PTAB Masters™ 2021, Day One: How Iancu Tried to Repair a ‘Damaged Brand’

By Eileen McDermott
April 19, 2021

“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

Gene Quinn (left) and 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.”

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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.

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments.

  1. Josh Malone April 19, 2021 1:37 pm

    It’s balanced if you have hundreds of patents and an 8 figure litigation budget. For disruptive startups with a small portfolio on breakthrough technology, the pendulum is unhinged. If PTAB is here to stay, how can inventors compete?

  2. ipguy April 19, 2021 2:33 pm

    “They’re true experts in validity issues in general”

    Oh, “uncastrated male bovine” “sexual intercourse” “fecal matter”!

  3. Joe Williams April 19, 2021 3:26 pm

    Good question, Josh.

  4. concerned April 19, 2021 4:08 pm

    I do not think the PTAB even read the official record or our arguments or the PTAB would not have made such a ridiculous new grounds of rejection.

    Even the two examiners did not go where the PTAB went, it is ridiculous on the surface.

    Millions of experts and working professionals could not solve the problem for decades, yet the solution was mental steps. Insulting and yet those experts and professionals have law degrees too. The PTAB must not respect their own profession.

    Mr. Malone is correct, an inventor needs 8 figures just to cut through the perpetual B.S.

  5. Pro Say April 19, 2021 5:23 pm

    Is the Death Squad materially less lethal and more fair and balanced than it used to be thanks in large part to the hard work of Andrei and his Patent Office colleagues?

    Thank goodness for American innovation, yes it is.

    But, sadly, (and despite their whining) the pendulum remains firmly planted on the side of rich Big Tech and other corporate behemoths.

    As we repeatedly see, the little guys and gals — along with small companies — stand little chance in protecting their innovations; especially breakthrough innovations.

  6. ipguy April 19, 2021 9:02 pm

    PTAB decisions need to be searchable by APJ, and ex parte PTAB decisions need to also be searchable by Examiner.

  7. Anon April 20, 2021 7:19 am

    ipguy,

    While admittedly cludgy, the USPTO does provide a “by examiner” data set search engine.

    It is at the examiner level, as opposed to the PTAB level, but once unwound, an examiner’s tendencies are amply “examinable.”

  8. Julie Burke April 20, 2021 9:09 am

    In the patent corps. the decision to send an application to the PTAB for appeal is made by an Appeal conference usually comprising the supervisory patent examiner, a primary examiner who signed the final office action and a conferee, usually another supervisor or quality assurance specialist. It would likely be informative to be able to search PTAB decisions made by these higher level patent personnel too.

  9. ipguy April 21, 2021 4:19 pm

    “While admittedly cludgy, the USPTO does provide a “by examiner” data set search engine.”

    Not ringing a bell. Are you referring to data scraping from PAIR?

  10. ipguy April 21, 2021 4:23 pm

    “an Appeal conference usually comprising the supervisory patent examiner, a primary examiner who signed the final office action and a conferee, usually another supervisor or quality assurance specialist.”

    Which is extremely troubling when you take into account that there is a significant percentage of appeals where the Examiner is completely or substantially reversed. Proof that the blind truly are leading the blind at the USPTO.

  11. AAA JJ April 21, 2021 5:06 pm

    “Oh, ‘uncastrated male bovine’ ‘sexual intercourse’ ‘fecal matter’!”

    I’m borrowing this.

  12. Anon April 21, 2021 8:13 pm

    ipguy,

    No, not a scrape from PAIR.

    Try: https://ped.uspto.gov/peds/ The data sets are downloadable in xml and JSON formats, so some additional data scrubbing is necessary.

  13. ipguy April 23, 2021 4:27 am

    @11

    “I’m borrowing this”: the motto of every willful infringer. 🙂

    Glad to see that at least one person got it.

  14. Charles Ankner April 23, 2021 2:12 pm

    Hello Ellen,

    I pray you are well and happy. I am/was a registered participant of day 3-4; but very unfortunately I missed day 1.

    Would you have a link to; or could you (or someone there) send a copy of the vid? I’m most interested in appeals before the PTAB; because I have four pending.

    Many sincere thanks, ~Charles
    email: charles@saintbrandcannabis.com
    https://www.linkedin.com/pulse/method-improving-growth-production-output-plants-us-ankner-cp/

  15. Eileen McDermott April 23, 2021 2:44 pm

    Hi Charles – the program is archived here: https://www.ipwatchdog.com/video-category/virtual-programs/