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Interview Finale: USPTO Attorneys Knight and Ray

USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)

On August 1, 2012, I interviewed Bernard Knight and Raymond Chen at the United States Patent and Trademark Office.  Knight is the General Counsel of the USPTO and Chen is Solicitor.  I spent approximately one hour on the record with them in Knights Office.

In part 1 of the interview we discussed a wide range of issues, including where they got their start in the legal profession and how they rose to where they are, who they view as the client, what it is like to represent the United States, ethical dilemmas that present, the structure of the General Counsel’s Office and the process for giving Federal Register guidance on a variety of matters.

In this segment, which is the interview finale, we discuss the heightened expectation of fairness placed on government attorneys, what it is like to work for USPTO Director David Kappos, how the USPTO determines when to give guidance to examiners to reconcile case law, specifically using the KSR Guidelines as an example.  Before Knight and Chen had to go I also managed to ask a few of those familiar “get to know you” questions at the end.  Wait until you hear Knight’s answer for favorite pastime or hobby. Talk about a Renaissance man!  The interview does end rather abruptly, but that was because we literally kept talking through the last minute they were available and on to their next set of meetings.

Without further ado, here is the finale of my interview with Bernie Knight and Ray Chen.

QUINN: In the private sector there is frequently pressure to do what you’re being told to do.

CHEN: I think as a government attorney there’s a heightened expectation on you from the courts to be fair players within the judicial process. So that means we have to be more careful, in my view, when it comes to citing cases or citing to the record, or making legal arguments. There are always forward leaning arguments you can make in any given case, but as a government attorney, you have to be more careful about that. And you also have to be willing to be upfront about weaknesses in your case. That’s something that a private counsel is sometimes less willing to do. But it’s important as a representative of the government appearing before and working with another branch of government to be as fair a player as you can be. When you ask about ethics as a government attorney, that’s really the first thing that pops up to me as a litigator.

QUINN: Are these maybe — I don’t know if you’d call the frivolous arguments, but arguments that you don’t think to be correct? That’s what you’re both talking about?

CHEN: Right.

KNIGHT: Right. When you’re representing the United States, you have a very high obligation to make certain that all citizens are treated equally and fairly. And as Ray stated, we don’t take positions that are not supportable. We shouldn’t win a case where the facts and the law are not in our favor. That applies whether it’s an intellectual property case before the Federal Circuit or it’s an employment case dealing with one of our employees before the MSPB.

CHEN: And in some ways I consider that one of the privileges and advantages of being an attorney in the government is that you get to wear the white hat, you get to sit there and make a call based on your conception of the law, is this a defensible position to take. If it’s not, then you have the ability to go back to the decision makers within the government to try to see if the government ought to be taking a different position on a certain issue. So we’re not just trying to win a particular case. We’re also focused more broadly on the overall arc of the law, and making sure it’s heading in the right direction.

KNIGHT: And I can also say that when Ray and I are meeting with Dave Kappos about the position that we should take on a Supreme Court case, in every situation we not only look at the law, but our discussion always at some point gets down to what is the best result here for the patent system and the American people. We always get down to that. Of course, any policy implications must be supported by the law for us to ultimately advocate that position.

QUINN: Okay. Well, that may be a good segue to about another thing I wanted to bring up. I think I know that both of you play a role in a lot of the federal register notices for rule changes and you review them and I kind of would like to understand that process. Not on a substantive level because I totally understand it would be inappropriate for you to comment substantively other than what’s written. But how does that go about? I mean, how do you start with the rule process? I mean, I know when we had the American Invents Act that we all knew that there’s got to be a ton of rules that are going to come due in three waves. But how do you start that process?

KNIGHT: So, it really depends on the rule. If you look at the one we just published, the OED statute of limitations for the America Invents Act, that rule was drafted by Will Covey who’s the Deputy General Counsel for Enrollment and Discipline. Ray and I commented on it and we worked with Will to come up with the final version. After we did that we met with Dave Kappos and ran our proposed approach by Dave and Dave signed off on it.

QUINN: He does more than that from what I hear.

