Would a “Mini-Markman” Have Helped Patent Owners?

A long time ago, in a galaxy, far, far away….the Patent Trial & Appeal Board (PTAB) considered implementing a Markman style claim construction procedure it labeled a “Mini-Markman.” The idea, along with others was the result of a 2015-16 listening tour conducted by the agency under former USPTO Director Michelle Lee. The listening tour stopped at several locations across the U.S. to collect public feedback on AIA trial proceedings. The tour culminated in a draft rule package that contained a number of interesting ideas. Needless to say, that rule package was abandoned and never saw the light of day (for reasons unknown)

As we move into the new year and look forward to coming PTAB rule packages on discretionary denials and rehearing practices, I revisit this old idea in view of the never ending dialog on reforming the PTAB.

First, while not publicly discussed or released by the agency to the general public, I analyzed the draft rules in cooperation with a bar committee back in 2016. You can find the bare bones version of the long lost draft proposal (here) (courtesy of my never emptied desktop recycle bin)

As explained in the Draft, the idea behind the Mini-Markman was to provide a discretionary mechanism for patent owners to short cut the proceeding to a conclusion akin to a summary judgment in the district court. To this end, the Draft explains :

This proposed rule will allow patent owners, if they believe there is a dispositive claim construction issue, the opportunity to take appropriate discovery, and receive a ruling on any potentially dispositive claim construction issues and early decision possibly resolving the AIA review proceeding.

Also in the Draft is an exemplary schedule on how this Mini-Markman would have played out. In short, it would have been quite the fire drill post-institution, creating exceedingly tight deadlines. I would imagine most patent owners would have availed themselves of the option. ..at least at first.

Would it have helped patent owners?

For the overwhelming majority of cases, no.

Back in 2016, it was still believed that the major problem with the PTAB from a Patent Owner perspective was its use of the broadest reasonable claim interpretation (BRI) rubric. And, that if the Board would just accept the more nuanced constructions of the district court (Philips standard), more patents would survive. Hence, any additional effort into claim construction would be viewed as helpful from that perspective.

Since that time the PTAB has adopted the same Philips construction standard of the district court. But the nuanced constructions common in court are not commonly found by the Board. This is a reflection of the Board’s technically trained decision makers. The test applied was never the issue as I counseled years ago. It was always the Board’s added insight — and perhaps, to a lesser extent, the absence of temptation on the agency’s part to arrive at a valid construction in view of the presumption of validity that is present only on the district court side.

So, had the Board moved forward with the Mini-Markman, it is doubtful that Patent Owners would have found much success. Moreover, the expense would have been significant for a shortcut of a few months (prior to the scheduled Final Written Decision). No to mention losing such a proceeding would also have accelerated bad news of the likely ultimate outcome. Thus, I expect the option would have been popular at first, but then immediately chilled.

As noted above, 2023 will bring codification of current 314(a) practices, and some new rehearing options and procedures. Stay tuned for those, and more, and don’t forget PTAB Masters 2023 this month!