A Look Back at the Legislative Origin of IPRs

By Phil Johnson
September 20, 2017

“[I]t was neither Congress’s intent nor that of most of AIA’s supporters to create an unfair IPR patent ‘killing field’.”

Observers of the U.S. patent system today may rightly wonder how six years ago the United States, then the proprietor of the best patent system in the world, could have created the inter partes review (IPR) proceedings that currently exist. The U.S. patent system is now ranked tenth in the world by the U.S. Chamber of Commerce, tied with Hungary; its decline largely attributed to the “challenges, additional cost and uncertainty “of IPR proceedings compared to other post-grant opposition systems.[1]

The truth is that Congress, the top leadership of the U.S. Patent and Trademark Office (USPTO) and most involved stakeholders at the time envisioned IPR’s quite differently, and undoubtedly would not have authorized them if they knew then what we know today. There are in fact so many differences between these originally-envisioned proceedings and the regime we have today that this article cannot begin to describe them all. Instead, it will focus on the understandings of involved stakeholders that led to the passage of the America Invents Act (AIA), if for no other reason than to provide a reminder of the vision of what might have been.

The modern idea of allowing post grant challenges of recently-issued U.S. patents traces its roots back to the discussions that led to the non-partisan 2004 report of the National Academies Sciences, Engineering and Medicine (the “National Academies Report”), entitled “A Patent System for the 21st Century,” recommending the establishment of a system of post-grant “Open Reviews” to be made available for 12 months from issuance using procedures similar to those used in European oppositions.[2] In the European Patent Office (EPO), oppositions must be filed within nine months, and are heard and decided by a panel of patent judges who routinely authorize clarifying amendments to the challenged patent claims to preserve their validities. The decisions of these panels are subject to further internal EPO review in the form of appeals taken as a matter of right. Once completed, the resulting patents may be enforced, and injunctions obtained, without further consideration of their validities. While they may be challenged in judicial proceedings brought in individual member countries, these seldom result in pre-injunction reversals of the EPO’s original determinations. As the National Academies Report noted with respect to the Open Reviews suggested for the U.S.,

“The details of design will determine whether the system is used, whether it is efficient and fair to all parties, and importantly, whether it is subject to abuses that undermine its purpose.”[3]

The National Academies Report made many other suggestions, including the adoption of a first-inventor-to-file system that would necessarily eliminate the need for patent interferences to determine first-to-invent issues.[4] In the meantime, a consensus was developing that inter partes reexamination, a then-existing form of administrative reexamination allowing continued participation by the third-party requester, was both expensive and ineffective, primarily because its processes were seemingly unending.

Against this backdrop, the nature, timing and scope of proposed U.S. post-grant challenges were hotly debated.[5] Proposals ranged from all-issues, life-of-the-patent challenges sought by defendant-oriented stakeholders, to limited-time-limited-issue proposals favored by patent owners. During these discussions, patent owners persuasively argued that fact intensive issues relating to undocumented prior art, such as prior public use, should be addressed, if at all, immediately upon issuance. Postponing consideration of such issues would necessarily prejudice patent owners as spoliation of evidence is inevitable over time. Defendant-oriented advocates countered that life-of-the-patent challenges were already available in the forms of ex parte and inter partes reexaminations, and that it would be reasonable to replace inter partes reexamination with an adjudicative alternative of similar substantive scope to ex parte reexamination.[6]

After years of discussion, a hybrid “two-window” compromise was reached allowing for initial all-issue challenges (later named PGR), followed by life-of-the-patent limited-issue IPR’s. Key to the compromise were assurances that IPR’s would not become vehicles to harass patent owners. Effective protections would be built into the legislation that would enable patent owners to rely on their granted patent rights to protect the continuing investments needed to develop and market their inventions. By so doing, patent owners’ “reliance rights” would be considered by the Director as a factor in deciding whether the institution of a post-grant proceeding would have an adverse effect “on the economy, integrity of the patent system, the efficient administration of the Office, and ability of the Office to timely complete proceedings instituted.” 35 U.S.C. § 316(b). Patent owners would be further protected by a robust right to amend their challenged patent claims,[7] and a heightened institution threshold relative to that used in ex parte reexamination. 35 U.S.C. § 314(a). Collectively, these protections would ensure that only facially-defective patents would be subjected to IPR review.

