PTAB

The Patent Trial and Appeal Board (PTAB) is an administrative tribunal within the USPTO: HISTORY: created by the Leahy-Smith America Invents Act (AIA, 2011), effective September 16, 2012; replaced the Board of Patent Appeals and Interferences (BPAI); COMPOSITION: PTAB is staffed by Administrative Patent Judges (APJs); APJs are technically trained (many have PhDs or engineering degrees) and legally trained (law degrees); panels of three APJs decide inter partes proceedings (IPR, PGR); single APJ may handle some ex parte appeals; PTAB PROCEEDING TYPES: (a) EX PARTE APPEALS (35 U.S.C. § 134): appeals from final rejections in patent prosecution; the applicant appeals a USPTO examiner's final rejection; one-way proceeding (applicant vs. USPTO); PTAB has de novo review of legal questions (claim construction, § 101) and reviews factual findings for substantial evidence; (b) INTER PARTES REVIEW (IPR) (35 U.S.C. §§ 311-319): a petition by a third party challenging issued patent claims; grounds: §§ 102 and 103 prior art only; filing deadline: within 1 year of being served with a complaint alleging infringement of the patent (§ 315(b)); institution decision: PTAB institutes if 'reasonable likelihood petitioner would prevail on at least one claim'; see the IPR Guide for detailed coverage; (c) POST-GRANT REVIEW (PGR) (35 U.S.C. §§ 321-329): any validity ground (not just prior art); must be filed within 9 months of patent grant; institution standard: 'more likely than not' petitioner would prevail on at least one claim (higher threshold than IPR); (d) DERIVATION PROCEEDINGS (35 U.S.C. § 135): determine whether the named inventor derived the claimed invention from another inventorship source; (e) COVERED BUSINESS METHOD (CBM) REVIEW: a special category of PGR for business method patents related to financial products; transitional program under AIA, now expired.

Ex parte appeals are the primary way applicants challenge USPTO examiner rejections beyond the office action stage: WHEN AN APPEAL IS APPROPRIATE: after receiving a final rejection or after a second rejection of the same type; when the examiner and applicant cannot resolve the rejection through arguments and amendments; when the examiner's position is legally incorrect (claim construction error; misapplication of § 101 or § 103); APPEAL PROCEDURE: (1) FILE A NOTICE OF APPEAL: must be filed within the period for response to the final rejection (usually 3 months, extendable to 6 months); small entity fee: $860; (2) FILE AN APPEAL BRIEF: within 2 months of filing the Notice of Appeal; the Brief must: identify each ground of rejection being appealed; present arguments for each ground; identify claims on appeal; cite claim construction; cite law; (3) EXAMINER'S ANSWER: the examiner files an Examiner's Answer responding to the Appeal Brief; may include a NEW GROUND OF REJECTION (which triggers a special procedure); (4) REPLY BRIEF: the applicant may file a Reply Brief within 2 months of the Examiner's Answer; optional but recommended if the Examiner's Answer raises new arguments; (5) ORAL ARGUMENT: optional; the applicant may request an oral hearing before the PTAB panel; less common than in district court but available; PTAB DECISION: PTAB issues a written decision; may: affirm all rejections; reverse some or all rejections; make a new ground of rejection (which sends the case back to prosecution); APPEAL OF PTAB DECISION: an unfavorable PTAB decision on examination may be appealed to: the Federal Circuit (direct appeal); or by filing a civil action in district court (de novo review under § 145); de novo district court review is now much less common than Federal Circuit appeal.

Inter partes review and post-grant review are adversarial trial-type proceedings: INSTITUTION PHASE (0-6 months from filing): petition filed; patent owner may file a preliminary response (within 3 months); PTAB decides whether to institute (institute IPR: 'reasonable likelihood' standard; institute PGR: 'more likely than not' standard); institution decision is not appealable separately (it is reviewed on appeal of the final written decision); TRIAL PHASE (6-12 months from institution): if instituted, the proceeding becomes a trial; discovery: limited to depositions of declarations; routine discovery (automatic production of exhibits); additional discovery on 'good cause' standard (rarely granted); PATENT OWNER RESPONSE: due within 3 months of institution; may include: expert declarations; claim amendments (one round of 'reasonable number' of substitute claims — but amendments are difficult and rarely succeed); PETITIONER REPLY: within 3 months of Patent Owner Response; expert depositions: both sides may depose the other's experts; ORAL HEARING: both sides present oral argument to the three-APJ panel; FINAL WRITTEN DECISION (12 months from institution, extendable for good cause): PTAB issues the Final Written Decision (FWD); the FWD determines the validity of all challenged claims; claims found unpatentable = cancelled; claims surviving = confirmed; ESTOPPEL EFFECT: the petitioner is estopped from asserting in subsequent proceedings that the same claim is invalid on any ground 'that the petitioner raised or reasonably could have raised' in the IPR; petitioner's estoppel: district court; ITC; another PTAB proceeding; estoppel is one of the most significant strategic considerations in IPR.

