PTAB Chief Smith and Vice-Chief Moore, Part II

This is Part II of my interview with the top two Administrative Patent Judges at the United States Patent and Trademark Office, Chief Judge James Smith and Vice-Chief Judge James Moore.

In Part I of the interview we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more. Part II (which appears below) picks up with a comparison between the operation of the PTAB and the Federal Circuit, and then goes on to discuss the working relationship between Chief and Vice-Chief.

QUINN: Okay – maybe at the moment while I have it in my head – I don’t know that I have a good sense of what either of your job descriptions really entails on a day-to-day basis.  I know both of you, I see you out and about and I have a sense of what you do and it seems to me that neither one of you probably sleep very much.  And it seems quite different probably than what you would expect from like say for example Judge Rader is the Chief Judge of the Federal Circuit who in a lot of those—and you clerked at the Federal Circuit so maybe you can speak to this.  It seems that the Chief of a court like that is—it’s maybe not quite as heavy of an administrative lift as what you guys deal with, at least that’s my perception.  So let me ask you first ,Your Honor, if you had to describe your day-to-day functions and I know they change depending on what’s on fire at the moment, how do you describe your day-to-day functions and then if you could go in talking, maybe compare to how the Federal Circuit operates which I think a lot more lawyers are probably more familiar with.

SMITH: I can do both of those things, I believe together.  One clear difference between being Chief Judge of this Board and being Chief Judge of the Federal Circuit is that the size of our organization is substantially larger with roughly 200 judges and more than 120 support staff; we are 300 plus people to manage.  I don’t think Judge Rader has quite that many.

[Interviews]

QUINN: And that’s got to change the dynamic just in and of itself and make a lot more administrative matters on your plate right?

SMITH: It does.  The unique thing about the job particularly right now – and I think this is true for my job and the Vice Chief Judge job – is that while we have many, many administrative duties they do not remove from us completely the non-administrative judging duties that we have.  And I think we both like a mix in which we also get to the judging, sitting on panels for example.  We are under-emphasizing that part of our jobs right now because we absolutely have to do that.  There’s only so much judging you can get to in the typical 18-hour day when you have so many other things to do.

QUINN: Let me stop you right there—the typical 18-hour day.  I mean you hear that at the Patent Office all the time from people in your position to people on the 10^th floor.  And that I don’t think what most people assume when they think of “government employment.”

SMITH:I should confess that 18 hours is an exaggeration.  The typical day is really more like 15 to 16 hours, and I can explain very easily how that comes about.  We’re close to receiving now 1200 applications for judge positions.  Even with the filtering process, we have ended up reviewing close to 400 applications in detail; including reviewing academic transcripts and writing samples, speaking to references, etcetera; that’s 400 applications in the finalist or semi-finalist category.  Just in the last nine months not just the Vice-Chief Judge and me, but our colleagues involved in the selection process, the Vice-Chief Judge and I have participated together in 200 interviews.  Now that’s 20 interviews per month and just the interview time is an hour; adding the preparation and the consultation time with the other people on the selection panel and you can see that adds like about an eighth to a quarter FTE, at a minimum, to each of our jobs even before we get to the other stuff, including preparations for the opening of the Detroit Dallas/Fort Worth, Denver, and San Jose offices, and all the work associated with that and the coordination with the Patent corps and the Agency, to place judges in those locations.  That’s another quarter FTE to each of our jobs on a daily basis.  The management of the team, the organization, re-organization, the work associated with the training of new judges as they come on board because we have doubled the number of them, that’s another half FTE.  The delegation to us of petition responsibility, deciding petitions associated with re-exams for example, that’s an ongoing portion of the job.  Requests for reconsideration come first to the Office of the Chief Judge, which involves my time, and that of the Vice-Chief Judge.  And we have tried to maintain some work on paneling duties as well.  In at least two months of the year we’re involved in the personnel evaluations of 300 people.  You put all of those things together and it is a stretch to get it all done in about 15 to 16 hours a day.

QUINN: It sounds like you both sort of share a lot of the same responsibilities.

MOORE: We do.  The Chief and I have a very unique working relationship.  I did not start my career at the USPTO.  In fact, I spent about ten years on the outside in corporate practice and in private practice before coming to the Board.  On the other hand, he has spent the vast majority of his career in private practice and corporate practice, so he has a very good way of looking outside the government box at solving problems.  And I have a different way.  Between the two of us we can usually come up with a hybrid solution that everyone can appreciate.

QUINN: One that works and can get through the government process?

MOORE: Oddly enough, yes.

QUINN: So those do exist?

MOORE: He brings very different strengths than I do to the job;  in this instance the sum of the two may be greater than the parts alone.

QUINN: Yeah well that’s interesting because that I did not know.  I thought there would be some division or primary responsibility.  The way you, Your Honor, just described it, the Office of the Chief encompasses both of you and both of your staffs working towards a common goal whatever is needing to be done at any particular moment.

SMITH: I think that’s accurate.  The overlap is not total of course.  Some of the things are more operational, for example making sure the whole performance evaluation system works properly, that is something the Vice-Chief Judge handles with not that much of my detailed involvement; and there are some other things that I do, some of the work on petitions for example, where there might be less of his involvement and more of mine; but we definitely work as a team, and there is a substantial amount of overlap.  I think my first week here started off relatively less intense at only about 50 or 60 hours.  I think we spent about 40 of those hours just in meetings together about how to work on stuff.

