Federal Circuit Falling Behind As PTAB Appeals Stack Up

At the 2016 AIPLA Annual Meeting, Finnegan attorney Erika H. Arner led a discussion on recent decisions on PTAB cases at the Federal Circuit, also addressing the backlog of PTAB appeals at the Federal Circuit. She said, "We have some cases that have been ready for calendar for several months that have not been calendared yet...Usually it is pretty quick to your argument and then a few months usually for an opinion. We have had a couple take more than a year after argument but typically a year is a good rule of thumb for an appeal at the Federal Circuit."

As of October, there had been 124 Federal Circuit rulings on appeals of final written decisions, with an affirmance rate of 80%. Seventy percent of affirmances were Rule 36 judgments. Arner said, "These trials are new and many of these cases involve issues that are unsettled in the law, so for the court to affirm them without any reasoning makes it a little bit hard to clarify places that maybe need it. The Rule 36s are a little bit unfortunate but I don’t think that will change, given the court’s work load and the number of trials that are at the PTAB."

Arner went on to discuss the DataTreasury v. Fidelity case, a significant covered business method (CBM) case that resulted in a Rule 36 decision in favor of Fidelity—Arner represented Fidelity. She said, "What is interesting about the case is that these are the patents that Congress called out by name and number when they wrote the covered business method provision of the AIA. The DataTreasury patents are what Congress called the most notorious business method patents. So it’s significant that Congress saw this problem, they addressed it with the CBM provision, and the Patent Office and now the Federal Circuit carried out Congress’s intent to cancel those patents." CBMs are a small percentage of cases at the PTAB, as they address a very specific subset of patents.