Feature

Navigating Inter Partes Review Appeals in the Federal Circuit: A Statistical Review

Christopher A. Suarez

©2017. Published in Landslide, Vol. 9, No. 3, January/February 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) began in earnest just over four years ago—on September 16, 2012. These proceedings have dramatically changed the landscape of patent litigation in the United States. Though IPRs are restricted to anticipation and obviousness challenges using patents and printed publications, they have proven to be a cost-effective complement to district court litigation. Well over 5,000 IPRs have been filed to date,1 and the trend shows no signs of slowing down.

We are at an exciting time in the “history” of IPRs, so to speak. The very first IPR proceeding ever filed, Garmin v. Cuozzo, arrived at a final written decision before the PTAB on November 13, 2013.2 That case became the first-ever IPR appeal to the Federal Circuit, and that appeal was decided on February 4, 2015.3 The Federal Circuit’s ruling in Cuozzo affirmed the PTAB and confirmed that claim construction in IPR proceedings is governed by the “broadest reasonable interpretation” standard, rather than by the Phillips standard applicable in the district courts.4 The Cuozzo decision also confirmed that decisions to “institute” IPR trials are not appealable, and that only the claims and grounds addressed in the PTAB’s final decisions are appealable to the Federal Circuit.5 The Cuozzo case went to the Supreme Court and was decided there on June 20, 2016.6 The Supreme Court affirmed the Federal Circuit on the claim construction issue and agreed, absent certain “shenanigans,” that institution decisions are generally nonreviewable.7

Since the Cuozzo decision, the Federal Circuit has decided more than 100 appeals of the PTAB’s IPR decisions on the merits. This article analyzes every decision as of the date of submission and identifies many noteworthy trends. If first impressions matter, Cuozzo suggested that the appellate courts would take a largely deferential approach to the PTAB’s IPR decision-making process. And that initial impression has largely rung true.

My analysis confirms that the Federal Circuit has typically deferred to the PTAB’s judgments. It has affirmed the PTAB in 82 percent of IPR appeals to date (see fig. 1)—and the court has also largely deferred to the PTAB’s rules, regulations, and procedural approaches to its decision making. While some of the PTAB’s decisions are affirmed by written opinion, nearly three-fourths of the Federal Circuit’s affirmances (61 percent of the Federal Circuit’s IPR decisions overall) are summarily affirmed using the court’s Rule 36 procedure (see fig. 2).8 Only 18 percent of the Federal Circuit’s decisions have been reversed or vacated, whether in whole or in part.

 

 

The current data is not altogether surprising. The standard of review for IPR decisions before the Federal Circuit is “substantial evidence”—a very deferential standard.9 Moreover, the Federal Circuit has historically respected the PTAB’s expertise as an administrative agency. Even before IPR appeals, it was very deferential to the PTAB’s rulings on appeals from run-of-the-mill patent examinations.

That said, the Federal Circuit has been ready and willing to critique the PTAB when it has felt the need to do so. The decisions that have vacated or reversed the PTAB have been far less deferential, and provide many useful insights for practitioners. The Federal Circuit’s written affirmances also provide useful guidance.

The Federal Circuit’s Affirmances

The Federal Circuit’s written affirmances have usually addressed or clarified miscellaneous issues of first impression, including constitutional challenges to the PTAB’s authority,10 the scope of appealability from the PTAB’s decisions,11 and the propriety of the PTAB’s procedures relating to, among other things, claim construction,12 motions to amend,13 admitting evidence,14 and how the PTAB bifurcates its proceedings.15 In nearly every instance, the Federal Circuit has deferred to the PTAB’s existing regulations and procedures.16 Indeed, the Federal Circuit has yet to strike down any of the PTAB’s rules or regulations for implementing IPR. The Federal Circuit typically does not write these opinions to focus on the merits of patent validity in each case. Thus, we can expect fewer written affirmances from the Federal Circuit as the issues of first impression decline in number (as they inevitably will). Thus, one trend practitioners can expect to see is an increase in Rule 36 judgments—good news for appellees.

