AIPLA 2012 Annual Meeting Begins

Current AIPLA President William Barber (Pirkey Barber, PLLC) welcomes attendees to the luncheon earlier today.


The 2012 Annual Meeting of the American Intellectual Property Law Association is underway at the Marriott Wardman Park hotel in Washington, DC.

As fate would have it, today was off to a slow start for me.  In order to be closer to DC and in position for early arrival, rather than sitting in hours of traffic and waiting for what can be nearly 3 hours to go the 35 miles from where I live to downtown Washington, DC, I decided to stay at a hotel nearer DC.  Leaving the booking of the room to the last minute I wound up staying farther away last night than I would have liked, at the Best Western in Rockville, MD.  The hotel was sold out, my room was as hot as a sauna — literally over 85 degrees on the thermostat in the room — and they apparently do not have maintenance in the evenings to fix was was obviously a rather unacceptable issue.  So I didn’t manage to get a very good night of sleep, and consequently was running late for the morning festivities.  I won’t make that mistake again, that’s for sure!

By the time I arrived at the the Marriott I found registration, got my packet of information and tickets to the various lunches, dinners and receptions, and proceeded to the Track 1 presentation on patent litigation and the America Invents Act.  There was not a seat in the room to be had, which was an oversized ball room that easily had seating for what appeared to be nearly 1,000 people.  There were also easily at least 100 or more people sitting in the lobby outside the room, watching the powerpoint presentations on TV monitors and listening to the speakers via audio broadcast into the hall.  Welcome to the AIPLA!

I decided to take the opportunity to mill about the exhibit hall, bumping into old friends, making new friends and meeting several people in person who I have known for quite a while but only by e-mail communications.  For instance, I had the opportunity today to chat with a couple contributors — Paul Cole (author of several guest articles over the past several months) and Alex Zhang (author of Key C0nsiderations for Patent Strategies in China).

Over lunch, which included a delicious breaded chicken over asparagus, Judge  James Smith, Chief Judge of the Patent Trial and Appeals Board, gave the audience of at least several thousand an address about the state of the Board.


Judge Smith speaks while projected on one of two giant screens at the front of the ballroom where the lunch was held.


Throughout his remarks Judge Smith continually discussed the Board as a firm where he is the managing partner, the other Judges on the Board are his “partners,” and referring to those in attendance as clients.  He used this AIPLA address as an opportunity to report to clients about important changes and how those changes would only be positive developments.  He asked the user community in the audience to keep their work with his firm.  It was a clever way to explain things, particularly for an audience dominated by partners from patent and intellectual property firms from all over the U.S. and abroad.

First, Smith explained that currently there are Judges housed in 2 different locations — Alexandria, VA and Detroit, MI.  In the not to distant future there will be Judges stationed in 5 cities, adding Judges to the Silicon Valley, Denver, CO and Dallas, TX.  According to Smith Judges will be stationed in these other 3 cities by the end of calendar year 2012.  In fact, over the last year or so the Board has risen from 95 Administrative Law Judges to 175 Judges, with plans to increase to 225 Judges by the end of fiscal year 2013.

Expansion to other cities will allow the USPTO to expand the search for more qualified Judges.  Approval has already been received from Secretary Blank to bring on Judges in Denver, Silicon Valley and Texas, with some of the new hires joining the USPTO before the end of  calendar 2012, with the remainder to start at the beginning of 2013.  So expect another wave of announcements on these new hires very soon.

Judge Smith spoke of the quality of the new “partners” he has hired, citing the many Ph.D.s, the many advanced degrees, the many years of prosecution and/or litigation experience.  He also pointed out that we clients should remember that every time a case is worked on by the Board (i.e., his firm), “We will assign 3 partners to each of your cases. Which one of your firms can say that?” Laughter ensued, as you can probably imagine.

In terms of the speed, Judge Smith explained that the Board has reached an important turning point in the time it takes to get to cases and it can be expected that from this point forward matters will begin to be handled ever quicker.  “We envision we will be able to make the wait for ex parte appeals in the reexam area diminish” while still taking up new responsibilities under the AIA.  This was not the only specific speed prediction Judge Smith made, but sadly the only one I could concretely make a record of.  Technology is wonderful — when it works! For reasons unknown my laptop decided to lock, requiring rebooting and even then I couldn’t type in Word, so I had to open a text editor.  So a court reporter or stenographer I guess I am not.

Judge Smith also explained that so far there have been 38 inter partes reviews initiated and 13 covered business method patent reviews initiated.  “We intend to make any adjustments necessary” to ensure that these new cases can be handled quickly and appropriately as demanded by the new legislation.  Of course, Smith explained the other work of the Board would not suffer because of new AIA responsibilities, but rather would be processed ever quicker due to the influx of such highly talented new ALJs who join the many who were already in place before the hiring run started.

