Originally appeared in Law360 on June 2, 2015.
Starting in late 2012, the first petitions were filed for the new adversarial America Invents Act proceedings before the newly formed Patent Trial and Appeal Board. Now, two and a half years later, the first appeals from these new proceedings are being heard by the Federal Circuit. For practitioners, these first decisions are the ones to watch, as they may show the Federal Circuit’s general opinion regarding these new administrative proceedings, how the Federal Circuit plans to deal with the increased workload and/or how settled legal principles apply to these new types of proceedings.
Starting this year, the Federal Circuit has begun to hand down decisions on appeals from final decisions in post-America Invents Act proceedings such as inter partes reviews and covered business methods. Thus far, eight out of the 10 decisions (80 percent) have been Rule 36 summary affirmances with no opinions. The Federal Circuit has handed down only two opinions (20 percent): In Re Cuozzo Speed Techs. LLC in February and Belden v. Berk-Tek in April.
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However, based on the current pipeline, it looks as if those seeking more guidance from the Federal Circuit won’t have to wait long. For the eight Rule 36 summary affirmances, the Federal Circuit decisions arrived anywhere between two and 15 days after oral argument. But, there are currently six cases where oral arguments were heard over a month ago and a decision has not yet been issued. Thus, it is likely that these cases will result in written opinions.
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These six cases to watch are:
- Trs. of Columbia Univ., Nos. 14-1547, 14-1548; 14-1550 (Fed. Cir. argued April 9, 2015);
- in re. Cont’l Auto. Sys., No. 14-1573 (Fed. Cir. argued April 8, 2015);
- Merck & Cie v. Gnosis SPA, No. 14-1779 (Fed. Cir. argued April 7, 2015);
- Microsoft Corp. v. Proxyconn Inc., Nos. 14-1542 and 14-1543 (Fed. Cir. argued April 7, 2015);
- S. Ala. Med. Sci. v. Gnosis SPA, Nos. 14-1778, 14-1780, 14-1781 (Fed. Cir. argued April 7, 2015);
- Versata Dev. Grp. v. SAP Am. Inc., No. 14-1194 (Fed. Cir. argued Dec. 3, 2014).
In awaiting these decisions, practitioners should note that:
- Of these six cases, only one is an appeal from a covered business method proceeding (Versata), while the other five are appeals from inter partes review proceedings;
- The U.S. Patent and Trademark office has intervened in Versata, Microsoft and Continental Auto. The USPTO typically intervenes when one party does not participate in the appeal or when the appeal involves a challenge to a rule or interpretation;
- In Microsoft, the Federal Circuit has asked for post-argument briefing on: (1) “[w]hat is the proper interpretation of 37 C.F.R. § 42.121(a)(2)” (e.g. motion to amend); (2) what is the “standard for reviewing the Board’s denial of a motion to amend”; and (3) “[h]ow does the Board’s interpretation of 37 C.F.R. § 42.121 comport with the rule of broadest reasonable interpretation”; and
- Judge Pauline Newman, who dissented in Cuozzo and disagreed with the PTAB’s broadest reasonable interpretation rule in IPRs, sits on the Versata, S. Al. Med. Science, and Merck panels.
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