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Next month, the Federal Circuit will be sitting in New York for part of its oral argument calendar.    Here is a list of the oral argument proceedings as published on the Federal Circuit website on September 15, 2017:

The USPTO has updated its subject matter eligibility page with a new quick reference sheet entitled: “Interim Eligibility Guidance Quick Reference Sheet.”  It is reproduced below and [here].  The April 2017 version is available [here].  The end of July 2017 version is available [here].

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Back in 1984, the New York Times ran an article on William Bryson, now a senior judge of the Federal Circuit.  At the time, Judge Bryson was special counsel to the chief of the Organized Crime and Racketeering Section in the Department of Justice.

I thought his comments about eating at  Burger King prior to oral argument in New York were interesting [Link]:

For the oral argument, Mr. Bryson flies in the night before and studies in his hotel room ”either till I’m prepared, or I think it’s hopeless.”

Having It His Way

On every visit to each city where he handles cases, he has developed a ritual of having dinner and breakfast in the same undistinguished places. ”In New York, I go for dinner to a particular Burger King on Third Avenue,” he said. ”Burger King is perfect for my anxiety level. Otherwise, I’d be wasting good food on a churning stomach.”

He is ”crushed” if his regular place in any given city is closed when he arrives. ”I fear for the argument if that happens,” he said.

The typical oral argument may last 20 to 30 minutes. ”That’s not a lot of time for the anxiety I’ve described,” he conceded, ”but you can make a lot of mistakes in 10 minutes, which I’ve proved to be true.”

If Judge Bryson makes the trip with the Federal Circuit for oral arguments in New York in October, I wonder if he’ll keep up the Burger King tradition.

The oral argument for the Texas-patent-agent-privilege case is set for November 9, 2017 in front of the Texas Supreme Court.  Some of the briefs are available below.  See David Hricik’s post and brief below for more info. [Link]

The intersection of law and dinosaur bones seems like it would be an interesting subject.  Here in Denver, a triceratops skeleton was recently discovered.  [Link].

It would be interesting to know how many registered trademarks/service marks there are related to dinosaur bones.  The T-rex named “SUE” comes to mind.  I propose “Trinity the Triceratops” for this newest discovery.

I wonder if there is a dirt law issue, as well.  For example, are dinosaur bones considered mineral rights?  If those mineral rights have been conveyed to another, is it conversion to dig up dinosaur bones without permission of the owner of the mineral rights?

The “Veterans Appeals Improvement and Modernization Act of 2017” was signed into law earlier this week.  The goal of the legislation is to streamline the appeal process for veterans to the Department of Veterans Affairs.  [Link]  Appeals from the Board of Veterans Affairs are heard by the US Court of Appeals for Veterans Claims (CAVC).  Appeals from the CAVC are heard by — you guessed it — the Federal Circuit. With the Federal Circuit already reeling from an increase in AIA appeals, we will have to wait and see how this new law further affects the workload of the Federal Circuit.

I was surprised that the Wikipedia entry for “public rights” did not yet have any spin created by the Oil States case.  Below is the current entry.  Let’s see if it changes between now and the Supreme Court decision.

The Federal Circuit decided Nidec v. Zhongshan today.  The panel deemed it unnecessary to delve into the panel stacking issue that was raised in the case.  However, two of the judges did express concern toward the PTO’s practice of panel stacking.  Namely, Judge Dyk and Judge Wallach noted the following:

Second, we are also concerned about the PTO’s practice of expanding administrative panels to decide requests for rehearing in order to “secure and maintain uniformity of the Board’s decisions.” Director Br. 27. Here, after a three-member panel of administrative judges denied petitioner Broad Ocean’s request for joinder, Broad Ocean requested rehearing and requested that the rehearing be decided by an expanded panel. Subsequently, “[t]he Acting Chief Judge, acting on behalf of the Director,” J.A. 933 n.1, expanded the panel from three to five members, and the reconstituted panel set aside the earlier decision.

