The new patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, an Inter Partes Review (IPR), Post Grant Review (PGR) or Covered Business Method (CBM) must conclude, by statute, within 12 months of institution. This turnaround is a dramatic improvement over the 3-5 year pendencies that plagued patent reexamination. For this reason, the PTAB has been a major disruption to the business of patent licensing and assertion in the U.S; especially to that of the dreaded “patent troll.”
For patentees faced with a PTAB post grant challenge it’s only getting worse. As of mid-December, the PTAB has accelerated trial schedules so that oral argument is scheduled a mere 7 months from trial institution. This is a full two months earlier than the previous default schedule.
Up until recently, the default Scheduling Order set Due Dates 1-7 as show in black below (example Order here). Since mid-December , the default Scheduling order has been accelerated as shown in red below (example Order here):
Due Date (1) — 3 Months from Institution ——–>2 months
Due Date (2) — 6 Months “ “—————————>4 months
Due Date (3) — 7 Months “ “—————————>5 months
Due Date (4) — 7 Months, 3 weeks “ “————>5 months, 3 weeks
Due Date (5) — 8 Months “ “—————————>6 months
Due Date (6) — 8 Months, 1 week “ “————->6 months, 1 week
Due Date (7) — 9 Months “ “—————————>7 months
The new default schedule clearly front loads the first seven months of the 12 month trial schedule to give the PTAB a full 5 months to issue a written decision from the date of oral argument. Presumably, this move from a 3 month to 5 month buffer is designed to ensure that the PTAB is able to issue a decision within the statutorily mandated 12 month period. That is, the PTAB will be processing an increasing number of decisions in the months ahead. Couple this growing volume with the newness of a deadline for issuing such decisions, and the significant paralegal and administrative review that each decision receives prior to printing, and it is easy to understand the acceleration in scheduling.
That said, such an accelerated schedule is more bad news for patentees. While the old default schedule provided flexibility to parties to move dates 1-3, now, it will be very difficult to move such dates given the tight deadlines—especially where amendment is contemplated. (i.e., Due Date 3 is relevant). Going forward, petitioners would be wise to ensure that their declarants will be available for deposition 7-8 months from filing. Likewise, it is even more critical for patentees to quickly retain post grant counsel and begin preparing in advance of the Trial Order.