Archive for the ‘Uncategorized’ Category

Senior Judge Evan Wallach

Tuesday, June 1st, 2021

Judge Evan Wallach of the Federal Circuit assumed senior status today. I always admire the judges who take senior status when it becomes available. They free up slots on the court for new judges while still making themselves available for significant participation on the court as senior judges. It is a selfless act that expands the ranks of the court.

“I’m from the government and I’m here to help”

Wednesday, May 19th, 2021

Ronald Reagan once quipped that the nine most terrifying words in the English language are: “I’m from the government and I’m here to help.” I thought it was somewhat humorous that Judge Newman, who was appointed by Reagan, heard a similar sentiment from the Solicitor’s Office when the Solicitor’s Office intervened in the Biogen v. Iancu appeal.

Quote for the day

Tuesday, May 18th, 2021

And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.

Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358 (Fed. Cir. 2017).

A Mysterious, Protracted Rule 36 Judgment

Wednesday, May 12th, 2021

The oral argument of the day comes from Biogen v. Iancu. This case was decided in December 2020; but, it was argued in December of 2019. It took the Federal Circuit over twelve months to decide the appeal by a Rule 36 judgment. How strange. If a case qualifies for Rule 36, why would the panel take so long to dispatch the appeal? Usually, Rule 36 judgments issue within a few weeks of oral argument, at the longest. This one took over a year from the date of oral argument.

I took a look on PACER and there were no clues as to why the decision took a long time. The panel was comprised of Judge Newman, Judge Moore, and Judge Chen. I have some theories on why it could have taken a long time. One, perhaps the court was pondering taking the case en banc sua sponte. Two, perhaps there was a majority and a dissent and no strong opinion on either side. So, after protracted deliberation, the panel opted for a Rule 36. Three, perhaps Covid got in the way somehow.

There were two issues that might have prompted a sua sponte en banc review. First, Judge Newman has been vocal about the Director interloping into appeals of IPR’s when one of the parties drops out. [Link] Such was the case in this oral argument, where Judge Newman again challenged the presence of the Director at the oral argument.

Second, the PTAB invalidated the claims at issue based on a five reference combination — in the unpredictable art of treating cancer, no less. Judge Moore once again expressed some concern about a rejection that involved so many references.

Perhaps the court was considering this case as a potential vehicle for overruling or putting some gloss on In re Gorman (authored by Judge Pauline Newman). For previous times when Judge Moore and others have expressed concern about combining a smorgasbord of references, see this previous post [Link]. At the end of the day, perhaps this outcome was best. If the court is going to address obviousness rejections based on an excessive number of references, it seems best to tee up that issue after Judge Moore has become Chief Judge. At that point she will have seniority to author the opinion.

At any rate, the oral argument was very well done and merits being the oral argument of the day. You can listen to the entire oral argument here:

You can read the Rule 36 judgment here: [Link].


Update 5/13/21:

Query: Would the Federal Circuit be better served by appointing an amicus to defend the arguments of the party that drops out of an appeal of an IPR? It is somewhat confusing as to whether the Director is representing the Director’s position, the PTAB’s position, or the dropped-out party’s position when the Director intervenes in an appeal like this. Moreover, the government has previously argued that it can take a position opposite to what the PTAB decided and pick and choose which parts of the PTAB decision to defend at the CAFC. So, I think it can be confusing to the Federal Circuit judges who probably assume that the Director by default is defending all of the positions taken by the PTAB. Should the Federal Circuit adopt an operating procedure that requires the government to identify which portions of the PTAB decision (or arguments below of the dropped-out party) that the government does not endorse at the time of filing its brief? Seems unlikely to me that the government would feel comfortable endorsing all the positions that a dropped-out party took below.

How long until the Solicitor General files its brief in American Axle?

