boardside chat: interview with chief judge james donald smith

Boardside Chat: Interview

with Chief Judge James

Donald Smith

Patent Trial and Appeal Board

Webinar Series (1 of 5)

February 3, 2015

Boardside Chats

2

Date Time Topic Speakers Tuesday,

April 7

Noon to

1 pm

Eastern Time

Do’s and Don’ts for Ex

Parte Appeals Panel of Administrative

Patent Judges

Tuesday, June 2

Discovery in AIA Trials Panel of Practitioners

and Administrative

Patent Judges

Tuesday,

August 4 AIA Rulemaking and

Guidance Changes Lead Judge Susan

Mitchell

Tuesday,

October 6 Best Practices before the

PTAB Panel of Administrative

Patent Judges

Ex Parte Appeals

3

Pending Ex Parte Appeals (excluding appeals from reexamination proceedings)

25,658

25,827

25,918 25,989 26,014

25,925 25,942

25,844

25,718 25,782

25,830

25,683

25,460 25,445 25,404

25,431

25,629

25,504

24,000

24,200

24,400

24,600

24,800

25,000

25,200

25,400

25,600

25,800

26,000

26,200

26,400

26,600

26,800

27,000

Ex Parte Receipts and Dispositions (12/27/2014 thru 01/27/2015)

Discipline # Cases

Received

# Cases

Disposed

Difference

(Disposed minus

Received)

Biotech 62 24 -38

Business Methods 50 76 26

Chemical 126 83 -43

Contested Cases 9 15 6

Design 2 5 3

Electrical 313 369 56

Mechanical 230 178 -52

***Totals*** 792 750 -42

AIA Trials

6

AIA Monthly Filings (as of January 29, 2015)

Total 2,699

IPR 2,397

CBM 291

PGR 3

DER 8

AIA Petition Tech Breakdown (for FY15 through January 29, 2015)

63.1%

24.3%

4.2% 8.1%

0.3%

Electrical/Computer - TCs 2100,2400, 2600, 2800 (389)

Mechanical/Business Methods -TCs 3600, 3700 (150)

Chemical - TC 1700 (26)

Bio/Pharma - TC 1600 (50)

Design - TC 2900 (2)

Final Written Decisions in IPRs (as of 1/15/2015)

9

*IPR (208 Final Written Decisions)

129 44 35

0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100%

C

u

m

u

l

a

t

i

v

e

All Instituted Claims Unpatentable Some Instituted Claims Unpatentable

None of Instituted Claims Unpatentable

Final Written Decisions in CBMs (as of 1/15/2015)

10

*CBM (28 Final Written Decisions)

20 6 2

0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100%

C

u

m

u

l

a

t

i

v

e

All Instituted Claims Unpatentable Some Instituted Claims Unpatentable

None of Instituted Claims Unpatentable

11

AIA Trial Process

Administrative Patent

Judges

12

PTAB Location Demographics (as of January 26, 2015)

13

57%

4%

5%

5%

9%

7%

12%

Virginia

Michigan

Colorado

Texas

California

TEAPP

Hoteling

Allocation of Judges (as of January 26, 2015)

14

33%

50%

8%

7% 2%

AIA

Ex parte Appeals

Inter PartesReexamination Appeals

Management

Interferences

APJ Positions

• Goal is to add 60 more judges by October 2015

• Detroit-based APJ position open on USAJOBs:

https://www.usajobs.gov/GetJob/ViewDetails/393260300

• APJ announcement open on USAJOBs for all other

locations:

https://www.usajobs.gov/GetJob/ViewDetails/393261400

• Both announcements close on March 2, 2015

15

Questions?

16

Boardside Chats

17

Date Time Topic Speakers Tuesday,

April 7

Noon to

1 pm

Eastern Time

Do’s and Don’ts for Ex

Parte Appeals Panel of Administrative

Patent Judges

Tuesday, June 2

Discovery in AIA Trials Panel of Practitioners

and Administrative

Patent Judges

Tuesday,

August 4 AIA Rulemaking and

Guidance Changes Lead Judge Susan

Mitchell

Tuesday,

October 6 Best Practices before the

PTAB Panel of Administrative

Patent Judges

Thank You

18