Nidec alleges that the two administrative judges added to the panel were chosen with some expectation that they would vote to set aside the earlier panel decision. The Director represents that the PTO “is not directing individual judges to decide cases in a certain way.” Director Br. 21 (quotation marks omitted). While we recognize the importance of achieving uniformity in PTO decisions, we question whether the practice of expanding panels where the PTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the de- sired uniformity. But, as with the joinder issue, we need not resolve this issue here. Nor need we address the predicate issue of appealability.

Nidec v. Zhongshan, 2016-2321 (Fed. Cir. August 22, 2017)(slip. op. at pages 3-4 of Judge Dyk’s concurring opinion).

One aspect of the opinion that I thought was interesting was the panel’s bald statement of jurisdiction.  Namely, the panel stated:

Nidec v. Zhongshan, 2016-2321 (Fed. Cir. August 22, 2017)(slip. op. at page 5 of the per curiam opinion).

That was the limit of the analysis that the court articulated with respect to assessing its jurisdiction.  However, whether the Federal Circuit has jurisdiction to review decisions from stacked panels is not an issue that is without controversy. For example, in the Alappat case, both Judges Mayer and Michel expressed the position that the Federal Circuit does not possess jurisdiction to review decisions from stacked panels.  They stated:

I do not agree that we have jurisdiction over this appeal. The Commissioner exceeded his statutory authority in convening a new, expanded panel to reconsider the board’s original decision in Alappat’s appeal from the examiner. Because the Commissioner’s acts were not in accordance with law, the reconsideration decision cannot be a “decision of the Board of Patent Appeals and Interferences” within the meaning of 28 U.S.C. § 1295(4)(A) (1988), and this court has no jurisdiction to address the merits of the appeal. See In re Bose Corp.,772 F.2d 866, 869, 227 USPQ 1, 3 (Fed.Cir.1985) (an improperly constituted board may not render a valid decision over which this court may exercise its review jurisdiction).

In re Alappat, 33 F.3d 1526, 1571 (Fed. Cir. 1994)(Judge Mayer and Judge Michel dissenting).

Judges Dyk and Wallach seem to be on the right track in expressing concern about the legitimacy of stacked panels. However, that concern also undermines the determination of jurisdiction.  And, if I recall correctly, the determination of jurisdiction is not something that can be waived by a party or stipulated to by a party.  The court must determine for itself as the very first act in a matter that it possesses jurisdiction, regardless of whether the issue has been raised by the parties.

I am not sure that the appellant could have raised lack of jurisdiction in the first place.  That argument places the appellant in a catch-22 situation.  To bring the appeal, the appellant implicitly is asserting that the court has jurisdiction to hear the case.  So, the appellant can not then do an about face and argue to the court that the court does not possess jurisdiction.  Perhaps, instead, an appellant should request relief by petitioning the Federal Circuit for a writ of mandamus, arguing that the lower tribunal’s ruling was illegal due to an illegally constituted panel?

In recent years, there have been at least two occasions during oral argument where the Federal Circuit has inquired of the USPTO if additional judges are selected for expanded panels so as to decide a matter in a certain way.  In the first oral argument — Yissum Research Development Co. v. Sony Corp. — the USPTO was quite frank in acknowledging that the PTO can select judges for a reconfigured panel so as to achieve a decision opposite to that of the original panel: [Listen].

PTO: And, there’s really only one outlier decision, the SkyHawke decision, and there are over twenty decisions involving joinder where the . . . .

Judge Taranto:  And, anytime there has been a seeming other-outlier you’ve engaged the power to reconfigure the panel so as to get the result you want?

PTO:  Yes, your Honor.

Judge Taranto:  And, you don’t see a problem with that?

PTO: Your Honor, the Director is trying to ensure that her policy position is being enforced by the panels.

