Why did two APJs issue an identical concurring opinion in separate cases?

By Gene Quinn
January 29, 2018

Is an unseen hand manipulating PTAB decisions?On Tuesday, January 2, 2018, counsel representing patent owner St. Regis Mohawk Tribe filed a request for oral hearing with the Patent Trial and Appeal Board (PTAB) to request discovery that would have undoubtedly impacted a series of inter partes review (IPR) trials petitioned by pharmaceutical firms Mylan, Teva and Akorn. The St. Regis tribe sought discovery relating to a variety of due process concerns posed by the potential of political or third-party pressure asserted to “reach an outcome inconsistent with the binding Supreme Court and Federal Circuit precedents.”

On January 4, 2018, two days after the St. Regis tribe filed the motion; the PTAB panel delivered a stinging per curium opinion denying the request. See The PTAB Strikes Back. The PTAB panel was particularly annoyed by the fact that the St. Regis tribe did not ask permission to file a motion in advance of filing the motion.

Of course, the annoyance of the PTAB panel was contrived. The reason the St. Regis Mohawk Tribe was seeking discovery was because of an intervening action by an expanded panel of the PTAB to deny the assertion of Eleventh Amendment sovereign immunity to the State of Minnesota. The expanded panel in the Minnesota IPR cases included the Chief Judge David Ruscke, Deputy Chief Scott Boalick, Vice-Chief Judges Scott Weidenfeller and Jacqueline Wright Bonilla. Ruscke defends the practice of expanding panels, but parties are not given any notice of an expanded panel prior to a decision being entered.

Regardless of the contrived indignation of the PTAB over the St. Regis Mohawk Tribe discovery request, there is significant reason to wonder, and sufficient reason to ask, what is going on at the PTAB? This is no doubt why the St. Regis Mohawk Tribe specifically asked for: “Communications between Jacqueline Harlow and Jennifer Bisk concerning sovereign immunity or the motions to dismiss based on sovereign immunity in IPR2017-01068 and IPR2017-01186.”

A curiously specific request, but if you dig just past the surface what transpired in IPR2017-0168 and IPR2017-01186 demands both investigation and answers.

On December 19, 2017, in IPR2017-01068, an expanded panel of the PTAB denied Minnesota’s motion to dismiss and refused to recognize the claim of Eleventh Amendment sovereign immunity. The expanded panel included Ruscke, Boalick, Bonilla and Weidenfeller, as well as what appears to be the original three judge panel of Administrative Patent Judges Robert Weinschenk, Charles Boudreau and Jacqueline Harlow. In a concurring opinion in IPR2017-01068, Administrative Patent Judge (APJ) Jacqueline Harlow wrote:

I write separately to express my view that a state university, having availed itself of Patent Office procedures to secure patent rights from the public, may not subsequently invoke sovereign immunity as a shield against reconsideration by the Patent Office in an inter partes review proceeding of whether the agency improvidently granted a patent monopoly in the first instance…To my eye, therefore, far from implicating the sovereignty or dignity of the states, inter partes review simply provides a streamlined, specialized mechanism by which the Patent Office may reconsider a patent grant and correct any mistake. Accordingly, because inter partes review neither “walks, talks, [nor] squawks” like a lawsuit, FMC, 535 U.S. at 757 (internal quotation omitted), I conclude that sovereign immunity does not bar the Patent Office from conducting inter partes review of a patent owned by a state university.

Also on December 19, 2017, in IPR2017-01186, a similarly expanded panel likewise denied Minnesota’s motion to dismiss based on Eleventh Amendment sovereign immunity. In this case the Administrative Patent Judges Robert Weinschenk and Charles Boudreau were assigned, but instead of Harlow the final APJ was Jennifer Bisk, who also wrote a concurring opinion. Bisk wrote:

I write separately to express my view that a state university, having availed itself of Patent Office procedures to secure patent rights from the public, may not subsequently invoke sovereign immunity as a shield against reconsideration by the Patent Office in an inter partes review proceeding of whether the agency improvidently granted a patent monopoly in the first instance…To my eye, therefore, far from implicating the sovereignty or dignity of the states, inter partes review simply provides a streamlined, specialized mechanism by which the Patent Office may reconsider a patent grant and correct any mistake. Accordingly, because inter partes review neither “walks, talks, [nor] squawks” like a lawsuit, FMC, 535 U.S. at 757 (internal quotation omitted), I conclude that sovereign immunity does not bar the Patent Office from conducting inter partes review of a patent owned by a state university.

Notice what APJ Harlow wrote relating to IPR2017-01068 is word for word identical to what APJ Bisk wrote relating to IPR2017-01186. Indeed, the entirety of the concurring opinions are word for word identical. Obviously, the concurring opinions were shared internally in some form or fashion prior to being issued by the PTAB. But why?

It seems perfectly reasonable for the St. Regis Mohawk Tribe to want to know who actually wrote these two concurring opinions. Did APJ Harlow and APJ Bisk cooperate and jointly write a single concurring opinion filed in two separate cases? Why would two APJs not assigned to the same case take it upon themselves to collaborate in writing a single concurring opinion? Are APJs not assigned to a case typically consulted? Did someone else write those opinions for APJ Harlow and APJ Bisk to make sure this particular viewpoint was incorporated into the decisions? How did APJ Harlow and APJ Bisk have access to the concurring opinions each would file?

