Parlor Tricks and Shell Games: How the Invisible Hand of the PTAB Supports Challengers

By Gene Quinn
August 20, 2018

What is stunning, however, is that after dissenting APJ James Arpin was mysteriously and without explanation removed from the case, replaced by APJ Thomas Giannetti.

https://depositphotos.com/24525713/stock-photo-cup-and-ball-guessing-game.htmlIt is difficult to convey to those who do not closely watch the Patent Trial and Appeal Board (PTAB) the depths of the systemic malfeasance that permeates the very fabric of the institution. But every once in a while, there is something that happens that is so outrageous, so egregious, that any and every fair-minded person ought to be able to agree – that simply should never happen, at least not in America. Such an event recently transpired in IPR2017-01738, the matter of ESET, LLC v. Finjan, Inc.

On July 4, 2017, ESET filed a petition for inter partes review of Finjan’s U.S. Patent No. 7,975,305. On January 31, 2018, a PTAB panel comprising Administrative Patent Judges Patrick Boucher, Zhenyu Yang and James Arpin, issued an order partially instituting an IPR. The PTAB panel “decline[d] to instituted review of claims 1-25 as unpatentable under 35 U.S.C. § 103(a) over Freund and Chandnani.” The panel would go on to note: “We agree with Patent Owner that Petitioner oversimplifies the prosecution history and that the Examiner considered other distinctions with Freund.”

As the result of the U.S. Supreme Court’s decision in SAS Institute Inc. v. Iancu, partial institutions of inter partesreview petitions is no longer an option for the PTAB. On April 24, 2018, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged. See Patent Office must decide patentability of all challenged claims.

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Considering the significant change in practice mandated by the SAS ruling, on April 26, 2018, the USPTO issued guidance. For pending trials which have already been instituted, the USPTO announced it would apply the precedent set by SAS in a retroactive manner. Specifically, pending trials which were instituted on only part of the challenged claims, however, can be adjusted to include all claims challenged by the petitioner if the panel of APJs issues an order to institute on all claims.

Obviously, the institution decision in ESET v. Finjan would have to be corrected to become compliant with the Supreme Court’s ruling in SAS.

On May 21, 2018, a Per Curiam Order was issued by the panel after a telephone conference was conducted with counsel on April 30, 2018. The purpose of the conference was to determine how to handle the case in light of the Supreme Court’s ruling in SAS. APJs Patrick Boucher and Zhenyu Yang voted to instituted review on claims 1-25 as unpatentable under 35 U.S.C. § 103(a) over Freund and Chandnani, despite the fact that the original institution decision determined the arguments made by the petitioner lacked merit and oversimplified the prosecution history relied upon. Thus, Finjan now must defend a challenge that the panel has already determined lacks merit.

APJ James Arpin did not agree with Boucher and Yang and dissented from the May 21, 2018 Per Curiam Order. He explained that SAS requires the panel to institute on all challenged claims if an IPR is instituted, but also that there is no obligation for the PTAB to institute any IPR. Considering the early stage of the proceeding, Arpin wrote that he “would vacate the Institution Decision and dismiss this proceeding.”

What comes next is worse, and almost unbelievable if it were not done by the PTAB.

On June 13, 2018, Finjan filed a Request for Rehearing for the purpose of requesting an expanded panel and reconsidering the decision to institute review on claims 1-25 as unpatentable under 35 U.S.C. § 103(a) over Freund and Chandnani. On August 10, 2018, the PTAB panel issued its decision denying both requests, which is not surprising. What is stunning, however, is that after dissenting APJ James Arpin was mysteriously and without explanation removed from the case, replaced by APJ Thomas Giannetti.

This is the type of trial by ambush that has become common at the PTAB. Panels are expanded without warning or explanation. APJs not assigned to cases deliberate with APJs assigned, which is a clear violation of the Administrative Procedures Act. Now APJ Arpin issues a dissenting opinion that favors the patent owner and is promptly removed from the case.

Clearly, patent owners do not receive anything that approximates a fair and reasonable chance at the PTAB. The Office has admitted to stacking panels at the PTAB in order to achieve the outcome desired, which in and of itself is an egregious breach of notions of justice. These are contested proceedings where the patent owner is facing challenges, and as we know from Finjan’s record, repeated and harassing challenges from a multitude of challengers. Yet in these contested proceedings the PTAB continues to pick winners and losers using whatever procedural shell game available. Whether it is stacking panels, or as in this case removing a sympathetic APJ who wrote a dissent on his own time realizing he would not receive credit toward his work production goals unless it was approved by the very people who decided to remove him from the case.

Perhaps there is an innocent explanation for what happened here, but in the secretive, backroom world of the PTAB innocent explanations are becoming harder and harder to envision. And, frankly, given how the PTAB has run amok for so long the tribunal has lost any legitimate claim to the benefit of doubt.

If there is nothing nefarious going on, then why is it that the patent owner always seems to be on the wrong end of these procedural irregularities? Why is it that the invisible hand of the PTAB always winds up on the side of the scale that takes patent rights away?

Many patent owners believe the PTAB bends over backwards to benefit challengers in order to encourage more challenges. After all, if the post grant challenge system were fair patent owners would have a chance and that would cut down on challenges. Thus, the cynical within the industry believe it is about job security. Whatever the case may be, parlor tricks and shell games ensure the invisible hand of the PTAB supports challengers.

Tip From: Patent Attorney George Schooff. See USPTO Makes Judge Arpin Disappear.

Image Source: Deposit Photos.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 79 Comments comments.

  1. David Stein August 20, 2018 12:15 pm

    > …after dissenting APJ James Arpin was mysteriously and without explanation removed from the case, replaced by APJ Thomas Giannetti.

    Oof. That’s one hell of a gut-punch.

    I recall this snippet from your post about the PPAC Annual Meeting:

    >

    Of particular interest, in an exchange with Bernie Knight, former General Counsel at the USPTO, Director Iancu sun sponte raised the issue of panel stacking, explaining that he has heard the criticisms, but does not share the concerns. At first that would seem rather dismissive. Iancu would go on to say, however, that in the coming weeks the Office will have more to say on this issue, and that there will be greater transparency for the parties and the public on the issue of expanded panels.

