Mohawk Tribe Ready to Battle over Ex Parte Communications between PTAB Judges

By Gene Quinn
March 13, 2018

Attorneys for the St. Regis Mohawk tribe have sent an e-mail requesting permission to enter a heavily redacted document into evidence in the inter parte review (IPR) challenges relating to the RESTASIS patents acquired from Allergan. The document, which is an e-mail from Administrative Patent Judge Sheridan Snedden to Administrative Patent Judge James Arpin, was made available to attorneys for the tribe through a Freedom of Information Act (FOIA) request.

On Friday, March 9, 2018, the United States Patent and Trademark Office provided attorneys for the tribe some 500 pages responsive to a FOIA request centering on documents that would show whether any improper ex parte communications occurred between the three Administrative Patent Judges assigned to hear the RESTASIS IPRs, and who refused to allow the Mohawk tribe to assert tribal sovereign immunity. Hundreds of pages of documents were either blank, or completely redacted. Few pages actually provided any relevant information, and what was not redacted were largely already published decisions of the PTAB. Interestingly, also provided as a part of the FOIA request was an article written by Richard Lloyd of IAM Magazine, which was cut and pasted and widely distributed throughout the USPTO, seemingly with careless disregard of the copyright protection afforded to IAM Magazine.

What was provided by the USPTO as part of the March 9, 2018 document release does, however, clearly demonstrate that APJ Snedden had written communications with APJ Arpin about the topic of “Tribal Immunity”. This is relevant because APJ Arpin was not assigned to the case.

The USPTO is claiming deliberative privilege pursuant to 5 U.S.C. 552(b)(5), which protects an agency’s deliberative process privilege, to support their reason for providing such heavily redacted documents. See Mapother v. Dep’t of Justice, 3 F.3d 1533, 1537 (D.C. Cir. 1993). This deliberative privilege applies to documents such as “advisory opinions, recommendations and deliberations comprising part of a process by which governmental decisions and policies are formulated.”  NLRB v. Sears, Roebuck & Co., 421 U.S. 132, 150 (1975).

Attorneys for the Mohawk tribe have notified the USPTO that ex parte communications between an APJ assigned to the IPRs and an APJ not assigned to the IPRs cannot possibly fall within the deliberative privilege of (b)(5), as it is commonly referred to in FOIA matters.

Michael Shore, lead attorney for the Mohawk tribe, explained in an e-mail to the USPTO:

Communications between APJs on our panel and third parties, including other APJs not on the panel, cannot possibly be “deliberations comprising part of a process by which government decisions and policies are formulated” because only the APJs on our panel are authorized to participate in such deliberations as to the merits of our case. Third party communications cannot be deliberations because they are illegal under the [Administrative Procedures Act], as only our judges can decide our case, and any outside influences must be disclosed and made of record. This is not a Star Chamber or some third world country. We have a right to know what our panel is being told to do, suggested to do or guided to do.

The Shore e-mail goes on:

The [St. Regis Mohawk tribe] has an absolute due process right to have its legal issues decided by the APJs assigned to the panel, without undue interference based on politics. The fact that non-panel members are putting in their views or influencing our panel must be disclosed and cannot as a matter of law be privileged.

Discussions among the duly appointed panel members are privileged. Discussions and communications on the dispute and legal issues between the panelists and third parties not authorized to make a decision for the parties is NOT privileged, and is in fact potentially illegal ex parte communications unless disclosed and made of record. We have a right to know who opposes us beyond the Petitioners, even if those people are internal to the PTAB. This is why the APA requires ex parte communications with administrative judges to be made of record.

Shore concluded his e-mail to the USPTO putting the Office on notice of impending litigation, reminding the USPTO of its obligation to retain all information and documents in anticipation of a FOIA lawsuit that would seek to compel release of documents in non-redacted form.

In reviewing the March 9, 2018 document release there are several other e-mail communications that raise the specter of improper ex parte communications in violation of the APA, both relating to the Mohawk RESTASIS IPRs, as well as the IPRs where an expanded panel of the PTAB refused to recognize a sovereign immunity defense made by the State of Minnesota.

  1. On Tuesday, December 12, 2017, at 12:51pm, PTAB Vice-Chief Jacqueline Bonilla e-mailed APJ Christopher Paulraj. The subject is “Emailing: Hatch Waxman and AIA interplay”. The name of the attached file is partially redacted, as is the entirety of the e-mail communication. APJ Paulraj was on the panel that denied the assertion of sovereign immunity to the Mohawk tribe, and presumably this e-mail is related to the matter given it was included in the document production. Since Vice-Chief Bonilla was not assigned to the RESTASIS IPRs, and this communication occurred prior to the decision, this could be evidence of another communication in violation of the APA.
  2. On Tuesday, December 12, 2017, Vice-Chief Bonilla also e-mailed Lead APJ Aaron Moore. The subject is partially redacted: “Documents regarding REDACTED proposal – all drafts, pre-decision, and confidential”. The attachments list is completely redacted, but the body of the e-mail read: “For our call later. Thanks!” Presumably, this e-mail is also related to the sovereign immunity issue since it was disclosed as a part of the above referenced FOIA request. Neither Bonilla nor Moore were assigned to the RESTASIS IPRs, which raises the question about why they would be circulating pre-decisional drafts and discussing them. Moore was also not assigned to the expanded panel in the University of Minnesota cases.
  3. On December, 12, 2017, at 10:18am, APJ Snedden e-mails APJ Jacqueline Harlow. The e-mail subject is “FW: Tribal Immunity”. The e-mail forwards to APJ Harlow the e-mail sent to APJ Snedden on December 9, 2017, by APJ Arpin.
  4. On December 4, 2017, APJ Kalyan Deshpande, PTAB Deputy Chief Scott Boalick and PTAB Vice-Chief Scott Weidenfeller communicated via e-mail. The first e-mail, from Boalick to Desphande and Weidenfeller at 9:14am had the subject: “State Sovereign Immunity Cases”. The second e-mail, a response by APJ Deshpande, has the subject redacted. The substance of both e-mails is completely redacted. Subsequently, Deputy Boalick forwards the e-mail chain to PTAB Chief David Ruschke. This raises a question about improper communications that might have taken place regarding the University of Minnesota IPRs. APJ Kalyan Deshpande was not assigned to the expanded panel deciding the University of Minnesota sovereign immunity matter. This is relevant because this would have been prior to the decision in the University of Minnesota cases, which came out dated December 19, 2017.
  5. On December 14, 2017, at 11:34am, an e-mail that are somehow relates to the Mohawk tribe request was sent from PTAB Deputy Chief Boalick to Lead APJ Michael Tierney, Lead APJ William Fink, Vice-Chief Bonilla, APJ Michelle Ankenbrand, and APJ Deshpande. The subject and attachments are redacted, as is the body of the e-mail being forwarded. Tierney, Fink, Kalyan and Ankenbrand were not assigned to either the expanded panel in the University of Minnesota case or to the Mohawk RESTASIS IPRs.
  6. On December 14, 2017, at 11:36am, an e-mail is sent from an anonymous individual to PTAB Chief David Ruschke, Deptuy Chief Boalick, Vice-Chief Bonilla, Vice-Chief Weidenfeller, and Lead APJ Tierney. The includes the name of APJ Ankenbrand (implying it is from her) but the rest of the e-mail is redacted. Again, this would have been before the decision in the Minnesota IPR cases.
  7. On December 14, 2017, at 11:37am, Chief Ruschke forwards the 11:34am e-mail chain (see 4 above) to Bob Moore and Sylvia Gerukos. The subject, attachment and body are all redacted, but the message is marked as having “High” importance.
  8. On December 15, 2017, at 9:46am, an e-mail is sent from APJ Kalyan to Chief Ruschke, Deputy Chief Boalick, Vice Chief Bonilla, Vice Chief Weidenfeller, Lead APJ Tierney and Lead APJ Fink, with APJ Ankenbrand copied. The subject, attachments and substance are redacted. Again, this shows a communication among APJs not assigned to either the Mohawk RESTASIS IPRs or the University of Minnesota IPRs before the decision on the University of Minnesota IPRs was delivered.
  9. On December 15, 2017, at 10:16am, APJ Stacy Margolies e-mailed Chief Ruschke, Deputy Chief Boalick, Vice Chief Bonilla, Vice Chief Weidenfeller, and Lead APJ Tierney. The subject is partially redacted, but suggests that it is related to the RESTASIS IPRs, reading: “Pending AIA cases REDACTED new tribal immunity case”. The attachment name is partially redacted, but reads: “Pending AIA cases REDACTED 017.12.15.pdf”. APJ Margolies was not assigned to either the University of Minnesota or RESTASIS IPRs, and this communication was prior to the decision of either case.
  10. On December 15, 2017, at 11:06am, APJ Ankenbrand responds to the e-mail sent by APJ Deshpande earlier in the morning at 9:46am (see 7 above). The subject, attachments and substance of her response was redacted.

