Federal Circ. Sides With PTAB On Substance... And Style

July 13, 2015

Fenwick patent litigation partner Darren Donnelly was quoted in a Law360 article covering the relationship between the Federal Circuit and the Patent Trial and Appeal Board (PTAB).

According to Law360, the Federal Circuit has given significant power to the PTAB in America Invents Act review decisions, standing by PTAB’s decisions regarding validity and its broad reasonable construction rule,. Additionally, in many cases the Federal Court maintains that they do not have the power to review the PTAB’s decisions on appeal.

"[The Federal Circuit is] taking a pretty strict view of their jurisdiction," Donnelly said.

Patent owners want the Federal Circuit to institute broader appellate review of PTAB decisions because with the court’s current limited involvement, most AIA rulings have led to invalidation, Donnelly said. It appears that the court is trying to determine what Congress wanted to be appealable under the AIA, he added.

"The common theme is that the Federal Circuit views itself as a court that reviews decisions by the patent office with limited subject matter jurisdiction that is proscribed by the statute, and they've hewed to that," he said.

In Cuozzo, the first of only three precedential decisions in appeals of AIA reviews, the Federal Circuit upheld the PTAB’s invalidation of the patent and its use of the broadest reasonable interpretation (BRI) standard of claim construction.

Under the controversial BRI, patents that may have been judged valid in district courts are invalidated in AIA reviews.

"The Federal Circuit could have reined in that apparent disconnect, but they blessed the patent office construing claims in that way," Donnelly said.

The full article is available through the Law360 website (subscription required)​.​