Clearly, APJ Harlow and APJ Bisk worked together in some form or fashion, but absent the obvious copying of their concurring opinions word-for-word the record does not suggest that Harlow was assigned or requested to consult in IPR2017-01186. Similarly, the record does not suggest that Bisk was assigned or requested to consult in IPR2017-01068. Does the PTAB allow or encourage judges not assigned to cases to weigh in and work with the panel actually assigned to the case to write an opinion?

There are numerous questions that need to be answered about these word-for-word identical concurring opinions.

Harlow and Bisk issuing identical concurring opinions is particularly problematic because the Administrative Procedure Act (APA) demands decisional independence, and prohibits political pressure from being placed upon administrative judges such as APJs.

“The APA creates a comprehensive bulwark to protect ALJs from agency interference. The independence granted to ALJs is designed to maintain public confidence in the essential fairness,” Judge Kaufman of the Second Circuit explained in Nash v. Califano.

Obviously, “public confidence in the essential fairness” of PTAB proceedings has thoroughly eroded for a variety of reasons. Notwithstanding, this latest discovery relating to the inner workings of PTAB panels makes it seem as if there may be an unseen hand manipulating PTAB decisions. If Judges not assigned to cases are collaborating with Judges on the panels actually assigned, who exactly is deciding PTAB cases? How can the parties and the public have any confidence that the Judges assigned to a particular proceeding are the Judges reaching the decision? How can they be at all certain that decisions are being made after independent consideration?

While nothing should really be surprising when it comes to the PTAB any more, there is a very serious problem when two different “judges” issue word for word identical concurring opinions in different cases on the same day, and where those concurring opinions are both written in the first person as if both APJ Harlow and APJ Bisk were the sole author expressing their own personal opinions.

In light of these two identical concurring opinions, the Saint Regis Mohawk Tribe raised the plausible possibility that ex parte oral or written communications may have occurred involving APJs on the merits panels of these cases. If such communications did occur they should be made public. The PTAB should not refuse to answer these legitimate questions, because at some point they will have to answer how and why this happened.

The Author

Gene Quinn

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

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

Discuss this

There are currently 8 Comments comments.

  1. Anon January 29, 2018 8:10 am

    Gene,

    Even aside from the questions you raise, there is a problem that the opinion (independent or otherwise) captured in:

    accordingly, because inter partes review neither “walks, talks, [nor] squawks” like a lawsuit, FMC, 535 U.S. at 757 (internal quotation omitted), I conclude that sovereign immunity does not bar the Patent Office from conducting inter partes review of a patent owned by a state university.

    Is itself false on its face as Congress directed that this alternative path TO A LAWSUIT be invoked in a body that bears the name “Trial.”

    Let alone, prior decisions made by that same body all too clearly indicating the “law suit” nature.

    Now certainly, there are differences (and some of these, for example, standing, are significant difference). But these differences come nowhere close to supporting the (copycat) assertion being rubber stamped in these different proceedings.

  2. Brian Keith Buchheit January 29, 2018 9:44 am

    Gene,

    Has anyone investigated using a bill of pure discovery available in may state court jurisdictions to find the information that the PTAB won’t grant discovery on ?

    https://www.floridabar.org/news/tfb-journal/?durl=/DIVCOM%2FJN%2FJNJournal01%2Ensf%2FAuthor%2FCD48D82DEB84C04885256E43004F37C7

    It is my understanding that exparte communications are not possible/permitted per the APA. So a finding of an exchange between PTAB ALJs writing concurrent opinions would violate the APA, as communication off the record would have most likely occurred (which gives a cause of action sufficient for a pure bill of discovery – for which additional information is necessary).

    I know many lawyers with greater experience (than mine) are out there who read your blog – so if there is a procedural reason this can’t work (or can) someone out there likely knows. Thoughts ?

    – Brian

  3. Anon January 29, 2018 10:23 am

    A law clerk somewhere is going to receive a harsh slap on the wrist.

  4. Night Writer January 29, 2018 10:28 am

    I think this may not be so notorious. The patent judges are allowed to talk to each and workout problems together. So, what if they share language.

  5. Gene Quinn January 29, 2018 10:40 am

    Brian @2-

    I am almost certain the answer is no. I am, however, familiar with the procedure. I used it once myself in New Hampshire 20 years ago to get critical information from an uncooperative third-party prior to filing a lawsuit. It worked. Bills of Discovery are quite rare, but an effective tool. I’m sure the PTO would protest vigorously.

    If you have any interest in writing this up for an article, or co-authoring let me know.

  6. B January 29, 2018 11:15 pm

    “A law clerk somewhere is going to receive a harsh slap on the wrist.”

    Probably a memo with some strong language

  7. Peter Corcoran January 30, 2018 8:16 am

    I told you so. Harlow, and many APJs like her, should not be at the PTAB. They hate patents and always have. Why do people like this get into patent law in the first place? Were they unable to find work elsewhere?

  8. AAA JJ January 30, 2018 8:52 am

    The “lifer” culture of the PTO (e.g. cutting and pasting, responding to arguments and evidence with nothing more than form paragraphs, etc.) has completely corrupted all of the “outsiders” that were hired to staff the PTAB. When there are zero consequences for lazy, shoddy work product, what else can you expect?

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