Death to All Patents? Really? Why Inter Partes Review Shouldn’t Be Controversial

By Matt Levy
November 6, 2015

I’ll be speaking on November 17, 2015 at IAM’s Patent Law and Policy event. (It looks to be a really interesting day.) My panel has the provocative title, Death to all patents! The realities of the USPTO’s review procedures, which expresses a point of view I hear all too often.

It amazes me that a procedure like inter partes review has become so controversial, with the Patent Trial and Appeals Board being called a “patent death squad” and people talking about patent “kill rates.” The argument typically goes something like this: a high percentage of patent claims are invalidated in inter partes review (the exact percentage claimed varies), therefore the PTAB is killing patents.

While I don’t think that the evidence supports the 70% or 80% “kill rate,” the invalidation rate alone doesn’t say much about the job the PTAB is doing. Let’s look at two possible explanations:

Explanation 1:

The entire procedure is stacked against patent owners. There’s no presumption of validity and a challenger only has to prove that a patent claim is more likely than not to be invalid. Moreover, claim construction is broader than in district court, which makes it easier to invalidate claims. Plus, Administrative Patent Judges seem to have a bias against patents; it may be an unconscious bias, but it’s there. If IPR is a substitute for district court, we should get the same result either way.

Explanation 2:

Petitioners have a strong motivation to be selective about which patents to petition for review. Inter partes review may be cheaper than district court, but it isn’t cheap. Between PTO fees and legal fees, a single IPR can easily cost over $100K. Plus, failing in an IPR is very costly: 1) no court is likely to invalidate a patent if the PTO didn’t even institute an IPR; and, 2) if the PTO institutes an IPR and affirms the challenged claims, the petitioners are estopped from challenging them again, anywhere. Given the cost of being wrong, we shouldn’t be surprised that petitioners are choosing which patents to challenge fairly well.

The people who buy into some variant of the first explanation are generally the ones complaining about patent death squads. Certainly, it’s true that the PTAB uses a broader claim construction and a lower burden of proving invalidity than a district court.

But the second explanation I’ve offered is far simpler, and I think it’s more likely. Why do I think that?

First, if the PTAB was issuing consistently bad decisions, we’d expect to see a decent number of them reversed by the Federal Circuit. Nearly every PTAB IPR decision has been affirmed.

Second, even though the standards may be different from district court, there’s an important safeguard against poor decisions: there are three Administrative Patent Judges on every panel. Each judge is an experienced practitioner, and the PTAB tries to have at least one judge with relevant technical expertise on the panel. Three people on a panel means that it’s less likely that a decision will be way off. In a district court, the single judge generally has no technical expertise and the jury doesn’t either. If you read PTAB decisions in IPRs, you’ll find that they’re typically very thorough and well-reasoned, much better reasoned than district court opinions.

I understand that patent owners are upset at having the playing field leveled somewhat. They must feel like the rules of the game have changed, and, to be fair, they have to some extent. But a patent is not real property and it’s not an entitlement. It’s a temporary grant of exclusivity by the government in exchange for sharing one’s invention with the public, assuming that the invention is novel and non-obvious. If it turns out that the original patent issuance was wrong, i.e., someone else came up with the invention first, you have to give up that grant.

It’s no consolation to a patent owner whose patent has just been invalidated, but this is the right policy. We don’t want people enforcing invalid patents. IPRs are helping prevent that.

Patents are a crucial part of our economy, for both startups and existing companies. Members of my own organization, the Computer & Communications Industry Association, received over 4.5% of all patents issued in 2014. This isn’t about killing all patents; it’s about making sure we’re careful about which patents are out there.

As I’ll be talking about at my panel, I think that overall the PTAB is doing its job well. I hope you’ll come and hear what promises to be an interesting discussion.

The Author

Matt Levy

Matt Levy is Patent Counsel at the Computer and Communications Industry Association, where he handles legal, policy advocacy, and regulatory matters related to patents and is lead blogger for CCIA’s Patent Progress. He is recognized as an expert on patent litigation reform and is cited and quoted widely on the issue. Matt joined the CCIA in 2013 from private practice, where he got first-hand experience in both patent prosecution and patent litigation, including defending clients against patent assertion entities.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 30 Comments comments.

