In his previous role, Dr. Ruschke managed the intellectual property portfolio of Medtronic’s CSH business unit, with sales in excess of $3 billion. As chief patent counsel, Dr. Ruschke participated in numerous patent appeals, interferences, post grant reviews, inter partes reviews, and covered business method patent reviews. He gained extensive experience in post-grant proceedings in Europe and participated in third-party contested proceedings before administrative agencies and courts around the world. He has significant experience in shaping and integrating teams of professionals, as well as managing a workforce that is geographically dispersed. Prior to joining Medtronic, Dr. Ruschke practiced with Covington & Burling in Washington, D.C., where he litigated claims of patent infringement. Dr. Ruschke’s judicial experience includes clerking for Chief Judge Glenn L. Archer, Jr. and Circuit Judge Arthur J. Gajarsa at the U.S. Court of Appeals for the Federal Circuit. Dr. Ruschke received his JD from Georgetown University Law Center, and holds a PhD in organometallic chemistry from the Massachusetts Institute of Technology and a BS in chemistry from the University of Minnesota.

What are your priorities for the Patent Trial and Appeal Board (PTAB) during your tenure?

Certainly, one of the biggest priorities I have is to make sure that our backlog on ex parte appeals continues to decrease over time. Our goal is essentially to get that to a one-year pendency. If I’m not mistaken, right now we are covering around a two-year pendency and the backlog itself over the last fiscal year dropped from about 21,000 appeals to 16,000 appeals.

The reason I put that first is because everybody always wants to talk about the America Invents Act (AIA), which is very important, but I have to remind everybody that AIA reviews or ex parte appeals are really our bread and butter. Two-thirds of our judges, and essentially two-thirds of our work, involve the ex parte appeals process. So, we are proud of the progress that we’ve made, and we hope to continue that going forward. I think getting the appeals backlog down to a reasonable one-year pendency level will be a really important accomplishment for the PTAB. Nobody touches AIA workload until they have done all of the ex parte work.

The other big priority for me is to keep building on and evolving the PTAB and its procedures to make them as fair, efficient, and effective as possible for AIA reviews. We certainly want to make sure that we maintain our one-year statutory deadline record for inter partes review (IPR) proceedings that we have been very good about over the last four years. We haven’t missed one yet and we don’t plan on it. We want to provide the same stability and certainty for the district courts when determining litigation.

I think we are definitely going to keep working on quality and consistency. We talk about quality within the United States Patent and Trademark Office (USPTO) generally, but it is our mandate specifically for the PTAB and AIA as a quality check on issued patents. We will continue to try to do that as consistently as we can even with 272 judges.

That’s impressive, that the PTAB has been able to drop the backlog of ex parte appeals. When do you think you’re going to get to the one-year goal?

We’ve done a fair amount of modeling in trying to figure this out. We are making a lot of assumptions—one of the big assumptions being that the AIA workload will stabilize. Our fiscal year (FY) numbers look as if that’s going to be the case.

If not, we’re going to probably lower the pendency somewhat this FY16, which just ended in September 2016, versus the FY15 numbers. If that holds and the post-grant review (PGR) numbers continue to incrementally increase, which is what we are anticipating, we can keep the workforce fairly constant. We don’t need to accelerate any hiring, and in fact, we’re not planning on any hiring. I believe we’re going to get to the one-year pendency rate within another fiscal year, perhaps a little longer. I apologize for caveating that with so many assumptions, but if the AIA workload holds where we ended in FY16 for FY17, I think without further hiring we can get to a one-year pendency in one more fiscal year, maybe a little longer into FY18.

Concerning motions to amend in AIA trials, in Microsoft Corp. v. Proxyconn, Inc.,¹ the USPTO argued that it needed flexibility in the amendment practice, and therefore rulemaking was not the appropriate way to go about establishing the process, because it didn’t provide as much flexibility. When do you think the USPTO will have enough experience with the amendment process to formalize its policies and procedures for motions?

The motion to amend practice has to be slightly caveat-based on In re Aqua Products, Inc.² Because that could create a lot of changes in what we’re doing right now, it may result in implementing whatever the Federal Circuit says, and it could have some ramifications as to how we operate internally, whether or not new rules come out. It’s hard to say, and I really don’t want to speculate about that.

I still believe right now that we do need that flexibility when it comes to amendment practice. Certainly we haven’t seen as many amendments, and I’ve heard anecdotally that a number of stakeholders are not moving into the amendment practice because they feel that it’s going to be futile, essentially.

I understand those concerns, but again I feel that if we get substantive amendments that truly overcome the prior art, we will grant those motions and those amended claims will issue. And again, until we can get to that point I think the flexibility that we need is important to us. We’re not in a position to do a full examination if we’re going to make our statutory deadlines. We’re not situated to do that, but we do need the flexibility, as I think our position is to try and address the amendments as much as we can.

