July 15, 2016

I Win? No Fair!

By Bryan K. Wheelock, Principal

In SkyHawke Technologies, LLC v, Deca International Corp., [2016-1325, 2016,1326] (July 15, 2015), the Federal Circuit granted Deca’s motion to dismiss SkyHawke’s appeal of a PTAB Decision in a reexamination on the grounds that SkyHawke was the prevailing party.

Even though SkyHawke “won” the reexamination, SkyHawke did not like the PTAB’s construction of its claim, and wanted the Federal Circuit to correct the PTAB’s claim construction.  The Federal Circuit observed that Courts of appeals employ a prudential rule that the prevailing party in a lower tribunal cannot ordinarily seek relief in the appellate court.  Even if the prevailing party alleges some adverse impact from the lower tribunal’s opinions or rulings leading to an ultimately favorable judgment, the matter is generally not proper for review.

The Federal Circuit found that SkyHawke’s appeal fits cleanly into this prudential prohibition.  The Federal Circuit noted that the PTAB’s decision is not issue-preclusive precisely because SkyHawke cannot appeal it.

The Federal Circuit said that SkyHawke will have the opportunity to argue its preferred claim construction to the district court, and SkyHawke can appeal an unfavorable claim construction should that situation arise.  With the present appeal, SkyHawke is merely trying to preempt an unfavorable outcome that may or may not arise in the future and, if it does arise, is readily appealable at that time. Therefore, the Federal Circuit found no reason to deviate from the standard rule counseling against our review of prevailing party appeals.