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Articles

Lessons From Fed. Circ.’s 1st Wave of Post-Grant Appeals

December 16, 2015

Articles

Lessons From Fed. Circ.’s 1st Wave of Post-Grant Appeals

December 16, 2015

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This year has brought the first wave of Federal Circuit decisions in appeals from final written decisions in inter partes review and covered business method proceedings. The overarching trend has been deference. In its first 55 post-grant appeals, the Federal Circuit has affirmed or dismissed 89 percent of them, with most being summary affirmances without opinion. These statistics are largely expected since the Federal Circuit’s affirmance rate for patent office appeals has been about 90 percent for the past few years. Post-grant proceedings have proven no different. But there are a few areas, most involving fundamental legal issues, in which the Federal Circuit has addressed interesting new issues that will impact post-grant cases for many years to come.

Challenges to the PTAB’s Decision to Institute

Several parties have challenged the Patent Trial and Appeal Board’s authority to institute an IPR or CBM in the first place, as this often presents more of a legal issue than case-specific quibbles over prior art. The Federal Circuit has largely rejected such challenges, finding that the appeal bar in 35 U.S.C. § 314(d) deprives it of jurisdiction to consider most of them. The foundational decision was St. Jude Medical v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014), which held the court had no jurisdiction to review the PTAB’s refusal to institute an IPR. Patent owners who suffered an adverse final written decision have tried to distinguish St. Jude, arguing that there was no final written decision there (as the proceeding was never instituted), while the institution errors in their cases merged with the appealable final written decision.

This article first appeared on law360.com on December 16, 2015 and can be read in full here.

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