If somebody is looking for an article to write, let me suggest one. I think it would be helpful to have a scholarly article published somewhere that discusses the role, responsibilities, and decision making processes of the Solicitor’s Office (SO) of the USPTO. Particularly, it would be interesting to know the decision process the SO goes through in deciding which IPR decisions of the PTAB to defend and which not to weigh in on at the Federal Circuit. Also, it would be interesting to know the decision making process the SO goes through in deciding whether to defend a PTAB decision or admit that the PTAB was simply wrong. And, it would be helpful to understand if/when the SO can simply send a decision back to the PTAB for reconsideration. Moreover, it would be interesting to know how such authority is vested in the SO.
One of these instances popped up today at the Federal Circuit and made me wonder about this topic. The SO of the USPTO effectively vetoed a portion of a PTAB decision by conceding to the Federal Circuit that the PTAB erred. Because the PTAB erred — i.e., the Federal Circuit ruled that way today — the decision by the SO in retrospect seems like it was the right thing to do. It was an expeditious way of proceeding; it prevented the SO from wasting the court’s time; and, it prevented officers of the court from making frivolous arguments to the court. However, what about closer calls. The authority of the SO to concede that the PTAB erred effectively gives the Director power to reverse a decision of the PTAB that the Director does not like.
The case that I am referring to was decided today, In re Mouttet [Link]. The pertinent portion of the Federal Circuit opinion is quoted below:
On appeal, the PTO’s Director concedes that the Board erred in rejecting claims 35–40 as indefinite and is not defending that rejection. Appellee’s Br. 1. The Direc- tor agrees with Mr. Mouttet “that claims 35–40 do not improperly merge statutory classes,” but are method claims, “drawn only to practicing the claimed method in a processor possessing the requisite structure.” Id. at 1, 5. We agree. Claim 35 recites “[a] method of performing a division process using the processor of claim 1 comprising” steps of “programming,” “setting a bit number,” “calculat- ing,” “comparing,” another “comparing,” and “ending the division process.” J.A. 15. Claims 36–40 further specify process steps. J.A. 15–16. We therefore reverse the Board’s rejection of claims 35–40.
There is an interesting footnote in the Supreme Court case of Brenner v. Manson. It 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.
Brenner v. Manson, 383 U.S. 519, 523 (1966)(emphasis added).
Perhaps there has been some intervening legislation since Brenner v. Manson that no longer causes the Commissioner (now Director) to be bound by Board determinations. But, if that is not the case, then it would be interesting to know whether “being bound by Board determinations” requires the Director to defend all of the Board’s determinations.
At any rate, if you write such an article, I would be pleased to read it.
Update 1/25/18:
A reader was kind enough to point me in the direction of some material that touches on the issues raised above:
1. Professor Dmitry Karshtedt’s recent article: “Acceptance Instead of Denial: Pro-Applicant Positions at the PTO” [Link]; and
2. The DOJ/USPTO’s brief in Knowles v. Matal (decision pending) [Link]. Interestingly, the DOJ/USPTO assert that the USPTO solicitor’s office can assert any position it chooses — and even argue against the PTAB position–when the appeal is taken to the Federal Circuit. That might be unsettling to the 300+ PTAB judges at the USPTO.
Query#1: If PTAB judges are required to meet certain legal and technical qualifications in order to provide the particular expertise of the Patent Office, are similar qualifications required of the SO’s office, i.e., the people asserting the right to take any position they choose on appeal?
Query#2: The USPTO’s brief relies on the Supreme Court’s Ingalls v. Office of Workers’ Compensation Programs case — is the PTO really structured the same as the Office of Workers’ Compensation Programs?
Query#3: If the SO’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.”).
Update 1/29/18:
Query #4: If PTAB judges are required to submit financial data to ensure impartiality, does the same requirement apply to other members of the Office who take a position opposite to the PTAB position on appeal?
Query #5: When the USPTO handles an initial PTAB decision “administratively,” how is that memorialized on PAIR?