Without even a modicum of transparency, PTAB doesn’t deserve benefit of the doubt

By Gene Quinn
August 22, 2018

“If the PTAB is going to operate without even a modicum of transparency there is no reason why spoliation of evidence presumptions should not apply to their unexplained actions. The most egregious and nefarious inference should be drawn…”

https://depositphotos.com/160089228/stock-photo-broken-lady-of-justice-3d.htmlYet another in a long and growing line of unexplained – and seemingly unexplainable – transgressions by the Patent Trial and Appeal Board (PTAB) has recently come to light. After choosing to dissent from a decision of a panel when asked to reconsider an institution decision, Administrative Patent Judge James Arpin was mysteriously removed from the panel in ESET v. Finjan, IPR2017-01738. Without any warning, or explanation to the parties or the public, Lead Administrative Patent Judge Thomas Giannetti replaced Arpin. See How the Invisible Hand of the PTAB Supports Challengers.

Welcome to practice before the PTAB, where you have absolutely no idea who your judges will be from hearing to hearing, or if the panel will be mysteriously and without explanation or warning expanded to include executive leadership of the Board, or if the judges assigned to your case have been hand-picked by USPTO leaders in order to rule in a particular way, or even if the judges assigned to your case will deliberate with other judges not assigned to the case that you will never know anything about unless you both file a Freedom of Information Act request and the USPTO decides  to answer the request.[1]

But the question arises: Is it wrong to fill in unknowns with assumptions, and jump to the conclusion that something untoward has occurred?

Given the history of the PTAB and the way the tribunal has been administered throughout its brief tenure, the only reasonable thing for rational people to do is to suspect the worst unless and until it is proven otherwise. Call it a presumption of guilt if you want, but within the American system of jurisprudence the level of secrecy seen in proceedings of the PTAB is unprecedented. If there is nothing to hide why are they hiding so much, explaining nothing, and engaging in adjudication by ambush?

The American system of justice is built upon transparency. Transparency is mandatory for there to be a truly fair, balanced, open, honest and equal system where no party has a real or perceived advantage over the other. Transparency is a prerequisite to public confidence and a belief in a fair system. Without transparency decisions even innocent decisions can seem arbitrary and capricious. This is only compounded when light is periodically shined on the dark corners and we get a glimpse at what appears to be a rather seedy underbelly of inner dealings, secret deliberations, and an Office that isn’t afraid to pick winners and losers in contested cases.

The PTAB offers absolutely no transparency whatsoever. If there were an innocent explanation for APJ Arpin being removed from ESET v. Finjan the Board should have given the reason on the record. That is what every other court in America would do. For example, let’s say APJ Arpin believed himself unable to move forward on the case for some ethical reason. In any other court or tribunal in America he would publicly recuse himself. That is what happens in Article III courts involving constitutionally appointed judges – witness Chief Judge John Roberts recusing himself from any and all matters dealing with Microsoft, for example.

At the PTAB, instead of a transparent process, without any explanation as to why he was reassigned or decided he needed to recuse himself, APJ Arpin just disappears from the case without explanation. The one judge who voted in favor of the patent owner relating to an institution decision is mysteriously and without explanation removed. That looks bad and feels bad because it is bad.

If the PTAB is going to operate without even a modicum of transparency there is no reason why spoliation of evidence presumptions should not apply to their unexplained actions. The most egregious and nefarious inference should be drawn given the history of this overreaching tribunal. After all, even the Supreme Court has noticed what they have referred to as the “shenanigans” of the Board.

The PTAB has lost the benefit of the doubt. It is well past time for change, and change must start with transparency.

__________________

[1] The USPTO does not treat the Freedom of Information Act as a mandatory requirement. The law is simple and rather straight forward, with specific deadlines. I have had two requests pending since March, which have now been overdue since April. The last communication from the Office was received on May 7, 2018, asking me to be patient. That was over 10 weeks ago. One of the pieces of information sought relates to the names of Administrative Patent Judges, which one would thing ought to be relatively easy for the Office to provide.

 

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 25 Comments comments.

  1. Tesia Thomas August 22, 2018 10:42 am

    Yes! It’s sad you felt the need to write this in defense of your presumptions.
    When people are using public resources, presumptions of guilt are really just the public saying, INVESTIGATE YOURSELF to the government.
    You’re really just doing the medias job while they’re on vacation from investigative journalism.
    Other people are drawing the same conclusions. You’re listing evidence not just handing out presumptions.

  2. Jianqing Wu August 22, 2018 11:36 am

    By giving in anti-patent movements, the Patent Office, as political machinery, has completely degraded in every aspect including patent examination policies, employment policies, fees-charging policies, tasks division policies, and quality-controlling policies. It took many years for itself to become the current state. It would be impossible to fix such a broken system without many years. The agency is chaotic in many aspects.

    PTAB panel member assignment and decision-making process must be independent from interference by PTO leaders. It is a big institutional defect that panel members can be changed to achieve the result of invalidating patents. Politicians do not consider future; but for a patent system, “future” is everything. The large number of bias decisions will never disappear without being heard and discussed, and will be perpetual reminder that Patent Office could completely make the constitutional promise an empty promise and that inventor inventions and investment could disappear like evaporating water.

