By Andrew Williams --
This week, the Patent Trial and Appeal Board began hosting a month-long series of roundtables devoted to sharing information about the new AIA trials. These include inter partes reviews, covered business method reviews, and the soon-to-be experienced post grant review and derivation proceedings. The inaugural event took place on Tuesday, April 15, 2014, in Alexandria Virginia, with the event being webcast (an archival copy is accessible here).
Janet Gongola, Patent Reform Coordinator at the USPTO, introduced and moderated Tuesday's event. The first item on the agenda was a presentation by Acting Vice Chief Judge Scott Boalick, which included an overview of trials, review of statistics, and observations of lessons learned. A copy of the presentation can be found here. Judge Boalick pointed out that over 1,151 petitions had been filed with the PTAB since its inception, and that even though activity had appeared to slow in the past few months, 76 petitions had already been filed in the month of April. He noted that as the petition volume has increased, the Board has more motivation to deny petitions. Therefore, he recommended that if you are filing a petition, it would behoove you to pay more attention to the details. For example, if your petition is based on an obviousness challenge, it should include an explanation as to why one of ordinary skill in the art would combine the references, and it definitely should not rely on conclusory statements.
After Judge Boalick's presentation, the floor was opened for questions. Chief Judge James Smith was present and responded to a large number of the questions. At the forefront of most practitioners' minds was the subject of claim amendments, likely due to the fact that no motions to amend have been granted to date. Chief Judge Smith did not think that would be the situation much longer, and in fact he advised those in attendance not to gamble on the issue. The reason provided for the apparent strict standards for amending claims is that, if included in the patent, they would be so without a search of the prior art. Therefore, it is essential that the patentee explains the patentable distinctions of the amendment. This is especially true when the additional element was not previously examined. In such cases, it was advised that the patent holder should disclose as much about the art as they are aware (although without necessarily listing potential prior art). The Board explained, however, that the substitution of claims could be made contingent on the petitioner's success in rendering the existing claim unpatentable. This would be useful in cases, such as when damages might be at issue.
One of the more interesting questions was directed to Chief Judge Smith, when he was asked whether the PTAB was a patent death squad. It is likely that the asker was alluding to Chief Judge Rader's recent comments about the PTAB. Chief Judge Smith seemed genuinely surprised by the question, suggesting that he has not considered the question before. Nevertheless, he stated with certainty that the PTAB was absolutely not a death squad. He cited to the record of petitions terminated to date (specifically as of April 2, 2014), pointing out that for the 167 patent review petitions which reached termination, only 28 had at least one claim removed. The support for these statistics was made available after the presentation, and suggests that the Chief Judge's characterization of the record was somewhat misleading. Of the 167 petitions terminated, only 28 had reached the final written decision stage, while the remainder have either settled or that patent holder requested an adverse judgment. Thus, the 28 cases to which Chief Judge Smith referred made up the universe of cases for which there was a final written decision. In other words, he essentially acknowledged that for every case not terminated by the parties (as of April 2, 2014), at least one claim was removed (and the statistics would also suggest that 20 of the 28 cases had every claim reviewed found unpatentable). It was suggested that the reason that this number was so high was because petitioners are motivated to mount a strong challenge. It was also pointed out that the Board only institutes reviews when there is sufficient evidence, so it stands to reason that if a review is instituted, the likely outcome is for the claims to be found unpatentable.
The second item on the agenda was a mock conference call with Lead Judge Grace Obermann playing the part of the petitioner, Judge Justin Arbis playing the part of the patent holder, and Judge Michael Kim playing the part of the Judge. The topics for this call included addressing a motion to amend the claims and a motion for additional discovery. This was probably the most useful segment of the afternoon, even though the script was a little strained in spots, such that anyone with even a minimal knowledge of the rules could see through the issues. It was announced that the script will likely be made available via the website, but only after the last of the roundtables next month. The Board appears to be equally concerned about the lack of success with motions to amend, as the majority of time spent during this mock call dealt with that issue. Any patent holder facing an IPR challenge would be advised to watch this section of the webcast if claim amendments are desired. The panel did provide some guidance on the issue, suggesting that instead of providing an inventory of prior art, it would instead be advisable to tell a story in the motion. Moreover, it would probably be advisable to include an expert opinion to support the narrative outlined in the motion. Chief Judge Smith did suggest during the question and answer session that more guidance would be coming very shortly, so stay tuned.
The roundtables may be coming to a city near you. The rest of the schedule is available on the Patent Office's PTAB AIA Trial Roundtables webpage, and will take place between 1:00 pm and 5:00 pm local time. Next week is the Midwest leg, with stops in Chicago, IL and Detroit, MI. The following week, the roundtables will be on the west coast, in Silicon Valley, CA and Settle, WA. Finally, the last week will take place in Dallas, TX and Denver, CO. This last event in Denver will also be webcast. The website promises that at least five administrative patent judges will be present at each of the locations and will be available for questions, so you should definitely try to attend if you are able.