United States: First AIA Roundtable Hints at More Conservative Approach to PTAB Review

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions