in FY21. And due to a spike in appeals from the Court of Federal Claims, District Court appeals are now the third most common for the Federal Circuit. The number of appeals from the PTO reached an all-time high in 2019 at more than 650 appeals. In 2020, that number was less than 550 appeals, while in 2021, the number dipped further to just over 500 appeals. Pendency for Patent Trial and Appeal Board (PTAB) appeals also dipped in 2021 to 14.7 months. Appellate results continued to strongly favor appellees.

Overall in 2021, 77% of PTAB/Leahy-Smith America Invents Act (AIA) decisions were affirmed, 16% were remanded, 5% were reversed, and 2% were dismissed. The affirmance rate has checked in between 73% and 79% for each of the last six years. Of particular note, just 15% of the Federal Circuit’s PTAB/AIA appeal decisions in 2021 resulted in precedential opinions, the smallest share ever recorded in the AIA era. Nonprecedential opinions, on the other hand, made up 49% of the court’s decisions, the largest share in the AIA era. Rule 36 summary affirmances, correspondingly, dipped to their lowest level since AIA appeals began, at only 36%.

On the merits, we cover two U.S. Supreme Court decisions. In Arthrex, the Supreme Court largely affirmed the Federal Circuit’s decision that Administrative Patent Judges were unconstitutionally appointed, but it tweaked the Federal Circuit’s remedy. And in Minerva Surgical, the Court held that assignor estoppel was still a valid doctrine, but more limited in scope than the Federal Circuit recognized.

From the Federal Circuit, we have chosen a mix of cases from 2021 dealing with topics like printed publication status, non-obviousness for design patents, prosecution laches and other estoppels, and agency preclusion. We also look at cases addressing intervening rights in PTAB cases, and whether forum selection clauses can bar PTAB proceedings. Finally, we look at challenges parties have made to the PTAB’s discretionary denial practices under the now well-known NHK-Fintiv standard.

The summaries and statistics in this review are the results of a collaborative process. We thank our co-authors—Deirdre Wells, Kristina Caggiano Kelly, Pauline Pelletier, Trey Powers, William Milliken, Anna Phillips, Kathleen Wills, and Jamie Dohopolski. We also thank Patrick Murray for his data and statistics contributions.

We appreciate your interest in this report, and we encourage you to see our firm’s upcoming companion report “2021 PTAB Year in Review: Analysis & Trends,” which is also available at sternekessler.com or by request. Please feel free to reach out to either of us if you have questions about this report, wish to discuss the future of Federal Circuit appeals, and/or if you would like hard copies of either of our 2021 “year in review” reports.

This article appeared in the Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions report.