Lessons from the First Wave of Post-Grant Appeals

February 10, 2016

2015 brought the first wave of Federal Circuit decisions in appeals from final written decisions in inter partes review and covered business method proceedings.  In its first 55 post-grant appeals, the Federal Circuit affirmed or dismissed 89%, with most being summary affirmances without opinion.

Fish Principals John Dragseth and Craig Countryman, discussed the Federal Circuit’s record on PTAB post-grant appeals and the fundamental legal issues that will impact post-grant cases in the future. Topics included:

  • Challenges to the PTAB’s decision to institute
  • Claim construction
  • Obviousness
  • Procedural issues


John Dragseth, Principal
Craig Countryman, Principal
Download Presentation Slides
Webinar Summary
  • Statistics
    • 301 CBM/IPR currently appeals pending
    • Fed Cir uses Rule 36 to summarily affirm: more likely to get R36 decision in appeals of PTO decisions
    • IPR/CBM: 92.8% affirmance rate, 56.6% Rule 36, reversal 7.2%
  • Timeline
    • Takes around a year from the notice to the decision in CBM/IPR cases
  • Challenging Institution Decisions
    • No appeal from institution decision/denial of institution. St. Jude v. Volcano
    • Institution-related decisions are not appealable even at the end of the IPR case. In re Cuozzo Speed Techs.
      • The court hinted that maybe mandamus would be available (which is doubtful)
    • Fed Cir held that it can review challenges to Board’s “power to act” even if decided at the institution stage. Versata Dev. Group v. SAP Am.
      • Later cases made it clear that Versata is really specific to the CBM context
    • Cuozzo pending at SCOTUS
      • What’s “broadest reasonable interpretation?”
      • What the Article III court can review wrt institution decisions?
        • Cuozzo tries to distinguish between the interlocutory appeal and final decision, section 314 bars only interlocutory appeals
    • Another consideration lurking in the ground is unwillingness of the courts to revive the claims after they are invalidated in the PTO
  • Stays in District Court
    • Various factors, including stage of litigation, whether it will simplify and streamline the issues, whether it will cause undue prejudice or a clear tactical disadvantage
    • Other considerations: renew the motion after the institution, stays are easier to obtain for a CBM, Fed Cir can immediately review decision to stay a case pending a CBM but only after the institution of the proceeding
    • To have better chances with staying the litigation – move on all claims and all patents, file IPR early, think about renewing the motion after institution, consider giving up defenses to obtain the stay
  • Broadest Reasonable Interpretation (BRI)
    • This is not the Phillips standard of claim construction
    • Rationale – this standard encourages the applicant to amend for clarity
    • Standard – ordinary meaning unless that is inconsistent with the specification
    • Cuozzo at SCOTUS
      • Cuozzo wants to say that no one amends in the IPR as a practical matter, but expressly they argue that the proceeding is not set up to freely amend and that PTO rules to contrary get no weight
      • Expecting decision by around June
  • Obviousness
    • Heavily fact dependent, so as a practical matter it is hard to challenge the obviousness decision
    •  But there are a couple of situations
      • The board makes a legal error – Ariosa Diagnostics
      • The Fed Cir sometimes is willing to invalidate dependent claims where the Board splits the baby and lets some claims through – Belden Inc.
    • Suggestions for maximizing your chances
      • Look for legal mistakes – misunderstanding of law by an expert, misapplication of law by the board
  • Top Pending Cases to Watch
    • Harmonic
      • Challenge of Board’s decision to deny institution to the ground deemed redundant
      • Petitioner is unhappy because the money for the petition is paid and they expect their ground to be taken into account
    • Blue Calypso
      • Mixing and matching embodiments to sustain 102 rejection, standard for “printed publication”
    •  In re Aqua Products
      • Burden of proof for proposed substitute claims
      • Decided: the court said that the board can put the burden on a patentee to prove that the claim amendments are patentable over the prior art
    • SAS
      • Whether the patent office can institute on a subset of claims
    • Pride Mobility
      • Shifting of burdens and potential unfairness
    • PPC Broadband
      • Distinction between BRI and Phillips
  • Top Open Issues
    • Joinders of claims after one-year limit
    • Unfairness of truncated proceedings
    • Real-party in interest requirements – how do you get these reviewed?
    • Chenery issues – the doctrine that says that the court reviews the decision of board, the court does not come up with other reasons why the board can be right or wrong; Fed Cir ignores Chenery a lot
  • IPR Appeal Tips
    • At PTAB
      • Get it all early to PTAB and marshal all evidence
      • Preserve your arguments – waiver issue
      • Consider getting Solicitor involved if you are an appellant
    • On Appeal
      • Get fresh eyes for appeal, do not over-rely on claim construction arguments
      • Do not be a prosecutor, need to explain why the board is wrong, need a theory and justify it
For audio-only (MP3 format), click here to launch in a new window, or right-click and choose “Save link/target as” to download to your computer.

< Main Webinar Page