Several other miscellaneous facts caught my attention.  First, Smith explained that cases are being assigned based on expertise of the judges, while still allowing for the expertise of the judges to expand.  Second, the USPTO has received more than 400 applications and have met with more than 200 candidates for a position on the Board. Finally, each Patent Office location will have at least 12 Judges in place by the end of fiscal 2013.

That’s all to report for the moment.  I will mingle for the remainder of the day, attend the evening reception and be back again tomorrow.  Judge O’Malley was to provide the keynote address, but the announcement was made that Judge Dyk will take her place.  Tomorrow is also a session moderated by AIPLA Executive Director which will feature Chief Justice Randall Rader of the Court of Appeals for the Federal Circuit and USPTO Director David Kappos, among others.  I look forward to that as well as the black-tie dinner and the near legendary dessert reception.  Tomorrow will be fun.  Stay tuned for more!


Judge Smith addresses the AIPLA luncheon gathering earlier today.



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Join the Discussion

11 comments so far.

  • [Avatar for MaxDrei]
    October 29, 2012 11:34 am

    Agreed Paul, that EPO judges in Munich can be influenced by the logic of UK Supreme Court decisions. They love to invoke them, when they support the position they are taking, perhaps because they explain the issue with such charming rhetoric. As to Binding Precedent though, how about Article 21 of the Rules of Procedure of the Boards of Appeal of the EPO? Thus:-

    Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the Enlarged Board of Appeal, the question shall be referred to the Enlarged Board of Appeal.

    The way it seems to me is that EPO judges in Munich themselves do not accept that they operate in a Binding Precedent environment.

  • [Avatar for Paul Cole]
    Paul Cole
    October 29, 2012 07:24 am

    Apropos of my previous comment (the web page froze but I did not wish to lose the comment), the important thing is upgrading the staus of PTAB. That can only be done by a stream of well-respected and appropriately publicised decisions.

    @Max: Normally I agree with you, but here this is not a common law/civil law issue. Nor is the EPO a purely civil law institution – it is influenced by both traditions.

  • [Avatar for Paul Cole]
    Paul Cole
    October 29, 2012 07:20 am

    I think we need to stick to the end in view.

    In that regard we should rmember the following famous story about Abraham Lincoln:

    One memorable story was told of Mr. Lincoln’s relationship with Lamon: “It was Court week in Bloomington in 1857. A case had been finished and a recess ordered by Judge Davis. Lamon and several of the attorneys adjourned to the courthouse yard for a bit of air. Soon a wrestling match was arranged between the prosecutor and a visiting lawyer. Off came their coats – they clinched, struggled, tore up the sod – and then there was a ‘down’ with Lamon on top. Then as Lamon strained to force his adversary’s shoulders to the earth as a token of victory, the seam of his trousers gave way. At that moment the next case was called and there was not time to change the garment. Donning his long-tailed coat he strode into the courtroom and resumed his duties. All went well for a time, and then in a forgetful moment he stooped to the floor to recover a document. The secret was out. A brother attorney, seeing his predicament, hastily prepared a subscription paper for funds to purchase a new pair of trousers for the prosecutor. The attorneys offered various ridiculous amounts until it reached Lincoln He slowly wiped his spectacles, and after a careful reading, wrote: ‘I can contribute nothing to the end in view. – A. Lincoln.’”

  • [Avatar for MaxDrei]
    October 26, 2012 06:30 pm

    Anon, here’s a link to a page on the EPO website. There you can see how to download the White Book.

    i am sure you are right, that civil law culture does not import into an English common law environment.

  • [Avatar for Anon]
    October 26, 2012 05:40 pm

    Thanks MaxDrei. Do you have a link to this White Book? I am curious to see this competition, but I am afraid that any such philosophy would translate poorly into US jurisprudence. I do not think our culture would assimilate the varied viewpoints in reaching a best-of. Rather, I think each US data point would say something to the effect of “We’ll, mine is the best (of course), let everyone else come to my way of thinking.” Not to play too heavily to the stereotype, but it is the ugly American way of looking at the world.

  • [Avatar for MaxDrei]
    October 26, 2012 05:28 pm

    Thanks for that, anon. Rest assured I fully understand your scepticism. I myself used to think that without Binding Precedent there could be no legal certainty.

    But the proof of the pudding is in the eating, is it not?

    So look at the White Book of EPO caselaw. Look at the Annual Updates for it, and see how every succeeding year the gaps in substantive law get smaller and fewer. Most of the remaining development lies in refining the procedure rather than the substance. Look at the way the supreme courts of EPC Member States now bend the knee to an ever clearer and denser body of caselaw on the substantive provisions of the law of validity of patents in Europe. This study will open your eyes, as it did mine.

    When I say Darwinian I mean competitition between rival legal theories, battled out between 24 rival Appeal Boards of equal status, chewing over more than a thousand cases per year for by now over 30 years. This is NOT how it happens in England.

    i don’t think Binding Precedent is bad, just that, very surprisingly, the EPO, blessed with uniquely favourable circumstances, is delivering something even better.

