A Fireside Chat: 2019 Annual Meeting
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Trials And Triumphs Of The Patent Trial Appeal Board (PTAB) By Renee McMullen
he LES Annual Meeting is known for bringing together leading experts in the realm of intellectual capital management. From engaging panel discussions, to informative workshops and legislative briefings, the 2019 Annual Meeting was no exception. The October 22 session brought together well-respected Chief Judges to discuss the Patent Trial Appeal Board (PTAB), its impact on the U.S. Patent system, as well as current developments and challenges Board members and those in the industry face in order to help the economy grow. Moderated by Robert Greene Sterne, Founding Director of Sterne, Kessler, Goldstein & Fox, PLLC, both Chief Judge Scott Boalick from the PTAB/U.S. Patent and Trademark Office and retired Chief Justice Paul Michel, formerly of the U.S. Court of Appeals for the Federal Circuit, offered their insight and opinions on several topics pertinent to both the PTAB specifically, as well as the U.S. patent system in general.
6 | LES Viewpoints
The conversation began with Chief Judge Boalick providing updates on the significant developments that have occurred in the PTAB. He noted that there have been efforts to refine and make modifications to the proceedings of the PTAB ever since the America Invents Act (AIA) was passed. This effort included finding ways to improve the proceedings to make them as fair and equitable as possible. USPTO Director Andrei Iancu has been “very involved in the process to make sure they are predictable, reliable and transparent.” The Board has seen a 10 percent decrease in the volume of petitions filed in the last year. This decrease is being attributed to the changes that have been made in
the area of multiple petition filings. To address the overall process the PTAB uses in processing the high volume of petitions received each year (1500 in the last year alone), the Board drafted and approved two new standard operating procedure documents (SOPs) to govern their work. • The first outlines how the PTAB handles cases, including the factors that the Board clerk’s office considers when paneling judges to a case. Additionally, should the panel have to be changed, the information will now be disclosed publicly for all concerned parties to be informed. • The second SOP focuses on the Presidential Informative Decision process, and streamlining it to become less cumbersome. A two-track system has been implemented to determine where they become a presidential case. The first track includes active cases that involve issues that are of importance to the USPTO (for example, anything involving the interpretation of AIA or to resolve the split decision of the Board). The second track includes cases that have already been decided, and can be nominated by anyone. Director Iancu makes the final decision as to whether the case becomes designated as a Presidential Informative following a thorough vetting process. Judge Boalick noted that there have been 18 presidential opinion cases designated this year, which is more than the last nine years combined. Praising the fact that the PTAB has made great strides in improving the patent system process, especially as it relates to petition filings and their internal SOPs, retired Chief Judge Paul
Audience at PTAB Fireside Chat.
Michel also noted that PTAB has led the way to make AIA proceedings better, and that, “They should get great credit from the profession. We can all hope they continue to make these serial improvements on a regular basis.” As for the areas for improvement in other aspects of the patent system, there are quite a few challenges to overcome and Chief Judge Michel is of the opinion that the courts “have not been a positive force, have not led, nor had a realistic sense of what the impacts are.” There seem to be disparities between the courts (i.e. District Courts) and the PTAB, specifically how decisions are made and what goes into their considerations. Noting that the patent system has become highly politicized by people who are masters at propaganda, the chat turned to how LES and its members can play an integral role in making course corrections to help the economy grow as well as participate in the varying life-cycles of innovation. In short, the advice was for LES members and industry subject-matter experts to mobilize and to talk to members of Congress. It was asserted that politics doesn’t just take place in Washington, but on a local level, so if concerned leaders in business, universities and associations are willing to become involved, some of the heavy influence on those policy makers can be neutralized. In concluding the session, the Chief Judges asserted, “The problem is solvable because the facts are on the side of having a good patent system. The facts have to penetrate the fog of propaganda. We all have a role in that. A lot of it will have to happen at a local level and not in Washington.”
Judge Scott Boalick (left), Chief Justice Paul Michel and Robert Greene Sterne.
