The Role of the Federal Circuit in PTAB Appeals

PTAB lightbulb

Post-Grant Insights is a video series produced by Ropes & Gray that examines the nuances of bringing a patent dispute before the U.S. Patent Trial and Appeal Board.

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The judges at the PTAB are looking for guidance. They understand that the federal circuit is the boss – this is the circuit that is going to review all of their decisions and there are a lot of open procedural issues, evidentiary issues, discovery issues and they’re interested in what the answers are so they can comply.

The PTAB is organized in a way that creates a consensus analysis among the judges – a sort of collective wisdom about what’s going on the federal circuit. And that consistency among the PTAB judges is actually going to be very important from a substantive perspective as well. One of the bases on which you can challenge an administrative agency’s action is that the adjudication in particular cases is inconsistent with what that agency has done in other similar circumstances. 

What we might see is a much greater instance of parties citing what the PTAB has done in other similar cases as evidence of inconsistency. We may also start to see the federal circuit treat the PTAB like other courts of appeals treat other agencies.