On Thursday, November 16th, the U.S. Patent and Trademark Office’s Patent Public Advisory Committee (PPAC) held its most recent executive session to discuss the agency’s strategic planning for 2018 as well as future budget planning. During that day, David Ruschke, the Chief Judge of the Patent Trial and Appeal Board (PTAB), spoke about expanded panels for patent validity trials conducted at the PTAB and standard operating procedures (SOPs) employed by the agency during those trials.
As is reflected by an excerpt of Ruschke’s PPAC session, the PTAB’s chief judge noted that there are four instances in which the agency’s standard procedures give him the authority to expand a panel on a validity trial: when the trial involves an issue of exceptional importance; to maintain uniformity of PTAB decisions; when the USPTO Director submits a written request on an issue of first impression; or when the director feels that the panel should not follow a previous board decision to better serve the public interest.
However, Ruschke noted that his authority to expand the panels for PTAB trials doesn’t require him to notify the parties in the trial that the decision to expand the panel has been made. In response to questions on panel expansion, Ruschke noted that when the decision to expand the panel has been made, “the parties will find out in the decision when it issues at that point.” So decisions to expand panels are made in secret and parties in the trial only find out about panel expansion after a decision is reached. This follows SOP 1 which reflects the notion that the PTAB’s Chief Judge is enabled to participate in rendering panel decisions.
“I’ve only expanded [the panel] in situations where I’ve added [Vice Chief Judge] Scott [Boalick] and myself to emphasize a unanimous decision below,” Ruschke stated. He added that, when decisions to expand panels have been made, the reasons for expanding the panel are provided within the decision issued by the PTAB. One such trial involving an expanded panel sitting on a precedential decision to deny a petitioner’s request for rehearing this September. Interestingly, petitioner General Plastic requested a rehearing with an expanded panel but the expanded panel in that case found that PTAB’s governing statutes do not permit parties to request, or panels to authorize, expanded panels; panel expansion only lies within the Chief Judge’s discretion. Petitioner General Plastic thus had its motion for expanded panel granted even while it saw its request for rehearing denied.
Expanding PTAB panels to including Chief Judge Ruschke and Vice Chief Judge Boalick to emphasize the importance of a case appears to be a practice which is becoming more common at the PTAB. “This is where the jurisprudence of the board is going,” Ruschke said at the PPAC session. “And in the case of General Plastic, we expanded the panel, we made it informative, and we made it presidential [sic]. That could be a trend.”
If it is a trend, that could be very disquieting to patent owners who already face the prospects of a high rate of invalidation at the PTAB reinforced by stacked panels which are chosen by the Director to make sure trial outcomes are aligned with the Director’s policy positions. Panels with incredibly high claims cancellation rates have been put together for trials which have invalidated targeted advertising patents asserted against Google, the former employer of former USPTO Director Michelle Lee. Now patent owners also face the prospect of the PTAB’s Chief Judge making a secret decision to expand a panel in a way which both reinforces policy positions of the Director while also rendering precedential decisions which inform future PTAB trials.
Ruschke also spoke at PPAC on the topic of the patent arbitrage deal between Allergan and the St. Regis Mohawk Tribe, a subject which Ruschke noted has “gotten a lot of press.” Ruschke added that the sovereign immunity defense issues involved in that case have come up at the PTAB beginning early this year with the University of Florida Research Foundation’s successful 11th Amendment sovereign immunity defense in inter partes review (IPR) proceedings at the PTAB.
“[I[n an order within this case we authorized briefing for amicus briefs by particular folks requesting it,” Ruschke stated. It can be safely assumed that at least some of those “particular folks” are part of the efficient infringer lobby which has been working so hard in Congress to abrogate Native American tribal sovereign immunity in IPR proceedings. The briefing period during which amici can file briefs is currently open and extends through December 1st. Petitioner Mylan Pharmaceuticals and patent owner St. Regis Mohawks will then have two weeks to respond to the issues raised in the amicus briefs.
As Ruschke would go on to state, this is the first case before the PTAB in which the Board has allowed for the filing of amicus briefs to provide “help on case law, interpretation of statutes, contrast and comparison to state sovereign immunity” in any trial. “We actually do not have an IT system that can accommodate that at the present time,” Ruschke said, noting that amicus briefs should be emailed to firstname.lastname@example.org.
PPAC Chairperson Marylee Jenkins questioned Ruschke on why the PTAB was allowing amicus briefs regarding the St. Regis Mohawk’s motion to dismiss and not on any of the other 17 motions to dismiss on sovereign immunity grounds filed by state universities. Ruschke answered by saying that he wasn’t aware of a similar level of requests to file amicus briefs in any of those cases. “I am not saying that they didn’t occur; I’m just not aware that we had a — a need for the amicus briefs in those situations,” Ruschke said. He added that it was possible that panels decided against the filing of amicus briefs in cases where the parties can’t agree on allowing such filings, but he couldn’t be certain that was the case.
Elsewhere, Ruschke spoke about additional guidance given to administrative patent judges (APJs) in newly released standard operating procedures addressing cases which are remanded to the PTAB by the Court of Appeals for the Federal Circuit. He said that data suggested that APJ panels were doing a good job of rendering decisions on remand within six months of the mandate. Ruschke noted that Federal Circuit remands generally fell within one of six categories: improper claim interpretation; failure to consider evidence; inability to provide an adequate explanation; inappropriate application of the law; denial of due process rights; and improper consideration of the arguments.