    Do you have in the USA the “Proof of the Pudding” saying, I wonder? Can you say where the EPO caselaw on validity has failed to deliver legal certainty?

  • [Avatar for Anon]
    October 26, 2012 01:49 pm


    I have seen your musings about Binding Precedent before, and quite honestly cannot figure out what you talking about and why you think Binding Precedent is so bad. It seems like you are intent to call black white and white black.

    To use your analogy, without binding precedent, you have no Darwinean principle as each decision has no connection to the past and can do what it wants. Rather than a wall-to-wall nailed in carpet (that you must stand upon), all you have a is small and slippery throw rug on the waxed floors of whichever way the current judicial climate is blowing. Since patent law tends to be cyclical (more or less), the fact that you do not have binding precedent means that you are doomed to follow that cycle, and not hone in on a single rule of law.

    Or if you prefer a more earthy analogy, NOT having binding precedent to control the banks of a river, all you have is a torrent of water cutting its way through a wide and soft plain – the stuff of meandering oxbows and switchbacks. All you get with you addition of more cases is the ability to cut more meandering curves – you decidedly do not get the solid banks and steady consistent river that Binding Precedent provides.

    As to your comment of “when it’s all about things that are NOT there,” are you talking about cases of first impression? If so, then such cases are clearly on equal footing – there is no rug or carpet in sight.

    Thanks for any additional insight.

  • [Avatar for MaxDrei]
    October 26, 2012 08:31 am

    Ah but Paul, when it’s all about things that are NOT there, do not the judges at the EPO have a unique advantage, when it comes to laying down a respectable carpet of patent law for everybody else to stand on?

    I speak of course on the absence of i) Binding Precedent and ii) some generalist Higher Court that sits in judgement over the Decisions the EPO hands down.

    PLUS (and here’s something Judge Smith’s firm) can emulate, the sheer number of patent cases handled per year (>1000 at the EPO) means that the EPO caselaw can evolve rather quickly, on Darwinian, survival-of-the-fittest principles, to the optimal legal theory.

    The Golden Thread running through EPO thinking is the obligation to balance “fair” protection for the inventor with “reasonable” legal certainty for the public. See the Protocol on the Interpretation of Art 69 EPC and study any EPO Decision with this in mind. Perhaps Judge Smith’s law firm would have a similar philosophy, but for the burden it carries, of Binding Precedent?

  • [Avatar for Anon]
    October 26, 2012 08:29 am

    Keep in mind Paul that the PTAB is an Article I court, not independent of the executive agency, while the CAFC is a truly independent Article III court.

    There are important influences and ramifications of this distinction.

  • [Avatar for Paul Cole]
    Paul Cole
    October 26, 2012 05:27 am

    I have identified a new phenomenon. When we come over from Europe to these meetings, for several days we wale up around 4.00 a.m., which gives us early morning working time but does not stop us enjoying the evening events. We do not suffer from JET LAG, we have JET LEAD!

  • [Avatar for Paul Cole]
    Paul Cole
    October 26, 2012 04:56 am

    The address by Judge Smith was indeed impressive, especially with the emphasis on service to the user community implied by his frequent references to the judges as a “firm” and his fellow judges as “partners”.

    In Europe, the counterpart body, namely the EPO Appeal Boards, has been one of the leading sources of patent law not only in the EPO but also in the contracting states. For example, EPO appeal board decisions have long been cited with the utmost respect not only in the UK Patents Court, but also in the Court of Appeal and in our (new, UK) Supreme Court. One of the reasons has been the extraordinary consistency, reasonableness and good sense of the decisions handed down by that Board. The Sherlock Holmes story SILVER BLAZE contains a reference to the curious incident of the dog barking in the nighttime, the point being that the dog did NOT bark in the nighttime.. Similarly with reference to the EPO I am not aware in the 30+ years that the Appeal Boards have been handing down their decisions that there have been any sustained objections to the approaches that the Boards have expoinded on the range of issues that they have had to consider. It would be good to see the PTAB upping its game and both meriting and acquiring the same influence, especially since only a minority of the judges in the CAFC now have actually spent their early lives working in the patent system as Judges Linn and Newman have done.

    One of the reasons why the EPO Appeal Boards have been so successful is the availability of their decisions, both by publication of the leading ones in OJ EPO and more recently by an online decisioon database of extraordinary utility and value. Not only are the full texts of the EPO Appeal Board decisions available and searchable online, but the online decisions contain links to earlier cited and later citing decisions. When a user downloads a decision he or she can therefore immediately see whether it has been a keynote decision for later cases, or if not can easily find the decisions which have been really keynote on a particular topic. USPTO Appeal Boards and the CAFC please emulate – there are lots of clerks and interns these days to create such databases and their value to the profession could be considerable.