717 Madison Place

Back in 1967, Judge Smith of the CCPA dissented from the majority in the opinion of In re Wiechert, 370 F.2d 927, 152 U.S.P.Q. 247 (C.C.P.A. 1967).  Judge Smith opined that a panel of the PTO’s board of appeals at that time had been improperly constituted.  Therefore, Judge Smith remarked that the CCPA had no jurisdiction to review the decision of the board of appeals.  The entire opinion is available [here].

Judge Smith’s dissent is shown below:

SMITH, Judge (dissenting).

The majority opinion of this court rests on the novel concept that an Article III Federal Court does not have jurisdiction to inquire into the legality of an administrative quasi-judicial board whose decision it has been requested to review. This concept is unsupported by authority or precedent and seems to me to be lacking in both reason and logic. The power to inquire into the legality of such a board is a necessary and inherent power of the reviewing court. Such power is the court’s only safeguard against putting its judicial imprimatur on a legal nullity. Our obligation is to dispose of the present controversy in a judicial matter to the end that the duty of this court will not be compromised. As we recently stated, in In re Fischer, 360 F.2d 230, 231, 53 CCPA 1211:

* * * The judicial nature of the proceedings in this court, no matter at what stage, is no longer in question. Lurk v. United States, 370 U.S. 530, [82 S.Ct. 1459, 8 L.Ed.2d 671] (1962) and Brenner v. Manson, 383 U.S. 519, [86 S.Ct. 1033, 16 L.Ed.2d 69] (1966). As stated by the Supreme Court, the bulk of this court’s work involves the disposition of cases arising under Article III of the Constitution, that is cases arising under Federal law and cases to which the United States is a party. These cases and controversies are and must be disposed of in a judicial manner. * * * [Emphasis added.]

Three “principal reasons” are advanced to support the majority position:

(1) The question was not raised on this appeal by appellant;

(2) having raised the question in the Patent Office, he abandoned it by not arguing it before us (except as we insisted on his doing so at the reargument); and

(3) our limited statutory authority precludes our consideration of the question.

While Judge ALMOND and I differ as to how the issue of the legal competency of the board is to be resolved, we have no differences as to the inherent authority of this court to pass upon the issue here raised.

As I see it, the fallacy in the majority opinion results from confusing the issues of an appeal, required to be raised under 35 U.S.C. § 141, with the basic authority of this court, wholly independent of any reason of appeal or other limitations defined in section 141, to consider whether an appeal lies from the “decision” rendered by an alleged illegally constituted tribunal.

The Issue of Jurisdiction

To emphasize the agreement between Judge Almond and myself on this issue, his concurring opinion contains the statement with which I am in full and entire agreement which I here quote and embody in this opinion:

I am not concerned with whether appellant raised the issue of jurisdiction either in the Patent Office or before this court, or with whether the issue is covered by his Reasons of Appeal, or with whether appellant abandoned the issue. It is too well-settled to require citation of authority that jurisdiction of the subject matter is neverwaived in a pending case. This is the unvarying rule even in courts of general jurisdiction, and it should be applicable with special force in this court of limited jurisdiction.

It would also be a matter of no concern if appellant, the Commissioner, and counsel for both parties all agreed that this court has jurisdiction of the subject matter of this appeal. The parties before a Federal court cannot confer appellate jurisdiction by their 941*941 mere consent; only Congress can do so. Since Congress has confined our jurisdiction in ex parte patent cases to appellate review of a “decision of the Board of Appeals” under section 141, I believe we should consider the issue of whether the questionable “board” panel in the present case was legally constituted under section 7, so that it could conceivably render a valid decision on behalf of the “Board of Appeals.” If the “board” panel could not do so because of its illegal composition, this court would lack jurisdiction of the subject matter under the statute.

The basic consideration to which we must give effect, it seems to me, is set forth in the following statement from 5 C.J.S. Appeal & Error § 1355, Want of Jurisdiction (1958):

Inasmuch as lack of jurisdiction in the appellate court renders any decision which it might make on the merits a nullity, if such lack of jurisdiction is patent, or can be readily ascertained by an examination of the record, it warrants the dismissal * * * (citations omitted, 9 columns of cases).

