AIPLA 2015: Rea supports three judges making IPR decisions

Former acting director of the US Patent and Trademark Office (USPTO) Terry Rea has endorsed the status quo of three judges deciding whether to institute an inter partes review (IPR).

Rea, who is now a partner at law firm Crowell & Moring, was addressing a session at the AIPLA 2015 Annual Meeting in Washington, DC today, October 22.

The USPTO has proposed a pilot system under which a single judge at the Patent Trial and Appeal Board (PTAB) would assess an IPR petition. If the case was then instituted, an additional two judges would help to oversee the trial. Currently, three judges assess a petition and then handle the trial.

Rea said that while she has no idea whether the USPTO will implement the pilot scheme, having three judges at the initial stage is better because they provide clearer decisions.

With several PTAB judges in the front row, Rea was speaking to a busy conference room about best practices for using the trials created under the America Invents Act: the IPR, covered business method review and post-grant review. In her time as deputy director of the USPTO, Rea was involved in writing the regulations implementing the trials.

She advised patent owners hit with an IPR to file a preliminary response with the PTAB in order to stop the case in its tracks at an early stage. Because there will often be parallel district court proceedings, she said, patent owners that successfully stop an IPR trial from being instituted can say to the district judge that the petitioner “couldn’t get over the first hurdle”.

This may allow for a “gold-plated patent”, she said.

The USPTO has also proposed allowing patentees to put forward evidence including expert testimony when responding to an IPR petition. Rea said the proposals don’t say what evidence is allowed, but that claim construction and obviousness analysis may be permissible.

“The early development of the record would increase efficiency by leading to fewer institutions or institution on fewer grounds,” she added.

Although it’s not clear whether the petitioner could then reply to the testimony, Rea said it most likely could in order to rebut new issues, for example, but that the petitioner probably wouldn’t be allowed to submit new prior art or clarify original arguments.

“In bold, the petitioner needs to get it right the first time,” she said.

According to Rea, PTAB judges already have an idea of “which way they’re going to go when they walk in the room” for oral hearings, which precede a final decision. They are “extraordinarily prepared” and will ask probing questions, she said, noting that “your job is to answer the questions, give the judge what they want and hopefully your side will win”.

The AIPLA 2015 Annual Meeting takes place from October 22 to 24 at the Marriott Wardman Park Hotel in Washington, DC.