Ultratec, Inc. v. CaptionCall, LLC, et al.

In these related cases, the Federal Circuit summarily affirmed nine separate final written decisions of the Patent Trial and Appeal Board. On inter partes review, the Board collectively found unpatentable claims of eight patents, each of which was duly issued prior to the availability of the statutorily-created inter partes review procedure. These decisions directly conflict with, and now put in jeopardy, the verdict of a federal jury that found the patents valid and infringed six years prior, assessing over $44 million in past damages alone. The Federal Circuit did not issue an opinion in any of the appeals, even though the underlying decisions rested on a claim construction standard that was indisputably incorrect. The questions presented are as follows:

1. Does retroactive application of the inter partes review process violate the Due Process Clause of the Fifth Amendment to the United States Constitution?

2. Does the use of Federal Circuit Rule 36 to summarily affirm decisions from the Patent Trial and Appeal Board “without opinion” violate 35 U.S.C. § 144, which provides that the Federal Circuit “shall issue . . . its mandate and opinion” upon its determination of appeals arising from the Patent and Trademark Office?