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