PTAB Whiplash: Predictability, Policy and the PTAB Pendulum

This week on IPWatchdog Unleashed, I speak with Todd Walters, who is Chair of the Patent Office Litigation practice group at Buchanan. We explore the current state of Patent Trial and Appeal Board (PTAB) practice and the growing tension among stakeholders as policy changes continue to reshape post-grant proceedings. We reflect on the intensity of opinion from patent owners and petitioners and discuss the high financial stakes and strategic importance of America Invents Act (AIA) proceedings.

A central theme of our discussion was the lack of predictability in PTAB practice, driven largely by shifts in U.S. Patent and Trademark Office (USPTO) leadership and the exercise of Director discretion in administering AIA trials. Walters noted that changes in policies governing discretionary denials, real-party-in-interest rules, and parallel litigation considerations have made it difficult for practitioners to provide durable strategic guidance. We both agreed that without greater stability, the system will continue to experience “pendulum swings,” with each administrative transition reshaping PTAB access and outcomes in ways that undermine confidence in the patent system.

Our discussion also addressed broader structural issues in patent dispute resolution, including serial challenges to patents, the emerging concept of “settled expectations,” and the complexity created by parallel proceedings across the PTAB, district courts, the International Trade Commission (ITC), and the Federal Circuit. We both suggested that meaningful reform will require patent owners and petitioners to work together to develop a more predictable and balanced framework for post-grant review. While consensus may not satisfy stakeholders at the extremes, establishing clear and stable rules would strengthen confidence in the patent system and reduce the cycle of policy reversals that has defined PTAB practice in recent years.

A System Under Pressure

One theme dominated our conversation was the intensity of stakeholder sentiment surrounding the PTAB. Walters observed that recent industry discussions reveal unusually strong reactions to policy changes, with patent owners and petitioners unsurprisingly expressing sharply divergent views about the Board’s direction. According to Walters, this reflects the high stakes involved in PTAB proceedings, where litigation costs can easily reach hundreds of thousands—or even millions—of dollars before resolution.

Recent IPWatchdog conference discussions at our annual PTAB Masters™ program reinforced this tension. In-house counsel speaking on the in-house perspectives panel reported that between 50% and 60% of patent enforcement inquiries they encounter involve patents they consider low quality or unrelated to their businesses. The persistence of questionable assertions underscores why PTAB proceedings should remain central to patent litigation strategy, even as stakeholders debate whether the system is functioning as intended. I did, however, raise the question about whether the PTAB has ever been effective at addressing those low-quality patents, or assertions that bare no relationship to the implementer’s business. I pointed out that, sadly, those patent owners often seek nuisance value, so their patents go unchallenged at the PTAB.

The Predictability Problem

Both Walters and I identified predictability as the most pressing issue facing the PTAB today. Walters emphasized that policy changes accompanying new USPTO leadership—particularly in areas such as discretionary denials, real-party-in-interest rules, and interactions with parallel litigation—have created uncertainty for both patent owners and petitioners. Legal advice that appears sound under one administration may prove ineffective under another.

This policy volatility, Walters explained, stems less from changes in statutory interpretation and more from Director-level discretion in administering AIA proceedings. As a result, PTAB practice can shift significantly without legislative reform, creating what I described as “whiplash” for practitioners and stakeholders alike.

We both agreed that long-term stability will require collaboration across the patent ecosystem—particularly among operating companies, patent owners, and policymakers—to establish procedures that provide certainty while preserving fairness.

Serial Challenges, Settled Expectations, and Quiet Title

Our conversation also explored structural tensions within post-grant review practice. I raised longstanding concerns about repeated challenges to the same patent by different parties, arguing that the system should move closer to providing “quiet title” for patent rights after meaningful review. Walters countered that fairness considerations require allowing later-sued defendants to challenge patents, particularly when new prior art emerges. While no agreement was reached on this topic, we did seem to both acknowledge the need for a defined structure that establishes the rules in a less ad-hoc manner.

We also discuss the emerging concept of “settled expectations,” which seems akin to the notion of quite title. With settled expectations PTAB institution decisions are influenced—perhaps substantially influenced—by the age of a patent. Walters noted that this doctrine, developed through discretionary authority rather than statute, illustrates how policy choices continue to shape PTAB access.

Although we discussed the topic from multiple angles, we did not reach any resolution or suggestion on the appropriate balance between finality for patent owners on the one hand and fairness for accused infringers on the other.

Structural Complexity in Patent Dispute Resolution

Beyond PTAB-specific issues, we discussed larger systemic issues, including the fragmented nature of U.S. patent adjudication. Patent disputes can simultaneously involve the PTAB, district courts, the International Trade Commission, and the Federal Circuit—each operating under different procedures, timelines, and standards of review. This multi-forum environment increases cost, complexity, and opportunities for strategic behavior. Although the America Invents Act seemed aimed in part to streamline patent disputes, Walters acknowledged that parallel proceedings have often increased overall litigation costs rather than reducing them.

Lessons from the Interference Era

During our conversation Walters also reflected on his early career practicing in the now virtually defunct interference system, which involved a small, highly specialized bar and close collaboration between practitioners and administrative judges. That experience, he noted, helped shape modern PTAB trial procedures, particularly in motion practice and case scheduling.

While today’s PTAB operates on a much larger scale, Walters suggested that the interference system’s emphasis on cooperation and predictability offers useful lessons for the future.

The Road Ahead

The discussion concluded with cautious optimism. We agreed that the current moment presents an opportunity for stakeholders to define a stable, predictable framework for PTAB practice before policy swings again in response to political or administrative change.

As Walters summarized, the patent system does not need to satisfy the most extreme voices on either side—but it must work reliably for the vast majority of innovators, patent owners, and operating companies who depend on it.

Without that predictability, the PTAB debate will continue to cycle through periods of reform, reaction, and recalibration—leaving the patent system caught in a perpetual pendulum swing. I suggest that patent owners, who are in the driver seat at the PTAB at the moment, should use this new position of leverage to work toward creating a more fair framework and better system for all stakeholders before the likely inevitable snap-back happens and they find themselves once again on the short end of the stick.

More IPWatchdog Unleashed

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