    I wonder how that lack of concern holds up in a case like this. And I hope that people who can secure the attention of PTO administration will raise this instance as casting a significant cloud over the impartiality of the PTAB.

  2. Gene Quinn August 20, 2018 12:19 pm

    David-

    I believe Director Iancu wants to bring transparency to the PTAB. I don’t think he is just giving lip service to “transparency” the way that term was thrown about during the Obama years. Having said that, this story is just a reminder that he has his work cut out for him if he really wants to bring about change.

    -Gene

  3. Tesia Thomas August 20, 2018 1:18 pm

    This is a great article Gene.
    Job security is the issue responsible for most nefarious government actions mainly because the people that strive to work for the government want to retire from it!

    This happens in research and in PTAB and in everything else.

    You’d think someone would stop putting private and public sector American citizen employees against each other in this manner…

    The ethics violations happen in the name of “every one for him/her self.”

  4. Josh Malone August 20, 2018 1:47 pm

    This is a big problem. I have heard PTO and former PTO officials express offense at objections such as this. As if it is questioning their integrity. That is not the case. If anything it is questioning their hubris. Anyone that thinks themself qualified to invalidate a patent under 103 “on the papers” suffers from hubris. I do not believe this applies to Director Iancu. But how can he direct the PTAB to deny and vacate these institutions and leave it to a real court with fair procedures and a jury to resolve these obviousness disputes? If he does so, he will create a firestorm of protests from the efficient infringers. Certainly the entire system is fundamentally lacking transparency and due process. It is inherent. They are not independent judges. It has nothing to do with their individual integrity. They are not legitimate triers of factual disputes nor peers of the accused. Nothing to do with their personal character or competency. They are calling balls and strikes from the bleachers, no matter how earnest and honest they are.

    The only hope is for Director Iancu to apply discretion to kick out all but the most clear cut petitions under 102. Continuing to institute 103 petitions is a violation of §326(b) which requires that he “consider the effect of any such regulation on the economy, the integrity of the patent system”. Trying obviousness in an infringement case in the PTAB is cannot be reconciled with this provision. The experiment of the last 5 years has proven so.

  5. JTS August 20, 2018 2:44 pm

    The post admits that the reason for the change is not known. Without knowing the reason for the change, is it really fair to blame the change on intentional outcome-meddling when there are other valid explanations? Agree that IPRs have many problems, but it’s wrong to fill in unknowns with assumptions based on bias rather than fact.

  6. Tesia Thomas August 20, 2018 2:50 pm

    JTS, it’s called a hypothesis.

  7. Pro Se August 20, 2018 4:10 pm

    Why would anyone working in a top firm, and a few partners, making “House & Benz” money, ever leave that to hitch a government salary? I believe 98% of APJ are moles for biglaw, show me a Lawyer that gives up hose and Benz money for a GS12 pay schedule.

    Just search on Linkedin, for “Administrative Patent Judge” and 98% of all of them had a last position at a top 20% IP law firm…

    Again, who trades a job that can pay for a AMG Benz with one that can only afford a Chevy Impala?

    Only in Amercia can corporate take over and stifle the government..

  8. David Stein August 20, 2018 5:53 pm

    JTS: If this incident arose in a vacuum, then guessing at the rationale would be unfair. But it’s set against two contextual facts that make this swap look unseemly:

    1) The PTAB’s admitted panel orchestration, and

    2) The PTAB’S deliberate, systematic obstacles to dissenting opinions.

    If the PTAB’s panel orchestration were to continue, it would look exactly like what occurred. The optics alone raise the specter of “the appearance of impropriety.”

  9. oneofmany August 20, 2018 6:42 pm

    Pro se:
    re: APJ salary, they don’t make GS12, they make second year money. Most of the judges are at the top of the scale and make just over $170k. Though your point still stands, if they were making $300k-$1M a year, why would they come to the PTO, and if they did, can we reasonably expect them to work as hard when they are making literally a fraction as much as they used to? Some of the new judges are basically in early retirement from their law firm. Again, are these the people who are going to give 100% to their job, which is so far beneath their potential?

    *Note, I’m not saying judges aren’t giving it their all, just raising some very real concerns. I’m not sure whether I’d have an examiner promoted to APJ, where the examiner would be proud and honored to have such a position, or a biglaw partner who scoffs at the insignificance of the position but needs a little scratch before full on retirement.

  10. Jianqing Wu August 20, 2018 8:17 pm

    Are the page still here?

  11. Jianqing Wu August 20, 2018 8:24 pm

    This is a drop of water in an ocean. Most practitioners can figure out from reading office actions what is really going on in the PTO. Director Iancu just cannot do much to reverse the momenta of patent quality standards which started since 2015. Penal member selection is probably a smallest thing compared with the massive number of arbitrary rejections.

  12. Jianqing Wu August 20, 2018 8:30 pm

    More. When the PTO rule and practice has been poisoned by junk-science-based patent policy studies, judge selection is the least trivial thing. Rejection=patent quality; more office-actions=quality; more restrictions=quality; more abandonment=quality; lowest grant rate=best quality; absurdity of office actions=HIGHER quality…. Panel orchestration is to achieve quality!?

  13. Jianqing Wu August 20, 2018 8:36 pm

    Can anyone verify Yang’s prior employment?
    Zhenyu Yang – Software Engineer – Google | LinkedIn

  14. Gene Quinn August 21, 2018 12:04 am

    JTS @5-

    You say: “it’s wrong to fill in unknowns with assumptions based on bias rather than fact.”

    I disagree. The PTAB is supposed to be a part of the American justice system. Transparency is absolutely mandated, but there is no transparency whatsoever. If there were any innocent explanations they would be given on the record. For example, let’s say APJ Arpin believed himself unable to move forward with the case for some ethical reason. In any court in America he would publicly recuse himself. At the PTAB he just disappears without explanation.

    So, if the PTAB is going to operate without transparency I see absolutely no reason why the spoliation of evidence presumptions should not apply. The most egregious and nefarious inference should be drawn given the history of this tribunal. After all, there admissions panels have been stacked to achieve desired outcomes and documentary proof APJs have deliberated with others not assigned to cases in violation of the APA. Even the Supreme Court has noticed what they have called “shenanigans”. This tribunal has lost the benefit of the doubt.

