The Patent Trial and Appeal Board: A Runaway Tribunal that Undermines the Law of Validity

• Author: Paul R. Michel
• Position: Judge Paul R. Michel served on the Court of Appeals for the Federal Circuit from 1988 to 2010, the last five years as chief judge. In retirement he consults on litigations as a mock judge, mediator, arbitrator, brief editor, case evaluator, and strategist. He is also active on patent policy and legislative proposals. He can be reached at...
• Pages: 23-27

January/February 2017 n LANDSLIDE 21

The America Invents Act’s (AIA’s) three review

procedures were poorly designed by Congress and

unfairly implemented for its own administrative

convenience by the United States Patent and Trademark

Ofce (USPTO). None of this is the fault of the Patent

Trial and Appeal Board (PTAB) itself. All of it could be

corrected by the director’s exercise of her broad discre-

tion to improve the regulations, as issued. In fact, two

rounds of amendments have already been promulgated.

Unfortunately, the most important adjustments have not

yet even been proposed. They include:

• claim construction, as in court, to replace broadest

reasonable interpretation (BRI);

• live expert testimony at the “trial” whenever

there is a genuine dispute of fact, as in court;

• discovery as of right, at least as to objective

indicia of nonobviousness, as in court; and

• one claim substitution opportunity as of

right, not by leave per motion.

No criticism of Congress or former

directors, acting directors, and dep-

uty directors, however, survives scrutiny

because the framers were all forced to guess

how it would all work out in practice. But,

now we have ample experience with the results

in practice, so it is time to make further appropriate

adjustments.

Two of them can only be made by Congress: rst,

change the challenger’s burden of proof from a mere

preponderance to clear and convincing, as in court; and

second, require the petitioner to have standing, as in

court. T he rest cou ld be published tomorrow as pro-

posed amendments to the regulations.

I want to be clear how blameless I hold the PTAB

and its 260+ administrative patent judges (APJs). I read-

ily stipulate they were all well selected, possess ample

expertise in both patent law and technology, work dili-

gently, are well supervised, write ne opinions, faithfully

implement the regulations and the AIA, harbor no bias,

exhibit commendable judicial temperament, and serve

as faithful stewards of the patent granting and review

systems.

I want as well to be clear to exonerate all former chief,

deputy chief, vice chief, and acting chief judges. As

A Runaway Tribunal

That Undermines

the Law of Validity

Paul R. Michel

Continued on page 24

TWO VIEWS OF PTAB

Viewpoint

Illustration: iStockPhoto

Published in Landslide® magazine, Volume 9, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2016 by the American Bar Association. Reproduced with permission. All rights reserved. This

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