State of the Board - Berkeley Law

4th US-China IP Conference

State of the Board

Matthew R. Clements

Lead Administrative Patent Judge

Patent Trial and Appeal Board

PTAB Organization

Statutory Members of the Board

The Board is created by statute (35 U.S.C. § 6).

35 U.S.C. § 6(a) provides:

There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board.

3

Board Action by Panel Decision

• 35 U.S.C. § 6(b) requires final decision by

minimum of 3-member Panels:

– “Each appeal and interference shall be heard

by at least three members of the Board, who

shall be designated by the Director.”

4

APJ – Basic Qualifications

• Many years of experience in the practice of patent law

(prosecution, litigation, or both).

• Degree(s)/work experience in science or engineering.

• Preferred experience in handling of patent matters in the

areas of electrical engineering, software, data processing.

• Must be able to work collaboratively in 3 judge panels.

• Must have excellent written and oral communication skills

and excellent legal reasoning skills.

• Must have proficiency with Microsoft Office Suite—

including Word and Outlook—and Adobe Acrobat.

5

APJ Selectees

• Selectees have come from the following:

– USPTO • Patent Examining Corps

• Office of the General Counsel

• PTAB (Patent Attorneys)

– International Trade Commission and Department of Justice

– Private Practice (solo to very large)

– All types of industries

APJ Training

7

New Judge Orientation

• All new judges participate in a one-week orientation

training session.

• Topics covered include: internal Board procedures, Board

organization/infrastructure, and Board resources.

Training Committee

• The Board has a Training Committee that conducts

formal training for all members of the Board.

Mentoring Program

• The Board has a Mentoring Program that matches new

judges with senior judges.

APJ Training

8

For newer judges

• initial guidance to ease the transition to the Board’s

unique mission and culture

• discussion of issues we see on a regular basis.

For all judges

• discussions of case law

• training on new areas of jurisdiction

The training agenda is developing continually, based on

judge input, as we constantly strive to look for new ways to

more effectively and efficiently fulfill our mission.

Board Size Over Time

5 5 9 13 13

4768

81

170 178

214

241

0

50

100

150

200

250

300

1900 1920 1940 1960 1980 1990 2000 2010 2012 2013 2014 2015

9

Sept. 16, 2011: America Invents Act (AIA) signed into law

USPTO Locations

10 *Alexandria, Va. count includes judges who participate in TEAPP.

PTAB Office Location Demographics as of August 24, 2015

11

66% 4%

5%

5%

9%

12%

Virginia

Michigan

Colorado

Texas

California

TEAPP

Proceedings before PTAB

• Appeals – From adverse decisions of examiners in ex parte patent

applications and in ex parte and inter partes reexamination proceedings

• Post Grant Proceedings under America Invents Act (AIA proceedings) – Inter partes reviews (IPR)

– Covered business method reviews (CBM)

– Post-grant reviews (PGR)

• Interferences/Derivations

12

Allocation of Duties Among Judges as of August 24, 2015

13

31%

52%

7%

8%

1% AIA

Ex parte Appeals

Inter PartesReexamination Appeals

Management

Interferences

AIA Proceedings

AIA Proceeding Timeline

15

Structure of Proceeding

• Same basic structure for all the proceedings

• Reduction of burdens on the parties via: – Streamlining and converging issues for decision;

– Use of page limits and electronic filing;

– Use of conference calls; and

– Institution of a trial on a claim-by-claim,

ground-by-ground basis

16

Major Differences

IPR, PGR, and CBM

17

IPR

All patents are eligible

Petitioner has not filed an

invalidity action and

petition is filed no more

than one year after service

of infringement complaint

for the patent

Only §§ 102 and 103

grounds based on patents

or printed publication

PGR

Only FITF patents are

eligible

Petitioner has not

filed an invalidity

action

Only §§ 101, 102, 103,

and 112, except best

mode

CBM Both FTI & FITF

patents are eligible,

but must be a covered

business method

patent

Petitioner must be

sued or charged w/

infringement

Only §§ 101, 102, 103,

and 112, except best

mode

AIA Proceedings

• Standard of proof

– A “preponderance of evidence”

• Lower than “clear and convincing evidence” required to challenge validity in district courts

• Final decision within 12 months of institution

– Can extend by 6 months, but only for “good cause” = rare

– Generally, entire process (petition → termination or final decision) will take 18 months or less

18

AIA Proceedings

Estoppel for civil actions and ITC proceedings Precludes petitioner, any real party in interest, or privy

from later challenging same patent claim

IPR/PGR: any ground “raised or reasonably could have raised” during review that resulted in final written decision

CBM: any ground “raised” during review that resulted in final written decision

19

What Patents and When

• IPR: depends on effective filing date

• Is effective f/d before or after March 16, 2013?

