'; Revised PTAB procedure and desire for clarity lead to flurry of precedential decisions

Revised PTAB procedure and desire for clarity lead to flurry of precedential decisions

July 24, 2019

From 2013-2018, the Patent Trial and Appeal Board (PTAB) designated 12 decisions as precedential – cases that become binding authority for the Board in subsequent matters involving similar facts or issues. The Board has nearly matched that total in a mere 10 months since revising its standard operating procedure regarding precedential designations in September 2018.

This flurry of precedential decisions is neither an accident nor a surprise. It reflects not only the procedural changes contained in Revised SOP2 – specifically, the ability of parties to nominate cases for designation – but also PTAB’s desire to provide clarity and direction for those affected, says Aaron Feigelson, a shareholder in Leydig’s Chicago office.

“After the America Invents Act (AIA), inter partes review (IPR) proceedings, post-grant reviews (PGR) and covered business method (CBM) cases flooded PTAB, necessitating a dramatic increase in the number of judges and panels hearing cases,” Feigelson says. “When combined with many statutory gaps in the procedural rules and substantive considerations applicable to these nascent proceedings, this plethora of panels created a frustrating lack of predictability for litigants. I think these designations are part of PTAB’s efforts to remedy that.”

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Under Revised SOP2, anyone may nominate a previously issued decision as being precedential. The nominated decision must undergo a multilevel review process that involves a screening committee, an executive judge’s committee, and PTAB’s director. The Board can also apply the designation independently, as was the case under the previous procedure.

The 11 precedential decisions designated since last fall involve IPRs, PGRs, and CBMs, addressing such issues as motions to amend, real parties in interest, and joinder. Collectively, these opinions reflect, in part, what Feigelson calls a “course correction” by PTAB; an attempt to counter the widely held perception that proceedings have been unfair and prejudicial to patent holders.

“Along with recent Supreme Court and Federal Circuit decisions that will likely result in fewer challenges and an increase in refusals to institute, some of these precedential opinions make life harder for petitioners and provide greater opportunities for patent owners,” Feigelson says. “While all parties benefit from the clarity and predictability that come from these designations, the PTAB pendulum generally seems to be swinging back toward patentees.”