KNIGHT: Oh, he does. Dave thoroughly reads all of the rules, and I think it’s fair to say that he makes changes or edits to each of the proposed rules.

QUINN: A lot of redlining?

KNIGHT: Dave definitely edits the rules. I wouldn’t say that he edits them heavily or lightly. But he edits them on things he is concerned about. He reads them very carefully, and if he thinks there’s an approach that we need to take that we haven’t taken, he lets us know and we edit the rule. He doesn’t waste time with wording choices like changing “that” to “which.”

CHEN: I think it is worth noting that he’s not the kind of decision maker that’s just saying yes or no to various different issues in a rule package. In many ways he’s his own idea lab providing additional thoughts and thereby adds value in a lot of different ways in any given rule package. He also provides specific policy direction before a rule package gets started.

QUINN: So when Dave is going through and giving you this feedback on a substantive level, how lucky do you think the Patent Office and the broader patent community are to have somebody who seems to really understand the process thoroughly?

KNIGHT: Both the patent community and the employees of the PTO are lucky to have Dave as our leader and I’ll tell you why. The employees are lucky because Dave understands the law so we don’t have to spend a lot of time spinning our wheels, we don’t have to spend a lot of time explaining the law to Dave because Dave knows the law as well or better than us. When we disagree with Dave, as I said before, he listens to what we have to say and sometimes he takes our position and sometimes he sticks with his own, but he always listens to everybody’s views. And I haven’t seen that with every leader I’ve worked for in my career. So I definitely appreciate that from Dave. The intellectual property community is lucky too because Dave has the unique set of skills needed to develop and implement the America Invents Act.

QUINN: I see him do that, too, when he talks to independent inventors at the office, at the Independent Inventors Conference, it seems like he has the knack to be able to listen and not just act like he’s listening but actually really hear what you’re saying. Is that what you’re describing now?

KNIGHT: Yes, he definitely does hear what you say. He listens. Whether it’s the Executive Committee meetings or the Policy Council meetings that Ray and I go to, Dave goes around the table and asks everybody their views no matter if they’re an intern or the most senior person in the room. He’s very interested in everyone’s perspective and he treats everybody with respect. The second great thing about how Dave handles a meeting like that is that he makes a decision at the end. I’ve worked for managers who can’t make a decision and there’s nothing worse than that because you can’t move forward.

QUINN: Yes, I know, that’s so true. Now, does Dave ever get involved at all on—well, he probably is awkward for him because he’s actually a statutory member of the board, right?

CHEN: Right.

QUINN: So does he get involved at all in the positions that the Solicitor’s Office is taking in briefs to the Federal Circuit?

CHEN: No, we’re filing now several dozen briefs a year at the Federal Circuit, defending board decisions. Those are fully baked decisions and we’re off defending those decisions. So Dave doesn’t get involved in those cases. The ones that he really gets involved in, and it seems like we have more than ever before, are the Supreme Court cases related to intellectual property law. Or high profile cases that are at the Federal Circuit where there’s an opportunity to file an amicus brief. I think Dave thinks it’s imperative that the PTO have a leadership role in helping to drive patent law, not only in working with Congress but also in working through the judicial process.

QUINN: Well, since we’ve now arrived to those two words, “Supreme Court,” I have some questions about that, if I can. And I’m not going to get you guys into any trouble. But when the Supreme Court is as active as they are, and they’re coming out with these cases, and it seems I think it’s fair to say that when they seem most active right now in 101, which is of fundamental importance to a whole variety of applications at the office. They issued a decision and then it seems later on that day you guys, well, somebody here, not necessarily you guys, but I suppose you were somehow involved in that executive committee discussion, give guidance to the examiners. And it seems that from that stage almost immediately you must start working on the next guidance you’re going to give because that seems to come out in about 2-3 months and it’s extremely detailed. So it’s not just like something that you wrote the night before it was going to get published. So how does that process go, and then second, at what point in time, and now I’m thinking like KSR guidelines, where you’ve had this big case, then you had the interim guidelines, now you’ve got a critical mass of cases, so you come out with a guidance there describing what the case is saying meaning how you want the office to employ them. How does that whole process work? Is there a time scale that you’re looking at? Are you looking at getting guidance I’m sure that day or as soon as possible, but do you want to have interim guidance within a few months? Do you want to have a case specific guidance within a couple years? Or how does that work?

