“You try to put the pendulum right in the middle. My priority was to maximize innovation. Different people will always have different points of view on that question. I do think we’re much closer to balance than we have been.” – Andrei Iancu
While steps taken under former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu to restore equilibrium at the Patent Trial and Appeal Board (PTAB) have improved a bad situation to some extent, in many ways the damage has been done, said IPWatchdog founder and CEO Gene Quinn during a keynote interview with Iancu earlier today, on day one of the PTAB Masters ™ 2021: Winning at the PTAB Series.
“It felt sometimes like the PTAB was making it up as they went along,” said Quinn to Iancu. “It eroded the confidence of patent owners. I do think it’s getting to be more of an equilibrium, but it’s a damaged brand.”
The first day of the PTAB Masters program kicked off with more than 1,000 registered attendees. PTAB Masters co-chair Robert Greene Sterne of Sterne Kessler Goldstein & Fox told the audience this level of interest is “totally predictable,” since the PTAB “has become the dominant horse in the U.S. patent system today.” While the intent was that the PTAB would be used strictly for “bad patents”—the worst of the worst—“it’s the norm,” said Greene Sterne. “If you’re going to enforce a patent in the district courts, you must expect a PTAB action.”
Iancu’s “deep understanding of the practical realities” helped to restore some sanity to a system that had swung too far to one side by the time he reached the USPTO. By designating decisions such as General Plastics and Fintiv precedential, Iancu moved the pendulum further toward the middle, but we now stand on the precipice of a new administration and potentially new decisions, said Greene Sterne. “It’s very complicated to provide good advice, since things are changing and we don’t know where we’ll be in 2-3 years,” he added. “We’re at an inflection point in the patent world and the United States.”
Quinn: Can the PTAB Brand Bounce Back?
Iancu next joined Quinn to discuss his time at the USPTO, which he left in January 2021, following th election of President Joe Biden. He has now returned to private practice with his former firm, Irell & Manella, and also is spearheading a project with the Center for Strategic and International Studies, a Washington, D.C.-based think tank.
Asked what he was trying to accomplish during his time with the USPTO, Iancu said it was all about balance. When he first arrived at the USPTO, many were referring to the PTAB as a “death squad” for patents.
“At a minimum, there was an issue of perception,” said Iancu, “but there were substantive issues as well.” Iancu said his reforms were aimed at making parties at the PTAB feel like they at least got a fair shake. “That’s really important for the stability of any legal system,” he added.
Replying to Quinn’s assertion that the PTAB has become a damaged brand, Iancu agreed that some of the initial implementations of the America Invents Act (AIA) proceedings “did erode some confidence, and that’s unfortunate.” But at the end of the day, there are always going to be those who think the pendulum has swing too far one way or another:
I know there are folks who think more needs to be done; others think we went too far and [the PTAB] is too anti-petitioner. They’re the most vocal right now. You try to put the pendulum right in the middle. My priority was to maximize innovation. Different people will always have different points of view on that question. I do think we’re much closer to balance than we have been.
Iancu said he was also very focused on ensuring the PTAB wasn’t merely acting as an administrative check on an independent judiciary, and eliminating practices like serial petitions, which had no purpose except to give the petitioner multiple bites at the apple.
However, Iancu defended the PTAB’s administrative patent judges (APJs) and said that practitioners should know the APJs “really take their jobs very seriously. They’re true experts in validity issues in general, and they’re extremely well-prepared for any case before they make any decision.”
Iancu’s advice to attorneys going before the PTAB is thus to “understand that [the APJs] are well-prepared: be forthcoming, know the record, point the judges to the record, be specific about the points you’re making. Hand waving generally does not fly at the PTAB.”
Ultimately, concluded Iancu, inter partes review (IPR) and post grant review (PGR) proceedings “are here to stay” and practitioners should feel confident that the Office does take achieving the appropriate balance very seriously. “That was certainly true while I was there, it’s true now and I suspect it will be true under the next Director,” said Iancu.
IPWatchdog’s PTAB Master’s 2021 is happening now, and will take place April 19-22 from 11:00am to 2:00pm each day. Upcoming speakers include David Kappos, Retired CAFC Chief Judge Paul Michel and Senator Thom Tillis (R-NC). Register to attend for free now.