Patent litigators — and their clients — have been hoping for better consistency from the now-six-year-old Patent Trial and Appeal Board. They may be getting it with new PTAB policy changes issued last month.
On Sept. 20, the U.S. Patent and Trademark Office announced revisions to the PTAB’s Standard Operating Procedures it said would “focus on increasing transparency, predictability, and reliability across the USPTO.” The most significant changes involve the way the PTAB seats judges on panels to hear cases and how it will issue precedential opinions, and the revision documents reveal much of the USPTO’s reasoning on those processes. The resulting changes could make it easier for patent litigants to predict outcomes on proceedings from inter partes review to post-grant review, as well as whether to use those proceedings for patent claims in the first place.
Since the PTAB was formed in September 2012 by the America Invents Act, patent attorneys and their clients needed guidance on how its new procedures, like inter partes reviews and post-grant reviews, were going to run and how the board might rule on certain issues. Precedential opinions were integral to that, but so far the PTAB has only issued 72 — an average of 12 a year across its different proceeding types. Traditionally, the PTAB’s more-than 250 members would have to designate a decision as precedential in a majority vote, which slowed precedent output to a trickle as their numbers increased.
But new Standard Operating Procedure revisions have created a new body, the Precedential Opinion Panel, that can now make or revoke precedent on its own. The POP consists of the USPTO director, the PTAB chief judge and the Commissioner of Patents. The POP’s role, according to the SOP 2 revision, is “to establish binding agency authority concerning major policy or procedural issues … in the limited situations where it is appropriate to create such binding agency authority through adjudication before the Board.” Having a three-member board deciding precedent instead of a majority vote among the entire PTAB membership would theoretically streamline the precedent-making process.
While the POP might be a solution for the board to generate a larger body of binding decisions for the young board, the revisions suggest the new panel could have another use besides. If a party takes issue with a decision handed down by a PTAB panel, it can ask to have that same panel rehear the case.
But the revisions appear to provide for another avenue for parties to have a ruling reconsidered — by petitioning the POP to review it, according to Justin Krieger, a patent attorney and partner at Kilpatrick Townsend & Stockton’s Denver and Washington, D.C., office. The USPTO director may then review the decision and decide sua sponte to convene the POP to rehear the case.