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 107 Comments comments. Join the discussion.

  1. Kevin E Noonan March 13, 2018 3:20 pm

    Creating lots of work for administrative law attorneys

  2. Pro Se March 13, 2018 3:24 pm

    Interesting we get to see some of the AIA APJs:

    APJ Jacqueline Bonilla – Foley & Lardner LLP – PARTNER – Feb 2002 – Jan 2012 10 yrs (Source: https://www.linkedin.com/in/jackie-wright-bonilla-0b6ab33/)

    APJ – Christopher Paulraj – McDermott Will & Emery – Jul 2011 – Apr 2014 2 yrs 10 mos (“Represented clients in patent litigation matters before the U.S. International Trade Commission and federal courts.”) – (Source: https://www.linkedin.com/in/chris-paulraj-b88b982/)

    APJ Aaron Morre – Foley & Lardner LLP – PARTNER – May 2009 – “Present” (still listed as presently employed at Foley) 8 yrs 11 mos (source: https://www.linkedin.com/in/aaron-moore-2b1b441/)

    APJ Sheridan Snedden – Hunton & Williams – CLERK – No showing of USPTO position (source: https://www.linkedin.com/in/sheridan-snedden-43a4342/)

  3. Anon March 13, 2018 4:01 pm

    I do hope these items are pursued and un-redacted copies are obtained.

    It would help shine some sunlight into the shadow workings.

    I do have to wonder though, what happened to 37 CFR 1.2:

    All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

    If there are “deliberations” which are not being shared on the record – the written record – how in the world is the Office complying with 37 CFR 1.2? The very basis to which they want to claim privilege for supports a prima facie case of impropriety.

  4. Anon March 13, 2018 4:02 pm

    Oh, and yes, I do hope notes of these actions are being submitted in an update to the Supreme Court as they deliberate the Oil States case.

  5. Brian March 13, 2018 4:50 pm

    How many Apple and Google cases were decided like this one! ? Where the panel were being instructed by other APJ / Chief judge / M Lee to influence the decision ?

    These emails show that any serious IPR defendant should file a FOIA request and demand the email exchanged by panel / different APJ’s.

    And have the ability to show violation of the APA and due process.

    If it looks like a duck and quacks like a duck, then it probably is a duck.

    PTAB is now looking more and more like a 3rd world star chamber!

    This is beyond appalling.

  6. Thomas Pain March 13, 2018 4:56 pm

    I love the “Battle” hyperbole. So is the PTAB circling the wagons?

  7. Pro Se March 13, 2018 5:19 pm

    @ Brain (5) – great point, and these communications look to be a standard practice to determine direction on cases. This involvement is much way beyond the so-called 3 APJs the statute calls to be involved in a AIA case.

    Then the redactions.. is there a precedent of USPTO redacted communications?!?!?

  8. Night Writer March 13, 2018 5:34 pm

    >>Communications between APJs on our panel and third parties, including other APJs not on the panel, cannot possibly be “deliberations comprising part of a process by which government decisions and policies are formulated” because only the APJs on our panel are authorized to participate in such deliberations as to the merits of our case.

    I don’t know. So, they called and talked to other APJs to get their opinions. I am just not sure that is a big deal.

  9. Arie Michelsohn March 13, 2018 6:30 pm

    Here is a link to an interesting article, “The Deliberation Paradox and Administrative Law.”

    https://digitalcommons.law.seattleu.edu/cgi/viewcontent.cgi?article=1734&context=faculty

    The article notes (at p. 423) that “deliberation is the touchstone for guaranteeing public access to meetings of government officials, but it carves a vast exemption to public access to records of those same officials or their agencies.” The article points to the potential conflict between agency deliberations not made of record and Chevron deference, and suggests that judicial review should defer only to disclosed deliberation.

    It would seem that a panel of the PTAB discloses deliberations of the PTO (the agency), to the extent it wishes to make them of record, in the decisions it issues. In doing so, it acts as an authorized representative of the agency in pronouncing the agency’s decision on a matter being adjudicated by the agency. I’m not sure I quite see what violation there is in any of this of the APA.

    Further, it would seem that on judicial review, the Federal Circuit will consider the application of tribal immunity as a pure question of law, for which it will accord no Chevron deference to the PTO’s decision, reasoning, or deliberations. So what is the harm?

  10. Gene Quinn March 13, 2018 7:28 pm

    Arie-

    The APA requires judicial independence. If superiors (Chief, Deputy Chief, Vice-Chief and Lead APJs) are speaking with subordinate APJs that directly calls into question the judicial independence demanded by the APA. Only those judges that are assigned to the case are supposed to decide the case. The USPTO FOIA almost conclusively proves that there is a lack of judicial independence since they are claiming deliberative privilege. How can there be a deliberative privilege in communications among and between those who do not have a right to deliberate?

  11. Gene Quinn March 13, 2018 7:31 pm

    Night Writer-

    You say: “So, they called and talked to other APJs to get their opinions. I am just not sure that is a big deal.”

    Perhaps it wouldn’t be a big deal if it were one APJ communicating with another APJ. But here the Chief, Deputy, both Vice-Chiefs and various Lead Judges are communicating back and forth. All of their communications are declared to be within the deliberation privilege.

    The APA requires judicial independence. Based on my understanding of the APA that is very strictly required. Coordinating deliberations with the top brass in the loop is not the type of judicial independence envisioned by the APA.

