Can a Patent Trial and Appeal Board decision be appealed?

A patent is a set of exclusive rights granted to the inventor of a new invention. An inventor gains patent protection for their invention in the United states by filing a patent application with the United States Patent and Trademark Office. A patent examiner is assigned by the United States Patent and Trademark Office to review a patent application and ensure that the application meets all the patent law requirements. A patent application must meet several requirements for a patent to be granted but the fundamental requirements are that the invention is new, useful and not obvious. An invention is obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time a patent application is filed describing the invention. Prior art is anything known to a person skilled in the field of technology to which the patent is related. If an invention is described in a piece of prior art then the invention is obvious. Also if multiple pieces of prior art combined describe the features of an invention and a motivation to combine the prior art can be demonstrated, the invention is considered obvious. If prior art cannot be found which describes all the aspects of an invention, then the invention is not considered obvious and (assuming all the other requirements are met) the patent can be granted.

Once a patent is granted, it is not immune from attack on the grounds of obviousness. Any member of the public can institute an Inter Partes Review of a patent based on sections 35 U.S.C. § 102 (novelty requirement) and 35 U.S.C. § 103 (nonobviousness requirement). An Inter Partes Review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims of an issued patent. The Patent Trial and Appeal Board can accept new prior art from the public and modify or cancel a patent based on that prior art.

If a patent owner does not like a decision from the Patent Trial and Appeal Board, they can appeal the ruling to the Court of Appeals for the Federal Circuit. Whether the opposing party may appeal a Patent Trial and Appeal Board decision is a more complex question. Frequently, an Inter Partes Review is initiated by a defendant in a patent infringement case because the Patent Trial and Appeal Board move much faster than a federal court. The defendant can get the patent invalidated faster and the patent infringement case dismissed. In that case if the defendant does not like the Patent Trial and Appeal Board’s decision, they can appeal the decision to the Federal Circuit. However, Inter Partes Review can be initiated by any member of the public at any time. If a petitioner does not like a Patent Trial and Appeal Board decision, but there is no litigation related to the Inter Partes Review can the petitioner appeal?

A case which deals with this exact issue is GENERAL ELECTRIC v. UNITED TECHNOLOGIES, 2017-2497 (CAFC 2019). GE petitioned the United States Patent Trial and Appeal Board for inter partes review of U.S. Patent No. 8,511,605. United Technologies Corporation is the assignee of the patent. The Patent Trial and Appeal Board found the claims not obvious in view of the prior art. GE appealed the decision the the Court of Appeals for the Federal Circuit. UTC asserted that GE lacked standing because it failed to demonstrate a sufficient injury in fact.

The Federal Circuit discussed the general rule related to standing: To establish standing, an appellant must have suffered an injury in fact that has a nexus to the challenged conduct and that can be ameliorated by the court. The appellant has the burden to demonstrate that they have standing. The Federal Circuit noted that, aside from a broad claim of research and development expenditures, GE has provided no evidence that these expenses were caused by UTC’s patent. Therefore, GE’s broad claim of economic loss is insufficient to confer standing.

The Federal Circuit held that GE failed to demonstrate that it was injured by the Patent Trial and Appeal Board’s ruling, therefore GE did not have standing to appeal the case. The Federal Circuit dismissed the appeal.

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