  15. AAA JJ August 21, 2018 7:54 am

    The PTAB is staffed with cockroaches scurrying around in the dark. When the light is turned on, they run and hide. But when the light is turned off again, they go right back to business as usual.

  16. Joachim Martillo August 21, 2018 8:20 am

    Section II D. Institution of Trial of the August 2018 TRIAL PRACTICE GUIDE UPDATE emphasizes the discretionary nature of institution.

    http://www.ptablitigationblog.com/wp-content/uploads/2018/08/2018_Revised_Trial_Practice_Guide.pdf

    35 U.S.C. §§ 314(a), 324(a)

    Sections 314(a) and 324(a) provide the Director with discretion to deny a petition. See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter partes review to be instituted unless . . . .”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Under 35 U.S.C. § 316(a)(2), the Director shall prescribe regulations “setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a).” Once instituted, “[petitioner] is entitled to a final written decision addressing all of the claims it has challenged.” SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018).
    The Director’s discretion is informed by 35 U.S.C. §§ 316(b) and 326(b), which require the Director to “consider the effect of any such regulation [under this section] on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” The AIA was “designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.” H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant reviews were meant to be “quick and cost effective alternatives to litigation”); see also S. Rep. No. 110–259, at 20 (2008). In General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, the Board recognized these goals of the AIA, but also “recognize[d] the potential for abuse of the review process by repeated attacks on patents.” IPR2016-01357, slip op. 16–17 (PTAB Sept. 6, 2017) (Paper 19) (precedential).

  17. Anon August 21, 2018 9:41 am

    AAA JJ,

    I SAWS what you did there…

  18. Night Writer August 21, 2018 12:45 pm

    @11 Jianqing Wu Most practitioners can figure out from reading office actions what is really going on in the PTO.

    I agree 100 percent. You can almost always figure it out when you look at the substance of the OA and interview the examiner/SPE.

    And I agree 100 percent about the science. We are told the Sun revolves around the Earth.

  19. Anon August 21, 2018 3:10 pm

    Had a recent examiner interview that went something like this:

    Me: I see you used terms by the Court in addressing my substantially different invention. Please define the following terms that you are using so that I can determine (for my client) the propriety of continuing prosecution:
    “Abstract”
    “significantly more.”

    Examiner: I do not know how to define those terms, or even what they really mean when I am evaluating your client’s claimed invention. But I was told by my SPE not to allow a claim like this. You are asking for too much. If you added a [page and a half] of limitations, then my SPE may allow me to not raise a 101 rejection.

    Me: Please define “too much.”

    Examiner: I do not know how to define that either. I will know it when I see it.. [more to the point, he will know it when his SPE sees it].

  20. oneofmany August 21, 2018 4:44 pm

    Anon:

    Unfortunately, what you describe is just a new face to an old problem.

    I remember 10 years or so ago now, an interview that went like:

    Me: I have some test results and affidavits and images from my client showing criticality of the claim features.
    Junior Examiner: Let me see those . . .
    SPE (interrupting): We don’t have to consider those.
    Me: Yes, you do.
    SPE: No, we don’t have to consider evidence not in the record.
    Me: I plan to submit these with the next response.
    SPE: Well, we don’t have to consider your evidence then, either.
    Me: Why not? Of course you have to consider evidence presented.
    SPE: No, we don’t.
    Me: Well, then I guess we’ll end the interview here.
    Junior: (not saying anything, but looking at me like he’s trying to say “sorry”)

    The PTO has plenty of bad apples, the problem is that rooting them out would mean a reduction in production. That’s the best explanation I can come up with. I think a small panel of competent examiners could pretty quickly identify the most egregious offenders, and that would go a long way towards patent quality. Also it would help justify more time for the remaining examiners to do a better job.

  21. Night Writer August 21, 2018 7:12 pm

    @20

    I’ve had interviews like that. I had one with a junior examiner (a very pretty woman) and a SPE. The SPE agreed with me that it was a real stretch to say that the reference disclosed the elements of the claim. The junior examiner found a reference that was about the same as the first reference and re-rejected the claims. I had another interview with the examiner and another SPE. The first SPE was on vacation. The new SPE was a young man that was obviously very interested in the young pretty examiner. He said I so find that your claims are obvious over the cited reference and I think that it may even be a 102.

    Anyway, an RCE and some more work ended in an allowance. The SPE who wanted a date probably cost the client $5-$10K.

  22. David Stein August 22, 2018 7:21 am

    Anon @19:

    I’ve had LOTS of interviews that were exactly as you described: the examiner explains a 101 rejection by just saying the claims are “too broad” and demanding a bunch of unnecessary limitations. Several of those cases are now pending before the PTAB.

    It’s just as oneofmany @20 described. *Many* examiners view themselves as the king or queen of patents in this tiny domain, where patents are only granted at their pleasure. They look at the claim, decide whether or not they feel like allowing it, and then go through the motions of wrapping their “no” answer in whatever legalese the PTO requires these days. Alice is merely the boilerplate du jour.

    The office knows that 101 is overused, as evidenced by its guidance on Berkheimer, which in several distinct ways goes further than the case itself requires. I’m hopeful, though not confident, that Berkheimer will cut back on some of the excesses.

  23. Jianqing Wu August 22, 2018 9:48 am

    Anon @19:

    Similar to Anon’s experience, I had the following:

    Me: Your prior art has nothing to do with the claimed invention. It even does not have a single claimed element.

    My SPE gave this prior art and asked me to reject….” (I really cannot blame assistant examiners).

    I saw how examiners used IMAGINATION STEPS to make an Alice rejection. The key steps are creating web pages, creating database tables, encrypting files, or flying data from over the internet, they entered Alice rejections.

    What kind of quality initiative the Office has created? I found some evidence:

    One of many junk-patent policies studies is: “Is the Time Allocated to Review Patent Applications Inducing Examiners to Grant Invalid Patents?: Evidence from Micro-Level Application Data” Working Paper 20337 http://www.nber.org/papers/w20337. What the authors did was to identify a list of factors that might be indicators of invalid patents, evaluate them for a large number of patents, and then conducted a regression analysis to determine which of the factors are responsible for invalid patents. The likelihood to make out a 103 rejection is a quality indicator, a higher grant rate must be a factor for issuing invalid patents. Among a list of variables, most of them are abstract concepts. They should never be used as quality-controlling criteria.

