Federal Circuit PTAB appeal statistics, and how the Board handles remands

Finnegan Henderson Farabow Garrett & Dunner has published the latest statistics on the success of Patent Trial and Appeal Board (PTAB) appeals at the Federal Circuit.  

As of the start of the year, the Federal Circuit had decided 155 PTAB appeals from inter partes reviews (IPRs) and covered business method (CBM) reviews. 

The appeals court affirmed the PTAB on every issue in 120 (77.4%) of the cases, and reversed or vacated the PTAB on every issue in 13 (8.4%).  Fourteen of the cases (9.0%) had a mixed outcome, where at least one issue was affirmed and at least one issue was vacated or reversed.

The court dismissed eight (5.2%) of the cases without rendering a decision on the merits. Examples of where this can happen is when the Federal Circuit determines it does not have jurisdiction to hear a case, determines a case moot or where the parties settle.

The Federal Circuit has issued Rule 36 affirmances in 82 (52.9%) of cases as of January 1, where a one-line judgment is given with no opinion. The Federal Circuit issued written opinions, including affirmances, reversals, dismissals, and mixed decisions, in 73 (47.1%) of its cases.

Finnegan also broke the numbers down by IPR and CBM appeal. In IPR appeals, the Federal Circuit affirmed the PTAB on every issue in 110 (79.1%) of the cases, reversed or vacated the PTAB on every issue in 12 (8.6%), issued a mixed outcome in 12 (8.6%), and dismissed five (3.6%).

In CBM appeals, the PTAB was affirmed on every issue in 10 (62.5%) of the cases, issued a mixed outcome in two (12.5%), dismissed three (18.75%), and reversed or vacated the PTAB on every issue in one (6.3%).

In a blog post on its AIA Blog in December, Finnegan outlined what can be expected from the PTAB on remand. Unlike the original PTAB trial, the Board does not have specific deadlines for remanded cases. So it is has been unclear how the remands would be treated.

Last September PTAB Chief Judge David Ruschke told Managing IP that the Board tried to deal with remands "with as much dispatch as we can". He said: "We don't have any statutory deadline associated with remands … we have handled them fairly quickly once the mandate comes down." He said certain cases may have broader issues that require additional briefing. But so far the Board has yet to open the record back up again.

Finnegan shed some light on how remands have been treated so far. Once the Federal Circuit’s mandate has issued, jurisdiction returns to the Board. A teleconference with the PTAB may take place within a week to about a month after the mandate issues. But these teleconferences do not always take place.

“While most orders do not indicate whether a party requested the teleconference, one order commented that no teleconference occurred because the parties failed to request one,” said Finnegan, referring to Adidas v Nike.

The PTAB then typically authorises the parties to submit briefs of five-to-15 pages explaining the impact of the Federal Circuit’s ruling. As of mid-December, briefing had twice been denied following a request.

Simultaneous briefing by the petitioner and patent owner is common but some panels stagger the briefing, giving the patent owner an extra week.

Finnegan noted that “it appears that the PTAB has ordered that no new evidence may be filed with the briefs”. But the PTAB in December did order briefing on whether new declaratory evidence would be appropriate, in SAS v ComplementSoft. 

Overall, the PTAB takes between three and six months from the date of the Federal Circuit’s mandate to issue its new final written decision on remand, although there are outliers.

“In the cases that have received a second final written decision, the results have been mixed, with the PTAB sometimes reversing and other times maintaining its findings from the original final written decision,” noted Finnegan. “In most remands, the PTAB has found that the petitioner did not show the reviewed claims to be unpatentable.”

Procedural aspects of cases remanded to the PTAB
	Date of mandate	How long after mandate for hearing	Who requested hearing?	Order on remand briefing	Final decision	Remand results
Microsoft v Proxyconn, IPR2012-00026 & IPR2013-00109, US 6,757,717	8/25/2015	2 days	Petitioner	Paper 77 Simultaneous briefing; 15 pages	Paper 80 12/8/2015	Maintained claims not patentable
Sipnet EU SRO v Straight Path IP, IPR2013-00246, US 6,108,704	1/14/2016	7 weeks	unknown	Paper 68 Petitioner brief - 7 pages Patent Owner reply - 7 pages	Page 73 5/23/2016	Reverse prior decision; not establish unpatentable
MotivePower v Cutsforth, IPR2013-00274, US 7,990,018	2/29/2016	1 month	unknown	Paper 37 Simultaneous briefing; 5 pages	Paper 44 9/9/16	Maintained most claims not patentable; Reversed prior decision -not establish unpatentable for some
Adidas v Nike, IPR2013-00067, US 7,347,011	4/4/2016	4 months to order	none	Paper 62 No briefing since no party requested it
Corning Optical Comm’ns RF v. PPC Broadband, IPR2013-00340, IPR2013-00345IPR2013-00346, IPR2013-00347, US 8,323,060, US 8,313,353 & US 8,287,320	4/15/2016	1 month to order	No hearing	Paper 82 board orders parties to discuss whether there should be briefing PAper 85 Denied request for briefing	Paper 89 11/16/2016	Maintained claims not patentable
Corning Optical Comm’ns RF v PPC Broadband, IPR2013-00342, US 8,323,060	4/15/2016	1 month to order		Paper 51 board orders parties to discuss whether there should be briefing Paper 55 Denied request for briefing	Paper 57 10/12/2016	Reverse prior decision; not establish unpatentable
Ariosa Diagnostics v Verinata Health, IPR2013-00276 & IPR2013-00277, US 8,318,430	12/23/2015	3 weeks	unknown	Paper 49 Petitioner brief - 15 pages Patent Owner reply - 15 pages	Paper 64 8/15/2016	Maintained not establish unpatentable
Dell v Acceleron, IPR2013-00440, US 6,948,021	4/21/2016	3 weeks	Both parties	Paper 46 Simultaneous briefing; 10 pages	Paper 49 8/22/2016	Reverse prior decision; not establish unpatentable
Shaw Indus. Group v Automated Creel Sys, IPR2013-00132, US 7,806,360	11/14/2016	1 month	unknown	Paper 48 Simultaneous briefing; 5 pages
SAS Inst v ComplementSoft, IPR2013-00226, US 7,110,936	11/14/2016	1 month	unknown	Paper 48 Simultaneous briefing; 5 pages
Respironics v Zoll Medical, IPR2013-00322, US 6,681,003	7/29/16 Fed. Cir. Decision					Parties filed joint motion to terminate on 11/21/16
Nuvasive v Warsaw Orthopedic, IPR2013-00206 & IPR2013-00208, US 8,251,997	9/30/2016	1.5 months		Paper 73 Patent Owner brief ; 10 pages; Petitioner no longer a party
Finnegan also listed the following cases, for which the the remand had been mandated but no further action had yet been taken as of December 22 2016: Veeam Software v Symantec (mandated August 30), Neste Oil Oyj v REG Synthetic Fuels (November 9), Medtronic v Nuvasive (November 9), Olympus America v Perfect Surgical Techniques (November 15), Google v Unwired Planet (November 21)
Source: Finnegan's AIA Blog