It Matters: A Former Administrative Patent Judge’s Take on Arthrex

By Richard Torczon
November 11, 2019

Arthrex purports to fix the appointments problem it identifies by severing the civil service protections of APJs as the least intrusive solution to the problem. This fix, however, is far more intrusive than the court recognized.”

https://depositphotos.com/41968259/stock-photo-it-matters-sign-message-illustration.htmlAs most of us know by now, in Arthrex, Inc. v. Smith & Nephew, Inc., entered on Halloween 2019, a panel of the Federal Circuit held that the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were improperly appointed, and remanded the case for a new decision by a properly appointed panel. Almost immediately after, the court entered two orders dismissing motions for remand because the issue had not been timely raised. See Customedia Technologies, LLC v. Dish Network Corp., Nos. 18-2239 & 19-1001 (Fed. Cir., Nov. 1, 2019) (the motions were inferred from letters to the court). The Federal Circuit remanded a case in which the issue had been timely raised. Uniloc 2017 LLC v. Facebook, Inc., No. 18-2251 (Fed. Cir., Oct. 31, 2019). Predictions about the effect on pending cases overlook that the vast majority of PTAB final decisions come in appeals from the patent examining corps. Any of the hundreds of applicants dissatisfied with a recent PTAB appeal decision could appeal to the Federal Circuit and then promptly move for remand to a different panel.

A reader could be forgiven for feeling a sense of déjà vu: in In re DBC, the Federal Circuit similarly found that APJs had been improperly appointed, but the issue was quickly resolved and now is remembered as a minor footnote in patent case law. In re DBC, 545 F.3d 1373 (Fed. Cir. 2008). Arthrex holds the potential to be far more significant. Indeed, Arthrex may prove more trick than treat.

USPTO Appointment Authority Recap

Under the Appointments clause of the Constitution, principal officers of the Executive branch must be nominated by the President and confirmed by the Senate, while “inferior officers” must be appointed by the head of a department, such as the Secretary of Commerce. DBC dealt with a problem created in the American Inventor Protection Act of 1999 (Pub. L. 106-113, 113 Stat. 1501 [Nov. 29, 1999]), which at one point had contemplated making the U.S. Patent and Trademark Office a government corporation rather than an agency and thus had moved appointment authority from the Secretary of Commerce to the Director of the USPTO. Although the legislative plan changed, the hasty passage of the act meant that some vestiges of the original plan were not corrected. Once the defect was identified, Congress passed a correction to restore appointment authority to the Secretary of Commerce (Pub. L. 110-313, 122 Stat. 2014 [Aug. 12, 2008] [making both APJs and Administrative Trademark Judges (ATJs) appointees of the Secretary of Commerce]).

The appointment issue in Arthrex has much older and more complex roots. Nearly a century ago, Congress sought to relieve the Director of the burden of having to decide every rehearing from PTAB decisions, so it authorized final decisions from panels of APJs (Act of March 2, 1927, ch. 273, § 3, 44 Stat. 1335. The names of the agency, the board, the agency head and the board members have changed over time. For simplicity, this article uses the current names in all cases). Any appointments problem was avoided two ways. First, APJs were then Presidential appointees and thus presumptively principal officers. Second, although the legislative change could have appeared to strip the Director of total control over the board decisions, Congress interpreted the statute as not diminishing the Director’s authority over the board [S. Rep. No. 1313, 69th Cong., 2d Sess. 4 (1927), cited in In re Alappat, 33 F.3d 1256, 1534 (Fed. Cir. 1994) (en banc) (plurality decision)]. Indeed, this lack of diminution, combined with the Director’s consistent exercise of authority over the board subsequently was a pivotal factor in the Federal Circuit’s Alappat decision upholding the Director’s power to “stack” board panels (33 F.3d at 1534). In this regard, Arthrex appears to be inconsistent with the en banc Alappat decision. Because an appeals court must go en banc to overturn one of its earlier decisions, Arthrex appears to be on shaky ground unless it is confirmed en banc or by the Supreme Court.