  1. Michael November 6, 2015 8:50 am

    Hi Matt,

    Nice try!

    A third explanation says that the flexibility allowed under KSR v Teleflex permits the USPTO to find all inventions obvious (except, maybe for a worm-hole generator including an element not presently known in this universe). Of course, the USPTO cannot reject all claims in all applications because this would expose the new standard for what it is – anti-invention, anti-patent, anti-progress, anti-small business ….. So the USPTO allows more than 50% of applications to keep up the charade and the PTAB does the dirty work by killing the patents that are economically significant.

    Unfortunately, the explanation you offer will appease the masses and innovation will wither and die a slow death.

    USA, USA, USA ….

    Michael

  2. Curious November 6, 2015 8:58 am

    Let’s look at two possible explanations
    This isn’t a binary choice. Assuming, for sake of argument, that the second explanation has merit, it doesn’t diminish the merits of the first explanation.

    Why do I think that?
    Because it is your job (i.e., you get paid) to think that way??

    Given the cost of being wrong, we shouldn’t be surprised that petitioners are choosing which patents to challenge fairly well.
    However, where the head of the USPTO is from Google and has stated on the record that the USPTO has issued lots of bad patents, it comes at no surprise that the PTAB has welcomed all comers. Starting with Dudas, the USPTO has had considerable anti-patent leanings.

    Between PTO fees and legal fees, a single IPR can easily cost over $100K.
    Those being sued typically are much, much better funded than those doing the suing. For a patentee asserting a patent, it has been de rigueur for the other side to go the IPR route. It is difficult enough to find enough funds to fund a litigation and then you have to add another $100K plus on top of that.

    there’s an important safeguard against poor decisions: there are three Administrative Patent Judges on every panel. Each judge is an experienced practitioner, and the PTAB tries to have at least one judge with relevant technical expertise on the panel
    Important safeguard — LOL. Have you ever been to the PTAB? Some of them have substantial anti-patent slants. Moreover, I have never seen more judges mangle the law than this group. Also, the extreme lack of dissents (as compared to other 3 judge panels) is evidence that one APJ writes the opinion and it is usually rubber stamped by the other two. The PTAB takes its marching orders from their boss who is anti-patent. Anybody who holds up the PTAB as a shining example of fairness at the USPTO is either grossly ignorant or trying to pull the wool over one’s eyes.

    Nearly every PTAB IPR decision has been affirmed.
    As a former litigator, I’m sure you appreciate that many (most?) disputes center over factual issues, and the standard of review for factual issues is “substantial evidence,” which is very deferential to the PTAB. On that basis alone, PTAB decisions will always be affirmed at a high rate.

    This isn’t about killing all patents; it’s about making sure we’re careful about which patents are out there.
    No — it isn’t about killing patents. It is about killing patents of those that cannot afford to play the sport of kings (patent litigation). It is making sure that those that can pay to play (e.g., members of the CCIA) have a huge advantage over the smaller guy. Along the same lines, it isn’t about chilling NPEs from asserting patents — it is about chilling all patentees from asserting patents, which I assume is one of the goals of the CCIA.

    IPRs are just one tool for those who are practicing “efficient infringement” — the ability of large companies to basically ignore the intellectual property of smaller-sized entities.

    I understand that patent owners are upset at having the playing field leveled somewhat
    Leveled? You would make a good standup comedian. It is nearly impossible to assert a patent these days unless you have a couple of million dollars of spare cash lying around. Again, not a problem for the big guys — but that is who you represent — right?