Several of the Federal Circuit’s decisions have also limited the types of IPR decisions that may be appealed. Cuozzo, as alluded to above, upheld the appealability bar for claims and grounds that were not instituted. More generally, it noted that decisions not to institute cannot be appealed when they “consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”17

The Federal Circuit’s pre‑ and post-Cuozzo decisions have been consistent with the Supreme Court’s rule. For example, the Federal Circuit’s decisions in St. Jude Medical and Achates established that statutory time bar, privity, and real party in interest issues resolved at institution are not reviewable on appeal.18 The post-Cuozzo, Wi-Fi One decision affirmed these precedents and reaffirmed that issues relating to time bar and privity questions are not reviewable, even in cases where the Board has issued its final written decision.19 In the Harmonic decision, the Federal Circuit held that the PTAB need not issue a final written decision as to all claims, and (as Cuozzo held) that the grounds pertaining to noninstituted claims are not appealable. 20 The HP v. MPHJ Tech decision further explained that the Federal Circuit need not review a noninstituted obviousness ground, even when the PTAB instituted an anticipation ground on the same claim based on the same prior art reference.21 And in another post-Cuozzo decision, Husky Injection, the Federal Circuit found that it lacks authority to review a Board decision holding that assignor estoppel did not preclude it from instituting IPR.22

Another important area has been motions to amend. Here, the Federal Circuit has deferred to the PTAB’s requirements that (1) the burden of demonstrating the patentability of amended claims falls on the patent owner; and (2) the patent owner must show patentability over the “prior art of record,” which includes at least prior art identified during the proceeding and in the prosecution history of the patent at issue.23

These requirements have thus far proven difficult for patent owners—only 5 percent of motions to amend have been granted to date.24 Perhaps in response, the Federal Circuit has granted a petition for rehearing en banc and will have heard reargument as of the date of this article in In re Aqua Products.25 The primary question on rehearing relates to the appropriate placement of the burdens of proof and persuasion during IPR amendment proceedings.26 In the Veritas case, the Court has also vacated the Board’s denial of a motion to amend, as I discuss in more detail below.27

The Federal Circuit has also used its affirmances to defer to some of the PTAB’s procedures concerning evidence and how it bifurcates proceedings. In Redline Detection, it deferred to the PTAB’s interpretation of its regulation under 37 C.F.R. § 42.123(a) regarding the submission of supplemental evidence.28 There, it upheld a PTAB decision that declined to admit an expert declaration when, in the PTAB’s view, doing so would not have promoted the “efficient administration” of its proceedings.29 In Ethicon Endo‑­Surgery, the Federal Circuit upheld the PTAB’s practice to allow the same PTAB panel decide both the institution decision and the final written decision.30 And in other decisions it has upheld the PTAB’s practice to resolve only instituted claims in the final written decision, rather than the full set of challenged claims.31

The Federal Circuit’s Decisions to Reverse and/or Vacate

Prospective appellants may be discouraged by the Federal Circuit’s high affirmance rate and historical deference to the PTAB. But all hope has not been lost for them. To date, the PTAB has been vacated, reversed, and/or remanded in whole or in part in 21 Federal Circuit appeals. These decisions to vacate or reverse have typically favored the patent owners. Fourteen of the 21 decisions considered in this article have reversed or vacated the PTAB’s invalidity decisions on one or more claims, while only seven reversed or vacated holdings that certain claims were not invalid. These decisions fall into four categories (see fig. 3), and they teach practitioners several more valuable lessons.

A more detailed explanation of the cases that fall into each of the categories follows.32

Claim Construction Errors

Roughly one-third of the Federal Circuit’s decisions to vacate or reverse (seven of 21) have involved faulty claim constructions. Typically, the court has reversed claim constructions that are either (1) unmoored from the specification, or (2) inconsistent with the plain meaning of the claim term.