• Pre-AIA patents – anytime after issuance (technical

amendment)

• Post-AIA patents – 9 months after patent issues or

PGR is terminated (whichever is later)

• CBM: anytime after suit or charge of infringement

• PGR: within 9 months of patent issuance

• Post-AIA patents only

20

Standard for Initiating Review

• IPR: “a reasonable likelihood that the petitioner would

prevail” with respect to at least one challenged claim

• CBM/PGR: “more likely than not that at least one claim

is unpatentable” or the petition raises “a novel or

unsettled legal question that is important to other

patents or applications”

21

Scope of Review

• CBM: same as PGR, but must be a “covered business method” patent

– claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service

– does not include patents for “technological inventions”

– whether claimed subject matter as a whole recites a technological feature that is novel and unobvious over prior art,

and solves a technical problem using a technical solution

22

Derivation

• Derivation – differs from IPR, PGR and CBM – Only an applicant for patent may file a petition to institute

a derivation proceeding

– Applicant must file petition within 1 year of the date of the

first publication of a claim to an invention that is the same

or substantially the same as the earlier application’s claim

to the invention

– The petition must set forth with particularity the basis for

finding that an inventor named in an earlier application or

patent derived the claimed invention

23

Judicial Review of AIA Proceedings

• Decision whether to institute

– No appeal to court

– But may file a request for rehearing

• Explain how “Board misapprehended or

overlooked” something

• Final written decisions

– May appeal only to the Federal Circuit

– No appeal to district court

24

AIA Statistics

Narrative: This pie chart shows the total number of cumulative AIA

petitions filed to date broken out by trial type (i.e., IPR,

CBM, and PGR).

*Data current as of: 8/31/2015

3442

90%

377

10%

13

0%

3832 Total AIA Petitions*

Total IPR Petitions Total CBM Petitions Total PGR Petitions

Cumulative from 09/16/2012

Narrative: These line graphs display the number of IPR, CBM, and PGR petitions filed each month and the

total number of all petitions filed each month from the effective date of the AIA trial provisions.


25 30 38 27 45

65 69 62 73 77 89 101

60 54 76

143 131

184

116

159

120

179

102

177

100

164 131 139 145

182

117

165

0

100

200

300

Number of IPR Petitions Filed by Month*

0 0 2 4 7 8

3

9 8

19 18

11 9 12

22

14 19

6 10

16 21

16 13 15 14 16

13

7

26

9 6

9

05

101520253035404550

Number of CBM Petitions Filed by Month*

0 0 0 0 0 0 0 0 0 0 0 0 0 0 0 0 0 0 0

1 1

0

1

0

1

0

1

0

3

2

0

3

0

1

2

3

Number of PGR Petitions Filed by Month*

25 30 40 31 52

73 72 71 81 96

107 112

69 66

98

157 150

190

126

176

142

195

116

192

115

180

145 146

174 193

123

177

0

40

80

120

160

200

240

Number of TOTAL Petitions Filed by Month*


Narrative: This bar graph depicts the

number of AIA petitions filed

each fiscal year, with each bar

showing the filings for that fiscal

year by trial type (i.e., IPR, CBM,

and PGR).

FY 2012 FY 2013 FY 2014 FY 2015*

0 0 2 11 8 48

177 144

17

514

1310

1601

Number of AIA Petitions Filed by Fiscal Year by Type

PGR CBM IPR

Narrative: This pie chart shows the total number of AIA petitions

filed in the current fiscal year to date as well as the

number and percentage of these petitions broken down

by technology.


1,088

62%

423

24% 90

5%

156

9%

4

0%

1761 Total AIA Petitions in FY 15*

(Technology Breakdown)

Electrical/Computer - TCs 2100, 2400, 2600, 2800

Mechanical/Business Method - TCs 3600, 3700

Chemical - TC 1700

Bio/Pharma - TC 1600

Design - TC 2900

Narrative: These three sets of bar graphs show the number of

patent owner preliminary responses filed and

waived/not filed each fiscal year in IPR, CBM, and PGR

proceedings.


FY 2013 FY 2014 FY 2015*

237

829 1,179 63

202

198

IPR - Number of Patent Owner

Preliminary Responses by Fiscal Year

Filed Waived/Not Filed

FY 2013 FY 2014 FY 2015*

33

116 138

2

18

11

CBM - Number of Patent Owner



FY 2013 FY 2014 FY 2015*

4

0 0

1

PGR - Number of Patent Owner



Narrative: These three sets of bar graphs show the number of decisions

on institution by fiscal year broken out by trials instituted

(including joinders) and trials denied in IPR, CBM, and PGR

proceedings. A trial that is instituted in part is counted as an

institution in these bar graphs.


