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No Appeal of PTAB’s Final Decision by Appealing a District Court’s Adoption of That Decision

| Sean S. KimMark Kachner

PERSONAL AUDIO, LLC v. CBS CORPORATION

Before Moore, Reyna, and Taranto.  Appeal from the United States District Court for the Eastern District of Texas.

Summary: The Federal Circuit has exclusive jurisdiction to hear a direct appeal of a PTAB’s final written decision of unpatentability.  The Federal Circuit does not have jurisdiction to consider a challenge to the PTAB’s decision, through an indirect appeal from the district court’s adoption of the PTAB’s decision.

Personal Audio sued CBS for patent infringement.  After the case was filed, a third party petitioned for IPR.  The district court case proceeded and a jury determined the asserted claims were valid and awarded damages.  Subsequently, the PTAB issued a final written decision that the asserted claims were unpatentable.  Personal Audio and CBS agreed to stay the district court proceedings pending review of the PTAB’s decision.  Personal Audio appealed the PTAB’s final written opinion and the Federal Circuit affirmed; and the Supreme Court denied certiorari. After all of that, because of the PTAB’s final written decision, Personal Audio and CBS agreed that the district court should enter judgment in favor of CBS.  Personal Audio then appealed the district court’s judgement to the Federal Circuit.

The Federal Circuit affirmed.  In an appeal from a district court judgment, the Federal Circuit does not have jurisdiction to consider challenges to the validity of the PTAB’s decision.  The Court also determined that Personal Audio’s earlier direct appeal from the PTAB’s final written decision was adequate to adjudicate Personal Audio’s challenges.  Further, Personal Audio forfeited any argument that the district court should not have entered judgment based on the PTAB’s final written decision.  Personal Audio made no argument distinguishing cases holding that a district court action must terminate when a PTAB unpatentability ruling is affirmed on appeal.

Editor: Paul Stewart