    The U.S. Supreme Court is 180-degree wrong. It should have purged the massive number of abstract concepts from patent policy research and invalidated all of those patent policy publications. Instead, the court relies upon abstract concepts in patent policies to purge abstract concepts from patentable subjects. It relies upon junk science to advance an obsolete doctrine which itself is based-upon junk science.

    David Stein @22. I do not believe it is accurate in all cases. It is correct for some SPE who have benefited from this absurd quality policy. Most assistant examiners and even many primary examiners are just victims like inventors/patent owners in crossfires. Even the examiners who have demonstrated bias toward specific inventors and inventions, the ROOT driving force is still the policy for controlling grant rates. The inventor world should work together to destroy the foundation of wrong quality policies.

    Congress, Courts, and PTO leaders will make an immediate effort to end bias quality practices.

  24. Anon2 August 22, 2018 11:27 am

    It seems to me that this is about a policy of economic decline, and aligning the European and American patent systems. Killing patents that don’t follow the style of the European patent system seems to be the goal, the techniques are seen as behaviors.

  25. Anon5 August 22, 2018 1:39 pm

    Curious if anyone else has experienced the following?:

    After a long (and relatively fruitful) relationship with the same examiner where multiple patents have been granted within the same family, a routine follow on continuation application is mysteriously and without explanation shuttled to a new examiner in a completely different art unit…

  26. Josh Malone August 22, 2018 3:11 pm

    Even though the comments veered off into examination, there is a connection to the original post. The examiners have learned that the PTAB will apply BRI and KSR to cancel claims under 103 that are actually valid. Like any quality assurance regime, the upstream inspection must be stricter than the outgoing inspection which must be stricter than the customer requirement. Before the AIA the patent system worked in this manner as issued patents had a presumption of validity and benefit of a clear and convincing standard for invalidation. But the AIA mandated that post issuance inspection be at the threshold. With preponderance of evidence and KSR every patent claim is on the threshold and will frequently be determined to be defective. With multiple IPRs it is virtually guaranteed.

    So the SPEs and TQAS and TC Directors in the examining division have come to realize that no amount of diligence on their part will improve the odds on post issuance review.

    So they are putting margin into the examination, examining applications stricter than required by law.

    My case was like many others, the examiner insisted that a combination of prior art was not patentable under KSR. This is not really what KSR stands for, but it is the practical result. In a post issuance review the infringer will pay a supposed expert to say that there was a need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

    Effectively the examining corps has been mandated to hunt for the elements of the claims in the prior art and then combine them together to form a rejection. They essentially require that the applicant formulate the claims to include an element that is not found anywhere in the prior art. This is their only chance of not being overturned by the PTAB.

    There is no easy way out of this conundrum. Obviousness is always going to be a subjective judgment call. Immediately upon learning of a new invention we are infected with hindsight and there is no evidence that can conclusively resolve it one way or another. There must be some margin between the issuance of a patent claim and the review of that claim in these circumstances.

    The AIA must be amended (if it cannot be repealed) to restore the presumption of validity and clear and convincing burden of proof. And KSR must be overturned and replaced with an evidentiary based approach (i.e., teaching, suggestion, or motivation). In the meantime, the Director of the PTO must use his discretion to strictly limit review of 103 challenges. Very few 103 gtounds can truly qualify as “errors” of the type the PTAB was intended to correct. Overlooked prior art can result in an “error” under 102, but not 103.

    As these reforms are put in place the examining division will begin to see their judgment respected and will loosen their guardbsand and begin allowing claims that meet the statutory requirements rather than their tightened QA limits.

  27. Anon August 22, 2018 3:48 pm

    Josh,

    While not a direct translation of your writing, in my mind I formulated the following:

    35 USC 103 has been turned into a “piece-wise” 35 USC 102.

    That is to say, that the “world of prior art” available for 35 USC 103 rejections has been turned into the SAME “world of prior art” for 35 USC 102 rejections, and that the limitation of “within the same piece of prior art (as ordered in a claim)” has been effectively nullified from 35 USC 102.

    This of course changes novelty AND obviousness into (a nigh unobtainable) super loose novelty test.

    To which, one reply may be: Only God works from scratch.

    However, your statement of “ Overlooked prior art can result in an “error” under 102, but not 103.” is simply not sustainable and evidences an equal, albeit diametrically opposite, misunderstanding.

    Perhaps the best way of looking at this is to realize that the “world of prior art” is simply not the same (nor was it ever intended to be the same) for the two very different legal tests of novelty and non-obviousness. To the extent that KSR dismantles WHY we have the test of non-obviousness and seeks to “use” the same “world of prior art,” that extent is simply not in accord with the law as written by Congress.

    (and make no mistake, the Supreme Court has never been on board with why Congress acted in the Act of 1952 to opt for a “non-obviousness” test INSTEAD OF an “invention” test). This was perhaps shown to the greatest extent in the way that Judge Rich (who helped Congress write that very section of law) had to battle the Supreme Court (or perhaps more correctly, had to battle the personal philosophies of several Justrices of the Supreme Court) as exemplified by a careful understanding of the patent law cases (post 1952) dealing with 101 and 103.

  28. Anon August 22, 2018 4:21 pm

    I should give proper attribution for the “God only works…” quote:

    “Only God works from nothing. Man must work with old elements.” Howard T. Markey, Why Not the Statute?, 65 J. Pat. Off. Soc’y 331, 334 (1983).

  29. Josh Malone August 22, 2018 5:36 pm

    That is correct Anon. Say X is prior art in Japanese, and Y is prior art in French. I cannot claim X or Y as my invention – duh. But I should be able to claim X + Y, if it has utility. But under KSR and AIA prior art definition, it is unlikely. It will be declared obvious to combine these two references. Yet a POSA cannot read those references so could not possibly have combined them.

