717 Madison Place

If you are in Denver on Thursday, January 30th, the Denver Patent Office is hosting a biotech roundtable:

Details:

Thursday, January 30, 2020

1:30 p.m. – 4:00 p.m.

Registration & Networking begins at 1:00 p.m.

United States Patent and Trademark Offices

1961 Stout St

15th Floor Conference Room

Denver, CO 80294

1:00 p.m. – 1:30 p.m. Registration and Networking

1:30 p.m. – 1:40 p.m. Introductions

•     Molly Kolcialski, Director of the Rocky Mountain Regional Office of the USPTO

•     Jerry Lorengo, Director of TC3700 (medical, surgical, and diagnostic instruments)

•     Andrew Wang, Director of TC1610 (organic compounds: bio-affecting, body treating, drug delivery, steroids, herbicides, pesticides, cosmetics, and drugs)

1:40 p.m. – 2:10 p.m. Restriction Practice, Renee Claytor, SPE 1651 (Fermentation, Microbiology, Isolated and Recombinant Proteins/Enzymes)

2:10 p.m. – 2:30 p.m. Application Initiatives/Online resources, Ram Shukla, Acting Assistant Regional Director of the Rocky Mountain Regional Office of the USPTO

2:30 p.m. – 2:45 p.m. After-final practice, Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration

2:45 p.m. – 3:00 p.m. Break

3:00 p.m. – 4:00 p.m. Question and Answer Session, Roundtable Discussion to include discussions on 101, written description, and enablement

Registration Link.

The Federal Circuit has updated its guidelines for oral arguments. From the Federal Circuit website:

UPDATED ARGUMENT RESOURCES

The Clerk’s Office has released an updated version of its Guide for Oral Argument, which incorporates several changes including a revised Courtroom Decorum Policy and new Guidelines for Counsel During Argument.  This document and other resources are available on the Argument Resources page of the court’s website.   

Among other changes, the guide has added a new section VI:

VI. Guidelines for Counsel During Argument

The following guidelines are provided to assist counsel in making the best use of the allotted time at argument.

• Counsel should not interrupt a judge.
• Assume the court is familiar with the facts of the case.
• Minimize reading.
• Have a copy of the appendix and be familiar with the location of items.
• Assume the court is familiar with the briefs and appendix contents.
• When raising new authority at argument, provide a copy to opposing counsel ahead of time.
• Stop your argument when your time expires unless the court permits you to continue.
• Answer questions directly.
• Avoid pejoratives.
• When referring to specific portions of the appendix, provided accurate page citations.
• Do not respond to a question with an unqualified citation to your brief in response to a question
• Counsel seated at counsel tables should neither make inappropriate facial gestures nor engage in exaggerated gesticulation.

It looks like the Utah State Bar has another outstanding line-up of speakers for its IP Summit on February 21st. [Link]. Chief Judge Prost and Director Iancu are a couple of the keynote speakers, as well.

It seems as though the decision in Facebook v. Windy City Innovations (CJ Prost, O’Malley, Plager) should be handed down soon. I noted the oral argument of this case back in August; but, you might want to check out the oral argument if you missed that earlier post. It is an interesting and well-argued oral argument. The case concerned statutory interpretation of the AIA’s joinder statute.

A few of the issues that cropped up in the oral argument were:

1. Why didn’t the PTO intervene in the case to address whether its precedential opinion should be given Chevron deference?
2. Should the PTO’s precedential opinion panel (POP) decisions be given Chevron deference?
3. Did Congress error by referring to infringement of a patent vs. infringement of a patent claim(s) in the AIA?
4. Is the statute ambiguous?
5. Is there a clerical error in the statute?
6. Should the court ask the PTO for its thoughts — even though the PTO chose not to weigh-in in the first instance? (Note: I seem to recall that the court did later ask the PTO for its thoughts.)

Judge Plager expressed the view that the USPTO’s precedential opinion panel decisions were not entitled to Chevron deference:

You can listen to the entire oral argument here:

The briefing in an earlier iteration of this case is available at this prior post: [ https://www.717madisonplace.com/?p=9474 ].

I stumbled across this quote this evening and thought it was interesting:

It is quite true that the Revised Statutes, in the title which establishes and regulates the Department of Justice, simply declares, in § 346, that “there shall be at the seat of government an Executive Department to be known as the Department of Justice, and an Attorney General, who shall be the head thereof.” There is no very specific statement of the general duties of the Attorney General, but it is seen from the whole chapter referred to that he has the authority, and it is made his duty, to supervise the conduct of all suits brought by or against the United States, and to give advice to the President and the heads of the other departments of the government. There is no express authority vested in him to authorize suits to be brought against the debtors of the government, 279*279 or upon bonds, or to begin criminal prosecutions, or to institute proceedings in any of the numerous cases in which the United States is plaintiff; and yet he is invested with the general superintendence of all such suits, and all the district attorneys who do bring them in the various courts in the country are placed under his immediate direction and control. And notwithstanding the want of any specific authority to bring an action in the name of the United States to set aside and declare void an instrument issued under its apparent authority, we cannot believe that where a case exists in which this ought to be done it is not within the authority of that officer to cause such action to be instituted and prosecuted. He is undoubtedly the officer who has charge of the institution and conduct of the pleas of the United States, and of the litigation which is necessary to establish the rights of the government.

