Federal Circuit Embraces Patent Trial and Appeal Board Rulings

Appeals from the relatively new Patent Trial and Appeal Board (PTAB) under the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (2001), are now just starting to reach the U.S. Court of Appeals for the Federal Circuit (CAFC). On June 16, 2015, the CAFC reversed-in-part a PTAB decision, and on consecutive days, July 8 and 9, 2015, the CAFC issued decisions affirming not just the merits of two PTAB decisions but many of the procedures the board has been following as well. This column summarizes these important decisions, which illuminate the Federal Circuit’s general respect for the PTAB and Congress’ “carefully crafted” balance between its desire for prompt and efficient review at the Patent and Trademark Office (PTO), against the necessary recognition of the traditional role of judicial review of agency action.

‘Microsoft v. Proxyconn’

First, in Microsoft Corporation v. Proxyconn,¹ the Federal Circuit reversed the board’s constructions of certain terms and, consequently, vacated and remanded the PTAB’s unpatentability determinations of claims including those terms. The court also affirmed the board’s other findings that at least one claim was patentable and other claims were anticipated and invalid.