  30. Tesia Thomas August 22, 2018 5:43 pm

    Josh,
    Are you saying that because a POSA maybe can only read and understand one language that combining references of different languages is unlikely?
    True. But in the Inventors Oath, one should review prior art in all countries and list it.
    And prior art from all countries is prior art in America or wherever.

    Combining 2 references of different languages is worrisome but not for the reason that most people can’t read and understand the two different languages.

  31. Josh Malone August 22, 2018 9:40 pm

    If a person of ordinary skill in the art did not know about the references it would have been impossible, much less obvious, to combine them to arrive at the claimed invention. AIA changes to 102 fouled up this simple analysis.

  32. David Stein August 22, 2018 10:12 pm

    Jianqing @23:

    Oh – to be clear, by “many” I really meant “many,” and certainly not “all.”

    In fact, I had an interview today with an examiner from Art Unit 2446 that could have been the model of good examination practice. The first office action was well-searched and cited a variety of references quite fairly. I discussed some technical aspects that I believed to be distinguished from the art, and the examiner listened and gave a prognosis for each option – some positive and some discouraging, but all consistent with my own estimation of likely prior art. I left feeling well-advised and that our time had been productively spent. Based on my experiences from the past decade, the examination corps as a whole has gradually but steadily improved – although 101 remains exploitable by those “many” bad examiners.

    The PTAB is a different story. AIPLA recently hosted a teleconference including some comments about the PTAB by Bill Smith, a private practitioner who spent 19 years as a PTAB APJ. His primary view was that the current PTAB views itself as the defender of the public domain from bad patents; if the judges think that an application should not be allowed, they will bend over backwards to uphold or correct a bad rejection. This is inconsistent with its administrative function: to verify the adequacy of examiners’ work product. I share his perspective, and I hope that Director Iancu considers Bill’s perspective while reshaping the PTAB.

  33. Anon August 22, 2018 10:30 pm

    Josh and Tesia,

    I suggest that you have a sit-down with your counsel and have them explain the Legal notion of PHOSITA- neither language nor remoteness are barriers to the Legal fiction. It is clear error to thInk of PHOSITA as a real person.

  34. Tesia Thomas August 22, 2018 10:40 pm

    That’s what I was saying Anon…
    but also that putting two references together is worrisome just not because of language barriers.

  35. LazyCubicleMonkey August 22, 2018 11:49 pm

    The removal of James Arpin does seem shady. Having said that, a much higher requirement for patent validity would also imply much lower patent invalidity rulings down the line. And while this seems like it’s an attack on patents, this should be balanced by the extraordinary number of infringement lawsuits by NPEs against small businesses where the cost of defending against such suits runs in the millions – even if the patent in question should never have been granted in the first place or if they’re not infringing on the patent in question or if they’re just a customer of the company that sold them the infringing product.

    While the prevailing view here is an all-out assault on patents, it’s always interesting to see how the other side sees things (that’s why I’m reading this blog, after all) – in particular, how too many (low-quality) software (only speaking for software as that’s where my expertise lies) patents are hampering innovation while not providing any value – I’m not aware of any software developers who get their inspiration from patents as opposed to coming up with solutions independently/open source/googling stack overflow. In fact, the very notion of open source greatly reduces the strength of the argument that software patents are necessary to promote innovation in the software industry. Here’s some reading from how the other side (and I’d wager most software developers would agree far more with that view than the pro-software patent views here – but it would be nice if everyone read both sides of the argument) thinks: https://arstechnica.com/features/2018/06/why-the-supreme-courts-software-patent-ban-didnt-last/

    It’s interesting that you bring up job security as a reason for PTAB doing what they do. A cynic could argue that the Federal Circuit does the same thing for patents: https://arstechnica.com/tech-policy/2012/09/how-a-rogue-appeals-court-wrecked-the-patent-system/ (P.S. the above link actually linked to an article on this blog which is how I found it in the first place).

  36. Anon August 23, 2018 8:21 am

    Putting two references together is the epitome of an obviuousness analysis.

    Where then is the “worry?”

    There is no such thing as a language barrier.
    There is no such thing as a remoteness barrier.

    Such things simply are not present for the Legal construct.

    Without more, what I read here is simply a lack of understanding of the obviousness doctrine. Perhaps there is a legitimate complaint vis a vis obviousness, but there has not been provided any support for any legitimate complaint in the comments here.

  37. Jianqing Wu August 23, 2018 9:47 am

    Josh@26.

    PTAB is responsible for creating this new element requirement over the “worldwide-novelty” (“WN-NE”).

    One more thing that many inventors might have experienced is the hindsight-view bias effect: When an application is filed, the claimed invention is non-obvious and might be against accepted wisdom. The Patent Office kept rejecting by citing arbitrary references. Two years after the publication, some companies start using the invention. The Patent Office keeps rejecting. Five or ten years later, the inventor will have more difficulties to get a patent. There are a massive number of undated articles in the internet, the invention might be used everywhere….. In this internet age, it would be hard to prove that the invention has brought in the new technologies, but the PTO would try harder to reject because examiners think claimed features are everywhere. A long delay in granting a patent will automatically favors the PTO action of rejection.

    Now, the patentability is worldwide novelty, plus new element requirement, determined in an extremely bias examination environment. That is equal to no patent.

    Many readers asked how soon can those problems be fixed. After the PTO has become such a chaotic system, a complete reversal would need at least the same amount of time for creating the system. Three to five years is a conservative number. Director Iancu cannot do much in such a short time window. Congress, courts, and many PTO leaders will resist changes.

    If I had choices, I would choose to (1) dismantle PTO quality initiatives and quality policies, (2) change some PTO leaders including some SPEs and PTAB’s controlling persons, and (3) restate automatic injunction law. Then, tens to hundreds of other things are to be fixed which will need years. The first two items are to stop extremely bias actions that have never been authorized by statutes and case laws. Item 3 is essential for restoring patent market value.

  38. Tesia Thomas August 23, 2018 9:59 am

    Anon,

    Putting two references X ans Y together that don’t teach what Z claims.

  39. Josh Malone August 23, 2018 10:33 am

    Tes, if you are the first to combine X and Y you should be entitled to a patent for it, and in 1952 when Congress created the PHOSITA you would have been.