Half a century later, Congress enacted a series of reforms to depoliticize the civil service, including one reform that moved APJs from political appointees to civil servants (Pub. L. 93-601, 88 Stat. 1956 [Jan. 2, 1975]). However well-intended this reform might have been, it had the effect of demoting APJs from principal officers to inferior officers, thus setting the stage for the question raised in Arthrex: does the Director retain sufficient control over these inferior officers in making final decisions? The Arthrex panel asserts that the responsibilities of the political APJs were less than the legal responsibilities of current APJs but cites no basis for this assumption. Arthrex, slip op. 20 (“There can be no reasonable dispute that APJs who decide reexaminations, inter partes reviews, and post-grant reviews wield significantly more authority than their Examiner-in-Chief predecessors.”). Actually, current trials cover only a subset of issues that could be determined in patent interferences.  E.g., Norton v. Curtiss, 433 F.2d 779, 783 [167 USPQ 532] (CCPA 1970) (confirming that the Board of Patent Interferences must decide inequitable conduct as a question ancillary to priority).

Panel Stacking Provides Important Context

Panel stacking has been very controversial in recent years. By statute, the Director chooses the composition of PTAB panels, but cannot independently order a rehearing of a panel decision. In In re Alappat, 33 F.3d 1256, 1534 (Fed. Cir. 1994), decided a quarter century ago, the Federal Circuit sitting en banc expressly held that the Director’s ability to stack panels was the key to retaining policy control over PTAB decision, that this had been the consistent USPTO understanding, and indeed had been the original Congressional understanding when it created the current PTAB structure. In short, the Director’s unfettered ability to stack panels is precisely the power to control Board decisions. The Arthrex panel never discusses this controlling precedent even though it reaches the opposite conclusion.

While panel stacking may look ugly, it has the advantage of transparency. When a panel is stacked, it is apparent that some sort of supervisory control is being exercised. The irony for current critics of panel stacking is that the Arthrex solution—converting APJs into at-will employees—will remove the transparency that stacking provides while also eliminating barriers to Director manipulation. Without civil service protections, APJs become the Director’s pawns, with fewer protections than patent examiners. See What’s Next After Arthrex? Reactions Suggest Limited Immediate Effect, But Some Question Whether CAFC Fix Will Hold (comments of Stephen Kunin, expressing concern about lobbying against individual APJs) (comments of Josh Malone calling for the firing of at least 100 APJs) (comments of Paul Morinville worrying that PTAB practices will flip-flop with every change in Administration). To those who thought panel stacking was bad, Arthrex permits the same level of intervention without the check that transparency provides. It is very hard to imagine this result is consistent with Congressional intent or the public interest.

Arthrex Picked the Wrong Fix

Arthrex purports to fix the appointments problem it identifies by severing the civil service protections of APJs as the least intrusive solution to the problem. This fix, however, is far more intrusive than the court recognized. As an initial matter, the decision does not make clear what is being severed. The court held “that 35 U.S.C. § 3(c)’s provision that USPTO officers and employees are subject to Title 5 cannot constitutionally be applied to Board members with respect to that Title’s removal restrictions, and thus must be severed to that extent.” But this solution does not sever anything; instead it adds a gloss on how section 3(c) is to be interpreted (as not applying to APJs). Yet the decision rejects the same sort of gloss when it is suggested for a different section: “We will not construe 5 U.S.C. § 7513 one way for APJs and a different way for everyone else to which it applies.”

This fix also has a broader scope than Arthrex recognizes. APJs are not the only members of the PTAB: the Director, the Deputy Director, the Commissioner of Patents, and the Commissioner of Trademarks are also members of the Board. Only the Director is a Presidential appointee. The others, like APJs, are appointed by the Secretary of Commerce. Because the Secretary appoints them, it is not clear how they would be at-will employees of the Director rather than the Secretary. Compare Arthrex, slip op. 15 (explaining how the power to remove is presumed to be coincident with the power to appoint) with 35 U.S.C. 3(b)(3)(A) (making all other officers and employees Director appointees). The same point could also be made about the APJs and ATJs, who are also appointed by the Secretary. 35 U.S.C. 6(a).

Indeed, the Commissioners have express statutory removal provisions, making it unlikely “that Congress would have created such a system” in which the Commissioners are at-will employees of the Director. It is also worth noting that the reasoning of Arthrex creates the exact same set of problems for the Trademark Trial and Appeal Board. Arthrex effectively leaves all USPTO officials identified by statute (except the Director) in a dubious status.

