Meet the New Chief Judge of the PTAB

David Ruschke, the former chief patent counsel at Medtronic, was appointed chief judge of the Patent Trial and Appeal Board in May. Ruschke­, who worked from Santa Rosa, California, the last 10 years, previously practiced at Covington & Burling in Washington. In his first interview since taking the PTAB’s top job, Ruschke talked about his goals as chief, the board’s reaction to the Supreme Court’s Cuozzo decision, and his enthusiasm for PGRs, the newest iteration of AIA trial proceedings.

Q. How much of your focus is on AIA trials and how much on ex parte appeals?

A. I view it as a single board. We have a number of judges who do both the ex parte appeal work as well as the AIA trials. There certainly are people who only do appeals or only do trials. My focus is really on the board in its entirety, as a single unit, as a single body, and building that group as a single board.

Q. The previous permanent chief judge, James Smith, also came from an in-house role. Is there something about that background that prepares you for this position?

A. I think it does. I think the corporate environment can be very similar to the federal government environment. We're used to a lot of meetings [laughs], consensus decision-making. We are used to dealing with large budgets, large numbers of people who are scattered all over—in this case the United States, or in my case at Medtronic all over the globe. There's also a sense of having a group of stakeholders who are very important to you. In industry your stakeholders are the CEO, the CFO, the general managers of the business—the R&D folks in particular. Here in the government, our stakeholders are inventors, the inventing community and the organizations that support the inventing process in the United States.

Q. Did you appear before the Patent Trial and Appeal Board while at Medtronic?

A. We handled about 30 to 35 [matters], of which 12 to 15 I had direct responsibility for. Of those I never actually stood on my feet and argued in front of the board. I was always a back-bencher giving, I don't know if it was sage advice, but advice from the back row.

Q. People say the Patent Trial and Appeal Board is just one part of the puzzle of patents. Can you expand on that?

A. These new AIA proceedings, or post-grant proceedings, are extremely vital to the success and the integrity of the patent system. I view it as a kind of fulcrum in a lot of ways. Because it bridges that gap between actions, you take in the patent office vs. the action you would be forced to take in district court litigations before [passage of AIA]. And, as Congress mandated for us, it has to be limited in time, limited in scope and a more efficient and economic way to get the result on patentability.

Q. What was your perception of the board before you took the job and how has it changed, now that you're on the inside?

A. In the medical device industry, we had large portfolios. We were large patent owners, so we got attacked in the PTAB. At the same time, we had a lot of [district court] litigations against us by major competitors, nonpracticing entities, universities, and so we were also petitioners at the PTAB. So it was kind of nice being on both sides of the "v." While I certainly enjoyed it when patents that I was being sued on were invalidated, I loved the fact that I could uphold patents, get settlements and royalty streams from people that had challenged my patents.

I'm not sure my perspective has changed markedly, but I can understand why certain actions were taken, why there were certain policy directions.

Q. Can you give me an example?

A. We have one year from institution of decision to do a trial. When you're outside the patent office, you looked at it sometimes as, are they just trying to make that one-year deadline? Is the board limiting certain things they'll take up, limiting certain motions? From inside the patent office, just in the last month, it's very clear the mandate is to be economical and efficient, but all of the issues get covered, in depth, extensively, and all of the judges take their jobs very seriously.

Q. TheCuozzodecision: Did it feel like validation from the Supreme Court, or as caution about potential appeals from institution decisions?

A. I think theCuozzodecision was very, very well-received by the board. The fact that the first [PTAB] decision made it all the way up to the Supreme Court was pretty amazing, and I think the board was very interested to see how it came out. It was certainly validation of the rule-making process and the authority of the patent office. That is, I think, a very powerful part of the decision. The fact that they validated our choice to use the BRI [broadest reasonable claim construction standard], as opposed to the Phillips district court standard—choosing internal consistency [within the PTO] versus consistency between the PTAB and district court—is very important.

With respect to the appellate side of it, we'll see what happens at the Federal Circuit—it's more in their hands than it is in our hands. I'm sure we're going to see many arguments that are going to try to use the language in the majority opinion to argue their case why institution decisions are reviewable, and we'll have to adjust if the Federal Circuit decides there are certain things that are reviewable.

Q. How has your work with the American Intellectual Property Law Association helped shape your approach?

A. I've been involved with AIPLA for probably 20 years, most recently as the secretary and a member of the board of directors. What it provides is this enormous amount of various opinions. We have litigators, we have patent owners, we have nonpracticing entities, we have universities, we have individual inventors, we have large firms, two-person practice firms. The other piece that has been incredibly enlightening is the foreign committee work and the legislation work the board has been doing. So not only do you hear the U.S. perspectives, you hear the foreign perspectives. And with the legislation, [you're] much more attuned to where the practice may or may not be going.

Q. What else should practitioners know?

A. One of the things you're probably going to hear a lot from me going forward is the use of PGRs [post-grant review proceedings].

Q. It's gotten off to a slow start.

A. There's going to be a learning curve I think to what PGRs can be used for. Certainly in my prior role, there was a definite look at that as an effective tool for portfolio management, risk management, freedom-to-operate analysis and potentially using that as alternative to opinion work, so to avoid findings of willfulness. I think clients would be very, very excited about a process where they could get out a decision on freedom to operate within a year.

Once the U.S. practitioners get their minds set around what that looks like, I think there's going to be a lot of gravitating toward that as an incredible tool.

Contact the reporter at sgraham@alm.com.