PTAB Chief Judge defends APJs as having extensive legal experience

By Gene Quinn
March 8, 2018

Earlier today a spokesman from the United States Patent and Trademark Office (USPTO) reached out with a comment regarding our recently published study showing that the Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) are surprisingly inexperienced in comparison to federal district court judges. According to PTAB Chief Judge David Ruschke, the patent judges of the PTAB have “extensive legal and technical experience”.

Chief Judge Ruschke’s full comment reads:

“The USPTO has full confidence in the legal and technical capabilities of each Administrative Patent Judge (APJ) appointed to the Patent Trial and Appeal Board (PTAB). All of our judges have specialized technical degrees combined with extensive legal and technical experience, including that gained over many years in private practice, industry, and/or government. The judges clearly possess the required professional and technical qualifications needed to conduct Board proceedings of any type and to issue decisions addressing all issues that come before the Board.”

The problem with this view of the APJS on the PTAB is that it is simply not consistent with the data. While the APJs on the PTAB may be quite technically competent, there can be little doubt that many patent judges on the PTAB were appointed at a time when they simply did not have extensive legal experience.

Some of the key findings from our earlier study include:

  • 12.64% of PTAB judges were appointed with less than 5 years of experience.
  • 7.47% of APJs had 4 or less years of experience when appointed to the PTAB.
  • 46.55% of PTAB judges were appointed while they were still at best senior associates.

Examiners and Agents have no litigation experience

One of the criticisms by some with respect to this study relates to how we defined “experience.” As explained in that prior article “experience” is defined by the number of years after one graduated from law school. In other words, experience is defined by the number of years one was a lawyer prior to being appointed to the PTAB. Several vehemently opposed that definition for “experience”, arguing that experience as a patent examiner or patent agent should be relevant. Perhaps that too is what Chief Judge Ruschke is trying to say without coming out and saying it directly when he says that all of the PTAB judges have extensive legal experience.

On particular anonymous comment on the previous article (comment #14) explained that he/she was a Primary Examiner for 15 years, joined a law firm as a technical specialist for 3 years, and then became a patent agent for the last 14 years. This individual just finished law school and took the bar exam in February 2018. The comment then asks:

“If I receive an offer to join the PTAB somewhere around the end of fiscal year 2018, at which point I will have less than half a year of experience as an attorney, will you list me as having 36 years of experience?”

The response to this question is very easy: No.

If someone has 6 months experience as as an attorney they should not be appointed to a position as an Administrative Patent Judge, period. Those with only 6 months of legal experience should not be conducting administrative trials, period.

If someone has 30+ years of experience as a patent examiner and patent agent that means they cannot count those years as equivalent experience of an an attorney. That likely will offend many patent examiners and patent agents, but it doesn’t change the fact that it is true. If someone has 30+ years experience as a patent agent and/or patent examiner that necessarily means that those 30+ years provided NO litigation experience, which has to be true given that patent examiners do not participate in patent litigation on any level and patent agents are prohibited from litigating matters.

PTAB judges preside over administrative trials, which have all the trappings of litigation (i.e., motions to dismiss, discovery, discovery disputes, hearings, testimony, depositions, constitutional rulings, jurisdictional matters, questions of contract interpretation and privity, and much, much more. No matter how much Ruschke and others do not want to acknowledge the truth, it is perfectly accurate to say that patent agents and patent examiners have absolutely no experience in that world. They simply can’t, unless they are engaging in the unauthorized practice of law.

Patent agents and patent examiners have never filed a motion, never argued a motion, never requested discovery, never engaged in a discovery dispute, never taken Constitutional Law, or Property Law, Contract Law or Evidence. Similarly, they have never have never taken a deposition, never argued before a court on any level, never asked questions of a witness under oath in a court of law, never prepared an expert witness to testify, never drafted or challenged an affidavit, never created and submitted exhibits for trial, never been tasked with creating a record that might support an appeal to a higher tribunal, never prepared and/or filed a motion pro hac vice. Still further, patent agents and patent examiners have no experience with protection orders, no experience with motions to exclude evidence, no experience with serving process, no experience with joinder, and they can’t possibly have any experience with the Federal Rules of Evidence, which explicitly apply in administrative trials. This list could go on and on.

If patent examiners and patent agents have never done all the things attorneys representing a client in a post grant administrative trial must be prepared to do, why would anyone ever think experience as a patent examiner or patent agent would qualify one to preside over the proceedings that will include all of those things and more?

Furthermore, it is critical to constantly remember that those with senior associate level experience (or less) could not be confirmed by the Senate to be a district court judge. This is crucially significant because the PTAB provides a district court alternative to patent litigation, and is a tribunal that decides invalidity issues that impact vested property rights. The standards are different between the PTAB and district court, but the consequences are the same for the patent owner.

This study of the experience of PTAB judges demands answer to a simple, straightforward question: Why is it appropriate for a PTAB judge who could never be confirmed by the Senate for a post on any federal district court wielding the same property taking power as a Senate confirmed Article III judge?

 

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 93 Comments comments. Join the discussion.

  1. AAA JJ March 8, 2018 9:39 am

    Mr. Ruschke has even less credibility than the first Chief APJ of the PTAB. A pretty remarkable feat to be sure.

  2. Valuationguy March 8, 2018 10:33 am

    Good response to a very predictable argument by those defending the indefensible.

  3. Anon March 8, 2018 10:40 am

    …not just a river in Egypt.

  4. Gene Quinn March 8, 2018 11:11 am

    Anon @3-

    It is at time like this I really wish we had a “like” button or feature for comments. You say so much with so few words. Thanks for the smile.

    -Gene

  5. curoius March 8, 2018 12:26 pm

    I’ve wondered why the PTAB doesn’t separate ex parte and inter partes functions.

    I feel that a well-qualified, experienced primary examiner is the perfect candidate for running ex parte appeals.

    Yet that same primary examiner is a poor candidate for the AIA trials portion of the Board.

    Similarly, a senior associate/junior partner with 10-15 years of prosecution, trial, and appellate experience may be perfectly suited for running the AIA portions of the Board’s duties, but would be woefully unprepared for ex parte appeals.

    The Board handles at least two very different kinds of cases, and their workforce should reflect that. But it seems that all APJs are assumed competent at all tasks.

    Anyway, just my 2c.

  6. Joachim Martillo March 8, 2018 12:39 pm

    Anon@3 and Gene@4,

    Totally on the mark. I have to add that at least Ruschke has a sense of humor.

    Rushke’s assertion makes me think of the founding of the Italian American Civil Rights League (originally Italian American Anti-Defamation League) by Joe Colombo. Ruschke should research Colombo’s demise.

  7. AAA JJ March 8, 2018 1:42 pm

    “I feel that a well-qualified, experienced primary examiner is the perfect candidate for running ex parte appeals.”

    Worst.Idea.Ever.

  8. curoius March 8, 2018 1:52 pm

    AAA JJ:

    The problem is that the people you actually WANT as APJs have very little interest in the position, and would be taking such an insane pay cut that it’s just not very likely.

    APJs are paid barely more than a senior primary examiner, and the same as a 2nd year at a big firm. So those are your options.

  9. B March 8, 2018 1:59 pm

    “Worst.Idea.Ever.”

    It’s up there.

    The problem is that APJs rarely understanding case law. Primary Examiners are (on average) worse.

  10. Gene Quinn March 8, 2018 2:02 pm

    AAA JJ:

    You say: “APJs are paid barely more than a senior primary examiner, and the same as a 2nd year at a big firm. So those are your options.”

    Then they shouldn’t be given the same power to take away property rights as a district court judge. If the best the USPTO can do is novice attorneys then the review they do should be advisory, not a judicial ruling. These junior attorneys do not even have the experience of a Magistrate, and a Magistrate operates under the district court judge and only presides over trials if the parties both agree.

