Kappos at PTAB Masters™ Day Two: PTAB Problems Arose When It Failed to Evolve

By Eileen McDermott
April 20, 2021

“The iteration [on the PTAB rules] didn’t happen after a while, even though there were things going on that weren’t fair to patentees. It was only more recently, after those issues became abundantly, and then horribly, clear, that the recent leadership came in to fix them.” – David Kappos

The second day of IPWatchdog’s PTAB Masters™ 2021: “Winning at the PTAB” featured a keynote interview with former U.S. Patent and Trademark Office (USPTO) Director David Kappos, who was at the helm of the agency when the America Invents Act (AIA) was passed. As part of the AIA, Kappos was tasked with developing rules to implement the Patent Trial and Appeal Board (PTAB) and related post grant proceedings, and was chiefly focused on adhering to the unprecedented timelines set for those proceedings in the AIA. “The PTO had never been given strict timelines before,” explained Kappos. “I felt the gravity; I thought, ‘if the public is going to respect the PTO and patents, we have to get on top of the timeframes.’ [I told my team] the goal is going to be to implement within the timeframes 100% of the time.”

However, zeroing in on that challenge necessitated letting go of perfection in other areas. Kappos said he was open with stakeholders about this and told them that an iterative process would be crucial to eventually getting the system right. “I can remember at one meeting, with people who had very different points of view, saying ‘look, there’s no way we’re going to be omniscient enough to get everything exactly right the first time through, so we’re going to iterate,’” he recalled. However, subsequent administrations didn’t follow through. “The iteration didn’t happen after a while, even though there were things going on that weren’t fair to patentees,” Kappos said. “It was only more recently, after those issues became abundantly, and then horribly, clear, that the recent leadership came in to fix them.”

He added that the Office should have started iterating on the rules by one year to 18 months at most: “That’s where the PTAB became controversial, when they didn’t evolve.”

The PTAB is an ‘Obviousness Court on Steroids’

Today’s PTAB Masters program, which had 1,050 registrants at last count, is focused on “Pre-Trial Practice: Finishing it Before it Starts,” where panelists will present best practices for patent owner preliminary responses at the PTAB. This includes challenging petitions on discretionary matters under Section 314(a); 325(d); preliminary response evidence; petition preparation; joint defense dynamics; and development of declaration testimony.

PTAB Masters Co-Chair Scott McKeown of Ropes & Gray introduced today’s program with IPWatchdog Founder and CEO Gene Quinn, and said that the PTAB process really begins with prosecution, when patent owners have to think about the possibility of PTAB judges reviewing their claims, in addition to district courts. Quinn asked both McKeown and Kappos to address the fact that the PTAB seems to be an “obviousness court on steroids,” partly because the administrative patent judges (APJs) all have advanced degrees in engineering and science.

“A lot of the mistakes that are made in patent owner representation [have to do with] coming into the PTAB with attorneys that have gotten big judgments in district court but have never had to deal with obviousness,” remarked McKeown. “Those arguments don’t work at the PTAB. It’s not because the PTAB is out to get patent owners, it’s just that people don’t want to adapt to the learning curve; APJs [unlike district court judges] have engineering and science degrees, it’s a different perspective.”

Kappos said that having smart judges is preferable to not, but that it does present a particular challenge: “It’s an interesting conundrum,” he said. The APJs, as well as USPTO examiners, should be trained to recognize that their obviousness bar isn’t necessarily the right one, it’s the POSITA, Kappos said. “I’ll take smart people every day of the week, but I agree that you take on the challenge then of getting them to adjust their personal perspective.”

Kappos also called for compromise in the IP community to move forward with the PTAB, since it has become more balanced recently and has done its job for many industries.

“We all need to step back and recognize that [the PTAB] solved some real problems. The AIA and PTAB were not just made up to torture patentees. We all ought to be seeking to make it as fair as possible – fair to everybody.”

IPWatchdog’s PTAB Master’s 2021 will take place through April 22 from 11:00am to 2:00pm each day. Upcoming speakers include 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 22 Comments comments.

  1. Anon April 20, 2021 5:45 pm

    What echoed for me was the notion that examiners are not PHOSITA.

    Not so long ago – within the last two months – I had an examiner actually state that in an interview – to which I promptly corrected him, and invited him (if he wanted to pursue that theory) to make sure that he wrote that out in black and white in the next action.

  2. Pro Say April 20, 2021 7:29 pm

    “However, subsequent administrations didn’t follow through.”

    You mean like Michelle “Google, Apple, and Big Tech first and foremost” Lee?

    “It’s not because the PTAB is out to get patent owners”

    Why of course not. The 80%+ PTAB claim invalidation rate proves that, right?

  3. Curious April 20, 2021 9:50 pm

    “Those arguments don’t work at the PTAB. It’s not because the PTAB is out to get patent owners, it’s just that people don’t want to adapt to the learning curve; APJs [unlike district court judges] have engineering and science degrees, it’s a different perspective.”
    To be honest, I’ve met some patent litigators who wouldn’t recognize a good argument to make at the USPTO if it bit them in the butt. On the other hand, I have dealt with a great many APJs who are hellbent on rejecting just about anything that crosses their desk — regardless of the facts or the law.

