Beginning Next Week: InsideCounsel will become part of Corporate Counsel. Bringing these two industry-leading websites together will now give you comprehensive coverage of the full spectrum of issues affecting today's General Counsel at companies of all sizes. You will continue to receive expert analysis on key issues including corporate litigation, labor developments, tech initiatives and intellectual property, as well as Women, Influence & Power in Law (WIPL) professional development content. Plus we'll be serving all ALM legal publications from one interconnected platform, powered by, giving you easy access to additional relevant content from other InsideCounsel sister publications.

To prevent a disruption in service, you will be automatically redirected to the new site next week. Thank you for being a valued InsideCounsel reader!


More On

IP: The greatest benefit of post-grant review: The panel of experts

Congress ensured challengers and patent owners appear before an experienced and educated panel focused on fact-finding

Perhaps the greatest benefit of the new America Invents Act (AIA) post-grant proceedings for both patent owners and challengers is that they are heard by the Patent Trial and Appeal Board (PTAB). This is a panel of experienced administrative patent judges who habitually prepare extremely well for each case and concentrate on details and fact-finding. With this approach, the PTAB provides a process for challenging patents that is based as much as possible on evidence and not emotional appeals. A good understanding of the unique way in which the PTAB operates is crucial for all parties involved in an AIA post-grant review proceeding.

All administrative patent judges hold degrees in science or engineering and most hold advanced degrees in these areas. They all have law degrees and are members of at least one state bar association. This background ensures administrative patent judges understand both the applicable technologies and patent law when evaluating AIA post-grant review petitions.

At the outset of a post-grant proceeding, one PTAB member is appointed to serve as the lead administrative patent judge for the matter. The lead judge is responsible for understanding all of the technical aspects of the petition, as well as the legal arguments presented by both the challenger and patent owner. During a conference with the other members of the PTAB panel for that case, the lead patent judge will explain all aspects of the petition and answer any questions from the other judges. This ensures the entire panel is well prepared and focused on the relevant claim interpretations and facts.

Both challengers and patent owners should understand that the PTAB has a unique culture that affects how administrative patent judges approach post-grant review proceedings. For example, the judges are most concerned with making findings of fact so that their decisions will be upheld by the Federal Circuit. As noted in In re Breiner (PDF):

Under the substantial evidence standard of review, this court will not overturn the Board’s decision [of a fact-based obviousness determination] if a reasonable mind might accept the evidence as adequate to support a conclusion.

It is imperative, then, for challengers and patent owners to present clear facts in their petitions, as the judges will be looking for them to support their decision.

The members of the PTAB panel are also narrowly concerned with whether parties have met their burdens of proof. For post-grant proceedings, the burden is placed on the challenger to prove the claim under review is invalid. The patent owner’s burden is to show that the petitioner’s argument has no merit and, if needed, provide additional evidence of validity. It is crucial, then, for parties to focus their arguments on the validity of the specific claim under review.

The PTAB judges expect precision and thoroughness from both challengers and patent owners. Their arguments must point to specific evidence supporting their position. For example, an argument for claim construction of a claim element must be buttressed by pointing to the patent specification to support such claim construction. Parties must also be thorough, as administrative patent judges consider any arguments not made to be waived. The PTAB will also not consider unsupported claim construction or prosecution history not argued by the parties.

Administrative patent judges adhere strictly to PTAB procedures and rules, often using them to speed up the process, as they are under production burdens and time requirements. This can cause problems for parties unfamiliar with the PTAB. For example, administrative patent judges can use PTAB rules to limit the supplemental arguments by both sides. This requires challengers to make all the arguments they intend to raise in the initial petition. Similarly patent owners must make all their arguments in their first response to the petition. As a result, parties should ensure all necessary arguments and information are provided early in the case.

By choosing the PTAB as the venue for AIA post-grant review petitions, Congress ensured challengers and patent owners appear before an experienced and educated panel focused on fact-finding. Parties should expect a process involving detailed scrutiny, and prepare accordingly. Understanding the unique rules and culture of the PTAB, and what administrative patent judges look for in arguments and petitions, is crucial to success.


This is for general information and is not intended to be and should not be taken as legal advice for any particular matter. It is not intended to and does not create any attorney-client relationship. The opinions expressed and any legal positions asserted in the article are those of the author and do not necessarily reflect the opinions or positions of Miles & Stockbridge P.C., its other lawyers, or InsideCounsel.

Contributing Author

author image

Michael R. Fleming

Michael Fleming is a lawyer with Miles & Stockbridge’s Intellectual Property & Technology Practice. He co-leads the firm’s Post-Grant Team and is...

Bio and more articles

Join the Conversation

Advertisement. Closing in 15 seconds.