Read the rest of this entry »

The oral argument of the day is from NOBELBIZ, INC. v. GLOBAL CONNECT, LLC, No. 2016-1104 (Fed. Cir. July 19, 2017).  I enjoyed listening to this oral argument because there were a lot of references to various court precedents, particularly with respect to claim construction issues.  One of the nice aspects of listening to oral arguments like this is that they serve as a nice refresher about holdings of previous cases.

Prospective appellants will be interested in one sound bite from Judge Dyk.  During the oral argument, the appellee challenged the appellant’s reliance on the summary of the patent to construe the claims — because that argument was apparently not used at the district court.  Judge Dyk responded that it was not waiver to make new arguments on appeal as long as the issue was raised below.  He asserted that there is only waiver of issues — not waiver of arguments. [Listen].  The appellee attempted to refer the court to the Federal Circuit’s Conoco decision.  I believe the appellee was referring to Conoco, Inc. v. ENERGY & ENVIRONMENTAL INTERN., 460 F.3d 1349 (Fed. Cir. 2006), which states:

Normally, a district court faced with a patent infringement suit engages in a two-step analysis, involving: (1) construing the disputed claims of the patent — a matter of law — and (2) comparing the accused device to the patent claims — a matter of fact. Cybor Corp., 138 F.3d at 1454, 1456. However, legal issues in patent infringement suits are not immune to the doctrine of waiver on appeal, and except for certain circumstances, those issues not raised below at the district court cannot be heard for the first time on appeal. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1344-45 (Fed. Cir.2001). Thus, a party may not introduce new claim construction arguments on appeal or alter the scope of the claim 1359*1359 construction positions it took below. Id. at 1346-47; see also NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1296 (Fed. Cir.2005). Moreover, litigants waive their right to present new claim construction disputes if they are raised for the first time after trial. See Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1360 (Fed. Cir.2004).

Conoco, Inc. v. ENERGY & ENVIRONMENTAL INTERN., 460 F.3d 1349 (Fed. Cir. 2006).  [Link]

The majority decision in NOBELBIZ, INC. v. GLOBAL CONNECT, LLC did base its decision, in part, on the summary of the patent. It did not mention Conoco.

You can listen to the oral argument here: [Listen].

You can review the court’s decision: [here].

The case of Flyers’ Rights v. FAA caught my eye today, as I am a tall person who is ever-aware of the shrinking amount of leg room on airline flights.  In Flyers’ Rights, the appellant appealed to the D.C. Circuit after the FAA denied Flyers’ Rights petition for a rulemaking by the FAA.  The proposed rulemaking had to do with the minimum amount of leg room that should be provided on a flight.

That got me to wondering whether the USPTO ever receives any proposed petitions for rulemaking and what some good new rules might be.  For example, if the vast majority of requests for amendments in IPR proceedings are being denied by the PTAB, should an industry group petition for a rulemaking to correct that situation?

Or, in view of the statement in Versata Development Group v. SAP America, Inc. that states:

The section 101 analysis applied by the PTAB was not legally erroneous under Mayo and Alice. And its underlying fact findings and credibility determinations are supported by substantial evidence in the record.

Versata Development Group v. SAP America, Inc., 793 F.3d 1306, 1336 (Fed. Cir. 2015)

and thus implies that the USPTO’s §101 determinations are based on underlying factual findings (e.g., whether a claim as a whole recites well-understood, routine, and conventional activities),  should an industry group petition for a rulemaking that a USPTO rejection of a claim under §101 must provide evidence that the proposed claim recites well-understood, routine, and conventional activities?

The D.C. Circuit’s opinion in Flyers’ Rights v. FAA is available [here].

The oral argument in Flyers’ Rights v. FAA is available [here].

My favorite quote from the Flyers’ Rights v. FAA decision is:

Flyers’ Rights v. FAA, No. 16-1011 (D.C. Cir. July 28, 2017) at page 13.

Query:  If the Director of the USPTO utilizes panel stacking to implement new USPTO procedure in place of notice and comment rulemaking, has the Director disclosed all the data relied on in reaching its decision?

For more on petitions for rulemaking under the APA see:  [link].

