Pilot Program to Limit APJ Review For IPR Institution

As promised in last week's rule package, a second Federal Register Notice (here) has issued from the USPTO's Patent Trial & Appeal Board (PTAB). This Notice, entitled: Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews, proposes to select IPR petitions for inclusion in a pilot program whereby only a single Administrative Patent Judge (APJ) decides the petition (CBM and PGR are excluded). Currently, three APJs review IPR petitions prior to instituting an AIA trial. However, three judges are only statutorily required for trial, not institution.  So, the PTAB is exploring ways to become more efficient in view of its growing workload. 

Before implementing the program, the PTAB has requested comments as follows, my preliminary comments are in red:

  1. Should the USPTO conduct the single-APJ institution pilot program as proposed herein to explore changes to the current panel assignment practice in determining whether to institute review in a post grant proceeding?

Institution decisions are not reviewable by the CAFC outside of very limited circumstances See SAP v. Versata (CAFC 2015). As such, it would seem inevitable that pilot program decisions, would be disproportionately subject to requests for rehearing relative to three-judge panel decisions. Thus, any gain in efficiency would almost certainly be offset by the increased rehearing workload, especially if additional judges are offered for such rehearings (which probably should be the case to avoid inconsistent rulings).

Consistency is a growing concern given the expanding PTAB workload, relatively few precedential decisions, and utilization of newly hired judges.  Perhaps a better compromise would be to explore a two-judge pilot.  Where there is disagreement between the two-assigned judges, the case can be removed from the program for the traditional three judge track.  Of course, switching tracks will require earlier consideration of the petition, but such is already contemplated in the pilot proposal.   

Single-APJ review will be very unpopular with petitioners given the limited options for review. A two-judge, hybrid approach would be received more favorably. While efficiency gains would be less pronounced with the hybrid approach, the participation of a second conferee would serve as a necessary safeguard.

  1. What are the advantages or disadvantages of the proposed single-APJ institution pilot program?

The obvious advantages are administrative efficiency and optics.  As to optics, patentees will feel like they have a better chance of convincing judges not "invested" in the institution decision.  While that fear is, of course, unfounded given the review of the CAFC of final written decision, it would be one less unfounded complaint the agency will need to hear about going forward.

Disadvantages are addressed above, namely, decreased petitioner confidence due to the increased likelihood of inconsistency across decisions, and an expanded rehearing docket. Another disadvantage might be decreased agency revenue.  That is, assuming that a single-APJ or hybrid pilot is advanced, the filing fees may need to be downwardly adjusted. These fees were calculated based on 100 hours of judge time (presumably across three judges). (here)  

It would seem to me that in order for a pilot to be effective:

  • Two APJs should be used for consistency and to decrease the likelihood of increased rehearing requests  (if a third is necessary the case exits the pilot)
  • Only senior judges would be eligible for pilot case review. (If going with a two-judge, hybrid, the second could be less senior to benefit from being teamed with the senior judge. Of course, the Board would need to consider the selection of the second judge carefully to avoid undue deference being shown to the more senior judge).
  • The PTAB might offer some incentives for voluntary participation to expand the program (e.g., decreased petition fee, modest page limit expansion (5-10 pages), or an institution decision within two months of any preliminary response, etc.).
  1. How should the USPTO handle a request for rehearing of a decision on whether to institute trial made by a single APJ?

For consistency sake, in a single-APJ pilot, one additional judge would have to be assigned (perhaps a third in the case of disagreement).  As noted above, one downside of such expanded staffing on rehearing would be an increased likelihood of rehearing requests for pilot cases.  Dissatisfied parties would have nothing to lose in seeking additional APJ review on rehearing (i.e., a default, expanded panel in the case where additional judges are included).

  1. What information should the USPTO include in reporting the outcome of the proposed single-APJ institution pilot program?
  • Comparison of rehearing rate with non-pilot cases
  • Statistical differences in grant/denial rate
  • Average tenure of single-APJ panels (that is, newer judges should be excluded from any single-APJ pilot)
  • PTAB efficiency gains
  1. Are there any other suggestions for conservation and more efficient use of the judicial resources at the PTAB?

More on this later

Just my two cents, comments are due October 26, 2015