  12. Gene Quinn March 13, 2018 7:34 pm

    Brian @5-

    I think any IPR defendant that has lost patent rights should also put in a FOIA request. If there are suspicious e-mails as we see here I’d advise those IPR defendants to file a federal lawsuit against the Patent Office for violating the APA and wrongful deprivation of property.

  13. Arie Michelsohn March 13, 2018 9:18 pm

    Here is a link to the adjudication section of the APA:

    https://www.archives.gov/federal-register/laws/administrative-procedure/554.html

    Where in this section does it preclude deliberation between the deciding employee (APJ) and the employee’s supervisors (Chief, Vice-Chief, etc.) at the agency (PTO) on matters of pure law?

  14. Michael Shore March 13, 2018 9:52 pm

    The issue is “phantom expanded panels”. The PTAB has repeatedly claimed “panel stacking” is rare. It appears what they are doing is stacking by having the top leaders tell panels what to do, or what they want them to do, without actually stacking panels formally, on the record. This phantom panel stacking is worse than overt panel stacking because it lets them exert political influence, do political favors and deprive patentees of due process SECRETLY. Its disgusting. We are not going to go quietly. This is America, not Infringerania.

  15. Chris Gallagher March 14, 2018 8:32 am

    Michael Shore at #14 is absolutely right. The PTAB swamp is even more dangerous in the dark .

  16. Anon March 14, 2018 8:48 am

    Arie @ 13,

    The emails listed are not constrained between a judge on a panel and a supervisor of that judge.

    Further, your APA snippet does NOT override 37 CFR 1.2.

    Further still, you appear to want to throw a wall of text and say “I see nothing.”

    Your wall of text includes § 554(a) and (d) – I suggest that you open your eyes to see what you claim that you cannot see. Your answers await you.

  17. SunnyB March 14, 2018 9:47 am

    Gene @11

    The only independence required is with persons external to the PTAB. And the Director, Deputy Director and Commissioner of Patents are part of the PTAB. This was already decided by Federal Circuit en banc decision of In re Allapat.

  18. PTO-Indentured March 14, 2018 10:15 am

    Hmm… perhaps the PTO mistakenly divulged under the Freedom of Insultingly-Useless Information Act?

  19. Bemused March 14, 2018 10:42 am

    Michael Shore@14: “Infringerania” LOL! Thanks for brilliant renaming of the US patent system and the laugh (even though the underlying issue is certainly not a laughing matter).

    I too have other names that I normally use to for the PTAB/US patent system but I understand this is a family-friendly blog so I don’t want Gene to have to censor me. 🙂

  20. Paul Morgan March 14, 2018 10:52 am

    The prohibition against “ex parte communications” applies to the parties and their attorneys who communicate with judges without the knowledge or presence of the other side, not to judges talking to judges. Are you seriously proposing that Article III or other judges who have or had cases with similar legal issue cannot talk to one another?

  21. Gene Quinn March 14, 2018 11:05 am

    SunnyB-

    You are simply incorrect. The Administrative Procedures Act specifically requires judicial independence from internal sources.

    In Nash v. Califano, a case dealing with the Social Security Administration, an ALJ sued because he felt his judicial independence was being compromised by the agency. The case was dismissed by the district court, but was reinstated by the United States Court of Appeals for the Second Circuit. “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 explained.

    As far as Allapat is concerned, there was an expanded panel. There was no evidence or suggestion that those not on the panel were directing the outcome. Here we specifically have individuals NOT on the panel engaging in deliberations. I say they were engaging in deliberations because the USPTO relied on deliberation privilege. So either these individuals not assigned to the panel were engaging in deliberations that on their face make a prima facie case of interference prohibited by the APA, or the USPTO is abusing FOIA. It has to be one way or the other.

  22. Michael Shore March 14, 2018 11:17 am

    Paul,

    First, you are operating under the false assumption that APJs are judges in the same sense as Article III judges. They are not remotely similar. An Article III judge has lifetime tenure. They stand generally above politics and cannot be removed for deciding a case in a way their senior district judge or other district colleagues do not like. An Article III judge does not get performance bonuses or risk having their pay reduced if they do not act in accordance with a boss. Article III judges cannot have other judges assigned to decide cases with them in a “stacked panel” scenario.

    An APJ panel can be fired, have their pay reduced, have other judges added to the panel or in many other ways be coerced into making decisions the Panel members do not agree with and would not make in the absence of the control over their actions.

    Second, we are not talking about discussions around the water cooler with “colleagues” in the office. We are talking about the APJs on the panel having their BOSSES with control over their livelihood, assignments and future employment references telling them HOW to rule, editing their decisions, directing the conduct of the proceedings and doing all of it in SECRET. Those in charge at PTAB and PTO are political appointees who get input from political donors regularly.That politics is now ingrained in the PTAB’s operations. If we are going to outsource from Article III courts to the PTAB what patents are going to be allowed to be enforced, the APJs need to be either walled off from political influence OR that influence must be reflected in the record as what it is, the patent holders need a chance to respond and the reviewing Fed. Cir. panels need to know exactly why the PTAB ruled as it did — for political reasons due to pressure from their bosses.

    Stop thinking of APJs as “judges” in any Article III sense. The system is designed to ensure APJs do what the political appointees want them to do, and if they do not, they can be fired, reassigned, have other judges assigned to get the political result, etc. Because APJs are NOT judges in the Article III sense, any third party contacts must be in the record so it can be responded to by the Parties and considered on appeal.

  23. Anon March 14, 2018 11:57 am

    SunnyB @ 17,

    Your view of In re Alappat is not correct. That case says nothing about improper “ghost” panel expansion.

    As I have noted with some frequency of late, the ability to invoke an expanded panel is NOT a new power of the director.

    But the matters under discussion here are quite different than any holding of the In Re Alappat case.

    Mr. Morgan, do NOT make the mistake of equating actual Article III judges with the political employees of the administrative agency of the Executive branch of the government who happen to be engages in adjuditorial duties.

    Your credibility as to matters of the IPR regime is already low enough.

  24. Thomas Pain March 14, 2018 12:10 pm

    APJs are, simply and of course, not Article III judges. Nor do ALJ analogies apply. Social Security ALJs, for example, are not employees of SSA and thus should be independent from agency control. Contrast that with Congress making APJs employees of the USPTO and the USPTO subject to the policy direction of the Secretary of Commerce.

  25. Michael Shore March 14, 2018 1:46 pm

    Although the Model Rules of Judicial Conduct do not apply to APJs, they may reflect a kind of guide as to what the Federal Circuit might expect of them. So let’s look at Rule 2.9: Ex Parte Communications:

    (A) A judge shall not initiate, permit, or consider ex parte
    communications, or consider other communications made to the
    judge outside the presence of the parties or their lawyers,
    concerning a pending* or impending matter,* except as follows:

    (1) When circumstances require it, ex parte communication for
    scheduling, administrative, or emergency purposes, which does
    not address substantive matters, is permitted, provided:
    (a) the judge reasonably believes that no party will gain a
    procedural, substantive, or tactical advantage as a result of the ex
    parte communication; and
    (b) the judge makes provision promptly to notify all other parties
    of the substance of the ex parte communication, and gives the
    parties an opportunity to respond.

