By Carl Kukkonen –
The PTAB recently updated its Standard Operating Procedure 1 (SOP), which describes the process and guidelines for assigning judges to panels in all jurisdictions of the Board. This blog post highlights some of the key features of the revised SOP and what they mean for practitioners and parties.
The PTAB is an administrative tribunal within the United States Patent and Trademark Office (USPTO) that hears appeals from patent examiners, interferences, and post-grant proceedings under the America Invents Act (AIA). The PTAB consists of administrative patent judges (APJs) who are designated by the Director of the USPTO to serve on panels of at least three members for each case. The Director’s authority to designate panels has been delegated to the Chief Judge of the PTAB, who further delegates the task of assigning panels to one or more designated Board employees (designees).
The designees assign panels of three APJs for each case based on a number of factors, such as the jurisdiction, technology, experience, workload, and availability of the judges, as well as the avoidance of conflicts of interest and the consistency of decisions. The designees also follow internal norms and guidance issued by the PTAB leadership and the Director to ensure the efficient and impartial administration of the Board.
One of the main changes in the revised SOP is the clarification that the Director will not be involved in directing or influencing the paneling or repaneling of any specific proceeding before the PTAB prior to the issuance of the panel decision. The Director may, however, direct the proceeding in a manner consistent with Board paneling guidance, through an Order entered into the record, when reviewing or rehearing an issued panel decision. This change reflects the recent Supreme Court decision in United States v. Arthrex, Inc., which held that the Director must have the authority to review the decisions of the PTAB to ensure the constitutionality of the APJs’ appointments.
Another change in the revised SOP is the addition of guidance on paneling related cases, especially AIA proceedings that challenge the same patent or involve the same patent owner and related subject matter. According to SOP, the designees should assign such cases to the fewest total judges as is practicable, and preferably to the same panel or a panel with some degree of overlap, to facilitate the efficiency and consistency of results. The designees should also seek input from judges currently serving on existing cases in the same family regarding their workload and availability before making assignments.
The revised SOP also provides more details on the reasons and procedures for panel changes, which are generally disfavored and expected to be rare after a panel has appeared in a proceeding. The reasons for panel changes are limited to recusal, unavailability, or case management, and must be approved by the PTAB leadership or a designated delegate, unless the panel change occurs as a result of the Director’s review or rehearing process. The designees must enter an order notifying the parties of the panel change and the reason for it.
Takeaway
The revised SOP is intended to provide transparency and predictability to the paneling process at the PTAB, while also allowing for flexibility and efficiency in meeting the statutory deadlines and jurisdictional needs of the Board. Practitioners and parties should be aware of the factors and guidelines that affect the paneling of their cases, and should consult the SOP and other PTAB resources and guidance for more information.
Carl Kukkonen
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