As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners.
The PTAB had some initial growing pains when the new procedures began, with the number of petitions received far exceeding the number expected. The U.S. Patent and Trademark Office requested and received much feedback via public comment, instituted rule changes, and has had its procedures and trial outcomes tested in both the Court of Appeals for the Federal Circuit and the United States Supreme Court.
Likewise, PTAB practitioners have had to evolve along with the PTAB changes, as they familiarized themselves with the procedures for this new variety of “specialized agency proceeding” within the USPTO, as it was described in Cuozzo Speed Technologies v. Lee, 579 U.S. ____ (2016). PTAB practitioners have had to adapt to the rule changes and court decisions and learn through their own experiences in PTAB trials and guidance provided by the Administrative Patent Judges presiding over the cases.
Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.
PTAB practitioners should make sure to have a comprehensive familiarity with the PTAB trial rules and procedures, to have an understanding of how rule violations are treated, and to be aware of trends in PTAB decisions that provide information about preferences that are not necessarily explicit, but nonetheless represent unwritten rules.
Some PTAB rules are set in stone and are not subject to discretion, such as length limits for certain papers in a PTAB trial proceeding and discovery limits. And while the PTAB has shown some willingness to be flexible with practitioners when they have violated rules, at other times the PTAB has strictly adhered to the rules to the peril of the party breaking them. For example, the need to seek prior authorization for motions before filing them has been strictly applied. The PTAB has sometimes refused entry of a motion where the moving party failed to first confer with the PTAB. This happened in Idle Free Systems v. Bergstrom, IPR2012-00027 (PTAB June 11, 2013)(non-precedential), a case in which the PTAB dismissed Bergstrom’s motion to amend, relying on 37 C.F.R. § 42.121(a), due to failure to confer with the PTAB about the specific contemplated amendments ahead of filing the motion. Other times the PTAB has issued a reprimand to practitioners who have filed motions without prior approval, but has allowed the motions to proceed.
PTAB practitioners also need to be aware of other unspoken rules and trends within PTAB practice. For example, the PTAB has not imposed strict limits on the number of grounds that may be filed in a petition, relying instead on page and word limits. However, knowledge of institution decision trends can alert practitioners of a typical number of grounds that are instituted, which grounds are more commonly instituted (e.g., 35 U.S.C. § 102 versus § 103), and on what basis the non-instituted grounds typically are excluded. Similarly, even before the PTAB changed the rule for petition length from a page length limitation to a word count limitation, PTAB practitioners following trends in institution decisions may not have been surprised by the change, having been witness to the PTAB struggling for a best way to implement length limitations. For example, early petitions filed using a landscape-orientation claim chart were allowed, while later petitions submitted with the same landscape orientation were rejected and had to reformat and resubmit their claim charts.
These rules, both explicit and unwritten, appear to reflect a distaste in the PTAB for some of the gamesmanship that often takes place in litigation proceedings. Indeed, some APJs have expressed disfavor toward using litigation-style tactics in PTAB trials. Some rules reflect this distaste as well. Demonstratives to be used in the oral proceedings stage of PTAB trials need to be exchanged by the parties, and provided to the PTAB along with any objections, a few days prior to the oral proceedings. The parties are encouraged to try to resolve any objections among themselves before burdening the PTAB with resolving any remaining disagreements about the demonstratives. These rules force PTAB practitioners to be more cooperative in their exchange of the demonstratives than they likely would in litigation under similar circumstances, emphasizing the PTAB’s focus on substance over tactical maneuvers.
The vast majority of Administrative Patent Judges working in the PTAB are former patent attorneys with more than a decade of experience in the private sector, most of them with patent litigation experience. APJs typically enter the PTAB with a docket of ex parte appeals, and proceed to PTAB trials once they are more experienced. As a result, these are not your typical federal court judges—most APJs have devoted most, if not their entire careers, to the practice of patent law. PTAB practitioners should be aware of these credentials, with respect to the unlikelihood of ‘pulling the wool over the eyes’ of the APJs with tactics they might use if facing judges in a forum where a lower level of familiarity with the relevant law is more common. In other words, the APJs presiding over these trials are experienced and knowledgeable; they’ve been to the puppet show and they’ve seen the strings.
As such, PTAB practitioners should expect their APJs to know the record in the case cold and should expect pointed questions in oral proceedings designed to flesh out perceived weaknesses in each side’s case. In addition, APJs often will rely on their own ability to weigh evidence in the case. The PTAB may err on the side of leaving in the record possibly improper evidence, e.g., new argument, versus excluding it upon request and a showing that it is improper for a particular stage of the case.
Ultimately, APJs want PTAB practitioners to focus on the heart of the matter: the facts at issue and the evidence of record. For example, APJs have expressed distaste for lengthy descriptions of prior art that are not fairly representative of what the reference discloses. As a result, employing tactics of this nature is likely to backfire on a PTAB practitioner by resulting in increased scrutiny by their APJs, rather than resulting in persuading the APJs that the reference says something different than it does.
Likewise, a strong command of the record in the PTAB trial proceeding is of paramount importance when the time comes for oral arguments. In the context of PTAB trials, litigation ‘polish’ is less important. Indeed, APJs often encourage PTAB practitioners to allow the person who best knows the record to present some or all of the oral proceedings, even if that person is less experienced. One APJ even suggested a willingness to provide more time for less seasoned presenters upon request.
PTAB practitioners can help educate clients on these issues. As practitioners reflect on the first few years of PTAB trials, it is likely that strong knowledge of the written and unwritten rules, understanding of APJs, and a continued focus on the facts and record of a case will continue to be important as PTAB trial evolve in the coming years. No doubt PTAB practitioner experience and knowledge of these idiosyncrasies will continue to be invaluable to success in PTAB trials.
Originally published on IPWatchdog.com on September 12, 2017. Also published on Fenwick's Between the Parties blog.