Trial Section Outpaces PTAB Average
As discussed previously, the PTAB is experiencing a filing rate of 150+ AIA trial petitions per month (184 last month alone). This includes petitions for Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method challenges (CBM). The Board’s Trial Section could see between 1800- 2500 petitions this year alone — if not more as PGR ramps up. Of those filings that reach a final written decision (60% or more) it is expected that upward of 60+% of those will include a rehearing request of that decision from one side or both. That is, a significant amount of “re-work” on top of the growing AIA trial workload. Given the statutory deadline on the active docket items, which would not apply to rehearing requests of final written decisions (i.e., statutory clock stops at final written decision), these requests may see a much lower Board priority relative to the growing pile of time sensitive matters. In such a scenario, the overall pendency to a final CAFC resolution will be correspondingly extended.
The good news is that …so far…the Trial Section is outpacing historical rehearing pendencies of ex parte prosecution and reexamination appeals.
In my experience, requests for rehearing in ex parte application appeals and reexamination proceedings hover somewhere between 3-6 months. Such a pendency for AIA trial proceedings would be unfortunate as this delay would provide a clear stall tactic, which could be valuable in Fresenius style races of parallel track proceedings.
To date, the Trial Section has done surprisingly well in expediting rehearing decisions as compared to their Board counterparts. The chart below tracks the rehearing requests of Final Written Decisions of the last 6 months (filed since May 1, 2014).
As can be seen, the requests over the last few months are averaging about 30 days to decision (although the 6 month sample is admittedly small). As the number of requests multiply in the months ahead, rehearing pendency will trend beyond 30 days. Hopefully, this pendency can be maintained below historical PTAB standards.