Hopelessly Inexperienced PTAB Judges are Destroying U.S. Innovation

In December 2023, the Senate IP Subcommittee held a hearing on the Promoting and Respecting Economically Vital American Innovation Leadership Act, S.2220 (PREVAIL), which affects the Patent Trial and Appeal Board (PTAB). 

The PTAB is an appalling failure, invalidating 84% of the patents it fully adjudicates, thereby unleashing massive predatory infringement of small entity patents by huge corporations. The PTAB is a primary reason that Big Tech was able to monopolize, and China now leads the U.S. in 37 of 44 technologies critical to our economic growth and national security.

Joe Matal, the Senate staffer who pushed through the America Invents Act, thus creating the PTAB, testified under oath that the PTAB delivers U.S. Patent and Trademark Office (USPTO) agency expertise in evaluating the validity of patents and that agency expertise is not possible in federal courts. 

The USPTO certainly has significant agency expertise in its examination corps. Joe Kiani, CEO of Masimo, testified that the examiner who examined and allowed his patents had more than 30 years of experience in pulse oximetry, the technology of his invention. Kiani, like most inventors, was impressed with the USPTO’s agency expertise.

Despite the crippling effects of the PTAB on U.S. innovation, Matal remains its cheerleader. His catchphrase, agency expertise, is a misattribution of USPTO examiner corps expertise to the PTAB.

The PTAB Defiles USPTO Agency Expertise

APJs are required to have a law degree and at least a technical or scientific undergraduate degree. The belief was that the technical or scientific degree would provide the necessary agency expertise to understand the technology in question. 

This all sounds good on paper, but what is their experience in the field? Applying the belief that a law degree coupled with technical or scientific education somehow provides USPTO agency expertise is a bridge too far and disrespectful to inventors.

Inventors are ahead of their time; they are fortune tellers improving the future. They are sometimes degreed in their field, but their true qualifications lie in everyday hands-on experience over many years in their specific field of invention.

Inventions range from speed jump ropes to artificial intelligence algorithms, and from cancer drugs to magnesium alloys. A simple degree in computer science, biology, or chemistry is not the expertise that created these world-changing innovations.

Most APJs have little to no work experience in the field of their degree. Generally, they get their undergrad and go straight to law school. Yet, even without experience in the field, it is their technical or scientific degree alone that qualifies them to adjudicate the validity of our nation’s most important patented inventions. 

Each PTAB tribunal consists of three APJs. You might assume it is imperative that all three would, at the very least, have a degree in the patented technology. This is not the case in 91.8% of PTAB petitions.

Due to the range of inventions and the limited number of APJs, PTAB management most often assigns APJs to cases where the technology in question is not even remotely close to the APJ’s undergrad degree. 

For example, Butterfly Network, Inc. v. FUJIFILM Sonosite, Inc. (IPR2022-01575) summarizes its technology as:

“Systems and methods which partition ultrasound signal processing between an ultrasound system main processing unit and transducer assembly are shown. A particular division of signal processing functionality disposed in the main processing unit and the transducer assembly may be selected to provide a desired weight balance, a desired level of processing for data communication between the main processing unit and the transducer assembly, etcetera. Battery capacity may additionally or alternatively be partitioned between the main processing unit and the transducer assembly.”

The patent owner’s technical expert has an undergraduate degree in Electrical Engineering, a master’s in Acoustics, and a Ph.D. in Biomedical Engineering. He researches the application and effect of ultrasound to biological structures, including the design and development of imaging, Doppler, and therapeutic ultrasound systems.

The APJs adjudicating the validity of the patent have undergrad degrees in chemistry, industrial engineering, and information technology. None have the correct educational background to evaluate the validity of this patent. None of the APJs had prior experience in the technology. None of these APJs exhibit the USPTO’s agency expertise. 

A member of PTAB senior management said that an APJ merely needs to be “comfortable” with the technology in question; their education in the technology is not required. Comfort is not expertise.

In other examples, APJs with degrees in Biology, Chemistry, and Chemical Engineering regularly adjudicate computer software and hardware technologies. APJs with degrees in Public Health adjudicate mechanical and software technologies. A political science major adjudicated microfiber and software technologies. Aerospace Engineers adjudicated wireless, software, and mechanical technologies. The list goes on, but you get the point.

Facts Matter

We looked at 142 petitions filed and terminated in 2023. 101 APJs presided over the petitions. For each APJ, we identified their undergraduate or graduate degrees. Of these APJs, we could find no educational background for 11 APJs. 

The technology in each petition was compared to the APJ’s degree. There were 13 petitions where all three APJs had the right degree (9.2%). This means that 91.8% of the petitions did not have a full panel of APJs with the right educational background. 

Of those, there were 30 petitions where only two APJs had the right degree (21.1%).  There were 36 petitions where only one APJ had the right degree (25.4%).  And a startling 62 petitions where no APJs had the right degree (43.7%). 

In 91.8% of petitions, PTAB management did not assign three APJs with the correct educational background and experience to panels. That is an incredible number and shows that the PTAB has no expertise at all, let alone the agency expertise of the USPTO. Matal’s testimony is nonsense. The agency expertise he attempts to apply to the PTAB is exclusive to the USPTO patent examiner corps.

If not the PTAB, Who?

For over 220 years, patent validity challenges were handled in the federal courts. It worked quite well, driving the U.S. to lead the world in every technology revolution, from potash processing to smartphones. Since the creation of the PTAB, the U.S. no longer leads – China does.  

Very few federal court judges have experience in any technology, let alone whatever comes into their court in a patent trial. To make up for that deficiency (among others), the federal courts created the role of Special Master. 

Special Masters work for the court and, in patent cases, are selected because they have experience and education specific to the patented technology being adjudicated. The parties pay for the Special Master, so there is no burden on the court or on taxpayers. Each party proffers its own technical expert testimony. The Special Master ensures that the court understands the technology and the expert arguments.  Thus, Special Masters enable the court to obtain expertise akin to USPTO agency expertise. 

Matal’s assertion that the courts do not have agency expertise is a farse, and his misattribution of USPTO agency expertise to the PTAB has resulted in thousands of US patents being unjustly invalidated thereby sending countless inventors to ruin, along with U.S. innovation in general.

The PTAB has shown it is utterly incapable of properly adjudicating the validity of patents and that incompetence damages our economic growth and national security.  It is time to accept that we made a very bad mistake creating the PTAB and abolish it.