I think amendments are the primary justification in requiring the broadest reasonable interpretation (BRI) in AIA trials. Would the system be better off using the Phillips v. AWH Corp.³ standard at AIA trials instead of BRI?

Well, you know you phrase the question as “would it be better off.” I like to revert to what Justice Breyer said in Cuozzo Speed Technologies, LLC v. Lee.⁴ He understands that we could have chosen to go with BRI to be internally consistent with our reexamination claim construction standard, or we could have chosen to go with the Phillips standard to be consistent with the district court. Essentially, it was up to us to determine which way we wanted to go. Our choice made reasonable sense to him, and I think it does make reasonable sense. I’m not comfortable saying that one is better than the other, but I think the choice that we made was certainly validated by Cuozzo.

Do you have any opinion on the differences between BRI and Phillips?

There’s certainly case law out there that says there is a difference. At our own PTAB Bench and Bar Conference we had in June 2016, some of the panelists, one who was a federal circuit judge, didn’t think there was a difference and quoted from opinions that seemed to indicate that there wasn’t any difference.

I personally am not sure that there is a difference. But I do think that the standards are there and we apply them correctly. If Congress changes it or if the courts change it, we will certainly go along with that. But for now Cuozzo validated our decision to go with BRI, and I think it’s working.

You mentioned earlier that you were expecting an uptick in PGR petition filings. I know that you have a lot of experience with European oppositions, and you stated at a recent Patent Public Advisory Committee (PPAC) meeting that you were surprised that PGRs weren’t used more frequently. Why do you think PGR petitions are an untapped resource, and why do you think the rate of filing is going to increase?

The statistics are showing a very slow uptick in PGRs year over year. We’ve gone from essentially the single digits to perhaps the teens or 20s now over the last couple of years. So, small growth, but I think one of the biggest reasons we have for the low numbers is the small pool of patents that are even eligible for PGR.

When inter partes reexams were started, there was a very slow uptick for exactly the same reason—that there weren’t a lot of patents in the pool that would be eligible for those proceedings. But I think it’s also going to take a mindset change for some of the U.S. practitioners.

In Europe, because the procedures have been in existence for quite a long time, it’s de rigueur to go through the opposition practice against your competitor, and that is one of the primary means for coming to settlement and obtaining freedom to operate. Certain “freedom to operate” analyses are very important to the public over there. The mindset in the United States is still relying fairly heavily on legal opinions of counsel for freedom to operate and hedging your bet before you get to district court litigation—if you have to get to district court litigation.

So I think there is going to be some education that I hope to provide to the practitioners out there who are unfamiliar with the European patent practice. For instance, when I spoke at Stanford University, there were about 250 people in the audience, and only three arms were raised when I asked how many of them had done European Patent Office practice.

It’s a different mindset as to how to operate as a patent practitioner, and to get that answer early there are potential downsides, because sometimes you do want to hedge your bets. You don’t want to show your cards early, and a lot of strategic decisions have to be made. But ultimately, I think slowly we’ll make a change with some of the technology areas, and competitors will see PGR petitions as a real, viable option to use for freedom to operate, and I’m excited about it.

I’m not too worried about the PGR numbers, but you do hear about one issue, which of course is the estoppel provision. I think that also is a matter of changing some folks’ perceptions because people always want to hedge their bets just in case there is a litigation, and they don’t want to put all their eggs into the IPR and the PGR basket because of the estoppel provisions. But ultimately, if the PTAB can provide certainty up front, one way or the other—valid/invalid, license/no license—I think the public would be very receptive to those sorts of answers. The strict time limits that we have in the United States, which we’ve been able to meet, really enable us to be able to provide that certainty early on in the process. So people don’t wait five or 10 years for potential district court litigation.

You mentioned consistency across the panels being a priority for your PTAB. What are you doing to ensure consistency?

It is somewhat difficult of course because we have 272 judges—not all of whom work on AIA proceedings—to ensure consistency with. I look at it as across the entire PTAB, not just with respect to the AIA proceeding. I do like to point out our consistency challenge compared to the Federal Circuit’s consistency challenge, which is across 12 judges.

But with that said, consistency is a very important issue for us. What we try to do is make sure that all of the case law coming down from the Federal Circuit and any guidance we get from the Federal Circuit, or in Cuozzo from the United States Supreme Court, is well vetted among the judges. We do regular trainings, regular updates, and brown-bag lunches with everybody to discuss the issues that were raised and what potentially we might want to change, if anything, in response to the Federal Circuit’s rulings and remands to us.