In the first category, the Federal Circuit’s Proxyconn decision reversed in part the PTAB’s generic construction of “two other computers” that, in the panel’s view, was not directed toward the types of computers described in the specification.33 The court also disagreed with the PTAB’s claim construction of a term in one of its PPC Broadband cases, finding the PTAB’s construction to be unmoored from the specification while at the same time critiquing the PTAB’s use of a generalist dictionary to construe the claim term.34 And the court’s Respironics decision vacated a PTAB decision that seemed to adopt a proper claim construction, but applied it in a manner that improperly imported an additional limitation into the claims.35 There, nothing “in the claims or the record . . . support[ed] th[e] additional limitation.”36

In the plain meaning category, the Straight Path IP Group decision reversed a claim construction of “is connected” that did not require a “real time”—or current—connection to a server.37 In Pride Mobility Products Corp., the Federal Circuit reversed a claim construction involving a “mounting plate” that is “oriented perpendicular to the drive wheel axis” where the term was construed by the PTAB to include plates perpendicular to other axes.38 Similarly, in Cutsforth II, the Federal Circuit reversed where a limitation reciting a “projection extending from” an object was interpreted to include structures that recede into that same object.39

The Federal Circuit’s precedent also confirms that the broadest reasonable interpretation standard in IPRs can have a material impact on claim construction. This was so in the Federal Circuit’s other PPC Broadband case, which upheld the PTAB’s construction of a claim term as to certain claims but not as to others.40 As to the broadest claims of the patent, the court adopted the PTAB’s construction; it agreed that a “continuity member” for a coaxial cable required only a single electrical connection to the cable, and not a continuous electrical connection throughout the cable.41 The court explained that this construction would not be “the correct construction under Philips,” but that it is the “broadest reasonable construction.”42 However, the construction of this term was different in other, narrower claims: in those claims, the claim language required that the continuity member “maintain electrical continuity” throughout the cable and could not merely have a single connection with the cable.43 The Federal Circuit thus rejected the PTAB’s construction on the narrower claims and vacated its holding as to those claims.

As the above decisions illustrate, the Federal Circuit has vacated or reversed PTAB decisions on claim construction on several occasions. Thus, litigants should not be discouraged from challenging the PTAB’s claim construction rulings. Moreover, claim construction of IPR rulings is typically reviewed de novo at the Federal Circuit,44 making this area fertile ground for successful appeals.

Overlooked Evidence

Practitioners should also look for situations where the PTAB may have overlooked key evidence. Six of the 21 reversals or decisions to vacate had this characteristic. In Belden v. Berk-Tek, the PTAB incorrectly suggested that expert testimony was necessary to furnish a motivation to combine in an obviousness case.45 The PTAB was reversed because it overlooked teachings of a prior art reference that provided a motivation to combine.46 Similarly, in both Shaw Industries v. Automated Creel Systems and Software Rights Archive v. Facebook, the PTAB overlooked evidence suggesting that the prior art had disclosed a claim element.47 In Ariosa Diagnostics v. Verinata Health, the PTAB was again vacated when it suggested that support for obviousness arguments could only come from prior art references that comprised formal grounds in the petition, even though the petitioner cited other references (again overlooked) that were pertinent to the background knowledge of the person of skill in the art (POSA).48 And in Husky Injection, the court vacated and remanded in part where the PTAB overlooked, in assessing anticipation, a portion of a reference that had been properly incorporated into an asserted prior art reference.49 The court applies the same principles to overlooked evidence of secondary considerations: in Nike v. Adidas, the Federal Circuit vacated the PTAB when it overlooked evidence of “long-felt need” in its obviousness analysis.50 Potential appellants should thus mine the record for important arguments or evidence that may have been ignored by the PTAB.

Inadequate Explanations and Errors of Law

The Federal Circuit has also been troubled by PTAB decisions that do not provide an adequate explanation for their findings and, in some cases, employ flawed legal frameworks or reasoning. Six of the 21 decisions to vacate or reverse contained these problems. For example, the court explained in Cutsforth I that “the Board must develop and explain the basis for its findings.”51 There, the Federal Circuit vacated and remanded because the PTAB’s analysis “made broad, conclusory statements . . . to determine that the claims of the ’018 patent are obvious.”52 Similarly, in Black & Decker v. Positec,53 the Federal Circuit reversed in part because the PTAB did not adequately explain why, as to certain claims, the POSA would have been motivated to modify the prior art to arrive at the claimed invention.

