Structural Bias at the PTAB: No Dissent Desired

On March 7, 2018, I sent a Freedom of Information Act (FOIA) Request to the United States Patent and Trademark Office (USPTO). This was the second of three FOIA Requests I send in the month of March. The first and third request remain outstanding, and late, although the Office has contacted me and asked me to remain patient. See PTO ignores FOIA.

This March 7, 2018, request was for:

1. Any document (including printed, handwritten or electronic) that contains any information, discussion or mention relating to Administrative Patent Judges receiving credit toward their production goals (or quota) for writing a dissenting opinion. This should be interpreted to include (although not be limited to) document(s) (including printed, handwritten or electronic) that include information, discussion or mention of the circumstances an Administrative Patent Judge will receive credit toward their production goals (or quota) for writing a dissenting opinion.

2. Specifically, it is my understanding that one or more memos to Administrative Patent Judge(s) explain that credit toward production goals (or quota) does not include dissenting opinions unless prior permission is sought and the request to dissent approved. I specifically seek any memoranda or document (including printed, handwritten or electronic) that discusses this policy or any document (including printed, handwritten or electronic) that might refute the existence of such policy.

Please note that electronic documents in this request are intended to include (although not be limited to) e-mail communications.

The final response I received from the Office can be seen here.

This FOIA response confirms that dissents and concurring opinions are not desired by PTAB supervisors. In fact,  Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) must justify to the Vice Chief Judge why a dissent or concurring opinion should count toward production goals, otherwise the work performed does not count. In other words, without permission of the Vice Chief Judge a dissent or concurrence by an APJ is done on the personal time of the APJ.

The substance of the relevant document, an e-mail sent on May 7, 2009, reads:

Please note that, effective immediately, if you would like a dissent, concurrence, or remand to be considered towards your productivity totals, you must submit a request. The form is attached and may be used retroactively for cases prior to this date. For cases after this date, it must be submitted to your Vice Chief Judge within one week of mailing of the dissent, concurrence, or remand in order to be considered.

Concurrences, dissents, and remands are not normally efficient mechanisms for securing the “just, speedy, and inexpensive” resolution of an appeal before the Board. (Bd. R. 1). As indicated in the PAPs, a productivity credit is not automatically earned for a concurring opinion, dissenting opinion, or remand. Accordingly, justification is required to explain the need to undertake the extra work and occasion the extra delay in order to ensure efficient and proper utilization of our resources. Further, any credit given for a concurring opinion, dissenting opinion, or remand will be commensurate in scope with the justification provided and the scope of the extra work.

Obviously, a policy that does not count dissents and concurring opinions toward production goals unless approved by the Vice Chief Judge has a chilling effect. Whether by design or by result, such a policy has the effect of squelching dissent, and even concurring opinions for that matter.

You get what you incentivize. This policy provides a disincentive to dissent, or even provide contrary views that might ordinarily appear in a concurring opinion.

Worse, this policy is not exactly the way to encourage judicial independence and exposition of differing opinions among panel members. Indeed, the policy almost certainly violates the requirements of the Administrative Procedure Act (APA), which requires judicial independence.

This confirmation that dissents and concurring opinions are strongly disfavored is hardly shocking to anyone familiar with the operation of the PTAB. Although a panel of three APJs is assigned to decide cases, in reality cases are nearly uniformly decided by a single APJ, with the other two APJs merely rubber stamping the decision of the APJ who will be responsible for writing the opinion.

This FOIA production simply explains why there is such unanimous agreement among panel members at the PTAB. You’d be very likely to agree with whoever is assigned to write the opinion too if you didn’t know until after the fact whether your time and effort to dissent or concur would be counted as work or a donation of time to the federal government.

Of course, a policy that discourages dissent deprives the parties of true panel consideration, and robs the Federal Circuit of the ability to be informed by the contrary views of an APJ that disagrees with the majority.