Addressing the right of a prevailing party to appeal a favorable decision, the US Court of Appeals for the Federal Circuit dismissed an appeal of a case from the Patent Trial and Appeal Board (PTAB or Board) and ruled that the prevailing party could not appeal the PTAB’s final decision based on dissatisfaction with the PTAB’s reasoning on claim construction. SkyHawke Technologies LLC v. Deca International Corp., Case No. 16-1325; -1326 (Fed. Cir., July 15, 2016) (Taranto, J).

SkyHawke owns a patent related to a GPS device for use by golfers to measure the distance to a hole, and asserted this patent against cross-appellant Deca. Deca challenged the asserted claims in an inter partes reexamination, and the district court stayed the case. During reexamination, Deca argued that the claims were invalid as being obvious in view of a combination of prior art references. The examiner disagreed, and Deca appealed to the PTAB. 

The PTAB affirmed the examiner’s conclusion of validity. As part of its analysis, however, the PTAB construed a means-plus-function phrase appearing in one of the claims, identifying particular algorithms in the patent as providing the corresponding structure. SkyHawke did not agree with the PTAB’s construction and, despite the validity finding, appealed to the Federal Circuit. At the Federal Circuit, SkyHawke requested correction of the PTAB’s claim construction and affirmance of the PTAB’s ultimate decision as to validity. According to SkyHawke, the claim construction was too narrow and could be used against it in its ongoing district court case against Deca. Deca moved to dismiss the appeal for lack of jurisdiction.

The Federal Circuit declined to deviate from its standard rule against review of prevailing party appeals. The Court reasoned that because SkyHawke had prevailed before the PTAB and was not appealing the judgment itself, SkyHawke could not appeal the underlying reasoning that led to the judgment. The Court also rejected SkyHawke’s argument that the appeal was proper because a section of the patent statute provides that a patent owner who is “dissatisfied with the final decision” may appeal to the Court. The Court noted that the phrase “final decision” does not refer to the PTAB’s opinion or reasoning, but rather to its determination that the claims were valid. Since SkyHawke agreed that the claims were valid, it could not be dissatisfied with the PTAB’s final decision.

Finally, the Court noted that SkyHawke’s concerns were unjustified, as it will have an opportunity to argue its preferred claim construction at trial. If SkyHawke does not prevail at trial, it will have an opportunity to appeal any unfavorable decision at that time.