Thursday, May 6th, 2021

The Supreme Court has requested that the Solicitor General of the United States file a brief expressing its views as to whether the Court should grant cert. in American Axle v. Neapco. I was curious when one should expect that brief to be filed. Back in Google v. Oracle, the Court requested such a brief on April 29th of 2019 and the SG filed its brief on September 29th of 2019. In American Axle, the Court requested the view of the SG on May 3, 2021. So, it looks like one could expect the SG’s brief in American Axle around the end of September.

Oral argument of the day: Medicinova v. Genzyme

Tuesday, May 4th, 2021

The oral argument of the day is from MEDICINOVA, INC. v. GENZYME CORPORATION, No. 2020-1064 (Fed. Cir. Dec. 14, 2020). This was a Rule 36 Judgment. I thought the oral argument was interesting for its discussion of “derivative claim construction.” This not so common expression refers to construing a term not present in the claim itself, but rather, present in the construction of the claim term. One example of this is from the Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365 (Fed. Cir. 2012) case:

The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed.Cir.2009)see also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.

Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365, 1374 (Fed. Cir. 2012).

You can listen to the oral argument here:

You can read the Rule 36 Judgment here: [Link].

Neuro Patent Law

Thursday, April 29th, 2021

Lately, my pleasure reading has gone in the direction of books about neuroplasticity. It has prompted me to wonder how brain imaging might be used in the practice of patent law. For example, could evidence in the form of fMRI scans on a sampling of PHOSITA’s be introduced as secondary indicia of non-obviousness? Is there an area(s) of the brain that could be identified as becoming active when hindsight is invoked? Could fMRI scans be used on patent examiners/judges to better assess patent eligibility? There are a myriad of other issues that one might use neuroscience and brain analysis to weed out the biases that are so prevalent in patent law. Pretty far-fetched, I know; but, fun to think about.

This 2019 article discusses the role that neuroscience scholarship has recently played in the criminal courts: [link].

Some good books if you want to explore neuroscience further are:

The Brain’s Way of Healing by Norman Doidge.

The Brain That Changes Itself by Norman Doidge.

The Brain by David Eagleman.

Train Your Mind Change Your Brain by Sharon Begley.

Incognito — The Secret Lives of the Brain by David Eagleman.

Soft-Wired by Michael Merzenich.

Some interesting brain health programs are:

BrainHQ at

Neuroflux and its free five day brain bootcamp:

Update 12/23/2021:

I was watching the Strafford CLE Design Patent Litigation: Increasing the Probability of Success in Infringement Outcomes and was intrigued to learn of a new survey technique being used in design patent litigation. As you know, the test for design patent infringement can be very subjective. The new technique described in this CLE and dubbed the Empirical Ordinary Observer Test (EOOT) attempts to remove some of that subjectivity using neuroscience methods. For example, at least eye tracking is used, although there was reference to micro-facial expressions, EEG, EMG, and Cognitive Modeling and Workload Analysis. It’s an excellent CLE, if you are interested.

Some of the other references mentioned in the CLE are:

Individual Differences in the Centrality of Visual Product Aesthetics by Bloch et al. (2003) [Link];

Development and initial validation of an empirical ordinary observer test for design patent infringement by Mauro et al. (2020) [Link];

Why the Future of Design Patent Protections Will Rely on Modern Neuroscience, Not Constitutional and Legal Reversionism, Berkeley Technology Law Journal (November 2021);

Research Handbook on Design Law, Chapter 16: How Different is Different? Modern Neuroscience and its Impact on Design Law by Mauro et al., Edward Elgar Publishing (2021) [Link]; and

Reference Manual on Scientific Evidence, Federal Judicial Center (2011) [Link].

