AIPLA 2018: PTAB judges talk construction and cherry picking
Cherry picking and claim construction were two topics that a group of Patent Trial and Appeal Board (PTAB) judges advised on at the 2018 AIPLA Annual Meeting in Washington, DC last week.
Acting chief administrative judge Scott Boalick opened the panel with an outline of PTAB statistics.
During fiscal year 2018, the board affirmed nearly 60% of examiners’ decisions, reversed the decisions in just under 30%, and issued a partial mixed opinion in 10% of cases.
Boalick added that since the implementation of the America Invents Act (AIA), the PTAB has received 9,000 filings in total. More than 90% of these filings are inter partes reviews (IPRs), 6% are covered business method reviews and 1% are post grant reviews.
In April this year, the number of IPR fillings dipped, corresponding to a period of uncertainty before the Oil States decision was issued.
On April 24, the US Supreme Court held that IPRs do not violate the US Constitution and that the PTAB has authority to invalidate patents.
Filings soon “bounced back and have stabilised ever since”, said Boalick.
The judge also detailed the October 11 publication of the final rule for claim construction in AIA proceedings. The Phillips claim construction rule will replace the “broadest reasonable interpretation” standard and be applied to all petitions filed on or after November 13, 2018.
According to Boalick, the rule change will “help to give greater consistency and harmonisation for the overall certainty and predictability in the patent system”.
He explained that the change addresses potential unfairness that arises from having to argue different constructions in different proceedings.
Jackie Bonilla, acting deputy chief judge at the PTAB, added: “If there has been claim construction [in another proceeding], mention it to us. We don’t necessarily have time to go on Pacer.”
She advised parties to raise the construction in primary papers if it has already taken place. If the district court issues a construction mid-trial, parties should submit the information as soon as possible.
While the PTAB is not bound by a district court’s claim construction, there’s now likely to be a “a lot more deference to each other”, noted Bonilla.
For parties looking to argue a different claim construction from a district court’s or a US International Trade Commission panel’s decision, it can be difficult.
Kal Deshpande, another judge, wished parties luck with this choice, before adding that they will need to really explain why this is a different position in a different forum.
“The opposing party will call foul, [so you need to] anticipate this,” he said.
The panel also referenced the publication of two new standard operating procedures (SOPs) for the PTAB in September.
The first SOP relates to the assignment of judges to panels at the PTAB, a move which Bonilla said was to be transparent about the process and to “dispel any conspiracies about cherry picking of cases”.
The second SOP creates a precedential opinion panel (POP) which will set out binding policy and outlines the requirements for designating a decision as precedential.
Deshpande noted that a major component of the SOP is the involvement of members of the public who can submit a case for review as a precedential decision.
“Anybody can submit for review, we’re listening,” he added.
Gabrielle Higgins, partner in Ropes & Gray’s Silicon Valley office and the panel moderator, noted that some have commented that the opinion panel review may largely replace prior expanded panel practice.
Bonilla responded: “Panel expansion has been relatively rare. The big thing people are concerned about is that situation, which is exceedingly rare, where the board has expanded the panel for the purposes of changing an outcome.
“That has happened before at the board in just a handful of cases in situations where we knew we needed some consistency and we have determined agency policy on that.”
The POP system would effectively replace this, but it doesn’t mean the board will never have certain panel expansions in cases where it will be useful, added Bonilla.
As for other advice, lead administrative patent judge Michael Kim said: “I can speak for the vast majority [of PTAB judges]: nothing ruins our day more than a dispute about presentation slides. I’ve never been swayed by a slide. Please don’t bring disputes over slides to us.”
The 2018 AIPLA Annual Meeting finished on Friday, October 26.
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