  3. Paul Morinville November 6, 2015 9:02 am

    Although debatable, I’ll assume your estimate of $100K to file a PTAB is accurate. $100K is truly nothing to a large company. What you fail to acknowledge is that the cost to the patent holder can be as much as a million dollars, and many patent holders have had to deal with multiple IPR’s filed against a single patent. Therefore the cost to the patent holder must be multiplied by the number of PTAB attacks. One unlucky patent holder had over 100 filed against the same patent. The difference in financial capability between large corporations and small inventors cannot be overstated. This is wiping out investment and sending contingency attorneys packing leaving inventors with no access to the courts. You are defending the indefensible.

    While you seem to say that killing a claim does not kill the patent, the claims under review are selected by the company filing the IPR. Killing that selected claim kills the patent for all practical purposes even if many of the claims remain and the patent is not fully invalidated. Hence, it may not be pleasing to your PR campaign to kill inventors, but an 80% kill rate is an accurate number.

    You also object to the use of “kill rate” and imply it is biased. However you are one of the most prolific blowhards for the term “patent troll”. At least kill rate has an understandable meaning. Please define patent troll – that would help all of us in the meaningful pursuit to bring about a fair solution by defining the problem.

    You argue that a patent is not a property right. I suspect you do not know just how absurd and doltish that statement is. First, a property right is nothing but an exclusive right, which is the sole definition of a patent in the Constitution. Secondly, there is a string of patent cases going back to the early 1800’s declaring a patent to be a property right. I admire you audacity in attempting to rewrite history, but I dare say you are incorrect.

    “Certainly, it’s true that the PTAB uses a broader claim construction and a lower burden of proving invalidity than a district court. […] First, if the PTAB was issuing consistently bad decisions, we’d expect to see a decent number of them reversed by the Federal Circuit. Nearly every PTAB IPR decision has been affirmed.” You first say that the process to invalidate a property right is much easier in the PTAB, then you argue that if PTAB were wrong they would be overruled. Your argument here is not well thought out. The PTAB flips every construct upside-down and the CAFC only affirms that they did so in the correct manner.

    “We don’t want people enforcing invalid patents.” All patents are presumed valid under black letter law. When a patent is asserted, it is necessarily valid.

  4. Night Writer November 6, 2015 9:31 am

    >>I understand that patent owners are upset at having the playing field leveled somewhat.

    Look at this in a more favorable light to improve patents: (1) patents are being killed with prior art that the USPTO didn’t find when examining the patents; (2) the best way to think of an IPR is a super-duper office action without the right to amend your claims; and, (3) complexity always favors the bigger players.

    These are issues that need to be fixed.

  5. Night Writer November 6, 2015 9:43 am

    Moreover, from my own anecdotal look at Yahoo finance, it looks like the patent “trolls” that are public companies are not being hurt that bad by the AIA, but that the small players are. This makes me think that the “reforms” were not well-thought out.

    And, reality, if you are a small player, it costs more than $100K to defend an IPR. The numbers I’ve seen put $250K at the low end with a F&R being around $400. So, a small company that is just getting traction and then a big company copies them, what happens? Big company can delay everything a year with an IPR and the small company may not be able to afford their portfolio being attacked.

    Not only that now, with all the mess every patent needs a continuation pending. What a mess.

  6. Curious November 6, 2015 9:55 am

    every patent needs a continuation pending
    A very important piece of advice. While continuation applications cannot fix big problems (e.g., killer prior art and 101 issues) they can fix lots of smaller/medium-size issues that pop up during litigation. Of course, this takes more money — not a problem if you are a big player but tough luck if you are a smaller player.

  7. Night Writer November 6, 2015 10:29 am

    >>This isn’t about killing all patents; it’s about making sure we’re careful about which patents are out there.

    You realize that the argument is that how this is being done is the problem. IPRs externalize the costs of patent examination to the applicant and plaintiff. The way to accomplish the real goal is with improved examination. Every claim that is invalidated in an IPR by prior art that was not cited in the prosecution of the patent application is a failure by the PTO.

    I do wish you (and others) would see this as an opportunity to improve the patent system and not a fight and a way to give the other side more power.

  8. Ken November 6, 2015 10:41 am

    As has been pointed out, the cost of an IPR is nothing to the “reverse trolls” – who don’t even have a standing requirement, and can thus demand concessions from poor inventors/entrepreneurs under threat of initiating something they can’t even afford to defend against.

