The prevailing party in a PTAB proceeding cannot appeal the claim construction used. In SkyHawke Tech. LLC v. Deca Int’l Corp., Appeal Nos. 2016-1325 and 2016-1326, Patent Owner SkyHawke prevailed in an inter partes reexamination filed by Deca challenging claims of SkyHawke’s U.S. Patent No. 7,118,498. Unsatisfied with the PTAB’s claim construction used in reaching that decision, SkyHawke appealed to the Federal Circuit requesting “[c]orrection of the PTAB’s claim construction and affirmance of the ultimate decision.” (p. 2).

SkyHawke argued that the Board made “an erroneous, overly-narrow claim construction, impacting SkyHawke’s patent rights and its statutory right to exclude others from practicing its invention.” (p. 3). SkyHawke was concerned that the district court overseeing related infringement litigation against Deca would rely on the Board’s claim construction, allowing Deca to avoid liability for infringement. The Federal Circuit dismissed SkyHawke’s concern as too speculative, noting that SkyHawke is 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.” (p. 5-6).

In reaching its decision, the Court reasoned that courts of appeal employ a prudential rule that the prevailing party in a lower tribunal cannot ordinarily seek relief in the appellate court. (p. 3). Moreover, the Court also noted that SkyHawke is not prevented from arguing a different claim construction in district court litigation. Issue preclusion would not apply because the Board applies the broadest reasonable construction standard while the district courts apply the Phillips standard and thus, the issue of claim construction under the Phillips standard has not been “actually litigated.” (p. 5). Likewise, the Court commented that judicial estoppel does not bind SkyHawke to the Board’s claim construction because “judicial estoppel only binds the party to a position that it advocated and successfully achieved.” (p. 5). Lastly, the Court noted that no prosecution history disclaimer would bind SkyHawke to the Board’s claim construction because SkyHawke opposed the statements made by the Patent Office. (p. 5).

appellate courts review judgments, not statements in opinions

SkyHawke argued that the language of pre-AIA 35 U.S.C. § 141, which permitted a patent owner “dissatisfied with the final decision in an appeal to the Board” to appeal to the Federal Circuit, also permits a patent owner who is dissatisfied with the claim construction leading to the Board’s final decision to appeal to the Federal Circuit. (p. 6). However, as the Court noted, its predecessor court, the CCPA, had already addressed this issue and held that appellate courts review judgments, not statements in opinions. (p. 7).