The ‘then and now’ of PTAB


Alex Baldwin

The ‘then and now’ of PTAB

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After the US Patent Trial and Appeal Board (PTAB) was first formed in 2012, it soon gained a reputation as the ‘patent killer’ for knocking out patents via inter partes review (IPR).

Now, nearly a decade later, a WIPR Patents Live panel discussed how the board has changed and what patent practitioners may expect to see in future.

WIPR’s group publisher Peter Scott sat down with Oblon partners Lisa Mandrusiak and Christopher Ricciuti and Finnegan partner Trenton Ward to discuss, in particular, last year’s key developments and how these should influence an IPR filing.

“Before PTAB, patent owners were very used to asserting very broad patents that did not hold up to scrutiny. They would take their chance before a district jury that would generally be patent owner friendly. PTAB and the IPR process has now resulted in less but higher quality patents,” said Ricciuti.

If you are considering filing an IPR, the panel laid down some basic ground rules to consider before taking your case to the appeal board.

Mandrusiak said: “When you get sued, you want to file an IPR as soon as possible even though you have a year to file. The court won't look favourably on you delaying, I have even seen some IPRs turned away after filing two months after.”

Arthrex case

One of the biggest stories concerning PTAB right now is the Arthrex v Smith & Nephew case. This challenged whether the appointment of PTAB’s administrative patent judges (APJs) was unconstitutional. The future of the board could be dependent on the ruling.

“I think that the PTAB has proven itself too valuable to simply go away,” said Trenton.

“A fix will come but how the Supreme Court chooses to remedy the situation could be a problem. A legislative fix would be an easy one, but no decision that passes through congress could really be characterised as ‘easy’.”

Mandrusiak said: “Given the implications this case could have on other agencies, I think the supreme court will be trying to institute a fix in as simple and specific a way as possible.”

What does the future hold?

With PTAB’s growing importance in patent disputes, WIPR’s Scott asked the panel what the future looks like for the board and IPRs.

“The practice before the PTAB has become increasingly complex and that is something you need to keep in mind when you come in on either the offensive or defensive side,” Trenton said.

Mandrusiak added that stakeholders “need to be cognizant that their issues will be solved at PTAB rather than district courts” in the next year.

Watch the session PTAB Developments.

WIPR Patents Live hosts weekly broadcasts from some of the best speakers in the technology sector in the form of virtual panel discussions, roundtables, webinars and presentations.

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WIPR Patents Live, PTAB, Oblon, Finnegan