Important to the development of the overall structure of the AIA was the principle that the public should be encouraged to bring any challenges early. Members of the public would be allowed to bring prior art directly to the Examiner’s attention during prosecution, and be allowed to petition for institution of a PGR subject to estoppels pertaining only to issues actually raised.[8] Challengers would be discouraged from waiting to petition for IPR reviews by limiting the substantive scope of IPR’s, lowering the IPR institution rate as compared to ex parte reexaminations, and heightening the applicable IPR estoppel to the “raised or reasonably could have been raised” standard. 35 U.S.C. § 315(e).[9]

IPR’s were never envisioned as proceedings of right, but rather as exceptional proceedings that would require the Director’s approval to institute. As drafted, the Director was expressly entrusted with the obligation to use his or her executive discretion to protect patentees by declining to institute, or by terminating a pending IPR, in certain circumstances. [10] Among these safeguards was the express power given to the Director to determine “if another proceeding or matter involving the patent is before the Office,” in which case “the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for . . . termination of any such matter or proceeding.” 35 U.S.C. § 315(d). In addition, the Director was expressly authorized to “take into account whether, and reject the petition because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d).[11] As a further safeguard, the Director was prohibited from instituting an IPR unless “the information presented in the petition …and any response…shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged…” § 314(a).[12]

To further discourage the use of IPR’s relative to PGR’s, IPR scope was expressly limited by specifying that an IPR petitioner may request to cancel claims “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents and printed publications.” 35 U.S.C. § 311(b), (italics added). The use of the term “consisting of” was widely understood as sharply limiting the evidence that could be considered in support of a petition to the disclosures of the prior art patents and printed publications themselves. Consideration of any other kind of prior art information not appearing within the four corners of the cited patents and publications would be prohibited. Flowing from this was the expectation that the proceedings could be streamlined, as the only evidence that should be required from the petitioner would be (a) the prior patents and publications relied upon, (b) evidence authenticating the cited references as qualifying patents or publication(s), (c) evidence explaining how the disclosures in the cited patents and publications would have been understood by those of ordinary skill in the art at the time, and (d) for obviousness challenges, evidence that the disclosures themselves provide sufficient motivation to combine to render the challenged claims obvious.

While defendant-oriented stakeholders successfully argued that a clear and convincing standard was not necessary in these proceedings, this never meant (as has since been suggested) that the presumption of validity of 35 USC 282 was not intended to apply in IPR’s.   To the contrary, it was well understood at the time, as explained by the Federal Circuit’s en banc decision in In re Etter, that “the § 282 presumption is a rule of procedure placing the burden of persuasion on him who attacks a patent’s validity.” 756 Fed 2d 852 at 858-9 (1985). There is no such presumption in ex parte reexamination because there is no such attacker; in PGR and IPR proceedings there is such an attacker and the presumption would apply. This conclusion is consistent with the text of the AIA, which expressly provides that the “petitioner shall have the burden of proving a proposition of unpatentability…” 35 U.S.C. § 316(e).

The AIA envisions the role of the PTAB in IPR proceedings to be limited to conducting those IPR’s that the Director has decided to institute. This is reflected in the language of the statute requiring the Director to determine whether the IPR should be instituted (35 U.S.C. § 314), the grant to the PTAB of IPR-PGR authority only to “(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32,” (35 U.S.C § 6(a)(4)), and the definition of the PTAB’s role in chapter 31 as being, “in accordance with section 6, [to] conduct each inter partes review instituted under this chapter” (35 U.S.C. § 316(c)).[13]

During the development of the AIA, this intentional separation of the executive function of the Director from the judicial function of the PTAB was seen as an important safeguard for patent owners. In converting the merits portion of the proceeding from an administrative function to a judicial one, a protective layer of internal appellate review was forsaken in the name of expedience. This was replaced by clearly separating those responsible for the institution phase from those who would conduct the adjudication phase. This kind of intra-agency separation is consistent with the approach of the Administrative Procedure Act, which prohibits any person engaged in the performance of pre-hearing activities (such as investigative or prosecuting functions) from participating or advising on the final merits decision. 5 U.S.C. § 554(d). This separation of personnel provides a different form of internal review, ensuring that unbiased PTAB judges will serve as a check on Director’s initial determination as to whether the threshold and other requirements for institution have been met.

Those now familiar with IPR proceedings will already have recognized how little resemblance current IPR proceedings have to what most supporters of the AIA envisioned upon its passage. In current practice, the role of the Director as an independent IPR gatekeeper never materialized because the USPTO’s implementing rules bypass the Director altogether, assigning the institution function to the PTAB, which in turn routinely assigns both the institution and final decisions to the same three judge panel. As a result, most of the safeguards against patent owner harassment were lost.

