What Happens When a Prevailing Party Is Still Dissatisfied with PTAB’s Claim Construction

In SkyHawke Tech., LLC v. DECA Int’l Corp., No. 2016-1325 (Fed. Cir. July 15, 2016), the Federal Circuit limited a prevailing party’s ability to appeal claim construction issues in an inter partes reexamination.

After SkyHawke sued DECA for patent infringement, DECA requested inter partes reexamination, but SkyHawke ultimately prevailed on validity of its patent. Nonetheless, SkyHawke appealed to the Federal Circuit under 35 U.S.C. § 141 (pre-AIA), being “dissatisfied” with the means-plus-function construction and arguing the PTAB had created an erroneous prosecution history that could limit its enforcement rights. DECA moved to dismiss SkyHawke’s appeal for lack of jurisdiction.

The Federal Circuit agreed with DECA, explaining that a prevailing party cannot appeal the underlying issues of a judgment when the judgment itself was not being appealed. It found that SkyHawke could appeal a later district court construction since issue preclusion would not apply. Further, the Court saw no material difference in Section 141’s use of “dissatisfied” that justified a distinction between district court appeals and PTAB appeals, noting that the CCPA had already determined that appellate courts “review [ ] judgments, not statements in opinions.”