  9. Ken November 6, 2015 10:44 am

    “But a patent is not real property and it’s not an entitlement. It’s a temporary grant of exclusivity by the government…”

    Whatever the motivation/policy/etc. in choosing to grant patents in the first place, once granted they do indeed become personal property with all the sanctity that our legal tradition bestows with such. (At least, that’s how it used to be – hopefully we’ll get back to it.)

  10. A Rational Person November 6, 2015 12:22 pm

    Mr. Levy,

    “As I’ll be talking about at my panel, I think that overall the PTAB is doing its job well. I hope you’ll come and hear what promises to be an interesting discussion.”

    Are you familiar with the recent cases of Ex Parte Bak and Ex Parte Base?

    http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013009289-10-19-2015-1

    http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013009505-10-13-2015-1

    If you are not familiar with these decisions, you can become familiar with them in minutes. Because these decisions are based on conclusory statements rather than evidence, they are only 9 pages and 5 pages long, respectively, double-spaced.

    Although these are not IPR decisions, they are very much examples of the PTAB’s recent handiwork.

    These decisions also show an utter disregard for due process and the Administrative Procedure Act by making factual determinations based on absolutely no evidence that are the basis for 35 USC 101 rejections.

    Given how little the PTAB cared about due process in these two decisions, why should we trust the PTAB to respect due process in IPR decisions?

  11. Brian Smith November 6, 2015 1:46 pm

    Matt Levy : is a PAID Hack for Google.

    All you have to do is See who is funding “CCIA not-for-profit organization”
    and WHO writes Matt Levy’s monthly paycheck

    Matt Levy : Can you tell us how much Money was given by Google over the last 5 years to CCIA ?

    http://www.ccianet.org/about/members/

    He is pushing the Google anti-patent agenda, that is what is PAID to do.

  12. IP investor November 7, 2015 2:46 pm

    “Matt Levy is Patent Counsel at the Computer and Communications Industry Association”. CCIA members include Google and Microsoft. Could it be that Mr. Levy speaks with his master’s voice?

    Tolkien had two characters that did that, Grima Wormtongue and The Mouth of Sauron.

  13. Gene Quinn November 7, 2015 3:00 pm

    Brian Smith & IP investor-

    While I don’t agree with Matt substantively on a lot of patent issues, I’m not sure calling him a “paid hack for Google” or questioning whether he is speaking with “his master’s voice” is particularly helpful. Matt is an attorney and like all attorneys he is responsible for representing the interests of his clients, or his employer in this case — the CCIA. It is hardly surprising that he would advocate positions favorable to and/or shared with members of the CCIA, including Google. But it is also hardly surprising that any attorney would advocate positions favorable to and/or shared with any client.

    I think we make a terrible mistake when we attempt to marginalize the views of those associated/affiliated with Google or other entities. Sure, recognizing a bias is helpful, but particularly so when bias is trying to be hidden and a position advocated as if no bias were present. I don’t see Matt doing that though. He is up front in his beliefs, who he works for and what they believe. If he is a hack for these and other beliefs then the rest of us could legitimately be characterized as hacks or “in the bag” for the other side of the argument. Neither characterization seems useful to me.

    I’m not saying we shouldn’t challenge his views, but I’d rather challenge the merits. There are plenty of objectively legitimate ways to challenge the wisdom and propriety of post grant review. The deck is clearly stacked against the patent owner from a procedure standpoint (i.e., you cannot amend claims despite the statute authorizing amendment, BRI, unappealable institution decisions, no presumption of validity, etc.) and there is something very wrong about a process that can easily take 10 years to issue a patent when after the fact it can so easily be stripped without any litigation safeguards. Post grant review has turned a patent into nothing more than an illusory promise, which unchecked will mean clients resort to trade secrets, something that is increasingly being discussed.

