Lessons from Five Years of PTAB Trials

By Jennifer Bush
September 12, 2017

As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners.

The PTAB had some initial growing pains when the new procedures began, with the number of petitions received far exceeding the number expected. The U.S. Patent and Trademark Office requested and received much feedback via public comment, instituted rule changes, and has had its procedures and trial outcomes tested in both the Court of Appeals for the Federal Circuit and the United States Supreme Court.

Likewise, PTAB practitioners have had to evolve along with the PTAB changes, as they familiarized themselves with the procedures for this new variety of “specialized agency proceeding” within the USPTO, as it was described in Cuozzo Speed Technologies v. Lee, 579 U.S. ____ (2016). PTAB practitioners have had to adapt to the rule changes and court decisions and learn through their own experiences in PTAB trials and guidance provided by the Administrative Patent Judges presiding over the cases.

Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.

Follow the Rules

PTAB practitioners should make sure to have a comprehensive familiarity with the PTAB trial rules and procedures, to have an understanding of how rule violations are treated, and to be aware of trends in PTAB decisions that provide information about preferences that are not necessarily explicit, but nonetheless represent unwritten rules.

Some PTAB rules are set in stone and are not subject to discretion, such as length limits for certain papers in a PTAB trial proceeding and discovery limits. And while the PTAB has shown some willingness to be flexible with practitioners when they have violated rules, at other times the PTAB has strictly adhered to the rules to the peril of the party breaking them. For example, the need to seek prior authorization for motions before filing them has been strictly applied. The PTAB has sometimes refused entry of a motion where the moving party failed to first confer with the PTAB. This happened in Idle Free Systems v. Bergstrom, IPR2012-00027 (PTAB June 11, 2013)(non-precedential), a case in which the PTAB dismissed Bergstrom’s motion to amend, relying on 37 C.F.R. § 42.121(a), due to failure to confer with the PTAB about the specific contemplated amendments ahead of filing the motion. Other times the PTAB has issued a reprimand to practitioners who have filed motions without prior approval, but has allowed the motions to proceed.

PTAB practitioners also need to be aware of other unspoken rules and trends within PTAB practice. For example, the PTAB has not imposed strict limits on the number of grounds that may be filed in a petition, relying instead on page and word limits. However, knowledge of institution decision trends can alert practitioners of a typical number of grounds that are instituted, which grounds are more commonly instituted (e.g., 35 U.S.C. § 102 versus § 103), and on what basis the non-instituted grounds typically are excluded. Similarly, even before the PTAB changed the rule for petition length from a page length limitation to a word count limitation, PTAB practitioners following trends in institution decisions may not have been surprised by the change, having been witness to the PTAB struggling for a best way to implement length limitations. For example, early petitions filed using a landscape-orientation claim chart were allowed, while later petitions submitted with the same landscape orientation were rejected and had to reformat and resubmit their claim charts.

These rules, both explicit and unwritten, appear to reflect a distaste in the PTAB for some of the gamesmanship that often takes place in litigation proceedings. Indeed, some APJs have expressed disfavor toward using litigation-style tactics in PTAB trials. Some rules reflect this distaste as well. Demonstratives to be used in the oral proceedings stage of PTAB trials need to be exchanged by the parties, and provided to the PTAB along with any objections, a few days prior to the oral proceedings. The parties are encouraged to try to resolve any objections among themselves before burdening the PTAB with resolving any remaining disagreements about the demonstratives. These rules force PTAB practitioners to be more cooperative in their exchange of the demonstratives than they likely would in litigation under similar circumstances, emphasizing the PTAB’s focus on substance over tactical maneuvers.

Know Your Audience

The vast majority of Administrative Patent Judges working in the PTAB are former patent attorneys with more than a decade of experience in the private sector, most of them with patent litigation experience. APJs typically enter the PTAB with a docket of ex parte appeals, and proceed to PTAB trials once they are more experienced. As a result, these are not your typical federal court judges—most APJs have devoted most, if not their entire careers, to the practice of patent law. PTAB practitioners should be aware of these credentials, with respect to the unlikelihood of ‘pulling the wool over the eyes’ of the APJs with tactics they might use if facing judges in a forum where a lower level of familiarity with the relevant law is more common. In other words, the APJs presiding over these trials are experienced and knowledgeable; they’ve been to the puppet show and they’ve seen the strings.

