Archive for November, 2019


Thursday, November 21st, 2019

If the House is contemplating further hearings about how to fix the AIA to make appointments of PTAB judges constitutional, one name they should keep in mind is Professor Scott Kieff’s. One proposed solution is to add a higher level of review to PTAB proceedings. Professor Kieff has the unique experience of having served as a Commissioner at the International Trade Commission (ITC). So, he has firsthand experience with such a system, as well as an understanding of the intricacies of the patent system.

House hearing on PTAB Appointments clause issue

Wednesday, November 20th, 2019

The House held a hearing on the PTAB Appointments clause issue yesterday. The video is available here: [Link].

I think Professor (and former USPTO Solicitor) John Whealan’s opening comments will probably be of the most interest to patentees who have gone through a PTAB proceeding:

Mother Necessity

Wednesday, November 13th, 2019

I don’t think I ever saw this Schoolhouse Rock short:

Article suggestion

Friday, November 8th, 2019

It seems odd to me that an application being prosecuted with a non-publication request is opened up to the public when an applicant proceeds to the Board. An interesting article might delve into the reasoning behind that odd structure and propose a solution. I find it hard to believe that Congress intended secrecy only to apply to proceedings before examiners, but not to proceedings before Board members. Moreover, it has a chilling effect on applicants who might want to take their arguments to the Board.

Opinion purgatory — the authority gap between decision and mandate

Tuesday, November 5th, 2019

I was poking around on the internet to try to understand better the interplay between a published decision and a mandate. Here’s an interesting article that came up in the search: [Link].

Schoolhouse Rock wasn’t any help on this topic.

Update 11/8/19:

Judge Dyk’s concurrence in the judgment of BedGear, LLC v. Fredman Bros. Furniture Company, Inc., 2018-2082 (Fed. Cir. Nov. 7, 2019), at footnote 8, highlights this issue, as well:

The difficulty of identifying at what point in time the appointments became effective is evident. Is it when then panel issues the decision, when the mandate issues, when en banc review is denied, when certiorari is denied, or (if there is an en banc proceeding) when the en banc court affirms the panel, or (if the Supreme Court grants review) when the Supreme Court affirms the court of ap- peals decision?

Oral Argument of the Day: Polaris v. Kingston

Monday, November 4th, 2019

Following on the heels of the Federal Circuit decision in Arthrex last week by Judges Moore, Chen and Reyna, a new panel consisting of Judges Reyna, Wallach, and Hughes heard the oral argument in Polaris v. Kingston this morning. This oral argument was dedicated entirely to the issue of the constitutionality of PTAB judges and the effect of the Arthrex decision.

The entire oral argument is worth a listen; however, here are some points of note:

  1. Polaris suggested that the court’s correction of the statute that was implemented in Arthrex is insufficient and recommended the nuclear option — invalidate the statute; then let Congress fix it.
  2. The government needs to check in with various agencies as well as the Solicitor General before deciding whether to request en banc review. It sounded as if the government might not reach a decision on whether to request en banc review for another 42 days.
  3. The lack of an issued mandate in Arthrex is causing procedural obstacles. Polaris v. Kingston is perhaps a better vehicle for en banc review given the issues at play; but, the Polaris court can’t apply Arthrex until the mandate issues. So, the timing of a decision in Polaris will be tricky to keep Arthrex and Polaris on relatively parallel tracks for en banc review requests. (Meanwhile, in Customedia v. Dish, decided last week, the CAFC applied Arthrex — prior to a mandate issuing in Arthrex !?!)
  4. There are lingering due process issues with respect to the Director’s instruments of persuasion for controlling Board members.
  5. This constitutionality challenge has been raised once before prior to the Arthrex case. Apparently, in one of the Trading Technologies cases, the issue was raised and the Federal Circuit issued a Rule 36 Judgment. I believe that panel was Judges Newman, Dyk, and Wallach.
  6. The government believes that it was not permitted to use a statutory right when the government was not given a chance to intervene in the Uniloc case that was remanded to the Board last week in view of Arthrex:

You can listen to the oral argument here:

Updated 11/6/19:

Here is the discussion of non-severability: