Sanctions at the PTAB: What Conduct Is Sanctionable and What the Board Can Do

AIA trials are adversarial proceedings with real stakes, and the Patent Trial and Appeal Board has tools to keep them fair. Congress directed the USPTO to prescribe sanctions for abuse of discovery, abuse of process and other improper uses of the proceeding (35 U.S.C. § 316(a)(6) for inter partes review, with a parallel provision for post-grant review). The Office implemented that direction in 37 C.F.R. § 42.12.

Sanctions are uncommon compared with the number of trials the Board handles, but the framework matters. It shapes how parties and counsel present evidence, conduct discovery and make arguments, and it gives the Board a way to respond when a party crosses the line.

The duty of candor and the signature certification

The starting point is 37 C.F.R. § 42.11. Parties and individuals involved in a proceeding owe the Office a duty of candor and good faith. In practice this means not misstating facts or the record, not hiding information that is inconsistent with a position taken, and correcting errors once discovered.

Section 42.11 also contains a certification tied to the act of signing and filing papers, modeled on Federal Rule of Civil Procedure 11. By presenting a paper to the Board, the filer certifies, after a reasonable inquiry, that the paper is not being presented for an improper purpose, that legal contentions are warranted, and that factual contentions have or are likely to have evidentiary support. A violation of this certification can itself be a basis for sanctions.

What counts as misconduct

Section 42.12(a) lists categories of conduct that may draw a sanction. They include:

• Failure to comply with an applicable rule or an order in the proceeding
• Advancing a misleading or frivolous argument or request for relief
• Misrepresentation of a fact
• Engaging in dilatory tactics
• Abuse of discovery
• Abuse of process
• Any other improper use of the proceeding, including actions that harass, cause unnecessary delay or unnecessarily increase the cost of the proceeding

Failing to protect confidential information is another recurring concern. AIA trials often involve sensitive business or technical material produced under a protective order, and mishandling it, or using it for purposes outside the proceeding, can expose a party to sanctions. See discovery in PGR and IPR for how such material enters a trial.

The range of available sanctions

Section 42.12(b) gives the Board a menu of responses that can be matched to the seriousness of the misconduct. Available sanctions include:

Type of sanction	Practical effect
Order holding facts established	A disputed fact is treated as proven against the offending party
Order expunging a paper or precluding a party from filing one	The party loses the ability to put a submission before the Board
Order precluding a party from presenting or contesting an issue	An argument or defense is taken off the table
Order limiting discovery rights	The party may be barred from requesting, obtaining or opposing discovery
Exclusion of evidence	Testimony or exhibits are not considered
Compensatory expenses, including attorney fees	The offending party pays costs its conduct caused
Judgment or dismissal	The trial ends against the offending party

The rules also allow other measures, such as requiring a terminal disclaimer of patent term, in appropriate cases. Because the Board has this range, a sanction is often narrow and remedial rather than case-ending. Excluding a tainted declaration, for example, may resolve the harm without terminating the trial. For the ordinary rules on admissibility that operate alongside sanctions, see evidentiary considerations in PTAB trials.

How a sanctions issue reaches the Board

Board practice generally requires a party to obtain authorization before filing a motion, and a sanctions motion is no exception. A party that believes the other side has engaged in misconduct typically raises the issue with the panel first, often through a conference call, and the panel decides whether briefing is warranted. The Board may also raise misconduct on its own.

Before imposing a sanction, the Board gives the affected party notice and an opportunity to respond. Sanctions may be directed at a party, at counsel or at both, depending on who was responsible for the conduct.

Abuse of process and the Director’s role

The Director also has a role in policing misconduct. In 2022, through Director Review in OpenSky Industries, LLC v. VLSI Technology LLC (IPR2021-01064), the Director addressed whether a petitioner’s conduct amounted to an abuse of the IPR process and what consequences sanctionable conduct could carry. The decisions in that matter emphasized that the Office takes seriously any attempt to use AIA proceedings for improper ends, and that the Director can act to protect the integrity of the process.

Director Review procedures and related guidance have changed several times since the review process was created after United States v. Arthrex, Inc. (2021). Readers should check current USPTO guidance on the PTAB website for how such issues are handled today. For background on the Board’s structure, see the Patent Trial and Appeal Board guide.

Why this matters for parties

The sanctions framework reinforces habits that good practice already demands. Statements to the Board should be accurate and supported. Expert declarations should reflect the expert’s actual views. Discovery requests and responses should be proportionate and made in good faith. Confidential material should be handled strictly according to the protective order.

It also matters for strategy. Conduct that looks aggressive in district court, such as filing papers chiefly to pressure an opponent into settlement, can be viewed as an improper use of an inter partes review or post-grant review.

Key takeaways

• 37 C.F.R. § 42.12 lets the Board sanction misconduct, including rule violations, misrepresentations, discovery abuse and improper use of the proceeding.
• The duty of candor and the signature certification in § 42.11 set the baseline for every paper filed.
• Sanctions range from targeted orders, such as excluding evidence, to compensatory expenses and judgment or dismissal.
• Parties usually need Board authorization before filing a sanctions motion.
• The Director has addressed abuse of process through Director Review, as in OpenSky v. VLSI (2022); check current USPTO guidance for present procedures.