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28 October 2016Patents

AIPLA 2016: PTAB judges are not juries, advises Chief Judge Ruschke

Judges at the Patent Trial and Appeal Board (PTAB) are not juries and shouldn’t be approached in that way.

This is the opinion of David Ruschke, chief judge at the PTAB, speaking at the luncheon yesterday, October 27, at the 2016 Annual Meeting  of the American Intellectual Property Law Association (AIPLA) in Washington, DC.

“I can’t say this enough and it seems very obvious, but know the record,” he said. “I would encourage you, and I know this may be a little bit of heresy out there, but sometimes that eighth or ninth year associate who’s been living this inter partes review (IPR) as his or her entire life may know the record better than the senior partner.”

Ruschke added that when he was in-house counsel, he did move responsibility for some of the oral arguments to younger members.

“For example, you see it fairly often, particularly if they are district court counsel as well as an IPR counsel, they will want to talk about inconsistent statements, which are relevant … but will focus too much on selling a story as if the jury isn’t aware of the recent case law and all of the technology that’s out there,” he said.

Only eight precedential decisions have been issued by the PTAB so far, and Ruschke explained this process.

There is a publications committee on the board, comprised of a large number of judges, and an individual judge can make a recommendation to the committee for a case to become precedential at any time.

Within 60 days of a decision coming out, any party to the decision can also make a petition to the chief judge.

“One thing you may not all be aware of is that third parties can do that as well. If any of you see a case that is particularly on point to be precedential, whether you’re a party or not, within 60 days you can make a request in writing to the chief judge.”

He added that the case then makes its way through the process and if it passes through the committee and then management (Office of the Chief Judge) for approval, it goes to a vote of the judges.

But there are 272 judges and it has to be a majority vote, presenting “a big hurdle”.

Ruschke said the board is currently looking at this process and seeing if it is actually the best way forward.

“The vehicle for precedential opinions is probably the best way for us to go, and if we’re wrong, we’re wrong and the Federal Circuit will tell us.”

The biggest challenge for Rushcke is making the board adopt the mindset of being a single entity with a large number of pre- and post-America Invents Act judges.

“I do view this as one board. There has always essentially been an appeals division and a trials division,” he said.

He is encouraging all of the judges to have mixed dockets, as he views all of them as being qualified to handle any part of the board’s jurisdiction.

The AIPLA 2016 Annual Meeting finishes on October 29.

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