In a recent ruling, the Court of Appeals for the Federal Circuit overturned a final written decision by the Patent Trial and Appeal Board (“PTAB”) that Apple Inc. had failed to meet its burden of proving unpatentability. The original judgment was due to an alleged error in Apple’s expert declaration in a case against Corephotonics, Ltd.
In the case, Apple Inc. v. Corephotonics, Ltd., Nos. 2022-1350, 2022-1351 (Fed. Cir. Sep. 11, 2023), PTAB’s decision was vacated on the ground that it violated the Administrative Procedure Act (“APA”), a federal statute that governs the way administrative agencies may propose and establish regulations. PTAB was deemed to have based its ruling mainly on an error in Apple’s declaration rather than on substantial evidence.
The Federal Circuit’s decision sets a significant precedent and is expected to impact future interactions between companies, experts, and PTAB. Importantly, it sends a clear message that decisions should not be taken lightly and all involved parties must uphold the highest standards of precision and rectitude.
In sum, while errors in expert declarations could potentially impact the outcome of patent trials, this ruling confirms that such errors are insufficient to conclude the unpatentability of a patent when considered in isolation.