Those of you who like to follow the development of the legal theory of “judicial taking of property,” since that theory was discussed in the plurality opinion in Stop the Beach Ren. v. Fla. Dept. of Env. Prot., 130 S. Ct. 2592, 560 U.S. 702, 177 L. Ed. 2d 184 (2010) will be interested in yesterday’s decision in Petro-Hunt, L.L.C. v. United States [Link].   This appears to be only the fourth time that the Federal Circuit has addressed the “judicial taking of property” cause of action since Stop the Beach issued.

In a footnote in Petro-Hunt, Judge Clevenger notes for the court:

The oral argument of the day is from INTEGRATED CLAIMS SYSTEMS, LLC v. TRAVELERS LLOYDS OF TEXAS INSURANCE COMPANY, No. 2016-2163 (Fed. Cir. Apr. 11, 2017).  The oral argument primarily concerns application of the court’s SECURE AXCESS, LLC, v. PNC BANK NAT. ASSOCIATION decision from earlier this year with respect to how to determine whether a patent is subject to covered business method (CBM) review.

You can listen to the oral argument [here].

You can study the court’s Rule 36 Judgment [here].

The Federal Circuit’s en banc decision in In re Aqua Products should be out soon.  Aqua challenges the Patent Trial and Appeal Board’s amendment procedures, which require the patentee to demonstrate that amended claims would be patentable over art of record.

You can listen to the en banc oral argument [here].

You can review the vacated panel opinion [here].

Aqua Products’ supplemental brief is available [here].

Totally off-track, not particularly pertinent to this case, and not from this case; but, this is one of my favorite sound bites from Judge Dyk about interpreting regulations based on public statements: [Listen].

Those of you who like to try to read the tea leaves of other oral arguments in order to predict how the court is leaning in an en banc appeal might be interested in the oral argument of ZAGG INTELLECTUAL PROPERTY HOLDING CO., INC. v. TECH 21 UK LTD., No. 2016-1976 (Fed. Cir. Apr. 11, 2017).  That oral argument is available [here].

The oral argument of the day comes from INTELLECTUAL VENTURES II LLC v. ERICSSON INC., No. 2016-1803 (Fed. Cir. Apr. 18, 2017).  This case is primarily an obviousness case.

Interestingly, near the end of the decision, Judge Lourie, writing for the court, added the following footnote:

The Board also instituted review of claims 1 and 2 based on a combination of six references, and later determined that the six-reference combination also rendered claims 1 and 2 unpatentable as obvious. Final Decision, 2016 WL 380219, at *11-12. Because we affirm the Board’s conclusion based on the combination of Li, Yamaura, Zhaung, and Beta, we need not, and do not, reach the second combination.

That footnote is given more context by these comments during oral argument from Judge Reyna, who was concerned with possible hindsight being applied by the PTAB when a large number of pieces from different references are combined together* [Listen] and [Listen].  To listen to similar comments by other Federal Circuit judges in other oral arguments, visit this [post].

You can listen to the entire oral argument [here].

You can read the court’s opinion [here].

*Sometimes referred to as a Frankenstein’s Monster rejection.

The oral argument at the U.S. Court of Appeals for the Ninth Circuit in the Naruto v. Slater case is scheduled for July 12th in San Francisco.  [Notice].  I will post the video of the oral argument once it is available.  This case concerns whether a monkey — more specifically, a Crested Macaque — that used a photographer’s camera to take a selfie portrait can be considered an “author” under the Copyright Act.  The briefs are available [here].

For more on the background of the case, this is the link to the Wikipedia entry: [Link].

By the way, in the unique town of Boulder, CO a city regulation requires all public signage to refer to dog “guardians” rather than dog “owners.”  [Link].

Update 7/13/2017

We often see pictures of judges or justices being sworn-in; but, we rarely have a chance to observe the words of the judicial oath.  Pursuant to 28 U.S.C. §453:

The oral argument of the week is from  IPR Licensing, Inc. v. ZTE Corp.  I thought this oral argument was interesting for its discussion of obviousness issues and some good sound bites by Judge Taranto about “present invention” language and not taking “present invention” out of context.

