“One parliamentary postulate after another [with respect to the PTAB] Turned out to be wrong…they need to reconsider the whole situation.” – Judge Paul Michel
PTAB Reform panelists (left to right) Kayvan Noroozi, David Kappos, Candice Wright
At the PTAB Masters 2023 program held this Tuesday and Wednesday at IPWatchdog’s headquarters in Ashburn, Virginia, former United States Patent and Trademark Office (USPTO) Director David Kappos spoke on a panel about possible reforms to the Patent Trial Board. explained. (PTAB) said the PTAB was intended to replace the district courts, but “has not worked out.” Kappos founded the PTAB, where he served as director during the enactment and implementation of the America Invents Act (AIA).
“We didn’t expect so much of the litigation to go to court in parallel,” said Kappos. He added that the USPTO Director should also have wide discretion to allow the AIA to file a lawsuit for any reason, but that didn’t work either.
Brad Watts, currently Vice President for Innovation Policy at the U.S. Chamber of Commerce and former Minority Counsel on the Senate Judiciary Committee Subcommittee on Intellectual Property, also joined the PTAB Reform Panel and said: I’m here. The issue, intellectual property law and policy is “volatile,” so there are mainly savvy and passionate about the issue, such as Senator Chris Koons (Democrat-Germany) and Tom Tillis (Republican-North Carolina). There will always be Congressional interest from those who are Or Rep. Darrell Issa (R-California) and Rep. Thomas Massey (R-Kentucky). “They are people his IP owners need to look to,” Watts said.
Solutions that may be put forward for reform include making the burden of proof consistent between the PTAB and district courts, and allowing petitioners to decide whether to sue the PTAB or district courts on their own. Choose your adventure approach. ’ said Capos.
Girlfriend.Scott Borrick
On another panel examining the current state of the PTAB, former Court of Appeals for the Federal Circuit (CAFC) Chief Justice Paul Michelle spent time summarizing the PTAB’s “tortuous history.” Open Sky v. VLSI A lawsuit at the PTAB found that OpenSky was involved in extortion last year by USPTO Director Kathi Vidal, but was initially not even exempt from the lawsuit. Michelle says: [with respect to the PTAB] It turned out to be wrong,” he said, adding that “the whole situation needs to be revisited.” Because the USPTO has been unable to solve the problem it wanted due to the way the law is currently written, Congress must step in to address the ongoing requirements to file an IPR, the burden of proof, etc. said Michel. [the OpenSky] It’s time for Congress to take the stage again to clarify and amend the law. “
Candice Wright
At the same panel with Michel, PTAB Chief Justice Scott Boalick told attendees that he had received more than 4,000 comments in response to a request for comment on director review requests, and that the office has received approximately 183 director reviews to date. I said I processed the request. Boarick said the Secretariat was “considering the next steps in rulemaking” on director’s review and other issues, and those rule packages were “on the move.” “We are seeking comment on all of this,” Boarick added.
Candace Wright of the Government Accountability Office (GAO) also participated in a panel on PTAB reform on Tuesday, where 75% of PTAB judges surveyed said their independence had been impacted by USPTO officials and PTAB management. We have provided a summary of GAO’s findings regarding a recent study that said: Wright emphasized that the GAO is primarily concerned with transparency. “One thing that became clear was that [during the GAO’s study] was [PTAB] The judge wanted insight into who was providing comments on the decision. That’s what we want transparency for. How do you create a culture of trust? “
Mr. Wright said the USPTO is currently taking steps to address the GAO’s recommendations, and that the Trademark Trial and Appeal Board (TTAB) and the GAO’s study of litigation funding are forthcoming.
Litigation Funders: We’re Not Afraid of the PTAB
At one panel on Tuesday, entitled “Assessing the PTAB’s Threats for Developing Patent Claims and Funding Strategies,” speakers were primarily representatives of litigation funding firms and inter partes review (IPR) ) process as an opportunity. Omni Bridgeway’s girlfriend Sarah Tsou said: “If it’s that easy to invalidate a patent, [today], then the claims making it are far more valuable. “
From left: Joel Merkin, Sarah Tsou, Jim Carmichael, Brad Close, Chris Freeman
Other members of the panel agreed that the risk may pay off. Joel Merkin of GLS Capital said: Mirkin also said he has even advised patent owner clients to agree to stay the district court action if they believe FWD will get an advantage, as estoppel applies. rice field.
Panelists also said more patents are better when it comes to funders assessing risk. His Chris Freeman of Burford Capital said: We have to deal with it as it is,” he said, but there are still inherent uncertainties associated with the PTAB.
“I think patents are valid, but I don’t know what the PTAB is going to do, so the more patents, the better,” said Freeman. “The days of claiming a single patent are over,” said Brad Close of Transpacific IP. “We need real diversity. It’s not good if all 10 patents are the same and just go up and down on the same issue.”
PTAB judges give us the good, the bad and the ugly
From left: Hon. Kevin Cherry, Hon. Jacqueline Bonilla, Jim Carmichael, Hong. Grace Carafa Oberman and Hong.Muriel E. Crawford
On Wednesday, the PTAB Masters Program concluded with a panel of PTAB Administrative Patent Judges (APJs) who provided attendees with advice on how to succeed on the board. Judges shared tips such as not to focus too much on attacking the examiner’s reasoning on appeal. Make your strongest arguments up front. Compliance with the law (particularly in the area of Article 101). Don’t be afraid to deny claims. “Even so, you are not prejudiced.
Bonilla sought to dispel some of the misconceptions we heard from panelists and attendees early in the programme. For example, the PTAB does not allow live testimony, the board is hostile to evidence of secondary considerations, and so on. Committees are obliged by law to consider secondary considerations, Bonilla said, but often the evidence is not sufficiently substantiated.
Finally, Bonilla urged attendees to take advantage of the USPTO’s Modified Pilot Program motion, reminding them that filing a reissue or reexamination is “an option before, during, or after an AIA trial.” reminded me. She also pointed the audience to Office resources and guidance and encouraged them to submit comments on various requests for comment currently pending regarding changes to the PTAB and other initiatives of her USPTO.
The PTAB Masters 2023 program was co-chaired by renowned PTAB expert and author Scott McKeown and James Carmichael, a former administrative patent judge and one of the most successful patent owner representatives.
Join us for our next program in March, IPWatchdog at Software Masters 2023.
