patent public advisory committee quarterly meeting patent
TRANSCRIPT
Patent Public Advisory Committee Quarterly Meeting
Patent Trial and Appeal Board Update
James Donald Smith, Chief Administrative Patent Judge
Scott Boalick, Deputy Chief Administrative Patent Judge
February 19, 2015
Appeals Statistics
2
Appeal Inventory
November 2014 February 2015
25,844 25,233
• Inventory is on a downward trajectory.
• Project further decrease inventory by May 2015.
• Collaboration efforts underway with Patents
Business Unit to reduce existing inventory (short-
term) and reduce intake (long-term)
• Quality Initiatives can assist with reducing intake
3
PTAB Inventory – Pending Ex Parte Appeals
(excluding appeals from reexamination
proceedings)
25,658
25,827
25,918 25,989 26,014
25,925 25,942
25,844
25,718 25,782
25,830
25,683
25,460 25,445 25,404
25,431
25,629
25,504 25,426
25,332 25,233
24,000
24,200
24,400
24,600
24,800
25,000
25,200
25,400
25,600
25,800
26,000
26,200
26,400
26,600
26,800
27,000
4
PTAB Inventory – Pending Ex Parte Appeals
(excluding appeals from reexamination
proceedings)
12,489
17,754
23,963
26,484
25,308 25,658
25,233
0
5,000
10,000
15,000
20,000
25,000
30,000
FY 2009 FY 2010 FY 2011 FY 2012 FY 2013 FY 2014 FY 2015 to date
5
Receipts & Dispositions Summary Report
FY 2015
1030
979
936
818
712
653
736 723
812 815
909
767
679
563
458
644
792
972 972
552
1008 984
864
697 723
736
782
1057
872
963
1064
1184
966
890
824
633
750
949
1009
943
-22
5
-72
-121
11
83
46
334
60
148 155
417
287
327
366
-11
-42 -23
37
391
-250
0
250
500
750
1000
1250
10/8/2014 10/15/2014 10/22/2014 10/29/2014 11/5/2014 11/12/2014 11/19/2014 11/26/2014 12/3/2014 12/10/2014 12/17/2014 12/24/2014 12/31/2014 1/7/2015 1/14/2015 1/21/2015 1/28/2015 2/4/2015 2/11/2015 2/18/2015
Averages
■ Received: 776
■ Disposed: 895
■ Difference: 119
6
Sources: Weekly OPIM PALM Status 124 & 132 Reports
(1/28/15)
Elec-Comp 11,453
Mech-Biz 9,055
Chem 3,069
Bio 1,832
Other 249
Grand Total 25,658
7
AIA Statistics
8
Comparison by Technology Center of
FY 2014 AIA Filings v. Patent Grants
TC AIA Filings Patent Grants
1600 90 24,669
1700 107 31,863
2100 188 24,422
2400 114 30,983
2600 223 40,445
2800 289 70,281
2900 3 22,452
3600 226 38,160
3700 156 42,931
Other 98 176
Total 1,494 326,382 9
AIA Progress (as of February 12, 2015)
• AIA Monthly Filings
Total 2,775
IPR 2,466
CBM 297
PGR 4
DER 8
10
AIA Progress (for FY15 through February 12, 2015)
• AIA Petition Technology Breakdown
63.6%
23.8%
3.9% 8.4%
0.3%
Electrical/Computer - TCs 2100,2400, 2600, 2800 (441)
Mechanical/Business Methods -TCs 3600, 3700 (165)
Chemical - TC 1700 (27)
Bio/Pharma - TC 1600 (58)
Design - TC 2900 (2)
11
AIA Progress (as of February 12, 2015)
• Cumulative Patent Owner Preliminary
Responses
Filed Waived
IPR 1,542 360
CBM 204 26
PGR 1 -
12
AIA Progress (as of February 12, 2015)
• AIA Petition Dispositions
Trials
Instituted Joinders
Percent
Instituted Denials
Total No. of
Decisions
on
Institution
IPR
FY13 167 10+ 87% 26 203
FY14 557 15+ 75% 193 765
FY15 306 80+ 76% 124 510
CBM
FY13 14 0 82% 3 17
FY14 91 1+ 75% 30 122
FY15 23 - 61% 15 38
DER FY14 0 0 0% 3 3
13
AIA Progress (as of February 12, 2015)
• AIA Final Dispositions
Settlements
Adverse
Judgments
Final
Written
Decisions
IPR
FY13 38 2 0 FY14 210 39 130 FY15 160 17 108
CBM
FY13 3 0 1 FY14 27 3 13 FY15 20 2 16
PGR FY15 2 - -
14
Final Written Decisions in
IPRs (As of 2/5/2015)
*IPR (224 Final Written Decisions)
141 47 36
0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100%
C
u
m
u
l
a
t
i
v
e
All Instituted Claims Unpatentable Some Instituted Claims Unpatentable
None of Instituted Claims Unpatentable
15
Final Written Decisions in
CBMs (As of 2/5/2015)
*CBM (30 Final Written Decisions)
22 6 2
0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100%
C
u
m
u
l
a
t
i
v
e
All Instituted Claims Unpatentable Some Instituted Claims Unpatentable
None of Instituted Claims Unpatentable
16
AIA Trial Rulemaking
Update
17
AIA Trial Rulemaking
• In response to stakeholder requests, the Office will move forward with two rule packages:
1. A first package, issued as interim rules, will encompass less difficult “quick-fixes” based upon both stakeholder comments and internal PTAB suggestions. Plan to issue in Q2 of FY 2015.
2. A second package, issued as proposed rules, will address more difficult changes to the rules, and also will include any changes to the Trial Practice Guide. Plan to issue in Q3 or Q4 of FY 2015.
• The first and second packages will issue together as a single final rule package.
18
AIA Trial Rulemaking
Quick-Fixes Proposed by Stakeholders
• Increase the number of pages for a motion to amend from 15
to 20 pages, with a commensurate increase in the number of
pages for the opposition, in addition to allowing the Patent
Owner to list the amended claims in an appendix.
• Increase the number of pages for a Petitioner’s reply brief
from 15 to 20 pages.
• Change the default protective order to place the burden on
the party who designated material as confidential to show
why the material is confidential and good cause exists to
have the information sealed.
19
Boardside Chats
20
Boardside Chats 2015
Date Time Topic Speakers
Tuesday, February 3
Noon to 1 pm Eastern
Time
PTAB Statistics and Key
Decisions
Chief Judge James
Donald Smith
Tuesday, April 7 Do’s and Don’ts for Ex
Parte Appeals
Panel of Administrative
Patent Judges
Tuesday, June 2 Discovery in AIA Trials
Panel of Practitioners
and Administrative
Patent Judges
Tuesday, August 4 AIA Rulemaking and
Guidance Changes
Lead Judge Susan
Mitchell
Tuesday, October 6 Best Practices before
the PTAB
Panel of Administrative
Patent Judges
• “Boardside Chat” is a lunchtime webinar series to be held bi-monthly
throughout 2015. The purpose of the Chats is to update you on current
Board activities and statistics as well as to regularly receive your feedback
about the same.
• All Chats are free and open to all. Also, all Chats will include time for
attendee questions and comment. 21
Questions and Comments?
James Donald Smith
Chief Administrative Patent Judge
571-272-9797
Scott Boalick
Deputy Chief Administrative
Patent Judge
571-272-9797
22