Published in Landslide Vol. 11 No.2, ©2018 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
This article is authored by an employee of the USPTO; no copyright is claimed by the United States in this article or associated materials.
In 2011, Congress created a new administrative body in the United States Patent and Trademark Office (USPTO) called the Patent Trial and Appeal Board (PTAB), giving it the powers and duties of the existing Board of Patent Appeals and Interferences (BPAI), as well as the authority to hear and decide several types of newly created post-grant challenges to issued patent claims. In the years since it was formed, the PTAB has simultaneously continued the work of its predecessor organization, deciding thousands of appeals each year from the decisions of patent examiners, and become one of the most active patent law forums in the nation through its handling of the new post-grant proceedings. This first in a planned series of articles introduces the PTAB and what it does. This article focuses on the formation, structure, and activities of the PTAB. It discusses the processes the PTAB uses to arrive at its decisions, and introduces a taxonomy of PTAB decisions that provides a useful frame of reference for deeper discussion and understanding of the PTAB.
Who the PTAB Is and What the PTAB Does
Formation of the PTAB
The PTAB came into existence on September 16, 2012. It was not created out of whole cloth, however. Instead, it replaced an existing body, the BPAI, which had existed in its most recent form since 1985. The BPAI, in turn, had replaced the earlier separate Board of Appeals and Board of Interferences. An administrative body within the USPTO to decide patent-related issues has existed in one form or another since 1836. The current statutory basis for the PTAB is the America Invents Act (AIA),1 which created the PTAB, specifies its membership, and sets its duties.
Structure of the PTAB
There are four statutory members of the PTAB. They include the Director of the USPTO, the Deputy Director of the USPTO, the Commissioner for Patents, and the Commissioner for Trademarks.2 Each is a full voting member of the PTAB with the same authority as any other member.
Administrative Patent Judges
In addition to the statutory members, the PTAB includes a number of administrative patent judges (APJs). They are “appointed by the Secretary [of Commerce], in consultation with the Director [of the USPTO].”3 In addition, they are limited to “persons of competent legal knowledge and scientific ability.”4
Thus, every APJ must have a technical background, in addition to a law degree and experience in the legal field. The technical experience of the PTAB is staggeringly extensive. The PTAB currently has 29 APJs with doctoral degrees and 75 with master’s degrees. Collectively, the APJs possess more than 100 science degrees and more than 150 engineering degrees. Several hold medical degrees. Many APJs have had distinguished engineering or scientific careers in addition to their legal experience. Eighty-seven APJs worked as patent examiners before being appointed to the PTAB, a particularly useful background for people who often are asked to opine on the work of patent examiners.
As befits a group whose members must have both “competent legal knowledge and scientific ability,” the legal backgrounds of the APJs are just as impressive as their technical abilities. Nearly 50 APJs served as law clerks at the Court of Appeals for the Federal Circuit, and more than 30 clerked at federal district courts. Over 200 had experience in law firms before being appointed to the PTAB, and more than 40 served in other legal roles in the federal government, including at the International Trade Commission, the Department of Justice, the Food and Drug Administration, and the USPTO in both the Solicitor’s Office and the Office of General Law. Almost 50 APJs worked in corporate in-house legal roles, and more than 20 served their nation in the armed forces.
Other Employees of the PTAB
The members of the PTAB are assisted by more than 100 other employees of the PTAB. These employees schedule and manage hearings, provide paralegal support to the members of the PTAB, assign cases to panels of PTAB members, maintain the PTAB’s information technology infrastructure, and support PTAB management.
The PTAB is managed by a Chief Administrative Patent Judge, who is assisted by a Deputy Chief Administrative Patent Judge and several Vice Chief Administrative Patent Judges. All of these are APJs who meet the requirements of 35 U.S.C. § 6(a) as “persons of competent legal knowledge and scientific ability” and who can and sometimes do decide PTAB cases. Each Vice Chief APJ administratively supervises several sections of APJs, each of which is headed by a Lead APJ. The Board Operations Division is headed by a Board Executive, who reports to the Chief APJ. PTAB members and employees work from USPTO headquarters in Alexandria, Virginia; all four USPTO regional offices in Detroit, Denver, Dallas, and San Jose; and many remote locations via telework.
