Introduction of Panelists and summary of Session

Early March 2017 kicked off the PTAB Bar Association’s Inaugural Conference in Washington, D.C. I had the privilege of attending several sessions, one of which was “View from the Tech Industry,” which included panelists from the Tech Industry who commonly practice before the PTAB in either petitioner or patent owner roles. Representatives of Google and Microsoft presented petitioner views. Representatives from Personalized Media Communications, LLC, and Trading Technologies International, Inc., presented patent owner views.

The Tech Industry panelists debated the current state of AIA proceedings, expressing their views on AIA jurisprudence, mechanics of AIA proceedings, and strategies vis-à-vis co-pending district court litigation.

The petitioner panelists confirmed views generally held by AIA practitioners, e.g., that petitioners favor AIA proceedings because of their lower overall costs and faster times to a final decision when compared with district court proceedings. The petitioner panelists, however, debunked other commonly held views, such as the belief that it is better for a petitioner to reserve its best prior art for district court proceedings in the event that an AIA proceeding proves unsuccessful. Instead, the petitioner panelists described a preference for using strong prior art in AIA proceedings to benefit from the technical backgrounds of the Administrative Patent Judges (APJs), who typically hold advanced degrees in Computer Science, Electrical Engineering, and other relevant disciplines. As described by petitioner panelists, and at least for Tech Industry related patents, the APJs are better than a jury at appreciating sophisticated arguments, such as an obviousness analysis involving multiple technical publications or patents. For jury trials, the petitioner panelists preferred the use of system art, i.e., prior art uses or sales of systems or methods, because such art lends itself to a tangible demonstrative typically more jury friendly, and is otherwise unavailable in Inter Partes Review proceedings. See 37 C.F.R. § 42.104.

For their part, Patent Owner panelists expressed general frustration regarding the AIA, referring to the AIA proceedings as another arrow-in-the-quiver for petitioners—a fact they especially bemoaned in view of the current patent landscape that, according to the patent owner panelists, seems particularly defendant friendly. The patent owner panelists expressed particular concern over the Federal Circuit’s recent Shaw Industries Group decision, which created a narrow estoppel effect vis-à-vis prior art presented by petitioners in AIA proceedings. The patent owner panelists opined that the Shaw decision puts them at a disadvantage, because without a stronger estoppel effect, petitioners now have the means to assert–and typically do assert–the same prior art in district court as was asserted in AIA proceedings, giving petitioners an opportunity to correct any mistakes or improve upon any arguments that were unsuccessful in front of the PTAB. The patent owner panelists expressed a desire for a stronger estoppel effect, such that, if a petitioner brings arguments based on art in an AIA proceeding, then the petitioner would be estopped from asserting the same or similar art in district court.

The patent owner panelists’ views of the AIA, however, were not completely negative. Instead, the patent owner panelists noted that where a patent survives an AIA proceeding, then that can have, and typically does have, a favorable impact on a patent owner’s licensing efforts. Patent owners described the benefit of citing language directly from a PTAB final written decision during licensing negotiations.

Petitioner and patent owner panelists also agreed on several aspects. For example, petitioner panelists agreed that if a patent had survived an AIA proceeding, then that patent would be viewed as “strong,” and that would play a key factor in driving settlement negotiations. For example, the petitioner panelists described their experience facing such “strong” patents as an uphill battle in district court proceedings where the patent had survived petitioner’s best prior art in front of the PTAB, and especially where the district court had allowed the patent owner to reveal that fact to a jury.

Petitioner and patent owner panelists further agreed that they would prefer additional clarity from the PTAB. Both agreed that the PTAB should designate more opinions as precedential to promote greater consistency among the APJs. This would, for example, assist in-house counsel provide more certain answers to C-level executives about whether to move forward (or not) with AIA proceedings. In addition, petitioner and patent owner panelists agreed that AIA proceedings would benefit from some form of en banc review of PTAB final decisions, which would make AIA proceedings more flexible in terms of considering appeal options.