Apple, APJ Clements and final written decisions: a lethal cocktail for patents

By Steve Brachmann
June 22, 2017

In recent weeks, we’ve been reporting on unusual circumstances at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in which a potential conflict of issue might exist involving an administrative patent judge (APJ) sitting on review proceedings which were petitioned by Apple Inc. (NASDAQ:AAPL) APJ Matt Clements wrote at least one final written decision in covered business method (CBM) review proceedings following petitions by Apple, a company which Clements served as defense counsel in patent infringement proceedings prior to his hiring at PTAB. We’ve identified a series of 17 final written decisions in review proceedings petitioned by Apple where Clements served on the panel of APJs; he wrote the final written decision in four of those cases. Many of those CBM and inter partes review (IPR) proceedings challenged patents held by Smartflash and we’ve already pointed out how Clements served in the Palo Alto office for Ropes & Gray where the managing partner was one of the lead attorneys for Apple defending against Smartflash’s claims of patent infringement.

Data from legal analytics firm Lex Machina indicates that 15 percent of the 7,050 PTAB trials which have been petitioned between September 16th, 2012, and June 16th, 2017, lead to final written decisions in which all claims are invalid. When looking at trials reaching final written decisions only, nearly 70 percent (1,086 cases) of those 1,566 final written decisions found all petitioned claims to be invalid. 14 percent (219 cases) led to mixed claim findings and 16 percent (255 cases) led to all claims being upheld. Given that these are the numbers returned for all APJs at PTAB going back to September 2012, these percentages could be viewed as a benchmark average for the results of final written decisions at PTAB.

When looking at Lex Machina data for PTAB trials where Matt Clements served as an APJ, readers can see that nearly a quarter of those review proceedings lead to final written decisions where all claims are deemed invalid. And yet, when looking at the subset of final written decisions only, trials where Clements is an APJ result in a finding that all claims are invalid in 66 percent of cases.

Apple has filed a total of 371 petitions with PTAB seeking to challenge the validity of patents. 75 of those petitions (20 percent) have led to final written decisions where all claims have been found invalid. Clements has served as an APJ on 52 petitions filed by Apple; 46 percent of those petitions (24 cases) have led to final written decisions where all claims challenged by Apple have been found invalid. When just looking at the subset of final written decisions resulting from Apple petitions where APJ Clements was on the panel, 24 final written decisions deem all claims invalid while only one decision led to mixed claim findings. There are no cases where a panel including APJ Clements issued a final written decision in review proceedings petitioned by Apple where all claims have been upheld.

It is entirely possible that APJ Clements did his best to decide these cases fairly. However, the message is pretty clear: If you own a patent which is challenged by Apple at PTAB and APJ Clements is on the panel, a final written decision will wither away your property right to nothing. 

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

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 9 Comments comments.

  1. Night Writer June 22, 2017 8:33 am

    This really should be on Lee.

  2. Night Writer June 22, 2017 8:34 am

    You should try to separate out the stats for just where Clements was author of the opinion not just on the panel. My understanding is that almost always just one patent judge writes the opinion and does all the work.

  3. Night Writer June 22, 2017 8:55 am

    Societies rot from the top down. Lee was rotten. She will collect $40 million for her service to Google at the USPTO. Clements may be setting himself up for leaving the PTO and collecting for his service to Apple at the PTO.

    But, hey, what do you expect. The CAFC was selected by Google. The SCOTUS are a joke. The president is making sure that he makes lots of money while in office, etc.

    We are becoming a third-world country.

  4. Bemused June 22, 2017 12:53 pm

    Good on you, Steve. Calling out the bad apple (pun intended) is exactly what this type of unethical behavior requires. Between this article and your articles on Jenner & Block, you’ve become IPW’s muckraker. Nice work!

  5. Stephen Curry June 22, 2017 1:19 pm

    @1 Night

    The Office reminds me of my New York Knicks.
    The head honchos remind me of the present version of Phil Jackson.

    The moral to the story: The next USPTO Director is required to be a sports fan, who will have understanding of strategizing and competitors, or else he or she will get into this crazy mindset of talking about the Office needs to PLEASE all “stakeholders” while only pleasing the efficient infringers lobby. This mindset is not what is intended for the Office – the intent is to make America Great -DTrump

  6. Brian June 22, 2017 2:32 pm

    I hope some will write one or two Amicus briefs on “Agency capture” issue for Oil State. Briefs should highlight the APJ statistics on how APJ come from working for big company X then join USPTO PTAB , then decide cases at PTAB in favor of big company X, and then leave and get back to private sector and get some kind of compensation for helping the big company X at the PTAB.

  7. Gene Quinn June 22, 2017 3:36 pm

    In 24 out of 25 final written decisions with Clements on the panel Apple prevails killing all claims, and in the other case they prevail with a mixture of at least some claims being killed. So that means 100% of those patents had defects. Astonishing. Given the large statistical deviation from Clements averages one has to wonder whether bias, conscious or subconscious, is to blame.

    Funny thing about ethics as it comes to disqualifications and conflicts, the rules are set up to prevent these questions from ever being asked. That is why recusal is required and why it is unconscionable that the PTAB does not have a judicial code of conduct for its judges.

  8. step back June 23, 2017 2:15 pm

    Night Writer @3:

    Becoming?

    We are already there friend. 🙁

  9. Eric Berend June 23, 2017 4:39 pm

    @ *, ‘step’:

    You are reminding me of our friend here, ‘angry dude’…

    Should I say it, this time?

    ‘to the morgue…’ – “It” is already there!!

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