CHEN: Yeah, I think you’ve seen the pattern, you’ve identified it correctly. Any time the Supreme Court issues an opinion that touches on the work that we do, like a Bilski, like a Prometheus, Dave has made it very clear he wants something out, some kind of guidance out to the examiners immediately. Because we have over 7,000 patent examiners now. There are over a million applications pending somewhere in the system at any given moment. And examiners need to know what has happened to the law, immediately. So at least as a stop gap provision we need to send out something very quick. Because almost immediately after the Supreme Court issues a decision, whether it’s a KSR or Prometheus, there’s going to be examiners with questions and there’s going to be applicants with questions. We need to at least provide some first level response. You’re right that that is kind of new and different from the way we’ve approached things before as an agency. I think that’s a function of having Dave Kappos at the helm who’s determined to make sure that we get the messaging out as quickly as possible. Then of course that first level of response is not deep enough. There needs to be some time to kind of reflect and understand the consequences of any given Supreme Court opinion. That takes at least a few weeks to digest. We in OGC work with the Patents leadership to try to help craft a new set of guidelines to instruct examiners and to let them know where the law is still the same and where have there been adjustments to the law given what the Supreme Court has said. Whether we agree or disagree with what the Supreme Court does, we’re going to follow it. We’re going to be faithful to it. But as with any opinion there can be different conceptions of what really is the message to take from the opinion. And so we have to try to iron that out.

QUINN: And not only that, it seems that this Supreme Court, maybe it’s all Supreme Courts, but particularly this Supreme Court, likes to get to the really hard question and then leave it unanswered. You know, they’ll answer this case then the really hard question that they know that everybody in the industry now has is left to the lower courts to figure out, or the Patent Office to figure out. How do you deal with that? Do you sit around noodling that? Or do you probe that? For example, when the Supreme Court said in Bilski that it was an abstract idea but didn’t necessarily explain why it was an abstract idea.

CHEN: You’re right. I think it’s fair to say that the past couple years have been challenging as an agency to administer Section 101. Because there is a good degree of uncertainty in how to apply it. And you can see with district court decisions as well as Federal Circuit panel decisions you can see some variety in rulings and understanding on how to apply some of these very broad statements that have been handed down by the Supreme Court. So this is all going to take a little more time to shake out. In the meantime, we have to do the best we can to hold down the fort and give concrete guidance to the examiners where we can. And that ultimately forces us to make choices and walk into a gray zone and provide concrete examples to examiners on what to do and what not to do. That’s hard to do because any direction we take now we can’t know for certain that it’ll ultimately be what the law is once the courts eventually get their hands on that very issue.

QUINN: Okay, we’ve got enough of these cases now so we have a sense of where these are at so we can give some case specific guidance. And I’m thinking now the KSR guidelines, the last ones that came out. Is that why you do that? You think, okay, now we’ve got enough that we can wrap our arms around what’s happening?

CHEN: That’s exactly right. We did the first round of KSR guidance back in 2007 after the opinion came out. Then in 2010 Dave Kappos inquired as to whether it would be time to do a second round. So folks in the Solicitor’s Office as well as in Patents canvassed all the Federal Circuit opinions that had come out over the course of the past three years. We saw that there were a good number of teaching moments from those opinions that we could use to provide additional guidance to the examiners, that they hadn’t yet quite so clearly received back in 2007 with the first round. That practice is something that we want to do continually, which is to update our guidance for examiners on any given issue once we see that there are more opportunities to give clearer and more precise guidance.

QUINN: Okay. So not to pin you guys down, but do you sense that there will be additional KSR fact specific guidance and maybe at some point as these 10 cases start to settle, that there might be a 101 case specific guidance?

CHEN: Sure. We’re continuing to monitor the KSR landscape to see whether or not there’s enough additional teaching moments and personally I’m searching for more guidance on the whole question of objective evidence. And to what extent can objective evidence in combination with a prima facie rejection lead ultimately to a conclusion of non obviousness.

