Recently named U.S. Post-Grant Firm of the Year, Sterne Kessler has industry-leading experience in all proceedings before the PTAB. In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow.
Richard (Rick) Bemben is a director at Sterne Kessler with extensive experience handling PTAB trials. Over the last decade, he has been counsel in over 125 PTAB trials—including inter partes reviews, post-grant reviews, and covered business method reviews. He has also been counsel in more than a dozen Federal Circuit appeals of PTAB decisions.
Rick was recently ranked #2 on the list of the “100 Best Performing Attorneys Representing Patent Owners” before the PTAB in the 2023 Patexia PTAB Intelligence Report, which evaluated the performance of thousands of attorneys over the five-year period July 1, 2018, through June 30, 2023. The report also ranked him within the top 50 of the “100 Best Performing Attorneys Overall” before the PTAB, within the top 25 of the “100 Most Active Attorneys Representing Patent Owners” before the PTAB, and within the top 50 of the “100 Most Active Attorneys Overall” before the PTAB—recognizing Rick as one of the best performing and most active PTAB attorneys in the country.
What are some recent trends you're seeing at the PTAB?
The PTAB’s discretion to deny institution, under both Sections 314(a) or 325(d), continues to be a hot-button issue that generates a lot of interest and press. For example, contrary to what some may think, Fintiv is alive and well—panels continue to apply its multi-factor test to deny petitions in light of parallel litigation, albeit much less frequently than a few years ago.
Over the last year, we have seen a lot of activity both within and outside the Patent Office on discretionary issues. Within the Office, Director Vidal has been very active, using both the Director Review process to provide guidance on how panels should apply the current discretionary denial frameworks (such as under Fintiv and Advanced Bionics) and procedures under the Administrative Procedure Act (APA) to propose rule-based changes. Regarding the latter, the Office issued in April 2023 an Advanced Notice of Proposed Rule Making (ANPRM) that included many proposals directed to the Director’s discretion and that generated thousands of comments from stakeholders.
Outside the Office, the Federal Circuit and Congress have also been active on this topic. In March 2023, the Federal Circuit in Apple v. Vidal ruled that a district court could review whether the Director’s instructions on how panels should apply her discretion at institution were improperly issued because they were not promulgated through an APA procedure known as “notice-and-comment rulemaking.” And in August 2023, U.S. Senators Coons, Tillis, Durbin, and Hirono introduced a bill called the “Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act,” which addresses (among other PTAB-specific issues) the Director’s discretion at institution.
This issue will continue to play out in 2024, and we expect to see more guidance from the Office as they digest the feedback from the ANPRM.
What is the biggest challenge your clients are facing today?
We represent both petitioners and patents owners, and a challenge that affects both sides is consistency and predictability in panel decisions. With a tribunal as large as the PTAB, having more than 200 Administrative Patent Judges (APJs), consistency is a significant challenge for the PTAB and a concern for practitioners who need to predict outcomes and advise their clients. Director Vidal has taken meaningful steps to improve consistency, such as by actively providing guidance through the Director Review process and by implementing an interim pre-issuance internal circulation and review process (which was recently replaced by a new PTAB Standard Operating Procedure, SOP4). But we still see inconsistencies, such as in how panels assess and weigh expert testimony in the pre-trial phase (that is, before institution), which can have a major impact on a case. That said, we are optimistic that through some of the new procedures and additional refinements, the Director and the PTAB understand this concern and will continue to improve the predictability of panel decisions. In fact, the Office recently issued in October 2023 a Notice of Proposed Rulemaking (NPRM) on the PTAB’s pre-issuance internal decision circulation and review of decisions that seeks to enhance (among other things) the consistency of panel decisions.
What do you enjoy most about your PTAB practice?
A couple things. First, I enjoy digging deep into the legal and technical issues during trials and at oral argument. PTAB trials are heard by a panel of three APJs who have a deep understanding of patent law and the underlying technology, and so they often ask astute questions that challenge practitioners’ understanding of the case.
Second, I like practicing within the PTAB bar. As a whole, the community of attorneys who comprise and practice before the PTAB are professional and respectful, and strongly encourage participation from new and diverse attorneys. For example, the PTAB has a program (Legal Experience and Advancement Program or “LEAP”) specifically designed to give less-experienced attorneys an opportunity to participate at oral argument, which is a key event at the culmination of a PTAB trial. Many of my colleagues at Sterne Kessler have participated in LEAP, gaining valuable personal experience as well as making our team stronger and more knowledgeable in the process.