Aug.
25
With over eight USPTO
regional offices across the country, there are more than 170 Patent Trial and
Appeals Board (PTAB) administrative judges currently on the bench. Who are
these judges? What are their backgrounds? What should attorneys know before
appearing in front of a PTAB panel?
Backgrounds
While the PTAB
judges come from a variety of backgrounds, they share a similar set of
qualifications. Overwhelmingly, PTAB Administrative Judges have technical
backgrounds grounded in electrical engineering. A few have backgrounds in
chemistry and in biological sciences, but the vast majority hold undergraduate
and advanced degrees in electrical, mechanical or computer engineering.
Moreover, many of the judges have worked in the field as engineers prior to
becoming attorneys.
Additionally,
most PTAB judges have over 10 years of patent law experience with many having extensive
experience in private practice as patent litigators. A significant portion of the judges have
clerked for the United States Court of Appeals for the Federal Circuit, and
some have done stints as examiners at the USPTO.
A few of the
judges have experience in different tribunals, such as appearing before the
International Trade Commission.
With such a
large breadth and depth of technical and IP experience on the bench, attorneys
appearing before PTAB judges should be ready to field specific questions about
the both the technical and legal intricacies of the patents at issue.
Trials and Decisions
By looking at
the number of trials instituted and at specific decisions issued by PTAB
judges, attorneys can develop an effective litigation strategy for handling
PTAB cases.
Statistics point to a willingness of PTAB judges to
institute trials for Inter Partes
Review (IPR) petitions, which more often than not result in invalidation of the
claims at issue. Recently, for every 10 IPR petitions filed, PTAB judges have
instituted trials for 8 of those petitions. Additionally, the percentage of IPR
trials instituted that ended in written decisions in favor of unpatentability
for all or some of the claims in dispute is nearly 85%, with decisions in favor
of the patent owner averaging around 15%. Attorneys, particularly those
representing patent owners, should take note the likelihood of a PTAB judge instituting
an IPR trial is fairly high, and so is the likelihood of an adverse judgment for
respondents.
Decisions issued
by PTAB judges regarding specific motions demonstrate the judges’ inclination
to exclude evidence that does not adhere to the record. This becomes apparent
when looking at the number of Motions for Supplemental Information that
have been denied as
opposed to those that have been granted. A common basis for denial is when a petitioner’s motion attempts
to modify evidence already present in the record. Attorneys practicing before
the PTAB should be careful to ensure initial evidence presented is as complete
as possible, as attempts to modify the record down the line will likely be
unsuccessful.
Research PTAB Judges on Docket Alarm
Docket Alarm
allows attorneys to search and filter the PTAB database by judge. Before your next appearance
before the PTAB, use Docket Alarm to research cases and decisions issued by PTAB
judges to develop an effective litigation strategy.
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Docket Alarm is an advanced search and litigation tracking service for the Patent Trial and Appeals Board (PTAB), the International Trade Commission (ITC), Bankruptcy Courts, and Federal Courts across the United States. Docket Alarm searches and tracks millions of dockets and documents for thousands of users.
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