“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.