Imperfect Pleading v. Limits on Invalidation Authority: Federal Circuit Attempts to Clarify the Scope of Judicial Review

Wright_print_highres2Pelletier_Print HiResGuest Commentary

By Jon E. Wright & Pauline M. Pelletier, Sterne, Kessler, Goldstein & Fox*

A hot topic in post-grant proceedings before the Patent Trial and Appeal Board (PTAB) is whether determinations made by the PTAB at the institution stage are reviewable on appeal by the Federal Circuit. In SightSound Techs., LLC v. Apple Inc., 2015 WL 8770164 (Fed. Cir. Dec. 15, 2015), the Federal Circuit held that it lacked jurisdiction to review the PTAB’s decision to consider issues not raised in the petition, but confirmed that it did have jurisdiction to review whether a patent was eligible for covered business method (CBM) review. The difference between these two issues, it noted, is that the petition could be “cured by a proper pleading” whereas CBM review eligibility constitutes a limit “on the Board’s authority to issue a final decision.” Continue reading “Imperfect Pleading v. Limits on Invalidation Authority: Federal Circuit Attempts to Clarify the Scope of Judicial Review”