Award-winning insight into the latest developments and issues related to USPTO post-issuance proceedings from Scott McKeown, chair of Ropes & Gray’s Patent Trial and Appeal Board practice and the most active PTAB trial attorney in the United States.

Patents Post-Grant

Trending Video: Impact of Changes at the PTAB on Patent Owners

Practices: Intellectual Property Litigation, Patent Litigation, Patent Trial & Appeal Board (PTAB) Proceedings, Intellectual Property


Scott McKeown, Ropes & Gray IP litigation partner and chair of the firm’s Patent Trial and Appeal Board (PTAB) group, examines how some recent changes at the PTAB will benefit patent owners.


I'm Scott McKeown, a partner in Ropes & Gray's IP litigation practice, and chair of its Patent Trial and Appeal Board (PTAB) practice group. In this video, I'll discuss the various changes that have occurred at the Patent Trial and Appeal Board since 2012, and how several of those changes, especially recently, will benefit patent owners.

What we've learned since 2012 is that the Patent Trial and Appeal Board is especially effective at weeding out weak patents. At the same time, the mechanisms that are in place to weed out these weak patents are also effective against other patents. In many cases, we have large and well known innovators now seeing their patents challenged at the Patent Trial and Appeal Board.

So what we see at the Patent Trial and Appeal Board today is more of an effort to provide balance, to leverage equities, to look at the whole landscape and the total situation of every petition that comes in, as opposed to just looking at it as, well, this petition seems to make a strong case or at least a reasonable likelihood that the patent can be invalidated, so let's just move forward. The patent office, under its new leadership, is looking at such things as timing of the petition. Questions like, did this petitioner have a first opportunity to come in with a petition? Is that petitioner now coming in with a second petition? And are they trying to leverage their mistakes in the first petition to come in with basically an improved product? And is that fair? So under 314(a), the statute, 35 U.S.C. 314(a), the Board does have a power to weigh these equities to determine should they apply their discretion to move forward or not. So what we're seeing is more of a review of the record in terms of what has happened, not only with respect to the Board, but what is also going on outside the agency.

Another big criticism of PTAB trial proceedings from 2012 going forward was the idea that the Board was applying a different claim construction than what was happening in the district court. As patent owners pointed out, this meant that by construing their claims in a broader fashion, it opened up their claims to more invalidity attacks. And at the same time, on the district court side, by construing them more narrowly or correctly, they were getting a fairer shake in the district court. So there was a lot of criticism from patent owners that the system was set up to undermine patent protection. So we've seen now, starting in late 2018, that the Board will be switching to a Phillips construction for sake of consistency.

Looking forward, I would expect that there will be more precedent on the patent owner side – and what I mean by that is what I've spoken about earlier; this idea of weighing equities. And now that the director, under the new standard operating procedures that were recently issued a few months back for the Board, has the power to essentially make precedent in cooperation with the chief judge, the Board will be able to make more precedent and issue it faster. And the director has indicated an interest in recalibrating or rebalancing the system in favor of patent owners. So I think going forward, it will continue to be a challenge for petitioners and patent owners alike to navigate the system, but for patent owners, there's certainly a significant light at the end of the tunnel that wasn't there in 2012.

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