Reading the tea leaves of the Minerva v. Hologic oral argument

Tuesday, April 27th, 2021

I was trying to figure out if the phrasing of the questions during the recent Supreme Court oral argument of Minerva v. Hologic signaled any outcome in the US v. Arthrex case. For example, would the justices refer to the role of the PTAB judges in eliminating bad patents? Would there be references to IPR’s or post-grant review? The transcript shows that there were not that many references to the PTAB. And, when there were, it was by the advocates — not by the justices. Justice Gorsuch, however, did reference IPR’s. For example, he stated: “And now we have the Patent Office itself refusing to apply patent estoppel in its own proceedings, for — in IPR proceedings. So the only place left that this doctrine seems to apply is in court.” Later he stated: “Unless they get challenged in the Patent Office in the IPR, which they could be. And then —.” At the end of the day, I don’t think the oral argument in Minerva suggests how the Court is deciding Arthrex one way or the other.

I did think one of Chief Justice Robert’s questions was intriguing:

CHIEF JUSTICE ROBERTS: Thank you, Mr. Hochman. I want to focus a little bit on your — your policy argument that getting rid of assignor estoppel would help, you know, get rid — rid of bad patents in encouraging inventors to — to challenge particular claims. But I thought strong patents was the way we encourage invention and that assignor estoppel helped ensure the strength and stability of — of those patents. How do you sort out those competing policy arguments?

Audio Stream of Supreme Court Oral Argument in Minerva Surgical v. Hologic

Tuesday, April 20th, 2021

The Supreme Court is scheduled to hear oral argument in Minerva Surgical, Inc. v. Hologic, Inc. on Wednesday April 21st at 9AM Mountain time. The case addresses assignor estoppel — an issue the Supreme Court clearly deems more important at this time than patent eligibility. You can review the briefs on the SCOTUSBLOG at this [LINK].

You should be able to audio stream below once the C-SPAN presentation goes live:

Live from the Federal Circuit

Sunday, April 4th, 2021

The Federal Circuit is going live with broadcasts to the public of its telephonic oral arguments solely via YouTube tomorrow. Conspiracy theorists will probably be disgruntled since YouTube is owned by Google. That does raise an interesting question, though — did the Federal Circuit have to go through a government approval process or security process before selecting YouTube over the court’s previous livestream system?

Unfortunately, it looks like the YouTube comments section will be turned off during the live stream of each oral argument. That would be fun to have the opportunity to suggest questions that the judges could ask during the oral arguments or to cast your own “vote” on an issue at the conclusion of the oral argument. Maybe some enterprising blogger will set up a parallel commenting system to perform just such a service.

Swearing-in timetable

Wednesday, March 31st, 2021

As you probably are aware already, Chicago attorney Tiffany Cunningham has been nominated to fill Judge Wallach’s seat on the Federal Circuit when he takes senior status. I don’t think it is much of a stretch to say that nominee Cunningham will be confirmed by the Senate. One of the interesting questions that Chief Judge Prost or soon-to-be Chief Judge Moore will have to tackle is when should the swearing-in ceremony take place. My impression is that 28 U.S.C. §44(c) still applies:

While in active service, each circuit judge of the Federal judicial circuit appointed after the effective date of the Federal Courts Improvement Act of 1982, and the chief judge of the Federal judicial circuit, whenever appointed, shall reside within fifty miles of the District of Columbia.

28 U.S.C. §44(C).

Presumably the swearing-in ceremony — or at least the beginning of active service, if swearing-in does not initiate active service — would need to take place after nominee Cunningham has established residency in D.C., Virginia, Delaware, or Maryland. My understanding is that it takes six months to establish permanent residency in D.C. and Maryland, and twelve months to do so in Virginia. Delaware requires six months in the state, but might not be effective until twelve months have passed. So, assuming the nomination process moves along expeditiously, it won’t be until at least October that the future-Judge Cunningham can take the bench. We’ll see if the Federal Circuit takes a different approach to the word “reside” in the statute, though. (I think most people would agree that 28 U.S.C. §44(c) is a dumb law, anyway.)

If you are interested in some of the nuances of the nomination process, see this post from back in 2015: The Circuit Court Appointment Process, Post Senate Confirmation.

