Federal Circuit PTAB Appeal Statistics – October 2016

Authors: David C. SeastrunkDaniel F. Klodowski, Elliot C. Cook
Editor: Jason E. Stach

Through October 1, 2016, the Federal Circuit decided 120 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 95 (79.17%) of the cases, and reversed or vacated the PTAB on every issue in 9 (7.50%) of the cases. A mixed outcome on appeal, where at least one issue was affirmed and at least one issue was vacated or reversed, occurred in 11 (9.17%) of the cases.


The court dismissed 5 (4.17%) of the cases without rendering a decision on the merits. Dismissals may occur, for example, where the Federal Circuit determines that it does not have jurisdiction to hear a case, such as in an appeal from a PTAB institution decision. As the Supreme Court established in Cuozzo Speed Techs., LLC v. Lee, the Federal Circuit is barred from considering appeals from institution decisions under 35 U.S.C. § 314(d). Dismissals may also result from settlements among the parties to the appeal.

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IPR and CBM Statistics for Final Written Decisions Issued in August 2016

Authors: Daniel F. Klodowski, Elliot C. CookDavid C. Seastrunk
Editor: Aaron L. Parker

In the 36 Final Written Decisions issued by the Patent Trial and Appeal Board in August, the Board cancelled 468 (68.42%) of the instituted claims and declined to cancel 213 (31.14%) of the instituted claims. Patent owners conceded 3 (0.44%) of the instituted claims through motions to amend or disclaimer.


On a per-case basis, no instituted or substitute claims survived in 22 (61.11%) of the decisions, all instituted claims survived in 7 (19.44%) of the decisions, and a mixed outcome occurred in 7 (19.44%) of the decisions. A mixed outcome occurs where at least one instituted or substitute claim remains patentable, and at least one is cancelled, in a Final Written Decision.

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Federal Circuit Provides Two-Part Analysis for Determining Reviewability of PTAB Institution Decisions

Author: Anthony A. Hartmann
Editor: James D. Stein

The Federal Circuit in Husky Injection Molding Systems, Inc. v. Athena Automation Ltd., No. 2015-1726 (Fed. Cir. Sep. 23, 2016) recently dismissed Husky’s appeal from a final written decision in IPR. The court found it “lack[ed] jurisdiction to review the Board’s determination on whether assignor estoppel precludes it from instituting inter partes review.” Slip op. at 19.

Assignor estoppel generally prevents an assignor of a patent from later asserting that the patent is invalid. Here, a co-inventor of the patent at issue was Husky’s former owner and president, who had assigned the patent to Husky. After assigning the patent, he formed Petitioner Athena and alleged unpatentability of the patent in IPR. The Board found that assignor estoppel does not apply in an IPR, instituted review, and found certain claims unpatentable.

On appeal to the Federal Circuit, after reviewing the prevailing case law, the court identified a two-part framework to determine whether it may review a challenge to an institution decision:

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