QUINN: Okay that’s fascinating.  Just to wrap that up maybe with a bow, about how many cases do you sit on presently as a judge in your judge hat?

SMITH: That’s a difficult question to answer because for example the Requests for Rehearing, which I review, I look at all of those so I’m not on the panel, but I’m involved in a way in the decision and in the decision of whether or not to change the panel or expand the panel, dozens of those every three or four months, probably more than a dozen in a month.  So we’re into the hundred, triple digits, in a year, but then in terms of the number of cases I’ve sat on where I’m actually on the panel for an ex parte appeal, not more than half a dozen.

QUINN: In a year?

SMITH: In a year, at least in this past year but this has been an unusual year.

MOORE: I might do a few more than that on an annual basis.

QUINN: Of the ex parte?

MOORE: Of the ex parte and routine normal cases; I tend to try to grab a portion of  the detailees who come through the office.  For example, the Patent Examination Corps and the Board have agreed that certain numbers of folks will be placed on details  to assist the judges; I like to engage in that endeavor, so I tend to grab somebody and have them work on cases with me.  This does two things: it helps me work with someone from Patents and it also helps me decide a few more cases than I otherwise would.

QUINN: So is that almost like— are you talking not exactly sitting by designation but sort of the same philosophy behind it?

MOORE: It’s more like a law clerk in the Federal Circuit context where they’ll present the facts to you in a sort of digested manner and while the judge is familiar with the case generally in how they want it to come out, it enables the detailee from Patents to get a view into how the judge view the facts – how the judge views the review function of a case on appeal.  And they can take that sort of learning back to the corps and act as a resource there.

QUINN: Yeah and that’s what I sort of meant by the sort of as I understand it the philosophy at least at the Federal Circuit of having a District Court judge sit by designation so that the Federal Circuit judges can keep—understand their pressures and understand their points of view, and so the district court can learn what the Federal Circuit does and how they operate and maybe take it back to their courthouse.

SMITH: There is some element of similarity however the true analogy would be a District Court judge not sitting by designation but serving a term as a law clerk to a Federal Court judge because our detailees from the examination corps do not sit on the panel.  They’re merely there to help the judges on the panel scribe the opinion.

QUINN: All right now I guess turning to the America Invents Act, and all your new responsibilities under the America Invents Act.  It seems that the number of cases that you’re getting is sort of in line with what you’d expected that you’d be getting is that fair to say?

SMITH: Yes.  Currently we have about—I think right now we’re slightly more than a case per day.  Let’s see September, October, November, about a case per day.  I think our original estimate in the proposed rulemaking and the final rulemaking is that we probably would see somewhere in the four to five hundred case—

MOORE: …about 420…..

SMITH: ….420 cases in the year so we are on track to have a number like that.  So far we are in line with expectations.

QUINN: And any surprises at all in the implementation process of that or maybe before we even get into that maybe we should talk about—how do cases get assigned?  Do you have sort of like a special team of judges that are assigned to these AIA type cases or is anybody in the judging core available to be assigned to those cases?

SMITH: Yes and yes.  We have a team designated to work on these cases.  Currently, the team that has these cases is led by Judge Michael Tierney, but we have not ruled out the possibility that judges not on the team right now would either come to be in the team or have cases assigned from outside the team depending on what the resourcing situation is.  And we have tried to staff the cases appropriately as they come in by balancing our technology expertise, our expertise in trial matters and discovery, and just generally doing what we have to do to manage the work of the cases.

QUINN: The question that jumped to mind was are the judges that make up this, for lack of a better term, special unit, this is an AIA unit, are they only getting AIA cases or are they getting other ex parte cases as well?

MOORE: Operationally we manage several sets of workloads.  We still have a large backlog of ex parte appeals, what you might look upon as regular, the routine type of appeals, which are our “bread and butter” work.  We have legacy interference practice, which will be going on for some time to come.  We have two of the new AIA proceedings coming in – so there’s no longer a clear-cut division of people only working on one type of case.  We have—for example, ex parte re-examination proceeding appeals and inter-parties examination proceeding appeals — which tend to come in in different amounts at different times depending upon whether or not there’s a flow of work coming out of the Central Reexamination Unit.  So we adjust as necessary to make sure that the priority cases are being handled.

For example, we have a statutory deadline on the AIA cases.  We definitely want to make sure we meet all of those deadlines.  We also have a requirement that all of our re-examination cases are handled with special dispatch.  So we prioritize resources to make sure that’s happening.  It is a constant adjusting game to make sure that we have the right resources in the right place, and we’re accomplishing the goals in all the sections, which requires the judges to have multiple skills.  We have judges in different divisions who handle all three types of proceedings but they’re not a part of any specific team necessarily.

SMITH: And you can certainly find members who do trial proceedings who have in recent times served on panels to decide one or more ex parte appeals.

CLICK TO CONTINUE READING Part III of the interview. Things will get quite interesting for many in the patent bar. We talk about how cases are assigned to various panels, and we spend time chatting about how and why a case might be a good candidate for an expanded board. We also discuss when PTAB jurisdiction attaches. A light-bulb went off for me during that discussion.