  11. PTO-Indentured March 8, 2018 2:24 pm

    Judges, having such “extensive LEGAL and technical experience” and so clearly possessing “the required professional and technical qualifications” that none thought twice about the prospect that their position, and its unprecedented powers, may well be unconstitutional; and, that none (even some?) — no matter how erudite — will own up to the PTAB being the cause of a ‘current’, 13th ranked nosedive position of the PTO (worldwide), despite the decisions reached by PTAB judges being pointed to, as the main cause.

  12. Paul Morinville March 8, 2018 2:27 pm

    He states his conclusion without asserting any facts against an article filled with facts and based on facts. He’s a lawyer so he knows that is important. But it is understandable… facts that would support his conclusion are pretty hard to find.

  13. Gene Quinn March 8, 2018 3:11 pm

    Paul-

    That caught my attention also. I notice that Rushcke’s comment did not challenge any of the facts. It is worth noting that I provided the USPTO the complete spreadsheet I have on the APJs I could find. I included the names of the APJs in the spreadsheet provided to the USPTO, although I did not publish them. So it is worth noting that Rushcke and the USPTO have not challenged our research. Instead, only provided a naked conclusion that is directly contradicted by the evidence.

  14. AAA JJ March 8, 2018 3:44 pm

    “The problem is that the people you actually WANT as APJs have very little interest in the position, and would be taking such an insane pay cut that it’s just not very likely.”

    I just want people who understand the law. When I explain to some examiner who’s been a primary for 5, 10, 15, however many years that the factual inquiries into whether there is a reason to modify/combine the prior art and whether there is a reasonable expectation of success are separate and each require their own separate evidentiary support, what I get in response is “Huh?” Or when they send me a rejection that says, “It’s prima facie obvious. See MPEP whatever and In re Boilerplate” and I rebut that and I get in response, “But, but, but it’s a prima facie case!” then I know I’m dealing with somebody who thinks prima facie means per se. Ugh.

    Primaries know how to game the count system. That’s about it. The number of them that know enough about the law to decide ex parte appeals is so small it’s not worth discussing. Or bringing up.

    What would help the ex parte backlog the most is getting rid of the “affirm at all costs” culture that the lifer APJ’s always had, and which they infected the outside hires with. The burden is on the examiner. The examiner does not get “the benefit of the doubt.”

    And when they do reverse, just write, “We reverse for the reasons stated by Appellant.” Stop with the umpteen long page reversals where they summarize the claims, the arguments, the rejections, the rebuttals. Just say, “Reversed.”

  15. AAA JJ March 8, 2018 3:52 pm

    “APJs are paid barely more than a senior primary examiner, and the same as a 2nd year at a big firm. ”

    How much do they need to get paid to just “insert form paragraph about bodily incorporation and Keller here” into their decisions? Or “insert quote about jigsaw puzzle for KSR here”?

    Seriously. I read ex parte PTAB decisions every day and 90% of them are summaries of the claims, the rejections, the arguments, and form paragraph responses. The amount of effort that requires can’t be much. They’re basically churning out marginally better Office Actions.

    I’d be all for a salary increase if I thought it would improve the quality of the decision making. But it wouldn’t. Just like how the increase in examining time given by Kappos didn’t improve examination quality one bit. It’s still, “Well, the references don’t show anything that’s claimed, but it would have been inherently obvious to experiment and routinely optimize the first one, or two, or three hits from my text search to come up with the claimed inventions.” The entire examining corps needed two more hours per case to keep writing that? They wrote the same nonsense before they got the additional two hours. All they did with the extra two hours was go to the gym or the movies over there on Eisenhower Ave. Or stream more NetFlix for the hotelers.

    How much should such a cake job pay?

  16. Pro Se March 8, 2018 4:29 pm

    The only technical capability the PTAB lawyers have are believing someone would ever stitch together 10-12 references to make up a patent application..

    Even examiners will limit their rejections to 4 stitched together references..

    PTAB lawyers are a silent extension of the big IP law firms.. where repeate theories and reference piecemeal has no limits to invalidate patents..

  17. Pro Se March 8, 2018 4:42 pm

    And it’s not the Supervisor Examiner of the art unit that granted the patent taking the patents back in a re-examination…

    It’s big law alumni that are accepting theories and arguments from their big law brothers that a Supervisor Examiner would laugh at as technically absurd.

    Why is everyone acting like they don’t know how the law community opperate? There’s always someone that will always know someone that can get the word to and from the PTAB using alum communication channels..

    I’m on my 12th IPR defense… this one is a second bite based on a theory the PTAB told the last petitioner where the holes were in the petition..

    This new one now seeks to patch the holes the PTAB told the world it was looking for to believe invalidation..

    The 13th reference stitched in.. and a petition 3X the paper size of the patents themselves…

    There’s no way I’ll ever believe the PTAB is not operated silently by big law..

  18. Josh Malone March 8, 2018 5:30 pm

    Good work Gene. Your concerns were manifest in my parallel ordeal with the PTAB and the EDTX District Court. The magistrate judge and district judge knew the law and had no difficulty understanding the subject matter. I would also point out that the PTO examiners had technical and common sense that put most APJ’s to shame. The APJ’s have substantially less technical expertise than examiners and substantially less legal expertise than Article III judges. It is a devastating combination of incompetence – typical government bureaucrats, but with incredibly high stakes. What struck me in my case was how easily they were swayed by Telebrands lawyers and their MIT professor “expert”. In district court we had much of the MIT professor’s testimony excluded as unreliable. While the jury’s ears were shielded from such sophisticated but unsupported arguments, many of the APJ’s did not know any better. Consider the trepidation that trial lawyers experience when a case goes to a jury. At least there is a judge to shield the jury from prejudicial testimony and argument. The APJ’s don’t have a filter, and are easily swayed, and even predisposed to invalidate patents due to their background and job requirements. Petioners are throwing dozens of attacks against a patent, and the APJ’s believe the canard they have been taught that patents in their docket don’t have a presumption of validity. A patent owner is expected to reprove patentability as if it is an examination, only this time while fending off tricky arguments from lawyers for the infringer/shortseller. The APJ’s are simply not equipped to preside over these attacks and provide due process to the patent owner. They are in way over their heads and have no business deciding multi-million dollar commercial disputes. I sure hope the Suprerme Court does not leave Director Iancu with the unattainable task of making the PTAB actually function as a legitimate alternative to district court. That is a fantasy.

  19. Anon March 8, 2018 6:19 pm

    Josh,

    I feel for you.

    But is this statement accurate: “and the APJ’s believe the canard they have been taught that patents in their docket don’t have a presumption of validity.“…?

    You do realize that at the institution decision point, that the stick in the bundle of property rights of the presence (and critically, the level) of that very presumption has suffered a taking. It really is not a canard if the presumption of validity has indeed been taken and no longer applies to the granted patent in that non-Article III forum.

  20. Anon March 8, 2018 6:22 pm

    There’s no way I’ll ever believe the PTAB is not operated silently by big law..

    That aim is off.

    Big Law may serve its clients, but Big Law is NOT the entity to aim at for the capture of any governmental entity.

  21. Pro Se March 8, 2018 8:00 pm

    @Anon – I can assure you, big law is all on the resume’s of most PTAB operatives as Google was on the last head of the PTO…

    Why isn’t there a list of all APJs if the PTAB is so governmental?

    We know who our federal, state, and local judges are no?

    Why is the PTAB the only organization where the total number and identities of the “judges” employed are a mystery?

    Wonder which big law firm “fed” APJs to the PTAB…

    I know of at least a few APJs that golf regularly with their big law senior partners..

    Some of them still show as being an associate at their firms on Linked In smh…

    Andrei Iancu was at Irell & Manella for 19 years, 14 as partner… the last director was from Google..

    A big law partner… manages big law associates..

    Simple.

  22. Pro Se March 8, 2018 8:04 pm

    ^The Federal Reserve sits next to the White House, not because it’s owned by the government (its not) but to stand in the best position to protect its interest.

    If the FedRes operate privately on such a stark level, there’s no reason to believe a lesser PTAB isn’t in operation to protect the interest of corporations and their big law counsel.