Also, as a general matter before any decision goes out, we make sure that the decision is reviewed extensively—that we’re aware of any issues where there are certain differences of opinion. For instance, sometimes it’s just a valid statutory interpretation and sometimes it’s discretion. One judge in his or her legitimate discretion will come down one way and another judge will come down a second way. But we certainly make sure to review a concurrence or dissent, when there is one, to make sure that those opinions are coming out consistent with our precedential cases.

And on that note, precedential opinions are another piece to the puzzle of consistency that we’re taking a very strong look at. We released five precedential opinions in May 2016. We issued another precedential opinion in September 2016. We’re taking a strong look at our process for how we issue precedential opinions and the different means we have to get more precedential opinions out there to the public, and to the judges where the opinions serve as guidance and help with consistency.

The American Bar Association (ABA), Intellectual Property Owners Association (IPO), and American Intellectual Property Law Association (AIPLA) are responding to the PTAB’s call for suggestions for precedential decisions. Do you think there are certain areas these organizations should be looking at in particular?

I’m not sure I would call out any specific areas. I’ve seen some specific calls for precedential opinions written in draft legislation.

What I would say to all of those organizations is that there is a process we have where the public, all of our stakeholders, ABA, AIPLA, and IPO, can submit to the PTAB a suggestion for precedential opinion. Then we will work that through our internal vetting process and put it to a vote if possible. I encourage them to use that process. We’ve seen it used occasionally, but not nearly as much as it could be so I don’t think most people are aware of it.

Now I might be opening the floodgates for us, but it’s important for the public to know that’s a way for them to tell us what they think is important, and why. Not only to just tell us the case, but also to ask, “What in that case in particular?” If that case perhaps doesn’t become precedential, it does highlight to us a concern of the stakeholders, and that in and of itself is valuable.

When the new rules came out earlier this year, there was mention of possibly updating the Trial Practice Guide. Is that going to happen?

We’re still continuing to evaluate the need for an update to the Trial Practice Guide, but an update is always a good thing to do. I don’t think we have updated it since it first came out, and it’s been out there for three or four years. We have a committee actually looking at that. I’m not going to be able to give you specific timing on it, but I’m hoping to get it out soon, with at least some additional guidance, depending on any effect by the presidential transition. But it’s on our radar screen and it’s certainly a good way to provide guidance to practitioners before the PTAB.

With the rule changes earlier this year, there was a perception that there was an attempt to address people’s view that perhaps patent owners weren’t being treated fairly. So you increased the page limit for motions to amend, and allowed evidence at the preliminary response stage. Have those rule changes affected the ultimate outcomes, either at institution or final written decision?

We don’t have data with respect to the new evidence on the patent owner’s preliminary response piece since the rule change just happened in May.

The statistics that I have seen are that approximately 40–45 percent of patent owners are taking advantage of submitting evidence at the preliminary response stage. That shows that the new rule is at least being seen positively by the patent owners, and it was something that they were looking for.

I don’t have statistics or even anecdotal evidence as to whether that’s affected decisions to institute. We’re way too far away from final written decisions at that point to have any such evidence. But ultimately, it was meant to affect the institution decision and not the final written decision.

Director Lee once expressed a desire to sit on a panel. Is that still going to happen?

Yes, I believe that happened in August 2016. The oral hearing occurred in August, but she has not issued her opinion yet.

Janet Gongola, who led the AIA implementation at the USPTO, recently joined the PTAB as a vice chief judge. I understand she has some public outreach responsibilities. Could you elaborate on that? Do you have any plans for upcoming public outreach?

Janet Gongola’s official title is Vice Chief Judge for Engagement, where engagement is both external and internal. Many of the things that she was already doing for Director Lee’s office were directed at the PTAB, because Director Lee took a very strong interest in the PTAB as being an important piece of her quality initiatives. So Janet’s movement to the PTAB makes sense because a lot of the things she was doing were for the PTAB.

A number of the external things that we do come from the PTAB Bench and Bar Conference, which we hope to continue. We’re hoping to do some road shows again that she organized for us back in 2014. We went to each of the regional office regions and had a stadium show at various law schools. It’s a really nice way to get visibility for the PTAB and educate the public, certainly law students. I think she’s going to mandate a plan for reaching out on a regular basis to all of our stakeholders, not just AIPLA, IPO, and the ABA, but also small inventors.

She’s going to be continuing a lot of the same things that she was doing before, like providing education through the PTAB’s website chats on a monthly or bimonthly basis. Hopefully we’ll have some additional things to show as well. She just joined the PTAB recently, so we welcome her and are excited to have her.

Endnotes

1. 789 F.3d 1292 (Fed. Cir. 2015).

2. 823 F.3d 1369 (Fed. Cir. 2016).

3. 415 F.3d 1303 (Fed. Cir. 2005).

4. 136 S. Ct. 2131 (2016).