1. PTAB Decisions Overview
2. PTAB Features
3. PTAB Decision Examples

Updated October 26,2020: 

PTAB Decisions Overview

PTAB decisions are rulings made by the Patent Trial and Appeal Board, an administrative and adjudicatory body operating in the United States Patent and Trademark Office (USPTO) that rules on issues of patentability. It conducts trials and patent reviews, hears appeals on decisions relating to patent applications, and renders decisions related thereto. Its primary purpose is to resolve patent disputes without the cost and complexity of full district court litigation. Its decisions may be appealed to the US Court of Appeals for the Federal Circuit, as well as other courts.

PTAB Features

PTAB was created by Congress in 2012 through the America Invents Act (AIA) as a reincarnation of the Board of Patent Appeals and Interferences, which was in turn a revision of the Board of Appeals and the Board of Patent Interferences that preceded it. Key features added by the AIA included:

  1. Post-grant reviews (PRGs). These are trials conducted to review if a patent claim is applicable under section 282(b)(2) or (3) of the U.S. Patent Code, which pertains to patent validity. If it appears likely that a claim is unpatentable, a trial will move forward.
  2. Covered business method reviews (CBMs). These are trials conducted to review the validity of a covered business patent method. Processes for these trials are generally similar to those of PRGs, with some exceptions. For instance, a CBM trial may not be filed unless an individual or their client has had an infringement suit filed against them.
  3. Inter partes reviews (IPRS). These are trials to review patent claims related to novelty and prior art under sections 102 and 103 of the U.S. Patent Code. These may proceed if it has been shown that a reasonable likelihood exists that a petitioner would prevail in at least one challenged claim.
  4. Derivation proceedings. These are trials to determine if an inventor improperly derived their invention from another inventor or an earlier patent application was made without authorization. A petitioner for this type of trial must do so within one year of the first published claim to the potentially infringing invention, and they must bring substantial evidence in support of their claim.

PTAB Decision Examples

There are numerous online resources to view patent decisions in order to help determine if your case is appropriate for PTAB litigation, with the three major ones being Westlaw, LexisNexis, and the USPTO website.

Westlaw is a legal research service owned by Thomson Reuters, which is perhaps best known for the Reuters news agency. Among other services, Westlaw offers:

  1. A database of selective coverage starting in March of 1929.
  2. The ability to search by party name, date, docket number, construed term, attorney, written by, and headnotes.
  3. Decisions from the USPQ, or United States Patent Quarterly (although this does not include USPQ headnotes).
  4. More 1980s and 1990s decisions (prior to 1997) than Bloomberg or LexisNexis.
  5. A PTAB Construed Terms Index, which lists definitions for terms used by PTAB as well as decisions that used these terms.

LexisNexis is a legal and business research corporation that possess the largest electronic database of public and legal records in the world. Features notable to it include:

  1. Older decisions than can be found in the U.S. Patent Office database and decisions that may not be found in Bloomberg’s database.
  2. A full-text search of motions and pleadings.
  3. Core terms assigned to headnotes.

More recent decisions can be found at the USPTO website. There you can search a decisions database from July 1, 1997 onward using:

  1. Keywords
  2. Application numbers
  3. Inventor names
  4. Patent numbers
  5. Case numbers
  6. Publication numbers
  7. Dates

You can also browse non-binding informative opinions, binding precedential opinions, and decisions pertaining to functional claiming, as well as view the PTAB docket and the full text of the filings therein from September 16, 2012 onward. PTAB petitions can be filed through the PTAB End to End (E2E) web page. There, one can also search AIA cases by:

  1. Party name
  2. Patent number
  3. Review number
  4. Application number
  5. Technology center
  6. Review type

If you need help understanding PTAB decisions and how they relate to your business, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law, and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.