In Part I of the interview we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more. Part II of the interview picked 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.
In the finale, Part III (which is below), 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 discussed when PTAB jurisdiction attaches. A light-bulb went off for me during that discussion with respect to the so-called mediation program that has as its goal the short-circuiting of appeals that ought to be unnecessary for the Board to consider.
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QUINN: So there was something that you talked about a little bit before. You just touched on the signing based on familiarity. Obviously the Board is broken down like the examining corps because you don’t want somebody with—I tell clients all the time it’s like you don’t want me working on a biotech or chemical application at all so you have to have certain familiar—within that subside who is—do you just randomly assign or do you go within that unit and say okay well these judges have a particular facility with this type of technology because bio is big, chemicals big area, not everybody knows or has the same facility. How is that decision made? And then the second part of that question was I did want to go back and get into what kind of factors do you consider when you’re thinking about expanding a panel? I’m not asking you to say well in this case we did it because or whatever, but is there like a list of factors or things that you maybe weigh one way or the other?
SMITH: To the first question, the answer varies to some degree with whether we’re talking about purely ex parte work or non-ex parte appeal work. And the difficult thing is, as the Vice Chief described, all these streams are happening at the same time so there is never any truly independence of one piece with respect to the others. Theoretically, what we could do, and I guess it’s sort of the base from which we then migrate, is with 200 judges when a case comes in of whatever type, we just do a random three-judge pull and staff the panel that way. Then we move on and just keep doing that in series with each new case comes in. However, we end up not using that method and there are a variety of reasons why. For one, we do have judges who are focused on, for example, AIA; cases so we do somewhat more restricted use of that random threesome from within that group, while recognizing that they also may be doing cases not even in the AIA realm. Even on the ex parte side, we wouldn’t do a purely random assignment of three judges anyway because, for example, 50% of our judges have served under a year and if we did it randomly, we run a substantial risk that in fact, we have three judges on a panel who have served only two weeks. So we’ve modified the protocol for the assignment away from random to one which includes multiple factors including maybe most predominantly a limited number of new judges on any given case. And we want to be sure, for example, in the AIA area, that we don’t randomly pull a panel of three on a complex biotechnology case that has no biotechnology judge on it. At the same time we’re not trying to make sure that we have three biotech judges on our biotech cases. The judges also should rely on their general knowledge of the law and ability to get steeped in the technology to decide if we certainly can get away with that and maybe use it to our advantage where we can use a panel that has maybe one or two biotechnology experienced or trained judges on the biotechnology panel and then maybe one who is not.
QUINN: It becomes mindboggling for me to try and see all the moving pieces and parts because on the one hand I understand the attraction of sort of just randomness in a way; because at times—I’m not telling you guys something you don’t know. At times in the past and there may be, there has been a situation where you look at this case from many years ago and you say interesting how those judges got it randomly or how they manage to get assigned to this case. So it can’t be something where you say I want this judge, this judge, and this judge because then people will say oh that’s because they wanted this outcome. But at the same time it has to take into account you can’t have people who don’t know the area, and then just as you were saying that—well you try and have at least one person or maybe two that have subsequent knowledge. The other question that jumped to my mind waSMITH: does the person on the panel who isn’t in that substantive area, tend to defer to those who are? I mean we don’t see that on the Federal Circuit I know and I wonder what your experience was here at the office?
MOORE: The statute requires that each of the judges have scientific ability. It doesn’t actually require particularized training in any one individual specific area. Permit me to key off of what the Chief said earlier — we do use that to advantage in some instances. For example, imagine a software controlled electro-mechanical device which is useful in a biotechnology operation. I could throw four different judges with four different specialties – biotech, electrical, mechanical, and software – on that so that that panel as a whole could understand it better and help each other through the process. And that is a huge advantage. We have at least one team here at the Board that’s truly multidisciplinary. They handle all types of cases from all types of disciplines without regard as to their own personal technical training aspects.
QUINN: You know when you just said you could pull four judges, did you mean three or did you really mean 4?
MOORE: There is no set number for expanded panels. It could be three, four, five, six, or more, so long as it is three or more. Usually it is an odd number, but not necessarily.