Although the statutory threshold showing required for institution has been maintained, it has been effectively torpedoed by the USPTO’s implementing regulations. Initially, these regulations prohibited patent owners from submitting like-kind testimonial evidence in opposition to a petition (37 C.F.R. § 107(c)), making it nearly impossible to rebut a petitioner’s factual allegations.[14]   While later modified in response to patent-owner outcry to allow patent owners to submit testimonial evidence, these new regulations still expressly favor the petitioner’s evidence over that of the patent owner’s even when the patent owner’s evidence is material enough to raise a genuine issue of disputed fact.[15]

Petitioners further benefit from the failure of the USPTO to promulgate regulations implementing the AIA’s intended safeguards, and from the promulgation of others never contemplated by the AIA.   For example, no regulation requires the PTAB to consider whether the same or similar prior art or arguments have been previously presented to and/or decided by the USPTO, none require the USPTO to determine if it has the ability to fairly complete the proceeding in a timely manner,[16] and none specify when the USPTO will decline institution or terminate the proceeding if either of these conditions is not met. The PTAB is thus left with a nearly unlimited ability to ignore prior USPTO determinations and to proceed with reviews even if their numbers or timings will be prejudicial to patent owners. The PTAB is further left with the discretion to institute serial challenges against the same patents no matter how duplicative they may be.

Petitioners also benefit from the PTAB’s surprising adoption of a “broadest reasonable interpretation” (BRI) claim standard, which artificially expands the scope of the challenged claims relative to how they would be interpreted in court, so that the likelihoods of them running afoul of the prior art is enhanced. Given such petitioner-friendly rules, it comes as no surprise that almost four times more IPR’s have been filed than originally projected by the PTO, nearly half of which are serial petitions bringing a second or subsequent challenge against the same patent.

The PTAB’s overt bias in favor of petitioners is further reflected by common practices which overwhelmingly promote deciding instituted IPR’s in favor of petitioners. During both the institution and merits phases of an IPR, the PTAB routinely ignores the AIA’s limits on the evidence petitioners may introduce in support of their contentions and routinely bases their final decisions on petitioners’ expert declarations which run far afield of the teachings of the cited patents and publications. And although the PTAB purports to conduct “trials,” it eschews hearing live cross examination even though it is a bedrock principle of due process, and is still “the greatest legal engine ever invented for the discovery of truth.”[17]

By failing to adopt the implementing rules needed to carry out the intent of the AIA, and by adopting other rules and procedures that are plainly skewed towards petitioners, the PTAB has intentionally tilted its IPR proceedings against patent owners. While this has been good for the PTAB, which has quadrupled in size, it was neither Congress’s intent nor that of most of AIA’s supporters to create an unfair IPR patent “killing field.”

The dialogue around the Oil States case, highlighted in the amicus briefs submitted thus far, indicate the deep level of concern around the implementation of IPR proceedings felt by innovators who rely on the patent system to provide a predictable right that warrants investment and job creation around new technologies, and why Article III courts with an independent judiciary have historically provided the due process protections necessary to adjudicate granted property rights.

The question is whether these PTAB proceedings can be fixed, and patent owner and investor confidence in the US patent system restored, or whether at this point their abolition would be more prudent. Many believe that we still have an opportunity to retool these proceedings to elevate considerations of due process and fair play over simple expedience, so that petitioners and patent owners will both be treated fairly.[18] If so, time is of the essence. America’s future competitiveness depends on it.

_______________________

[1] The US Chamber IP Index (Fifth Edition) February 2017, p. 112.

[2] Available at www.nap.edu/read/10976/chapter/6#96 , see Table I-4; see also Metal, “A Guide to the Legislative History of the America Invents Act: Part II of II,” The Federal Circuit Bar Journal, v. 21, n. 4, pg. 539 at pg. 600 (also noting a series of Congressional hearings and other activities relating to the subject).

[3] National Academies Report at 97.

[4] Id. at 83.

[5] Metal, supra at 600-605.

[6] Per the House Committee Report on the AIA, “[t]he Act converts inter partes reexamination from an examinational to an adjudicative proceeding, and renames the proceeding ‘‘inter partes review.’’ Available at www.gpo.gov/fdsys/pkg/CRPT-112hrpt98/pdf/CRPT-112hrpt98-pt1.pdf at pp. 46-47.

[7] With the understanding that the amended claims could not be broadened as compared to the original claims of the patent and that they would be subject to intervening rights. 35 U.S.C §§ 316(d) & 318(c).

[8] Per the House Committee Report, “[p]ost-grant petitioners are only estopped from raising in civil litigation or ITC proceedings those issues that they actually raised in the post-grant review.” Pg. 76. While this was clearly the intent of the AIA, because of a well-documented “scrivener’s error,” the AIA as actually enacted now applies a “raised or reasonably could have raised” estoppel in PGR proceedings as well. Ibid., Matal at 616-18 & nn.499-504 (providing a more detailed explanation of this error).

[9] Metal supra at note 380.

[10] The Director was also charged with “prescribing sanctions for…any…improper use of the proceeding (35 U.S.C. § 316(a)(6)).

