August 15, 2016
Partner John F. Ward was quoted in the Law360 article “4 Fights The Federal Circuit Picked With PTAB This Year.” The Patent Trial and Appeal Board (PTAB) was created by the America Invents Act in 2012 to manage patent challenges in administrative proceedings at the U.S. Patent and Trademark Office. According to the article, PTAB proceedings have proven to be extraordinarily popular, particularly inter partes reviews, a procedure designed to allow parties to challenge the validity of patent claims.
In the first half of 2016, the Federal Circuit affirmed 80 percent of PTAB decisions. The article dives in to the lessons to be learned from the remaining 20 percent where the Federal Circuit reversed, vacated or issued a mixed ruling. “These are road posts the Federal Circuit has provided. You’re still going to have a hard time, but there are ways to get reversals now. You’re starting to see some, and I suspect you’ll see more,” said Mr. Ward.
Four themes of Federal Circuit appeals were:
- The PTAB did not clearly explain its decision.
- The PTAB allowed theories and definitions to be changed midstream.
- Each side was not given equal opportunity to make its case.
- Using an overly broad interpretation of a key term.
To read the full article, please click here. Access may require a subscription.