FY 2013 FY 2014 *FY 2015

167

557 733

10

15

109

26 193

383

IPR - Number of Decisions On Institution Per Fiscal Year by Outcome

Instituted Joinders Denials

FY 2013 FY 2014 *FY

2015

14

91 84

0

1 7

3 30 41

CBM - Number of Decisions On Institution Per

Fiscal Year by Outcome


FY 2013 FY 2014 *FY 2015

0 0

3

0 0 0

PGR - Number of Decisions On Institution Per Fiscal Year by Outcome


Narrative: These three sets of bar graphs show settlements in AIA

trials broken down by settlements that occurred prior to

institution and settlements that occurred after institution

in IPR, CBM, and PGR proceedings.


FY 2013 FY 2014 FY 2015*

20

106

268

18

104

178

IPR - Settlements

Settled Before Institution Settled After Institution

FY 2013 FY 2014 FY 2015*

3

21

14

0

6

32

CBM - Settlements


FY2013 FY 2014 FY 2015*

0 0

2

0 0 0

PGR - Settlements


Narrative: This graph shows a stepping stone

visual depicting the outcomes for

all IPR petitions filed to-date that

have reached a final disposition.


327 Trials All Instituted Claims

Unpatentable (17%

of Total Petitions,

37% of Trials

Instituted, 68% of

Final Written

Decisions)

82 Trials Some Instituted

Claims Unpatentable

(4% of Total

Petitions, 9% of

Trials Instituted, 17%

of Final Written

Decisions)

73 Trials No Instituted Claims

Unpatentable (4% of

Total Petitions, 8%

of Trials Instituted,

15% of Final Written

Decisions)

482 Trials

Completed Reached Final

Written Decisions

1901 Total

Petitions

889 Trials

Instituted

1012 Trials Not

Instituted Petition Denied/

Settled/

Dismissed

407 Terminated

During Trial Settled/Dismissed/

Request for

Adverse Judgment

Disposition of IPR Petitions Completed to Date*



all CBM petitions filed to-date that




Unpatentable (21%

of Total Petitions,

43% of Trials

Instituted, 79% of

Final Written

Decisions)


Claims Unpatentable

(5% of Total

Petitions, 9% of


of Final Written

Decisions)


Unpatentable (1% of

Total Petitions, 2%


4% of Final Written

Decisions)

58 Trials


Written Decisions

220 Total

Petitions

106 Trials

Instituted

114 Trials Not


Settled/

Dismissed

48 Terminated


Request for

Adverse Judgment

Disposition of CBM Petitions Completed to Date*



all PGR petitions filed to-date that




Unpatentable (0% of

Total Petitions, 0%


0% of Final Written

Decisions)


Claims Unpatentable

(0% of Total

Petitions, 0% of


of Final Written

Decisions)


Unpatentable (0% of

Total Petitions, 0%


0% of Final Written

Decisions)

0 Trials


Written Decisions

2 Total

Petitions

0 Trials

Instituted

2 Trials Not


Settled/

Dismissed

0 Terminated


Request for

Adverse Judgment

Disposition of PGR Petitions Completed to Date*

59546

29137

12153

5114

1155 Claims Found Patentable by PTAB in Final WrittenDecision

4336 Claims Remaining Patentable (Not Subject to FinalWritten Decision)

1548 Claims Cancelled or Disclaimed by Patent Owner

16984 Claims Challenged but Not Instituted

30409 Claims Not Challenged

IPR Petitions Completed to Date*

Claims Challenged

Claims Instituted

Claims Found Unpatentable by PTAB in Final Written Decision

Total Number of Claims Available to be Challenged within 1901 Petitions

Narrative: This visual contains four cylinders. The

first cylinder shows the total number of

claims available to be challenged in the

IPR petitions filed. The second cylinder

shows the number of claims actually

challenged and not challenged. The

third cylinder shows the number of

claims on which trial was instituted and

not instituted. The fourth cylinder

shows the total number claims found

unpatentable in a final written decision,

the number of claims canceled or

disclaimed by patent owner, the

number of claims remaining patentable

(not subject to a final written decision),

and the number of claims found

patentable by the PTAB.

Note: “Completed” petitions include

terminations (before or after a decision

on institution) due to settlement,

request for adverse judgment, or

dismissal; final written decisions; and

decisions denying institution.


7906

4477

2012

1029

46 Claims Found Patentable by PTAB in Final WrittenDecision

834 Claims Remaining Patentable (Not Subject to FinalWritten Decision)

103 Claims Cancelled or Disclaimed by Patent Owner

2465 Claims Challenged but Not Instituted

3429 Claims Not Challenged

CBM Petitions Completed to Date*

Claims Challenged

Claims Instituted

Claims Found Unpatentable by PTAB in Final Written Decision

Total Number of Claims Available to be Challenged within 220 Petitions

Narrative: This visual contains four cylinders. The

first cylinder shows the total number of

claims available to be challenged in the

CBM petitions filed. The second

cylinder shows the number of claims

actually challenged and not challenged.

