The Patent Trial and Appeal Board: A Broken Promise?

Introduction

In the dynamic world of intellectual property law, the Patent Trial and Appeal Board (PTAB) was established as a beacon of efficiency and fairness—a solution to the growing concerns surrounding low-quality patents and the escalating costs of litigation. However, in the more than a decade since its formation, the PTAB has drawn intense scrutiny from inventors, businesses, and legal professionals alike.

While originally intended to improve patent quality and reduce frivolous litigation, many believe that the PTAB has failed in its mission, instead becoming a venue where patents face disproportionately high rates of invalidation. Critics argue that it has become a tool wielded by large corporations to crush smaller inventors and undermine intellectual property rights.

This article explores the history of the PTAB, its foundational purpose, the challenges it has faced in achieving that purpose, and how patent owners can best navigate the PTAB process to protect their intellectual property.

The Origins of the PTAB: Why It Was Created

The PTAB was established under the Leahy-Smith America Invents Act (AIA) of 2011, which marked one of the most significant overhauls of U.S. patent law in history. Prior to the AIA, patent validity challenges were largely handled through costly district court litigation or the Board of Patent Appeals and Interferences (BPAI), an underutilized and often sluggish administrative body.

Goals of the PTAB

Congress designed the PTAB with several key objectives in mind:

1. Increase Patent Quality – The board was intended to act as a filter to remove weak patents from the system, ensuring that only truly innovative and non-obvious inventions received protection.

2. Provide a Cost-Effective Alternative to Litigation – Traditional patent litigation in federal courts could take three to five years and cost millions of dollars. The PTAB was meant to offer a faster and more affordable way to resolve patent disputes.

3. Enhance Legal and Technical Expertise – Unlike juries in federal courts, PTAB panels are composed of Administrative Patent Judges (APJs) with specialized technical and legal backgrounds, leading to more informed decisions.

4. Reduce the Burden on Federal Courts – The surge in patent lawsuits, particularly by non-practicing entities (NPEs or "patent trolls"), had overwhelmed the judicial system. The PTAB was seen as a way to relieve this burden.

   
   

How the PTAB Works: An Overview of Proceedings

The PTAB conducts several types of post-grant proceedings, including:

• Inter Partes Review (IPR) – The most common form of PTAB challenge, IPR allows third parties to contest a patent’s validity based on prior art.

• Post-Grant Review (PGR) – Available for patents issued within the past nine months, PGR permits challenges on a wider range of grounds, including clarity and written description.

• Covered Business Method (CBM) Review – Initially designed to target financial and business method patents, CBM proceedings were phased out in 2020.

  
  

Where the PTAB Went Wrong: Challenges and Failures

Despite its noble intentions, the PTAB has become a controversial entity that, in many cases, fails to live up to its original mission.

1. High Patent Invalidation Rates

One of the most glaring criticisms of the PTAB is its alarmingly high invalidation rate.

• Since its inception, approximately 85% of patents challenged through IPR proceedings have had at least one claim invalidated.

• In 67% of final written decisions, all challenged claims are found unpatentable.

• By contrast, in district court litigation, patents survive validity challenges far more often—with invalidity rulings issued in only about 30% of cases.

This imbalance has led critics to label the PTAB as a "patent death squad", a term coined by former Federal Circuit Chief Judge Randall Rader.

2. Procedural Bias and Due Process Concerns

There is growing evidence that PTAB proceedings disadvantage patent owners due to procedural inconsistencies, including:

• Stacked Panels – The USPTO Director can expand PTAB panels or reassign judges if initial decisions are unfavorable, raising concerns about institutional bias.

• Multiple Challenges Against the Same Patent – Unlike in district courts, where patent challenges are typically limited to a single case, patents at the PTAB can be challenged multiple times by different parties, sometimes leading to death by a thousand cuts.

• Frequent Rule Changes – The PTAB has undergone numerous procedural changes, making it difficult for patent owners to predict and effectively respond to challenges.

  
  

3. Lack of Judicial Independence

Many PTAB judges report pressure from USPTO leadership to issue decisions that align with broader policy objectives, rather than purely legal and technical considerations.

• A recent survey found that 75% of PTAB judges believe that internal oversight influences their decision-making.

• The Supreme Court’s ruling in United States v. Arthrex (2021) highlighted these concerns, forcing the USPTO to provide greater oversight mechanisms for APJs.

  
  

4. The Rise of "Big Tech" Weaponizing the PTAB

Many large corporations, particularly in the technology sector, have used the PTAB to invalidate patents held by smaller inventors and startups.

• Over 60% of IPR petitions are filed by Fortune 500 companies, while only 15% originate from small businesses or independent inventors.

• Some companies have weaponized IPR proceedings by repeatedly challenging patents in an attempt to exhaust smaller patent holders financially.

Strategies for Patent Owners Facing PTAB Challenges

Given the high stakes involved in PTAB proceedings, patent owners must adopt a strategic approach to improve their odds of success.

1. Draft Stronger Patents from the Start

• Ensure that claims are narrowly tailored and well-supported by the specification.

• Conduct thorough prior art searches before filing to anticipate potential challenges.

• Use clear, unambiguous language to minimize interpretation disputes.

2. Utilize Procedural Defenses

• Challenge Institution Decisions – The PTAB has discretion over which cases to review; strong preliminary arguments can prevent a case from being instituted.

• Argue Against Multiple Petitions – If a patent faces multiple IPRs, patent owners can petition to limit redundant challenges.

3. Take Advantage of Recent Legal Developments

• The Fintiv rule allows the PTAB to deny IPR institution if a parallel district court case is progressing quickly.

• Recent shifts in discretionary denials have made it harder for serial petitioners to file repeated challenges.

4. Consider Settlement and Licensing Strategies

• Many IPRs result in settlements before a final decision. Patent owners should evaluate whether licensing agreements or settlements are preferable to litigation.

Conclusion: What Lies Ahead for the PTAB?

While the PTAB was created with the noble intent of improving patent quality and reducing litigation costs, its impact has been far from universally positive. The high invalidation rates, procedural biases, and susceptibility to corporate influence have led many to question whether the PTAB truly serves its intended purpose.

Going forward, reforms are needed to restore fairness and balance to PTAB proceedings. Until then, patent owners must arm themselves with knowledge, proactive legal strategies, and strong patent drafting techniques to navigate this challenging landscape.

For those facing the uncertainty of a PTAB challenge, preparation and a strategic legal approach remain the best defense.