Michelle Lee launches PTAB initiative to ‘shape and improve’ IPR proceedings

By Gene Quinn
April 10, 2017

USPTO Director Michelle Lee.

USPTO Director Michelle Lee.

Last week the United States Patent and Trademark Office (USPTO) announced that at the direction of USPTO Director Michelle Lee the Office is launching an initiative “to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review proceedings.” According to the USPTO, the purpose of the initiative is to ensure that post grant proceedings are both effective and as fair as possible.

The timing of the announcement is curious given that Michelle Lee’s days seem numbered as Director of the Office. As first reported on IPWatchdog.com (and then over 24 hours later relayed by POLITICO to POLITICO Pro subscribers without any mention of IPWatchdog.com), Commerce Secretary Wilbur Ross has interviewed at least three candidates for the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Those receiving interviews were Phil Johnson, former Vice-President for Intellectual Property Strategy & Policy for Johnson & Johnson, Randall Rader, former Chief Judge of the United States Court of Appeals for the Federal Circuit, and an unidentified patent attorney characterized by one source as a dark horse candidate.

Given that Lee’s days may be numbered as Director of the Office some are speculating that the timing of this PTAB initiative may be more than coincidental. Indeed, there is speculation that Lee may be attempting to get out in front of her successor and put whoever is the next Director in a difficult political position. Under this scenario this PTAB initiative would wrap up relatively quickly by DC standards and conclude that little or nothing needs to be done and that PTAB proceedings, including IPR proceedings, are already extremely fair and even-handed, which is of course not true. This speculation is exacerbated by the belief that whoever the next Director is will have a very different view of the PTAB than Lee. However, if Lee concludes everything at the PTAB is fine on the way out the door it might make it politically more difficult for whoever is next to make the type of change required to bring proper balance and fairness to PTAB proceedings.

In any event, according to the USPTO announcement:

This initiative will examine procedures including, but not limited to, procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute. It will evaluate the input already received from small and large businesses, startups and individual inventors, IP law associations, trade associations, and patent practitioners, and will seek to obtain more feedback regarding potential procedural enhancements.

Coke Morgan Stewart, Senior Advisor to Director Lee, is coordinating this PTAB initiative. Members of the public may submit their ideas regarding PTAB procedural reform to: PTABProceduralReformInitiative@uspto.gov.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 13 Comments comments. Join the discussion.

  1. Ken April 10, 2017 3:33 pm

    “The timing of the announcement is curious given that Michelle Lee’s days seem numbered as Director of the Office.”

    “[I]f Lee concludes everything at the PTAB is fine on the way out the door it might make it politically more difficult for whoever is next to make the type of change required to bring proper balance and fairness to PTAB proceedings.”

    Well, an optimistic view could be that she figures some kind of pro-inventor changes could be coming in any case, and she wants to at least be in a position to act like she ‘got the ball rolling’ in some sense (and perhaps try to ‘temper’ her reputation as anti-patent?).

  2. Valuationguy April 10, 2017 5:59 pm

    Well…I must say that (Acting) Director Lee certainly put an intellectual ally into the key position of coordinating the ‘improvement’ effort to ensure nothing harmful (to the infringers lobby) comes out of it. Coke Morgan practiced in EDTX for 4 years DEFENDING corporations from infringement with Kaye Scholer LLP. Additionally she was co-chair of the ABA’s IP Litigation Committee during the key run-up to the AIA being written and passed in 2011 (with inputs and recommendations from her committee undoubtedly being written into the AIA.)

  3. Bemused April 10, 2017 8:15 pm

    Here’s another take on all this: If Lee is attempting to curry favor with the current administration with the hope that she’ll end up in another government position or on a federal bench, one way might be to introduce initiatives aimed at curbing IPR abuses (it’s a long list…).

    Call me optimistic or naive, but I don’t see any upside for Lee with the current administration in (further) deconstructing the US patent system. Unless, of course, she’s planning on going back to SV for an in-house position. However, according to some of the recent scuttlebutt I’ve heard (and don’t ascribe any real value to this), she’s been angling/agitating for a seat on the CAFC.

    If the latter is indeed true, where’s the benefit to Lee personally (cause I doubt she’s the altruistic type) to put in place policies to further the goals of the infringers’ lobby?

    B

  4. Reality April 10, 2017 9:54 pm

    She also represented plaintiffs and had a big plaintiffs win at trial in EDVA.

  5. Eric Berend April 11, 2017 5:34 am

    Black is white. Up, is down. Left…is right. Orwell….reigns.