    MWS: This provision clearly is not at issue in the St. Regis case.

    (2) A judge may obtain the written advice of a disinterested
    expert on the law applicable to a proceeding before the judge, if
    the judge gives advance notice to the parties of the person to be
    consulted and the subject matter of the advice to be solicited, and
    affords the parties a reasonable opportunity to object and
    respond to the notice and to the advice received.

    MWS: This might apply, but if the advice from other PTAB judges, officers and directors was done under this exception, it was not done correctly.

    (3) A judge may consult with court staff and court officials whose
    functions are to aid the judge in carrying out the judge’s
    adjudicative responsibilities, or with other judges, provided the
    judge makes reasonable efforts to avoid receiving factual
    information that is not part of the record, and does not abrogate
    the responsibility personally to decide the matter.

    MWS: This exception would only apply if the consultation “does not abrogate the responsibility personally to decide the matter” and I would think that a discussion informally might pass the smell test, but exchanging drafts, being directed as to outcome by your boss and letting others edit the decision clearly stinks.

    (4) A judge may, with the consent of the parties, confer
    separately with the parties and their lawyers in an effort to settle
    matters pending before the judge.
    (5) A judge may initiate, permit, or consider any ex parte
    communication when expressly authorized by law* to do so.
    (B) If a judge inadvertently receives an unauthorized ex parte
    communication bearing upon the substance of a matter, the judge
    shall make provision promptly to notify the parties of the substance of the communication and provide the parties with an opportunity to respond.

    MWS: This was clearly not done, and in fact appears to have been violated.

    (C) A judge shall not investigate facts in a matter independently,
    and shall consider only the evidence presented and any facts that
    may properly be judicially noticed.
    (D) A judge shall make reasonable efforts, including providing
    appropriate supervision, to ensure that this Rule is not violated by
    court staff, court officials, and others subject to the judge’s
    direction and control.

    So if the PTAB Panel hearing our case were Article III judges subject to the Code of Judicial Conduct, they would appear to have violated it in multiple respects. Until we see the redacted emails, we will not know for sure, but I ask again, “If the Panel was not stacked, how can communications with others in the PTAB be covered by a deliberations privilege?”

  26. Anon March 14, 2018 3:07 pm

    Mr. Shore,

    In addition to your views (vis a vis the APA), also consider the controlling 37 CFR 1.2.

    As far as I know, no one has suggested that 37 CFR 1.2 does not control what happens in any post-grant review.

    One has to wonder why there is this deep abiding loathing of sunshine by the PTAB?

  27. Michael Shore March 14, 2018 3:14 pm

    “One has to wonder why there is this deep abiding loathing of sunshine by the PTAB?”

    The answer is because PTAB sometimes works as publicly described, but its core, primary function from the start was political — to destroy the US patent system by making it nearly impossible for a small entrepreneur or patent holder to enforce a patent against an economic monopolist who has nothing to fear from other market participants. Since Article III courts and juries cannot be trusted to do what the economic monopolist want done, they paid off Congress to turn the patent enforcement system over to a part of the government that is most susceptible to political influence, the executive branch that needs $1 billion every four years to win re-election or election. This is not about quality patents, efficient dispute resolution or any of the other talking points that resulted in the AIA. Its about the current market winners keeping their dominance in a fast-changing technological landscape where innovations come quickly from multiple sources that want to be compensated fairly.

  28. Thomas Pain March 14, 2018 3:32 pm

    Someone please explain how 37 CFR 1.2 could possibly be thought to apply to communications between employees within the PTO. The regulation, by its terms, applies to business “with” the PTO.

  29. SunnyB March 14, 2018 3:36 pm

    Gene @21

    External to the PTAB, and internal to the agency is prohibited. And keep in mind 35 USC 6 and Allapat defines who is part of the PTAB. There is nothing which precludes ALJs and others within the PTAB from talking to each other.

  30. Michael Shore March 14, 2018 3:52 pm

    The Supreme Court in Butz v. Economou, 438 U.S. 478, 513 (1978) held that because ALJs were required to make decisions under procedures that “assure that the hearing examiner exercises his independent judgment on the evidence before him, free from pressures by the parties or other officials within the agency” that the examiners were immune from suit.

    There is a Supreme Court fundamental due process right when an ALJ makes a decision that it be independent and free from pressure from officials “within the agency”, so if that fundamental right applies to ALJs, it will necessarily apply to APJs who have even LESS independence from their superiors since unlike ALJs, APJs work directly for the agency and are subject to being fired for any reason.

  31. Anon March 14, 2018 4:19 pm

    Mr. Pain,

    Somehow the following phrase seems to escape your grasp:

    The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.

    Actions based on ANY thing not on the written record in the Office are verboten. There is ZERO room for shadow work with the rule of 37 CFR 1.2 that binds the Office.

  32. Anon March 14, 2018 4:20 pm

    Sunny @ 29,

    You remain absolutely incorrect.

  33. Paul Morgan March 14, 2018 4:33 pm

    Re: “APJs work directly for the agency and are subject to being fired for any reason.”
    Who just makes stuff like that up? These are civil service employees with all kinds of employment protection, not Presidential appointees.

  34. Thomas Pain March 14, 2018 4:35 pm

    “Actions based on ANY thing not on the written record in the Office are verboten.”

    I see. Every Board decision must include a transcript of any oral conversations the panel members had concerning the merits of the case.

    Can somebody _else_ please explain how 37 CFR 1.2 could possibly be thought to apply to communications between employees within the PTO?

  35. Paul Morgan March 14, 2018 4:47 pm

    Mr. Pain, many personal-interest commentators have such acute cases of IPR apoplexy that they do not want to be bothered with rational arguments when grasping at legal straws and conspiracy theories is much simpler.
    Hopefully we will soon get Sup. Ct. and Fed. Cir. decisions and rule changes that will deal with IPR issues in a more appropriate manner.

  36. Josh Malone March 14, 2018 6:09 pm

    We don’t need the PTAB. This case proves it. If Mylan and Teva wanted to sell a cyclosporin dry eye treatment they could use Allergan’s 0.10% formula which is in the public domain. Or they could invent a better treatment. Or they could copy the Restasis formula and challenge validity in a real court – which they did and won. The PTAB is unnecessary and serves no legitimate purpose for issued patents.

  37. Michael Shore March 14, 2018 6:10 pm

    Paul,

    I do have a personal interest, several in fact. I am the inventor on more than 20 issued US patents. I represent patent holders, including some of the most respected and sophisticated research universities in the world. I also am an American citizen sick of seeing my country become a banana republic, with the new bananas being smartphones and software.

    Our founding fathers attempted to create a government with trial by jury to prevent the administrative state controlled by the powerful from oppressing the citizenry when it comes to the taking of property. A patent, last time I checked with Supreme Court precedent is still personal property of the patentee. IPRs have robbed citizens of the fundamental constitutional right to have the rights over the use and compensation for the taking of their property decided by a jury of their peers instead of “judges” chosen by the political class, controlled by the political class and subject to the whims of the political class and their mega-donors.

