Federal Circuit braced for PTAB “tsunami”
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Federal Circuit braced for PTAB “tsunami”

Concern is growing about how Patent Trial and Appeal Board (PTAB) trials will affect the relationship between the USPTO and Federal Circuit, according to speakers on a panel at the US Patent Forum in Washington DC on March 25

The PTAB was spawned by the America Invents Act (AIA). But Judge Sharon Prost of the Federal Circuit noted that the effect of the act was much less than it could have been had some proposals been kept in.

“Everyone talks about the AIA having an impact on us,” she said on the panel. “But at the end of the day, my take on the AIA was it did nothing relative to what it could have done, because we started off with damages, wilfulness, and everything in the AIA in terms of proposals. But when push came to shove it’s really more or less a process bill. So I was relieved.”

But the contested proceedings at the USPTO as a result of the AIA could change the relationship between the USPTO and Federal Circuit. Chief Justice Randall Rader referred to the PTAB as “death squads killing property rights” last year.

Todd Dickinson, executive director of the AIPLA, who was moderating the panel at the US Patent Forum, noted: “Things are changing. People refer to what is coming as a tsunami of work from the post-grant process. [The AIA] was a process bill but the process it has put in place is going to have a major effect on workload.”

Judge Prost was calm in her outlook but agreed that the Federal Circuit’s caseload would increase as a result of the post-grant proceedings. She noted that the USPTO had about 70 judges when the AIA was passed, but this figure has risen to about 180 judges.

“That kind of workload is inevitably going to hit us,” she said. “We’ll take it when it comes; we are not seeing it yet. It’ll come. Unfortunately you can’t go to Congress and say: ‘We anticipate this many cases coming in two years from now so in a rational way we are going to manage this place the way we ought to and get the resources in at the front end so we don’t have that backlog.’ Eventually we will get some relief if the problem gets bad enough. But the problem in Washington is nothing in happens until it is bad enough.”

Blair Jacobs, partner at McDermott Will & Emery, said clients are looking for predictability in the PTAB trials but it is too early to draw conclusions.

“People are going to be looking at the standards of review that are applied, and the level of deference that is provided to PTAB in these decisions,” he said. “There have been about 20 decisions. That is not a large grouping to look at. So looking two years from now is going to provide a much better window into where it is going.

By the beginning of March the PTAB had issued final written decisions in 19 proceedings. The board cancelled all claims for which the trial was instituted in 16 of those cases. It cancelled 95% of all claims for which the trial was instituted and cancelled 82.9% of all claims that were initially challenged by the petitioner. These statistics were described on the IPWatchdog blog as “draconian statistics for IP owners”.

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article