Appellate Review of the AIA’s New Patent-Challenge Proceedings

This article by Finnegan attorney Michael J. Flibbert examines appellate considerations when challenging patents before the new Patent Trial and Appeal Board (PTAB). The Leahy-Smith America Invents Act (AIA) established the PTAB as a new administrative body for disputing patents at the U.S. Patent and Trademark Office (USPTO). The PTAB is the forum for new post-grant review (PGR) and inter partes review (IPR) proceedings, also introduced under the AIA.

The author discusses the advantages of PGR and IPR over district court litigation, but also cautions that challengers should consider strict PTAB estoppel provisions that prevent a petitioner from presenting before the USPTO, a district court, or the ITC "any ground that the petitioner raised or could have raised during a PGR or IPR."

The U.S. Court of Appeals for the Federal Circuit has exclusive jurisdiction over appeals to PTAB decisions. Flibbert notes that the Federal Circuit "rarely considers new arguments on appeal," and suggests petitioners be mindful to include all issues and arguments in a PTAB petition. On appeal, arguments should be targeted, as appeals are intended to "show reversible error in the PTAB's decision, not to retry the case."

In addition, the author mentions that Federal Circuit standard of review of PGR and IPR proceedings falls under the Administrative Procedure Act (APA). Therefore, in Federal Circuit appeals of USPTO actions "factual issues will receive far more deferential review than legal ones."

Flibbert concludes that while the new PGR and IPR proceedings present a "quick, cost-effective" alternative to district court litigation, challengers should pursue these new AIA post-grant proceedings "with a careful eye to future appellate review at the Federal Circuit."