Notes on Ex Parte Appeals of Patent Cases

by Dennis Crouch

  1. The vast majority of ex parte patent appeals (92%) are focused on obviousness, with 2/3 of those only addressing obviousness questions.
  2. It is rare for any other issue to be the sole issue on appeal:
    • 2.5% of appeals solely focus on Section 101;
    • 1% of appeals solely focus on Section 102;
    • 2.2% of appeals solely focus on Section 112 (including 112(a) and 112(b)).
  3. Applicants regularly win obviousness appeals — winning reversal of the obviousness issue in about 35% of cases and partial reversal of the obviousness issue in at least 5% more.
  4. Applicants rarely win appeals based upon Section 101 — Eligibility rejections are affirmed in 90%+ of cases.
  5. Perhaps not surprising, the most cited case appears to be the Supreme Court’s obviousness decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

* These notes come from a set of recently decided ex parte appeals that I have been working throuhg – DC

22 thoughts on “Notes on Ex Parte Appeals of Patent Cases

  1. 5

    Nice information to have! I would also be interested in knowing the breakdown of types of appeal that are returned to prosecution by the Examiner without a PTAB decision. Are Examiners more likely to reconsider after appeals of some issues than others?

  2. 4

    Random practice tip for ex parte appeals at the PTAB: it can be helpful to set out the standard of proof, burden of persuasion, and standard of review.

    The Federal Circuit has indicated that, with respect to the standard of proof for rejections in a patent application, “preponderance of the evidence is the standard that must be met by the PTO in making rejections.” In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985).

    Further, with respect to the burden of persuasion for a rejection, “[t]he examiner, and if later involved, the Board, retain the ultimate burden of persuasion on the issue.” In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring). Thus, “[i]f, as a matter of law, the issue is in equipoise, the applicant is entitled to the patent.” Id.

    Additionally, with respect to the standard of review, this Board has suggested that it reviews examiner findings and conclusions de novo, indicating in a precedential decision that “the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.” Ex parte Frye, appeal no. 2009-006013, slip op. at 10 (PTAB Feb. 26, 2010) (precedential) (emphasis added).

    Thus, although the examiner may be the original trier of fact and law, there is no room for deference to the original trier of fact and law in this de novo analysis. Instead, for purposes of “review[ing] the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue,” the examiner is simply a party with the burden of persuasion who must make out a rejection supported by a preponderance of the evidence. Id.

    1. 4.1

      +10

    2. 4.2

      Excellent post.

    3. 4.3

      Thanks JD. Easy to overlook / fail to argue each and all; every single time.

    4. 4.4

      Good points all but the Board really doesn’t care. The chance of you appealing a Board decision to the Federal Circuit is really low, and once you get there, any findings of fact are reviewed for substantial evidence (very deferential to the Board).

      Make your arguments and hope for the best, but don’t think mentioning the Board’s standard of review is going to help you. They know what it is.

      FYI — I mention the Board’s standard of review in every appeal that I’ve filed.

      1. 4.4.1

        Thanks for the perspective Wt.

  3. 3

    Any interesting findings at the art-unit level?

    I suspect it’s just an artifact of what happens to be in the portfolios I happen to be reviewing recently, but I’m seeing a fair number of applications where the applicants have overcome everything except a 101 rejection, with the apparent goal & strategy of teeing-up an appeal. I’d be curious to see if the 101-only appeals are concentrated in particular art units.

    1. 3.1

      This data seems to bode ill for that strategy.

      1. 3.1.1

        I’d tend to agree, though it seems at least some folks saw value in some combination of (a) breaking out of a loop with the Examiner/escalating to another set of eyes, (b) taking their best/last shot at an application via appeal, and (c) parking the case in the queue at the PTAB as a potentially cheaper way to keep something pending for an extended period of time while figuring out what to do next.

        Not sure I would have taken the same approach or done the same calculus, but I’m not necessarily going to fault someone else’s past best guess at the right thing to do with eligibility hurdles.

        1. 3.1.1.1

          … parking the case in the queue at the PTAB as a potentially cheaper way to keep something pending for an extended period of time while figuring out what to do next.

          That strategy is increasingly less viable as the PTAB gets its backlog back under control. I had four cases last year where we filed appeal briefs in January and had PTAB decisions in hand by October. Those were outliers, to be sure, but appeals are not lasting anything like as long as I am mentally accustomed to them lasting. You do not buy yourself much time, anymore, by taking a case to appeal.

        2. 3.1.1.2

          Greg’s comment on the ineffectiveness of time delay from “parking” at the PTAB might need be taken in a different light as to whether or not one SHOULD consider the PTAB to be anything but a transit point – on the way to challenging ANY decision the PTAB may issue – given this scathing view of the Office response to Arthrex:

          link to ipwatchdog.com

    2. 3.2

      BH that is what I do too. I would be interested in the outcomes in this case too.

  4. 2

    “Applicants regularly win obviousness appeals — winning reversal of the obviousness issue in about 35% of cases and partial reversal of the obviousness issue in at least 5% more.”

    Could you please clarify what is meant by “regularly win” because 35% + 5% only adds up to only 40%?

    1. 2.1

      “Regularly” does not necessarily mean “more often than not.” Forty percent is nontrivial.

      1. 2.1.1

        Ya gotta love that someone needs to explain the meaning of “regularly” to another commenter on a … patent law blog.

        Wow. Then again, these are the same people that struggle with “abstract” like it’s some concept dropped on us by aliens.

        1. 2.1.1.1

          Wrong, Malcolm. I too laughed at the post that questioned the meaning of “regularly”. My wall clock dings me very regularly, one pendulum swing in every 3600. Conversely, I am one of those who has problems with the use of “abstract” as a test of eligibility and therefore I’m NOT the same as the people you group together .

          Every one of the independent claims I draft is, imho, a triumph of abstraction yet every one of them defines subject matter which, imho, ought not to be held as ineligible.

          Nevertheless, keep posting. I do so much enjoy reading your stuff.

          1. 2.1.1.1.1

            (golf clap)

        2. 2.1.1.2

          The use of “regularly” seemed vague and indefinite to me. If the author meant that applicant’s “regularly” win obviousness challenges 35%-40% of the time, then that’s the clarification I believe ipguy was looking for. If I told clients that I “regularly” get applications allowed, you can bet that they’d reasonably interpret that comment as meaning I get applications allowed more often than not.

          1. 2.1.1.2.1

            The connotation of “regular” is (naturally) regularly meaningful – as in successful.

            For one to work regularly, generally means more than merely showing up.

            The variant being advanced is at a regular interval. If one makes one post per year (on the same date), and then tries to say that that poster is a regular poster, is well, to be ‘kind,’ simply untrue.

    2. 2.2

      The indicated 35-40% PTAB reversals of 103 application claim examiner rejections is vastly better than CAFC appeal successes. It is even better considering that a small but significant % of the most obviously-erroneous unobviousness examiner rejections have already been overcome in requested pre-appeal conferences, and that a substantial if not major percentage* of PTAB application appeals are based entirely on attorney argumentation with no expert declaration or other rebuttal evidence.
      *I wonder how many?

  5. 1

    Interesting numbers — thanks Dennis.

    How ’bout multiple-issue appeal percentages (e.g. are 101 rejects more commonly “paired” with 102, 103, or 112 rejects?).

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