    I have no problem saying Google and others are advocating positions that will be favorable to themselves and detrimental to the patent system as a whole. Unless individual arguments are disingenuous and misleading let’s keep the focus on why that is the case rather than trying to tear down individuals.

    -Gene

  14. Paul F. Morgan November 7, 2015 3:30 pm

    Thanks for your above note Gene. I am not representing anyone, but I think there have been more than enough articles on this blog and elsewhere attacking IPRs to more than balance against this article, which does represents the opposing view.
    Among the commentator arguments above, the one I find difficult to understand is saying that patent owners cannot afford to defend against IPRs. This seems inconsistent with the fact that approximately 80% of all IPRs are filed by defendants who are already being sued for patent infringement, and some other IPRs are being filed by those threatened with suit. How is it they can afford to sue for patent infringement, which is district court litigation, and not afford to defend against the IPR they provoked by doing so?
    I have another question for the author of this article, who is asserting that the Fed. Cir. has been sustaining most IPR decisions. It is my understanding that about 40 Fed. Cir. decisions have been issued on IPR appeals so far? How many such appealed IPR decisions have been reversed or remanded? I have only heard about 3, and the actual % would be of interest.
    P.S. re one comment above, one cannot validly compare ex parte PTAB decisions that have not been appealed to the Fed. Cir. with contested case trial decisions in IPRs. That is additionally confusing recent 101 decisions with the 102 and 103 only decisions of IPRs.

  15. Night Writer November 7, 2015 5:38 pm

    Paul, the answer to your riddle regarding costs is that the small player doesn’t try to assert their patent because they know if they do that they will have IPRs filed against them.

  16. Night Writer November 7, 2015 5:42 pm

    Gene>>Unless individual arguments are disingenuous and misleading let’s

    I too think we should focus on the merit of someone’s argument, but what I have found is that the people that are being funded by the anti-patent forces don’t engage in intellectually honest arguments. They will, for example, not respond to substantive arguments in a fair way.

    I’d like to have debates that are moderated with someone like Lemley. Many of the anti-patent arguments rely on the advocate not having to engage in intellectually honest debate.

  17. Paul F. Morgan November 7, 2015 7:41 pm

    NW, if by “assert” you mean suing, that does not answer the inconsistent cost argument. If by “assert” you mean threatening to sue, that has traditionally invited a D.J. suit litigation in response, which is far more expensive, and broader in issues scope, for both side, than an IPR. If by “assert” you meant simply politely offering to license a patent for a reasonable royalty, that is not likely to trigger an IPR. Because, as you note, valid IPR’s are not cheap, except in comparison to litigation. Especially when you consider that an IPR petitioner has to first pay several thousand dollars first for an extensive prior art search to hope to find find good prior art missed by the examiner and to avoid estoppels. Then they have to prepare claim charts, declarations, arguments, etc. Even large companies [except maybe Apple?] have litigation cost budgets they have justify. Thus, as the statistic I noted shows, the vast majority of IPRs are only in response to being sued or being threatened with suit.

  18. Paul F. Morgan November 7, 2015 7:56 pm

    A valid criticism of IPRs is the present difficulty in amending claims to distinguish the newly-cited art. That is going to get remedied, and a change is in the works. But, just as now, patent owners cannot wait until late in the IPR proceeding to amend claims, because IPRs have a vital statutory time line which must be followed to avoid the huge waste of parallel D.C. litigation on the patents. Patent owners in an IPR need to request needed claim amendments promptly after they are served with the prior art and claim charts.

