The question of whether PTAB trials are litigation-like or examination-like (or some hybrid of the two) has been implicated on several occasions.  The most recent one is in the In re Aqua en banc hearing Order.  No. 2015-1177 (Fed. Cir. Aug. 12, 2012).  While the PTAB has repeatedly stated it does not examine proposed amended claims, it may be required to do so if the Federal Circuit places the burden of establishing their unpatentability on the PTO.  See id. at 2-3 (asking where the burdens of persuasion, or production, regarding patentability of the amended claims rest).  This would present a dilemma for the PTO, as it would require administrative patent judges (“APJs”) to take off their robes and delve into the “stacks” of information that may defeat the patentability of proposed amended claims.

The same question – litigation-like or examination-like –was implicated in Cuozzo v. Lee, 579 U.S. ___ (2016).  There one issue was whether the PTAB should continue to apply the broadest reasonable interpretation (“BRI”) when construing the claims during an AIA trial – just as is done during initial examination or reexamination – or apply a Phillips-type construction as is done by district courts.  Slip op. at 12-17.  One argument offered in favor of applying the BRI standard was that the patent owner has an opportunity to amend its claims during an AIA trial, just as it does during examination or reexamination.  Id. at 18-19.  The Supreme Court did not weigh in on the merits of the different claim construction approaches but rather held that what the PTO had done by regulation, i.e., adopting BRI, was “reasonable.”  Id. at 19-20.

Notably, AIA trials are not conducted by an examiner but rather APJs.  While many APJs may be capable of examining claims for their patentability, that is not their role and doing so during an AIA trial would detract from proceedings that are intended to be court-like, with two or more parties making their case and the APJs serving as judges.  Having the APJs participate in an adversarial manner with respect to amendments while at the same time serving as a neutral adjudicator with respect to other issues of patentability would no doubt raise questions regarding alleged bias against Patent Owners in PTAB trials.

There is a solution to the potential dilemma facing the PTO.  Rather than getting into examination during PTAB trials, the PTO could propose amendments to the AIA to eliminate claim amendments.  Specifically, the PTO could propose amendments to the AIA to (1) remove the possibility of amendments during an AIA trial; (2) apply a Phillips-type claim construction (which in practice it is already doing on many occasions); and (3) give the claims –previously issued by the PTO – a presumption of validity.  By getting off the “litigation/examination fence,” the PTO could have its APJs adjudicate, and attempt to mirror district court proceedings as to questions like claim interpretation and the presumption of validity.  By doing so, the PTAB trials would provide a true alternative to district court litigation, rather than a “second bite at the apple” under different legal standards.  After all, wasn’t that the primary goal of the new reviews?