QUINN: Three or more okay so now and Judge you’re the one who makes the decision on the expander or is it the two of you in collaboration or is it some time depending on whose available?
SMITH: My practice is thiSMITH: That if I’m fairly convinced the panel should not be expanded, I will proceed to make that decision. If I’m of the view that it is a good candidate for expansion, I don’t think I’ve ever made that decision without also getting the view of at least the Vice-Chief Judge.
QUINN: Okay. So now what is it that you all are looking at? Is it that this is an important case so I would like this to have more voice from the Board so that maybe the Examiners and also the practice community, maybe the Federal Circuit ultimately, understands that maybe the Examiners and also the practice community, maybe the Federal Circuit ultimately, understands that this is more than just the three people involved. We wanted to spend some extra timing, care and consideration on this.
SMITH: A lot of times we see that the case may have some instructional value for people who practice before the Board or in our new AIA proceedings in a particular way. You will note that there are one or two expanded panel decisions which just came out for AIA practice and I think those would fall under the circumstance where it was thought by the panel that it should be expanded so people can take note that these are certain requirements in practicing before the Board.
QUINN: There is always the conspiracy group that wonder oh this is a deviation from the normal practice. So what really was going on? Where was the motivation? So one would be if it’s potentially instructional, would it also be maybe at least now for a while, maybe it wouldn’t be—it would be fair to say this. In some cases maybe we’re trying to include more judges now so that at the front end, everybody irons out these new processes and these new procedures and the issues of first impression. Or does that not factor in at all?
SMITH: To some extent I think that is an aspect of what the Vice-Chief Judge described; that, inasmuch as we are making some initial statements about an AIA practices for example, we have more judges involved and more blessings on the statement being made, but it’s also that because we have more judges involved it might attract more notice and therefore be seen as having heightened instructiveness.
QUINN: Okay, now this is really the last big thing I wanted to get to unless there’s anything that you all wanted to get to. And I don’t know how to phrase it but let me just throw it out there. There are times when as a practitioner and also as a commentator when people send me things and say look at what this Examiner’s done or take a look at this case or what have you. Or I’ll look at Board decisions and see what the Board is doing and the case is overturning Examiners and so forth. It seems to me and I don’t expect you to come around this part, I’m just throwing it out so you’ll know where I’m coming from, that there are certain Examiners that simply refuse to issue patents out there. There is also a belief in the community by some that the medication program was put in place in order to save face, so that it doesn’t go up to the Board and all these cases don’t go because if a lot of these cases went up to the Board it would be sort of like almost summary reversal type issues. Now I don’t see that as a problem. I think if you have a mediation thing in place that solves the problem and gets the resolution great. Maybe that could happen earlier in the process, I don’t know, and then you compound this with the fact that traditionally I think a lot of the attorneys would rather trial and file on our RCE first to try and continue to work with the Examiner for a while, before you get to the point where you say we’re obviously not going to get anything but this is important enough we’ve got to go to appeal. And then you look at the backlog and all this so I’ve thrown a lot out on the table. The place where I’d like specifically if you could comment to give us some ideas how it works for those of us who don’t work in this space as much—the mediation process. When does that occur, how does that play out? Are you satisfied with those results? Would you like to see any changes in that program?
SMITH: I think we can state very definitely that anything that happens at the examining corps that is not our responsibility happens at the corps and is not our responsibility. When cases come up on appeal, we are not shy about overturning a rejection. I think we share the interest the Agency has, which has been very clearly expressed by the Director, and we think a rejection never should have been put in place by the Examiner. We share the desire that those cases get speedy resolution in the corps, if possible, by mediation or whatever means to reduce our inventory of cases so as not to include cases in our inventory which are easily decided in favor of the rejection being removed. But most of that and how it happens is the work of the examination corps.
QUINN: Okay well let me stop you there because maybe I had a misconception. Is the mediation program under your auspices or under the corps?
MOORE: You’re talking about the appeal conferees and the program where they do the shortened paper submission?
QUINN: Right, right.
MOORE: That’s not ours. That is under the corps.
QUINN: That’s not yours?
MOORE: No we don’t manage that.
QUINN: Ah, okay. So well let me just continue to play the part of the village idiot. At what point and time does your jurisdiction then attach?
