2021 Year in Review: Patent Trial and Appeal Board

Here are some of the significant developments from 2021 relating to the Patent Trial and Appeal Board (PTAB).

As the US Patent and Trademark Office (USPTO) explains,

The Patent Trial and Appeal Board (PTAB) is an adjudicative body within the U.S. Patent and Trademark Office (USPTO). The PTAB decides appeals from the decisions of patent examiners, and adjudicates the patentability of issued patents challenged by third parties in post-grant proceedings. The Board has existed in some form since the 1800s.

The PTAB consists of statutory members and administrative patent judges. The statutory members include the Director of the USPTO, the Deputy Director of the USPTO, the Commissioner for Patents, and the Commissioner for Trademarks.

Guidance on Indefiniteness

As we discussed in this blog, in January the USPTO issued binding guidance that aligns the approach taken by the PTAB with the approach of the federal courts on the issue of indefiniteness. Before this change, the PTAB used two different approaches when evaluating claims of indefiniteness

Surviving a Constitutional Challenge

As we discussed in this blog and this article, after three Administrative Patent Judges (AJPs) on the PTAB concluded that Arthrex’s patent was invalid, Arthrex appealed to the Federal Circuit, arguing that the whole IPR system was invalid under the US Constitution.

The Arthrex case had the potential to shut down the entire PTAB (at least until Congress took remedial action). For that reason, the US Government intervened in the case. Apple (the main user of the PTAB IPR system) also filed a brief (surprisingly) backing Arthrex.

The US Supreme Court held that “the unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary to an inferior office.”

In other words, Arthrex won.

Not so fast, said the Court:

In general, “when confronting a constitutional flaw in a statute, we try to limit the solution to the problem” by disregarding the “problematic portions while leaving the remainder intact.”

Thus, held the Court, “Decisions by APJs must be subject to review by the Director.”
In other words, the PTAB could continue to exist with a minor administrative adjustment. The case then went back to the Acting Director of the USPTO to make the necessary adjustments.

Changing Directors

Andrei Iancu served as Director of the USPTO from 2017 to 2021, leaving office on January 20, 2021, and leaving behind a legacy of mostly pro-patent-owner changes. Among other changes on his watch, extending Section 314(a) discretion to consideration of parallel litigation proceedings lead to a drop of 15-20% in inter partes review (IPR) institution rates.

Patent and Trademark Office Commissioner Drew Hirshfeld took over as acting director when Iancu left, but a permanent director still hasn’t been appointed.

As IAM reported in September,

It has now taken the Biden Administration longer than the Trump Administration to nominate someone to be the next permanent director of the USPTO. Andrei Iancu was put forward to be the agency’s head on 26 August 2017. He was confirmed by the Senate on 14 December and started work on 8 February 2018.

Why the delay? According to IAM, “Finding a USPTO Director that both the White House and Senate can support is tough.”

On October 26, 2021, President Biden nominated Kathi Vidal, a Silicon Valley lawyer – as Director of the USPTO. The Senate Judiciary Committee was scheduled to vote on her appointment on January 6, 2022, but this was cancelled.