Advancing the AIA’s goal to strengthen the U.S. IP system

In these AIA proceedings, the PTAB, when requested by a petitioner, is tasked with addressing questions of patentability. Although not a requirement to file a petition, in the majority of cases, the petitioner has been sued by the patent owner in district court for infringement of a patent and is requesting that the PTAB address the patentability of the asserted patent claims.

The PTAB judges, who are impartial experts in both the law and the specific area of technology in question, are uniquely well-suited to address questions of patentability under the standards set forth by Congress. They hold themselves to the highest standards in all they do.

Ensuring strong IP rights

The PTAB hears cases challenging the validity of claims in granted patents (called “AIA proceedings”) or appealing the rejection by an examiner of an application for a patent (called “ex parte appeals”). (1)

The most common AIA proceedings are inter partes review (IPR) proceedings, which are initiated when a member of the public, known as the petitioner, files a petition challenging certain claims in the patent selected by the petitioner. (2) Judges decide cases on the merits through objective review of the evidence and arguments and in accordance with the requirements in the law enacted by Congress and the president.

Where a petitioner’s evidence and arguments fall short, the PTAB judges maintain the validity of the challenged patent rights. Where the petitioner’s evidence and arguments demonstrate that the challenged patent lacks novelty or is obvious, the PTAB is required to invalidate claims that, if left standing, can weaken the strength and reliability of the patent system.

In the 13 years since AIA proceedings were created, USPTO leadership has worked, within the bounds of our authority in the law, to minimize any procedures that might be manipulated to unfairly burden patent owners, including abusive practices or multiple attacks on the same patent claims (3), while still performing the important role of policing overbroad patent claims that could exact a toll on the public, as the AIA intended.

By the numbers

In the universe of patents in force, only a small fraction of patents are challenged before the PTAB. (4)

Since AIA proceedings began over a decade ago, almost 70% of challenged patents have been upheld at the PTAB. (5)

For instance, of the 1,037 patents involved in an AIA proceeding that concluded in fiscal year 2024, 349 patents (34%) lost one or more claims in a final written decision, and 141 patents (14%) lost all claims. (6) Although most IPR proceedings (approximately 80%) involve a challenge of a patent also at issue in co-pending district court litigation, the reverse isn’t true. Third-party data indicates that only 20-30% of patents asserted in district court are challenged in AIA petitions at PTAB, meaning that sued defendants are strategic in what they do. (7)

Mock oral argument is held at the PTAB at the USPTO’s headquarters in Alexandria, Virginia, on February 11, 2020. (Photo by Jay Premack/USPTO)

Important changes over the years

Implementing the AIA provisions, including the development of rules and proceedings for the PTAB, is a critical and continuous responsibility. Lessons learned and stakeholders’ feedback have led to positive changes in the PTAB’s practices and procedures. The USPTO in the last 13 years has:

• Revised its rules to change the standard used by the PTAB to construe patent claims to align it with the district courts. (8)
• Implemented policies to curb multiple AIA petitions that might have the effect of harassing patent owners. (9)
• Implemented a policy to avoid duplicative parallel proceedings in district courts and the PTAB and issued clarifications to this policy in 2022 to ensure its consistent application. (10)
• Implemented a program to allow patent owners to request preliminary guidance from the PTAB in response to a motion to amend and to allow patent owners the option to file one additional revised motion to amend in an AIA proceeding. (11)
• Implemented the Director Review process that allows parties involved in inter partes proceedings to seek review of AIA decisions, including institution decisions, by the Director. (12)
• Created a process to allow individuals to nominate any routine PTAB decision for designation as precedential or informative, or to nominate for de-designation any PTAB decision that was previously designated as precedential or informative. (13)

Engaging and educating practitioners and the public

Equally as important as the AIA’s policy changes are its emphasis on expanding the innovation ecosystem. To meet this intent of the law, the USPTO has expanded outreach to the public and provided resources for parties who appear before the PTAB.

The USTPO hosts two regular, no-cost, virtual programs:

• Bi-monthly “Boardside Chats” to address best practices and answer questions raised by attendees.
• Monthly “Inventor Hour” webinars covering PTAB proceeding basics, oral hearing protocols, statistics, and other useful information for independent inventors and those new to the PTAB.

In collaboration with the PTAB Bar Association, the USPTO created the PTAB Pro Bono Program to match volunteer patent professionals with financially under-resourced inventors, inventor groups, and inventor-owned small businesses to provide no-cost legal assistance in ex parte appeals. As part of our commitment to fostering a strong and vital patent system, the USPTO has developed multiple opportunities for early career legal professionals to gain experience practicing before the PTAB:

• Legal Experience and Advancement Program (LEAP) to provide training and oral advocacy opportunities before the PTAB for less-experienced attorneys.
• Moot Court Competition to provide law students a structured opportunity to learn and practice advocacy skills in AIA trial proceedings.
• Judicial Law Clerkship for recent law school graduates and newer attorneys to gain firsthand exposure to PTAB proceedings and assist PTAB judges in the decision-making process.
• Appeal Roadshows to meet practitioners, inventors, and members of the public in cities across the country for education about ex parte appeals.
• “Stadium Tours” in collaboration with the Trademark Trial and Appeal Board to bring actual proceedings to law schools nationwide to increase accessibility.
• And most recently, a new Education Clinic, staffed by volunteer former PTAB judges, to help guide and educate members of the public—from independent inventors to small businesses to large corporations—on all PTAB proceedings. These volunteer former judges are all members of the Association of American Patent Judges.