Oral argument recording of United States v. Arthrex

Monday, March 1st, 2021

The Supreme Court heard oral argument today in U.S. v. Arthrex. You can listen to the audio here: [Link]. The audio cuts out for a few minutes at the one hour mark and then resumes a few minutes later.

Query: Should the Supreme Court and the Federal Circuit have appointed an amicus to represent the PTAB judges in Arthrex?

Monday, March 1st, 2021

I noticed this evening that the Supreme Court appointed an amicus to argue on behalf of the S.E.C. ALJ’s in the Lucia v. SEC case a few years ago. The main reason was that the government changed position during the appeal — so there was nobody left to present the position of the ALJ’s.

It strikes me as odd that people who have a lot to lose in the Arthrex case — the PTAB judges — have nobody arguing directly on their behalf. They are facing loss of certain employment protections, yet no amicus has been appointed for them by the Court — nor was an amicus appointed for them at the Federal Circuit.

Questions for Arthrex oral argument

Thursday, February 25th, 2021

If the Supreme Court justices are looking for questions to ask during the Arthrex oral argument, here are some options:

  1. The USPTO has new PTAB judges take a judicial oath.

The judicial oath is grounded in 28 U.S.C. §453:

§ 453.Oaths of justices and judges

Each justice or judge of the United States shall take the following oath or affirmation before performing the duties of his office: “I, ___ ___, do solemnly swear (or affirm) that I will administer justice without respect to persons, and do equal right to the poor and to the rich, and that I will faithfully and impartially discharge and perform all the duties incumbent upon me as ___ under the Constitution and laws of the United States. So help me God.”

28 U.S.C. §453.

The Federal Circuit has implied that the patent eligibility guidance of the USPTO (now required to be followed by PTAB judges) might sometimes contradict Federal Circuit case law. See, e.g., cxLOYALTY, INC. v. MARITZ HOLDINGS INC., No. 2020-1307 (Fed. Cir. Feb. 8, 2021) at footnote 1.

Is it the Government’s position that PTAB judges will violate their judicial oaths in order to follow PTO guidance of the Director, e.g., the patent eligibility guidance, rather than enforce the common law of the Federal Circuit out of fear of losing their judgeships? If the answer is “no”, is such guidance really a controlling factor on APJ behavior? If a Director’s guidance is merely parroting the law, how is that guidance considered controlling when a PTAB judge has taken an oath/affirmation to follow the law? If the PTO requires its judges, under oath, to faithfully and impartially discharge their duties under the Constitution and laws of the United States, how could it expect the judges to subordinate their own interpretation of the law to the viewpoint of the Director?

2. What should the Court make of footnote 6 in Brenner v. Manson? Footnote 6 of Brenner v. Manson makes a comment about whether the then-Commissioner of the USPTO was bound by determinations of the Board of Patent Appeals and Interferences.  The footnote reads:

[6] We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§ 141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. § 7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.

See this earlier post for more information from the oral argument of that case: [Link].

3.  In Knowles Electronics LLC v. Iancu, 886 F.3d 1369 (Fed. Cir. 2018)(then-captioned Knowles Electronics LLC v. Matal) — before the Arthrex issue had been tee’d up and in a brief that was disinterested in the Arthrex issue — the Government explained how the Director is the representative of the agency, i.e., the USPTO; but, the PTAB is the USPTO’s adjudicator. The Director can ask the PTAB to reconsider a decision. But, when the PTAB makes a decision, it is in reality an order of the agency itself. If the Director disagrees with a PTAB decision, he/she is free to challenge that decision at the Federal Circuit.

C. The USPTO’s statutory authority allows it to choose whether to intervene and, if so, what position to take

Because Article III of the Constitution “poses no bar” to the USPTO’s participation in an appeal from a USPTO decision, see Ingalls, 519 U.S. at 264, we next address the USPTO’s statutory authority to intervene and the extent of that authority. By statute, the Director of the USPTO has a right to intervene in every inter partes case arising from the USPTO. And the Director has statutory authority to take any position in those cases.

