PTAB fails to decide IPR within 1-year statutory deadline

By Gene Quinn
September 7, 2017

Another day and another story relating to serious questions about process and procedure at the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has come to light. This time a panel of the PTAB is taking whatever time they desire to decide a case in violation of the 1-year statutorily mandated time limit within which to decide an inter partes review (IPR) challenge.

According to 35 U.S.C. § 316(a)(11), the PTAB is required to issue a final determination in an inter partes review not later than 1-year after the date of a decision to institute review is made. If good cause is show the PTAB may extend this deadline by 6 months, but not more. To date, despite the complexity of cases and the USPTO explaining they must cut corners in process and cannot act as examiners affording patentees the right to amend patent claims, the PTAB has not seen fit to extend a single case for cause.

That the PTAB has not extended a single case for cause should not be confused with the PTAB following the mandates of § 316(a)(11). Indeed, the parties have been waiting for a decision in IPR2016-00237 for more than 14 months.

Here is the timeline of several relevant events for IPR2016-00237:

As of the writing of this article there has been no decision in IPR2016-00237, and there has been no showing of cause by the PTAB or the USPTO why IPR2016-00237 was incapable of being decided on or before June 3, 2017, within the 1-year period mandated by § 316(a)(11). Quite to the contrary, everything in the file states the exact opposite — that this case would proceed on time without exception. So why then has PTAB not issued a decision?

Particularly galling, in the decisions of the PTAB authorizing the joinders mentioned above the Orders specifically state that there would be “no change to the Scheduling Order in IPR2016-00237.” While DUE DATES 1 and 2 would later be changed by several days, the other DUE DATES from the original scheduling order continually remained unchanged, and the oral hearing was held almost three months prior to the 1-year statutorily mandated period for a decision. There is no rationale or reason explained on the record that would give insight into why the PTAB missed the statutorily mandated 1-year time-limit in this case.

It seems that the PTAB is here, and presumably in other joinder cases, giving itself more than 1-year without a showing of cause. If that is the case the PTAB is intentionally misreading § 316(a)(11) in order to construe it to give themselves 1-year from the last joinder Order rather than 1-year from the date of institution as the statute requires. Of course, we won’t know for sure until we see when the PTAB actually issues a decision, but smart money would be on a decision in IPR2016-00237 being issued on or slightly before October 6, 2017.

If the PTAB is, in fact, giving itself 1-year from the last joinder Order in an IPR what the tribunal is doing has absolutely no textual justification in the statute. Such a liberal reading of § 316(a)(11) is further proof that this tribunal interprets the statute however it damn well pleases regardless of the clear and unambiguous language.

And I’m not interested in hearing that the PTAB is overworked and has too much on its plate to follow adhere to the mandates of the statute. That lame argument doesn’t work for parties or applicants and it shouldn’t work for the government either. Had a party missed a statutory deadline at the Patent Office we all know what would happen. You cannot overcome a missed statutory deadline as a challenger, patentee or patent applicant. Apparently the same cannot be said if you are the PTAB. When the PTAB misses a statutory deadline without explanation there are obviously no repercussions whatsoever. Further evidence that this tribunal is simply thumbing its nose at process and procedure even when that process and procedure is clearly and unambiguously enshrined in a statute enacted by Congress.

The PTAB has no one to blame but itself if the workload the tribunal faces is too much.  By misapplying the standards to institute post grant proceedings the PTAB institutes practically everything eventually, but proceedings were supposed to be rare. In fact, in August of 2012 the USPTO estimated that there would be only 500 IPR filings in fiscal year 2015 (see page 48710, column 3), but according to USPTO statistics there were 1,737 IPR filings in FY 2015 (see slide 3), which corresponds to 347% more than estimated. Of course, almost three-and-one-half times the number of IPR filings makes sense given how easy they are to start and how one-sided in favor of the challenger the proceedings are. Perhaps if the PTAB needs time they should institute fewer cases and focus their resources, as envisioned by everyone at the time the America Invents Act (AIA) was enacted.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 13 Comments comments. Join the discussion.

