SkyHawke Technologies, LLC v. Deca International Corp.
828 F.3d 1373
Fed. Cir.2016Background
- SkyHawke sued Deca for infringement of U.S. Patent No. 7,118,498; Deca requested inter partes reexamination and the district court stayed the case.
- The PTO Examiner initially rejected claims 5–8 as obvious, then reversed and confirmed their patentability; Deca appealed to the PTAB.
- The PTAB affirmed the Examiner, construing the claim term “means ... for determining a distance” as a means-plus-function element and identifying specific algorithms in the patent as the corresponding structure.
- Based on that construction, the PTAB found the cited prior art did not disclose the claimed structure and upheld claims 5–8.
- SkyHawke appealed to the Federal Circuit seeking correction of the PTAB’s claim construction while still asking the court to affirm the Board’s ultimate decision upholding the claims.
- Deca moved to dismiss SkyHawke’s appeal as prudentially improper because SkyHawke prevailed below and only seeks to challenge the Board’s reasoning, not its judgment.
Issues
| Issue | SkyHawke's Argument | Deca's Argument | Held |
|---|---|---|---|
| Whether a prevailing patentee may appeal a Board decision merely because it is "dissatisfied" with the Board's claim-construction rationale | SkyHawke: §141 allows a patent owner "dissatisfied with the final decision" to appeal the Board’s reasoning as well as its judgment | Deca: Prudential rule bars appeals by the prevailing party who seeks to alter only the Board’s opinion, not its judgment | Appeal dismissed under prudential rule; prevailing-party challenge to Board reasoning not reviewable here |
| Whether §141’s phrase "dissatisfied with the final decision" expands appellate rights to prevailing patentees | SkyHawke: §141’s language grants jurisdiction to review the Board’s claim construction because patentee is "dissatisfied" | Deca: §141 does not override prudential rule; no authority shows Congress intended broader review | Court: §141 does not compel review; "decision" means the Board’s disposition on grounds of rejection, not its opinion explaining that disposition |
| Whether In re Priest requires a different result here | SkyHawke: Priest supports patentee appeals where Board upheld claims only by adopting new construction | Deca: Priest is fact-specific and not controlling here | Court: Priest was a narrow, discretionary departure; facts here are not analogous, so no departure warranted |
| Whether potential preclusion or future harm justifies immediate review | SkyHawke: Concern the Board’s construction could be used by district court and harm SkyHawke in ongoing infringement suit | Deca: Any future adverse district-court construction is appealable then; preclusion or estoppel is unlikely here | Court: Future district-court rulings are appealable; common preclusion doctrines unlikely to bind SkyHawke now; concern too speculative |
Key Cases Cited
- Deposit Guar. Nat’l Bank v. Roper, 445 U.S. 326 (prudential rule generally bars prevailing party from appealing an adverse legal rationale)
- California v. Rooney, 483 U.S. 307 (refusal to review a prevailing party’s challenge to appellate reasoning absent an adverse judgment)
- B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (administrative decisions can sometimes have preclusive effect when ordinary issue-preclusion elements are met)
- Kircher v. Putnam Funds Trust, 547 U.S. 633 (no preclusion based on a judgment that is not subject to appeal)
- Phillips v. AWH Corp., 415 F.3d 1303 (en banc) (district courts apply Phillips claim-construction framework, distinct from PTAB’s broadest reasonable interpretation)
- In re LePage’s Inc., 312 F.2d 455 (Board’s written opinion is not the "decision" for purposes of §141; decision is the Board's determination on each ground of rejection)
- In re Priest, 582 F.2d 33 (illustrative narrow circumstance where patentee’s appeal of Board reasoning was entertained)