Panel of PTAB Judges at the AIA Anniversary Forum

Panel of PTAB Judges at the AIA Anniversary Forum

Peter-SiddowayBy Peter D. Siddoway

As we posted here a few weeks ago, the USPTO hosted an America Invents Act (AIA) Second Anniversary Forum on Monday, September 16, 2013.  Part of the Forum included four judges from the Patent Trial and Appeal Board (PTAB) discussing Administrative Trials under the AIA, including inter partes review, covered business method review, and post grant review.  The judges on the panel were Chief Judge Smith, Vice Chief Judge Boalick, Lead Judge Gianetti, and Judge Medley.

The slides from that meeting are now available through the USPTO’s AIA microsite.  Slides 161-192 relate to Post-Grant Trials.

The panel made several interesting points relating to lessons learned during the first year of AIA trials, what the Board expects in the future, and how petitioners and patent owners can increase their chances of success before the Board.  These points included the following:

  •  The Board intends to stick to the statutory page limits in almost every case.  The “interests of justice” standard, which is required in order to increase the page limits, is a high bar.  The Board has not yet granted such a motion.
  •  Petitioners should specifically point to the evidence on which it is relying for support.  The Board won’t dig around for it.  The petitioner bears the burden of making its case; not the patent owner and certainly not the Board.
  •  Preliminary responses are less effective when the patent owner attempts to challenge everything raised in the petition.  The most effective preliminary responses have tended to focus on a few important issues.
  •  Regarding the cumulativeness rejections issued by the Board (discussed here in a previous post) the judges on the panel confirmed that it is the Board’s policy to grant what it views as the strongest challenge in the petition and to dismiss any other grounds that it deems redundant.  Thus, the Petitioner should emphasize what it believes are the strongest arguments, and should distinguish any other arguments that may be deemed by the Board to be duplicative.
  •  The panel stated that the Patent Office is working to improve the Patent Review Processing System (PRPS) “in the relatively near future.”  According to the panel, the system was built very quickly in the ramp-up to the AIA, and the Patent Office is aware that additional functionality would be appreciated by practitioners using the system.