Vidal’s Sanctions Make It Clear: Don’t Mess With The PTAB

Recent rulings on sanctions at the Patent Trial and Appeal Board have heightened attorneys’ awareness of the risks associated with pushing the boundaries of ethical behavior at the board. U.S. Patent and Trademark Office Director Kathi Vidal has issued three major sanction decisions that arose from unusual circumstances, including cases involving extortion and concealment of evidence. The punishments, specifically the invalidation of several patents, should serve as a strong deterrent against rule violations.

Director Eldora Ellison commented on Vidal’s hands-on approach to reviewing decisions in Law360, noting it is appreciated by attorneys for providing clarity. She also discussed the recent sanction against Longhorn Vaccines & Diagnostics. In this case, the PTAB invalidated five patents in response to hiding evidence of unfavorable testing from its experts and the board.

Recognizing that the punishment sent a strong message, Ellison said “For anyone who might be inclined to engage in such misleading behavior, if they recognize that their misconduct could have a ripple effect across all of the challenged claims, and lead to a finding of unpatentability of all challenged claims — that’s of course a bigger deterrent.”

“If the practitioner in the deposition hadn’t really pressed on the issue of additional testing, this whole underlying scheme may never have come to light,” Ellison said. “Additionally, had that particular panel not allowed for additional briefing and consideration of this issue, the patent owner’s counsel may well have gotten away with the behavior they were engaging in.”

The article also discusses the consequences that attorneys face behind the scenes with the Office of Enrollment and Discipline, which includes the potential of being removed from the patent bar. Eldora comments “That should give any practitioner pause when they’re thinking about whether to engage in certain behavior or not.” She continued “That’s your livelihood if you work at the PTAB or with the PTO in general.”