Akin Gump intellectual property partner Rachel Elsby has written the article "Procedural and APA Challenges in Appeals from the PTAB," published in the PTAB Bar Association's "2019 Appellate Year in Review." The article discusses some of the most notable challenges last year to rulings by the Patent Trial and Appeal Board (PTAB), which was created under the America Invents Act.
Among the cases from 2019 that Elsby recounts is one in which the U.S. Court of Appeals for the Federal Circuit "clarified the longstanding rule that an agency may not change its arguments in the middle of a proceeding without giving the parties sufficient notice and the opportunity to respond." She discussed a separate case in which the Federal Circuit "affirmed a PTAB decision that disregarded arguments raised by a petitioner for the first time in a reply brief." In a third example, Elsby wrote about a case involving the issue of preclusion and voluntary dismissal of concurrent appeals.
The article concludes with Elsby observing that, in light of "the relative newness of PTAB proceedings and the PTAB's high rate of affirmance at the Federal Circuit," one should expect challenges to continue to feature prominently in appeals from the PTAB.