Judge Taranto:  The Director is not given adjudicatory authority, right, under § 6 of the statute that gives it to the Board?

PTO:  Right. To clarify, the Director is a member of the Board.  But, your Honor is correct . . . .

Judge Taranto: But after the panel is chosen, I’m not sure I see the authority there to engage in case specific re-adjudication from the Director after the panel has been selected.

PTO:  That’s correct, once the panel has been set, it has the adjudicatory authority and the . . . .

Judge Taranto:  Until, in your view, it’s reset by adding a few members who will come out the other way?

PTO:  That’s correct, your Honor.  We believe that’s what Alappat holds.

In a subsequent oral argument —  Nidec v. Zhongshan — the USPTO was a bit less direct with its answer when asked the question of whether judges are selected to rule a certain way: [Listen].

Judge Reyna: What kind of uniformity or certainty do we have in that where the PTAB can look at a prior decision and say well we don’t like that, let’s jump back in there and change that?

PTO: Well, ….

Judge Wallach: How does the Director choose which judge to assign to expand the panel?

PTO: Uh, that’s provided, your Honor, by our standard operating procedure. And, the Chief Judge actually makes that decision. And, the judges are selected based on their technical and legal competency. And, over the years, many many panels at the Board have been expanded. In fact if you looked at the thirty . . . .

Judge Reyna: Are they selected on whether they’re going to rule in a certain way?

PTO: Uh, well, people can be placed on the panel . . . for example, the Director can place him or herself on the panel, and certainly the Director knows how they’re going to rule. Nidec has not said and they say at their blue brief at page 43 that they don’t challenge the independence of these judges on this panel. Um, these judges were not selected and told to make a particular decision. If judges could be told to make a particular decision, there would be no need to expand a panel in the first place.

You can listen to the entire oral argument of Yissum Research Development Co. v. Sony Corp here: [Listen].

You can listen to the PTO’s presentation in Yissum here: [Listen].

You can read the court’s Rule 36 judgment in Yissum here: [Link].

You can listen to the entire oral argument of Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. here: [Listen].

You can listen to the PTO’s presentation in Nidec here. [Listen].

An opinion in Nidec has not issued, yet.  The outcome will depend, in part, on whether the CAFC satisfies itself that it has jurisdiction to rule on a decision of a stacked panel.

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Update: August 27, 2017 and August 28, 2017

A third occasion where the Federal Circuit noted the issue of panel-stacking was this past May in the en banc oral argument of WI-FI One v. Broadcom.  During that oral argument, Judge Wallach noted that on the list of “shenanigans”  — see the Supreme Court’s Cuozzo decision for more context on the “shenanigans” reference — was the Director appointing judges to come out the way that the Director wanted a case to be decided on re-hearing. [Listen].

Judge Wallach: No, no, no . . . according to the Government, it’s not individual panels —it’s the Director. Because, on the list of shenanigans, the Director, if the Director doesn’t like a decision, and someone seeks an expanded panel, can appoint judges who take a different position which is more in line with what the Director wants. So, in the long run, what you’re really saying is, it’s the Director who decides it, as opposed to this court.

Later in the oral argument, Judge Wallach would ask the attorney for the opposing side similar questions [Listen]:

Judge Wallach: The situation I described to your esteemed colleague where in effect the Director puts his or her thumb on the outcome . . . shenanigan or not? It’s within the written procedures.

Attorney: So, your hypothetical is the Director stacks the Board?

Judge Wallach: Yeah, more than a hypothetical, it happens all the time. It’s a request for reconsideration with a larger panel.

Attorney: That’s within the Director’s authority. The make-up of the Board to review the petition is within the Director’s authority. Whether that rises to the level of shenanigans or not . . . .

Judge Wallach: Aren’t there fundamental rule of law questions there . . . basic things like predictability and uniformity and transparency of judgments and neutrality of decision makers? And don’t we review that kind of thing?