In addition to these initiatives, the USPTO has recently expanded access to practice before the PTAB by modifying the rules regarding representation by counsel in AIA proceedings. This allows parties to proceed without backup counsel upon a showing of good cause, such as a lack of financial resources to hire both lead and backup counsel. The rules also establish a streamlined alternative procedure for recognizing counsel pro hac vice (when a court grants a lawyer limited license to practice in a jurisdiction where they otherwise would not be licensed to do so). (14)

The USPTO also regularly engages with judges in other jurisdictions to share information and learn more about how they handle patent disputes. Over the past two years, PTAB judges have participated in discussions with federal district court and appellate judges about PTAB processes, claim construction, and the interplay between parallel proceedings in multiple jurisdictions. We also have engaged in discussions with judges at the U.S. International Trade Commission, as well as our international peer tribunals in the IP5 forum of the world’s five largest patent offices, to compare and contrast our respective proceedings.

The USPTO also ensures that feedback and input from the PTAB proceedings are used to improve examination of related patent applications. For example, patent examiners are made aware of petitions and outcomes in AIA proceedings so that the evidence and the PTAB’s findings can be considered in ongoing prosecution of related patent applications.

We will continue to refine, as needed, AIA processes at the USPTO to ensure that these proceedings remain fair and transparent and that they benefit all parties who appear before the PTAB, the patent system at large, and America’s innovation economy.

New judges at their swearing-in gather with PTAB and USPTO leadership at the agency’s headquarters in Alexandria, Virginia, in 2024. (USPTO photo)

1. The PTAB also hears ex parte appeals from the rejection of claims in reexamination proceedings and reissue applications, which involve claims in an issued patent.
2. A petitioner can be anyone except the patent owner or the U.S. government.
3. For example, to curb multiple AIA petitions that might have the effect of harassing patent owners and might affect what some have termed “quiet title,” the USPTO issued guidance and decisions that identify information PTAB will consider when determining whether to deny institution of an AIA trial when a petitioner files more than one petition. See, e.g., General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB September 6, 2017) (designated precedential October 18, 2017); Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 (April 2, 2019) (designated precedential May 7, 2019) (Valve I); Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00064, Paper 10 (May 1, 2019) (designated precedential August 2, 2019) (Valve II); Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (October 28, 2020) (designated precedential December 4, 2020); PTAB’s Consolidated Trial Practice Guide (November 2019), pp. 59-61. After the USPTO issued such guidance, petitioners have filed fewer multiple petitions, and PTAB has instituted fewer AIA trials based on such petitions, and only under certain rare circumstances. See Multiple Petition Study FY 2021-2022 Executive Summary (uspto.gov).
4. See PTAB AIA FY2024 roundup (uspto.gov), slide 14.
5. Id. at slide 15.
6. Id. at slide 14.
7. See RPX report (June 1, 2023) (stating that “district court litigation has remained a key driver of PTAB proceedings, as 79% of the patents challenged in IPR petitions (out of a total of around 8,860 patents) were first asserted in district court” and also “[o]f the roughly 25,010 patents that have been the subject of complaints filed in district court from September 16, 2011, through May 26, 2022, just under 7,020 of those patents, or 28%, have been hit with subsequent petitions for IPR. . . . Put another way, nearly three quarters of the patents asserted in district court cases (72%) do not see a subsequent IPR petition”); RPX report (September 16, 2020) (“Of the roughly 19,500 patents that have been litigated in district court since IPR became available, just over 4,330 of those patents, or 22%, have been hit with petitions for inter partes review (IPR), the most common PTAB proceeding by far. Put another way, the vast majority (~80%) of patents asserted in district court cases do not see a subsequent IPR petition.”); see also Saurabh Vishnubhakat et al., Strategic Decision Making in Dual PTAB and District Court Proceedings, 31 BERKELEY TECH. L.J. 45 (2016) (indicating that from September 16, 2012 through June 30, 2015, 12.7% of litigated patents were challenged in PTAB but 86.8% of PTAB proceedings were concurrent with district court); Christian Helmers et al., Patent Validity and Litigation: Evidence from U.S. Inter Partes Review (July 20, 2022), 66 J.L. & ECON. 53 (2023) at 10 n.13 (indicating that from 2012-2017, 18% of patent cases litigated in district court had a parallel IPR in PTAB).
8. 37 CFR §§ 42.100(b), 42.200(b); Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 FR 51340 (October 11, 2018).
9. See supra n.3.
10. See, e.g., CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (February 27, 2023) (designated precedential Feb. 27, 2023); NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (September 7, 2022) (designated precedential September 7, 2022); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (December 1, 2020) (designated precedential December 17, 2020); Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15 (October 21, 2020) (designated precedential December 17, 2020); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020) (designated precedential May 5, 2020); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (September 12, 2018) (designated precedential May 7, 2019); Director Guidance Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceeding With Parallel District Court Litigation (June 21, 2022).
11. Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 FR 9497 (March 15, 2019); Rules Governing Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 89 FR 76421 (September 18, 2024).
12. Rules Governing Director Review of Patent Trial and Appeal Board Decisions, 89 FR 79744 (October 1, 2024).
13. Submission form for Nomination for Designation or De-Designation of PTAB Decisions.
14. Expanding Opportunities To Appear Before the Patent Trial and Appeal Board, 89 FR 82172 (October 10, 2024).