    My goal is the complete, utter destruction of IPRs and a return to the patent system that made the United States the most inventive, innovative, creative economy in the world — the system that existed pre-IPR. If I have to find loopholes in the current system to do it, fine. If the Supreme Court finds it unconstitutional, better. If Congress amends the law, even better still. But the IPR system is rife with bias, prone to corruption and political influence and most importantly, is not needed. Google had 65% market share in 2012. It has over 85% today. It does not need to destroy the patent system to be successful. If other big tech firms need a weak patent system to remain on top, that means they are stealing more than innovating. Thieves do not deserve protection from the government.

    In licensing meetings for real inventors (university and industry), infringers literally tell me that unless my clients take 10% of what they deserve, the IPRs will come thick and fast. IPRs are not, and never were, designed and created primarily to kill bad patents. Bad patents would die on the first IPR under the same rules applied in district courts as to the presumption of validity, POSITA claims constructions and clear and convincing evidence. District courts using those rules killed patents at a 27% rate prior to the AIA. IPRs were designed to keep good patents from disturbing the incumbent economic monopolists and dominant players.That is why they have a 67 to 90% kill rate, depending on if you count a single attempt or serial ones against the same patent. If one believes this to be fair, one has to assume that almost the only patents being asserted are lousy ones. It is a statistical impossibility, especially considering the USPTO itself has estimated only 8% of patents are issued incorrectly. I can live with a kill rate between 8 and 27%, but 70-90% kill rate is a symptom of something fundamentally amiss, rotten. So yes, I am a little “conspiratorial” in my thinking.

    If the PTAB is going to kill patents because it was created to do so, then I am going to insist it do so following the letter and spirit of the APA, fundamental due process and in the light of day so the public can see it and the politicians cannot deny the true purpose.

  38. Anon March 14, 2018 6:23 pm

    Mr. Pain,

    Your comment of “Every Board decision must include a transcript of any oral conversations the panel members had concerning the merits of the case.” misses the point.

    Those conversations may occur. It is merely that those conversations – not being on the written record, may NOT (in fact) be something upon which actions are based.

    Your seeking someone else to tell you (something else) does not detract from the fact that what I have told you is in fact correct.

    Perhaps we can come at this from a different angel.

    What in the world do YOU think 37 CFR 1.2 means, and why do you think that any particular part of the Office would NOT be bound by that rule?

    You seem to have something in mind other than accepting what I tell you – what is that something?

  39. Anon March 14, 2018 6:34 pm

    Mr. Shore,

    Mr. Morgan is a shameless IPR apologist who is quick to accuse others of the very things that he peddles.

    He has been taken to task repeatedly on positions that are in truth indefensible for anyone who understands why the US chose to create a patent system in the first place.

    It has been revealed (by him) that he dropped his USPTO registration number (and therefor may not engage in the obtaining of patent protection for innovators).

    His only connection is in regards to the weakening (and destruction) of the patent system. He has been invited nigh countless times to engage on the merits of discussions and will “beg off” saying that we all should wait to hear the Court’s pronouncements. What he deems as “appropriate” forsakes the fact that the Court (and courts) have had a hand in making a mockery of the US patent system.

    It is an exceedingly rare event that anything that he contributes adds anything of substance or advances any cogent legal discussion, beyond some bare mention of basic law.

    A discussion on any of the problems of the current state of patent law, their causes or possible solutions is simply beyond his ken.

  40. Edward Heller March 14, 2018 7:07 pm

    Gene, another important and excellent post.

    Phantom panels.

    May I bring something else up? Allyson Ho represents HP in its en banc petition in Berkheimer v. HP. HP is the same as the HP in MCM Portfolio LLC v. Hewlett-Packard. One would naturally not hire a lawyer or firm aligned with HP to represent the MCM side of the argument regarding the constitutionality of IPRs. But, low and behold, who represents Oil States?

    Allyson Ho.

    And, we all know my own view of the job she did at oral argument, virtually tanking our case by conceding the constitutionality of reexaminations.

  41. Paul Morinville March 14, 2018 7:13 pm

    “Infringerania”… my new favorite word.

  42. Thomas Pain March 14, 2018 7:28 pm

    I have been taken to task on a position that is in truth indefensible for anyone who understands Title 37 of the Code of Federal Regulations. I am chagrined.

  43. Thomas Pain March 14, 2018 8:04 pm

    Oh, I see what you did there. Now I know what is meant by being “taken to task” on an “in truth indefensible” position.

    Upon further reflection, I remain unconvinced. I see that we have some resident PTO bar review lecturers. Can somebody, anybody, please help out with explaining how 37 CFR 1.2 might possibly be thought to apply to communications between employees within the PTO?

  44. Night Writer March 14, 2018 8:11 pm

    @40 Ned >>And, we all know my own view of the job she did at oral argument, virtually tanking our case by conceding the constitutionality of reexaminations.

    I listened to her and agree that she did an abysmal job.

    @11 Gene: after further consideration, I think you are right that the communication does present a problem.

  45. Edward Heller March 14, 2018 8:43 pm

    Night, it is if Any Boleyn were being represented by a lawyer on retainer to King Henry VIII. Why “of course” he would do “his best.”

  46. Anon March 14, 2018 9:13 pm

    Mr. Pain,

    Perhaps YOU should take a shot (as I suggested).

    You seem to have a position already in mind, and appear to just be a tr011 about it.

  47. Thomas Pain March 14, 2018 11:30 pm

    COMMENT DELETED.

  48. Gene Quinn March 14, 2018 11:47 pm

    Thomas Pain at 24-

    You say: “APJs are, simply and of course, not Article III judges. Nor do ALJ analogies apply. Social Security ALJs, for example, are not employees of SSA and thus should be independent from agency control. Contrast that with Congress making APJs employees of the USPTO and the USPTO subject to the policy direction of the Secretary of Commerce.”

    The ALJ analogy most certainly does apply. Many on the PTAB couldn’t qualify to become ALJs because they do not have enough experience. That aside, it doesn’t matter whether Congress made APJs employees of the PTO or not. The Administrative Procedures Act applies to the PTAB, and the APA requires judicial independence. So you are wrong.

  49. Gene Quinn March 14, 2018 11:49 pm

    Thomas Pain’s comment at #47 was deleted. It substantively offered nothing and resorted to “your mother”. That type of commentary, while allowed and even encouraged elsewhere, is not tolerated here.

    -Gene

  50. Thomas Pain March 15, 2018 12:02 am

    Substance? # 43 remains an unanswered question.

  51. Thomas Pain March 15, 2018 12:15 am

    The PTAB is not consistent with the APA. Query. Who was it that made the PTAB and the AIA?

  52. Gene Quinn March 15, 2018 12:19 am

    Thomas Pain @51-

    You ask: “Who was it that made the PTAB and the AIA?”

    Answer: Congress.

    Now please answer this: Where in the AIA or any law passed by Congress does it authorized APJs to deliberate along with other APJs not assigned to the case?

    I’ll answer for you: Nowhere.

    You can keep your head in the sand and be ignorant if you want, up to you. As for the “your mother” comment, if you can’t do better than that please go elsewhere.