Back in 1992, 75% of the judges on the Board of Patent Appeals and Interferences sent a memo to the Commissioner of Patents and Trademarks.  The memo objected to instances in which the composition of panels of the Board had been manipulated or re-constituted.  That is a pretty remarkable consensus among the judges (then known as “Examiners-in-chief”) of the Board.

The text of the letter is as follows:

We wish to express our concern regarding matters that carry disturbing implications of which you may not be aware.  There are an increasing number of instances in which the composition of panels of the Board of Patent Appeals and Interferences (BPAI) has been manipulated in a manner which interferes with the decisional independence of the Board and gives the appearance that a predetermined or predecided outcome has been reached in cases appealed under 35 USC §134.

Recently, for example, a randomly selected three member panel, acting pursuant to its statutory authority, reached and signed a decision, favorable to the appellant in Application Serial No. ***.  The issues in this application involved matters requiring special knowledge of *** technology and case law. The three member panel assigned to decide the appeal was constituted of individuals having this special knowledge.

For reasons unknown to us, the Chairman of the BPAI prevented the mailing of that decision.  He subsequently convened a special panel formed only of management officials, namely the Commissioner, the Deputy Commissioner, the Assistant Commissioner for Trademarks, the Chairman and the Vice-Chairman of the BPAI.  All of the original panel members were replaced.  To our knowledge, none of the new panel members has any special expertise or knowledge in *** technology or case law.  The management panel rendered a decision opposite in result to that reached by the legally constituted original panel, making no mention of the earlier decision.  These circumstances reflected an appearance of impropriety, e.g., an appellant being denied procedural due process within the U.S. Patent and Trademark Office.

It is the function of the BPAI to interpret case law of reviewing courts of the United States Patent and Trademark Office and apply this case law in reaching decisions on appeals.  It is the function of either the Court of Appeals for the Federal Circuit or the District Court of the District of Columbia to review the decisions of the BPAI.  There is no statutory authorization for any individual or individuals other than the above-noted Courts for reviewing decisions of the BPAI.

Interference with the decision making process of any agency’s authorized appellate board of review has at least the appearance of being improper.  Compare 5 USC §554.

While we have referenced only a single appeal in which we believe impropriety may have occurred, there is a disturbing pattern of interference with the normal course of deciding appeals by this BPAI, either by special selection of panels or by oral threats to panel members that they will be removed from a panel if they decide “the wrong way.”

The Commissioner is authorized under 35 USC §7 to “designate” the members of a panel.  There is no apparent authority, statutory or otherwise, to un-designate a duly formed panel and to redesignate a completely new panel for any purpose, let alone the purpose of reaching a conclusion opposite to that of the original panel, after the original panel not only reached a decision, but signed that decision.

These matters raise questions of a very serious nature including ultra vires agency action, interference with the judicial independence of the BPAI and denial of an appellant’s right to procedural due process.

We respectfully submit this memorandum to apprise you of these matters and to formally disavow even the appearance that we condone them.

In response to the letter, Commissioner Manbeck responded to the examiners-in-chief that they were not judges.  His response stated in part:

In the last paragraph on page 2 of the communication of April 24, 1992, there is a reference to the “judicial independence” of the Board.  But, the Board is not a judicial body.  It is an administrative body within the Patent and Trademark Office, none of whose members are judges.  The Board’s responsibility is to assist the Commissioner by deciding ex parte appeals and inter partes interference cases.

The members of the Board are employees of the Patent and Trademark Office.  Accordingly, they are expected to follow the policy established by the Commissioner for the Patent and Trademark Office.

More detail about this exchange of letters can be found in this 1994 article: [Link].

I wonder if today’s PTAB would have the mettle to write the letter that their brethren wrote back in 1992, e.g., with respect to recent instances of panel stacking.  Perhaps the recent addition of so many new board judges has imbued the Board with an attitude of supine indifference rather than one of judicial independence.