As such, PTAB practitioners should expect their APJs to know the record in the case cold and should expect pointed questions in oral proceedings designed to flesh out perceived weaknesses in each side’s case. In addition, APJs often will rely on their own ability to weigh evidence in the case. The PTAB may err on the side of leaving in the record possibly improper evidence, e.g., new argument, versus excluding it upon request and a showing that it is improper for a particular stage of the case.

Focus on Facts

Ultimately, APJs want PTAB practitioners to focus on the heart of the matter: the facts at issue and the evidence of record. For example, APJs have expressed distaste for lengthy descriptions of prior art that are not fairly representative of what the reference discloses. As a result, employing tactics of this nature is likely to backfire on a PTAB practitioner by resulting in increased scrutiny by their APJs, rather than resulting in persuading the APJs that the reference says something different than it does.

Likewise, a strong command of the record in the PTAB trial proceeding is of paramount importance when the time comes for oral arguments. In the context of PTAB trials, litigation ‘polish’ is less important. Indeed, APJs often encourage PTAB practitioners to allow the person who best knows the record to present some or all of the oral proceedings, even if that person is less experienced. One APJ even suggested a willingness to provide more time for less seasoned presenters upon request.

PTAB practitioners can help educate clients on these issues. As practitioners reflect on the first few years of PTAB trials, it is likely that strong knowledge of the written and unwritten rules, understanding of APJs, and a continued focus on the facts and record of a case will continue to be important as PTAB trial evolve in the coming years. No doubt PTAB practitioner experience and knowledge of these idiosyncrasies will continue to be invaluable to success in PTAB trials.

The Author

Jennifer Bush

Jennifer Bush is an Associate of Intellectual Property with Fenwick & West. She focuses her practice on prosecuting patent applications in a wide range of technical fields, including computer software, Internet technologies, RFID, and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. Her practice also involves intellectual property strategy and counseling, as well as inter partes reviews, patent appeals and reexaminations. Jennifer has analyzed intellectual property issues for numerous due diligence and litigation matters.

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 40 Comments comments. Join the discussion.

  1. Bemused September 12, 2017 12:52 pm

    Jennifer, with all due respect this is a nice article in theory but in practice its rather useless.

    For example, you state “Ultimately, APJs want PTAB practitioners to focus on the heart of the matter: the facts at issue and the evidence of record. For example, APJs have expressed distaste for lengthy descriptions of prior art that are not fairly representative of what the reference discloses. As a result, employing tactics of this nature is likely to backfire on a PTAB practitioner by resulting in increased scrutiny by their APJs”

    Really? Tell that to the too numerous to count patent holders that have had their patents invalidated due to dubious at best prior art. Or to the patent holders who’ve had their patents invalidated because the APJs cobbled together multiple (at least in one case, ten) disparate (and often irrelevant) prior art references.

    Anyone who is being realistic knows that the PTAB panels are “death squads”. Your advice – which would be sound if the playing field were truly level – doesn’t really do anything for patent owners and practioners representing patent holders before the PTAB given the consistent bias against patent holders of that tribunal.

  2. Edward Heller September 12, 2017 5:10 pm

    Jennifer, do you think the PTAB should consider having real trials and not just oral arguments, at least to the extent that cross of experts is presented live followed, perhaps on a second day, by oral argument?

  3. Edward Heller September 12, 2017 5:13 pm

    Second question, shouldn’t the 314(a) decision be made by an examiner, perhaps without considering expert testimony that at times seems to want to plaster over failure of evidence with expert opinion?

  4. John Wu September 13, 2017 9:28 am

    Case precedents, which once worked well for a small number of judges in King’s bench, is the biggest joke in out time. Case decisions in PTAB (the borad) would to some extent depend upon judges’ personal views. All 5-4 decisions of the U.S. Supreme Court are the strongest evidence. So, litigants and the BAR always look at the composition of the Court. This is why two parties in Congress fight hard to find their men to fill court vacancies. One big problem contributing to this totally unworkable patent trial process is the high density of inventions in a given field. This gives administrative judges a great leeway to manipulate their legal reasoning for desirable results.