Activities of the PTAB
The AIA spells out the duties of the PTAB, specifically assigning it four tasks.5 Two of these require the PTAB to decide appeals from decisions of the USPTO. Specifically, “on written appeal of an applicant,” the PTAB “review[s] adverse decisions of examiners upon applications for patents,”6 and the PTAB “review[s] appeals of reexaminations.”7 The other two tasks the PTAB carries out relate to trial cases: the PTAB “conduct[s] derivation proceedings”8 and “conduct[s] inter partes reviews and post-grant reviews.”9 The post-grant reviews include reviews under the Transitional Program for Covered Business Method Patents.10 In addition, the PTAB continues to decide interference cases in older patent applications. Currently, the PTAB decides about 12,000 appeals and 1,500 trial proceedings per year.
Statutory Paneling Requirements
The members of the PTAB do not decide cases as individuals. The statutes governing the PTAB require “[e]ach appeal, derivation proceeding, post-grant review, and inter partes review [to] be heard by at least 3 members.”11 The PTAB applies the requirement for at least three-member panels to interference proceedings as well. The PTAB typically applies the three-member panel requirement to both final and interlocutory decisions, although interlocutory matters are sometimes decided by less than a full panel when operational needs require such action.
Typical Paneling Practice
Consistent with the statutory requirement, the PTAB initially assigns each appeal or trial proceeding to a panel of three APJs. Assignment of judges to cases is not random. Rather, the Paneling Team, part of the PTAB’s Board Operations Division, follows a set of paneling guidelines that take into account the technology backgrounds and preferences, experience levels, workloads, and conflict of interest information12 of the APJs. This ensures that each case is heard by a panel with appropriate technology backgrounds and a balance of experience levels. In addition, for reasons of efficiency and consistency, when the PTAB receives cases related to previously filed matters, the Paneling Team tries to assign the new cases to panels with members who heard the earlier matters.
The PTAB’s decision-making process begins with briefing from one or more parties. In ex parte appeal cases, the PTAB’s regulations provide for an appellant’s appeal brief, an examiner’s answer, and an appellant’s reply brief. In inter partes appeal cases, the PTAB receives an appellant’s brief, a respondent’s brief, an examiner’s answer, and a rebuttal brief. In trial proceedings, the parties are permitted to file a petition and a preliminary response before the PTAB decides whether to institute trial, as well as a response and a reply during any trial that is instituted. On interlocutory matters, parties may file motions and oppositions. On a case-by-case basis, panels may permit additional briefing, such as sur-replies on the merits of trial proceedings and replies in support of interlocutory motions.
The PTAB does not conduct oral hearings in all cases. A hearing must be requested by a party. When a hearing is requested by any party, the PTAB typically will hold a hearing. Appellants generally request a hearing in about 20 percent of ex parte appeals before the PTAB. Hearings in trial proceedings are much more frequent, occurring in nearly every case. The PTAB has seven hearing rooms in five locations. Three hearing rooms, including the largest one, are located in Alexandria, Virginia. There is also one hearing room in each of the four regional offices. Depending on where the parties and judges are located, the parties and APJs may appear at the hearing remotely. At least one APJ always is physically present in the assigned hearing room to administer the proceeding. The PTAB accepts requests from the parties to conduct a hearing remotely and has conducted hearings in Alexandria and all four regional offices. Currently, the PTAB conducts more than 1,000 hearings every year.
The panel of APJs assigned to hear a case holds conferences as needed to decide any interlocutory issues raised. On the merits, panels typically hold a conference to discuss the issues following the receipt of all relevant party briefing. An additional conference is held following any hearing. At this additional conference, the panel votes on the outcome, discusses the rationale for the decision, and chooses one member to write the opinion. When the panel cannot agree on an outcome or a rationale through discussion at the panel conference, a member of the panel may decide to dissent or concur, and that member also may use the panel conference as an opportunity to persuade the rest of the panel.
After the conference, the member of the panel who was chosen to write the majority opinion prepares a draft that is consistent with the outcome and rationale the panel discussed and agreed on. When necessary, the authoring APJ conducts additional conferences to address issues that become apparent only during the drafting of the opinion. When the draft opinion is finished, the authoring APJ circulates it to the other APJ panel members. During circulation, the rest of the panel may suggest changes to the draft, may agree with the draft, or may draft their own separate dissent or concurrence. The panel holds additional conferences to discuss any changes and any separate opinions, and no opinion issues until each member of the panel either agrees with the opinion as written or has written separately. In addition, during the circulation process, the opinion is reviewed by the PTAB’s paralegal staff, with necessary changes suggested to the panel.