    Same concept, silently executed.

  23. Jeff Lindsay March 8, 2018 9:07 pm

    I am thrilled to see Chief Judge Ruschke of the PTAB speak out to defend the experience PTAB judges. This is great news, for it may mean he’ll soon release the USPTO’s hidden data about who these judges are and how much or little experience they have. Data, please!

    No offense, Gene, but for America’s good, we have to hope that IPWatchdog has blundered badly in their analysis of diffuse public records to cobble together information about the apparently shallow legal experience of PTAB judges. If the USPTO will now release what should have been published information all along and show us a full list of their judges – perhaps many more than the 178 you have scraped up through toilsome work – and show us the real level of actual legal experience and especially litigation experience of these very powerful but mysterious judges who are changing the innovation, investment, and IP climate in America, then we can know for sure whether your shocking analysis has any merit, or whether the property rights of inventors and innovators are in experienced legal hands. Please, USPTO, let’s see the data! There’s no need to shun public light in this public matter, right?

    If the USPTO responds with clear data on this vital issue, I hope they will also respond to the evidence of conflict of interests among some of their judges by 1) revealing what their ethical standards are, if any, for judges; 2) revealing how many judges have decided cases for former employers, clients (e.g., Apple), friends, or parties with whom they have a financial or other personal interest; and 3) revealing what steps, if any, they are taking to prevent such miscarriages of justice. A little transparency is called for, especially since the USPTO wishes to challenge Gene’s conclusions. Data, please! Transparency, please! And ethics, please!

  24. temprand March 8, 2018 9:38 pm

    Publicly available salary information:

    https://www.fedsdatacenter.com/federal-pay-rates/index.php?y=2017&n=&l=&a=department+of+commerce&o=patent+attorney

    That search will pull up patent attorneys at the department of commerce. The GS workers are not the judges (the “Pay Plan” column). The Judges are “NA” Pay Plan, mostly 160k-172k. “SES” are your vice and chief judges. 66 of the 345 are GS, leaving 279 judges and vice/chief judges. That seems about right, right?

  25. Thomas Pain March 8, 2018 10:52 pm

    This stuff about how scary complicated the post grant rules are. Is that based on hearsay,Gene?

  26. Peter Corcoran March 9, 2018 5:44 am

    Gene’s data pours a mountain of salt onto a gaping, blistering, grotesque wound we call the PTAB. Some experiments fail. Some experiments fail miserably. Keep going a few more iterations and you’ll get to the PTAB.

  27. #RespectPatents March 9, 2018 8:28 am

    IPRs and the PTABs time is up now. They had 5 years and opportunities to adjust to do the right thing. Trials at the USPTO is a “noble experiment” that isn’t working.

  28. Anon March 9, 2018 8:30 am

    Thomas Pain @ 25,

    Was that a weak attempt at impugning the article?

    It was so weak that I am just not sure that that was your intent.

  29. Paul Morgan March 9, 2018 9:15 am

    Surprising few O.C. patent attorneys have actual patent trial experience [other than perhaps responding to discovery demands and doing legal research] because only a few hundred patent suits ever go all the way to a trial these days, Even Federal Judges average 2 or less patent trials a year. Obviously the relatively few litigation firm partners with actual patent trial experience are not interested in administrative law jobs that pay less than their high end golf club dues and fees.
    With roughly 1000 IPRs per year, many of which have Fed. Cir. reviews, APJs soon acquire considerable on the job experience, and the fact that there are 3 of them on all final decisions helps. Also, IPR practice is considerably more like interference practice than federal court litigation. Among the many differences, the IPR restriction to only patents and publications, and fact questions comparing patent claims to that restricted prior art being decided by patent attorney APJs rather than by lay jurors with no technical or legal education, a far more serious competency problem being conveniently ignored.

  30. Night Writer March 9, 2018 9:32 am

    @28 Paul: I pretty much agree with your analysis. I think the problem with IPRs is the set of rules applied.

  31. Anon March 9, 2018 9:54 am

    I would reject out of hand the statement of “ APJs soon acquire considerable on the job experience,

    When people are complaining that the “on the job” work is deficient, than your statement Paul resolves down into the APJs being trained to BE deficient.

    That’s something that no one should want. Even those that blindly cheerlead the IPR process.

  32. Bemused March 9, 2018 9:59 am

    Paul@28: There are many things I disagree with in your post but for purposes of brevity, I’ll only address the difference you noted between APJs and lay juries:

    1. Lay juries don’t depend upon the continued filing of patent cases/IPRs for their livelihood; APJ’s do.
    2. Lay juries don’t typically come in with an anti-patent bias based upon their prior employment; APJs (many of whom were on the defense side in patent infringement disputes) do.
    3. Lay juries typically don’t get pressured by the stated goal of their employer to invalidate patents to decide for a particular party; APJs do.
    4. Lay juries typically don’t get expanded in order to achieve a particular result; panels of APJs can and do get expanded for precisely that purpose.

    The list goes on and on but I think you get my drift.

  33. Night Writer March 9, 2018 10:01 am

    @30 Anon

    Come on. Litigation isn’t that hard. Nothing in law is hard. If there is a problem, then it is with the training and atmosphere at the PTAB. The people are plenty talented enough.

  34. Paul Morgan March 9, 2018 10:07 am

    Thanks NW, since so few commentators can see past their personal financial self interests and mere personal wishes on this subject to even consider realities. You will be pleased to know that the IPO* Board of Directors has just released a set of recommended IPR rule changes, which I hope will get realistic considerations, coming from that major organization representing CLIENT interests.
    *Industrial Property Owners

  35. Old Examiner March 9, 2018 10:07 am

    I’d be all for a salary increase if I thought it would improve the quality of the decision making. But it wouldn’t. Just like how the increase in examining time given by Kappos didn’t improve examination quality one bit. It’s still, “Well, the references don’t show anything that’s claimed, but it would have been inherently obvious to experiment and routinely optimize the first one, or two, or three hits from my text search to come up with the claimed inventions.” The entire examining corps needed two more hours per case to keep writing that? They wrote the same nonsense before they got the additional two hours. All they did with the extra two hours was go to the gym or the movies over there on Eisenhower Ave. Or stream more NetFlix for the hotelers.

    How much should such a cake job pay?

    It’s not a cake job if it is done right, and many examiners do. Are there poor examiners, yes indeed, but in my many years as senior primary examiner, I have seen quite a few poor attorneys. Poorly written claims, no prior art submissions, insufficient Office action responses. There are lousy participants in every profession. It also includes PTAB judges. I can attest to that!

  36. exer March 9, 2018 10:17 am

    Old Examiner –
    You point to the hardest part of examining. Done correctly, it is a challenging and time-consuming task. However, done lazily, it is quick and easy. And if you have two examiners, one doing good work and one doing crap, they both get paid the same, but the crap examiner is more likely to hit the bonus targets and have free time in the evening and weekends. And both examiners are treated like crap in forums like this where examiner bashing is the norm. So what incentive do examiners have to do a good job? Very little. Yet there are still plenty out there doing their best, DESPITE all the forces working against them. Let’s encourage and recognize examples of good work from the examining corps and see if we can’t turn things around.

  37. Paul Morgan March 9, 2018 10:27 am

    Old Examiner at 34. I agree and would like to see blog postings like this:
    Patent No. ___ clams ____ held invalid in [D.C. or IPR or ex parte appeal case___] on prior art patents in Class ______ that the application Examiner [named] had indicated was searched but did not find or cite.

    There are apparently no present consequences.

  38. Night Writer March 9, 2018 10:42 am

    @34 I think the way to improve quality is do a separate search first and then assign the application to an examiner based on that search.

  39. PTO-Indentured March 9, 2018 10:56 am

    Night Writer @29: Among the rules a serial IPR attack (fine-tuned successively) gauntlet — as intended.

