Publications

Introduction -- Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions

Bylined Articles
Sterne, Kessler, Goldstein & Fox

In 2019, the U.S. Court of Appeals for the Federal Circuit docketed just over 650 appeals from the U.S. Patent and Trademark Office (USPTO). That is the highest number since the Court started to hear post-American Invents Act (AIA) cases in 2014, breaking the previous record from 2016. Cases from the USPTO, for the fourth straight year, remain the largest contributor to the Federal Circuit’s docket. Despite the continued high volume, average appeal pendency for 2019 remains fairly stable at around 15 to 16 months. Notably, appeals taken from federal district courts dropped to their lowest number in the past decade, to around half those taken from the USPTO.

Overall, outcomes for Patent Trial and Appeal Board (PTAB) cases have remained fairly consistent. As in 2018, the Court affirmed about 75% of all decisions, remanded about 20%, and reversed only 5%. The Court’s use of Rule 36 summary affirmances remained at over 50%. The remainder of the cases were about evenly split between precedential and non-precedential opinions, at about 20% each. For a more complete summary of statistical trends, see the middle spread of this report.

On the merits, 2019 saw several significant decisions related to PTAB practice and procedure. Most important was Arthrex, where the Federal Circuit held that the Administrative Patent Judges constituting the PTAB were unconstitutionally appointed. Stay tuned in 2020 for final resolution of that issue. We chose one Supreme Court case, Kisor, even though it did not come from the PTAB, because it touched on the level of deference the Court owes to administrative agencies like the USPTO. The rest of the cases we selected cover important issues such as standing, sovereign immunity, collateral estoppel, constitutionality, and antedating references. After most cases, we list related cases that have further clarified the law on those points. 

Developing summaries and statistics, like those on the following pages, is a collaborative process. We thank our co-authors—Byron Pickard, Deirdre Wells, Kristina Caggiano Kelly, Pauline Pelletier, Trey Powers, William Milliken, and Anna Phillips.

Thank you for your interest. Please feel free to reach out to either of us if you have questions or want to discuss the current state and future of Federal Circuit appeals.


This article appeared in the Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions report. To view the graphs "Data and Trends: AIA PTAB Appeals to the Federal Circuit," please click here.

48.27 KB