    The integrity of such a system can be maintained only by checking their decision quality, and removing biased and incompetent judges. However, those two components are completely missing. So, the JUSTICE process becomes game-playing process with little justice. I could not blame them for all problems we know. If I were in their positions, I would be forced to do exactly the same. Based on indirect information, I know that it is even a pain for some of them to live their lives. They have to deal with the anti-patent movement. Since all problems are created by system designs, the problems can be fixed only by restructuring the system. Another problem, which is even bigger, is the whole IPR process is absurd. Such a process was designed using the judicial concept that was invented from 700 to 1400, when all relevant sciences including probability, statistics, group theory, system dynamics, and all substantive sciences relating to evidence were unknown. After the common law model concept found its way into the every part of the political system and judicial process, no body could examine their validity. If I do a little modeling study, I can easily prove with absolute strength, all major concepts in such a common law model is invalid (many are just jokes). Strongly enough, civil code systems have fewer problems and this explain why civil code nations now can develop at much high speeds. One root problem is that all legal theories are very rough models and society must use them for necessity. However, the common law trail process let litigants try to use this huge margin of uncertainty to achieve desirable results. Such a system is destined to burn 90% of judicial resources to delivery less then a fraction of justice. Therefore, justice delivered is NOT justice for real. I predict that all common law nations are in rapid decline. I have written to lawmakers repeatedly to warn the dear consequences.

    The article depicts the board in a picture different from what I know. This is due to her unique position working in a big firm. Judges might have to pay attention to legal theories and precedents. The approach used by the board in cases of small inventors is entirely different. Simply put, judges can write completely different stories to support their decisions. In my personal experience, a panel ignored a clear definition of a term that appeared more than 500 times in Specification and then said: it was NOT defined. If we want to see real problems, we really need to examine decisions for small inventors, self-represented applicants, and small entities with limited money to burn. The PTAB has built a poor reputation by their decisions (and perhaps to save it by deleting some of them), but the system encourages the PTAB to play games. I believe that administrative judges may be under a stress to invalidate certain types of patents or affirm certain types of rejections…. So, there is no simple fix until the process designers understand the root problems.

    I hope lawyers should think about realty: Since 80’s the U.S. has grown very little on both a relative or absolute scales, and we see more and more internal problems. In comparison, China has also expanded by more than 50 times. In patent performance, South Korean creates enough competitive pressure. Lawyers can keep billing money…. but soon will wake up, finding themselves living in a second-class nation. The U.S. is moving rapidly in such a direction just like all of the FEW common law nations. The patent system is primarily responsible for the national decline. The PTAB is only a small part of the patent problems.

  5. Paul F. Morgan September 13, 2017 10:56 am

    This article makes some good of overly-politely-expressed points that trial lawyers cannot in IPRs get away with many of extended time and billing consuming practices they are used to getting away with in District Courts. E.g.. “The PTAB has sometimes refused entry of a motion where the moving party failed to first confer with the PTAB.” As developed in PTO interference practice, that is a serious breach of acceptable practice in an IPR, since and IPR has far more limited motion and discover practices – needed for its short time lines.
    A recent Fed. Cir. decision also indicates that if the telephone-conferring APJ refuses a motion for entry of additional evidence, the facts should have been made of record by a recording thereof or otherwise to preserve any appeal of any unreasonable motion refusal. The motion request should explain why that evidence could not have been presented to begin with, and why it is directly related to the 102 or 103 issues raised by the originally cited patents or publications or the other party’s rebuttals.

    However, I suggest that a far more important 5 year observation of IPRs is that Rule changes or clarifications are needed re claim substitution practice and joinders.

  6. Paul F. Morgan September 13, 2017 11:27 am

    John Wu, I could not agree more with your observation that “lawyers must face reality.” But the reality some on this blog are not facing is that Supreme Court patent decisions in recent years are NOT such “5-4” or other split decisions you are talking about, they are almost all unanimous decisions. Furthermore, that those decisions are legally binding on Fed. Cir. judges and the PTO unless and until new Congressional legislation changes the law, and a reality check also needs to be made on that likelyhood with this Congress.