    The thing that really separates an APJ from a District Court judge is that they are far better versed on patent law than the average judge and can collaborate amongst each other to come up with lousy responses to good arguments. This is likely why I see the same horrible line of arguments time and time again at the Board.

    Bear in mind that APJs, while having some technical background, are unlikely to be subject matter experts in whatever technology that happens to cross their desk and of all the parties involved, they will likely understand the technology the least.

    Forget the innate bias at the PTAB against inventors/patentees for a moment, the biggest problem with the PTAB is that there is no finality for a patentee. A win at the PTAB gets a patentee exceptionally little. The rules have been set up so that patent owners can get dragged back time and time again to the PTAB, bleeding them of money and energy. Take a patent to the PTAB enough times and you’ll bound to find a couple APJs who are willing to buy what you are selling — particularly in the context of 103. Lose just once and it is all over for the patent owner.

    There is no real negative consequences for a petitioner at the PTAB. If a patentee files a frivolous lawsuit, they could get hit with Rule 11 sanctions. If a petitioner files a frivolous petition that isn’t even instituted, they get their (substantial) filing fee back. If a patent owner wins in district court, they can get an injunction and/or damages. If a patent owner wins at the PTAB, they are ALWAYS worse off. They have the same patent rights as before but they are a lot poorer for it. Moreover, as I have written before, winning at the PTAB is losing because the patent owner can be subjected to another IPR (thereby bleeding more money, time, and energy from patentee). Having an important patent is an invitation to be bled dry at the PTAB.

    The only benefit of winning at the PTAB is very, very limited estoppel that can be easily gotten around. This is hardly fair compensation for the patent owners.

    The patent system SHOULD favor patentees (i.e., promote the progress of science and useful arts). However, that is not how it is working at the PTAB. The system needs a complete overhaul. Unfortunately, the way money talks in Congress, a complete overhaul will likely result in a system that is even better for the large efficient-infringer class and worse for individual inventors and small companies.

    This is why the patent system is effectively broken for anybody outside the very large companies of the world. Patents are the ‘sport of kings’ and becomes increasingly so year in and year out.

  4. Anon April 21, 2021 6:05 am

    Excellent points by Curious — kudos.

  5. AAA JJ April 21, 2021 9:22 am

    Very few APJ’s have seen a 3, 4, 5+ reference combination that their 20/20 hindsight prescription glasses didn’t make crystal clear.

  6. Josh Malone April 21, 2021 10:11 am

    It is hindsight and word games. The USPTO should not decide obviousness AFTER they grant a patent. It is simply too subjective and unpredictable. This precludes substantial investment in technology that can be copied. There is no reliable guidance to securing the exclusive right to such inventions.

    These are not the sort of “mistakes” or “bad patents” envisioned by the AIA drafters and supporters.

    I still don’t understand why Kappos delegated the institution decision to the PTAB in 2012. That should be an independent body. Nothing in the statute suggested that approach. Take any patent ever issued and ask, “is there a reasonable likelihood that it would have been obvious to a POSITA to combine x, y, and z”? The PTAB APJs can say yes. Especially when their job and bonus depend on it.

  7. PTO-indentured April 21, 2021 10:55 am

    To the 1000s of inventions and respective inventors AIA’s PTAB crushed: Sorry it failed (year-after-year) to self-correct.

    And for the facts put forth @1-5 above, will continue to perpetuate bias against U.S. inventors which ‘in hindsight, will be viewed as obviousness.’

    So long as this glaring double-standard system persists, it remains glaringly unjust.

  8. AAA JJ April 21, 2021 1:52 pm

    ” That should be an independent body. ”

    That’s a good idea. Then they should take the pieces of the puzzle (i.e. the petitioner’s prior art references) to a panel of APJ’s, who haven’t seen the patent and its claims, and tell them, “See if you can fit the interrelated teachings of these references together to come up with what the patentee claimed.” Give the panel a week or so and if they can’t or don’t come up with the claimed inventions the patent is upheld. Seems fair to me. I mean, according to J. Kennedy, or whatever clerk wrote KSR for him, it’s no big deal for PHOSITA to use “ordinary creativity” to do that. If PHOSITA can fit the puzzle pieces together then certainly the scientifically and legally competent APJ’s can too.

  9. Anon April 21, 2021 3:32 pm

    Give the panel a week or so

    …or a pizza over the weekend, eh?

    I keep on re-reading that post to find the /s signal…..

  10. ipguy April 21, 2021 6:26 pm

    “coming into the PTAB with attorneys that have gotten big judgments in district court but have never had to deal with obviousness”

    Bingo! Experienced patent litigators (the majority of them without a shred of prosecution experience) should be including patent prosecutors as part of the post-grant proceeding team.