United States v. San Jacinto Tin Co., 125 U.S. 273, 278-79 (1888).

Does the Federal Circuit have all the information that it needs to evaluate whether PTAB judges are Principal officers versus Inferior officers? If en banc review is granted in Arthrex, perhaps the court should instruct the government to explain in its brief the behind-the-scenes operations of the PTAB. For example, are other judges allowed to comment on a draft opinion? Are there any levels of review that take place on a draft opinion? Are draft opinions circulated for review by other judges? Are judges assigned randomly? Has non-conformance with agency memos affected any PTAB judge’s pay or promotion? Does the Solicitor’s Office have any input on PTAB decisions, particularly after remand from the Federal Circuit? Does PAIR reflect all the steps taken by the PTAB or is there a non-public database that reflects additional steps or processes? If so, what are those additional steps or processes?

At the very least, the Federal Circuit needs to know the full process that goes on at the PTAB so that it can thoroughly evaluate the supervisory power of the Director. Right now, the court seems to be assuming that it knows the process. One issue that I have been wondering about is whether the Director has been acting with “apparent” authority. Fo example, if the Director and his subordinates have been reviewing draft opinions prior to issuance without any pushback from the PTAB judges, that might be a relevant factor in deciding whether the Director has been acting with “apparent” supervisory authority. If judges have been reviewed based on their conformance with agency policy, that, too, might be indicative of “apparent” supervisory authority. Whether “apparent” supervisory authority is sufficient to answer the underlying question in Arthrex is another matter.

If there are indeed additional steps going on behind the scenes, it would be an interesting question of whether the government attorneys have a duty of candor to inform the court of those processes regardless of whether the government is requested to do so by the court.

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.

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:

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

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.

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?

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:

It will be interesting to see the fallout from today’s opinion in Arthrex v. Smith & Nephew. For example, one sentence in today’s opinion states: “Although the Director still does not have independent authority to review decisions rendered by APJs, his provision of policy and regulation to guide the outcomes of those decisions, coupled with the power of removal by the Secretary without cause provides significant constraint on issued decisions.” See pages 25-26 of the Arthrex slip opinion. Another states: “In addition to these policy controls that guide APJ-panel decision making, the Director has administrative authority that can affect the procedure of individual cases.” See page 13, of the Arthrex slip opinion.

I enjoy looking back at Judge Mayer and Judge Michel’s dissent from In re Alappat when cases like Arthrex are decided. That dissent is reproduced below. One interesting passage in that dissent that caught my eye this evening was the following:

But if the board is simply implementing policy set out by the Commissioner, its decisions cannot be considered “legal” but must be subject to review as statements of agency policy. How such agency policy decisions 1577*1577 are to be reviewed is not uniformly agreed upon by the courts; some review them for abuse of discretion, some for whether they are arbitrary and capricious, and some virtually refuse to review them at all.^[8] Regardless of which of these standards would be most appropriate, it at least may be said that the standard of review applied by this court to the board should include a good deal more deference than has been applied heretofore.^[9] Our practice is inconsistent with our review of agency boards of contract appeals. Those boards are “independent” of their agencies, and yet the Contract Disputes Act directs that their fact finding be reviewed under the deferential “substantial evidence” standard. See 41 U.S.C. § 609(b) (1988); Triax-Pacific v. Stone, 958 F.2d 351, 353 (Fed.Cir.1992). If the court is correct that the patent appeals board is less “independent” and makes policy-based decisions, then arguably it should be reviewed more deferentially than contract appeals boards, not less so, as now.

Back in 1994, when Alappat was decided, it was a different iteration of the Board and different iterations of the statutes and case law. So, while I’m not sure how relevant the above-passage is under present law — not to mention that it was in a dissenting opinion — I’m curious if the Federal Circuit is giving up any reviewing power over any aspect of Board decisions via today’s Arthrex decision. Perhaps a slow and thoughtful en banc review is warranted.

Judge Mayer and Judge Michel’s dissent from In re Alappat is reproduced below:

The supplemental briefs requested by the Federal Circuit concerning whether PTAB judges were constitutionally appointed have been entered.

They are available below:

My guess is that this issue is headed for en banc review. Hopefully, the Federal Circuit does so publicly, rather than in secret, so that amicus briefs can be filed.

In the previous post, I covered the oral argument from Arthrex v. Smith & Nephew. One of the issues that the Federal Circuit might have to decide in that case is whether PTAB judges are “inferior” or “principal” officers. There is a mosaic of factors that go into determining whether one is an “inferior” or “principal” officer. One factor may rest upon whether PTAB judges are directed and supervised by a principal officer, such as the Director.

I wonder how the judicial oath/affirmation factors into the determination of whether a PTAB judge is directed and supervised by a principal officer? I believe the government requires PTAB judges to take such a judicial oath. My impression is that the language of the PTAB judicial oath/affirmation is similar to the language reflected below for US district and appellate court 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.”

(June 25, 1948, ch. 646, 62 Stat. 907; Pub. L. 101–650, title IV, § 404, Dec. 1, 1990, 104 Stat. 5124.)

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?

It will be interesting to see how the Federal Circuit treats this factor.

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(Updated on 10/22/20 to change “superior” to “principal” throughout.)