Trenton Ward has joined Finnegan, Henderson, Farabow, Garrett & Dunner after five years at the Patent Trial and Appeal Board. That stint began just as the America Invents Act (AIA) was transforming the board into a new venue for patent validity challenges.
Ward adjudicated more than 250 AIA proceedings during his tenure. They range from a groundbreaking decision applying Section 101 in a covered business method review to a lengthy series of disputes between Nike Inc. and Skechers USA Inc. over shoe design. He acted as a lead administrative patent judge, supervising other APJs and assisting board leadership.
We caught up with Ward this week to talk about his work helping blaze the trail at the PTAB, tips for practitioners appearing before the board, and the atmosphere there as the U.S. Supreme Court considers a case that could shut down AIA proceedings.
Q. You worked for about nine years at Troutman Sanders before joining the board. What originally prompted you to join the board?
A. I definitely enjoyed my previous private practice and my partners at Troutman Sanders. I felt it was a once-in-a-career type opportunity to take part in a potential new venue for patent litigation.
Q. What was the state of the PTAB when you joined?
A. When I joined it was still the BPAI [Board of Patent Appeals and Interferences]. It transitioned shortly to the PTAB. It was everyone’s best guess as to whether or not the new trial venue would be of any interest. President Obama had signed the [AIA] in 2011, and it created the PTAB venue one year later. It just so happened that that date fell on a Sunday. The board was actually prepped and ready and initiated the trial jurisdiction at midnight on a Saturday night. But it was really unknown whether there was going to be one case in the first week or a hundred. [Editor's note: To date more than 7,000 AIA petitions have been filed.]
Q. When I look at the hundreds of cases you presided over, I see cutting-edge disputes over mobile communications, internet security, e-commerce and … sneaker design. Were there any particular types of cases you enjoyed handling?
A. The board attempts to empanel cases with judges that have a level of comfort in the underlying technology. Primarily my background is electrical arts, electronic computing, so many were in that area, but also mechanical subject matter patents. And as you point out, a fair number of tennis shoe cases. In the South we say tennis shoes.
Q. Your work also includes a groundbreaking decision on Section 101. Did you and your colleagues generally have to blaze a lot of trails in those early days?
A. Yes, we were routinely encountering issues of first impression in the early days and expended great effort in attempting to establish a fair and balanced jurisprudence for patentability trials at the PTAB. For example, the final written decision that my panel and I issued in U.S. Bancorp v. Retirement Capital Access Management was the first final written decision by the PTAB to implement the Supreme Court’s guidance with respect to patent eligibility in Alice Corp. v. CLS Bank.
Q. How will having sat on the board help you as an advocate?
A. As a judge I appreciated counsel that had an understanding of what was important to the panel’s decision with respect to patentability, and what amounts simply to a sideshow. That’s something that’s important for advocates to keep in mind. You want the panel to know that if you’re coming to them with an issue, that it’s an issue of merit that deserves their full attention and consideration.
Q. Any other tips for practitioners who appear before the PTAB?
A. I think advocates need to keep in mind that it’s a somewhat fluid jurisprudence at the moment. The Federal Circuit has continued issuing guidance to the PTAB through various remands and reversals of AIA trial decisions. Advocates need to fully understand those decisions to make sure that their advocacy comports with the alterations in the landscape.
Q. What is the atmosphere at the board like right now? You have this very unusual situation with the Oil States case pending at the U.S. Supreme Court that could jeopardize a lot of the board’s work.
A. The atmosphere is largely unchanged, and I think that’s due in part to the confidence within the office that the trials will be found as constitutional. And due to the fact that the work at the board has not changed significantly. There’s still a large number of new cases coming in and on the judges’ dockets. One of the things that most impressed me about the atmosphere of the board generally is that the No. 1 goal is making sure that you are making the correct decision on the merits of the case that’s in front of you. So APJs, I think rightfully so, have a tendency to be focused on the specific cases that are on their dockets rather than being overly concerned about issues that are outside of their control.
Q. What appealed to you about Finnegan Henderson?
A. The fact that they’ve got so many great clients, and some great presence at the PTAB. So I felt it was a great opportunity to return to private practice, and advise and counsel clients not only before the PTAB but other venues as well.
Q. Finnegan Henderson has an active PTAB practice both on the petitioner and patent owner side.
A. Yes they do, and that was something important to me as well, finding a place where I could represent clients on both sides.
Q. Why does that appeal?
A. It will be important for the continued success of AIA trial proceedings at the PTAB to ensure that there’s proper balance between the parties. And I think advocates need to be part of that process of ensuring that there is a proper balance.