PTAB Reversals at Federal Circuit: How Counsel Snag Rare Wins

Managing Intellectual Property interviewed Finnegan partner Michael Flibbert to discuss the challenges in achieving reversals from the U.S. Court of Appeals for the Federal Circuit in appeals from the Patent Trial and Appeal Board (PTAB). As of April 30, 2021, nearly 75% of PTAB appeals were affirmed by the Federal Circuit, while only 13% of appeals were reversed or vacated on every issue.

One approach to securing a reversal at the Federal Circuit is to raise claim construction arguments. Mike says the court typically examines claim language and the specification because these factors can be more directly applicable to disputes over claim construction. He also notes that file histories can be important because the court may give weight to an applicant’s history of arguing that certain terms have certain meanings, particularly if the claim terms came up during prosecution.

He adds that even if the court agreed there was a claim construction error, it could still affirm the PTAB’s decision if it decided the mistake wouldn’t affect the outcome for the appellant. For this reason, it is important that any claim construction arguments are relevant to the case.

Read “PTAB Reversals at Federal Circuit: How Counsel Snag Rare Wins”