June 24, 2015

PTAB vs. Federal Circuit Update

By Matthew L. Cutler, Principal

To date, the Federal Circuit has weighed in on 15 PTAB decisions from inter partes review proceedings. In 3 of the 15 decisions, the Federal Circuit has issued a substantive opinion:

1) In re Cuozzo Speed Technologies – Affirming the Broadest Reasonable Interpretation claim construction standard;

2) Belden Inc. v. Berk-Tek LLC – Non-precedential decision; and

3) Microsoft Corp. v. Proxyconn, Inc. – First reversal of a PTAB decision, generally because the Board’s claim construction rulings were not reasonable because they did not follow general claim construction principles.

In 12 of those 15 decisions, the Federal Circuit has simply rubber-stamped the Board’s decision via a one sentence Rule 36 Judgment. This is, apparently, the manner in which the Federal Circuit is going to manage its anticipated spike in work due to appeals from decisions of the PTAB. This is a frustrating practice, however, as the growth of the law is stunted by the Federal Circuit’s refusal to address the issues raised in these appeals in any substantive way:

4) SoftView LLC v. Kyocera Corp. – Rule 36 Judgment

5) Clearlamp, LLC v. LKQ Corp. – Rule 36 Judgment

6) Board of Trustees v. Micron Technology, Inc. – Rule 36 Judgment

7) In re: Zillow, Inc. – Rule 36 Judgment

8) Helferich Patent Licensing v. CBS Interactive – Rule 36 Judgment

9) Luv N’Care Ltd. v. Munchkin, Inc. – Rule 36 Judgment

10) Emcore Corp. v. Nichia Corp. – Rule 36 Judgment

11) Mobile Scanning Technologies v. Motorola Solutions, Inc. – Rule 36 Judgment

12) In re Continental Automotive Systems – Rule 36 Judgment

13) Prolitec, Inc. v. Scentair Technologies, Inc. – Rule 36 Judgment

14) Neste Oil Oyj v. Reg Synthetic Fuels, LLC – Rule 36 Judgment

15) Bernina Int’l v. Handi Quilter – Rule 36 Judgment

We will keep this list updated over time.