I want to start 2013 with a bang! Thus, I decided to make our first article of the year my interview with the top two Administrative Patent Judges at the United States Patent and Trademark Office — Chief Judge James Moore and Vice-Chief Judge James Smith.
On November 28, 2012, I interviewed Judges Smith and Moore on the Alexandria Campus of the USPTO in the Madison Building. We sat around a modest conference table in the office of Chief Judge Smith. We chatted for approximately 60 minutes with the tape recorder app on my iPhone running. By the time the interview was transcribed, verified and fact-checked we were up against the holiday, so I decided to lead off 2013 with this inside look at the The Patent Trial and Appeal Board (PTAB).
The PTAB was newly created on September 16, 2012, to replace the Board of Patent Appeals and Interferences. The name has changed to take into account the new workload on so-called post-grant procedures ushered in by Phase II of the America Invents Act, which went into effect on September 16, 2012. The Board, however, is still the Board, and Smith and Moore have been at the helm in charge of unprecedented growth in the number of Judges. In part the growth of the Board has been to push the appeals backlog down, but perhaps primarily to be ready to handle the new responsibilities thrust on the Board by Congress under the AIA.
For those who are looking for insight into how the board operates this interview series is mandatory reading. As a patent attorney I know about the Board, and I suspect you do as well. But only very few cases are ever appealed, although that number is unfortunately growing for a variety of reasons, so how well can any of us really know the Board? Smith and Moore give us a rare glimpse into the Board and the day-to-day inner workings of the two top Administrators who themselves also work hard to seek opportunities to stay engaged and join panels whenever possible. In Part I we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more.
Without further ado, here is Part I of my three-part interview with Chief Judge Smith and Vice-Chief Judge Moore.
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QUINN: Thank you Your Honors for taking the time to sit down with me and chat. I know you’ve got an awful lot going on your plate and I appreciate the opportunity to talk to you about the Board today. Now one of the things and I know this wasn’t necessarily on the list of things that I have mentioned to either one of you that I’d like to talk about, but the news this week, I don’t know if we can not mention it, Director Kappos is stepping down so I thought that maybe we could start there and we can proceed and see where things lead; not to dwell on it but it came as a shock to me I’ll say. I heard rumors, I didn’t really believe the rumors but I wonder from you all what this is going to mean for the Board. And my guess is that maybe not quite as much as it might mean for certain other areas of the office because as administrative judges you have a certain autonomy that others within the office don’t enjoy. So I’ll throw that out there, you can go where you like.
SMITH: Our decisions in cases are not determined by the Director. Our panels operate independently and should proceed to decide cases, under the law, the same way whether he is here or not. So in that respect his departure should not create a noticeable impact. That being said, his support of our work here at the Board has been tremendous and transformative. At the end of the year we will have twice as many judges as we had at the end of 2011; that growth has allowed us to meet our enormous challenges. The number of cases being filed is an example of one of these challenges. Also, another challenge is the huge amount of work that AIA brought, which included drafting rules, vetting rules, working with the Agency to set out the proposed rules, the public hearings, the road shows, the final rules, the hearings following the final rules. All of that is very labor intensive work and we would not have been able to rise to the challenge of that work without the funding and other support that the Director has provided. So he’s certainly been key to our success so far. Hopefully it will be manifestly clear to others, including whomever his successor would be, that those are important things to keep in place.
QUINN: Judge you want to—
MOORE: As a practical matter, both the Director and the Deputy Director have evidenced extreme personal interest in Board operations. We enjoy interacting with them, on an almost daily basis, on issues that are of concern to the USPTO and the Board. Even more of a show of their interest in the Board is that they each choose to sit on panels and render decisions. The Director and Deputy are both statutory Board members, and we have thoroughly enjoyed that interaction. We especially have enjoyed our ongoing working with the Deputy Director (who has done a few more cases because she sits on a number of the routine cases with us). And we will miss the loss of one of our Board members.
QUINN: Yeah I don’t know that a lot of folks remember that they are—the director and deputy director are statutory members of the Board and it does seem, and correct me if I’m wrong, that both Director Kappos and Director Ray have taken a greater role in Board operations than some of their predecessors; by that I mean sitting on more cases. Is that true or is that just maybe my perception?
