Patent Appeals

Patent appeals flow through two main channels: (1) PROSECUTION APPEALS — when an examiner rejects patent claims, the applicant can appeal within the USPTO to the Patent Trial and Appeal Board (PTAB) through an ex parte appeal (35 U.S.C. § 134(a)). If the PTAB affirms the rejection, the applicant can appeal to the Federal Circuit Court of Appeals (35 U.S.C. § 141) or file a civil action in the Eastern District of Virginia (35 U.S.C. § 145). (2) PTAB TRIAL APPEALS — after a PTAB final written decision in an IPR, PGR, or CBM proceeding, either party can appeal to the Federal Circuit (35 U.S.C. § 141(c)). (3) DISTRICT COURT APPEALS — final judgments in patent infringement cases are appealed to the Federal Circuit, which has exclusive appellate jurisdiction over patent cases under 28 U.S.C. § 1295(a)(1).

The Federal Circuit applies different standards depending on the issue: CLAIM CONSTRUCTION — reviewed de novo (fresh, no deference to lower court) for purely legal questions; underlying factual findings reviewed for clear error (Teva Pharmaceuticals v. Sandoz, S.Ct. 2015). FACTUAL FINDINGS — reviewed for clear error when made by a judge, or under the substantial evidence standard when made by a jury. PTAB FACTUAL FINDINGS — reviewed under the substantial evidence standard (APA). PTAB LEGAL CONCLUSIONS — reviewed de novo. USPTO EXAMINATION DECISIONS — reviewed for compliance with the APA (arbitrary and capricious standard). INJUNCTIONS — reviewed for abuse of discretion. OBVIOUSNESS is a legal question reviewed de novo, with underlying factual findings reviewed for clear error.

An ex parte appeal to the PTAB is filed when an applicant's claims have received two rejections — typically after a final rejection. The process: (1) FILE NOTICE OF APPEAL — $860 (large entity) to the PTAB within the shortened statutory period after final rejection; (2) FILE APPEAL BRIEF — within 2 months of notice; $1,000 fee for large entity; must include claim groupings, claim construction arguments, arguments against each rejection; (3) EXAMINER'S ANSWER — USPTO examiner responds within 2 months, defending rejections; (4) REPLY BRIEF — optional, applicant has 2 months to reply; (5) DECISION — PTAB issues written decision: affirm all, reverse all, or affirm-in-part/reverse-in-part; may also enter new grounds of rejection. If PTAB affirms, applicant can appeal to Federal Circuit or file RCE to re-open prosecution.

After a PTAB final written decision in an IPR proceeding, either party (patent owner or petitioner) can appeal to the Federal Circuit within 63 days. STANDING — both parties have standing to appeal; no 'prevailing party' limitation. SCOPE — the Federal Circuit reviews: (1) whether the PTAB properly applied BRI (broadest reasonable interpretation) or Phillips claim construction; (2) whether the PTAB's findings on patentability are supported by substantial evidence; (3) whether PTAB complied with APA procedural requirements; (4) constitutional questions (Oil States Energy Services v. Greene's Energy Group, S.Ct. 2018: IPR is constitutional — Congress can assign patent validity questions to the executive branch). The Federal Circuit does NOT hear new evidence — only reviews the record before the PTAB.

An en banc proceeding at the Federal Circuit convenes all (or most) active judges — typically 12 — rather than the usual three-judge panel. En banc review is rare and reserved for cases involving conflicts between panel decisions, particularly important legal questions, or overruling prior precedent. Notable patent en banc decisions include: Egyptian Goddess v. Swisa (2008, en banc — design patent ordinary observer standard); Akamai v. Limelight (2015, en banc — divided infringement standard); Therasense v. Becton Dickinson (2011, en banc — inequitable conduct standard raised to but-for materiality + specific intent); SCA Hygiene v. First Quality (2016, en banc — laches in patent cases). To request en banc rehearing, a party petitions within 45 days of panel decision; petitions are granted infrequently (roughly 3–5% of petitions).