In a previous post from months ago [link], I noted some comments by Judge Lourie about burying references.  In this oral argument, as well, Judge Lourie was quick to ask why so many references had been cited in the prosecution of the patent.  You can listen to the sound bite [here].  The patent is available [here].  There were ten columns of cited references — and an extensive family history of related applications/ patents.  Curiously, Judge Lourie asked how the invention could be non-obvious if there were hundreds of references cited by the applicant during prosecution.  I take that comment as a suggestion that there is a correlation between the number of references cited and the obviousness of an invention.  To my way of thinking, that simply does not follow.  There are many reasons to cite references.  In this case, for example, it appears there was an extensive family history and previous ITC litigation.

Moreover, the Federal Circuit’s decision in Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253 (Fed. Cir. 2012) incentivizes applicants to cite more art so that such art won’t be given more weight in a subsequent obviousness analysis.

While the ultimate burden of proof does not change, new evidence not considered by the PTO “may `carry more weight’ … than evidence previously considered by the PTO,” and may “`go further toward sustaining the attacker’s unchanging burden.'” Id. at 2251 (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (Fed.Cir.1984)). “[I]f the PTO did not have all material facts before it, its considered judgment may lose significant force” and the burden to persuade the finder of fact by clear and convincing evidence may, therefore, “be easier to sustain.” Id. Instead, the fact that references were previously before the PTO goes to the weight the court or jury might assign to the proffered evidence. Id.

Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012).

Further, if cited art is considered part of the intrinsic evidence used to assist in performing claim construction — see, e.g., this [previous post] — query whether a court can put a limit on how much intrinsic evidence an applicant elects to add to the file.

All that being said, ten columns of references is indeed a lot.

The court’s decision in IPR Licensing, Inc. v. ZTE Corp. is available [here].

The entire oral argument from IPR Licensing, Inc. v. ZTE Corp. is available [here].

According to Wikipedia, Judge Pauline Newman of the Federal Circuit will mark a major milestone next Tuesday June 20th, when she turns 90 years old.  I was planning on posting a congratulatory post next Tuesday; but, it occurs to me that there are many people in the patent community who might want to send Judge Newman a card or note of thanks for her public service.  If you are one of those people, I believe an appropriate address would be:

The Honorable Pauline Newman

United States Court of Appeals for the Federal Circuit

717 Madison Place, N.W.

Washington, D.C. 20439.

You can read more about Judge Newman’s amazing career [here].  One thing seems clear, the secret to a long and productive life must be an open mind about patent eligibility.

(For those of you in big firms, I suspect your competitors will be sending unique flower arrangements.)

With Judge Wallach on the panel in the Federal Circuit’s panel-stacking case, I’m curious if the court will look to other areas of the law, such as courts of military justice, to evaluate the fairness of panel stacking.  In U.S. v. Sullivan, the United States Court of Appeals for the Armed Forces approved of a convening authority’s practice because the selected panelists were fairly selected:

First, there is no appearance of an unfair panel in this

case. Although the convening authority deviated from the

Article 25, UCMJ, criteria by categorically excluding flag

officers from the venire panel, he provided Appellant with a

venire of fellow senior captains who were fully qualified to sit

on a court-martial panel. Indeed, we find no basis to conclude

that the convening authority selected the members on any factors

other than their “age, education, training, experience, length

of service, and judicial temperament.” Article 25(d)(2), UCMJ.

Further, the record provides no indication that these panel

members failed to fully, carefully, and appropriately consider

Appellant’s case in arriving at a verdict and sentence.

Moreover, the convening authority’s motivation in excluding flag

officers from this case was not to stack the panel against

Appellant. Rather, the convening authority relied on his

experience in concluding that the flag officers would not be

available to actually sit on the panel and hear the case.4 United

States v. Gooch, 69 M.J. 353, 358 (C.A.A.F. 2011). Based on these

circumstances, we conclude that there was no appearance of

unfairness.

Notably, the convening authority did not select panel members based on a pre-disposed point of view.

The Federal Circuit resolves its internal splits by going en banc.  The USPTO has a similar provision in that it allows all of its PTAB judges to vote whether a decision should be made precedential.  However, the USPTO has something that the Federal Circuit does not have — if the Director of the USPTO chooses to do so, he or she may enlarge a panel with additional judges in order to reconsider an initial appeal decision.  This would be the equivalent of the Federal Circuit’s Chief Judge enlarging a CAFC panel after an initial decision.  Moreover, the USPTO has notice and comment rule making at its disposal.

