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On April 15, 2014, the Patent Trial and Appeal Board
("PTAB") hosted the first in a series of eight scheduled
roundtable discussions intended to share information about the new
America Invents Act ("AIA") trials, including inter
partes review ("IPR"), covered business method
review ("CBM") and post-grant review ("PGR"),
and to solicit feedback about the trials from the
public.
The PTAB held the first roundtable at the USPTO Headquarters in
Alexandria, Virginia. It featured a panel of five
administrative patent judges: Acting Vice Chief Judge of the
Trial Section Scott Boalick, Lead Judge Grace Obermann, Lead Judge
Michael Kim, Judge Justin Arbes and Chief Judge James Donald
Smith. Janet Gongola moderated the panel. She is a
senior advisor to the Deputy Director of the USPTO. The USPTO
will hold the remaining roundtable discussions around the country
through April and early May.
At the forum, Ms. Gongola noted that since the final rules for AIA
trials went into effect on September 16, 2012, the PTAB has
received more than 1,200 petitions for trial, issued almost 500
decisions on institution, and reached 40 final decisions.
This summer, the PTAB will publish Requests for Information
("RFIs") in the Federal Register for written comments on
the trials as a supplement to the public feedback elicited from the
roundtable events. The roundtables will help to highlight
areas the PTAB should focus on in the RFIs this summer.
Slides from the first roundtable presentation can be found here.
The first roundtable event suggests that with the steep increase in
the number of petitions filed for AIA trials this year (the number
of petitions filed in 2014 by the beginning of April already equals
the number of petitions filed in all of 2013), we may see the
allegedly pro-petitioner bent of AIA trials begin to trend back the
other way. Pro-petitioner outcomes may begin to level off for
two reasons.
First, in the early days of AIA trials, defendants with
particularly strong invalidity cases presumably self-selected to
petition for IPR. Now that filing IPR petitions has become
more common, we may see a decrease in the percentage of IPR trials
instituted, perhaps in combination with a decrease in the
percentage of claims ultimately found to be unpatentable, as a
result of petitioners bringing weaker cases. The recent
decision in the ABB cases marks the first time the PTAB
upheld the validity of all claims involved in an IPR. See
ABB Inc. v. Roy-G-Biv Corp., P.T.A.B., No. IPR2013-00062,
4/11/14, and ABB Inc. v. Roy-G-Biv Corp., T.A.B., No.
IPR2013-00074, 4/11/14.
Second, the PTAB may become more conservative with instituting
trials and finding claims unpatentable, in response to the common
characterization of AIA trials as overwhelmingly
pro-petitioner. The panel appeared to be on the defensive
from Federal Circuit Chief Judge Randall Rader's October 2013
statement at the AIPLA annual meeting, calling the PTAB "death
squads killing property rights." Chief Judge Smith
emphasized the PTAB's careful approach to evaluating the
patentability of claims, stating that "I personally do not
believe if by 'death squad' you mean there's an
intention to find claims unpatentable. Absolutely not.
The board approaches its decision in a very neutral
manner." In his presentation, Judge Boalick was also
quick to note that although 167 patents have been brought to the
PTAB for IPR since implementation of the AIA trials, only nine of
those patents have been completely invalidated, with only 15% of
claims initially challenged ultimately found to be
unpatentable.
Chief Judge Smith hinted at one way in which the PTAB might seek to
even the playing field for patent owners: clearing the way
for patent owners to amend their claims during IPR.
Currently, a patent owner has a very limited ability to amend its
claims. The IPR process does not provide for claim amendments
as a matter of right, so a patent owner must move to amend its
claims. Further, the PTAB has set a high bar for the patentee
to prove patentability of the amended claims. Instead of
merely having to overcome the references identified by the
petitioner, the patent owner in IPR has the burden to prove
"general patentability over prior art" in order for the
PTAB to grant the motion to amend.
At the roundtable, Chief Judge Smith noted that "making an
amendment may be easier than is currently perceived by many"
and suggested that an upcoming PTAB decision may provide guidance
on how patent owners can successfully amend claims. Venable
will monitor decisions and report on any such changes.
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