    Let’s Judge a “Judge” (type) by the Fruit (Justice) that it Bears:

    Wherein pre-AIA — a one validity go-round (a patent examination) fostered the #1 ranked patent system worldwide.

    Wherein, since AIA, (in view of Josh @18 experience) 13 IPR serial go-rounds at a U.S. fosters a #13th ranked patent system worldwide (still plummeting, yet to hit rock bottom).

    Coincidence? Don’t let PTAB be the Judge.

  40. PTO-Indentured March 9, 2018 10:58 am

    Oops

    @37 Typo:

    “13 IPR serial go-rounds at a U.S.” should be “13 IPR serial go-rounds at a U.S. patent”

  41. DaveR March 9, 2018 12:17 pm

    Gene, with this article, you have succeeded in identifying and describing additional cogent reasons why the entire PTAB system needs to be majorly overhauled if not entirely scrapped.

  42. B March 9, 2018 12:38 pm

    “2. Lay juries don’t typically come in with an anti-patent bias based upon their prior employment; APJs (many of whom were on the defense side in patent infringement disputes) do.”

    Respectfully, I’ve been on both sides of a patent suit, and I do not see anti-patent biases from litigators. I’m not saying there isn’t an anti-patent bias in many APJs. There definitely is.

    FWIW, I don’t generally harp on examiners. Most do what they are trained to do. This isn’t to say I haven’t seen some lame-brained rejections go to appeal, but the frightening part is that there are APJs – who are clueless of patent law despite being trained attorneys – who affirm ridiculously bad rejections based on some of the most outrageous grounds.

    Literally, about two months ago I had a PTAB panel admonish me for looking to the record for evidence, rather than looking to the examiner’s conclusory remarks for what the prior art taught. The Panel actually admitted that four separate limitations weren’t taught by the reference of record. The same Panel also cited a new reference and never gave me a chance to address their new reference. I’ve filed a Request for Rehearing, but I don’t hold out much hope these APJs will reverse themselves.

  43. AAA JJ March 9, 2018 1:05 pm

    “…but the frightening part is that there are APJs – who are clueless of patent law despite being trained attorneys – who affirm ridiculously bad rejections based on some of the most outrageous grounds.”

    Because they know that there is a very small chance they will be appealed. And if appealed and reversed, they know it will have zero effect on them.

    “There are apparently no present consequences.”

    Bingo.

  44. AAA JJ March 9, 2018 1:09 pm

    “It’s not a cake job if it is done right”

    Sure it is. Read the application. Perform the search in the time allotted. Review the evidence and determine if it makes a case of unpatentability by a preponderance. If it does, then make the case. If it doesn’t, then explain why.

    Not hard at all.

    What’s hard is this, “Well, we gotta reject it so we can tell everybody that we’re doing record breaking outstanding quality work by telling everybody, ‘See!!!! We rejected it!!!! We built a record!!!!!!! Can we haz promotions and bonuses now?!'”

    Stop “building the record.” There’s no need to “build the record.” Read the application. Do the search in the allotted time. Review the evidence. Make the decision. State why evidence supports decision.

    Not hard.

  45. Gene Quinn March 9, 2018 1:19 pm

    B-

    Any chance you could point me to the request for rehearing? Feel free to do it off comments at:

    http://www.ipwatchdog.com/about/contact/

    -Gene

  46. Solo March 9, 2018 3:36 pm

    As someone who practices in federal district court as well as before the PTAB, I have to say that outside of a few districts (E.D. Tx., Del., N.D. Cal.) the federal judiciary is usually much less in-tune with patent law as this comprises little-to-none of their docket. Very few Article III judges have scientific or technical backgrounds that the APJs have either. My empirical experience is that the PTAB judges are superior patent law judges.

  47. B March 9, 2018 3:41 pm

    “Any chance you could point me to the request for rehearing?”

    Done

  48. Bemused March 9, 2018 3:46 pm

    B@42: I probably should have phrased that better. In my experience, attorneys who spend the majority of their time doing defense work tend to develop an anti-plaintiff patent holder mind-set. I think its just human nature. If what you do on a day to day basis is fight off patent holders suing your clients, its nearly inevitable that you’ll eventually come to the belief that the vast majority of patents are invalid.

    To put it more succinctly, if you believe that patent holders for the most part are bad/wrong for asserting their patents, then the end result is that you’ll view asserted patents as the cause for this bad behavior.

    And that is the classic “patent troll” narrative which alleges that “bad” patents (whatever that means) are the real problem (hence the need for patent “reform”); not the bad actors.

  49. George P. White March 9, 2018 6:29 pm

    To the contrary – Patent agents can accumulate experience with an extremely relevant type of litigation. They/we are allowed to practice before the PTAB in all of their proceedings.

  50. Anon March 10, 2018 7:01 am

    Night Writer @ 38,

    I previously have made similar suggestions. I would have that independent vetting (and search) also provide a “scaled points” score to the application, as applications simply are not identical widgets, and some applications clearly require far more extensive examination (for a variety of reasons).

    To your comment at 33, I would enjoin you to reread my comment. Your statement of “it’s not hard” misses the point that I present: it is NOT a matter of whether it is hard or not. It is a matter of what is being done – and what THAT item being done is the item being “learned.”

    A sports adage comes to mind:

    Practice does not make perfect.
    Practice makes permanent.

    Perfect practice makes perfect.

    If – as is the current case – those “practicing” and “earning experience” are merely earning experience doing the wrong things, then Paul’s offered cheerleading misses the mark.

    As his cheerleading often does.

  51. David Wanetick March 10, 2018 7:47 am

    Gene,

    What wonderful research and rebuttals!

    Can you get your research and arguments before the Supreme Court as they are deliberating Oil States?

  52. Paul Morgan March 10, 2018 10:45 am

    Most IPR decisions are appealed to the Fed. Cir. since 85% of them are filed in response to being sued by the patent owner [an ID that has to be made in all IPRs]. If PTAB IPR panels were in fact “doing the wrong things” most of the time they would not have the extremely high rate of being sustained on appeal by the Fed. Cir. that they do. The Fed. Cir. reversal rate of D.C. judge’s decisions is higher.
    Continuing to substitute biases or conspiracy theories for facts merely reduces anti-IPR credibility. E.g., miss-representing the one single time a PTAB panel was expanded to change its [pre-appeal] result [out of tens of thousands of PTAB decisions] as being a major problem.
    As noted above, there are ample opportunities for constructive efforts in rule changes. Also, if you want to see what is required to become an APJ the forms, questionnaires and legal writing requirements are available on line from the PTO.

  53. Old Examiner March 10, 2018 11:07 am

    “Sure it is. Read the application. Perform the search in the time allotted. Review the evidence and determine if it makes a case of unpatentability by a preponderance. If it does, then make the case. If it doesn’t, then explain why.

    Not hard at all.

    What’s hard is this, “Well, we gotta reject it so we can tell everybody that we’re doing record breaking outstanding quality work by telling everybody, ‘See!!!! We rejected it!!!! We built a record!!!!!!! Can we haz promotions and bonuses now?!’”

    Stop “building the record.” There’s no need to “build the record.” Read the application. Do the search in the allotted time. Review the evidence. Make the decision. State why evidence supports decision.

    Not hard.”

    Then you do it. I seldom see a case where there aren’t numerous 112 rejections because attorneys aren’t intelligent enough to draft a decent set of claims, or they are too lazy or unable to do it within their allocated time frame. Also, try searching, within the alloted time, subclasses that all have thousands of references under the new CPC system. Further, it isn’t easy to always determine the breadth of claim language, reject it properly, and attempt to get narrowing scope to render someone’s patent valid.

  54. Gene Quinn March 10, 2018 12:30 pm

    David-

    It is my understanding… hearsay on hearsay… that the article has made its way to the Supreme Court. Not sure that it will matter, but I’m told at least someone in the building is aware of this.

  55. Gene Quinn March 10, 2018 12:34 pm

    George @49-

    You say: “Patent agents can accumulate experience with an extremely relevant type of litigation. They/we are allowed to practice before the PTAB in all of their proceedings.”