The trend has only continued. In the Nike v. Adidas case referenced above, the Federal Circuit admonished the PTAB for inadequately explaining why a proposed substitute claim would have been obvious. It emphasized that the PTAB at “no point” explained why the prior art reference rendered the proposed substitute claim obvious, and that it did not “point to any disclosure” in that reference to justify its obviousness conclusion.54 And in In re Warsaw Orthopedic, the Federal Circuit vacated a PTAB’s invalidity ruling in part when “the affirmative narrative in support of its finding . . . consist[ed] of a single sentence.”55

Two recent decisions have suggested that the PTAB not only inadequately explained its findings, but also erred as a matter of law in canceling certain claims as obvious. In In re Magnum Oil Tools, the PTAB “improperly shifted the burden to [the patentee] to disprove obviousness.”56 There, the PTAB instituted IPR based on a first set of prior art references. In its final decision (and without explanation), the PTAB “borrow[ed] the rationale” to combine those references from the petitioner’s arguments that had been directed toward a second, noninstituted set of prior art references.57 The patent owner failed to rebut the borrowed rationale, and the PTAB concluded that the claims were obvious, even though the petitioner “failed to articulate a motivation to combine the specific teachings” of the instituted set of prior art references, or explain why the arguments from the noninstituted set of references “would be cross-applicable” to the instituted references.58 In Arendi S.A.R.L. v. Apple Inc., the PTAB misapplied “common sense” to find that a missing limitation would have been obvious.59 While common sense may be invoked in an obviousness argument to provide a “motivation to combine” or fill in an “unusually simple” limitation, the court made clear that “common sense” should not be used to gap-fill major limitations.60 The limitation at issue in Arendi went to the “heart” of the invention, and in such cases the decision to invoke common sense should be strongly “supported by evidence and a reasoned explanation.”61 The Federal Circuit reversed the PTAB because it did not provide a reasoned explanation for its application of common sense, and the petitioner’s expert evidence was also lacking.62

Administrative Process Concerns

Finally, the PTAB’s rulings must comport with principles of the Administrative Procedure Act (APA). This directly impacted three of the 21 decisions to reverse or vacate. In Veritas Technologies, as alluded to above, the Federal Circuit vacated the PTAB’s denial of a motion to amend.63 In the PTAB, the patent owner had argued that the combination of features in its proposed new claims was patentable over the prior art, but the PTAB denied the motion and declined to consider the arguments because, in its view, the patent owner also needed to provide an explanation as to why each new feature of the amended claims was patentable.64 It was “arbitrary and capricious” to deny the motion to amend solely on this basis, the court held, because it could “not see how the Board could reasonably demand” further explanation—it therefore vacated and remanded to the PTAB so that it would reconsider the patent owner’s arguments.65

The Federal Circuit has also been particularly troubled by PTAB decisions that rely on evidence or arguments that were raised late during proceedings. The court explained in Dell v. Acceleron that the APA requires that the United States Patent and Trademark Office (USPTO) “timely inform” parties of the facts and legal arguments asserted, and that it must allow parties to submit rebuttal evidence in response.66 There, the Federal Circuit vacated in part where “the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”67 Similarly, in SAS Institute, Inc. v. ComplementSoft, LLC, the court vacated in part where the PTAB adopted a claim construction that was different from the construction adopted at institution and, importantly, was “never suggested” by the parties in any briefing.68 Such a change of theories “in midstream” prevented the parties from meaningfully addressing the new construction, and it was necessary to “hear[] from the parties on the new construction” on remand.69 Errors like these will continue to be great candidates for appeals, but they will likely dwindle in number as the PTAB adjusts to the Federal Circuit’s oversight.

Is an Appeal Worth It?

Federal Circuit appeals from IPRs are rarely successful. The current affirmance rate (82 percent) is already quite high, and IPRs remain in their relative infancy. As the Federal Circuit continues to clarify its concerns with the PTAB’s rulings and the PTAB adapts to those rulings, it is possible that the affirmance rate will only increase.

Whether an appeal could be successful is a difficult question that depends on the facts of the case and the quality of the PTAB’s final written decision. Successful appeals will need to be tailored to highlight significant problems with the PTAB’s reasoning, such as a flawed claim construction or an explanation that is significantly lacking in logic or substance. Appellants should also scour the IPR record for overlooked evidence, and for any procedural actions of the PTAB that could trigger administrative process concerns. IPR appeals will be worthwhile in cases where counsel identifies one of more of the above problems—this is particularly true for patent owners, who have secured most of the decisions to vacate or reverse the PTAB’s judgments. By contrast, appeals that challenge the sufficiency of the evidence or the PTAB’s IPR regulations and procedures are less likely to succeed.