  7. Anon September 13, 2017 12:19 pm

    Let’s not obfuscate the difference between “lawyers must face reality” and the ongoing efforts to point out that the Supreme Court “scoreboard” is broken.

    Change won’t happen – even and especially against odds (funded in no small part by corporate “citizens” with out-sized voices) if the “just throw up your arms and surrender” admonitions of the likes of Paul F. Morgan are listened to.

    It is infinitely better to use forums such as this to point out that the scoreboards are broken, and to engage – on the merits – as to why those scoreboards are broken.

    As to any such “reality” to be faced, I will add that attorneys have an ethical obligation NOT to the Supreme Court, but to the basis of law that even the Supreme Court must bow to.

    If no one fights a broken scoreboard “because the ones anointed “Supreme” said so” then items like Dred Scott would still rule the day.

    No thank you.

  8. Night Writer September 13, 2017 12:35 pm

    The reality is that if the Scotus feels like it they are going to uphold the Constitutionality of the IPRs. They long ago stopped caring about the Constitution.

    Just reality. I think the decision is probably go to be based on where the political winds are. Too Kennedy didn’t step down. If they are held to be uncontitutional, then it is going to be 5-4. (Kagen might go along, but Breyer, Sotomayer, and Ginsburg are sure to vote to uphold.)

    So, at best we have 3 to 3 with one on the fence Kennedy and one possibility in Kagen.

  9. Eric Berend September 13, 2017 1:20 pm

    @ #4., ‘John Wu’:

    Thank you very much for your thoughtful and very detailed comment. One point I have been warning the readers of this site about, and in particular those practitioners of the law who specialize in this practice space; in occasional comments from time to time; is nearly identical to “Lawyers can keep billing money…. but soon will wake up, finding themselves living in a second-class nation.”.

    My primary interest may well be, naturally enough, as an individual inventor, concerned with the protection of IP rights as had been traditionally practiced in the U.S.A. However, as a U.S. citizen with awareness about this issue, I cannot help but be alarmed at the willing degradation of fundamental components of whatever international economic advantage this nation has enjoyed, in these past two centuries; by those entrusted to safeguard the same.

  10. Edward Heller September 13, 2017 1:57 pm

    John, your point about a court finding that a term was not defined despite its repeated use in a specification strikes home. That was the case in In re Morris, the famous case that gave us “broadest reasonable interpretation.” The term in question was used in the specification and was used to distinguish the prior art, so it was defined and was definite. But, nevertheless, at the Federal Circuit, the court said it was not so used, and we lost. Now, that was rough justice.

  11. Anon September 13, 2017 1:59 pm

    Eric @ 9,

    Please be more precise in your labeling of attorneys, as not all attorneys are as you so label (including – notably – the editor of this blog) – vis a vis the implication of “by those entrusted to safeguard the same.”

    Just because some attorneys (who may in fact be proper patent attorneys, with being registered with the USPTO, and not mere litigators masquerading as “patent attorneys” with NO such registration) may seek to diminish (and denigrate) a strong patent system, by no means does that speak either of the group of (proper) patent attorneys as a whole, or even any semblance of a significant fraction thereof.

  12. Anon September 13, 2017 2:01 pm

    Mr. Heller,

    Your loss at In re Morris was far more complicated than your instant retelling.

    Let’s not forget the whole story there.

  13. Edward Heller September 13, 2017 2:41 pm

    Perhaps we ought to consider simply getting rid of 103 entirely, and rely on 101’s “new” or “improved.” The improvement part should be left to the courts for the time being.

    In order that 103 not creep back in through “invents,” define invents or invention as the reduction to practice of a new or improved machine, manufacture, composition or process.

  14. Anon September 13, 2017 4:25 pm

    Mr. Heller, the situation you describe is exactly why we have the mess that we have in that the Supreme Court is acting as if the Act of 1952 never happened.

    What you seem to want to portray as some new feature is actually the current bug.

  15. Edward Heller September 13, 2017 5:35 pm

    Anon, then you support repeal of 103 with some emphasis on new and improved?

    If subject matter that has been reduced to practice (including by filing a specification compliant with 112(a)) is directed to a new or improved machine, etc., then that should end the inquiry into a patentable advance?

