The Proper Appellate Standard of Review for PTAB Factual Findings Made Incidental to Claim Construction

The America Invents Act (AIA) represents the most significant change to U.S. patent law since the 1952 Patent Act. Since its passage, the AIA has drawn wide support from the intellectual property community, primarily due to the new post-grant opposition proceedings the Act created. However, certain aspects of the new system created by the AIA are controversial. Specifically, judges and practitioners alike debate which standard of review courts should apply to the factual findings made by the Patent Trial and Appeals Board (PTAB) during these opposition proceedings. While the Federal Circuit has reviewed all factual findings made at the Patent Office under the substantial evidence standard of review per the Administrative Procedures Act (APA), there are others who argue that, due to the adjudicatory nature of PTAB proceedings, and the purpose and intent of the AIA, the substantial evidence standard is too deferential. In the Supreme Court’s decision in Teva v. Sandoz, the Court held that the Federal Circuit should review a district court’s factual findings during claim construction for clear error per the express wording of Rule 52(a)(6) of the Federal Rules of Civil Procedure. Although differences exist between the appellate review of district court decisions and the review of administrative agency decisions, certain members of the intellectual property community have argued that the clear error standard of review for district court factual findings related to claim construction should also be the standard of review for the PTAB’s factual findings relating to claim construction. This Comment seeks to examine the arguments for and against whether courts should review factual findings made incidental to claim construction under the substantial evidence standard or the clearly erroneous standard. This Comment argues that courts should review factual findings made during claim construction for clear error