MOORE: We obtain jurisdiction over the appeal at what you might think is a very late stage in an appellate process. You have the Notice of Appeal, you have the Appeal Brief being filed, you have the Examiner’s Answer, and then you have the lapse of a time period for a Reply Brief to be filed or a Reply Brief is actually filed. It is at that point that we can take the case in and it can fall into the jurisdiction of the Board.
QUINN: Ah, okay now this is starting to make a lot more sense to me because now I see the problem. I’m asking the wrong people those questions I guess.
SMITH: Although we can say this and I think you’ll appreciate this: the absence of our involvement prior to that point does not mean we do not have interest in what happened prior to that point because, of course, as I was stating earlier, the fewer cases that don’t need to be here the better. Because cases that don’t need to be here but still are, add to our backlog and we have to devote resources—three judge resource, paralegal and administrative support resources to each of those cases. So we care that the mediation process works well, but it’s not our process.
QUINN: I see, I see. Now it makes a lot more sense and I have to confuse that I’ve been writing about some of this stuff maybe without understanding quite as much and I get comments from people and say no, no the Board needs to have jurisdiction much earlier in the process and I think what difference does it technically make but I guess maybe it does make a lot—because the perception n the industry a lot of times is we’re always concerned that you’re not getting as good a consideration from the Examiner as you could early enough by some. Some Examiners jump on it right away, interviews ahead of prosecution now but some don’t. And then if you then have to go on appeal and they can have a chance to correct it on appeal, then this process up to then has sort of been have we really had the Examiner’s attention.
MOORE: And allow me to speak to the part of it (which I can tell you as a sitting member of panels) which I find, I really don’t like. Specifically, it is less than desirable when an issue is raised for the first time or fully flushed out at the very tail end of the process.
QUINN: Yes and you know it goes both ways. As you can probably imagine sometimes I just think what am I doing? The practice is awful, the quality of the patent office is awful and I know that’s not true because people will say hey I’m having trouble on this case will you take a look at it. And it’s never the ordinary case that I get asked to look at. It’s either inevitably an attorney who has never amended the claims and only constantly made argument after filing RCE after RCE, which you’re not going to get anything like that realistically. Or you’ll look at the Examiner and say what is this Examiner—why won’t this Examiner issue—it seems like the attorney’s being reasonable. So I mean maybe the question for you all is we focus in the society anymore on the poles. This attorney is a problem, therefore the whole practice is a problem, this Examiner is a problem therefore all Examiners are the problem. You probably don’t all that many at the polls though do you? Or do you?
MOORE: I think we see a good number of high quality briefs and Examiners’ answers. I think if you look at the overall affirmance, reversal, and affirmance-in-part statistics; we come out roughly in the middle where on a claim by claim basis it’s about 50% affirmance, 50% reversal. The affirmance-in-part figure is scattered across a wide band. Which could lead you to say either someone’s doing a bad job; or on the other hand, you’re right on the line where you belong. Specifically, when decisions are falling in equal distribution on either side of the line, everything may be in balance. So I don’t want to make a general statement that we see a lot of activity at the poles because that’s not necessarily true. Yeah there are outliers, but there’s a lot of good work that goes on too and the alignment of it varies from time to time. Sometimes you see more affirmances in some areas and more reversals in other areas. But I haven’t seen too much that makes me feel that there’s principally activity only at the poles.
QUINN: Okay, last question. I’d be remiss if I had two judges here and I didn’t ask. What advice do you have for the patent bar who practices at the Board on a routine basis? What do you see that you like, what do you see that maybe you would like to see done differently or however you want to phrase it?
SMITH: I would say, bring your best. And by best, I mean the best of what you can do in your craft as a lawyer; the best meaning an honest appreciation of strengths and weaknesses of your case, thorough preparation, and I will say a respect for the time and energy of the Board. We care about the cases and doing them as well as we can and we appreciate counsel who come here caring about the cases and doing the best they can.
MOORE: And I’ll state that operationally. Show me your facts, do it directly, do it concisely and give me your best argument. Don’t try and obfuscate anything or bury us under a load of arguments.
QUINN: All right well great I learned a lot, I think this was a great—and I appreciate you both taking the time. Thank you so much.
SMITH: Our pleasure. Thank you very much.