    How many administrative trials have you engaged in representing either a patent owner or a challenger?

    Challengers certainly do not hire patent agents to represent them, they hire the best patent litigators they can pay. So no one filing petitions hires patent agents.

    So how many patent owners have hired you or any other patent agent?

    There is a difference between it being theoretically possible for a patent agent to engage in representation in a post grant administrative trial and it actually happening. I’ve never seen any patent agents involved, unless they were a member of a much larger team where the lead attorney and second attorney were actually attorneys.

    It would also be interesting to understand how a patent agent could become knowledgeable about the Rules of Evidence (which are extremely complex), and all the other things that go far beyond patent prosecution.

    So please, give us the examples.

  56. Anon March 10, 2018 1:19 pm

    Mr. Morgan whines:

    merely reduces anti-IPR credibility.

    Sorry Mr. Morgan, but your own cheerleading against ANY thing that might be deemed anti-IPR has already eviscerated your own credibility.

    There may indeed be a wolf out there, but your constant cry wolf against those seeking to point out IPR infirmities has no one listening to your current cries.

    As curt as it may sound, the sentence of “You are dismissed.” rings solidly true.

  57. Paul Morgan March 10, 2018 1:36 pm

    G.P.W. at 49. All APJ’s are Patent Attorneys. Patent Agents have no required training or qualifications in several vital aspects of IPRs or interferences. That includes case-in-chief presentations by declarations that will be disputed inter partes, cross-examinations of expert witness and other declaration authors, effectiverebuttal declarations and arguments, discovery, evidence authentication and challenges, disputed inter partes final hearing arguments, inter partes motion practices, litigation legal ethics requirements, building a record for Fed. Cir. appeals, etc. Ex parte experiences with non-attorney examiners is of limited value for such matters.

  58. Paul Morgan March 10, 2018 1:41 pm

    P.S. Not even to mention being barred from settlement contract or license negotiations.

  59. B March 10, 2018 3:59 pm

    “ If PTAB IPR panels were in fact “doing the wrong things” most of the time they would not have the extremely high rate of being sustained on appeal by the Fed. Cir. that they do. The Fed. Cir. reversal rate of D.C. judge’s decisions is higher.”

    The PTAB has a different claim construction and different evidentiary standard. It’s 10x easier to reject claims by the PTAB.

  60. Anon March 10, 2018 4:40 pm

    B,

    Your point raises (yet again, at least in my mind) an important point that appears to go unappreciated: there is a taking that occurs at the institution point of the post grant reviews.

    As I have invited certain some ones in the past to do, to see this taking, simply write down all of the attributes (the sticks in the bundle) of a granted property right known as a patent both immediately before and immediately after an institution decision.

    One of the rather important things missing from the second list – and a primary driver that permits the situation that B’s point makes – is a stick that has been taken.

    Now mind you, the government is permitted to engage in takings (think eminent domain).

    But those takings are heavily constrained by Constitutional protections.

    And it is THOSE Constitutional protections that are glaringly missing with the takings protocol provided by the AIA.

    Not even Congress is permitted to write law that violates Constitutional protections of property.

  61. Anon March 10, 2018 7:29 pm

    George P. White @49,

    I do believe that you are correct in that the patent agent license to practice the subset of law that is patent law before the USPTO does in fact include ANY (and all) aspects including trial work before the PTAB.

    If Paul Morgan knows differently, I would love to see where the carve-outs are written.

    That being said – and please do not fell compelled to answer if that answer may place you in any form of difficulty, but do you carry malpractice insurance?

    How would you feel about being controlled by a State court (any State court) if you were the recipient of a malpractice claim? Would you argue for Federal jurisdiction (and how do you think that would affect a state-based malpractice claim?

    This type of wrinkle does not seem to want to draw any cogent views.

  62. Joachim Martillo March 11, 2018 7:06 am

    Paul Morgan @ 52 March 10, 2018 10:45 am defends the indefensible.

    If PTAB IPR panels were in fact “doing the wrong things” most of the time they would not have the extremely high rate of being sustained on appeal by the Fed. Cir. that they do. The Fed. Cir. reversal rate of D.C. judge’s decisions is higher.

    The crooks and clowns at the USPTO have simply not been caught yet.

    The CAFC and SCOTUS have be taken in by the propaganda and nonsense of the anti-patent mob.

    Below is my view of this debacle. Keep in mind that Madoff got away with his criminal Ponzi scheme for a very long time while it took years for FBI HQ to realize that Billy Bulger was running the Boston FBI office. The shills for the USPTO criminals keep telling us that its only been a few years and that we should just give the PTAB more time. Yeah, right.

    If you want active hyperlinks, click on Has the PTAB made the USPTO the Village Idiot of Federal Government Administrative Agencies?.

    The majority decision in Knowles v. Cirrus shows both desperation to save the PTAB and also linguistic chicanery or pettifogging not unlike the shyster lawyering of the TELEBRANDS v TINNUS PGR. Newman correctly states that the claims were fully litigated and that validity is settled law.

    Chen and Wallach used Chevron Deference and Broadest Unreasonable Interpretation to define package instead of the phrase “micromechanical system package” in the context of IC (Integrated Circuit) design and fabrication. (See IN RE: SMITH INTERNATIONAL, INC.) The decision draws nonsense conclusions from the use of the phrase “in general” and of the word “basic.” Other classifications might be less general or more advanced, but a more specific or more advanced classification scheme would only add resolution or refinement within the the classifications “through hole” and “surface mount.”

    SCOTUS, possibly having been taken in or conned by the nonsense of the anti-patent mob, wrongly decided CUOZZO SPEED TECHNOLOGIES, LLC, PETITIONER v. MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK OFFICE. When SCOTUS responded to the writ of certiorari, it only addressed difference in evidentiary standards, but BRI inherently moves the burden of proof from the petitioner to the patent owner.

    35 U.S. Code § 316 and 35 U.S. Code § 326 explicitly and respectively define:

    (e)Evidentiary Standards.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

    (e)Evidentiary Standards.—In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

    In order to underscore how wrongly SCOTUS decided Cuozzo, the following must be reiterated.

    During examination BRI shifts the burden of proving patent eligibility or patentability to applicant. Shifting this burden to the patent owner during an IPR or PGR clearly contradicts to plain meaning of the two paragraphs above.

    I don’t believe any SCOTUS justice has prosecuted a patent application, and fortunately for the nation OIL STATES ENERGY SERVICES, LLC, Petitioner, v. GREENE’S ENERGY GROUP, LLC, Respondent, gives SCOTUS the opportunity to correct its gross and vicariously embarrassing error in Cuozzo by finding USPTO administrative post-grant review proceedings to be unconstitutional.

    Chen and Wallach are floundering technologically as the decision of these two judges in DDR HOLDINGS v. HOTELS.COM shows. Neither seems to have any understanding of the concepts of modern computer science and are, therefore, unable to discern obvious error. In addition, SCOTUS has pointed out that issues of grammar and semantic parsing are matters of law. (See the grammar discussion in the analysis of Matal’s intervenor brief in the appeal of the TELEBRANDS v TINNUS PGR.) Any judge that does not thoroughly understand the prescriptive and descriptive grammar of English is incompetent. Both Chen and Wallach should resign from the CAFC.

    SCOTUS could also be making better and more coherent decisions. I have tried to provide some intellectual tools to help to apply the Alice-Mayo test in a (still somewhat raw) series that tries to sort out § 101-eligibility:

    1. Administer–”Do Standard Detection”–”Modify Administration” Method Claims and 35 USC § 101 Eligibility Analysis (Part I: Vanda and Prometheus)

    2. Administer–”Do Standard Detection”–”Modify Administration” Method Claims and 35 USC § 101 Eligibility Analysis (Part II: Kantian Framework)

    3. Administer–”Do Standard Detection”–”Modify Administration” Method Claims and 35 USC § 101 Eligibility Analysis (Part III: Kant, Alice, and Mayo)

    4. Notes from Part III of Administer–”Do Standard Detection”–”Modify Administration” Method Claims and 35 USC § 101 Eligibility Analysis.