    If X and Y were readily available references (tools in the field or analagous field if the invention) and there was a teaching, suggestion, or motivation to combine them to create Z then you can’t (and shouldn’t) have a patent for Z.

    If X or Y were hidden references (existing but unknown in the field or analagous field of the invention) there could be no motivation to combine them so you should be able to have a patent on Z, but under current law you probably cannot.

  40. Tesia Thomas August 23, 2018 10:38 am

    Josh,

    Do you mean submarine patents or ITAR/EAR restricted patents?
    I don’t understand how a prior art document is unknown.
    Sometimes people don’t search well enough to find everything. I’ve heard of some cartoons or comics drawings anticipating patents and becoming the prior art that eliminates the patent right…

  41. Anon August 23, 2018 12:47 pm

    Tesia,

    Thanks – I take it from your “not Z” that “Z” is not an obvious variant from either “X,”Y,” or the combination of “X” and “Y.”

    Josh,

    I fear that you still do not understand what “obviousness” means from the legal perspective. Merely being the first to combine “X” and “Y” has never meant that such was legally non-obvious.

    I also fear that you are still not grasping what “hidden reference” may – or may not – entail for an obviousness analysis. You also make a bald statement as to “could be no motivation to combine” that is a separate legal point than the existence of the combination itself – which circles back to your misconception about the prior existence of the actual combination.

    You really should have a sit-down with your counsel on this.

  42. Tesia Thomas August 23, 2018 1:36 pm

    Anon,

    Computers (especially early desktop) are TV + typewriter. Still patented.

    Everything is a combination of something.
    What does motivation to combine entail?
    The computer monitor works nearly identical to the TV. I push the buttons on a typewriter just as I do with a computer keyboard.

    I have no idea what “hidden reference” means either.
    It surely does suck for those cartoons and comics to void patent rights but that is the game we play.
    Submarine patents would be unfairly used as prior art IMO.

  43. Anon August 23, 2018 1:54 pm

    Computers (especially early desktop) are TV + typewriter.

    Not even close, Tesia.

    As to your aversion to “submarine patents,” I believe (and I have to take a guess as to what you may mean by “submarine patent”) that you mean that obviousness needs to reflect what a “real person” would be aware of, and that since some patents are not published until their grant date, that the earliest such can be used as prior art would be their grant date (as opposed to file date).

    This is an error of not understanding the nature of the Legal fiction of the PHOSITA.

    I “get” that you may want something else, but what you want is not what we have (or what is even understood to be the Legal fiction of PHOSITA for the legal purpose of obviousness).

    The reason why we use a Legal fiction and not a real person is that obviousness is a term of law tied to a “State of the Art,” and not to any state of mind of real persons that may be inventors. The legal requirement is not “real person” driven, and it is simple legal error to view the legal requirement from a real person perspective.

  44. Tesia Thomas August 23, 2018 2:00 pm

    No, I actually do get it Anon.

    And, actually that is pretty close. Or, care to explain why a computer isn’t tv + typewriter?

    But, with submarine patents, if the patent is purposefully delayed for over a decade (the longest of which is 40 years or so) and the product isn’t on the market then not even fictional people are mind readers.

    Or are fictional people relegated to Gods in this legal sense? -with omniscience?

  45. Tesia Thomas August 23, 2018 2:04 pm

    Anon,
    How would a separate examiner even know that the sub is prior art?
    The latter patent could be granted, then the sub granted, and the latter patent already have expired!

  46. Tesia Thomas August 23, 2018 2:09 pm

    Anon,

    You think PTAB is unethical but don’t see sub patents as unethical?

    Imagine prosecuting a patent and taking a client’s money for renewal fees and issuance fees.
    Then, thousands of dollars later… whoops! No one knew it was anticipated! But, no refund for your grant and renewal fees, client.

  47. Night Writer August 23, 2018 5:39 pm

    @46 Tesia Thomas

    Wow. All the anti patent people play the same games. The burden is on the Office to find the prior art not the attorney. There is this constant attempt to shift this burden among the anti patent people. I think they do this because it enables them to shift the focus on the prosecuting attorney. But this is a constant theme of the anti patent crowd of trying to shift the burden of prosecution from the USPTO to the prosecution attorney. (Remember those prosecution documents we all almost had to write.)

  48. Tesia Thomas August 23, 2018 5:45 pm

    Night Writer,

    Oooh nice strawman.

    37 CFR 1.56
    I’m anti-dishonest people whether the named inventor is dishonest, the attorney, or the examiner.
    In case you didn’t know we’re all human beings with our own oaths throughout the whole entire process.
    https://www.uspto.gov/web/offices/pac/mpep/s2001.html

  49. Tesia Thomas August 23, 2018 5:50 pm

    Night Writer,

    And…if you forgot or misread, I said above, “…whoops! No one knew it was anticipated!”

    The inventor will likely blame the counsel. The counsel will likely blame USPTO.
    Giant blame circle…because no one who is a real human is omniscient.

  50. Josh Malone August 23, 2018 6:28 pm

    Tes, hidden reference means a hard to find reference, that the applicant and examiner would be unlikely to be aware of. That is no excuse under 102 – if it is not new you did not invent it and you cannot have a patent. But combining such a hidden reference with other prior art should not be considered obvious under 103. A person of ordinary skill in the art would not have been able to think of it.

    Anon, I understand that PHOSITA is a legal fiction. The 1952 legislation did mean ordinary though. KSR and AIA turned him into an extraordinary (omniscient) person.

  51. Tesia Thomas August 23, 2018 6:32 pm

    Josh,

    Ok.

    And, I agree with all the pro-patent people that hidden references (like submarine patents) are something only the inventor pays for in the end…which is not a just process.

    Everyone has his or her oaths. If the patent owner and counsel didn’t find it then someone else from the USPTO should have.

    In cases like that, the patent owner should get some, if not all, money back.
    But…they really must place the burden on the patent owner…because examiners have to meet their metrics!
    Can’t slow down the USPTO train. xP

  52. Anon August 23, 2018 7:59 pm

    Josh,

    But combining such a hidden reference with other prior art should not be considered obvious under 103.

    This has been the way since 1952.

