With over eight USPTO regional offices across the country, there are more than 170 Patent Trial and Appeals Board (PTAB) administrative judges currently on the bench. Who are these judges? What are their backgrounds? What should attorneys know before appearing in front of a PTAB panel?
While the PTAB judges come from a variety of backgrounds, they share a similar set of qualifications. Overwhelmingly, PTAB Administrative Judges have technical backgrounds grounded in electrical engineering. A few have backgrounds in chemistry and in biological sciences, but the vast majority hold undergraduate and advanced degrees in electrical, mechanical or computer engineering. Moreover, many of the judges have worked in the field as engineers prior to becoming attorneys. Additionally, most PTAB judges have over 10 years of patent law experience with many having extensive experience in private practice as patent litigators. A significant portion of the judges have clerked for the United States Court of Appeals for the Federal Circuit, and some have done stints as examiners at the USPTO. A few of the judges have experience in different tribunals, such as appearing before the International Trade Commission. With such a large breadth and depth of technical and IP experience on the bench, attorneys appearing before PTAB judges should be ready to field specific questions about the both the technical and legal intricacies of the patents at issue.
Trials and Decisions
By looking at the number of trials instituted and at specific decisions issued by PTAB judges, attorneys can develop an effective litigation strategy for handling PTAB cases. Statistics point to a willingness of PTAB judges to institute trials for Inter PartesReview (IPR) petitions, which more often than not result in invalidation of the claims at issue. Recently, for every 10 IPR petitions filed, PTAB judges have instituted trials for 8 of those petitions. Additionally, the percentage of IPR trials instituted that ended in written decisions in favor of unpatentability for all or some of the claims in dispute is nearly 85%, with decisions in favor of the patent owner averaging around 15%. Attorneys, particularly those representing patent owners, should take note the likelihood of a PTAB judge instituting an IPR trial is fairly high, and so is the likelihood of an adverse judgment for respondents. Decisions issued by PTAB judges regarding specific motions demonstrate the judges’ inclination to exclude evidence that does not adhere to the record. This becomes apparent when looking at the number of Motions for Supplemental Information that have been denied as opposed to those that have been granted. A common basis for denial is when a petitioner’s motion attempts to modify evidence already present in the record. Attorneys practicing before the PTAB should be careful to ensure initial evidence presented is as complete as possible, as attempts to modify the record down the line will likely be unsuccessful. Research PTAB Judges on Docket Alarm Docket Alarm allows attorneys to search and filter the PTAB database by judge. Before your next appearance before the PTAB, use Docket Alarm to research cases and decisions issued by PTAB judges to develop an effective litigation strategy.