    If the nation is lucky, Gorsuch will prove to provide some good influence especially in the cases of the true meaning of the Constitution and of the complete wrongfulness of Chevron Deference.

  63. Joachim Martillo March 11, 2018 7:18 am

    BTW, as I wrote the above comment, my eight year old was bugging me (for the use of this computer) and reading over my shoulder. She asked about DDR Holdings and reasonably asked, “Don’t they understand that the Internet is just one big computer for everybody? They said that on Bizaardvark.”

    Logorrhea is so frustrating. I think it’s a type of OCD. Everybody can say in 10 words what it takes me 100 words to say. I don’t know to which episode she refers. She watches that idiotic show religiously.

    Something is really broken when Disney gets it right, but the CAFC gets it wrong.

  64. AAA JJ March 11, 2018 11:53 am

    “Then you do it.”

    I did it. For almost 10 years. Got every promotion on time. Every bonus every year. Even one of them cute little bronze medals they pass out.

    Like I said: Not that hard.

  65. Gene Quinn March 11, 2018 2:50 pm

    Old Examiner-

    I’d like to connect with you offline if possible. Happy to keep everything confidential. I’d like to ask you about your 112 rejection comment. Specifically, is this something you see more often when the application is coming into the US from an earlier filed overseas application? Or is the problem just rampant?

    I’d also like to talk to you more broadly about what types of things attorneys do that you find helpful, and what types of things are not helpful.

    You can reach out via this form if you’d like:
    http://www.ipwatchdog.com/about/contact/

  66. Joachim Martillo March 11, 2018 5:37 pm

    AAA JJ and Old Examiner,

    I have been investigating the USPTO for possible criminality for a long time. Overall, I find that most examiners try to do their job honestly and correctly including examiners that are English-deficient. The problems that I find tend to lie elsewhere.

    I have found cases where examiners are told to lie by senior USPTO officials because of secret “quality assurance” programs, and I have documented one case where the examiner had some sort of mental breakdown because of SAWS (Strategic Application Warning System).

    I have found that APJs will lie in a final written decision when they are ordered to do so by a senior USPTO official. The criminal falsification occurs only in a small number of cases. A large amount of lies would draw too much attention.

    After very public cancellation of SAWS in 2015, APJ misbehavior seems to have moved from appeals to post-grant review proceedings. Honest examination followed by corrupt post-grant review proceedings is the perfect setup for “bait-and-switch” con scams.

    If post-grant review proceedings are declared unconstitutional, I expect to see an increase in criminality in appeals in the context of secret “quality assurance” programs.

    Note that I am hardly saying that are large number of post-grant review proceedings involve criminal acts. In fact, to provide camouflage for the criminality, most post-grant review proceedings must be legitimate although there is always room for the incompetence of apparently very junior attorneys.

    Microsoft v Biscotti IPR2014-01457 is an example of an IPR that looks legally perfect. (The Microsoft attorneys could probably have done better.)

    The IPR was appealed to the CAFC and correctly upheld in a CAFC decision of December 28, 2017 even if Judge Newman dissented. As pro-patent as she is, she seems to hate to see obviously bogus crap held to be valid, and the IPR decided that one crap videoconferencing patent did not anticipate another crap videoconferencing patent.

    I know that both the Biscotti and Kenoyer patents are crap because I worked on Bell Labs videoconferencing systems in the 1980s that anticipated the inventions disclosed in both patents.

    Can anyone explain any point to unconstitutional post-grant review proceedings beyond criminality if the post-grant review proceedings leave crap patents to be valid while the proceedings invalidate obviously valid patents as the PTAB did in a Telebrands v. Tinnus PGR?

  67. Thomas Pain March 11, 2018 11:23 pm

    My God, this is getting serious. Is this the safe place where I can say i once killed a patent examiner ? accidentally.

  68. Bemused March 12, 2018 7:58 am

    Yes, Thomas. You can say that here. By reading/commenting on IPW you are in the Circle of Trust. By the way, which was the accidental part? The running over the examiner part or the then backing up over the examiner part?

  69. Anon March 12, 2018 8:12 am

    Mr. Pain,

    What is your point?

  70. Night Writer March 12, 2018 9:23 am

    >Can anyone explain any point to unconstitutional post-grant review proceedings beyond criminality if the post-grant review proceedings leave crap patents to be valid while the proceedings invalidate obviously valid patents as the PTAB did in a Telebrands v. Tinnus PGR?

    Random luck of the draw of the patent judges.

  71. Joachim Martillo March 12, 2018 11:32 am

    Nightwriter@70 March 12, 2018 9:23 am

    You are effectively saying that validity depends upon a metaphorical coin toss.

    Then I am totally confused by the reason for post-grant review proceedings at the USPTO if the purpose is anything beyond creating chaos.

    Let’s consider Microsoft v Biscotti from the standpoint of non-crooks.

    Is Microsoft now precluded from challenging the Biscotti patent for anticipation and obviousness in District Court?

    Under normal rules Microsoft would be precluded to bring up anticipation because it litigated anticipation, (correctly) lost before the PTAB, and then (correctly) lost before the CAFC.

    Microsoft could have brought up obviousness before the PTAB but did not.

    Isn’t Microsoft now precluded from attempting to litigate obviousness in District Court?

    In contrast, the PTAB does not seem to recognize any sort of issue preclusion even when the validity of the patent has been fully litigated before the CAFC.

    In addition, another party might be able to challenge the validity of the Biscotti patent because of anticipation or because of obviousness.

    This situation has the appearance of chaos to me — something which provides the perfect environment for all sorts of at the least questionably legal activity.

    Some of my relatives on the Sicilian side made a lot of money on the black market in the chaos that followed Allied victory in WW2. Those guys (or their kids and grandkids) are always looking for new opportunities.

  72. Anon March 12, 2018 12:33 pm

    Joachim @ 71,

    Your paraphrase of Night Writer’s comment (You are effectively saying that validity depends upon a metaphorical coin toss.) can be stated in a different manner.

    One, that draws to the capriciousness of the “Mayo/Alice” “Gist/Abstract” sword that the Court has fashioned:

    Void for Vagueness

    Even setting aside the infirmities that the Court has violated the Separation of Powers and has rewritten statutory law that is delegated in our Constitution to a (different) single branch, the “common law” outcome of what the Court has done has created an unknowable a priori situation of a “I know it when I see it – but who exactly will be seeing it decides the matter.”

    As I have noted previously, the concept of “void for Vagueness” applies OUTSIDE of criminal law – in particular, it applies in matters of property.

    Alas, one must ask of the courts (the Court) the right questions, as they will not sua sponte delve into the “atom bomb” of Constituional violations of their own accord (especially when it is THEIR actions that cause that infirmity).

  73. AAA JJ March 12, 2018 1:40 pm

    “During examination BRI shifts the burden of proving patent eligibility or patentability to applicant.”

    No, it doesn’t. The burden of proof is on the examiner always. If the examiner makes a prima facie case (i.e. meets his/her burden of production), then the applicant, if still wanting a patent, must rebut the prima facie case with arguments and/or evidence. At that point, the burden of persuasion is on the examiner. And remains there. Always. If the examiner does not make a prima facie case, then applicant is under no burden at all (although still required to respond in writing and explain why no prima facie case was made).

  74. George P. White March 12, 2018 7:13 pm

    Gene,

    I was responding to your assertion that there was no way for a patent agent to have relevant experience to bring to an IPR. There is a way, by participating in IPR proceedings, as the law allows. They could learn from tutelage by a litigation knowledgable attorney. I doubt that this has ever actually happened. I’m a patent agent and I would never take on representing a client at an IPR.

  75. Joachim Martillo March 13, 2018 1:33 am

    AAA JJ@73 March 12, 2018 1:40 pm

    I don’t know quite how to say this politely.