[11] Metal supra at pp, 614-15.

[12] The House Committee Report makes it clear that the purpose of the threshold is to reduce the incidence of IPR institution:

  • Reasonable likelihood of success for instituting inter partes review. The threshold for initiating an inter partes review is elevated from ‘‘significant new question of patentability’’—a standard that currently allows 95% of all requests to be granted—to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success. Satisfaction of the new threshold will be assessed based on the information presented both in the petition for the proceeding and in the patent owner’s response to the petition.

Available at www.gpo.gov/fdsys/pkg/CRPT-112hrpt98/pdf/CRPT-112hrpt98-pt1.pdf at pg. 47

[13] As explained in the House Committee Report, “The Board of Patent Appeals and Interferences is replaced with the new Patent Trial and Appeal Board (‘‘Board’’). The Board is charged with (i) reviewing adverse decisions of examiners on applications and reexamination proceedings, (ii) conducting derivation proceedings, and (iii) conducting the post-grant review proceedings.” Available at www.gpo.gov/fdsys/pkg/CRPT-112hrpt98/pdf/CRPT-112hrpt98-pt1.pdf at pg. 77.

[14] As the House Committee Report explains, the statute requires that the information presented by both parties be considered in determining whether the threshold is satisfied:

Satisfaction of the new threshold will be assessed based on the information presented both in the petition for the proceeding and in the patent owner’s response to the petition.” (pg. 47).

[15] Compare 35 U.S.C § 314(a) requiring all preliminary response information to be considered to 37 CFR § 108(c) which directs that the “Board‘s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” (italics added)

[16] Metal supra at pg. 610 (referencing Senator Kyl’s view that the AIA requires the USPTO to issue such regulations.}

[17] John Henry Wigmore.

[18] See for example the Supplemental Statement of Chief Judge Paul R. Michel (ret.), submitted to the IP subcommittee of the House Judiciary Committee, dated Sept. 12, 2017, detailing many needed fixes to IPR. Available at www.ipwatchdog.com/wp-content/uploads/2017/09/Supplemental-Statement-of-Paul-R-Michel-Sept-12-2017.pdf See also Slifer, “How to improve IPRs without tossing the baby out with the bath water,” IP Watchdog, April 11, 2017, www.ipwatchdog.com/2017/04/11/how-to-improve-iprs/id=81946/ .

The Author

Phil Johnson

Phil Johnson s currently a member of the Board and Executive Committee of the Intellectual Property Owners Association (“IPO”), Co-Chapter Editor of the Sedona Conference WG10 biopharmaceutical patent litigation project, and member of the board of the Monell Chemical Senses Center. Phil recently retired as Senior Vice President - Intellectual Property Policy & Strategy of Johnson & Johnson – Law Department. Prior to April of 2014, he was Senior Vice President and Chief Intellectual Property Counsel of Johnson & Johnson where he managed a worldwide group of about 270 IP professionals, of whom over 100 were patent and trademark attorneys. Phil has previously served as the Chair of the Board of American Intellectual Property Law Education Foundation, as President of the Intellectual Property Owners Association, as President of INTERPAT, as President of the Association of Corporate Patent Counsel, as President of the Intellectual Property Owners Education Foundation, as co-founder and member of the Steering Committee of the Coalition for 21st Century Patent Reform, as Chair of PhRMA’s IP Focus Group and as Board Member of the American Intellectual Property Law Association. Phil has frequently testified before both the House and Senate Judiciary Committees about patent law reform and, more recently, abusive patent litigation.

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. Join the discussion.

  1. John Wu September 20, 2017 5:23 pm

    NAS played a big role in creating the IPR. I am studying this report for some time, and found that it has many problems. This report is also relied upon by patent reformers. It may continue causing more damages to the patent system.

  2. Patent Investor September 20, 2017 5:52 pm

    I’m very sad that Phil Johnson did not get the Directorship nomination. I hope his not getting the nod is not an indication of the administration’s ideology straying further away from favoring real inventors and favoring the money grubbing efficient infringers.

  3. Anon September 20, 2017 6:56 pm

    There is a hefty amount of CYA in this article and many of the “safeguards” were noted as extremely weak (rather than the touted ‘strong’ protections; for example, the “maybe at least one claim” is a very low hurdle).

    Other aspects – notably the very real difference between the mere right to ASK for an amendment contrasted with a direct RIGHT TO amend are seemingly glossed over here. Such was not by accident and Congress could have easily chosen different words.

    Likewise still, the difference between telling the Executive branch what it may do and merely providing ‘guidance’ and then an ample amount of choice as to discretion that is left open to the political realm of an administrative agency is also highly glossed over here.

    Bottom line here is that the spin employed by the Efficient Infringer groups worked.

