The PTAB’s Post-Grant Review Proceedings: A Review of the Evidence

June 3, 2015

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Since it was first constituted in September 2012, the Patent Trial and Appeal Board (PTAB) has become an extremely important and prominent venue for contesting the validity of patent claims. Both inter partes review (IPR) and covered business method review (CBM) proceedings are being widely used, the former to contest patents based on prior art and the latter to contest particular types of business method patents on a variety of patentability grounds.

For some stakeholders, PTAB proceedings are fulfilling their promise (touted by numerous academics, NAS and FTC reports, and in the legislative history of the America Invents Act) as an expert and efficient alternative to costly district court litigation over validity. Other stakeholders are less sanguine. They argue, for example, that the PTAB has been unduly rigid in denying patent owners’ opportunities to amend; that its “broadest reasonable interpretation” approach to claim construction is inappropriate; that having the same judges determine both institution and the merits is inappropriate; and that the PTAB proceedings are, like litigation, subject to abuse.

The PTO is considering certain changes to PTAB proceedings, and bills currently being discussed in Congress propose other changes.

This half-day roundtable presented policy-relevant empirical research on the PTAB. It examined questions such as who is using the PTAB proceedings (both IPRs and CBMs); against whom these proceedings are being brought; grounds for petitions; and how petitions are faring. It also examined strategic choices being made in the choice between district court litigation and the PTAB.

Presenters and commentators included PTO officials, academics, and industry stakeholders.  Senator Christopher Coons also gave a brief address.

Speaker Presentations

PTAB Deputy Chief Judge Scott Boalick Produced by the United States Patent and Trademark Office; no copyright is claimed by the United States in this speech or associated materials.

PTO Chief Economist Alan Marco Produced by the United States Patent and Trademark Office; no copyright is claimed by the United States in this speech or associated materials.

Shawn Ambwani, COO of Unified Patents: Inter Partes Review, A Look at the Numbers (paper written with Brian Love of Santa Clara University Law School)

Saurabh Vishnubhakat, Texas A&M Law School: What Ex Post Review Has Revealed About Patents (paper written with David Schwartz of Chicago-Kent Law School and Alan Marco)

Jay Kesan (University of Illinois Law School), Arti Rai (Duke Law) and Saurabh Vishnubhakat: Strategic Decisions by Parties in PTAB Proceedings

 

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