    Perhaps it is too long since AAA JJ read the MPEP. I reread it in the evening after I was burnt out of my apartment on January 6-7, 2018 because I nothing else to do in my hotel room except to distract myself with the reality TV program that the Trump administration has become.

    Perhaps I am misreading the following passage. Feel free to correct me if I did.

    From 2142 Legal Concept of Prima Facie Obviousness [R-07.2015].

    The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit secondary evidence to show nonobviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art. The decision of whether to submit evidence after a rejection should be influenced by the goals of compact prosecution, which encourages the early submission of such evidence. It is also noted that evidence submitted after final rejection may be denied entry into the record. The initial evaluation of prima facie obviousness thus relieves both the examiner and applicant from evaluating evidence beyond the prior art and the evidence in the specification as filed until the art has been shown to render obvious the claimed invention.

  76. Joachim Martillo March 13, 2018 1:49 am

    Here is another relevant passage. There are others.

    [Click on the above hyperlink to obtain a web page with active links.]

    From 2164.07 Relationship of Enablement Requirement to Utility Requirement of 35 U.S.C. 101 [R-11.2013].

    2164.07 Relationship of Enablement Requirement to Utility Requirement of 35 U.S.C. 101 [R-11.2013]

    The requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as to how to use the invention is different from the utility requirement of 35 U.S.C. 101. The requirement of 35 U.S.C. 101 is that some specific, substantial, and credible use be set forth for the invention. On the other hand, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph requires an indication of how the use (required by 35 U.S.C. 101 ) can be carried out, i.e., how the invention can be used.

    If an applicant has disclosed a specific and substantial utility for an invention and provided a credible basis supporting that utility, that fact alone does not provide a basis for concluding that the claims comply with all the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. For example, if an applicant has claimed a process of treating a certain disease condition with a certain compound and provided a credible basis for asserting that the compound is useful in that regard, but to actually practice the invention as claimed a person skilled in the relevant art would have to engage in an undue amount of experimentation, the claim may be defective under 35 U.S.C. 112, but not 35 U.S.C. 101. To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than “lack of utility” should be imposed separately from any rejection imposed due to “lack of utility” under 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

    I. WHEN UTILITY REQUIREMENT IS NOT SATISFIED

    A. Not Useful or Operative

    If a claim fails to meet the utility requirement of 35 U.S.C. 101 because it is shown to be nonuseful or inoperative, then it necessarily fails to meet the how-to-use aspect of the enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. As noted in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971), if “compositions are in fact useless, appellant’s specification cannot have taught how to use them.” 439 F.2d at 1243, 169 USPQ at 434. The examiner should make both rejections (i.e., a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph and a rejection under 35 U.S.C. 101 ) where the subject matter of a claim has been shown to be nonuseful or inoperative.

    The 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection should indicate that because the invention as claimed does not have utility, a person skilled in the art would not be able to use the invention as claimed, and as such, the claim is defective under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. A 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection should not be imposed or maintained unless an appropriate basis exists for imposing a rejection under 35 U.S.C. 101. In other words, Office personnel should not impose a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection grounded on a “lack of utility” basis unless a 35 U.S.C. 101 rejection is proper. In particular, the factual showing needed to impose a rejection under 35 U.S.C. 101 must be provided if a 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, rejection is to be imposed on “lack of utility” grounds. See MPEP § 2107 – § 2107.03 for a more detailed discussion of the utility requirements of 35 U.S.C. 101 and 35 U.S.C. 112(a) or pre-AIA 112, first paragraph.

    B. Burden on the Examiner

    When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the burden is on the examiner to provide a reasonable basis to support this conclusion. Rejections based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101 should be made.

    Examiner Has Initial Burden To Show That One of Ordinary Skill in the Art Would Reasonably Doubt the Asserted Utility

    The examiner has the initial burden of challenging an asserted utility. Only after the examiner has provided evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince one of ordinary skill in the art of the invention’s asserted utility. In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Swartz, 232 F.3d 862, 863, 56 USPQ2d 1703, 1704 (Fed. Cir. 2000); In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995) (citing In re Bundy, 642 F.2d 430, 433, 209 USPQ 48, 51 (CCPA 1981)).

    C. Rebuttal by Applicant

    If a rejection under 35 U.S.C. 101 has been properly imposed, along with a corresponding rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, the burden shifts to the applicant to rebut the prima facie showing. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). There is no predetermined amount or character of evidence that must be provided by an applicant to support an asserted utility. Rather, the character and amount of evidence needed to support an asserted utility will vary depending on what is claimed (Ex parte Ferguson, 117 USPQ 229, 231 (Bd. App. 1957)), and whether the asserted utility appears to contravene established scientific principles and beliefs. In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967); In re Chilowsky, 229 F.2d 457, 462, 108 USPQ 321, 325 (CCPA 1956). Furthermore, the applicant does not have to provide evidence sufficient to establish that an asserted utility is true “beyond a reasonable doubt.” In re Irons, 340 F.2d 974, 978, 144 USPQ 351, 354 (CCPA 1965). Instead, evidence will be sufficient if, considered as a whole, it leads a person of ordinary skill in the art to conclude that the asserted utility is more likely than not true. See MPEP § 2107.02 for a more detailed discussion of consideration of a reply to a prima facie rejection for lack of utility and evaluation of evidence related to utility.

    II. WHEN UTILITY REQUIREMENT IS SATISFIED

    In some instances, the utility of the claimed invention will be provided, but the skilled artisan will not know how to effect that use. In such a case, no rejection will be made under 35 U.S.C. 101, but a rejection will be made under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. As pointed out in Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1871), an invention may in fact have great utility, i.e., may be “a highly useful invention,” but the specification may still fail to “enable any person skilled in the art or science” to use the invention. 81 U.S. (14 Wall.) at 644.

  77. Joachim Martillo March 13, 2018 2:08 am

    No burden shifting is specified in either 35 U.S. Code § 316 or 35 U.S. Code § 326.

    From reading IPR and PGR final written decisions, one can only conclude that all these post-grant review proceedings violate the statutes, which seem to envision a situation similar to criminal trials in which the prosecutor presents a prima facie case to a grand jury and then, if the grand jury finds cause, presents the case to a petit jury and has the burden of proving it to the petit jury.

    It might be a partial fix to create a grand PTAB panel to decide institution and a completely distinct petit PTAB panel to decide whether the petitioner has fulfilled its burden as some argued when the USPTO was attempting to formulate rules and regulations for the post-grant review proceedings.

    At this point in time, the mess in the US patent system as grown into a malignant cancerous tumor that threatens the US political economic system. SCOTUS can make the quickest, easiest, and most legally correct fix by declaring post-grant review proceedings unconstitutional.

    If we really need post-grant review proceedings (I am not convinced), in https://www.linkedin.com/pulse/ptab-village-idiot-federal-government-administrative-joachim-martillo/ I describe patent claim evictment procedures that might work.

  78. Joachim Martillo March 13, 2018 2:11 am

    I messed up the link in the previous comment.

    It should have been:

    Has the PTAB made the USPTO the Village Idiot of Federal Government Administrative Agencies?.

  79. Josh Malone March 13, 2018 4:20 am

    AAA JJ’s importation of the prima facie procedural tool into adjudication of vested patent rights is a pervasive and insidious error in the patent bar. The PTAB especially (along with some Article III judges as well) do not treat issued patents as patent rights, but rather as perpetual applications for a privilege / public right. Unfortunately even the Federal Circuit is split on this issue. A few months ago Judge Reyna wrote a sharp dissent decrying this prima facie doctrine in Intercontinental Great Brands v. Kellogg

    For too long, this court has turned a blind eye to what I consider to be a grave concern: the application of a prima facie test that necessarily achieves a legal determination of obviousness prior to full and fair consideration of evidence of objective indicia of nonobviousness. There should be no prima facie rule or test in the obviousness inquiry. Stated differently, the burden of persuasion should not shift from the challenger to the patent holder after a legal determination of obviousness has already been made.

