Addressing the PTAB Bar Association Conference in its opening session, newly appointed Chief Judge Scott Boalick explained that his goal as Chief Judge is to bring stability to the board and increase predictability. He wants all parties coming to the Board to feel that they have gotten a fair shake and that the procedures are fair.
The Board is all about continuous process improvement, Chief Judge Boalick explained. They have already made a number of improvements. The outcome of the proceedings depend on each of the practitioners as advocates to make sure that the Board has what it needs to obtain a just result.
Chief Judge Boalick then discussed several of the recent improvement made by the Board. In August, the Board issued an update to the Trial Practice Guide. The Board issued two new standard operating procedures addressing paneling (providing for transparency when a change is made to a previously announced panelist) and the process for issuing precedential and informative opinions.
Yesterday, the Precedential Opinion Panel (POP) created under this new standard operating procedure issued its first opinion addressing issues related to joinder. The purpose of the POP is to create consistency in PTAB decisions and to address matters of “exceptional importance.” In this decision, Proppant Express Investments LLC v. Oren Technologies LLC, IPR2018-00914 (PTAB 2019), the POP denied a request for joinder, but clarified that “[the statute] provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding.” This discretion will be exercised only in limited circumstances, however, “where fairness requires it and to avoid undue prejudice to a party.” Chief Judge Boalick encouraged parties in cases before the Board that believe their matters address an issue of importance to nominate their cases for review by POP.
The standard operating procedure addressing precedential opinions also allowed for a ratification process to allow anyone to nominate an existing case decision to be treated as precedential. The first case identified as precedential under this procedure is Lectrosonics, Inc. v. Zaxcom, Inc, (IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) addressing motions to amend.
The Board has also issued rulemaking on claim construction intended to help with harmony with the district courts and predictability. You will now begin to see decisions issuing under the Phillips standard, rather than BRI.
Identifying additional improvements made by the Board, they requested comments on the procedure for motions to amend and received 49 comments by the deadline. There will be more information made available at the PTAB Bar Association’s panel on Motions to Amend. The Patent Office also issued revised 101 eligibility guidelines addressing subject matter eligibility.
Looking to the future, Chief Judge Boalick promises more of the same focus on continuous process improvement. He expects another trial practice guide update. He closed by explaining that the Board is always open to input to help improve its processes and encouraged people to bring ideas to him as his door is always open.