PTAB is effective---time, cost, accuracy

"Reforming the Patent Trial and Appeal Board - The PREVAIL Act and Proposals to Promote U.S. Innovation Leadership." Testimony by Joseph Matal, Principal, Clear IP, LLC, Washington, DC U.S. Senate Documents Dear Chairman Coons, Ranking Member Tillis, and Members of the Subcommittee: It has been 12 years since the American Invents Act was enacted and 11 years since Patent Trial and Appeal Board proceedings were inaugurated. We now have a wealth of data with which to evaluate these proceedings. Through the end of fiscal year 2023, 15,135 petitions for inter partes review have been filed, challenging 10,363 patents and resulting in thousands of final written decisions and appeals to the U.S. Court of Appeals for the Federal Circuit. PTAB validity review is working well One thing that is apparent from the data is that the PTAB is doing a good job. First, AIA trials overwhelmingly are completed within their one-year deadline, allowing them to serve as a timely substitute for district court litigation. This is no small matter. The system of post-issuance review that PTAB proceedings replaced, inter partes reexamination, was plagued with delays. Because that system was required to follow examination rules, either side could delay the proceeding at will and examiners lacked the tools to manage cases. Perhaps no fact better illustrates the problems with the prior system than that, although the authorization to initiate inter partes reexaminations was repealed during President Obama's first term in office, as of today there are still 13 of these proceedings pending before the USPTO and the courts. Regardless of the accuracy of its results, a system that takes this long to decide a case is not helpful--either to patent owners seeking an affirmation of their patent's validity or to accused infringers seeking to cancel invalid claims. In addition, AIA proceedings have also proven cost effective--their price, on average, is about one-ninth of that of district court litigation. Although the proceedings are still expensive, costs are measured in the hundreds of thousands of dollars rather than the millions. Finally, and most importantly, AIA trials produce accurate and reliable results. The Board's final written decisions are thoroughly reasoned and demonstrate a firm command of both the relevant technology and patent law. You need not take my word for it. A recent academic study that comprehensively analyzed the results of appellate review of PTAB patentability determinations has reached the same conclusion. Professor Matthew Sipe compiled and examined the results of all patent appeals that were docketed at the Federal Circuit in fiscal years 2015 and 2016. n1 He then compared the results for patent validity determinations made by PTAB panels to those made by district courts. The study's conclusion was emphatic: it found that "the PTAB is affirmed notably more often than district courts on [patent] validity issues." Indeed, according to the data, district courts are almost two and a half times more likely to be reversed on appeal when deciding patent validity issues than is the PTAB. The study ultimately determined that "the most straightforward conclusion" is that PTAB judges' technical expertise has "aided decision-making on the thorny scientific questions endemic to patent law." Notably, Professor Sipe's study also found that when the Board is reversed on appeal, it is more frequently overturned for failing to find that a claim is unpatentable than for holding that a claim is unpatentable. This would hardly be surprising to those familiar with the USPTO and its culture. People who work at the agency generally like patents and want to give inventors the benefit of the doubt. It also bears emphasis that, unlike a jury, the PTAB is subject to the Administrative Procedure Act. Thus, unlike a jury, the Board cannot hand in a verdict form that looks like an a la carte menu. The PTAB is required to analyze the evidence before it and explain its reasoning in a way that can be reviewed on appeal. (I should know--as an agency lawyer, I lost cases on appeal when the Board was less than clear in explaining its findings). Yet despite the Board's decisions effectively being subject to more exacting review, the PTAB's patentability findings are more likely to be upheld on appeal. The evidence is overwhelming that the PTAB is producing rigorous and technically sound patentability decisions. This result would be unsurprising to the Congress that enacted the America Invents Act. PTAB reviews are conducted by administrative patents judges, who are required by law to be "persons of competent legal knowledge and scientific ability." n2 In compliance with this mandate, the agency requires that all its APJs have at least an undergraduate education in a technical field. Many PTAB judges also have master's degrees or doctorates in science or engineering. And all of them have extensive patent legal experience prior to their appointment as APJs--many have even served as patent examiners. Congress has long appreciated the importance of having patentability determinations made by persons who understand the claimed invention. Since the 1836 Patent Act, patent examiners have been required to have a technical background. And every congressionally enacted system of post-issuance review, going back to ex partes reexamination in 1980, has been premised on the notion that more accurate results will be produced by a system that refers validity questions "to an agency with expertise in both patent law and technology." n3 During the last decade, in my time at the USPTO and since, I have closely followed the public debate over PTAB proceedings. I have yet to hear anyone make a serious argument that the PTAB is reaching substantively wrong results--that its validity findings are somehow less accurate than those made in civil litigation. There is no reasonable dispute that PTAB review is a higher quality, timely, and less expensive alternative to district court litigation. Jury trials are not an adequate substitute for PTAB review The last four decades of the development of post-issuance proceedings at the USPTO have also coincided with a shift in how the courts resolve patent cases. As recently as 1978, judges decided over 90% of these cases, but as changes in Seventh Amendment jurisprudence have been absorbed by the plaintiff's bar, three quarters of patent cases now go before a jury. n4 Although district judges' patent validity decisions have proven less accurate than those made by the PTAB, jury verdicts present even more difficulties. As compared to judges, juries are more likely to favor particular types of parties, more likely to favor the party that initiates the suit rather than the defendant (regardless of whether it is the patent owner or a declaratory judgment plaintiff), and more likely to decide all issues in favor of one party or another rather than distinguishing among the different questions before them. n5 Lay juries often find complex technologies inaccessible, and they are notoriously resistant to engaging in an obvious analysis that combines patents and printed publications.