  19. Paul F. Morgan November 8, 2015 12:47 pm

    Re the above comment that “many disputes center over factual issues, and the standard of review for factual issues [decided in an IPR and other PTO decisions] is …very deferential to the PTAB.”
    Quite true, ever since the Sup. Ct. Zurko decision.
    However, the same 102 or 103 issues raised in a jury trial decision should be even more deferentially reviewed by the Fed. Cir., and yet a surprising number of them are reversed. In both cases, claim interpretation is the most common grounds for reversals on those 102 or 103 issues, and the Fed. Cir. clearly considers itself entitled to review the key intrinsic written record of the spec. and claims for itself whenever it wants to.
    Thus, the more likely reason for the low reversal rate of IPR decisions is the vastly more expensive and thorough prior art investigation and presentation in IPRs to APJ patent attorneys, as compared to the mere few hours of low cost ordinary examiner prior art searching and consideration in application examination. Few U.S. applicants would want to pay, for every application, the very much higher application prior art search fees charged in some foreign countries. Whereas someone actually sued for patent infringement in the U.S. will in most cases have already had the incentive to conduct a thorough and expensive prior art search. With the volume of published prior art doubling roughly every ten years, that cost will increase.

  20. Night Writer November 8, 2015 4:10 pm

    >>Thus, the more likely reason for the low reversal rate of IPR decisions is the vastly more expensive and thorough prior art investigation and presentation in IPRs to APJ patent attorneys, as compared to the mere few hours of low cost ordinary examiner prior art searching and consideration in application examination.

    This we can agree on. This is exactly what I have been saying, but I disagree that the PTO cannot vastly improve their prior art searches. The single biggest way to improve quality is to improve the prior art searches. Most good law firms will make sure that the claims are patentable over the cited art.

    And, also, basically you are saying what I have been saying that an IPR is like an office action but without the ability to continue prosecution with claim amendments.

  21. Night Writer November 8, 2015 7:41 pm

    Paul, the situation you are not accounting for and is by far the most common is a small entity not wanting to enter into the process of asserting their patents because of the fear of the IPR storm. This is by the far the most common scenario. Just play it out. You are small. You get some traction. Someone copies say a big company. What do you do? Before IPRs then there is contact and negotiations and the possibility of getting a contingent law firm. (Or even with more traction your own law suit.)

    Now, there is an IPR phase. The companies avoid the first stage of contact because they can’t afford the first IPR stage.

    (Really, Paul, ignoring that people know what is coming if they make contact is ridiculous. It is fundamental to our legal system the chill that things like IPRs can have on small entities. This is a very well understood result.)

  22. A Rational Person November 9, 2015 9:33 am

    Paul@14

    “re one comment above, one cannot validly compare ex parte PTAB decisions that have not been appealed to the Fed. Cir. with contested case trial decisions in IPRs. That is additionally confusing recent 101 decisions with the 102 and 103 only decisions of IPRs.”

    What is particularly troubling about the ex parte PTAB decisions is that they appear to show the PTAB is making decisions that are result-oriented and not based on the facts of the case in front of them. If the PTAB behaves this way in an ex parte case, there is every reason to expect the PTAB would behave this way in an IPR case.

    Furthermore, as Gene has written about with respect to two Kyle Bass IPR cases, the PTAB has also shown blatant results-oriented behavior with respect to IPR cases as well.

    So there appears to be a pattern of behavior with respect to the PTAB making its decisions based on a particular result it wants to achieve rather than the facts of the case it is deciding.

  23. Anon November 9, 2015 12:42 pm

    As an Article I “judicial” body, the PTAB has clearly shown a lack of independent thought and reasoning that would afford any modicum of providing that body a true “judicial” impartiality.

    Other administrative agency “judicial bodies” have earned more “respect” (admittedly an “emotional” label), given those bodies separation in structure and displayed reasoning that would allow one to view those bodies as closer to actual Article III courts.

    Given the preponderance of evidence, one simply cannot view the PTAB as an independent body, and the level of “weight of authority” should be minimal – if any – as to true judicial finality.

    I invite the replies of those who are expert in administrative law structure (especially executive branch agency structure).

  24. Curious November 9, 2015 1:17 pm

    So there appears to be a pattern of behavior with respect to the PTAB making its decisions based on a particular result it wants to achieve rather than the facts of the case it is deciding.
    This has been going on since the first judge was created. Unfortunately, justice is rarely blind.

