Three Things to Watch at the Patent Trial and Appeal Board

Bloomberg Law interviewed Finnegan partner Trenton Ward for his thoughts on things to watch at the PTAB in 2020. Trenton, who served as a lead administrative patent judge at the Patent Trial and Appeal Board (PTAB), noted one trend he expects to continue is the PTAB’s designation of decisions as precedential. In 2018, no decisions were designated as precedential; in 2019, however, the PTAB issued 19 precedential decisions. Trenton said, “[PTO director Andrei Iancu] views the precedent process as an important one at the PTAB for consistency purposes, and I would expect the agency to keep up the process.”

Trenton also predicts that the U.S. Supreme Court will be interested in reviewing Facebook Inc. v. Windy City Innovations LLC, a case in which the Federal Circuit will decide on whether and how much it will yield to decisions from the Precedential Opinion Panel (POP) for PTAB disputes. The POP is the U.S. Patent and Trademark Office’s top precedent-setting panel that serves as a review board for exceptionally significant issues that arise in PTAB proceedings. The Windy City decision could have significant implications across courts and their deference to government agencies, so Ward expects “a likelihood of a request for cert regardless of what side the court comes out on.”