    And worked well (arguably, now with the echoes of “I told you so” – TOO well).

    Attempts such as this one to paint some (non-existent) “more balanced” view are just NOT conpellling to those of us that raised alarms early and often during the actual legislative process.

    I find attempts like this to repaint and “whitewash” history more than just a bit distasteful.

  4. Bemused September 20, 2017 7:40 pm

    I second that comment about how unfortunate it was that Mr. Johnson did not get the nomination for director of the USPTO.

    Has anyone raised a violation of the Administrative Procedures Act as a basis to challenge a final order from the PTAB? I hope that SCOTUS gets to the correct decision in Oil States but if they don’t perhaps this might be another way to take yet another run at abolishing the PTAB.

  5. Gene Quinn September 20, 2017 8:20 pm

    Bemused-

    I have not seen anyone raise an APA challenge to a PTAB decision, but if anyone has been assigned a panel of more than 3 judges that absolutely should be a ground for appeal. It seems that at least several of the Judges on the Federal Circuit are uncomfortable with the Director stacking panels, although the issue has not yet been teed up for appeal (as far as I know).

    For those unfamiliar with what Bemused is talking about, the APA requires decisional independence for judges. By admission that does not seem to be happening within any fair meaning of what that term has to mean.

    See: http://www.ipwatchdog.com/2017/08/23/uspto-admits-stacking-ptab-panels-achieve-desired-outcomes/id=87206/

  6. The Time Is Now To Act September 20, 2017 8:41 pm

    Anon- Amen; and, Amen.

    Of course, the efficient infringer lobby wants to keep their baby around.

    As you point out in previous comments, perhaps the most overlooked future situation here is the lack of roll back or separability in the AIA.

    Further, I take issue with the statement in this post of “The question is whether these PTAB proceedings can be fixed”.

    Actually, in Oil States, the issue is purely constitutional. Sorry, no ‘fix the ptab’ question up for debate w SCOTUS in the case.

    It is a hallmark of the efficient infringer lobby to oh so softly attempt to move the discussion past the issue at hand to a dialogue on a future issue that is not on the table (with the ‘presumptive close’ in the argument that the outcome they most fear, the issue at hand, will not happen). Hey, innovators! Look this way and go chase this treat while I work behind your back!

    Guess what – the issue at hand, the abolition of the PTAB, is at hand. One might consider it wise to seriously put that issue in the pipe and smoke it for a bit.

    The truth is, a healthy budget for M&A and IP licensing earmarked to reward start ups is money well spent in support of innovation. The avoidance of such is what that AIA was all about. Let’s not fabricate prose to the contrary.

    Rather, it is well past time an honest dialogue in boardrooms across America about the importance of a return to rewarding invention with real dollars whether that invention was invented internally or ‘by some guy in a garage’.

    The CEO, CFO and Board can begin by a simple math exercise. Take all the money spent on challenging patents and hiding efficient infringement activity. Double it and earmark the same for M&A and licensing. Then, do the right thing to reward invention of all types and origin.

    Those named might want to get a jump start on the above exercise; depending, well, on a few things whipping in the wind these days, that planning might just be mandated by the Audit Committee.

  7. Anon September 20, 2017 9:22 pm

    Gene,

    I have to wonder about your comment of “but if anyone has been assigned a panel of more than 3 judges that absolutely should be a ground for appeal.

    As noted previously (and clearly since at least Alappat), the ability for the director to stack panels has been well within his power.

    What particular basis of the APA would (could?) challenge that?

  8. Edward Heller September 21, 2017 9:00 am

    Fix? I don’t trust fix, and no one should. No one should be able to hale a patent back into to the PTO once issued. The patent owner must be guaranteed 17 years of quiet title where only a court of law and a jury might find a patent invalid.

    I still to this day marvel at how so many seek to justify IPR on the basis of the existence of reexaminations, of which they all approve as IF there was nothing at all objectionable about reexaminations. Well let me set you straight on that point. Infringers used reexaminations to harass patent owners just as much as they now use IPR. Serial reexaminations could keep a patent tied up in the PTO until it expired. BRI forced clarifying amendments that caused patent owners to lose past damages. It was all a very sick game. What can be abused, will be abused. Reexaminations had nothing at all to do with strengthening patents for litigation. They were all about just one thing and one thing only: harassment of patent owners.

    We need to rid the system entirely of all post-grant procedures. All.

    If there is to be an opposition system, it must be pre-grant and all the time taken must be added to patent term. Further, there have to be guarantees against patent owner harassment such as standing and petitioner financing of the patent owner’s defense if the patent owner is a small entity or less.

  9. Night Writer September 21, 2017 9:00 am

    >>>“[I]t was neither Congress’s intent nor that of most of AIA’s supporters to create an unfair IPR patent ‘killing field’.”