  53. Thomas Pain March 15, 2018 12:21 am

    And who was it that made the APA?

  54. Thomas Pain March 15, 2018 12:23 am

    And #43 remains unanswered.

  55. Gene Quinn March 15, 2018 12:23 am

    Thomas Pain @53-

    I’m getting the sense that you are the troll you were charged with being. Certainly you aren’t interested in an intellectually honest discussion. You ask a lot of questions but answer none.

    Where in the AIA does it say that APJs assigned to a case can deliberate with APJs not assigned to the case?

  56. Gene Quinn March 15, 2018 12:29 am

    Thomas Pain @54-

    Incorrect. Anon seems to have explained it well. The fact that you ignore the explanation doesn’t mean that your inquiry has gone unanswered.

  57. Thomas Pain March 15, 2018 12:32 am

    Really? You bring out the T word? I will answer a question. #43. 37 CFR 1.2 does not apply to internal PTO communications.

  58. Gene Quinn March 15, 2018 12:36 am

    Thomas Pain-

    Who made you the authority on what 1.2 means?

    What 1.2 says is very straight forward: “The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.”

    The PTAB seems to clearly be taking action on other than the written record. It seems APJs are taking action based on politics and policy, not the merits of the case they are deciding. If they want to take politics and policy into account it has to be placed on the record. That is how the system operates. That you don’t want it to be that way, or incorrectly don’t believe it is that way, doesn’t really matter.

    You think you know everything, but what you are demonstrating is a complete lack of understanding of very basic aspects of Administrative Law and patent procedure.

  59. Gene Quinn March 15, 2018 12:39 am

    Thomas Pain…

    One more thing… You say: ” I will answer a question.”

    So why won’t you admit then that nowhere in the Patent Act (or any other law) is there authorization for APJs to deliberate with other APJs not assigned to the case?

    This is why you are charged with being a troll. You ask questions, your mind is made up, and you refuse to acknowledge even simple truths.

  60. Thomas Pain March 15, 2018 12:40 am

    And where in the AIA or any law passed by Congress does it say it’s ok to go check your mailbox?

  61. Thomas Pain March 15, 2018 8:43 am

    When my children accuse me of thinking I know everything I assure them that I do not. But I tell them that I do know more than you (the children, I mean). I’ll answer another question.

    Where in the AIA, the Patent statutes, or any existing law passed by Congress is there authorization for a person to talk with a neighbor about what’s in that person’s mailbox?

    Answer: Nowhere.

  62. AAA JJ March 15, 2018 9:46 am

    “Where in the AIA, the Patent statutes, or any existing law passed by Congress is there authorization for a person to talk with a neighbor about what’s in that person’s mailbox?”

    You are terrible at analogies. Kind of like Random Examiner on that other site.

    The PTO is very fond of making decisions based on off the record considerations. Remember second pair of eyes? SAWS? The NTP reexam?

    When applicants and patentees are required to respond to PTO actions they have a right to know that what is on the written record is the actual position of the PTO, not something that was made up to achieve the ends the PTO wants achieved.

  63. Thomas Pain March 15, 2018 10:01 am

    Finally, our resident expert in patent law chimes in. AAA JJ, would you like to take a shot at # 43?

  64. Thomas Pain March 15, 2018 10:14 am

    And understand, Mr. JJ, I’m not saying there’s not an ultimate case for relief. I’m just saying that I haven’t been impressed with any of the arguments thus far. And trying to bring 37 CFR 1.2 into the mix harms credibility.

  65. Anon March 15, 2018 10:18 am

    Mr. Pain,

    Others very much expert in patent law have already answered you.

    That you continue to not like the answer does not change the veracity of the answer.

    Further, if you look at how AAA JJ responded to you, he is basically calling you out for attempting a fallacy distinction in the end result that you want to reach (an answer – your post at 57 – that is simply not correct).

    If you want to advance this (even a little), perhaps you can explain your answer at post 57 (staying on point as to my post at 31`).

    The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.

    Please explain why you feel this somehow does NOT apply to action of the Patent and Trademark Office – particularly the very action of which is on point here – the determination to which 37 CFR 1.2 is geared to.

    If you want to say a law on point does not apply, you need to do more than merely question if it applies and then provide a raw conclusory statement that it does not apply.

    (here is a hint: do not try to apply some fallavy of an anology – answer directly)

  66. Anon March 15, 2018 10:19 am

    And trying to bring 37 CFR 1.2 into the mix harms credibility.

    That is rather ironic, as it is your credibility that is suffering harm here.

    Whether or not “you are impressed” matters not at all.

  67. AAA JJ March 15, 2018 10:28 am

    “…would you like to take a shot at # 43?”

    Asked and answered.

  68. Michael Shore March 15, 2018 10:56 am

    The SOP for expanding panels is pretty clear that any expansion must be on the record, requiring a written decision stating why the panel was expanded. See https://www.uspto.gov/sites/default/files/documents/SOP1%20-%20Rev.%2014%202015-05-08.pdf

    It is completely inconsistent with these SOPs for panels to consult on the merits with their superiors or colleagues to the point that they exchange opinion drafts, send and receive case law for comment or share the Parties briefings on issues, again asking for comment. The PTAB has testified before Congress, argued before the Supreme Court and made repeated representations in speeches that panel stacking is very rare and follows the SOPs. All of the SOPs are rendered meaningless if a Panel can be “ghost expanded” by input from the senior staff and Chief Judge and Director without following the SOPs. Its not even the contacts among non-Panel members of PTAB that disturbs me the most. Its the fact that those non-Panel members can be contacted/lobbied directly by persons, entities, trade groups who want a certain result (no sovereign immunity) and those inputs can come into the process through the non-Panel members of PTAB’s participation in the decision making and nobody can trace that to its source, likely a big political donor to the party in power.

    Its just basically a fundamental due process violation to have your case decided/influenced by persons who do not appear in the record, and whom you have no chance to respond.

  69. Thomas Pain March 15, 2018 11:15 am

    # 67, what a disappointment. I was not aware that some people think that the rule for interpreting a regulation is to ignore the statutory framework, ignore its regulatory history, ignore the notice and comment rule making, excise a single sentence from a section, impart to that sentence its broadest unreasonable interpretation, divorced from the remainder of the Title section and from any meaningful context.

    I’m beginning to understand why there’s a Rule 36 graveyard at the CAFC.

  70. AAA JJ March 15, 2018 11:45 am

    “I was not aware that some people think that the rule for interpreting a regulation is to ignore the statutory framework, ignore its regulatory history, ignore the notice and comment rule making, excise a single sentence from a section, impart to that sentence its broadest unreasonable interpretation, divorced from the remainder of the Title section and from any meaningful context.”

    That’s the examining corps SOP. Surely you understand it. It’s how you make production.

  71. Anon March 15, 2018 2:49 pm

    Mr. Pain @ 69,

    For all of your complaints, you tie none of them to the statute at the point of this discussion.

    Once again, it appears that all you want to do is complain in some nebulous fashion, and to do so without any merit.

    As I have twice now suggested, please make a case for your desired “Ends.”

