Reversal Rates of Ex Parte Appeals: High Variability Across PTAB Judges

• Author: Sameer Vadera - Kate S. Gaudry
• Position: Sameer Vadera is a patent attorney at the Washington, D.C., office of Kilpatrick Townsend & Stockton LLP. He focuses his practice on preparing and prosecuting patent applications in a variety of technical fields, including wireless technologies, software, and electronic devices. Kate S. Gaudry, PhD, is a senior associate at the same firm and...
• Pages: 54-57

Published in Landslide® magazine, Volume 11, Number 1 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

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Patent examination frequently includes a formalized

back-and-forth between an examiner at the U.S. Pat-

ent and Trademark Ofce (USPTO) and the patent

application’s applicant: The examiner rejects the application

under one or more statutory grounds, the applicant argues

against the rejection and/or amends the claims, and the exam-

iner then reconsiders the application. Frequently, after a small

number of rounds, the application is allowed. Other times, it

becomes clear that the examiner and applicant are not seeing

eye-to-eye on a particular issue.

Fortunately, the applicant can decide to appeal rejections

to the Patent Trial and Appeal Board (PTAB), so as to recruit

other decision makers.1 As of 2017, the PTAB consists of 274

administrative patent judges2 who conduct trials for issued

patents (e.g., inter partes reviews) and review appeals of

rejected patent applications (e.g., ex parte appeals). For each

decision, a panel of PTAB judges convenes to issue the deci-

sion. Many panels consist of three judges, with one judge

serving as the opinion judge, who writes the decision.3

With such a large number of decision makers at the

PTAB, maintaining uniformity in decision-making is criti-

cally important to applicants seeking patent protection and

to the public to ensure that limited monopolies are fairly and

consistently granted. Inconsistent appeal decisions can cause

signicant damage; for instance, applicants may have to

endure unnecessarily prolonged and costly prosecution, inno-

vation may be stied, and market share may be lost.4

While the predictability of reaching an allowance dur-

ing prosecution can be easily quantied,5 the predictability of

succeeding in an appeal cycle has gone largely undiscussed.

We set out to determine the extent of variability in ex parte

appeal decisions issued by PTAB judges. First, we describe

our data collection methodology. Second, we analyze the

overall variability in appeal decisions across all PTAB judges.

Third, to reduce variability caused by technology differences,

we discuss our methodology for grouping appeal decisions

by technology sector, and we analyze the variability of appeal

decisions across the various technology sectors. Last, we con-

clude with implications and possible interpretations of the

data we collected.

Data Collection Methodology

To evaluate recent variability trends in PTAB decisions, we

submitted a request to the USPTO for all ex parte appeal

decisions issued in 2017. We also requested an identication

of the art unit assigned to the underlying application and the

overall PTAB decision (as being a full afrmance, a split, or

a full reversal).6 For each appeal, we used Anticipat.comTM,

a database that annotates ex parte appeals at the PTAB, to

identify the opinion judge of the panel.7 We dened a limited

decision data set for each judge to include those decisions for

which the judge was the opinion judge. We acknowledge that

other judges on the panel can also inuence a decision. How-

ever, given that the opinion judge authors the decision (and

often drives decision-making analyses), we assumed this data

set criteria should indicate that the judge actively participated

in each decision in the data set.

For each opinion judge, we dened a reversal rate as being

the number of full reversal decisions divided by the number

of total decisions. We excluded data corresponding to opinion

judges with 10 or fewer issued decisions within the identied

time range for statistical purposes.

Variability of All PTAB Appeal Decisions Is Large and

Leans Toward Examiner Deference

Figure 1 shows the overall distribution of reversal rates across

PTAB judges. The USPTO designates a decision as being

a reversal when all rejections against all claims have been

reversed. In contrast, a decision is designated as being an

afrmance when all claims stand rejected under at least one

Reversal Rates

of

Ex Parte Appeals

High Variability Across PTAB Judges

By Sameer Vadera and Kate S. Gaudry

Sameer Vadera is a patent attorney at the Washington, D.C.,

ofce of Kilpatrick Townsend & Stockton LLP. He focuses his

practice on preparing and prosecuting patent applications in a

variety of technical elds, including wireless technologies, software,

and electronic devices. Kate S. Gaudry, PhD, is a senior associate

at the same rm and ofce, with a practice focused on data-driven

and strategic patent prosecution. Most of her clients are in the

software, computers, and quantitative biology technical areas. They

can be reached, respectively, at svadera@kilpatricktownsend.com

and kgaudry@kilpatricktownsend.com.