  16. Anon September 13, 2017 5:39 pm

    Mr. Heller,

    I support the Supreme Court not making up the law.

    This would be the opposite of what you are suggesting with this very odd “repeal of 103” nonsense.

  17. Anon September 13, 2017 6:58 pm

    Although it is a tangent to the purpose of this article, the mentioned case of Idle Free Systems, Inc. v. Bergstrom Inc. is highliy valuable to the recent discussion (and rather adamant positions) concerning the difference between a right to ask for an amendment and an (unfettered) right TO amend.

    Perhaps Gene will read the linked case – as well as the IPR decision, available on the USPTO website, and comment on the “fetteredness” that attaches when (and how) a request is made, but not to the “liking” of the PTAB.

  18. Edward Heller September 13, 2017 7:53 pm

    anon, you do recognize, I hope, that the Statute of Monopolies and its limitation of patents to new manufactures not used before (by others) or not invented by others was actually a codification of the common law, not some new requirement? The common law is actually part of our law unless changed by statute. So, when you say, “not make up” the law, I hope you do not include “following the law” within the ambit of your criticism?

    I have noted that in England prior to 1800, the prior art did not have to be identical to the claimed invention in order to constitute prior use or prior invention. The question presented was whether the differences related to usefulness — whether the differences were material in terms of functionality.

    The American courts for a very long time adhered to the very same idea in looking for changes in functionality, something really new and not just more of the same despite facial differences. Hotchkiss, A&P, Anderson’s Black Rock, Eibel Processing all looked to whether there was new functionality.

    Now these are truly factual inquiries, not matters of opinion. What I truly would like is to get the experts out of the way in terms of testifying on the ultimate conclusion of obviousness. If the claimed subject matter is new, and if it provides some new functionality different in kind, a distinction with a difference. the inventor should get a patent.

    The new functionality should be described in the patent itself. That is what they do in Europe to support inventive step (problem->solution). The test is very objective, IMHO.

    In other words, back to the future. We made a mistake in ’52 in creating 103.

  19. Anon September 13, 2017 8:20 pm

    Mr. Heller,

    Your historical bent of common law ends with our Constitution and the allocation of authority to write the statutory law that is patent law to one single branch of OUR government.

    You seem to lose focus of the critical separation of powers involved when it comes time to limit the judicial branch.

    As has been explained to you, the removal of common law power to set the meaning of “invention” was a critical element of the 1952 Act (and was one of the reasons that Congress reacted to a too-negative Supreme Court). Or does the self-description of “the only valid patent is one that has not yet appeared before us” somehow escape your historical recollections?

  20. Ned Heller September 13, 2017 8:51 pm

    No doubt, anon, 103 represents something new in the law. I and people like Paul Cole point out that it authorizes a completely subjective test by the trial of fact — some gestalt understanding of what a person of OSITA would believe.

    Now, in court, when someone tries to introduce testimony that so and so believes something, there is an objection available. What is it?

  21. Edward Heller September 13, 2017 8:52 pm

    Should be “by the trier of fact.”

  22. Anon September 13, 2017 9:33 pm

    I do not see the point that you are trying to make with your post 20 (except perhaps, to glide over the fact that my point was correct and thus that your earlier posts cannot be correct).

    Let’s take this one step at a time and establish that conclusively before we attempt to move on, shall we?

  23. Eric Berend September 13, 2017 11:36 pm

    @ 11., ‘Anon’:

    Note, that I did not write the word “attorney” in my observation explicated there.

    That you make such presumption, speaks volumes about the validity of my prior criticisms (or, to narrow-minded expectations about my viewpoint). Where such criticisms may be applicable, I do not expect public facing demonstrations of particular stakeholders’ interests; especially given such a “sleazy paper war” that the so-called debates about the issues have been, in the patent space. I would hope, however; that ‘behind the scenes’, there might be something of ‘a word to the wise’; among attorneys whose vision can encompass the ramifications of the heavy handed influences of the past 15 years.

