Basics and Strategies for Appeals from PTO Post-Grant Decisions

November 13, 2013

The Federal Circuit is facing a coming explosion of appeals from the Patent Office next year – possibly a 300 percent (or more) increase from the 400-plus inter partes reviews that were started in the last year, to a back-log of reexaminations that was already very large. But Federal Circuit appeals are very different creatures than Patent Office proceedings, and they need to be looked at in a special way – “prosecution think” most definitely does not apply.

In this presentation, a member of Fish’s Appellate Practice group discussed the basics of Patent Office appeals, and strategies for winning those appeals. John Dragseth has led the briefing on or assisted others with over 100 patent appeals to the Federal Circuit and Supreme Court, and he will share what he has learned from their experiences.

John Dragseth, Principal, Twin Cities
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Webinar Summary

  • Appeals from post grant final decisions are just beginning to reach the Federal Circuit
    • Likely about 20-30 post grant appeals each month in the next year or two
      • Represents a 50% increase in number of ALL appeals heard by Federal Circuit
  • Steps to appeal a post grant final decision
    • All spelled out in 35 USC 141, 37 CFR Part 90, and Fed. Cir. Rules
    • All told, appeals take about a year from notice of appeal to decision
    • Motions – can file any desired motion, no specific rules, just make sure it makes sense
  • Unique issues in PTO post grant appeals
    • For inter partes proceedings, PTO Solicitor decides in which appeals it wants to become involved (e.g., legally important cases)
    • Highly deferential standard of review
    • Chenery doctrine, as a practical matter, often does not apply – Fed. Cir. sometimes affirms on grounds not advanced below
      • Consequently, need to build the record with foresight of what matter arise down the road
  • PTAB Strategy considerations
    • Go all-in early – Petitioner and Patent Owner each has essentially one shot at influencing the Board, and making the record for appeal
    • Ideally should staff a team of practitioners: patent office expert, litigation expert, appeals expert
    • Preserve all of your best arguments, but recognize that Board is likely to designate all but one or two of them as “redundant”
    • Develop interesting legal theories
  • Cir. Strategy considerations
    • Get fresh eyes – involve someone who wasn’t involved at PTAB to re-evaluate arguments and how to cast them
    • If appellant, strive to cast legal issues as novel, important, uninteresting and/or unsettled
    • If appellee, strive to cast legal issues as well-settled, mundane, etc.
    • Don’t over-rely on claim construction being de novo
    • Assume your audience (i.e., the panel) is smart but not technical
    • Loosen up – don’t be a prosecutor
    • Be clear – clarity wins cases
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