PTAB and district courts have historically used different claim construction standards with important implications: HISTORICAL SPLIT: prior to 2019, PTAB used the Broadest Reasonable Interpretation (BRI) standard for claim construction; district courts use the Phillips standard (Phillips v. AWH Corp., Fed. Cir. 2005 en banc); the standards differ: BRI gives claims the broadest reasonable meaning in light of the specification; Phillips uses the meaning a POSITA would give in the context of the intrinsic evidence; BRI was generally broader than Phillips, creating an asymmetry: claims construed broadly at PTAB = easier to invalidate; same claims construed narrowly at district court = harder to invalidate; 2019 RULE CHANGE (37 C.F.R. § 42.100): effective November 13, 2018, PTAB adopted the Phillips standard for IPR/PGR proceedings; PTAB now uses the same claim construction standard as district courts; this was intended to reduce the asymmetry; IMPACT OF ALIGNMENT: same claim construction at PTAB and district court; reduced risk of inconsistent claim scope determinations; BUT: residual differences remain because: PTAB allows claim amendment (substitute claims) — district court cannot amend claims; PTAB applies claims to prior art; district court applies claims to accused products; the technical analysis differs even if the standard is the same; FRESH CLAIM CONSTRUCTION: in some cases, a district court claim construction decided before PTAB institution is given deference by PTAB; post-2019 rule, the alignment is closer; but PTAB is not strictly bound by a district court claim construction; EX PARTE APPEALS: BRI is STILL used in ex parte patent prosecution appeals; the 2019 rule change was limited to IPR and PGR proceedings; prosecution before the USPTO still uses BRI.

Federal Circuit review of PTAB decisions has specific standards and important procedural rules: APPEAL RIGHT: after a PTAB final written decision in IPR/PGR: either party (petitioner or patent owner) may appeal to the Federal Circuit; the Federal Circuit has exclusive jurisdiction over appeals from PTAB patent validity decisions; STANDARD OF REVIEW: LEGAL QUESTIONS: de novo review (the Federal Circuit decides the legal question without deference to PTAB); includes: claim construction (Phillips standard applied de novo); whether a claim is eligible under § 101; interpretation of statutes and regulations; FACTUAL FINDINGS: reviewed for 'substantial evidence' — whether a reasonable factfinder could have made the same finding; factual findings include: what a POSITA would understand; whether a prior art reference discloses a specific element; INSTITUTION DECISIONS: Cuozzo Speed Technologies v. Lee (S.Ct. 2016): PTAB institution decisions are not appealable if PTAB institutes 'on the merits' (whether the petition meets the applicable standard); but institution decisions based on jurisdictional or procedural grounds (§ 315(b) time bar; § 315(a) bar from prior civil action) may be reviewable; POST SAS INSTITUTE: SAS Institute v. Iancu (S.Ct. 2018): PTAB must institute review of ALL claims challenged in the petition (not just some); all-or-nothing institution; THRYV v. CLICK-TO-CALL: PTAB's application of the § 315(b) time bar (1-year service-of-complaint limitation) is committed to the USPTO Director's discretion and not appealable; DIRECTOR REVIEW: the USPTO Director may review PTAB decisions; USPTO Director discretionary review has been used to override some PTAB institution decisions in high-profile cases; FEDERAL CIRCUIT TO SUPREME COURT: the Supreme Court has addressed significant PTAB questions: Oil States Energy Services v. Greene's Energy Group (2018): IPR is constitutional (inter partes review of issued patents by PTAB does not violate Article III or Seventh Amendment).