  80. Josh Malone March 13, 2018 4:40 am

    Apologies to AAA JJ, his posts did not contain the point of view I ascribed to him.

    Thanks Joachim for provoking this important discussion.

  81. AAA JJ March 13, 2018 8:39 am

    “Perhaps it is too long since AAA JJ read the MPEP. ”

    I read some section of the MPEP just about every day. Your argument that applicant has to “prove” patentability is incorrect. Just like a defendant in a criminal trial never has to “prove” his/her innocence, a patent applicant never has to “prove” patentability. A patent applicant has to explain, through evidence and/or argument, why the examiner’s/PTAB’s “case of unpatentability” doesn’t meet the burden of proof that is on the examiner/PTAB. Applicants do not have to “prove” patentability. Ever.

    “AAA JJ’s importation of the prima facie procedural tool into adjudication of vested patent rights is a pervasive and insidious error in the patent bar.”

    I agree. I constantly read PTAB ex parte decisions where the APJ’s (not really as legally qualified as they should be) state that “The issue is whether the examiner has made a prima facie case…”

    No. The issue is: has the examiner met his/her burden of proof in establishing the unpatentability of the claims? Once the applicant rebuts the examiner’s “prima facie case” (which is any time the applicant responds basically) there should not be any further discussion of a “prima facie case.” The issue at that point, and at all points thereafter, is: are the claims unpatentable on the evidence and arguments of record (given the burden of proof in whatever forum the case is in)?

    “Apologies to AAA JJ, his posts did not contain the point of view I ascribed to him.”

    No problem here. Best of luck to you in your seemingly never ending battles. Don’t give up.

  82. Anon March 13, 2018 9:15 am

    Excellent exchange.

    A small bit of advice for Joachim: never take the MPEP at face value. Look at the actual cases and what those cases actually present. On numerous times I have run into outright errors of cases not only misrepresented, but the use by an examiner in a “cut and paste” mode was exactly opposite of what the cases stood for.

  83. Anon March 13, 2018 9:27 am

    …another thought: I am aware that you passed the patent bar somewhat recently (late last year if I recall correctly); and such an accomplishment was no small task, given the amount of material in the MPEP to be familiar with.

    Now you graduate to the next level: questioning everything that you had to memorize. Google some of the law school tactics for Case analysis ( “tactics for law school case analysis” yields several really good hits).

    And never let anyone tell you that critical thinking is passé or improper.

  84. B March 13, 2018 10:13 am

    ‘ On numerous times I have run into outright errors of cases not only misrepresented, but the use by an examiner in a “cut and paste” mode was exactly opposite of what the cases stood for.’

    True that!

  85. Joachim Martillo March 13, 2018 10:23 am

    I read rapidly, and I suffer from a form of hyperthymesia, which may seem like a useful thing except that I sometimes am not sure when I am.

    Passing multiple choice exams usually is not hard for me. For this reason I am always skeptical when someone tells me that he can work as doctor, lawyer, or engineer without having put in the time to hone his skills and to develop relevant critical thinking.

    I admit that I took the patent bar twice. I failed the first time but came close to passing when I had a 105 degree fever. The second time I took it I was suffering from superior semi-circular canal dehiscence but was probably overdosed with anti-vertigo drugs.

    It appears that I think more clearly when everything is spinning and I might have to crawl instead of walking than I think when I have a fairly high fever.

  86. AAA JJ March 13, 2018 10:53 am

    “On numerous times I have run into outright errors of cases not only misrepresented…”

    Any “errors” in the “case holdings” in the MPEP are not errors, they are deliberate misrepresentations of the holdings to permit the PTO to avoid obeying the law.

  87. Thomas Pain March 13, 2018 5:15 pm

    So many great comments about how incompetent is the PTAB. Meanwhile, in the real world, an Article III reviewing court today announced nine decisions concerning PTAB proceedings. One PTAB decision was vacated based on an intervening CAFC decision. The remaining eight were fully affirmed.

  88. Anon March 14, 2018 8:32 am

    Mr. Pain,

    Please be aware that your post can be labelled as “kicking up dust.”

    The “real world” as you put it is a world in which the problems being spoken of here continue to happen.

    Your offering then of “stuff” continuing to happen “in the real world” merely means that problems continue to happen.

    It does NOT mean that the problems are not real.

  89. Paul Morgan March 14, 2018 11:08 am

    Mr. Pain, thank you for your factual observation from the “real world,” and do not be discouraged from commenting by the usual non-substantive efforts of others to “shoot the messenger” of anything they don’t want to hear.

  90. Anon March 14, 2018 11:48 am

    As unsurprisingly as possible, Mr. Morgan mislabels dust-kicking as “observations from the real world,” quite missing the point that the problems IN THE REAL WORLD continue.

    Non-substantive? That would describe your ever-present cheerleading efforts Mr. Morgan.

    Substantive would be acknowledging the ongoing real world problems.

  91. Joachim Martillo March 16, 2018 8:16 am

    Test.

  92. Joachim Martillo March 16, 2018 8:23 am

    Thomas Pain@87 March 13, 2018 5:15 pm &
    Paul Morgan@89 March 14, 2018 11:08 am,

    I was recently working in the financial industry for a number of years and have had assignments in forensic accounting and in forensic statistics.

    Crooked finance guys learn two things quite quickly:

    (a) corrupt activity must be buried within a lot of legitimate activity and

    (b) the more complex the underlying structure (and terminology) in which the corruption is based, the harder it is for forensic investigators to connect the dots to identify exactly what the scam is.

    Shills can be stooges but not always — especially when the efforts to distract from the obvious increase as the criminality become more blatant.

    The evidence of USPTO corruption include strong indications of “bait-and-switch” con scams in the Telebrands v. Tinnus PGR and in the Cirrus v. Knowles Inter Partes Reexamination. In the Decision on Appeal in Ex Parte Martillo, the APJs lied in order materially to affect the judgment of the Appeal Court (criminal violation of 18 USC § 1001 and 18 USC § 371). This particular Decision on Appeal was improperly withheld from the FOIA reading room even though the patent application was public. This Decision on Appeal was the last PTAB decision made by APJs, who knew the SAWS status, which was unknown to the Applicant.

    Joseph Matal and other equally senior USPTO officials have been heavily involved the collection of economic data that includes economic effect of an issued or potentially issued patent. No one at the USPTO should have access to such data because it can be used to optimize corruption. I don’t know how long this data has been collected, but the collection of such data was part of the SAWS program, which the USPTO admits to have been initiated in 1994 just before the GATT changes to the US patent system. The GATT changes transformed IP into low-hanging fruit, whose theft USPTO officials could easily facilitate.

    As I pointed out above, in comments #66 and #71, the post-grant proceedings are killing completely valid patents (in bait-and-switch con scams) and leaving totally crap patents in place like those of Biscotti and Kenoyer while these selfsame proceedings are creating chaos in both the economy and also the legal system as they weaken the USA in comparison with countries that like China are developing strong patent systems and IP protection.

    The IPWatchdog article Debunking the IPR Myth of Nominal Impact to Overall Costs indicates that post-grant review proceedings have insignificant effect on costs of litigation over issued patents.

    Post-grant proceedings only provide corrupt USPTO officials with more opportunity and a chaotic legal environment in which such officials can engage in corrupt practices and to do it more efficiently.

  93. Concerned American citizen April 20, 2018 10:45 am

    Thank you IPWatchDog for your continued work on this deplorable condition called the PTAB that needs to be removed. The federal courts are already doing this work and the PTO has already instantiated claim to the intellectual property!

    The PTAB continues to prove that if you are a major corporation in the US, they will allow you to steal intellectual property and then help sway decision that the intellectual property in question is somehow the suspect. Federal Court rulings mean nothing in this nation if the PTAB is in your back pocket.

    ABSOLUTE CORRUPTION of patent law!

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