Introduction to the Patent Trial and Appeal Board
| Author | David P. Ruschke - Christopher M. Kaiser |
| Position | David P. Ruschke, PhD, is a special advisor to the Commissioner of Patents at the U.S. Patent and Trademark Office (USPTO). He previously served as chief judge for the Patent Trial and Appeal Board (PTAB) from 2016?2018. Dr. Ruschke also was chief patent counsel of Medtronic's CSH business unit. He can be reached at david.ruschke@ uspto.gov. ... |
| Pages | 32-65 |
Published in Landslide® magazine, Volume 11, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©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.
INTRODUCTION TO THE
Patent Trial and
Appeal Board
By David P. Ruschke and Christopher M. Kaiser
In 2011, Congress created a new administrative body in the United States Pat-
ent and Trademark Ofce (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 pre-
decessor 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 rst 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 cur-
rent statutory basis for the PTAB is the America Invents Act (AIA),1 which created the
PTAB, species its membership, and sets its duties.
Structure of the PTAB
Statutory Members
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.
Published in Landslide® magazine, Volume 11, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©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.
adverse decisions of examiners upon applications for pat-
ents,”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 pat-
ent applications. Currently, the PTAB decides about 12,000
appeals and 1,500 trial proceedings per year.
PTAB Processes
Paneling Processes
Statutory Paneling Requirements
The members of the PTAB do not decide cases as individuals.
The statutes governing the PTAB require “[e]ach appeal, deri-
vation 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-mem-
ber panel requirement to both nal 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, experi-
ence levels, workloads, and conict 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 efciency and
consistency, when the PTAB receives cases related to previ-
ously led matters, the Paneling Team tries to assign the new
cases to panels with members who heard the earlier matters.
Decision-Making Processes
Party Brieng
The PTAB’s decision-making process begins with brieng from
one or more parties. In ex parte appeal cases, the PTAB’s regu-
lations 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 proceed-
ings, the parties are permitted to le 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.
Administrative Patent Judges
In addition to the statutory members, the PTAB includes a num-
ber of administrative patent judges (APJs). They are “appointed
by the Secretary [of Commerce], in consultation with the Direc-
tor [of the USPTO].”3 In addition, they are limited to “persons of
competent legal knowledge and scientic ability.”4
Thus, every APJ must have a technical background, in addi-
tion to a law degree and experience in the legal eld. The technical
experience of the PTAB is staggeringly extensive. The PTAB cur-
rently 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 scientic 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 bets a group whose members must have both “competent
legal knowledge and scientic 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 Fed-
eral Circuit, and more than 30 clerked at federal district courts.
Over 200 had experience in law rms before being appointed to
the PTAB, and more than 40 served in other legal roles in the fed-
eral government, including at the International Trade Commission,
the Department of Justice, the Food and Drug Administration, and
the USPTO in both the Solicitor’s Ofce and the Ofce 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, main-
tain the PTAB’s information technology infrastructure, and
support PTAB management.
Organizational Structure
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 scientic abil-
ity” 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 ofces 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, specically
assigning it four tasks.5 Two of these require the PTAB to
decide appeals from decisions of the USPTO. Specically,
“on written appeal of an applicant,” the PTAB “review[s]
David P. Ruschke, PhD, is a special advisor to the Commissioner
of Patents at the U.S. Patent and Trademark Ofce (USPTO). He
previously served as chief judge for the Patent Trial and Appeal Board
(PTAB) from 2016–2018. Dr. Ruschke also was chief patent counsel of
Medtronic’s CSH business unit. He can be reached at david.ruschke@
uspto.gov. Christopher M. Kaiser is a lead administrative patent
judge at the PTAB. He can be reached at christopher.kaiser@uspto.gov.
Published in Landslide® magazine, Volume 11, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©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.
On interlocutory matters, parties may le motions and oppo-
sitions. On a case-by-case basis, panels may permit additional
brie ng, such as sur-replies on the merits of trial proceedings
and replies in support of interlocutory motions.
Oral Hearings
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 hear-
ing. 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 ve loca-
tions. Three hearing rooms, including the largest one, are
located in Alexandria, Virginia. There is also one hear-
ing room in each of the four regional of ces. 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 admin-
ister the proceeding. The PTAB accepts requests from the
parties to conduct a hearing remotely and has conducted hear-
ings in Alexandria and all four regional of ces. Currently, the
PTAB conducts more than 1,000 hearings every year.
Panel Conferences
The panel of APJs assigned to hear a case holds confer-
ences 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 brie ng.
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.
Opinion Circulation
After the conference, the member of the panel who was cho-
sen 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 appar-
ent only during the drafting of the opinion. When the draft
opinion is nished, 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.
Rehearings
When the panel has agreed on the opinion to be issued, the
decision is led in the administrative record and sent to the par-
ties and their counsel. Following the issuance of a decision,
the PTAB’s regulations allow for a single request for rehearing
from a dissatis ed 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 brie ng, 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 nal decision before appealing.
Taxonomy of PTAB Decisions
PTAB decisions can be divided into categories in several dif-
ferent 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 prec-
edential for several reasons, including constitutional questions;
important issues regarding statutes, rules, and regulations; impor-
tant issues regarding binding or precedential case law; or issues
of broad applicability to the PTAB. The precedential designation
may also be used to resolve con icts 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 rst impression,
or provide guidance on PTAB rules and practices, although infor-
mative 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 appli-
cation 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 rst phase, a decision is made whether to institute trial.
In the second phase, if a trial was instituted, the trial is con-
ducted and a nal written decision is issued.
The distinction between institution decisions and nal deci-
sions in AIA trial proceedings is important. In addition to the
Director’s role as a statutory member of the PTAB entitled to a
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Continued on page 63
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