MOORE: It is certainly true for the combined Kappos-Rea team. They have sat on a larger number of cases than most previous director teams.
QUINN: And how does that go? Is that something that you all ask them to do or is it something that collectively the office decides that well this is an important case. We want to have the director and deputy director involved. Because I know maybe in part 2 of the question is sometimes I know you have expanded panels so what goes into that type of decision?
SMITH: Well, I think the most fundamental feature of their participation simply has to do with their interest in staying in tune with the Board and its operations and carrying out the statutory duty often enough to be regularly aware of what happens at the Board. So I would say it’s not even triggered by some special case with an expanded panel, but just by the normal day-to-day interest in that part of the duties.
QUINN: So is that something they would tell one or both of you hey I’m available for assignment please assign me, put me in the pool for a couple of assignments?
MOORE: That has happened on multiple occasions.
QUINN: Okay so they’re not cherry-picking cases?
MOORE: No they’re not cherry-picking any particular cases and indeed a lot of these are routine normal cases; no signals are being sent. They are participating in the statutory functions of the Board.
QUINN: I think that that’s great. It seems as if the Patent Office is operating at a different level at least from the outside over the last several years. And I know in your space in the Board with having doubling the Board size and taking on all these new responsibilities, which I’d like to get you to talk about where we stand with that and how things are going. But before we go down that path and get too much into the nitty gritty I’d like to circle back a little and talk about the resources toward the Board because I know because I follow it so much, just how involved Director Kappos has been in getting the funding that’s really necessary. And we all know I think in the industry just how much of a challenge getting funding from Congress has been over the years and the last several years it seems the office has been pretty well funded. And I can’t remember ever seeing the office, the Board; expand this way to handle the influx of cases. How are your resources? What additional resources might you be looking for or needing or wanting? And how does that process look?
SMITH: Well the good thing about our situation viewed in the grand scheme, is that at 200 judges or 225 or 250, whatever number we achieve through 2013, that total number is still a mere fraction in comparison with the number of Examiners at the Agency — 250 judges versus 8,000 Examiners. Which means our growth from 100 to 250 or so does not consume nearly as many resources in the overall Agency budget, as for example if we went from 7,000 Examiners to 14,000 Examiners. It is easier just in terms of dollars and cents to create a substantial difference in Board operations with far less money than achieving a difference of that magnitude in other areas of the Agency with the same cost to benefit ratio. The important thing is recognizing the need – which the Director and the Deputy Director clearly did, have done, are doing – and recognizing how it is important to meet those needs before crises happen. For example, we had the coming together not only of the increase in the backlog but also the run up to the new AIA jurisdiction. To meet those challenges, we really could not wait until all of those things culminated because then we would have been behind the ball. One has to move ahead to staff up in advance of those responsibilities.
QUINN: Do you have anything you want to say there because I think you’ve taken the lead in sort of in going and hiring these new judges right has that been—or am I mistaken?
MOORE: This has been such an incredible team effort. We have traveled the country several times as part of the roadshows initially for the America Invents Act. We also had another object – to get the word out that we need good judges, those we can recommend to be appointed by the Secretary of Commerce to the Board. The Chief, myself, and a number of our lead judges here at the Board have invested untold hours in reviewing literally thousands of resumes, doing hundreds of interviews, and being permitted to invite several score of judges to join the Board. We have been diligently working to bring them on, find start dates, and train them in the operational aspects of how decisions work their way through our electronic systems here. That has been a team effort involving our administrators, our judges, our entire staff at the Board and I can’t take credit for it.
QUINN: Oh no I didn’t mean to say that and maybe it’s just—I’ve seen you at a number of these events and swearing-in ceremonies and you collectively have managed to find a tremendous number of highly qualified folks. How is it that you’ve been able to persuade them to join the Board? Because I mean let’s face it—it is the government, there is a cap on the salary, if there’s bonus at the end of the year it probably pales in comparison to the bonuses that the private sector could offer. What has been the primary selling point?
MOORE: Uniquely meaningful work. It’s a job that when you’re in it, you love it. I have been in the position of Administrative Patent Judge for 11 years now, so I can speak with some experience to that. The cases are interesting, and the work is fascinating, in part because you are sitting down with two colleagues who are incredibly intelligent. As a panel,you are looking at issues of law and technology, you are privileged to debate them, you are authorized to come to a conclusion, and required to report that decision to the public in a skillful, professional way. It’s the practice of law at its finest. We really enjoy it.
