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Deca requested inter partes reexamination of Skyhawke’s patent.  The Examiner and the PTAB both agreed that Skyhawke’s patent was patentable over Deca’s prior art and arguments.  In so doing, the PTAB construed one of the terms of the claims.  Skyhawke disagreed with the PTAB’s construction, and it appealed the PTAB’s decision to the Federal Circuit, seeking only to correct the PTAB’s claim construction. 

The Federal Circuit dismissed the appeal for lack of jurisdiction.  It employed the prudential rule that the prevailing party in a lower tribunal cannot ordinarily seek relief in the appellate court.  Skyhawke’s appeal sought to remedy its concern over what it believed to be the PTAB’s overly-narrow, erroneous construction, but did not seek to alter the judgment of the PTAB. 

The court further reasoned that Skyhawke was not without remedies, because, it could appeal any decision from the district court on the construction of the term.  Further, neither issue preclusion nor judicial estoppel applied to the PTAB’s construction, because the claim construction issue had not been actually litigated and Skyhawke did not advocate the construction that the PTAB adopted.  

Skyhawke Technologies, LLC v. Deca International Corporation, Case Nos. 2016-1325, -1326 (July 15, 2016); Opinion by: Hughes, joined by Taranto and Chen; Appealed From: United States Patent Office, Patent Trial and Appeal Board.  Read the full opinion here.

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