Winning at the Federal Circuit

Winning at the Federal Circuit

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It is not easy to win on appeal at the Federal Circuit, and even more difficult to win on appeal when that appeal emanates from the Patent Trial and Appeal Board (PTAB). Only when the PTAB decision is unsupported by substantial evidence will the decision be reversed. And in more than 50% of PTAB decisions receive a Rule 36 summary affirmance without an opinion.

Indeed, few issues are likely to gain traction in an appeal to the Federal Circuit from the PTAB, including matters relating to claim construction, motivation to combine references, and procedural failings by the PTAB panel (i.e., failure to explain reasoning for a decision, evidentiary failures).

This panel will: (1) Take a look at an illustrative sampling of cases and issues that are more likely to lead to a full precedential opinion by the Federal Circuit. (2) Discuss why the PTAB under the Vidal Administration will likely result in more institutions, and in particular more institutions for pharmaceutical companies and the life sciences industry, which will likely lead to high-profile appeals relating to important drugs. (3) The importance of amicus support for your appeal, and how to present your case to industry organizations to maximize the likelihood of gaining support.

Materials*

Partial Win for VLSI Against Intel as CAFC Reverses PTAB on One Claim of Integrated Circuit Patent

PTAB Obviousness Ruling Reversed by CAFC, Clarifying ‘Reasonable Expectation of Success’ Standard

CAFC Reverses PTAB Obviousness Finding, Clarifying Concepts of ‘Teaching Away’ and ‘Commercial Success’

Can the Federal Circuit use Rule 36 Affirmances in PTAB Appeals?

* A Note on Materials: For live, in-person programs we apply for MCLE in Virginia, as well as other jurisdictions (see the MCLE tab in the navigation bar above). MCLE regulations require substantive writing on the topic covered during the presentation. The materials provided, often published by IPWatchdog.com authors and contributors, relate to the topic but are not intended to pigeonhole guest speakers in any way. They are intended to be informative and elucidate the issues that will be discussed, although not necessarily represent the point of view that will be taken by any particular panelist. To date, the articles we have selected have always been sufficient to satisfy MCLE authorities.