    Sorry to burst your bubble, but your notion of “hidden reference” simply has no tether to the law.

    And never has.

    I do continue to think that you (and Tesia) have an incorrect view of a basic legal proposition. This is why I suggested above that you have a sit-down with counsel. This is not a “put down” or snide comment. This is an earnest observation. Obviousness has always been about the larger state of the art – to which it was never intended to be viewed from the perspective of an actual real person.

  53. Tesia Thomas August 23, 2018 8:01 pm

    Anon, how do you reconcile no one finding the prior art except a competitor?
    And especially if it’s the examiner and also when the competitor never took an oath to find all the prior art.

  54. Anon August 23, 2018 9:13 pm

    Tesia,

    Why is it that you continue to insist on inserting some notion of a real person?

  55. Tesia Thomas August 23, 2018 9:20 pm

    Why do you keep avoiding answering my question?
    I just talked to the patent god and PHOSITA would like to know what Anon thinks about taking the money of the non-omniscient.
    Not filing fees but when the patent makes it all the way to grant and even pays filing fees. Attorneys get their prosecution fees but the non-inventor just loses everything.

  56. Tesia Thomas August 23, 2018 9:21 pm

    and even pays issuance and renewal fees* not filing fees

  57. Anon August 24, 2018 5:42 am

    Tesia,

    It is far less “avoiding” and far more reminding you (again and again) that your questions appear to be based on an improper view of the law.

    Such questions need not be answered.

    Once you recognize that your questions stem from fallacy, maybe your questions may be reformulated such that answering them may be helpful.

    As to “taking money of the non-omniscient,” my advise hews directly TO the ethical point: I advised you to talk with your counsel. I advice this because you appear to not have informed consent. Inform yourself. Please.

  58. Night Writer August 24, 2018 8:10 am

    Improving search would help raise the quality of patents. Good attorneys want their applications allowed over the cited prior art.

    1) It is the job of the patent examiner to find the art not the applicant. The USPTO has the burden of examining the application and finding the best art. (Yes, there is a duty to disclose any art you may know about, but not a duty to know the best art.) The anti-patent movement is constantly trying to shift the burden to the applicant.

    2) The patents that are being invalidated with 103 at the PTAB, in general, should not be invalidated. There is the game of the “new” reference. Again, what we have is the anti-patent movement has come up with good propaganda to confuse the ignorant. The way it works is there are enormous numbers of possible references. The examiner may just pick the closest ones and not bother with cumulative references. All art in the field should be assumed to have been considered as the examiner could not go through all the art and is merely picking the closest. This is easy to understand when you know that there are thousands and thousands possible art references for almost all patents and when you understand what experts in fields do.

    3) What typical happens is that cumulative references are used with the same arguments that were considered by the examiner. Using KSR, the judges can invalidate any claim by saying it is obvious. Any claim. I could easily put together a 103 argument for any claim. So what you have is perfectly valid patents being invalidated using the same or similar arguments considered by the examiner but with different references that are equivalent. That is the typical case. There is no way the applicant can fight roll after roll of the KSR dice with “new”, i.e., another reference that is equivalent to one already considered.

    4) Alice is absurd. I can invalidate any claim (or present arguments to so) with Alice. Total joke.

    That is the current state of affairs. The anti-patent movement has all sorts of propaganda stories they run to try to obfuscate this.

  59. Night Writer August 24, 2018 8:15 am

    @48 Tesia Thomas

    You are running the magical reference game. It is discussed well above that if you find a 102, then yes it should be invalidated. But—if the applicant did not know of the reference the burden is on the USPTO. They are paid to be experts. The 102 game, though, is just propaganda. Finding a 102 reference for issued claims is very rare. I have never run into it. Never seen it.

    What the game is to try and attach the 102 with a 103 and cumulative references. Because a patent is not listed on a patent does not mean it was not considered. An expert will know the art and will select the closest references and consider those and list those on the patent. The inference should be that all references have been considered listed on the patent or not. I know that the judges at the CAFC have tried their Google best to remove this presumption of validity.

    You are just trying to do an end around. You are a propagandist.

  60. Night Writer August 24, 2018 8:19 am

    It should be called the mythical newly discovered reference. There ain’t no such animal for the reasons I explain above. And the reason that the propagandist push for the existence of the mythical newly discovered reference is that it justifies invalidating almost any patent. Just show up with cumulative references and about the same 103 arguments and claim we have the mythical newly discovered reference. Apply KSR (the I can say and do anything I want case). Boom. Invalidated claims.

    I guess what gets me mad is not that you guys are against patents, but that you make up all this propaganda to appeal to the ignorant masses and then come on the blogs and think that real patent attorneys are going to buy your crxp.

  61. Anon August 24, 2018 10:08 am

    Night Writer,

    Please take a moment and realize that you and Tesia are on the same side of the argument here. Her “portrayal” is a criticism. not an affirmation. Likewise, Josh is being critical as to how he sees the laws being applied.

  62. Tesia Thomas August 24, 2018 11:39 am

    Anon you think it appears to be based on improper view of the law but it isn’t.
    I’ve already said no human can know that it’ll happen or not…so I talked to PHOSITA and sympathizers with the non-omniscient.
    Cut the strawman crap.

  63. Tesia Thomas August 24, 2018 11:45 am

    Night Writer, obviously your opinions are so insecurely held that you can’t deal with examining them.
    But that’s what this is. All we and Google have is arguments based on what we want and how things were and our opinions on how they should be.

    I agree that random magical late/new reference stuff is trite, ridiculous, and unfair.

    But if we all took an oath to make sure that happens then who should get blamed?
    That’s my question for Anon that he refuses to answer due to strawman bs. (Oh Tes you clearly don’t understand the myriad of ways lawyers can fool you into thinking you aren’t thinking.)

    You feel it lies on the USPTO but now only the inventor/payer gets punished when that stuff happens.
    I agree.
    What does Anon think? (oh yeah I see another strawman coming…)

  64. Anon August 24, 2018 12:29 pm

    Tesia,

    Your reply is simply off.

    I have used no strawman in my attempts to have you focus properly on what the legal situation is.

    Do you even know the meaning of “strawman?”

