In a recent CAFC decision, Judge Newman complains in her dissent that the “purpose of post-grant review is not to stack the deck against the patentee,” thus accusing the PTAB and CAFC of doing just that. (Prolitec, Inc. v. Scentair Technologies, Inc., Case No. 2014, (Fed. Cir. December 4, 2015); (Newman Dissent at 14). Judge Newman cites several concerns, but most notable is that the CAFC’s standard of review allows the Board to ignore the “preponderance of the evidence” standard with impunity. (Newman Dissent at 14). The statute requires that in IPR proceedings “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. §315(e). But the CAFC does not consider whether the Board’s findings comply with that evidentiary standard. Instead, it merely reviews PTAB findings under the highly deferential “substantial evidence” standard. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015); and Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1377 (Fed. Cir. 2015).
“A finding is supported by substantial evidence if a reasonable mind might accept the evidence to support the finding.” Id. at 1377. By this standard, the CAFC will accept fact-findings if backed by some “substantial evidence,” despite the weight of other evidence to the contrary. For this reason, Newman says the CAFC is using the wrong standard of review:
"Thus, our review of the PTAB’s decision must assure that the preponderance of the evidence standard as met. My colleagues err in applying the substantial evidence standard to American Invents Act post-grant appeals." (Newman Dissent at 6)
I think the question raised by Judge Newman requires some analysis of the “scope of review” recited in the Administrative Procedure Act (5 U.S.C. § 706), and the judicial efficiency of having the CAFC review all of the Board’s work so closely.