Appellate Review Of Patent Trial And Appeal Board Decisions

Given the statutory mandate that post-grant proceedings before the United States Patent and Trademark Office's ("USPTO") newly instituted Patent Trial and Appeal Board ("PTAB") conclude within one year of institution of the patent's review, appeals from PTAB decisions, and decisions in those appeals, will become increasingly routine. Indeed, statistics show that, whether an inter partes review ("IPR"), covered business method ("CBM") review, or post-grant review ("PGR"), PTAB proceedings are regularly being appealed. Currently, at least 60 percent of PTAB final written decisions have been appealed by one or both parties. All of these appeals will be heard by the United States Court of Appeals for the Federal Circuit. In the America Invents Act that created these new proceedings, Congress granted the Federal Circuit exclusive jurisdiction over appeals from IPRs, CBM reviews, and PGRs.1

Because the result of any post-grant proceeding is likely to be appealed, it is important to understand in advance how to perfect such an appeal and what an appeal to the Federal Circuit entails. Although IPR, CBM review, and PGR are trial-like proceedings, an appeal from these proceedings differs in many significant respects from an appeal of a district court decision. This Commentary provides an overview of the process of appealing a final written decision in a PTAB proceeding. Perfecting an appeal requires an understanding of certain deadlines, which may change if a request for rehearing is filed with the PTAB, as well as an understanding of the different filings that must be made in several different venues.2 This Commentary also addresses the current state of Federal Circuit review in PTAB appeals thus far.

The Deadlines for Filing a Request for Rehearing and a Notice of Appeal

The first important deadline after the PTAB issues a final written decision is the deadline for filing a request for rehearing of the decision. A request for rehearing is not an appeal; instead, it provides a party dissatisfied with the final written decision an opportunity to ask the PTAB to reconsider its decision in view of matters that the PTAB may have misapprehended or overlooked.3 The request for rehearing must be filed within 30 days of the date on which the PTAB issued the final written decision, and the party requesting rehearing does not need to seek prior authorization from the PTAB to file the request.4 Within the allotted 15 pages, the party seeking rehearing "must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply."5 "The burden of showing a decision should be modified lies with the party challenging the decision."6

If a request for rehearing is not filed, then a notice of appeal must be filed within 63 days from when the PTAB issued its final written decision.7 If a request for rehearing is filed, however, the deadline for filing a notice of appeal depends on when that request is decided. Instead of the 63-day appeal period being triggered upon issuance of the...