Bass, Berry & Sims attorneys Michael Kiklis and Matthew Zapadka examined how practitioners can effectively navigate the appeal bar in cases before the Patent Trial and Appeal Board (PTAB). The authors reviewed several recent cases to outline the appealability of time-bar determinations at the PTAB and what issues are reviewable, such as the following:
- Estoppel issues raised post-institution.
- Joinder decisions under § 315(c).
- Issues of assignor estoppel.
- Non-institution issues arising after institution.
The authors also outline the issues from recent decisions that are found to be unreviewable, such as:
- PTAB institution decisions and reconsiderations of those decisions.
- PTAB’s statutory application at institution.
- Dismissal of petitions under § 315(e)(1).
As Michael and Matthew state, “For those [issues] that are appealable, practitioners need to frame their arguments for both the PTAB and the Federal Circuit. For those that are not, practitioners need to frame their arguments with as much clarity as possible and address all nuance of PTAB-specific case law, knowing that appellate review is likely unavailable.”
The full article, “Navigating the Appeal Bar in PTAB Cases,” was published in the September/October 2020 issue of IP Litigator and is available in the PDF here.