The PTO’s new acting Director, Joe Matal, has argued several cases before the Federal Circuit during his time in the Solicitor’s office.  One case that comes to mind is  Apple v. Ameranth, a patent eligibility case.  One sound bite that I like from that case is available here: [Listen].  In that sound bite, Mr. Matal noted that it was the Office’s position that secondary indicia could be used by a patent owner to show patent eligibility.  Implicit in his frank statement is a recognition that secondary indicia go toward resolving factual issues that underlie the patent eligibility analysis.

The PTO’s brief in the Apple v. Ameranth case — available [here] — is also instructive.  Part of that brief argued that the patent challenger had failed to provide factual evidence under step 2 of the Alice test that a claim as a whole was (1) routine and (2) conventional.  Therefore, the patent challenger failed to meet its burden of proving the patent claim to be patent ineligible.

1. The Petitioners Presented No Evidence or Argument that the Claims’ Recited Technology Is Routine and Conventional

Dependent claims 3 and 11 include the additional limitation that “the modified second menu can be linked to a specific customer at a specific table directly from the graphical user interface of” a hand-held or other computing device. A66; A67. Claims 6 through 9 and claims 13 through 16 include the additional limitations that the manual modification of the second menu is implemented via handwriting capture, handwriting recognition and conversion to text, voice capture, or voice recognition and conversion to text. A67.
The Board found that the petitioners failed to meet their burden of showing that these additional limitations require only routine and conventional technology. A42; A43.

Before the Board, Ameranth asserted that the ’733 patent’s dependent claims “include additional and independently unique inventive elements.” A1515. In particular, Ameranth asserted that “linking a particular order to a particular customer at a table was novel then and unique to mobility and wireless handhelds.” A1530. Ameranth also argued that claims 6 through 9 and claims 13 through 16 “recite particular kinds of manual modification,” and quoted statements in the press made by the petitioners that, according to

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Ameranth, confirm the novelty of the recited technologies. A1530. Because Ameranth presented separate arguments for the patentability of these dependent claims, the Board was required to consider them individually rather than treat the independent claims as representative. See Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014).

The entirety of the petitioners’ reply to Ameranth with respect to these dependent claims consisted of two sentences. First, the petitioners asserted that the claims’ additional “elements are, at most, insignificant extra-solution activity that cannot save subject matter from patent ineligibility.” A1619. The petitioners also argued that “‘linking a particular order to a particular customer at a table’ and ‘manual modification’ are classic examples of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Id.

The petitioners’ first sentence is merely a conclusion that is unaccompanied by any evidence or analysis. It did not satisfy the petitioners’ burden of showing that the challenged claims are unpatentable. See 35 U.S.C.
§ 326(e) (“the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence”); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015).

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The petitioners’ second statement—that the claimed operations could be performed manually, without a computer—is directed only to the first step of the Alice inquiry. See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (noting that “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas”). The fact that a process can be executed without a computer, however, does not address the second step of the Alice inquiry: whether the process’s actual implementation on a computer requires nonobvious technologies. All computer technology has been, within living memory, new and unconventional. The fact that it could always implement mental processes has not forever rendered it patent ineligible. See Alice, 134 S. Ct. at 2354 (“an invention is not rendered ineligible for patent simply because it involves an abstract concept”).

The petitioners failed to present any evidence or analysis showing that the technology recited in claims 3, 6-9, 11, and 13-16 is routine and conventional. They failed to make their case under Alice. The Board thus properly determined that they had not met “the[ir] burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 326(e).

2. The Petitioners’ New Arguments Were Never Presented to the Board and Are Now Waived

In this Court, the petitioners present several new arguments that the

technology recited in claims 3, 6-9, 11, and 13-16 is routine and conventional. 38

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The petitioners contend that prior art patents, admissions in the ’733 patent’s specification, and the specification’s lack of a non-prior art enabling disclosure demonstrate that the recited technology is pre-existing and generic. Because none of these arguments was presented below, they are now waived. See Baxter, 678 F.3d at 1362.