    Take at least a small step to such a cogent position. Elsewise your “tactic” of Accuse Others Of That Which You Do places you in some rather unsavory company.

  72. The Time Is Now To Act March 15, 2018 6:33 pm

    Kudos to Mr. Shore for actively participating in the comments here.

    Building on Gene’s comment @ 12, A thought for Mr. Shore would be to take the findings from his FOIA as the statistically significant sample and as the first written evidence of widespread Ghost Panels. Then consider:

    1) Has the PTO and personnel acted in a Tortious manner. If so, is this actionable outside the Federal Court of Claims?

    2) If patentees who have lost patents and companies to IPR have fell victim to similar treatment during IPR, the wide population would likely benefit from a general memorandum put out by your office outlining the process you went through to file a FOIA request and if such a request need be filed through counsel.

    3) Conceivably, treatment has been homogeneous and widespread. Therefore, are you representative of the lead member of a class?

    4) Pursuant to 3), in a prospective general memorandum to other affected parties, perhaps on a website, does it make sense to solicit parties to get in touch if also a prospective member of the class?

  73. Thomas Pain March 15, 2018 9:39 pm

    # 71 ok tar baby I’ll bite. What is the statute at this point of the discussion?

  74. Thomas Pain March 15, 2018 9:54 pm

    Because I’m bored.

  75. Thomas Pain March 15, 2018 10:57 pm

    Btw,gene, I’m trying to enter a substantive response but your system tells me there are too many words. Have we been paying our bills?

  76. Anon March 15, 2018 11:18 pm

    Tar baby?

    You are already on thin ice as a Tr011. Start talking like that and your time here will be even shorter.

    Hmmm, Accuse Others and now mindless ad hominem. You’ve been taking lessons at all the wrong places, eh?

  77. Thomas Pain March 15, 2018 11:24 pm

    Did not answer the question presented. Big, big surprise. Are you the hall monitor?

  78. Gene Quinn March 16, 2018 12:35 am

    Thomas Pain-

    Sorry, I’m tired of your juvenile responses and taunting. There are plenty of places for you to engage in that low rent type of commentary. Just not here. Goodbye.

  79. S. Morse March 16, 2018 11:17 am

    The “written record” in 37 cfr 1.2, upon which PTO actions are based, is composed of the documents in the file wrapper. Just the file wrapper. It’s an un-interesting rule that has nothing to do with a “shadow record.” Who makes this stuff up?

  80. Anon March 16, 2018 11:32 am

    Perhaps the biggest affront by Mr. Pain is how far off the mark his own writings here are from his chosen pseudonym.

    Such a choice of name coupled with the lack of content in his writings only evinces more that his intent here was not to engage in any meaningful dialogue.

  81. Gene Quinn March 16, 2018 11:42 am

    S. Morse-

    In its entirety 37 CFR 1.2 says:

    “All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.”

    Please point out the language that makes Rule 1.2 applicable only to the file wrapper.

    By its explicit terms 1.2 says “all business” not just prosecution business.

    The fact that the PTAB was formed 5+ years ago doesn’t change the fact that the PTAB is a part of the USPTO, and doesn’t somehow mean that the judges of the PTAB are exempt from PTO rules. In fact, I’ve been explicitly told that the PTAB judges are employees of the USPTO. In fact, the all employees ethics policy is the only policy applicable to PTAB judges. So as employees of the USPTO there can be no legitimate argument that Rule 1.2 does not apply to them or their endeavors.

  82. Michael Shore March 16, 2018 11:56 am

    While I appreciate all of the back and forth on the CFRs and APA, the law as stated repeatedly by the United States Supreme Court is that fundamental due process rights exist when an ALJ, APJ or any other adjudicative officer handles issues of contested facts and law. The APA is designed to meet that fundamental due process requirement. But if the APA, the CFRs and other rules, regulations and statues allow for conduct that falls short of fundamental due process, the violation still exists.

    The Supreme Court has on two occasions expressly stated that a hearing office, or ALJ must exercise their decision-making powers “free of agency interference or influence” on the merits. So whether the conduct of the APJs, the PTAB director, the chief judge or other high ranking supervisor judges violates the letter of any regulation or rule is relevant, but not decisive. The decisive issue is whether persons not members of the Panel sought to interfere in or influence the decision of the Panel without the knowledge, consent or ability to respond by my clients. It seems pretty clear that happened in our case, and it likely has happened in others.

    Expanded panels are likely their own form of interference and influence and of questionable constitutionality, but at least they are not secret. Secret, undisclosed interference and influence are clearly beyond the bounds of what is allowed in a country that adheres to the rule of law, an independent judiciary (or judiciary proxy) and respect for due process.

    Instead of, or in addition to, arguing how many statutes or regulations might apply, the focus should be on the question, “Was the patent holder given a fair opportunity to present their case to a neutral, unbiased, uninfluenced by politics panel that was transparent in its decision-making process?”

    If the answer is “Yes” then likely no due process violation.

    If the answer is “No” then the entire process is constitutionally flawed.

    To answer either way, you need the facts on who communicated with the panel,what was communicated and why. We are going to obtain that information one way or the other, and the fact that the PTAB is fighting us tooth and nail to prevent us from learning how our decision was affected by non-Panel members tells me they understand they have a real problem.

  83. Anon March 16, 2018 12:22 pm

    S.Morse,

    Given the choice of historical pseudonym, and the equally vacuous “who makes this up” feel of the comment, I suspect that you are T. Pain.

    FYI, the image file wrapper is indeed a repository of the written record, but that has nothing to do with the limits of 37 CFR 1.2 and actions taken by the administrative agency known as the Patent Office (which includes the PTAB), which must heed that rule of law.

    You are rather missing the entire point of why that section of rule of law is being presented.

    .

    Gene, how much would you like to wager that both Mr. Morse and Mr. Pain have used fake email addresses in order to post here?

  84. Anon March 16, 2018 12:26 pm

    Gene,

    I owe you a soda as well – I had not hit the refresh button and posted without reading your answer to “S.Morse.”

    Mr. Shore,

    Your point is a good one. But I would (again) remind people that the power of the Director of the USPTO has included (as far back as I can remember) the power to set enlarged panels.

    Such is not a new power.

    But your point remains – even that “old power” may have Constitutional infirmities (if not facially, then surely as applied).

  85. S. Morse March 16, 2018 12:27 pm

    The language in 37 cfr 1.2 that makes the rule applicable only to the file wrapper is “exclusively on the written record in the Office.” Even before getting to Chevron deference. But don’t let me discourage you. It would be a hoot to see somebody try your Rule 1.2 argument at the Federal Circuit.

  86. Anon March 16, 2018 12:46 pm

    S.Morse,

    Your parsing of the rule is most odd. You would divorce full sentences from the rule with your reading.

    What law school taught you how to read a law like that?

  87. Gene Quinn March 16, 2018 12:49 pm

    S. Morse-

    Sorry, you are wrong. You are making up what you are saying simply to troll this comment thread. Indeed, you are so objectively wrong further response is unworthy of my time.