    How come, then, when I did an internal CLE on the new IPR and CBM post-grant procedures that it was clear they would greatly lower the value of patents to everyone. Everyone I spoke knew these were going to destroy the patent system and I spoke with some people that were very high up at the PTO.

    The fact is that maybe the ignorant believed this, but anyone that worked with patents including prosecution and litigation knew this was going to be the death knell of patents. Many people I knew were trying to find a way to shift to a different area of law.

    So, PLEASE! Enough of this 1984 stuff of trying to rewrite history.

  10. Edward Heller September 21, 2017 9:15 am

    Night, I hear you. More than that, I have heard this nonsense again and again and again over the years.

    Many of the advocates of IPR were mesmerized by the European opposition system and wanted it here. At the same time, they view reexaminations as “too” slow — after all, trial would be over an damages paid before the PTO did it dirty work. Thus, we get opposition 1 right after grant and opposition 2 at any time. How much of a good thing can you get — from the point of view of the big company wanting to invalidate any patent that comes its way.

    There is little doubt that most of favoritism of PTO procedures comes from fear of juries who do not so easily do the bidding of the big company. Juries exist not because they are experts in anything, but because they guarantee fairness. Every juror is conscious of his duty to decide base on the evidence and the law. One has only to be a juror one time to understand this.

    Thus, I view criticism of juries as a fundamental assault on fairness and due process. It is about time that we all stood up in downright anger at the leadership of the patent bar (controlled by big companies) that have put the US patent system, one of the glories of the world, into such a straight.

  11. curoius September 21, 2017 10:06 am

    Night Writer – you give people in Congress WAY too much credit. Remember the ACA? It was passed without being read (or so we were told by the top Democrat). It was passed because of feelings and votes, not what the actual bill was, said, or would do. I’d imagine the AIA was passed the same way – congressmen were sold a story that sounded good, so they passed it, with little regard to whether the “story” that they voted for resembled the actual bill/law they were creating.

  12. Anon September 21, 2017 11:22 am

    with little regard to whether the “story” that they voted for resembled the actual bill/law they were creating.

    Except, curious, – and this is important – there were people like me informing the representatives of what these proposed changes were all about.

    Since I was active with my representatives, I refuse to give them ANY “out” of not understanding exactly what was being done.

  13. J. C. Cooper September 21, 2017 12:20 pm

    #3 ANON “I find attempts like this to repaint and “whitewash” history more than just a bit distasteful.” Here here!

  14. Night Writer September 21, 2017 12:51 pm

    @12 Anon

    I’ve had lunch with my Senator (cost me big). I don’t think he understood what I was saying. I think he pretended to, but probably forgot everything I said right after leaving me.

  15. The Time Is Now To Act September 21, 2017 2:19 pm

    @12 Anon, @14 Night,

    We were active personally and by committee with Rep Issa. He understood the outcome AIA and IPR would have perfectly and to whom it would benefit and who would get hurt. I will not soon forget the sense I had of what was to come during that time and the sense people on the pro side were on the take.

    Namely, that the factual basis of the troll boogeyman was not present. Issa’s actions since have only confirmed who his employers are. Certainly, not his constituents.

  16. Gene Quinn September 21, 2017 2:27 pm

    Anon @7-

    It seems that Michelle Lee was stacking the panel after an original panel was selected, adding judges to an original panel to dictate outcomes. I don’t believe in Alappat the panel was changed to add judges after the original panel was announced. When Lee added Judges after the original panel was announced she specifically put her thumb on the scale and interfered with decisional independence of the PTAB.

    Alappat is also distinquishable for at least two reasons.

    (1) Alappat dealt with a patent applicant and as such it would seem plausible that the Director would have more latitude given there is not yet a property right vested. With the USPTO stacking panels in an post grant challenge there is already a property rights vested.

    (2) In Alappat the point of the stacking was to ensure that a specific point of law was decided in a particular way so as to provoke a Federal Circuit appeal, which would settle the matter. In essence, the Alappat stacking was a one-off and even the USPTO itself became very uncomfortable with the precedent and as I understand it pledged not to use the tool in the future. With the stacking going on with IPRs there have been numerous cases with 4 or 5 PTAB judges assigned for no identifiable reason. It seems the stacking is of an entirely different magnitude, for an entirely different purpose, not intended to settle the law but to tip the balance between parties.

    As for those who will undoubtedly argue that PTAB decisions are literally always unanimous and stacking does not seem to matter, the USPTO discourages dissent, does not give judges any credit for a dissent, so PTAB judges have received the message from their superiors and do not dissent. They get unanimous decisions because that is what the Office demands of judges through behind the scenes pressure and quote/work production incentives.