    Transparency is an important thing, but PTAB independence in panel assignment and decision making process is a must.

  3. Anon August 22, 2018 11:56 am

    The long string of shadow work precludes any consideration of anything but direct and purposeful obfuscation.

    For example, the telling response to the sunlight breaking in on the SAWS program was but canceling one of a publicly admitted MANY such programs.

    Yes – the USPTO admitted that SAWS was but one of many such items. In essence, any “apology” was an “apology for getting caught,” and NOT an “apology” for having such shadow programs.

    While the “buck stops at the top,” I am more than convinced that much (if not practically all) of the muckery behind the scenes is generated by the so-called “Lifers” who have bureaucratically inserted themselves “into the machine,” and that continue to exist regardless of who is at the top.

  4. Anonymous August 22, 2018 12:01 pm

    This appears horrifying. Is there any hope for a change in the next year? Is there any hope for change at all? What’s the timeframe?

  5. B August 22, 2018 3:28 pm

    Good article, Gene!

    The PTAB skirts on the edge of the Fifth Amendment all the time, and stacking the judges violates substantive due process. That said, I haven’t researched Giannetti’s record and don’t remember too much about him.

  6. Jon Wayne August 22, 2018 3:46 pm

    Can some one give some light on how is it that the new USPTO director Andrei Iancu who seems to be pro patent is letting this still happen. What are his powers? is he not bale to remove the bad judges from the PTAB?

  7. Pro Se August 22, 2018 4:13 pm

    When an IPR is filed, the petitioner “tattle tell” all of the litigations the patent has sued in, and the PTAB makes a game time decision, is it a “troublesome troll” patent, or one from a so-called “accepted” holder? Big law associates and partners from 2012 now task themselves with “doing good from the inside”… T-time at 12pm every Wednesday at the Alexandria Golf Club, there you’ll find Big Law and their PTAB alumni.. a mixer of sorts.. the U.S. patent system now has its own checks and balances.. who cares about being 12th on the worlds IP index? Congressional funding is healthier than ever, the system is where it is because Inventor groups don’t donate.

  8. Anon August 22, 2018 4:19 pm

    and stacking the judges violates substantive due process

    You are aware then B, that this stacking of judges is not in fact new (and certainly predates the AIA). For example, the seminal case of “In re Allapat also concerned (in part), the stacking of the bench.

  9. JPM August 23, 2018 8:27 am

    What a scam the PTAB is. It needs to be shut down. There is no way it can be saved or reformed without firing everything and putting new people in there.

  10. Pro Se August 23, 2018 11:31 am

    @6 – Because it’s set up for firms to “do good from the inside” – look at this press release from a BigLaw firm, demonstrating how a “partner” has moved to take position…

    Guess which firm you would want to hire should a “pesky” patent holder look to enforce?

    https://www.duanemorris.com/pressreleases/duane_morris_partner_michael_mcmanus_to_become_administrative_patent_judge_for_uspto_0416.html

  11. B August 23, 2018 1:35 pm

    @ Anon “You are aware then B, that this stacking of judges is not in fact new (and certainly predates the AIA). For example, the seminal case of “In re Allapat also concerned (in part), the stacking of the bench.”

    Thank you, anon, but I do remember something about a long, disturbing and vapid history of the PTO stacking the bench. That was my point when I stated “[t]he PTAB skirts on the edge of the Fifth Amendment all the time.”

    The PTAB should do what the CAFC does – use a piece of software to generate panels for a group of 3-5 random cases.

  12. JPM August 23, 2018 4:23 pm

    @10 Pro Se,

    I am not sure how the PTAB works internally, but is it possible for Iancu to do mass layoffs and put new “judges” in place?

  13. Don Quixote August 23, 2018 5:32 pm

    Thank you, Anthony Quinn; a very appropriate image as well.

    Anon @ 3 is worth repeating:

    “The long string of shadow work precludes any consideration of anything but direct and purposeful obfuscation.”

    Well-funded interests are destroying over two centuries of constructive jurisprudence on the basis of contrived punditry.

  14. Anon August 24, 2018 11:01 am

    Without a discussion of the merits, isn’t it equally possible that Arpin was removed for cause, such as bias in favor of the patent owner? Either way, we need to know what the situation is – if Arpin was removed for cause, what other cases did he do something improper on? Did he exhibit bias against other parties?

  15. Anon August 24, 2018 12:25 pm

    Sister Anon @ 14,

    What is “equally possible” is NOT the point here (whatsoever).

    The point is that the Office has created its own negative impression based on its “preference” for operating in the shadows.

    (your remaining point IS a good point – if for cause, what was the cause, and was the cause possibly present in other cases)

  16. Brian August 24, 2018 9:07 pm

    Bad patents that never should have been allowed need to be corrected. Isn’t the PTAB set up to help correct this situation of bad patents? Who can be against that? What other reasonable options are there? Any other suggestions (other than the obvious of giving examiners more time and resources in the front end)?

