I attended the 14th annual Rocky Mountain IP & Technology Institute at the beginning of June. An interesting addition to this year’s Institute was the panel of PTAB personnel, including the following:

  • Nathan Kelley, PTO Solicitor and former Acting Chief Administrative Patent Judge
  • Patrick Bucher, Administrative Patent Judge
  • Melissa Haapala, Administrative Patent Judge
  • K Kalan, Administrative Patent Judge

Here are highlights of the discussion:

  • Post-grant proceedings remain the most popular proceedings before the PTAB.
    • Post-grant petitions for electrical/computer technologies are down slightly.
    • Post-grant petitions for medical devices are up slightly.
  • IPR petitions have challenged approximately ½ of the total claims in the challenged patents.
  • New PTAB rules:
    • Patent owners may submit testimonial evidence (expert declarations) with their preliminary response.
    • The PTAB is switching from page counts to word counts.
  • Types of PTAB decisions:
    • Precedential decisions – relatively few decisions are precedential.
      • The Board or a member of the public can nominate an opinion to be considered to become precedential.
      • The Chief Judge considers nominated opinions and circulates opinions to the Board for a vote. A majority vote is required.
      • Director of the Patent Office Michelle Lee has veto power over the Board vote.
      • Most recent precedential decisions:
        • Garmin v. Cuozzo Speed Techs
        • Bloomberg v. Markets-Alert Pty
        • Oracle v. Click-to-Call Techs.
        • MasterImage 3D v. RealD
        • Lumentum Holdings v. Capella Photonics
      • Common pitfalls in petition drafting:
        • Put everything you need, or may need, in your petition.
          • There are limited chances to put in new evidence during the process, but they are fraught with challenges.
        • Cite to evidence in the record to support all arguments.
        • You cannot incorporate evidence by reference without discussing the evidence.
        • Do not try to do too much in a single petition such that you cannot sufficiently explain and support your arguments.
        • Incivility between parties is frowned upon.
      • What references are most at risk for not being sufficiently proven to be prior art:
        • Patents and printed publications are generally easy to prove.
        • Other documents such as a thesis, abstracts circulated at a conference, a user guide, a draft of IEEE standards or information from the Internet Archive can be challenging to prove.
      • When will the Patent Office intervene in a Federal Circuit appeal?
        • PTO looks at each appeal and has intervened in between 1/3 and 1/2 of appeals.
        • Note that the PTAB requires that the notice of appeal list the appealed issue. The reason for that is that it allows the PTO Solicitor to begin to decide whether the PTO wants to intervene.
        • The PTO is also likely to intervene when the appellee does not oppose the appeal.
        • The PTO’s decisions to intervene are advisory only. They go to the Solicitor General who makes an ultimate decision.
        • Some sophisticated practitioners will call the Solicitor to point out reasons to intervene, particularly issues that may not be immediately evident from the initial papers.
      • Tips for good oral advocacy before the PTAB:
        • Be prepared to leave your script and answer the Board’s questions.
          • The value of the process is answering the questions, not remaking your key points.
          • It is critical to immediately answer the judge’s question right when they ask it.
        • Focus on the main argument because you do not have a lot of time.
        • Demonstratives should be narrowly tailored to be useful.
        • Do not make new arguments.