  6. Tim April 11, 2017 7:33 am

    Let us never forget how “Vringo”, now under a new symbol: FH, was completely screwed after a 12-man jury found Google, AOL, Target and Gannett “guilty” on all 14 charges, and as a stalling technique had the patent pulled at least 5 times, as Vringo was the lawful patent holder. And how 2 of 3 judges, Mayer&Wallach, didn’t see it the way the unanimous jurors saw it and “tossed the case”. The former head of the USPTO “Judge Chinn” highly dissented against the other 2 judges. Vringo took the case to the US Supreme Ct who wouldn’t even see the case. The stock went to pennies. Shareholders lost all. Only reason the stock is still listed on Nasdaq is due to a huge reverse plot that put it back to over $4.00. Yesterday it traded at $1.97. Sad to see how corrupt our courts have become. Now I understand how a couple judges can go against the safety of our citizens as they went against the President’s travel ban, and so far have put all Americans in harms way. Maybe one day we will see “tarring and feathering” come back into play. Never thought I would see the day when our courts would be against juries. Why even have them, if you don’t like the decisions. Or is there more to the Obama/Google dealings? Where did Michell Lee come from?

  7. Flippy Hambone April 11, 2017 8:23 pm

    Wonder if Google Michelle Lee will be returning to Silicon Valley after a stint in D.C.?

  8. Night Writer April 12, 2017 7:57 am

    She just sounds like a ideologue that is going to try to get her last licks in on the patent system before she goes. Good riddance. I hope she stays from patents and innovation.

  9. Tiburon April 12, 2017 12:02 pm

    It is 2017, so Google’s 2 original patents from 1997 are/have expired. They need new business revenues and have invested heavily in their moonshot driverless car technology. Google/Waymo patents to be used against Uber will be critical and so Lee needs to ensure Google/Waymo patents against Uber will hold against any IPR attempts.

  10. Tiburon April 12, 2017 12:34 pm

    Tim @ 6 –

    The judge recognized the same old pattern being played out – namely the patents were not used to build the technology. Have you even looked at the Vringo’s patents? What a mess. One can learn more from 5minutes on github then the hours and hours it would take to make sense of any innovation in those Vringo patents. Further, source code posted on github could be instantly used and leveraged. Further, treble damages has all contributed to guiding corporations away from consulting patents.

    20 years ago, Google was started with 2 guys. Anyone can do the same. In fact, today it might be even more clear how to do it – open source the technology, gain users and traction, obtain investors.

  11. Eric Berend April 12, 2017 12:53 pm

    @ 10., ‘Tiburon’:

    Here you are again, trolling to push the IP pirates’ agenda.

    Google’s rise to power was protected by the very U.S. patent jurisprudence, that you routinely disparage.

    “Anyone can do the same” – this is a flat out lie. Google destroyed the very same IP protections that protected its search algorithm, fostered its business development and empowered its market adoption against Yahoo!, AltaVista, Lycos, etc.

    Try to stick to facts, if you would prefer not to appear as the IP infringers’ sycophant on a patent advocate blog, such as this. It does seem that you are burdened with a great deal of cognitive dissonance.

  12. Tiburon April 12, 2017 1:19 pm

    Eric @ 11 –

    After investing so heavily in driverless car technology, is it not fair that Google/Waymo patents be upheld? That was the only reason Google even bothered to file patents. If Uber (or worse – a 3rd party) files IPR’s and invalidates those patents at exactly the time when Google needs those patents, then major changes will be due.

  13. Eric Berend April 13, 2017 10:01 am

    @12.: ‘Tiburon’:

    There you go again, with your cognitive dissonance. Your disingenuity is pathetically inadequate, to conceal your motives.

    If I “invested so heavily”: would you similarly believe, said investment would make it “fair” to have my resulting U.S. patent or patents, be “upheld”? Where was your similar reasoning, when it came to Vringo?

    The above post makes it extremely clear that you solely favor Google and other ‘SiliCON Valley pirates’ in the validly of their patents – and, no one else.

    NO ONE ELSE shall be considered as valid, even under the EXACT SAME TERMS or CONDITIONS – not the “heavily invested” efforts of a Vringo; nor, the very same, identical patent terms of novel innovation in one of MY U.S. patents, as in your precious masters’ U.S. patent claims.

    At this point, I must ask Gene to consider banning this poster – not merely at my behest, not merely because I have revealed the lies of this ‘Tiburon’ commentator – but rather, because he or she offers nothing that contributes to this discussion; while at the same time, sowing only obfuscation and lies.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website