In November, the Federal Circuit heard the first oral argument appeal in an inter partes review (IPR) decision in re Cuozzo Speed Technologies. As appeals of PTAB proceedings, created as part of the America Invents Act (AIA), work their way through the courts, we will continue to learn the impact of these new proceedings on the law, and what to expect in the future. Inside Counsel contacted Finnegan partner Michael J. Flibbert to discuss the future of these proceedings, including how the courts may handle the influx of cases, and issues raised as a result of this first appeal decision.
Flibbert noted that these proceedings have become “extremely popular,” with over 2000 IPR petitions filed. “[O]ver 70 percent of claims being challenged have been cancelled,” which Flibbert says “spurred others to use the process.” With the monthly filing rates accelerating, he noted he USPTO has aggressively hired administrative patent judges who are highly qualified individuals, experienced patent attorneys who know the law very well and are very skilled.” Flibbert stated, “This makes for detailed decisions that are comprehensive, but this will be more and more difficult as the caseload increases.”
According to Flibbert, the first appeal from an IPR final decision “brings up issues concerning the scope of what can be appealed, such as non-discretionary jurisdictional requirements. The Federal Circuit so far has held to the idea that you cannot appeal the decision of whether or not to institute the proceedings, you can only appeal from the final written decision.” He concludes by stating, “We need to wait and see if the Federal Circuit can review these various issues in these PTAB proceedings, aside from obviousness or prior art patentability issues.”
