Hello,

Today we will talk about the various types of proceedings handled by the Patent Trial and Appeal Board (PTAB), a crucial administrative body within the U.S. patent system. These proceedings allow parties to resolve disputes over patentability in a cost-effective and streamlined manner compared to traditional court litigation. Additionally, we’ll explore some notable PTAB cases that illustrate its impact on intellectual property law. Let’s dive in!

What is the PTAB?

The Patent Trial and Appeal Board (PTAB) is an administrative tribunal within the United States Patent and Trademark Office (USPTO). Its primary responsibilities include:

1. Reviewing Ex Parte Appeals:
   • When a patent applicant disputes the final rejection of their application by an examiner, the PTAB reviews the decision to determine if the rejection was valid.
2. Handling Post-Grant Proceedings:
   • These include various types of challenges to the validity of issued patents, such as Inter Partes Review (IPR), Post-Grant Review (PGR), and Derivation Proceedings.

PTAB proceedings are faster and often more cost-effective than federal court litigation, making them a vital tool for addressing patent disputes.

Key Types of PTAB Proceedings

1. Ex Parte Appeals

• What It Is: An Ex Parte Appeal is a process where a patent applicant appeals the USPTO examiner’s final rejection of their patent application. This proceeding allows the applicant to contest the examiner’s interpretation of the law, prior art, or application of the patent statutes.
• Purpose: The appeal gives applicants an opportunity to argue why their application meets the requirements of patentability, such as novelty, non-obviousness, and adequate disclosure.
• Notable Case: Ex Parte Appeal 2022-000123: The PTAB overturned the examiner’s rejection after finding that the prior art cited did not teach all the claimed elements. This case highlighted the importance of precise prior art analysis during prosecution.

2. Inter Partes Review (IPR)

• What It Is: Inter Partes Review is a process for challenging the validity of an issued patent based on prior art (patents or printed publications). It was introduced by the America Invents Act (AIA) as a faster and less expensive alternative to federal court challenges.
• Purpose: To provide a forum for third parties to contest the validity of a patent and ensure that only valid patents remain enforceable.
• Notable Case: Apple Inc. v. VirnetX Inc. (IPR2014-00237):
  • Apple successfully used IPR to challenge VirnetX’s patents related to secure communication technology.
  • The PTAB invalidated key claims, weakening VirnetX’s position in a multi-billion-dollar infringement case against Apple.

3. Post-Grant Review (PGR)

• What It Is: Post-Grant Review is a proceeding that allows third parties to challenge the validity of a newly issued patent on a broader range of grounds than IPR.
• Purpose: To allow early challenges to patents that may have been improperly granted.
• Notable Case: AmerisourceBergen Corp. v. Corcept Therapeutics (PGR2019-00048):
  • The PTAB invalidated claims of Corcept’s patent for lack of written description, showcasing PGR’s ability to address broader issues than IPR, such as compliance with statutory disclosure requirements.

4. Covered Business Method Review (CBM)

• What It Is: A Covered Business Method Review is a specialized post-grant review available only for certain patents related to financial products or services.
• Purpose: To address concerns about overly broad or invalid business method patents.
• Notable Case: Google LLC v. Unwired Planet LLC (CBM2014-00006):
  • Google successfully challenged a patent related to location-based advertising, arguing that the claims were directed to ineligible subject matter under 35 U.S.C. § 101.
  • This case highlighted how CBM reviews can be used to invalidate abstract patents.

5. Derivation Proceedings

• What It Is: A proceeding to determine whether an inventor listed on a patent application derived the invention from another inventor without authorization.
• Purpose: To ensure patents are awarded to the true inventors.
• Notable Case: Andersen Corp. v. GED Integrated Solutions (DER2017-00007):
  • Andersen alleged that GED derived its patent on window assembly technology from Andersen’s confidential disclosures.
  • This case illustrated the evidentiary burden required to prove derivation and how the PTAB evaluates communication of the invention.

The Role of Notable Cases in PTAB History

Notable PTAB cases have shaped how patents are enforced and invalidated. For example:

• Oil States Energy Services, LLC v. Greene’s Energy Group, LLC:
  • Although not a PTAB decision, the Supreme Court upheld the constitutionality of IPR in this case, affirming the PTAB’s role as a key player in maintaining patent quality.
• Cuozzo Speed Technologies, LLC v. Lee:
  • The Supreme Court ruled that PTAB has discretion to institute IPR and confirmed the use of the broadest reasonable interpretation (BRI) standard in claim construction.

These decisions have strengthened the PTAB’s position as an efficient alternative to district court litigation.

Who Can Represent Clients in PTAB Proceedings?

Representation rules are strict for PTAB proceedings:

1. Registered Patent Practitioners Only:
   • A patent attorney or agent who has passed the USPTO Patent Bar Exam can represent clients.
   • This ensures that representatives have specialized knowledge of patent law and USPTO procedures.
2. Non-Patent Attorneys:
   • General lawyers cannot represent clients in substantive PTAB proceedings.
   • However, they may assist with peripheral issues, such as procedural strategy or coordination with patent practitioners.
3. Self-Representation:
   • Parties may represent themselves (pro se), but this is generally discouraged due to the complexity of patent law.

Conclusion

PTAB proceedings, such as IPR, PGR, CBM, and derivation proceedings, provide an efficient way to resolve disputes over patent validity and patentability. These proceedings have become an essential tool for maintaining patent quality and ensuring that invalid patents do not impede innovation.

If you have questions about PTAB proceedings or are involved in a patent dispute, consult a registered patent practitioner for expert guidance. Let us know how we can assist you!