What is the PTAB and Who are the Judges?

Your inter partes review ("IPR") was instituted, you've gone through discovery, and now finally your oral argument before the Patent Trial and Appeal Board ("PTAB") is approaching. But who will actually sit on the bench?

What is the PTAB?

The PTAB was created in 2012 by the America Invents Act as a successor to the Board of Patent Appeals and Interferences ("BPAI"). It is an administrative adjudicatory body in the U.S. Patent and Trademark Office ("PTO"), within the U.S. Department of Commerce.

How many PTAB judges are there?

The PTAB consists of over 100 administrative patent judges ("APJs") as well as numerous legal, administrative, and support staff. The PTAB is split into an Appeals division that reviews decisions by examiners made during active prosecution of patent applications, and a Trials division that adjudicates post-grant proceedings (e.g., IPRs, covered business method, etc.). Our description below generally focuses on the Trials division.

Ordinarily, an oral argument in an IPR or other PTAB proceeding will be heard by a panel of three APJs, the composition of which is designated by the Chief Judge of the PTAB.[1] The Chief Judge is directed, when possible, to match the technology preferences (e.g., chemical, electrical, mechanical) of the APJ with the subject matter of the patent under review. Further considerations include balancing the experience, workload, and jurisdiction of the APJs on the panel. APJs are also subject to strict conflict of interest policies and ethics rules.

Who are the Administrative Patent Judges?

APJs come from various backgrounds, but all have significant experience in patent law, and candidates with 10 to 15 years of litigating and/or prosecuting patents are preferred. They are required to have at least a bachelor's degree in an engineering or scientific discipline, and some are former patent examiners. All APJs must be an active member in good standing of at least one state bar. They are formally appointed by the Secretary of Commerce, in consultation with the Director of the PTO, and until recently were civil service employees with various job protections.

How do APJs and District Court Judges Differ?

In contrast to federal district court judges, APJs are more likely to possess substantive experience in patent law as well as the technical expertise of the patent under review. As a formal agency adjudication under the Administrative Procedure Act, the factual findings of the PTAB are subject to judicial review under the substantial evidence standard. Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion."[2] The substantial evidence standard is generally considered more deferential than the clear error standard applied to appellate review of fact-finding by district courts,[3] which may reflect Congressional recognition of the subject matter expertise of administrative adjudicatory bodies like the PTAB.

More questions? Contact the authors or visit Fish's Intellectual Property Law Essentials.

[1] Panel designation authority is delegated to the Chief Judge of the PTAB by the PTO Director. https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf (Revision 15: Sept. 20, 2018).

[2] Consol. Edison Co. v. N.L.R.B., 305 U.S. 197, 229 (1938).

[3] See Merck & Cie v. Gnosis S.P.A., 820 F.3d 432, 433 (Fed. Cir. 2016) (O'Malley, J. concurring) (calling clear error "a more searching standard of review").

Authors: Rick Bisenius, Dan Smith, and Ryan Petty