Before Congress passed the America Invents Act (AIA) in 2011, the Patent Act stated, “In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.” 35 U.S.C. § 143 (2002) (emphasis added). Thus, before the AIA, the USPTO was, by statute, a party to every appeal from an inter partes reexamination. The AIA amended that sentence, removing “any reexamination case” from the category of appeals in which the agency was obligated to appear. 35 U.S.C. § 143 (2012).

Instead, Congress added a sentence addressing the agency’s authority to intervene, at its discretion, in appeals from inter partes cases, including inter partes reexaminations. The new sentence states, “The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board . . . in an inter partes or post-grant review under chapter 31 or 32.” 35 U.S.C. § 143 (2012). Although that sentence does not specifically mention inter partes reexaminations, which were being phased out by the AIA, Congress explained elsewhere in the Act that “the Director’s right under the fourth sentence of section 143”—the sentence just quoted—“to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations.” AIA, Pub. L. No. 112-29 § 7(e)(4), 125 Stat. 284, 315 (2011); see also 157 Cong. Rec. S1377 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“In the effective-date provision at the end of section [7], various existing [appeal] authorities are extended so that they may continue to apply to inter partes reexaminations commenced under the old system.”); see also Joseph Matal, Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539, 542 n.25 (2012).

Furthermore, the Director’s right to intervene in inter partes reexaminations extends to those reexaminations “that are requested . . . before the effective date” of the AIA. Pub. L. No. 112-29 § 7(e)(4), 125 Stat. 284, 315. In other words, the change in the law was made applicable to all inter partes reexaminations that were requested before the AIA came into effect. Thus, the USPTO’s participation in appeals from inter partes reexaminations went from an obligation to a right, even for inter partes reexaminations that were already pending.

The statute thus spells out the situations in which the Director has the right to intervene, which include inter partes reexaminations, inter partes reviews, and other inter partes cases in the USPTO. This Court therefore routinely asks the USPTO if it plans to intervene in inter partes cases, particularly in cases like this one where the Court would otherwise lose the benefit of the adversarial process. The statute also clearly specifies the cases in which the Director is automatically a party—ex parte cases. 35 U.S.C. § 143 (2012).

The statute does not discuss or limit the positions the Director may take in any type of case. In ex parte cases, the statute merely specifies that the Director must “address[ ] all of the issues raised in the appeal,” 35 U.S.C. § 143 (2012); in inter partes cases, even that requirement does not exist. Although the Director typically intervenes on the side of the appellee, even in that posture, the Director may take any substantive position he likes.2

Indeed, Ingalls directly addresses the Director’s position in these appeals, not as a representative of the Board but as a representative of the agency as a whole. When the Board—the USPTO’s adjudicator—makes a decision, the “order of the agency’s designated adjudicator is in reality an order of the agency itself.” 519 U.S. at 268. The agency “may then be free to designate its enforcer/litigator as its voice before the courts of appeals.” Id. The agency’s litigator—in this case the USPTO Solicitor—while appearing on the side of the appellee, “is free to argue on behalf of the petitioner and to challenge the decision of the Board.” Id. at 270. Thus, if the Director (or Solicitor) disagrees with the Board’s decision, he need not argue in support of affirmance.This prevents “a ‘lopsided’ scheme whereby the Director can appear only in defense of the [Board’s] decisions.” Id. (citations omitted).3

In practice, the USPTO Director typically intervenes in appeals from inter partes cases in only two particular types of situations. Recognizing that the two parties can adequately represent the adverse sides of the dispute if both are present but not when the appellee has dropped out of the case, the Director will often intervene when the appellee has dropped out to preserve the adversarial presentation of the issues and to support the agency’s decision. Other than that, the Director often intervenes when the dispute on appeal implicates broader USPTO or government interests. Those interests may involve the validity or interpretation of federal statutes, of the USPTO’s procedures, or of USPTO regulations. So, for example, if an appellant argues that a regulation that the Board followed is contrary to the Patent Act, the Director may intervene to support the regulation. Although the Director could choose to intervene, under the statute, in every inter partes case, he instead selects cases in which his participation would be most important to the agency and helpful to the Court.