The third cylinder shows the number of

claims on which trial was instituted and

not instituted. The fourth cylinder

shows the total number claims found

unpatentable in a final written decision,

the number of claims canceled or

disclaimed by patent owner, the

number of claims remaining patentable

(not subject to a final written decision),

and the number of claims found

patentable by the PTAB.

Note: “Completed” petitions include

terminations (before or after a decision

on institution) due to settlement,

request for adverse judgment, or

dismissal; final written decisions; and

decisions denying institution.


Post Decision Numbers (rough)

• Appeal rate to the Federal Circuit

– IPR: 60%

– CBM: 90%

• Intervention rate

– IPR: 30%

– CBM: 35%

38

Recent Developments

• Motions-to-Amend

• AIA Rulemaking

• Request for Comments on proposed

Single Judge Pilot Program

39

Motions-to-Amend

• MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB

July 15, 2015) (Paper 42) (representative)

• Clarified that Patent Owner needs to show patentable

distinction only over the prior art of record: – in the proceeding;

– in the prosecution history;

– in any other proceeding involving the same patent)

• Duty of candor and good faith in the Office may require

Patent Owner to address additional prior art

40

AIA Rulemaking • Final

– More pages for briefing for motions to amend and for petitioner’s reply brief

• Proposed

• Allow Patent Owners to include testimonial evidence such as expert declaration, with their Preliminary Response

• New requirement on practitioners that would give the USPTO a more robust means with which to police misconduct

• Clarify that PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings & will use the broadest reasonable interpretation (BRI) for all other cases

• Using a word count for major briefing so that parties are free to present arguments and evidence to the Office in a way that a party deems is most effective, including presenting arguments in claim charts

41

Request for Comment on Proposed Pilot Program published August 25, 2015

• Petition would be assigned to a single judge to

decide whether to institute

• If instituted, two additional judges would be

added

• Public comments requested by October 26, 2015

42

Post Grant Resources

• Information concerning the Board and specific trial

procedures may be found at:

http://www.uspto.gov/ip/boards/bpai/index.jsp

• General information concerning implementation of the

Leahy-Smith America Invents Act, including post grant

reviews, may be found at:

http://www.uspto.gov/aia_implementation/index.jsp

43

http://www.uspto.gov/ip/boards/bpai/index.jsp

http://www.uspto.gov/aia_implementation/index.jsp

Questions?

Major Differences between IPR, PGR, and CBM

Inter Partes

Review (IPR) Petitioner Estoppel Standard

Basis

Post Grant Review

(PGR)

• Person who is not the patent

owner and has not previously

filed a civil action challenging

the validity of a claim of the

patent

• Must identify all real parties in

interest

• Raised or reasonably could

have raised

• Applied to subsequent

USPTO/district court/ITC

action

More likely than not

OR

Novel or unsettled legal question

important to other patents/

applications

101, 102, 103, 112,

double patenting but

not best mode

Inter Partes Review

(IPR)

• Person who is not the patent

owner, has not previously filed a

civil action challenging the

validity of a claim of the patent,

and has not been served with a

complaint alleging infringement

of the patent more than 1 year

prior (exception for joinder)


interest

• Raised or reasonably could

have raised

• Applied to subsequent

USPTO/district court/ITC

action

Reasonable likelihood

102 and 103 based

on patents and

printed publications

Covered Business

Method (CBM)

• Must be sued or charged with

infringement

• Financial product or service

• Excludes technological

inventions


interest

• Office—raised or reasonably

could have raised

• Court-raised

Same as PGR

Same as PGR (some

102 differences)

45

Major Differences between IPR, PGR, and CBM

Proceeding Available Applicable Timing

Post Grant

Review (PGR)

From patent grant to 9

months after patent

grant or reissue

Patent issued under

first-inventor-to-file

Must be completed

within 12 months from

institution, with 6

months good cause

exception possible

Inter Partes

Review (IPR)

For first-inventor-to-file, from

the later of: (i) 9 months after

patent grant or reissue; or (ii)

the date of termination of any

post grant review of the

patent.

For first-to-invent, available

after grant or reissue

(technical amendment)

Patent issued under

first-to-invent or


Must be completed within 12

months from institution, with

6 months good cause

exception possible

Covered

Business

Method (CBM)

Available 9/16/12 (for first-

inventor-to-file only after PGR

not available or completed)

Patents issued under first-to-

invent and


Must be completed within 12

months from institution, with

6 months good cause

exception possible

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