  1. Pennywise September 7, 2017 12:46 pm

    This is common for joinder cases. The PTO has treated joinder cases as “cause” under the statute to invoke the available extension period. It has been done in other cases.

  2. Tesia Thomas September 7, 2017 3:16 pm

    The kangaroo court doesn’t follow rules or laws…
    by definition.

  3. Gene Quinn September 7, 2017 3:29 pm

    Pennywise-

    Something doesn’t seem right if the panel continues to hold the parties to the original scheduling order and everyone agrees the case will not be delayed. A file devoid of any mention of “cause” seems curious to me.

    -Gene

  4. Bemused September 7, 2017 5:33 pm

    Gene,

    Pennywise is correct. I had the same thing happen to me in an IPR in which the PTAB joined a later filed petition. We sailed right by the one-year statutory deadline with nary a peep from the panel. We finally got a final written decision from our panel some 14 months after the initial petitions were granted.

    Your statement “Something doesn’t seem right if the panel continues to hold the PARTIES to the original scheduling order…” (emphasis added) may contain the answer. In other words, the panel seems to be saying that the PARTIES are held by the scheduling order but it doesn’t mean the PTAB is so held….

  5. Gene Quinn September 7, 2017 5:43 pm

    Bemused-

    This is just further evidence of an imperial PTAB. They like to tout that they handle all IPRs within 12 months, which is just not true. It would be perfectly fine with me if the USPTO wanted to take the position that when there is a joinder the PTAB needs more time to consider additional arguments and that justifies cause. The problem is this tribunal does whatever it wants as if it is a Sheriff in a small town not governed by the law. They don’t make a finding or statement or notify anyone that there is cause to go past the 1 year, they just do it. The power and arrogance exhibited by the PTAB is a very dangerous combination.

  6. Bemused September 7, 2017 6:12 pm

    Sheriff indeed…along with judge and jury and most definitely executioner.

  7. Just the rules September 7, 2017 11:31 pm

    37 CFR 42.122(b)

    (b)Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.

  8. Just the rules September 7, 2017 11:37 pm

    35 usc 326

    (11) requiring that the final determination in any post-grant review be issued not later than 1 year after the date on which the Director notices the institution of a proceeding under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 325(c); and

    In other words joinder changes due dates

  9. Paul F. Morgan September 8, 2017 10:46 am

    This is one of the IPR joinder questions that need fixing. 35 USC 316 contains specific PTO rule authorization for: “(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c);
    (12) setting a time period for requesting joinder under section 315(c); and..

    The one year time limit and its exceptions are not self-enforcing, but the Director or CAPJ presumably could?

  10. Gene Quinn September 8, 2017 1:06 pm

    Just the rules-

    Joinder seems to change the due dates for the PTAB, not the parties. Funny how that works.

    Interesting how the USPTO can know that there is good cause in advance of ever considering anything. Again, funny how there is good cause to extend the PTAB deadline, but not good cause to extend the deadlines of the patent owner. Pretty much what you’d expect from an imperial tribunal though where the King is always right and the peons just have to suck up and deal.

  11. Joachim Martillo September 8, 2017 8:24 pm

    I like the expression Star Chamber. I believe anon also is fond of the term.

  12. Anon September 9, 2017 8:42 am

    Joachim,

    While I have made reference to the term (especially in light of the fact that the Office publicly admitted that SAWS was only one of an unnumbered similar programs – who knows how many other SAWS-like programs are still in operation), I believe that the person that you may be thinking of is Mr. Heller, who has based more (and more recent) references to the term on some historical parallels to the English patent law history and the current issues in the pending Supreme Court patent case concerning Constitutional infirmity of the IPR system.

  13. me October 2, 2017 6:26 pm

    The stip and the ORDER here said that the presence of the joinder would not change the schedule.

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