  11. Curious April 21, 2021 9:28 pm

    To Josh Malone’s point, a determination of obviousness “is simply too subjective and unpredictable.” I can say with 100% confidence that any 103 rejection that doesn’t get instituted/upheld by one set of APJs could get instituted/upheld by another set of APJs (or the Federal Circuit or a District Judge).

    A point that I’ve made time and time again is that business assets are devalued based upon uncertainty. The more uncertainty, the less the value. This is basic business valuation.

    When one is attempting to “promote the progress of science and useful arts” increasing uncertainty is not promoting the progress — it is doing the OPPOSITE. Therefore, the Supreme Court’s penchant for flexible tests (i.e., having their ability to bend the nose of wax as they see fit, i.e., so as to justify a decision based upon a predetermined result) is hurts more than it helps..

    Since the bar for patentability is so “flexible” and hence uncertain, patents assets are being devalued by business for this same reason. A better approach would be to have 103 evaluated by the USPTO alone and only prior to issuance. Perhaps one might allow a 1-year grace period after issuance to file for an ex parte reexamination. However, after that, prior art challenges should be based upon 102 prior art only. There is far less subjectivity when it comes to evaluating 102 prior art.

    This proposal also dovetails into the presumption of validity — one of the bundle of rights supposedly enjoyed by patentees (but one that is usually ignored by the Courts). Patentees should not have to face untold numbers of challenges based upon any number of combinations crafted together (using hindsight) by challengers. If a challenger has arguable 102 art, then that should be considered. However, a determination of obviousness is far too fact-finder dependent.

  12. anonymous April 22, 2021 12:14 am

    What we should be talking about is patent incontestability. It would solve all kids of problems. Require all IPRs to be instituted within the sooner of 2 years from issue or 4 years from filing. If not, patent validity is incontestable at the PTO.

  13. David Hoyle April 22, 2021 9:21 am

    Kappos’s comments are nonsensical.

    It was he in September 2012 that first issued new rules which made the PTAB a death squad. but yet now he laments over “the Office should have started iterating on the rules by one year to 18 months at most: “That’s where the PTAB became controversial, when they didn’t evolve?????????” ABSURD!

    He was the one who placed it on the track it became. It was controversial from day one! I know of what i speak because we were steamrolled by the PTAB within his so-called one year to 18 months.

    It “appears” that Kappos has worked very hard since he left the PTO to claim “it wasn’t me.” Yet, Senator Leahy, the author of this travesty law, went on record by saying, “I could have never passed it without Kappos’ help.”

    So no matter how much Kappos tries to distance himself from this disaster, he is as complicit as Michelle K. Lee.

  14. PTO-indentured April 22, 2021 10:47 am

    Curious@11

    Yes, uncertainty results in devaluation. And the last ten years — thanks to the courts, and an almost invisible congress (where IP stewardship is concerned) — have perpetuated the most convoluted and ambiguous determinations in the history of the PTO.

    Hmm, lets see… who benefits the most from unending ambiguity? Is it the oligarch company or those troublesome small entities (with financial resources insufficient to untangle quagmires)?

    Ambiguity (wittingly?) favors oligarchs.

  15. PTO-indentured April 22, 2021 10:58 am

    Kappos said. “It was only more recently, after those issues became abundantly, and then horribly, clear, that the recent leadership came in to fix them.”

    AIA was front-loaded with POE* that Iancu could not undo. Ever since, APJs take the position “Ah shucks, guess we have to meet that low-bar POE standard — and Oops there goes another small entity PO.” Perfect for maintaining a near Patent Death Squad peak invalidation of U.S. Patents.

    * It is only — an inactive IP stewarding congress, ever since AIA — that can reverse to the APJs go-to patent whomping POE.

  16. anon April 22, 2021 9:15 pm

    The PTO issued the patent and should stand behind their work!
    The PTO should pay all fees involved in defending the patent.
    The PTO examiners that prosecuted the patent should be involved in defending their work.
    This is obvious!

  17. anon April 23, 2021 11:40 am

    Obviousness “BS”
    My patent attorney used to say, “of course it’s obvious to the inventor” or “once it’s known”. A paper clip is obvious, so is velcro, and so are post-it notes.
    If it is “new” and “useful”, (and never been done before) . it is NOT obvious!

  18. Anon April 23, 2021 12:38 pm

    Sister anon,

    Please be aware that the terms you use are legal terms. You appear to want to use them in a colloquial manner, and that will not be helpful (either for you or for a general reader).

  19. anon April 23, 2021 12:59 pm

    What is your “legal” definition of “obvious”,
    and how does it differ?

  20. anon April 23, 2021 1:05 pm

    I am aware of the legal definition.

  21. anon April 23, 2021 1:10 pm

    Of course.

  22. Anon April 23, 2021 3:45 pm

    My lower case namesake, your statement of “If it is “new” and “useful”, (and never been done before) . it is NOT obvious!

    Is clear error. You are confusing anticipation and obviousness. If something were to have been done before, you would fall under 102 – not 103.