    I think once someone challenges the PTAB under the APA and actually does some discovery the industry will be SHOCKED at what is revealed. APJs do not have decisional independence as most lawyers would assume that term is intended to be meant within the concepts of American jurisprudence at least.

  17. Anon September 21, 2017 4:02 pm

    Gene,

    With all due respect, it is (and has been) widely known that the judicial function within the administrative agency has one of the lowest “separations” from the political function.

    The AIA did not change that.

    As to “vested property rights,” you might reflect upon a common theme of mine and what exactly happens to those vested property rights at the separate legal point of the institution decision that CONGRESS set up in the post grant review scheme.

    It is Congress that dispensed with your first attempted distinguishing.

    Your second point of distinguishing is quite frankly immaterial to the act itself. “Why” the act was done speaks not at all to the ability to do the act.

    I still do not see any viable APA complaint here. It is (and has been) a material fact that the director has the power and authority to put her (or his) thumb on the scale of the judicial function within the administrative agency.

    By the way, this ability and the commensurate “separateness” between judicial and political functionalities are matters of admin law – and are typically set with the creation of the particular administrative agency (with only rare changes afterwards). I add this last note to reinforce the fact that the AIA had nothing at all to do with changing the particular administrative agency setup in regards to this “separateness,” and thus trying to challenge an AIA item under the APA is in a very real sense aiming at the wrong thing. You would need to aim at something else: the very structure of the administrative agency of the Patent Office.

  18. Edward Heller September 21, 2017 4:08 pm

    Excellent point there anon@18.

    That is why I suggested that if for some reason Congress wanted to keep IPR but make them constitutional, there would have to be choices given the patent owner — trial before a panel of ALJs (independent of the PTO) or a full blown jury trial with an Article III judge or magistrate. Keeping them in the PTO, a political body subject to policy agendas and control, can never be expected to give patent owners due process.

  19. Gene Quinn September 21, 2017 5:26 pm

    Anon-

    All due respect right back at you, but Congress most certainly did not dispense with my first distinguishing attempt at Alappat. The statute to this day continues to say that patents once issues are to be treated as property, as does a very long line of Supreme Court cases. That is just fact. You can choose to ignore that fact, but any attempt to say that distinguishing Alappat on those facts is meaningless is obviously incorrect. In Alappat there was no property right whatsoever — it was an application involved. Moreover, even in the one sided post grant proceedings created under the rules the burden is supposed to be on the challenger. We know whether from a realistic or ideological standpoint that doesn’t happen, but you can’t simply fluff off that difference if you want to be honest about the procedural posture.

    The second point in a vacuum is probably immaterial, but saying that when one thing happens once it is ok therefore when it happens repeatedly as a matter of course it is equally ok doesn’t always follow. Already two Federal Circuit judges have voiced concerns.

    As far as suggesting challenging the AIA under the APA… I’ve made no such suggestion. What I’ve suggested is that when someone gets around to challenging the stacking of panels under the APA it will be successful. That is not a challenge of the AIA. It is a challenge that appropriately recognizes that the Director is not allowed to look at the panel assigned and then add additional judges she knows will side with her viewpoint in order to ensure an outcome. That violates decisional independence, which I would think should be pretty clear on its face. A presidential appointee unilaterally deciding cases between parties is not what our system is about, whether that is in an Article III or an Article I tribunal. And while there may or may not be less separation between politics and Administrative Judges, Administrative Judges are guaranteed decisional independence under the APA and that is being denied by Office process.

  20. Anon September 21, 2017 8:18 pm

    Gene,

    I asked you to refer to my writings.

    You have not done so.

    If you had, then you would have realized that your “comeback” of “ The statute to this day continues to say that patents once issues are to be treated as property, as does a very long line of Supreme Court cases.” is BOTH a part of my view (and clearly so in my writings) and ALSO not related to what Congress DID do in the AIA in regards to the taking of sticks from the bundle of property rights AT the legally distinct institution decision point of post grant reviews.

    My writing postulates that what Congress did was a Constituional violation of the protections afforded property.

    But that does not change the point that – as currently written and enacted – that THAT is exactly what happens.

    I choose to ignore NO facts.

    Be that as it may, once back in the Office, what the Office has power to do, it may choose to do.

    Stacking panels – regardless of what the panel is for IS a power of the administrative agency that is the patent office.

    YOU do not get to ignore THAT fact.

    It is a fact and not as you want to put it “merely as something that happens as a matter of course.” Your reply to that effect has no legal weight. The power DOES exist. The power HAS existed. The Power is an administrative law issue. As such, “concerns” raised by anybody – including judges – matters not at all. Come back with that angle when a judge actually makes an affirmative legal ruling on the matter (and violating administrative law in the process, but is upheld in so doing).