SMITH: In addition to that, right now I think there is a unique appreciation on the part of very able lawyers in the patent community, that their work here at the Board can move the ball; that the reduction of the ex parte backlog from three years to one year, if we’re able to achieve that, radically changes and improves the patent system. That’s highly motivating. Similarly motivating is the impact the Board can have in the AIA area, a one year patentability trial at substantially less expense than the comparable proceeding in district court radically changes the whole patent landscape. And to have a hand in these changes that are improving the patent system, our incumbent and new judges tell us, that is the reason for them to leave big bucks, big firms, big companies and come here. They’re genuinely excited about making a mark. They can help shape patent history.
QUINN: Yeah and that’s what I hear probably as the primary—when I’m talking to the judges whether it be at the AIPLA meeting or when I come to the swearing-in ceremonies and I chat with them, that’s the one thing that overwhelmingly they point to is that this is an exciting time to be in the practice and what better way to contribute than to be on the frontlines. So do—you all view the Patent Board sort of in the frontline in this? I mean I think it’s sort of an obvious statement right? You are the frontline, you’re going to be the ones that are handling the—initially the most cases that deal with these new issues that are being created. And there really is an opportunity to be on the forefront by joining the Board now.
MOORE: It is definitely an exciting time to face some of these new issues. We have a lot of new legal issues. We have first impression issues, with various standards that need to be explored, various procedures which need to be clarified, and expectations which need to be set. It’s a very unique time to be here at the birth of these proceedings, and have a chance to start them on their course and make adjustments as we learn about them and the things we’ve done right and (hopefully) rarely done wrong.
SMITH: Of course, we recognize that AIA has brought a lot of work to our colleagues outside of the Board at the Agency, and having to do with any number of things like first inventor-to-file practices. The development of that whole regime is labor intensive and delicate work and makes those areas their own frontlines in the whole AIA war.
QUINN: And when that came out I thought to myself I don’t want to make it sound like I’m belittling what it is that the Examiners are doing, because ultimately they are the initial frontline and by frontline what I meant too was more in terms of what you were talking about Your Honor, being in the frontline of the judicial interpretation and these new questions of law. And that leaves me to and maybe it’s just me and maybe—sometimes I have a hard time finding Board cases. Maybe it’s not that I—maybe I’m not looking in the right place and I know that the whole IT system is constantly being updated and upgraded and so forth. But it strikes me that this is going to be potentially a very unique opportunity for the Board to explore these issues in a much faster way than a district court could, in a much faster way than the Federal Circuit will be able to, and to create some meaningful body of law that the practitioners can use and start to rely on. And then in turn the Examiners will use it and so forth; but then I ask myself how is anybody going to really know about this? Have you crossed that bridge? Have you thought about how do you make these decisions, these weighty decisions of first impression particularly more accessible?
SMITH: We are crossing that bridge now. We have a group of judges working internally to find the appropriate decisions, have them brought forward and designated under one of the many categories we use to categorize noteworthy decisions. Obviously, all of the public decisions are out there in general on our website under the EFOIA page; but there are 30,000 of them at any given time to wade through. So we have categories such as informative or precedential, and we’re determining whether or not there should be even additional categories for procedural cases at this point and time. We have a number of cases in the pipeline which are under active consideration. Several of them relate to the AIA procedures.
QUINN: That’s a good segue. Where do we stand at the moment in terms of the number of inter-parties that have been filed and the number of cover business methods that have been filed. I know post-grant review hasn’t started yet, but do you know where we are presently?
SMITH: Generally speaking we have about 80 AIA cases that have been filed. The number changes of course day to day, and most of those are IPR. Roughly, I think right now it’s about 60 IPRs and the remaining 20 are covered business method cases. We had some additional filings just two days ago.
Part II of the interview picks up with a comparison between the operation of the PTAB and the Federal Circuit, and then goes on to discuss the working relationship between Chief and Vice-Chief.
Part III of the interview is where things will get quite interesting for many in the patent bar. We talk about how cases are assigned to various panels, and we spend time chatting about how and why a case might be a good candidate for an expanded board. We also discuss when PTAB jurisdiction attaches. A light-bulb went off for me during that discussion.