The Director’s presence is not required, however, for the appeal to proceed. As discussed above, the appellant has a justiciable controversy because it stands to lose its patent. The lack of USPTO participation does not moot the appellant’s case any more than does the reexamination requester’s declining to participate, discussed above.

In the unlikely event that the government were to decline to defend the Board’s decision in a case in which no other party was defending it, the Court could simply decide to hear the patentee’s appeal without the benefit of an adverse party. Alternatively, the Court could appoint or invite an amicus to defend the Board’s decision. The Supreme Court, for example, often chooses that route when the government confesses error and declines to defend a favorable decision from a lower tribunal. See, e.g., Becker v. Montgomery, 532 U.S. 757, 762 n.1 (2001) (“Without any party to defend the Sixth Circuit’s position, we invited [attorney] Stewart A. Baker to brief and argue this case, as amicus curiae, in support of the judgment below. His able representation . . . permit[s] us to decide this case[,] satisfied that the relevant issues have been fully aired.” (citations omitted)). Or, if the government confesses error and the Court concludes that, in consequence, there is nothing substantial remaining to be decided, the Court may simply vacate and remand. See Lawrence on Behalf of Lawrence v. Chater, 516 U.S. 163, 169-73 (1996); Florida Power & Light Co. v. Lorion, 470 U.S. 729, 744 (1985) (“If the record before the agency does not support the agency action, if the agency has not considered all relevant factors, or if the reviewing court simply cannot evaluate the challenged agency action on the basis of the record before it, the proper course, except in rare circumstances, is to remand to the agency for additional investigation or explanation.”).

Regardless, because the USPTO typically intervenes to defend the Board’s decision and tries to avoid situations in which a Board decision that it disagrees with is heard on appeal, the situation rarely arises. Far more common, and preferable, is a situation like this, in which the USPTO Director chooses to intervene to support the Board’s decision.


2 Because the USPTO does not have independent litigating authority, the Director seeks and obtains authorization from the Solicitor General before intervening in this Court. See generally 28 U.S.C. § 516; 28 C.F.R. § 0.20(c)

Practically speaking, the Solicitor would not often argue in support of reversal of a Board decision because the agency would likely handle those cases administratively. For example, the Director can ask the Board to reconsider a decision. If the decision has already been appealed and the Director then determines that it is somehow defective, the Solicitor can seek a remand for the Board to reconsider. See, e.g., In re Bursey, No. 2016-2675 (Fed. Cir. Apr. 28, 2017) (nonprecedential) (remanding appeal upon Solicitor’s request to allow Board to reconsider); In re DiStefano, 562 Fed. App’x 984 (Fed. Cir. June 4, 2014); In re Shield, No. 2013-1562 (Fed. Cir. Apr. 16, 2014); In re Motorola Mobility LLC, No. 2012-1470 (Fed. Cir. Mar. 5, 2013).

DOJ/USPTO’s Supplemental Brief filed July 31, 2017 in Knowles Electronics LLC v. Iancu, 886 F.3d 1369 (Fed. Cir. 2018)(then-captioned Knowles Electronics LLC v. Matal).

The entire brief is available here: [Link].

4. 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.

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.

If the proposed revision to the statute is adopted by the Court in Arthrex to make Administrative Patent Judges at-will employees, does the Government believe that it will be able to recruit high quality candidates to the role of Administrative Patent Judge when it is clear that judicial independence is important to most administrative judges?

