By Albert Liou
The Patent Trial and Appeal Board held a Boardside Chat on October 10, 2019, discussing the various recent changes made to PTAB procedures. The panel discussion featured Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Lead Judge Kal Deshpande. The Judges covered various topics, including new standard operating procedures for paneling and for designating PTAB decisions as precedential or informative, the adoption of the Phillips claim construction standard, the Motion to Amend Pilot Program, the April 4, 2019 reexamination and reissue notice, the July 2019 updates to the Trial Practice Guide, and the 2019 revised subject matter eligibility guidance. Slides from the Boardside Chat are accessible here. The discussion focused most heavily on the new standard operating procedures and the Motion to Amend Pilot Program.
It has been about a year since the USPTO updated Standard Operating Procedures (SOP) 1 and 2. The updated procedures for panel assignment are set forth in SOP1. Chief Judge Boalick explained that much of SOP1 memorialized what the Board has always done with respect to paneling. The criteria considered during paneling include judges’ conflicts, technology area expertise, judges’ workload, relatedness of cases, and judges’ experience levels. With respect to the latter, Judge Boalick stated that the last set of new PTAB judges joined over a year ago, so experience level is no longer as significant a factor as it had been before. SOP1 also established procedures for alerting the public to a change in the panel during a case. The updated SOP1 is accessible here.
SOP 2 sets forth two means of creating precedential or informative decisions. First, SOP 2 created a new Precedential Opinion Panel (POP) for determining whether a decision in a pending case should be precedential or informative. POP review of a pending proceeding may be initiated by the recommendation of a member of the Board or an email request by party to the proceeding. For issued decisions in decided cases, a different process applies. Any member of the public, including Board members, may nominate a routine Board decision for designation as precedential or informative. The Director makes the ultimate determination of whether to designate the decision as precedential or informative. Judge Deshpande commented that the POP has already issued two decisions this year, and one is currently pending, which is “a lot” for this year. For the year 2019, there have been 16 decisions designated as precedential and 8 decisions designated as informative through the designation process. The updated SOP 2 is accessible here.
Judge Bonilla explained that with the advent of the Motion to Amend Pilot Program, Patent Owners now have two options previously not available. First, the Patent Owner may choose to receive preliminary guidance from the Board on a motion to amend. Second, after receiving an opposition from the Petitioner or preliminary guidance from the Board, the Patent Owner may choose to filed a revised motion to amend. Deadlines for these events are set forth in the Board’s scheduling orders in each proceeding. The panelists noted that most Patent Owners who file a motion to amend are electing to utilize the pilot program. Since the program was put into place on March 15, nineteen Patent Owners have moved to amend, and fourteen of them have requested preliminary guidance.