These new arguments also suffer from other deficiencies. The petitioners quote passages of the ’733 patent’s specification that they contend contemplate the use of existing technology to implement handwriting and voice capture.
Pet. Br. at 35-36. The petitioners cite a passage that notes, with respect to the handwriting capture illustrated by figure 8, that “the operator screen on the hand-held [device] can capture handwritten information specific to a customer’s requests directly on the touch-sensitive screen.” A60, col.3, ll.58-60. The petitioners also cite a passage that describes how “a server taking a drink order could select from a menu of her hand-held device’s screen ‘Iced Tea,’ and then record the voice message ‘with lemon’ using her hand-held device integral microphone.” A60, col.4, ll.18-22.

These passages simply describe the intended functioning of the claimed invention. They nowhere state that the technology for implementing handwriting and voice capture is pre-existing. In contrast, for example, to the passages of the specification that the Board relied on to establish that graphical

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user interfaces and data synchronization are conventional (A31; A32), nothing in these passages identifies commercially available software that implements the claimed functions.

Moreover, again, these passages from specification were never cited to the Board. The Board’s administrative patent judges “are not like pigs, hunting for truffles buried in the record.” Gross v. Town of Cicero, 619 F.3d 697, 702 (7th Cir. 2010). It is the petitioners who bore the burden of marshalling information to make their case.

The petitioners also contend that nothing in the ’733 patent’s specification describes non-prior art means for implementing handwriting and voice capture or linking customers’ locations to their orders. Pet. Br. at 35-37, 42. They appear to argue that such a gap compels a finding that the recited technology is ineligible.

As discussed in section IV.D.2.b of this brief, supra at pp. 27-30, when the Board’s background knowledge indicates that a recited computer function is conventional and routine, the specification’s failure to describe a non-prior art means for implementing the function can confirm that finding. See, e.g., Internet Patents, 790 F.3d at 1348. The absence of an enabling disclosure, however, does not require the Board to conclude that a recited technology is conventional. A claim may recite eligible subject matter and yet simply fail to

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satisfy the requirements of § 112(a). Claims directed, for example, to a machine for time travel, or to a process for transforming lead into gold, are patent eligible, despite the fact that their accompanying specifications have (so far) failed to describe a means for enabling these inventions. A lack of enablement does not compel a finding that a claim fails Alice’s step two.

Finally, the petitioners assert that they did cite a prior-art patent before the Board that they contend demonstrates the conventionality of handwriting capture and conversion, as well as linking an order to a customer’s location.
Pet. Br. at 37-38, 42 (discussing U.S. Patent No. 4,972,496). This patent was cited in the petitioner’s reply before the Board, but only with respect to the independent claims’ broad recitation of “manually modifying” a document on a handheld computer. A1614-1616. It was not cited in the portion of the reply that addresses the dependent claims, nor was it described in the reply as disclosing the conventionality of handwriting recognition or conversion or linking orders to locations. Because this evidence was never cited in relation to the disputed limitations, the argument is now waived. See Baxter, 678 F.3d at 1362.

Perhaps the PTO will revise its patent eligibility guidance under Mr. Matal to require factual evidence by examiners when they assert that a claim as a whole recites routine and conventional activity.  Notably, in the PTO’s Ameranth brief, it states:

You can listen to the entire oral argument [here].

You can review the court’s decision [here].

One of the interesting twists in tomorrow’s oral argument of Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. is that Nathan Kelley, the USPTO Solicitor, has entered a notice to argue the case on behalf of the USPTO.  If I am not mistaken, Mr. Kelley was serving as the interim Chief Judge of the PTAB at the time the enlarged panel was ordered.  So, this is a very rare instance, or perhaps totally unprecedented, where the Federal Circuit will be able to ask questions directly of the administrative official who ordered an enlarged Board panel.

I suppose some questions that might come up are:

1)  Why was the original panel enlarged?

2) Did the Commissioner order the enlarged panel and how were those instructions communicated?

3) How were the additional judges selected?  What criteria was used to select the additional judges?

4) Has a vote ever been taken among the PTAB judges as a whole as to whether a self-joinder decision of the  PTAB should be made precedential and what was the outcome of that vote?

5)  Did Colonel Jessup order the code red . . . . wait, we already know the answer to that one.

6)  Is the appellant correct that the decision of In re Alappat, while abrogated in part on other grounds, does not sanction the use of stacked panels?

7)  Why isn’t notice and comment rule making a better vehicle for achieving the Commissioner’s policy, especially with the option of Commissioner directed reexamination still available for an unjoined argument in this case?