As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners.
The PTAB had some initial growing pains when the new procedures began, with the number of petitions received far exceeding the number expected. The U.S. Patent and Trademark Office requested and received much feedback via public comment, instituted rule changes, and has had its procedures and trial outcomes tested in both the Court of Appeals for the Federal Circuit and the United States Supreme Court.
Likewise, PTAB practitioners have had to evolve along with the PTAB changes, as they familiarized themselves with the procedures for this new variety of “specialized agency proceeding” within the USPTO, as it was described in Cuozzo Speed Technologies v. Lee, 579 U.S. ____ (2016). PTAB practitioners have had to adapt to the rule changes and court decisions and learn through their own experiences in PTAB trials and guidance provided by the Administrative Patent Judges presiding over the cases.
Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.