The PTAB Front and Center at the Federal Circuit and the Supreme Court: The First Year of Appellate Review (Live MBHB Webinar)

Wed., May 18, 2016 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx

The new post-grant proceedings established by the America Invents Act have been more utilized than most people anticipated. But just how is the Patent Trial and Appeal Board (PTAB) doing handling these proceedings? To make that assessment, it is useful to look to the appellate courts. The court with exclusive jurisdiction over appeals from the PTAB’s decisions, the U.S. Court of Appeals for the Federal Circuit, decided its first inter-partes review (IPR) appeal, In re Cuozzo Speed Techs., LLC, on February 4, 2015. Since that time, that Court has decided over 75 IPR and covered business method (CBM) patent appeals, and these numbers will only continue to grow. In most cases, the Federal Circuit has affirmed the PTAB, with over 50% of the cases disposed of by a Rule 36 affirmance—an order in which the Federal Circuit does not provide a written opinion explaining why the PTAB’s judgment is affirmed.

Nevertheless, the Federal Circuit does not rubber stamp PTAB judgments, and there has been significant cases in which the Federal Circuit has vacated and remanded the final written decision of the PTAB. Moreover, the Supreme Court granted a petition for certiorari in the Cuozzo case, with oral arguments set for April 25, 2016. The High Court will address two of the more controversial aspects of these PTAB proceedings – aspects which the Federal Circuit has affirmed: (1) the use of the broadest reasonable interpretation standard in construing claims, and (2) the final and non-appealable nature of the decision to institute a PTAB trial. For anyone facing an adverse ruling from the Patent Office, the outcome of the Supreme Court’s Cuozzo case will be critical.

Join us as we discuss the following topics:

  • A review of the PTAB cases in which the Federal Circuit has vacated and remanded in order to determine best practices for appealing an adverse final written decision;
  • A look at the application of the “Broadest Reasonable Interpretation” standard for claim construction, and whether it is really that different from the “Plain and Ordinary Meaning” standard used by District Courts;
  • A discussion of the Federal Circuit’s refusal to consider issues related to a decision to institute post-grant review proceedings, and whether it is consistent with the statute; and
  • An analysis of the arguments presented to the Supreme Court in the Cuozzo case, and a prediction of the outcome based on the oral hearing.


Presenter(s): MBHB partners Andrew Williams, Ph.D. and James Lovsin

Access an archived audio version of this webinar here.


 NOTE: MCLE credit is not available for this archived recording.


McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.