  88. Paul Morgan March 16, 2018 1:26 pm

    If that Rule could be read that literally it would prohibit application examiner oral interviews, prohibit all oral motion hearings and oral final hearings in all PTO appeals or trials, and prohibit all the final hearing decision conferences and decision draft reviews between the 3 APJs that are on all PTAB panels.

  89. S. Morse March 16, 2018 1:39 pm

    Mr. Shore,
    The particular rule no longer being discussed is agnostic with respect to Constitutional or administrative due process. I don’t know enough about your situation to comment, other than that due process issues were raised decades ago in Alapatt that have yet to be resolved.

  90. Anon March 16, 2018 2:17 pm

    Mr. Morgan,

    You are not correct. Each of those things may fully occur. It is only what stems from those things and that are reduced to the written record upon which the action may stand.

    Your “cheerleading” efforts once again outshine your understanding of the rule of law.

  91. Gene Quinn March 16, 2018 10:57 pm

    S Morse-

    You say: ” I don’t know enough about your situation to comment…”

    Yet you do comment. Perhaps you should try and inform yourself before commenting.

  92. S. Morse March 18, 2018 1:17 am

    # 91, attorneys get embarassed all the time at the Federal Circuit when they use partial quotes. The rest of the quoted sentence said due process issues were raised in Alapatt that have yet to be resolved. Do you disagree with that assessment? If so, in what ways does your assesment differ?

  93. Anon March 18, 2018 7:14 pm

    S. Morse,

    Are you attempting to carry on with the point attempted by Sunny B. at post 17 – which was corrected at post 23?

  94. Gene Quinn March 19, 2018 12:42 pm

    S. Morse @92-

    It is interesting that you talk about the Federal Circuit being upset with partial quotes. Do you suppose they might also be upset with outright lies?

    In Alappat the Federal Circuit explicitly did NOT address due process. It was raised in an amicus brief and at oral argument, but not raised by Alappat, so it was waived.

    As far as the Commissioner’s power to designate panel members, that is NOT what is at issue here. You can try and cloud the issue with subterfuge, but anyone who can read knows that Alappat did not address the situation where Judges not on the panel engaged in deliberations. That violates the APA, period.

    If you are unable to keep up, and you find it necessary to resort to lies, please go elsewhere. I’m not going to allow you to hijack comments as you did when you were going by the moniker Thomas Pain.

  95. Michael Shore March 19, 2018 12:49 pm

    We expect to get your second tranche of FOIA request documents this week. Amazingly, they assigned our FOIA request to a young lawyer who only works two days a week, so she is having difficulty coordinating the response among the PTAB, PTO and individual employees. I expect this to drag out for months so whatever is revealed will not be made of record to be used in our appeal or publicized before Oil States is decided. We have requested our IPR panel to allow us to make the production so far of record (in part), and they of course refused.

  96. S. Morse March 19, 2018 1:29 pm

    In #81 I said due process issues were raised decades ago in Alapatt that have yet to be resolved.

    # 82 says, in rebuttal, “In Alappat the Federal Circuit explicitly did NOT address due process.”

    First — # 82 does not reproduce precisely what was said in #81.

    Second — “This is not to say that the Commissioner’s authority to designate the members of a Board panel may or may not be constrained by principles of due process or by Title 5, the Administrative Procedure Act (APA). However, as noted herein, Alappat has not raised any such arguments in this appeal, and therefore we need not address such issues.” In re Alappat, 33 F.3d 1526, 1532 n.4 (Fed. Cir. 1992).

    Thus, due process issues were raised in Alappat but not resolved.

  97. S. Morse March 19, 2018 1:35 pm

    The relevant notes at present are # 89 and # 94.

  98. Anon March 19, 2018 2:43 pm

    So,

    S.Morse and T. Pain are the same (as suspected).

    Maybe either will engage on the merits (instead of the side show of Alappat and the fact that THAT issue was not properly before that body – it is a technicality that the body “did not resolve the issue,” given that the issue while raised simply was not properly before the body.

    I remain curious as to which law school taught you how to read the law (including now an understanding of the scope of courts – even non-Article III courts – and what it means to resolve an issue properly.

    It appears that you have some “Ends” firmly in mind. Perhaps you are “self-taught.” In that case, I would recommend setting your desired End State aside at least on first pass and aiming for clarity instead of how you think you can bends things to support your view.

  99. Gene Quinn March 19, 2018 8:50 pm

    Sorry S. Morse, but the due process issues were not before the Federal Circuit in Alappat. No matter how you try and twist the case it just won’t work.

  100. S. Morse March 19, 2018 9:28 pm

    Just out of curiosity, where did I say that due process issues were before the Federal Circuit in Alapatt?

  101. Anon March 20, 2018 12:15 pm

    S. Morse,

    The implication comes from your portraying the Alappat case as bearing on the question.

    Why would that case be brought up as bearing on the question, when – as shown – the question was not properly before that body? At post 93 I indicated that you appear to be carrying on the words of Sunny B (while ignoring the response to Sunny B).

    As you (continue to) appear always ready to dismiss those views that you do not like (without reason), perhaps the responses to you here on the Alappat point is due to that.

    And no, this is NOT a matter of my being “a hall monitor” as your prior attempted denigration would have it. It’s more a matter that you seem to be misapplying legal thinking to the topics being discussed.

    As I have noted in other (somewhat similar) regards, anyone can have an opinion on anything. But it is more important to have an informed opinion, and one is not free to hold onto there uninformed opinion and keep advancing that uninformed opinion in light of conversation that informs.

  102. Gene Quinn March 20, 2018 12:32 pm

    S. Morse @100:

    You ask: “Just out of curiosity, where did I say that due process issues were before the Federal Circuit in Alapatt?”

    At comment 96 you say: “Thus, due process issues were raised in Alappat…”

    Final warning Morse/Pain. Your game playing does not facilitate a real discussion of the issues. If you must engage in juvenile antics I suggest there are other more appropriate forums available to you on the Internet.

  103. S. Morse March 20, 2018 12:57 pm

    Thank you for the precise partial quote. As you see, I did not say that due process issues were before the Federal Circuit in Alapatt. The issues were most certainly raised, however, as expressed in footnote 4 of the Federal Circuit’s opinion.

  104. Anon March 20, 2018 1:18 pm

    S. Morse,

    You are being a pedant. As I have noted, this does not – and will not – advance any meaningful conversation or legal points.

    Please stop and engage on the merits.

  105. Gene Quinn March 21, 2018 11:27 am

    S. Morse @103-

    Obviously, whether you call yourself Thomas Pain or S. Morse, you are unable to engage in meaningful debate.

    Your Pee Wee Herman style does nothing but get in the way of a thoughtful conversation. You’ve been warned repeatedly. Goodbye.

  106. J. Marshal March 22, 2018 1:03 am

    Ex parte communications between judges?

  107. Anon March 22, 2018 11:00 am

    Another pseudonym based on a famous person with a question that is at best vapidly incomplete to provide a meaningful discussion point, and exhibits a rather crabbed view of legal terms.

    (ex parte communication between a judge on a case and any one else outside of the involvement of both parties as to the merits of the case….)

    Just curious Gene: fake email address or same email address as S. Morse and T. Pain?

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