    I see the distinction you are making as this not being an AIA challenge – my error in reading that as your end game (tied to IPRs).

    Be that as it may though, the FACT remains that the director has unfettered ability to stack panels of the PTAB.

    That is simply how the law is today, and the APA is not a mechanism to change an administrative agency’s charter and degree of separation of its political and judicial functionalities.

    What you “want” and what you “feel” as proper may be all well and good – and I would agree that those are good “wants.”

    But that is just not the (admin) law in play here.

    By the way, with stacking, NO individual judge is forced to change their view and the individual “decisional independence” is untouched. Now if a director were to Force an individual judge to change their individual decision, THEN your argument may have legs. As it is though, and given the facts that you are not at liberty to ignore or change (and no matter how “distasteful” anyone may feel about those facts), an attempt to deny stacking based on the APA is a non-starter.

  21. Edward Heller September 21, 2017 8:41 pm

    Anon and Gene, Alappat controls. The Director has authority to designate who considers rehearings. The statutory language has not changed. Then it was 35 USC 7(b). Today it is 35 USC 6(c). Compare

    Then: “Each appeal and interference shall be heard by at least three members of the Board of Appeals and Interferences, who shall be designated by the Commissioner. Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.”

    Now: “Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings.”

    That the exercise of this power is inconsistent with due process of law when property rights are involved is quite apparent. But, until the patent actually is allowed, all one gets is such administrative due process as granted by the Congress because the property in the patent is “inchoate.”

    This does illustrate why IPR are unconstitutional on due process grounds because the exercise of the power by the Director is authorized and its exercise violates due process.

    Also, the degree of independence is also important for Article III purposes, because the primary reason for an independent judiciary is to provide non political (not tied to the political branches) judges.

  22. Anon September 21, 2017 9:18 pm

    Mr. Heller,

    You continue to ignore the elephant in the room that upon the institution decision point, you no longer have ALL of the sticks in the bundle of property rights of a granted patent.

    Why you refuse to acknowledge this is simply beyond one’s ken.

    As to the degree of independence – as I mention, this is an administrative law issue.

  23. Edward Heller September 22, 2017 5:11 am

    anon, I acknowledge that you make this argument. But, just let me say, it makes no sense.

  24. Night Writer September 22, 2017 6:06 am

    The Time Is Now To Act > We were active personally and by committee with Rep Issa.

    This comment is probably the most relevant comment to what is going to happen. The Congress is a purchased group of people that are not going to act against the will of Google unless things become dire.

    So, don’t get your hopes up. One problem with patents is that it is hard to pin it to the success of the economy as a whole. Google is saying that we don’t need these start-ups. That they will provide the innovation needed. (What a joke. They have been abysmal at innovation and the person they have in charge of innovation could not even get a decent start-up going in the private sector.)

  25. Night Writer September 22, 2017 6:07 am

    (I admit I know the person in charge of their innovation division at Google.)

  26. Anon September 22, 2017 7:24 am

    Mr. Heller @ 24,

    Until you can make sense of the rather plebeian concept from property law of sticks in the bundle of property rights, may I suggest that you spend your time on basics instead of attempting to advance your other “property” theories?

    Start with a simple comparison.

    Take a freshly granted patent and list all of the rights that such an item inures.
    Then take a granted patent immediately after an institution decision has been made and compare ALL of the rights/qualities/aspects of that granted patent now dragged back into the domain of the administrative agency.

    This is a simple compare and contrast.

    For the moment, set aside any notion in your head of what property is, or the points that I am trying to impress upon you and simply do a stark comparison.

    So that I know that you are following along, please let the contrast/comparison results here.

  27. Anon September 22, 2017 7:33 am

    “please let’ => “please list”

  28. Anon September 25, 2017 9:34 am

    Still waiting, Mr. Heller.

    Shall I bookmark this thread as yet another example of how our conversations always seem to have you stopping short of the inte11ectually honest conclusion that is inevitable?

    You say that you “don’t understand,” and yet you consistently refuse to take (very easy) steps TO understand.

    Willful (and persistent) ignorance on your part is basically an abdication to my view.

    I do wish though, that the conversations could get past this point for you – for your own benefit.

  29. Anon September 29, 2017 8:49 am

    ..and instead of actually carrying forth the dialogue here, all that I can see is a snide comment from Mr. Heller at that “other blog” insinuating somehow that there is a flaw (or perhaps multiple flaws) with the understanding of Constitutional law – without any actual examples of such flaws.

    Unwilling to substantiate such name-calling and the (yet again) avoidance of discussion points that place your position(s) into question is – rather unfortunately – an oft repeated tactic of yours Mr. Heller.

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