    To be precise, if there is a distinction to be made, then I had the legislators of the U.S. in mind, when I wrote those words. Most ‘attorneys’, are not directly involved in the enactment of legislation; although, it may be relevant that over 95% of legislators, are attorneys by profession.

    it is the CONGRESS of the United States of America, that is charged with such responsibilities. Where inventors and patent holders interests are concerned, most members, Congressmen and Senators alike, might as well be on the payroll of the IP pirates and “China, Inc.”.

  24. Anon September 14, 2017 6:27 am

    Eric,

    Presumption? I say thee nay:

    in particular those practitioners of the law

    you were saying…?

  25. Anon September 14, 2017 6:28 am

    (fyi, attorneys are practitioners of law – legislators may be attorneys, but as legislators, they are not practitioners of law)

  26. Paul F. Morgan September 14, 2017 9:23 am

    Ned, re your comment that “the British Statute of Monopolies and its limitation of patents to new manufactures not used before (by others) or not invented by others was actually a codification of the common law.” Nope, it was a limitation enacted by Parliament on the Sovereign Power of Queen Elizabeth I to grant monopolies [for a substantial payment to her] on almost anything, including salt and books.

  27. Ned Heller September 14, 2017 12:21 pm

    Paul, with all due respect, I know a bit more about the Statute of Monopolies than you do. Just for example, the statute was passed in 1624 during the reign of James VI and I (21 J C 3). It was drafted by Coke. All the limitations contained in the statute regarding illegal monopolies were already developed in the common law courts. See, e.g., the Case of Monopolies (1602).

    There is hardly a treatise writer from Britain who does not know this.

    The prohibition on courts of equity and the privy council invalidating patents was set forth in section 2. The privy council was originally going to follow, but soon (1626) Charles I had a change in views and prohibited the common law courts from entertaining suits to cancel monopoly patents (which is what they were then called.)

  28. Paul F. Morgan September 14, 2017 12:43 pm

    Thanks Ned, but the following is typical of treatise comments I had remembered:
    “. . Elizabeth I particularly was a great abuser of the system, issuing patents for common commodities such as starch and salt. Unrest eventually persuaded her to turn the administration of patents over to the common law courts, but her successor, James I, was even more abusive. Despite a committee established to investigate grievances and excesses, Parliament made several efforts to further curtail the monarch’s power. The result was the Statute of Monopolies, passed on 25 May 1624.”

  29. Edward Heller September 14, 2017 1:21 pm

    True, Paul. Late in the reign of Elizabeth, she had to cancel a large number of patents due to protests. James and Charles, though, continued the practice — largely to gain revenue for the crown — patentees were obliged to pay a large annual sum out of their profits. E.g., Mansell was obligated to pay 1000 pounds sterling per year. That made them popular with the monarch, but very unpopular with the people.

    The crown increasingly used the privy council not to protect the people from bad patents, but to prevent the common law courts from cancelling them. One thing led to another, and soon the parliament was in open war with Charles I. He lost his head, Cromwell reigned … After the restoration, came the glorious revolution that finally put the monarchy in its place. The crown stopped granting patents that clearly violated the Statute of Monopolies, even though it still maintained control of cancellation proceedings through the privy council.

  30. Jennifer September 14, 2017 2:38 pm

    @ 2: I do not. In my experience the current structure of expert testimony in declaration form only works well.
    @ 3: Many times public comment has included recommending involvement of the examining division, but it has not happened. In my experience, APJs are better equipped to make institution decisions than are examiners based no their breadth of experience.

  31. Edward Heller September 14, 2017 3:58 pm

    Jennifer, regarding live testimony: have you ever seen experts crossed in front of the court/jury?

  32. Paul F. Morgan September 14, 2017 4:19 pm

    Ned: (1) all IPR petitioner expert testimony [all in declarations] is subject to live depositions cross-examination. (2) these are evidence [not mere discovery] depositions. (3) The PTAB APJs do not accept refusals to answer, or evasive answers, to proper relevant questions. (3) if necessary, the deposition can be ordered taken in front of an APJ for the case.
    While declarations can make for better-written records than live direct live testimony, the other side has far more time to prepare more thoroughly for cross-examination of anyone signing a declaration.

  33. Edward Heller September 14, 2017 4:25 pm

    Paul, I know. But what is really important is that the trial of fact (all three judges) actually see the cross. That is what makes the ITC and trials in court must better. People can see whether the expert really believes in what he or she is saying or not.