5. How is the threat of losing one’s job an ability to control the outcome of a case already decided by a PTAB panel?

6. During the oral argument of Oil States, the Government led the Court to believe that panel stacking at the USPTO during IPR’s had taken place on only three occasions. Does the Government wish to update that statement?

 In the oral argument of Nidec v. Zhongshan, the then-Solicitor for the USPTO, who once served as the acting Chief Judge of the PTAB, commented that over the years panels of the Board have been expanded “many, many times.”

You can listen to the sound bite from Nidec here: [Listen].  Or, you can find it at the 25 min 40 second mark of the oral argument in Nidec Motor Corp. v. ZHONGSHAN BROAD OCEAN MOTOR, 868 F.3d 1013 (Fed. Cir. 2017), available at: [Link].   Or, you can review the exchange from Nidec below:

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.

See this previous post indicating that expanded panels were used on at least five occasions in 2017 alone: [Link].

7. If PTAB judges are required to meet certain legal and technical qualifications in order to qualify as APJ’s, are similar qualifications required of the representatives of the USPTO’s Solicitor’s Office? If the Solicitor’s Office/Director is entitled to pick and choose which parts of a PTAB decision it wants to defend on appeal to the Federal Circuit, shouldn’t the members of the Solicitor’s Office at least meet the same qualifications required of PTAB judges? Is Congress’ intent of using highly qualified APJ’s to adjudicate IPR’s being carried out if people not meeting those same qualifications are entitled to pick and choose which parts of a PTAB decision to defend on appeal?

If PTAB judges are required to submit financial data to ensure impartiality, does the same requirement apply to other members of the Office who are free to take a position opposite to the PTAB’s position on appeal?

8. If the USPTO Solicitor’s Office were ever to refuse to defend a PTAB decision, could the PTAB represent itself?  See Justice Scalia’s dissenting opinion in Ingalls at 273 (“The second argument offered in support of the view that the Director is a proper respondent when review is sought of an order of the Board is that (1) Rule 15(a) requires the naming of someone representing the agency, and (2) the Director is certainly a more sensible candidate than the Board. Ante, at 267, 268. The second part of this analysis, the faute de mieux point, is questionable: The Board could readily develop a staff to defend its judgments, and it is hard to imagine a worse defender than an entity that is free to disagree (and often does disagree) with the order under review.”).

9. If APJ’s are determined to be improperly appointed principal officers and there is no cure to the statute, must the previous actions of the PTAB with respect to IPR’s be rendered arbitrary and capricious as not issued in accordance with the law in view of 5 U.S.C. § 706(2)(A)?

10. If APJ’s are determined to be improperly appointed principal officers and there is no cure to the statute, are previous invalidations of patents in IPR’s administrative takings?

11. If it is determined that PTAB judges are not principal officers and they are not currently being overseen by a principal officer — because Director Iancu has resigned his post — should forthcoming PTAB decisions be considered valid, until a new Director/principal officer is confirmed by the Senate? After all, some argue that PTAB judges are inferior officers because a Director purportedly supervises them and a Director is a principal officer. What about when there is no Director/principal officer to supervise the PTAB judges? Does the Vacancies Act provide a cure? If so, how does the Vacancies Act — merely a statutory measure — suspend a constitutional requirement that a principal officer be appointed with the advice and consent of the Senate?


Update 3/10/21:

12. How will a recusal by the Director affect an IPR? Is the action taken by the USPTO in the IPR valid if there is no principal officer supervising the IPR due to the recusal by the Director?

Judge Dyk at US v. Arthrex Conference

Wednesday, February 24th, 2021

Duke University recently held a conference on the US v. Arthrex appeal to the Supreme Court. I missed the live conference; but, they were nice enough to put it up on YouTube. You can view the YouTube video below:

From my preliminary viewing of the video, it appears that Professor Duffy has the most persuasive position on the first panel. But, watch it and judge for yourself.

In the second panel, Professor Walker at 1:27:04 seems to have his fingers on the pulse of patent owners.