    One need only look at the relative affirm/reverse rates of AJPs over the years to find that there are some that are some APJs far more likely to affirm than reverse — with the difference not being justifiable by random chance. I have my own list of APJs that I never want to see handling my appeal. I am familiar with many of the long-time APJs so I have been able to independently develop my own opinion on them. However, one rule of thumb is that the more likely an APJ is to cite Lowry/Nehls, Merck/Keller, or Leapfrog, the less likely you’ll want that APJ handling your appeal.

  25. Paul Morinville November 9, 2015 3:36 pm

    Anon, I’m not an expert on administrative courts, but I was an HR guy for a lot of years. Administrative judges are employees and can be promoted or terminated. Employees tend to follow the lead of superiors. IN the PTAB, the chain of command runs first to Michelle Lee, the former Head of Patents and Patent Strategy at Google and from there to Obama with his 20 plus current and former Google employees surrounding him in his administration.

    I suspect there is a case for bias at the PTAB based on their incredibly lopsided results and also based on their chain of command.

    We have a sick government.

  26. David November 9, 2015 6:21 pm

    Anon,

    “[L]ack of independent thought and reasoning,” whether one may “view the PTAB as an independent body,” etc. – these factors have nothing to do with an Article I administrator’s ability to resolve questions of law with finality. Only questions of law that fall within a narrow class of “public rights” may be resolved with finality by an administrator.

    Instead, if they relate to anything, it’s the concept of “expert agency,” and that agency’s ability to resolve questions of fact with finality subject to de novo review.

  27. Anon November 9, 2015 7:36 pm

    David – not so.

    Please check again your admin law and the treatment of administrative agency adjudicative functionality as it relates to its “control” or independence.

    A better answer would be along the lines of checking out the charter and structure of the administrative agency, as those portend to the lack of bias (as a direct function of independence).

  28. A Rational Person November 10, 2015 10:22 am

    Paul@25

    Not only has the PTAB shown itself to be biased, but as can be seen by reviewing the PTAB decisiosn in Ex Parte Bak and Ex Parte Base, the PTAB appears to be ignoring the due process-related requirements of the APA.

    Under Section 706 of the APA with respect to decisions by administrative judges:

    “To the extent necessary to decision and when presented, the reviewing court shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. The reviewing court shall –

    ***
    (2) hold unlawful and set aside agency action, findings, and conclusions found to be –

    ****

    (E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute . . . .

    I defy anyone to find “substantial evidence” in the decisions by the PTAB to reject the claims under 35 USC 101 in Ex Parte Bak or Ex Parte Base, because there are essentially no facts provided by the PTAB to support the rejection under Section 101 in either case. Never mind that the PTAB decisions in these cases are based on conclusory statements that appear to be incorrect.

    And I doubt that Ex Parte Bak and Ex Parte Base are exceptional decisions by the PTAB.

  29. Edward Heller November 12, 2015 1:49 pm

    I don’t know if others have pointed this out, but the standard of proof is much lower in the PTO, claim construction is BRI, and the findings of fact are virtually binding on the Federal Circuit — the same standard to overturn a jury verdict, “substantial evidence.” This if the Federal Circuit is not reversing the PTAB, it could be because of these patent infringer friendly differences. The PTAB can only be reversed for errors of law, not errors that are based at all in factual findings.

    If anyone would doubt this, imagine if Congress were to tell Pharma that they were moving all Hatch-Waxman litigation to the PTAB — which they could do under the public rights doctrine. There would be an uproar far beyond what is currently going on as everyone knows that with the lower standards of proof, etc., patents are quite easily invalidated.

  30. Curious November 15, 2015 9:11 pm

    The PTAB can only be reversed for errors of law, not errors that are based at all in factual findings.
    No — there still has to be substantial evidence to support the find of fact. Granted, a ridiculously easy standard to meet, but it still needs to be met. Moreover, any longtime reviewer of PTAB decisions can tell you that the Board likes to make findings of fact unsupported by evidence all the time.

    Personally, I wouldn’t want to take a case to the Federal Circuit on a finding of fact. However, any good appellate attorney can tell you that if you frame the issue properly, you can get a better standard of review.