  34. Paul F. Morgan September 14, 2017 4:30 pm

    Ned, how would using ordinary examiners improve IPRs? Only a few have law degrees, and almost none regularly have experience with disputed cases, Rules of Evidence, resolving disputed declarations and other evidence, disputed legal arguments, etc. IPR APJs do. The problems with inter partes reexaminations directly lead to APJ attorney conducted IPRs.

  35. Edward Heller September 14, 2017 5:15 pm

    Paul, 314(a): Whether “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” This is the kind of decision examiners make day to day in reexamination petitions.

    The IPR statute requires the Director to make the institution decision and the PTAB to decide the trial. The point of the statute was to separate the 314(a) decider from the 318(a) decider to provide fairness. Every patent owner reports that the PTAB has all but made up its mind after instituting. Moreover, the PTAB has a financial stake in instituting. The Director is far closer to them on a management level so that their performance appraisals and salaries can be influenced by the Director that they fulfill the Director’s policy goals.

    Not so with examiners.

    Which is why they were excluded.

  36. Edward Heller September 14, 2017 5:48 pm

    anon, we can never know what someone else thinks or believes. So to testify on what someone believes is pure conjecture.

    Try reading Rex v. Arkwright on the point of whether one of ordinary skill could build the claimed carding machine based on the disclosure. They had people of ordinary skill who testified that they could not. In earlier trials, they testified that they could.

    Whether one could or could not might be pertinent to the specification, but whether the invention is new or not new is an objective test, and whether it makes an improvement is an objective test.

    Naturally, Hotchkiss also relied on the fact that clay was known for doorknobs. Thus without any new functional improvement, there was nothing really new in the claimed doorknob. TSM the way the Federal Circuit had it was the law prior to 1952.

  37. Paul F. Morgan September 14, 2017 7:23 pm

    Ned, alleging that ordinary examiners would make IPR INSTITUTION decisions much less often than APJs is disproved by their higher institution rates for reexaminations than the APJs institution rate of IPRs. Also, it is the IPR final decision claim cancellation rate for IPRs that is of far more of concern to most people.
    [I appreciate how much IPRs are disliked by many patent attorneys it impacts, but I feel obligated to not leave unrebutted those arguments against IPRs that would not be effective or hold up. As examples, for all the hype about BRI claim interpretation and claim amendments I have yet to see any evidence of any significant % difference it makes in IPR outcomes, or any significant number of claim amendments even attempted, whereas statutory imposition of a “clear and convincing evidence” test and stricter joinder might actually make some difference.]

  38. Edward Heller September 14, 2017 7:44 pm

    Paul, then, is it your belief that Kappos took the institution decision away from the examining corps and gave it instead to the PTAB because they were too eager to order reexamination?

    I think the more likely reason for the high order rate for reexaminations was the lack of a meaningful rebuttal by the patent owner before the institution decision was made. While IPRs have flaws, that was one flaw in the prior systems that it did fix.

    Thus I think the examiner, with patent owner rebuttal, could make an adequate and supportable decision. What I also think is that it would be independent of coercion and influence from the Director.

  39. Paul F. Morgan September 14, 2017 8:07 pm

    Ned, that is the opposite of what I and others have said many times. Inter partes reexaminations in the examining corps were killed because they were taking too long to be effective for reducing litigation costs and APJ attorneys are better equipped to handle disputed evidence cases. Furthermore, reexaminations have the same opportunity for the patent owner to file a response to the petition before it is declared that IPRs do. Allegations of widespread “coercion and influence” by the Director on institution decisions in IPRs are proofless.

  40. Edward Heller September 14, 2017 9:29 pm

    Paul, no, patent owners did not have any opportunity to file anything before the examiner ordered institution of a reexamination. The patent owner had an opportunity to say something after the order but before the first office action.

    I expect he examiners could do a very good job if they had a preliminary response from the patent owner in front of him poking holes at the petitioners case.

    Regarding disputed evidence — now that is a sore point. The petitioner can rely on untested expert testimony. That is very unfortunate. Very. Smacks of lack of due process by itself.

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