When the panel has agreed on the opinion to be issued, the decision is filed in the administrative record and sent to the parties and their counsel. Following the issuance of a decision, the PTAB’s regulations allow for a single request for rehearing from a dissatisfied party.13 Requests for rehearing are decided by the same panel that made the initial decision, and they are considered in the same way: the panel receives briefing, holds a conference between APJs, then conducts an iterative process of discussion and drafting to craft a decision, which is reviewed by the PTAB’s paralegal staff before being issued.
Appeals from the PTAB
Decisions of the PTAB may be appealed to the U.S. Court of Appeals for the Federal Circuit.14 A party need not request rehearing of the PTAB’s final decision before appealing.
Taxonomy of PTAB Decisions
PTAB decisions can be divided into categories in several different ways, with differing procedures applicable to each category. Understanding these various categories can help with understanding what the PTAB does, how it does it, and why it does it in that way.
Routine, Precedential, and Informative Decisions
As explained in the PTAB’s Standard Operating Procedure 2 (SOP 2),15 the PTAB issues three types of decisions: (1) routine, (2) precedential, and (3) informative. Most decisions are issued as routine, meaning that the decision binds only the parties in the case. A precedential decision, however, is binding on the PTAB and all future parties. The PTAB may designate decisions as precedential for several reasons, including constitutional questions; important issues regarding statutes, rules, and regulations; important issues regarding binding or precedential case law; or issues of broad applicability to the PTAB. The precedential designation may also be used to resolve conflicts between PTAB decisions and to promote certainty and consistency among PTAB decisions. The PTAB designates decisions as informative to provide norms on recurring issues, provide guidance on an issue of first impression, or provide guidance on PTAB rules and practices, although informative decisions are not binding on other panels.
Appeal Decisions vs. Trial Decisions
As discussed above, the PTAB’s jurisdiction includes both appeal and trial matters. Decisions in appeals can reach the PTAB either following initial examination of a patent application or following ex parte or inter partes reexamination. Trial decisions include those made in proceedings under the AIA (inter partes reviews, post-grant reviews, and derivation proceedings) and in interference proceedings.
Institution Decisions vs. Final Decisions in AIA Trials
In proceedings under the AIA, trials proceed in two phases. In the first phase, a decision is made whether to institute trial. In the second phase, if a trial was instituted, the trial is conducted and a final written decision is issued.
The distinction between institution decisions and final decisions in AIA trial proceedings is important. In addition to the Director’s role as a statutory member of the PTAB entitled to a vote on any panel to which he or she may be assigned, the Director of the USPTO also has the duty to decide whether to institute trial.16 The Director has delegated this responsibility to the PTAB.17 Thus, although the PTAB makes institution decisions, the Director may play a role in how those decisions are made.
Over the five years since the PTAB came into existence, it has been staffed with a large number of APJs with a high level of technical and legal credentials and experience, as required by its governing statutes. Those APJs continue to decide thousands of appeals every year, along with issuing decisions in about 1,500 trial proceedings per year. In each of these thousands of cases, the PTAB must create a panel of at least three APJs, taking into account the technology backgrounds, experience levels, workloads, and conflict of interest information of the APJs, as well as the efficiency of PTAB operations and the consistency of PTAB decisions.
In each case, these panels of APJs consider party briefing and arguments presented at oral hearings, conduct panel conferences, draft and circulate opinions, including any dissenting and concurring opinions, consider the views of other panel members, and issue decisions. Whether those decisions are made in appeals or trials, whether they are institution decisions or final decisions, and whether they are precedential, informative, or routine, they all result from a process designed to allow panels of highly qualified APJs to render the most accurate and high-quality decisions.
1. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).
2. 35 U.S.C. § 6(a).
5. Id. § 6(b).
6. Id. § 6(b)(1).
7. Id. § 6(b)(2).
8. Id. § 6(b)(3).
9. Id. § 6(b)(4).
10. Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 18(a)(1), 125 Stat. 284, 329 (2011) (“The transitional proceeding implemented pursuant to this subsection shall be regarded as, and shall employ the standards and procedures of, a post-grant review.”).
11. 35 U.S.C. § 6(c).
12. Conflicts of interest at the PTAB are governed by the ethics policies of the Department of Commerce.
13. 37 C.F.R. §§ 41.52 (ex parte appeals), 41.79 (inter partes appeals), 42.71(d) (AIA trial proceedings).
14. 35 U.S.C. §§ 319 (inter partes reviews), 329 (post-grant reviews).
15. Patent Trial & Appeal Bd., Standard Operating Procedure 2 (Revision 10) (2018), https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf.
16. 35 U.S.C. §§ 314 (inter partes reviews), 324 (post-grant reviews).
17. 37 C.F.R. § 42.4(a).