  17. Gene Quinn August 24, 2018 9:18 pm

    Brian @16-

    What other options are there? How about transparency and fairness!

    Please! To say the PTAB was set up to fundamentally engage in a systemic deprivation of due process at every turn is rather ridiculous.

    Congress created a PTAB, fine. But the PTAB doing whatever they want and engaging in adjudication by ambush, and the PTO picking winners and losers, and the PTAB openly violating the Administrative Procedures Act is too much.

    So tell me, who can be against fairness of process and a tribunal that operates within the rule of law like every other tribunal in America?

  18. Anon August 25, 2018 12:02 pm

    Bad patents that never should have been allowed need to be corrected.

    Leaning on a “truism” cannot justify any means to the end so desired.

    That path leads all too quickly to the perversion of law.

    The “situation of bad patents,” much like the mirror in criminal law of the “situation of bad people” has been reflected in the larger jurisprudence of “innocent until proven guilty.”

    On the patent side of that mirror, Congress has dictated not only the existence of a presumption (of innocence, as it were for the patent holder), but a level of that presumption.

    This is part and parcel of the bundle of legal rights in the property known as a granted patent. The Act of granting confers this legal bundle of rights in the transformation of the inchoate rights of the inventor into full legal rights.

    This very much is a property law transformation, and as such, other protections (outside of patent law) that inure to property inure at the time of grant.

    Some have pushed for the notion that Congress added a caveat to the bundle of property rights. Some have pushed (and in Oil States, wrongly succeeded) for changing the fundamental nature of the inchoate right transformation into a Franchisor/Franchisee situation.

    These other notions though attempt to disregard the fact that not even Congress – the rightful branch of the government entrusted to write patent law – may do so in disregard of other Constitutional protections of property.

    Once designated AS property, even Congress is constrained to the laws that it may write.

    Another analogy outside of criminal law may help inform:
    Voting rights.

    Note that voting rights – per se – are not granted in the Constitution.

    But once the sovereign establishes voting rights – that establishment brings about protections afforded by various portions of the Constitution. The sovereign then may not dispense with those other invoked protections at its leisure, as if voting rights were merely some “privilege” dispensed by the sovereign at the sovereign’s unrestrained pleasure.

    But those who advanced the notions that won (hopefully only temporarily) the day in Oil States advance that very same “at the sovereign’s sole discretion” viewpoint.

    Life, liberty, and property are a triad of concerns animating the requirement to not let the Ends justify the Means. That you identify AN Ends, and even believe fully that THAT Ends is a fair and good Ends, does not mean that “any” means may do. Our legal system (rightfully) demands more.

  19. Anon August 25, 2018 12:45 pm

    Oops:

    “may do so in disregard of other Constitutional protections of property.”

    Should read:

    “may NOt do so in disregard of other Constitutional protections of property.”

  20. Jon Wayne August 25, 2018 2:11 pm

    2nd try; Can some one give some light on how is it that the new USPTO director Andrei Iancu who seems to be pro patent is letting this still happen? What are Mr. Iancu’s powers? Is he not able to remove the bad judges from the PTAB?

    Can anyone answer this question?

  21. Don Quixote August 25, 2018 6:40 pm

    @16

    ” Isn’t the PTAB set up to help correct this situation of bad patents? Who can be against that? ”

    Perfect example of the contrived, shallow punditry that attempts to undermine any deeper analysis. . .

  22. anon August 27, 2018 1:51 pm

    If your a priori assumption is that all patents are bad patents, then circular logic and contrived, shallow punditry is all you need. Either that, or you are a Russian troll.

  23. Anon August 27, 2018 2:37 pm

    Sister “small” anon,

    Shallow punditry NEVER suffices.

    Please up your game – the monitors you choose have a much higher pedigree for you to reach.

  24. Don Quixote August 27, 2018 4:47 pm

    Jon Wayne @ 20
    ” Is he not able to remove the bad judges from the PTAB?”

    What on earth does the above question have to do with fixing a fundamental, systemic problem, which is the nominal subject matter of this thread?

    More hijacking of the discussion with false solutions that reinforce the problem – now, instead of flawed, opaque procedures, we have “bad” judges! Yes, why don’t you supplicate the Royal Executive to exercise his great, purely discretionary, paternal wisdom? Bring gifts.

  25. Fred King August 28, 2018 2:41 pm

    No one can touch Google or Apple, The New USPTO Director will do what Silicon Valley says. If they have to stack the court$ with Judge$ that will favor the infinger, so be it. The law works for the ones that have the deepest pockets. Thats nothing new, Apple makes $20 BILLION a quarter and has $260+ BILLION sitting in off show money just sitting there doing nothing. Its tooo bad for little patent inventors, its game over. BIG fish EATs little fish. THATs Life, no its not fair its NEVER been fair. Its all about alliances, im on Apple’s side. Apple is like “El Chapo” BUT Apple owns the American government, they own all the judges and the little politicians. COME ON YOU CAN NOT BE THAT FOOLISH TO THINK APPLE AND GOOGLE WILL LET ANYONE CHANGE THE LAWS. SORRY NOT GOING TO HAPPEN !!!