QUINN: Well, if you find that let us know.

CHEN: Exactly.

QUINN: I mean, as you know, that was immediately what people focused on after the decision. At least KSR did not do away with this.

CHEN: Right.

QUINN: But there has not been, as far as I know, an awful lot of cases that have gotten that far.

CHEN: Right. So there’s an example of a part of the 103 inquiry we’re looking for more instruction on from the courts. And when we get what we feel like is enough of a concentration of interesting new cases then we will come out with more KSR guidelines. As for 101, we are—

QUINN: I don’t even know what you would do at this point because sometimes it seems one case goes this way and another case goes that way, and I don’t mean to ask you to comment on that, but it’s so fundamentally important.

CHEN: Right. We understand that we have to implement 101, we have to examine all of our applications for every condition of patentability including Section 101. My expectation is we will come out with some training slides in view of Prometheus, and as for what I’ll call the computer implemented inventions where there’s been a handful, or even more than a handful, of Federal Circuit opinions on that, we’ve been monitoring that like a hawk, watching the data points getting collected and I guess we’re still trying to figure out to what degree we can reconcile all those opinions and give sound guidance that we can feel comfortable is going to actually be upheld.

QUINN: So there is no timetable really, although you do give quick guidance because you have to let people know something. You then move on to the interim guidance. Would it be fair to say that that would go out as soon as it’s ready?

CHEN: Right.

QUINN: And then after that then it’s just a bit of wait and see. Once you feel like we’ve got something to say to the examiners and the patent community then you’ll say it?

CHEN: Right. There’s a danger if we instruct thousands of examiners to make certain choices and then three years later the courts tell us no, that was the wrong way to do it. Then three years from now we have to retrain all 7,000 examiners to go back doing something completely different. That kind of zigzag approach is extremely painful from an administrative standpoint. And so, I mean, that’s why administratively speaking this Section 101 inquiry is a particular challenge for the agency.

QUINN: Now, to wrap things up, I used to ask some fun questions at the end of the interview just to kind of get to know you guys a little bit better.

CHEN: Yes.

QUINN: Okay, the question [Laughter] They’re simple. How about your favorite pastime or hobby?

CHEN: Well, it used to be playing basketball, maybe now it’s watching basketball, I don’t know. Or going to the movies. Those sound kind of boring. I seem to be spending most of my free time with my kids.

QUINN: Bernie?

KNIGHT: Well, I painted the paintings up on the walls.

QUINN: Oh, really?

KNIGHT: Yes, I used to have time to paint before I had to work on the financial markets crisis at Treasury and now implementing the AIA. I also have a Master’s degree in psychology, and this last year I did counseling at a center for homeless women in DC on Saturday mornings. I also like to play golf. I have an English Setter. Have you’ve seen those dog shows on TV?

QUINN: Yes.

KNIGHT: Well, I showed him, he’s a champion.

QUINN: Wow, so you’re like a real Renaissance man.

KNIGHT: And his picture is over there on the wall. His picture is on that framed mock patent. Patents gave me a method patent for dog training. I hope it’s not an abstract idea!

QUINN: Oh, wow.

CHEN: Oh, boy, that’s way better than my answer, great.

KNIGHT: You’re going to need to buy a dog.

CHEN: Yeah, I know.

QUINN: How about favorite author?

CHEN: Favorite author…

QUINN: And you can say Judge Newman if you like. [Laughter]

CHEN: Right. There’s a guy named Nick Hornby I like.

KNIGHT: I’ll tell you what, I would say Judge Rader because when I was here before I took patent law from him and we used his casebook, and he gave me an A, so I feel that was a good book.

QUINN: How about the famous American inventor you’d most like to meet? And I’ll give you a couple choices, and you can go off the board. Benjamin Franklin, Thomas Edison, or the Wright Brothers?

CHEN: You know, with all these power outages I’ve been dealing with in Bethesda, I like the guy that invented air conditioning. [Laughter] But the ones you mentioned, I would go with the Wright Brothers.

KNIGHT: You know, I guess if I could meet any inventor, I guess I would really like to meet Benjamin Franklin.

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