  65. Tesia Thomas August 24, 2018 1:37 pm

    Anon:

    But if we all took an oath to make sure that happens then who should get blamed?

    Answer the question. We all know PHOSITA is not real. But why does only the inventor suffer when PHOSITA shows how it’s better than everyone?

    Let’s not start debating something else. Focus!
    No strawman or what is a strawman redirects. Answer the question at hand.

  66. Tesia Thomas August 24, 2018 2:30 pm

    Anon, you are distorting my argument by refusing to answer my question because you believe the question lacks indication of having knowledge of the facts.

    Humor me. You’re missing the point of my question and trying to throw back at me a lot of strawman bs.

    What do you think of a child coloring the sky green? (Yes, we all know the sky is not typically green. Humor the ignorant or creative or inquisitive child.)

    Who do you think is at fault when all partied sign oaths to find all prior art and don’t: examiner, USPTO (for even having a weirdo PHOSITA), attorney/agent, or inventor?

    Humor me.

  67. Anon August 24, 2018 3:42 pm

    But if we all took an oath to make sure that happens then who should get blamed?

    What the H is this question tethered to?

    WHY are you seeking to place blame – without understanding the legal situation?

    You ask that I humor you. I ask that you understand the legal situation so that you can ask an intelligent question.

    Sorry Tesia, I must insist that YOU humor me.

    And yet again, I have created NO strawman here, I also recommend that you look up the definition of strawman – you are in the weeds with your accusations.

    (just trying to find some semblance of meaning in your rant – and it IS a rant, when you refuse to understand the law, but still seek to play a “blame” game – where in the world are you finding ANY such “oath to find all prior art”…?)

  68. Tesia Thomas August 24, 2018 3:53 pm

    anon,
    There’s duty to disclose all information you know. Well you’re also supposed to look for this info- someone is- the examiner especially.

    The strawman is you misrepresenting my argument as not acknowledging the legal situation.
    I understand it all.
    You are just avoiding the question.

  69. Tesia Thomas August 24, 2018 4:18 pm

    Anon,
    Why doesn’t everyone just play dumb? The examiner doesn’t find prior art and neither does the inventor or counsel.
    All patents get issued…then the competitors will invoke PHOSITA for every patent and kill them in PTAB.
    I believe this is what Night Writer and Josh are saying.

    Where is the line drawn with the duty/oath?
    What happens when no prior art is cited for every patent ever? Who is to blame for a bunch of patents getting 103’d after issuance?

  70. Tesia Thomas August 24, 2018 4:27 pm

    Anon,

    If no one strives for being the PHOSITA in their duty to disclose all info material to patentability, then who is ultimately to blame for that duty going unfilled?

    A patent issues with no prosecution at all because NO ONE found prior art or tried to. Who is ultimately to blame?

  71. Anon August 24, 2018 4:56 pm

    Tesia,

    You continue to rant. Stop. Compose yourself. Ask an intelligent question grounded in the law.

    Stop trying to play the blame game.

    Are you ready?

    Let’s set a few things straight:

    There is NO “conspiracy” to stick inventors between the counsel of inventors and examiners.

    Examiners are tasked with examination. There is no “oath,” and certainly no “oath to find all.” At the same time, that task demands that they examine, which necessarily means that they seek out the best prior art upon which to make pertinent rejections.

    Counsel and inventors do NOT have an “oath” to provide ALL art. The oath is a bit different than that. There certainly is NO requirement to do ANY search whatsoever.

    My general counsel to clients along the lines of best practices is to pay for the best prior art search that the client can afford. Any results of this search ARE provided to the Office. Note that such results are most always NON-cumulative. Part of the oath absolves “cumulative information” (part of the NOT ALL).

    And what does any of this have to do with the points that I presented as to the proper understanding of PHOSITA?

    You want indulgement on a rant tied to a blame game, while saying “that you understand” – but if you really did understand, you would not be pursuing your blame game rant.

  72. Tesia Thomas August 24, 2018 5:00 pm

    Anon,

    No need for your mischaracterization any longer. You’ve answered my question by saying, “Examiners are tasked with examination.”

    Thanks for playing! I agree.

  73. Tesia Thomas August 24, 2018 5:01 pm

    “Examiners are tasked with examination… that task demands that they examine, which necessarily means that they seek out the best prior art upon which to make pertinent rejections.

    *Sobs with happiness.* I could’ve written that myself. xP

  74. Tesia Thomas August 24, 2018 5:10 pm

    And, that is also implied in the IDS because you are not allowed to mention what prior art the ISA or whatnot already mentioned/cited.
    The IDS has to be filled with extra prior art that an examiner missed.
    The duty for inventors is merely to help the examiner. But, the ultimate prior art search duty is with the examiner.

    I’m with Night Writer.
    And I think inventors should get a refund when a competitor finds prior art the examiner didn’t. Or, the USPTO law needs to limit PHOSITA to what the examiner knows.

  75. Tesia Thomas August 24, 2018 5:25 pm

    WE NEED PATENT LEMON LAWS!
    USPTO likes selling lemons (patents crippled by hidden prior art)…

  76. Anon August 24, 2018 7:32 pm

    And, that is also implied in the IDS

    Absolutely not. See 37 cfr 1.97(g).

    Speak to your counsel, please.

  77. Anon August 24, 2018 7:55 pm

    Or, the USPTO law needs to limit PHOSITA to what the examiner knows.

    Sigh.

    Once again, you want to try to make this into some type of “real person” thing.

    This tells me that you still do not understand the legal concept.

  78. Joanne August 26, 2018 12:42 am

    I looked at the order. I’m not sure you identified the biggest story. “But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office polity as precluding termination of a partially instituted proceeding in response to SAS Institute.” It sounds to me like the panel (with or without Arpin) wanted to terminate but someone “instructed” them not to? Who? A phantom expanded panel? Or did I miss something?

  79. Anon August 26, 2018 1:31 pm

    Joanne,

    Excellent point: if some over-riding “Office Policy” is deciding cases on the merits outside of the listed judges, then the Office is violating 37 cfr 1.2. Leastwise, as any such actual policy mandates are not on the record in each case so decided.

    This is just one more type of “shadow work” that needs the antiseptic of sunshine.