United States: The PTAB's New "Precedential Opinion Panel"

Last Updated: January 9 2019
Article by Tammy J. Dunn

After six years of experience with AIA trial proceedings, including thousands of inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method reviews (CBMs), the Patent Trial and Appeal Board (PTAB) recently revamped its standard operating procedures (SOPs) relating to how the PTAB assigns panels of Administrative Patent Judges to preside over these cases, and how the PTAB designates certain opinions as "precedential" or "informative."

With these revisions, the PTAB also created the "Precedential Opinion Panel" or "the POP." This article answers a few questions about what the POP is and what it does.

What is the Precedential Opinion Panel? The Precedential Opinion Panel is a panel of certain PTAB individuals that serves two primary functions: (1) to rehear certain matters (e.g., those of "exceptional importance") in pending trials and appeals; and, (2) to assist the Director of the USPTO ("the Director") in determining whether a PTAB decision should be designated as "precedential" or "informative." USPTO Revised SOP2.

Who are the members of the Precedential Opinion Panel? By default, the POP membership consists of the Director, the Commissioner for Patents, and the Chief Judge; however, the Director selects POP members and has the discretion to replace default members with the Deputy Director, the Deputy Chief Judge, or an Operational Vice Chief Judge. Similarly, the Director may determine that a panel of more than three members is appropriate in certain circumstances.

How does one obtain Precedential Opinion Panel Review? POP review in a pending trial or appeal can only be obtained by recommendation. Naturally, the Director may convene a POP in his or her sole discretion; however, in most cases the process for recommending POP review will begin with a party to a proceeding submitting a recommendation, following specific procedures outlined in Revised SOP2. Recommendations that do not follow these strict rules will not be considered.

Recommendations that follow procedures go to a "Screening Committee" comprised of the members of the POP or their designees. The Screening Committee considers all recommendations and then forwards its recommendation to the Director.

The revised SOPs are silent on how long the process should take, but at some point the Director determines whether or not to convene a POP to decide whether to grant rehearing and, if rehearing is granted, to render a decision on rehearing in the case.

Can a party appeal a decision not to grant POP Review? The short answer is no. The revised SOPs make clear that decisions not to grant POP Review are not appealable: "There is no right to further review of a recommendation for [POP] Review that is not granted." Revised SOP2 at 6. Parties facing PTAB decisions that they believe are erroneous therefore should keep in mind the timing of recommendation requests as they interplay with deadlines to file a notice of appeal with the United States Court of Appeals for the Federal Circuit.

What happens if a POP Review recommendation is granted? If POP review is ordered, then the POP will enter an order notifying the parties and the public of that decision and of the composition of the panel. The POP's order will also identify the issues the POP intends to resolve. The POP has the authority to request additional briefing on identified issues, the discretion to order oral hearings, and, in "appropriate circumstances" it may even authorize the filing of amicus briefs.

Once a case is assigned to the POP, the POP will render a decision resolving the identified issues in that case. If after the decision further proceedings are warranted, then the prior PTAB panel assigned to the case will typically conduct those further proceedings.

What are "precedential" and "informative" decisions and what does the POP have to do with these? Once the POP reaches a decision in a given case, that decision may either be designated as "precedential", "informative", or "routine.

Before the creation of the POP, by default, every PTAB decision was a "routine" decision unless it was otherwise designated. "Routine" decisions are binding in the case in which they are made, but are not otherwise binding authority. Now, every PTAB decision, other than a precedential decision by a POP, is a routine decision until it is designated as precedential or informative.

A "precedential" PTAB decision is binding on future PTAB panels considering similar facts or issues, unless and until the decision is superseded by later binding authority. An "informative" PTAB decision is not binding, but articulates the PTAB's recommended approach to certain recurring issues; setting forth "norms" that should be followed in most cases.

Opinions of the POP may either be precedential if the POP designates the opinion as such and the Director approves, or they may be designated by the POP as routine or informative. Although it may seem somewhat counterintuitive that the Precedential Opinion Panel would have "routine" decisions since they are supposed to preside over matters of "exceptional importance," the revised SOPs recognize that there may be situations in which a decision "in retrospect is no longer of precedent-setting importance," and, therefore, really does not merit having the "precedential" designation.

The revised SOPs provide specific procedures for designating an opinion as precedential or informative. As before, any person may nominate a decision to be designated as precedential or informative. Under the prior SOPs, nominations were received and referred by the Chief Judge of the PTAB, and members of the PTAB would discuss and vote. Majority votes would go to the Director for final approval. Now, the Screening Committee (made up of POP members or their designees, described above) will review nominations and make recommendations to the Executive Judges Committee. The Executive Judges Committee will then review and provide a recommendation to the Director who makes the final decision on whether to designate a decision, or a portion of a decision, as precedential or informative. The revised SOPs also provide procedures for de-designating opinions.

What effect will the POP ultimately have on patent owners and petitioners (i.e., patent challengers)? While it is too early to tell what real practical effect will be had by the creation of the Precedential Opinion Panel, there are hopes that having this additional review mechanism may help the PTAB have an opportunity to address certain important issues before they get as far as the Federal Circuit or the Supreme Court of the United States. Some of the recent reversal decisions by these courts have had dramatic effects on AIA trial practice that the PTAB undoubtedly would rather avoid in the future, if at all possible.

There are also hopes the new system for designating precedential and informative decisions will provide more guidance to petitioners and patent owners alike, as well as reduce some of the unpredictability perceived by practitioners resulting from having different panels arrive at different conclusions when facing similar facts and issues.

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.

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