Appellees will surely experience continued success in IPR appeals to the Federal Circuit going forward. Appellees should aim to characterize their appeals as relatively uninteresting, run-of-the mill invalidity disputes that do not present any interesting questions of first impression. They should also emphasize the deferential nature of the “substantial evidence” standard and the PTAB’s thorough assessment of the issues during the trial, explaining why the PTAB’s decision should be entitled to deference.

 

Click to view the Table of Federal Circuit IPR Appeals That Have Vacated or Remanded the PTAB

 

Endnotes

1. USPTO, Patent Public Advisory Quarterly Meeting, PTAB Update, at 17 (August 18, 2016), https://www.uspto.gov/sites/default/files/documents/20160818_PPAC_PTAB_Update.pdf (noting that, as of July 31, 2016, 4859 IPR petitions had been filed).

2. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-00001, Paper No. 59 (P.T.A.B. Nov. 13, 2013).

3. In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015). The decision was reissued in substantially identical form on July 8, 2015. 793 F.3d 1268.

4. Cuozzo, 793 F.3d at 1279. Claim construction in the district courts is governed by the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

5. Id. at 1273; see also 35 U.S.C. § 141(a) (“An applicant who is dissatisfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit.”).

6. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, __ U.S. __ (2016).

7. Id. at 2141–42.

8. Federal Circuit Rule 36 is a procedure by which the Federal Circuit summarily affirms the court below without a written opinion.

9. Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 833 (Fed. Cir. 2015). The court recently denied rehearing en banc in Merck—a case where Merck asked the court to adopt a less deferential “clear error” standard. Merck & Cie v. Gnosis S.P.A., 820 F.3d 432 (Fed. Cir. 2016) (denying petition for rehearing en banc).

10. MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015) (holding that there is no Article III or Seventh Amendment problem with IPR trials).

11. See infra notes 17–20 and accompanying text.

12. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015) (concluding that that broadest reasonable interpretation standard is “reasonable not just because of its pedigree but for context-specific reasons” as well), aff’d, Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).

13. See infra notes 21–24 and accompanying text.

14. See infra notes 25–26 and accompanying text.

15. See infra notes 27–28 and accompanying text.

16. See supra notes 7–8 and accompanying text.

17. Cuozzo, 136 S. Ct. at 2141.

18. Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015); St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014). These decisions related to the time bar of 35 U.S.C. § 315(b). These decisions were denials of petitions for writs of mandamus, but are “affirmances” in the sense that they deferred to the PTAB’s decision making. These types of decisions, for purposes of this article, are not appeals on the merits and are not included in the numerical statistics presented herein.

19. Wi-Fi One, LLC v. Broadcom Corp., 2016 WL 4933298, at *4, __ F.3d __ (Fed. Cir. Sept. 16, 2016) (post-Cuozzo decision declining to review the Board’s denial of discovery relating to time bar and privity issues, and also declining to review merits arguments relating to those issues). As of the October 19, 2016 a petition for rehearing en banc of this decision was pending.

20. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016).

21. HP Inc. v. MPHJ Tech. Invs., LLC, 817 F.3d 1339 (Fed. Cir. 2016).

22. Husky Injection Molding Sys., Ltd. v. Athena Automation Ltd., 2016 WL 5335500, at *3-8, __ F.3d __ (Fed. Cir. Sept. 23, 2016) (holding that the Federal Circuit lacks jurisdiction to review the Board’s determination on whether assignor estoppel precludes it from instituting inter partes review)

23. See, e.g., In re Aqua Prods., Inc., 823 F.3d 1369 (Fed. Cir. 2016) (rejecting challenge to the PTAB’s amendment procedures);Prolitec v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015) (concluding that references from prosecution history may be considered as “prior art of record” to deny a motion to amend, that such a requirement “is not in conflict with any statute or regulation,” and that “it is not unreasonable to require the patentee to meet this burden”); Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1303–08 (Fed. Cir. 2015) (placing burden on the patentee and holding that it must prove patentability over “prior art of record,” particularly art that “was very much a part of the entire proceeding[]”).

24. Tom Rozylowicz, PTAB Motion to Amend Study Reveals Opportunities and Risks, Fish & Richardson Post-Grant: Alerts (May 19, 2016), http://fishpostgrant.com/alert/ptab-motion-to-amend-study-reveals-opportunities-and-risks/.

25. In re Aqua Products, Inc., 2006 WL 4375651 (Fed. Cir. Aug. 12, 2016).

26. Id.at 1336.

27. See Veritas Technologies LLC v. Veeam Software Corp., 2016 WL 4525278, __ F.3d __ (Fed. Cir. Aug. 30, 2016).

28. See Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir. 2015) (noting that timeliness and relevance of information are not the sole factors the PTAB may consider in declining to admit supplemental information post-institution).

29. Id. at 443–44.

30. Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016) (holding that the Board has the authority to have the same Board panel decide both the institution decision and the final written decision).

31. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) (holding that the PTAB need not decide the patentability of every claim raised in the petition and that it can render its decision solely on the instituted claims); Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) (same).

32. Table 1 provides a summary and overview of those decisions, as grouped into the four broad categories shown in figure 3.

33. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015).

34. PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC (PPC Broadband I), 815 F.3d 747 (Fed. Cir. 2016) (vacating and remanding where construction of “reside around” was unmoored from the specification and based on a definition from a generalist dictionary). But see B.E. Tech. LLC v. Sony Mobile Commc’ns (USA) Inc., No. 2015-1882, 2016 U.S. App. LEXIS 14820 (Fed. Cir. Aug. 12, 2016) (holding that it was not inappropriate to use a generalist dictionary for the construction of “region” where a technical dictionary would not have changed the result).

35. Respironics, Inc. v. Zoll Med. Corp., No. 2015-1485, 2016 U.S. App. LEXIS 13761, at *10–12 (Fed. Cir. July 29, 2016).

36. Id. at *12.

37. Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015).

38. Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307 (Fed. Cir. 2016).

39. Cutsforth, Inc. v. MotivePower, Inc. (Cutsforth II), 643 F App’x 1008, 1010 (Fed. Cir. 2016 (reversing where a limitation reciting a “projection extending from” an object was interpreted to include structures that recede into the object).

40. PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC (PPC Broadband II), 815 F.3d 734 (Fed. Cir. 2016).

41. Id. at 742–43.

42. Id. at 743.

43. Id. at 743–44.

44. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015) (“[Where] the intrinsic record fully determines the proper construction, we review the Board’s claim constructions de novo.”).

45. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015).

46. Id.

47. Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) (vacating where the Board’s ruling was “ambiguous” as to whether it considered a teaching of the prior art reference in assessing invalidity); Software Rights Archive, LLC v. Facebook, Inc., 2016 WL 4709878, at *8 (Sept. 9, 2016) (the “board failed to consider fully” a prior art reference as to one of the claim limitations).

48. Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015).

49. Husky Injection, 2016 WL 5335500, at *8-9.

50. Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016).

51. Cutsforth, Inc. v. MotivePower, Inc. (Cutsforth I) 636 F. App’x 575, 577 (Fed. Cir. 2016).

52. Id. at 578.

53. Black & Decker, Inc. v. Positec USA, Inc., 646 Fed. App’x 1019 (Fed. Cir. 2016).

54. Nike, 812 F.3d at 1344.

55. In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1335 (Fed. Cir. 2016) (emphasis added).

56. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1378 (Fed. Cir. 2016).

57. Id.

58. Id. at 1379.

59. Arendi S.A.R.L. v. Apple Inc., F.3d 1355 (Fed. Cir. 2016).

60. Id. at 1362.

61. Id. at 1363.

62. Id. at 1366.

63. Veritas Technologies, 2016 WL 4525278, at *6-7.

64. Id.

65. Id. at *6, *7.

66. Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016).

67. Id.

68. SAS Institute v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016).

69. Id. at 1351–52.

Christopher A. Suarez

Christopher A. Suarez is a litigation associate at Williams & Connolly LLP. His practice includes litigation before the federal district courts, the Patent Trial and Appeal Board, and the federal courts of appeals, including the U.S. Court of Appeals for the Federal Circuit.