Preparing for and Navigating PTAB Appeals Before the Federal Circuit

The U.S. Court of Appeals for the Federal Circuit is facing a deluge of appeals from post-grant review proceedings where the PTAB interpreted the AIA and ruled on issues ranging from claim construction to estoppel. The PTAB decisions raise many questions of first impression for the Federal Circuit.

When litigating cases before the PTAB, counsel must be mindful of the potential for appeal and make sure to build a record, raise arguments, and preserve issues for appeal. Counsel must also keep in mind the issues that cannot be raised at the Federal Circuit but at the PTO instead.

Counsel to patentees and third-party challengers must understand the nuances of PTO practice and Federal Circuit law to navigate proceedings at both the PTAB and Federal Circuit.

Listen as our authoritative panel of patent attorneys examines the Federal Circuit's current rulings regarding review of PTAB decisions and guidance on standing to appeal a PTAB decision to the Federal Circuit. The panel will also highlight statistical trends in Federal Circuit appeals and offer strategic tips for conducting a PTAB trial with an eye to appeal and best practices for prevailing on appeal.

1. Current statistical trends in Federal Circuit appeals from the PTAB
2. Federal Circuit rulings
   1. Review of PTAB decisions
   2. Standing to appeal
3. Conducting a PTAB trial with an eye to appeal
4. Best practices for strategically positioning and presenting a Federal Circuit appeal

The panel will review these and other key issues:

• Current statistical trends relating to Federal Circuit appeals from the PTAB
• How the Federal Circuit will address potential review issues
• The Federal Circuit's current guidance on standing to appeal
• Strategies in PTAB proceedings to build a record and preserve issues for appeal
• How to strategically position and effectively present a Federal Circuit appeal