Appealing a Victory in an Inter Partes Reexamination?

Stephen G. Adrian | July 21, 2016


July 15, 2016

Before Taranto, Chen, and Hughes.  Opinion by Hughes.


The results of inter partes reexaminations under pre-AIA are important both to the patent owner and the requester because of ongoing litigation between the parties. The results in one proceeding could certainly have an impact on the other proceeding. In this case, the patent owner SkyHawke received a decision from the Patent Trial and Appeal Board (PTAB) affirming the patentability of its claims. However, SkyHawke was concerned with the reasoning of the PTAB with respect to claim construction which could allow Deca to escape infringement in the litigation proceeding. Asserting 35 U.S.C. § 141 (a patent owner “who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board … may appeal the decision only to” the CAFC), SkyHawke appealed to the CAFC. Deca filed a motion to dismiss the appeal for lack of jurisdiction. The CAFC granted the motion to dismiss.


SkyHawke sued Deca for infringement of U.S. Patent No. 7,118,498. In response, Deca filed a request for inter partes reexamination which was granted. The district court stayed the litigation pending the outcome of the reexamination.

The Examiner confirmed the patentability of the claims in the reexamination, which was appealed to the PTAB by Deca. In its decision affirming the Examiner, the PTAB performed an analysis of the meaning of a means-plus-function limitation (means … for determining a distance) under 35 U.S.C § 112, sixth paragraph. In its analysis, the PTAB identified particular algorithms in the patent as providing the corresponding structure. Based on the claim construction, the Board concluded that none of the prior art references disclosed an algorithmic structure corresponding to the means-plus-function limitation.

SkyHawke was not satisfied and appealed for correction of the PTAB’s claim construction and affirmance of the patentability of the claims. But is it possible to appeal a victory?

Courts of appeals employ a prudential rule that the prevailing party in a lower tribunal cannot ordinarily seek relief in the appellate court. See Deposit Guar. Nat’l Bank v. Roper, 445 U.S. 326, 333–34 (1980); see also Camreta v. Greene, 563 U.S. 692, 702–04 (2011) (distinguishing Article III standing and prudential rule). Even if the prevailing party alleges some adverse impact from the lower tribunal’s opinions or rulings leading to an ultimately favorable judgment, the matter is generally not proper for review. See California v. Rooney, 483 U.S. 307, 311–13 (1987).

SkyHawke’s appeal fits into this prohibition.  Although SkyHawke is concerned that a narrow claim construction would affect its rights to exclude others from practicing its invention, SkyHawke still has a right to appeal any such unfavorable claim construction adopted by the district court should that situation arise.

Issue Preclusion

The CAFC cannot foresee how the PTAB’s claim construction would satisfy the elements of issue preclusion. Issue preclusion requires the actual issues to be litigated. Because district courts employ claim construction under Phillips and the PTAB employs the broadest reasonable interpretation, the issue of claim construction has not been litigated.

Judicial Estoppel

Judicial estoppel only binds a party to a position it advocated, so judicial estoppel does not apply since SkyHawke did not advocate such a claim construction.

Prosecution History Disclaimer

Prosecution history disclaimer does not apply at least because a party can avoid such disclaimer by opposing such statements, which SkyHawke has done here (However, it seems necessary for SkyHawke to have appealed to the CAFC in order to do so, even though the appeal was dismissed for lack of jurisdiction).

35 U.S.C. § 141

The CAFC reasoned that SkyHawke failed to point to any authority to suggest Congress intended the phrase “dissatisfied with” to include prevailing parties in PTAB decisions. The opinion of the PTAB is not the “decision” for purposes of § 141. Instead, the “decision is the act of the board saying whether each ground of rejection of the examiner which is appealed is right or wrong.” Appellate courts review “judgments, not statements in opinions.”

Lastly, the CAFC distinguished In re Priest, 582 F.2d 33 (C.C.P.A 1978) which was heavily relied upon by SkyHawke.

The court in Priest emphasized that it was exercising jurisdiction over the patentee’s appeal from the Board, despite the Board’s upholding of the claims at issue, based strictly on the unique factual scenario presented there. What the court identified as distinctive about the scenario was that the Board itself stated clearly that it would not have upheld the claims at issue, but for its own adoption of a new claim construction.

The unique factual scenario of Priest was not present.

Full Opinion

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