Curiously, Arthrex rejects a simpler severance despite agreeing that it would cure the putative Appointments defect. The Department of Justice suggested removing the requirement that the PTAB work in panels of three members . This would have been the simplest solution because, even without the statute, PTAB rules require panels of at least three (37 CFR §§41.2 and 42.2). The Director could simply amend the rules to permit stepping in whenever necessary to exercise policy control with a direct-to-final rule making in a very short amount of time. This fix would have been much simpler to implement, with fewer adverse consequences.

The court rejected eliminating three-member panels as “a significant diminution in the procedural protections afforded to patent owners” and “a radical statutory change to the process long required by Congress in all types of Board proceedings” As noted above, however, eliminating a statutory requirement for three-member panels need not result in a change in ordinary practice. By contrast, the lack of transparency with the court’s approach will have a far more significant effect on procedural protections for the parties. Moreover, nothing about a three-member panel ensures that due process will be ensured or that important issues will not be overlooked. E.g., Gerritsen v. Shirai, 979 F.2d 1524, 1532 (Fed. Cir. 1992) (Board panel abused its discretion); Arthrex, passim (missing the relevance of Alappat).

Indeed, for interlocutory matters, greater use of single-APJ decision making could be a positive good if it allows quicker scheduling of calls with the Board and quicker issuance of interlocutory orders. After a recent call with a single APJ in an interference, for example, a colleague of mine with PTAB trial experience but no previous interference experience remarked on how much more efficient interferences are. In 2012, no one would have imagined such a favorable comparison.

A Dubious Legacy

Arthrex has already generated considerable turmoil. Given its apparent inconsistency with Alappat, there might be even more turmoil to come. The further loss in PTAB transparency may well be the decision’s most enduring legacy.

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Copyright: alexmillos 

The Author

Richard Torczon

Richard Torczon is Of Counsel in the Washington, D.C., office of Wilson Sonsini Goodrich & Rosati, where he is a member of the patent litigation practice. Prior to joining the firm, Richard was an Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB), where, since 1996, he worked on patent interferences and appeals. During his tenure at the PTAB, he wrote more than a thousand opinions and orders on patent appeals, petitions, motions, and briefs. Richard was an early member of the interference trial section and authored many of the PTAB's rules. He has experience in the full spectrum of technologies reviewed by the PTAB, including computer-based inventions, biotechnology, pharmaceuticals, chemicals and medical devices, and plant and design patents.

For more information or to contact Richard, please visit his Firm Profile Page.

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 20 Comments comments. Join the discussion.

  1. Anon November 11, 2019 6:53 pm

    Thank you for the meaty discourse (but I have to wonder if the reliance on Alappat is itself justified. Perhaps that case was problematic (for the stacking question)…

  2. Paul Morinville November 11, 2019 8:10 pm

    I don’t understand where you get “Nearly a century ago, Congress sought to relieve the Director of the burden of having to decide every rehearing from PTAB decisions, so it authorized final decisions from panels of APJs (Act of March 2, 1927, ch. 273, § 3, 44 Stat. 1335.”

    There were no administrative law judges in the PTO back then. Perhaps there were and I am unaware of them, but I thought that they were first created in 1999.

  3. BP November 12, 2019 9:15 am

    Great review, Arthrex certainly raises some questions.

    Is 37 CFR 1.198 in question, on its face or in its implementation? How can a single individual (a Senior Executive Services (SES), Technology Center Director, who is an employee or “Officer”?) reopen prosecution after a Final Written Decision (FWD) of a panel of APJs that have been deemed “principal Officers” or, alternatively, “inferior Officers”?

    The proper course of action under 37 CFR 1.198 may be for the Examiner/TC Director to (i) Request Rehearing by the panel of APJs or (ii) maybe Request Remand by the panel of APJs (e.g., 37 CFR 41.50(e)) where either type of Request can be determined by the panel of APJs on the basis of what is in 37 CFR 1.198 (i.e., “only for the consideration of matters not already adjudicated, sufficient cause being shown”) using appropriate evidentiary and legal standards. And, the decision on Request by the APJs may be a FWD (appealable 37 CFR 90.3, etc.) or possibly a non-FWD (37 CFR 41.50(e)). Additionally, there should be reimbursement of the appellant’s Notice of Appeal and Forwarding Fees where the Examiner/TC Director successful argues for reopening.

    Again, how can a TC Director (an employee or “Officer”?) be judge/jury as to “only for the consideration of matters not already adjudicated, sufficient cause being shown” in reopening prosecution after a FWD of a panel of APJs that is a “reversal in whole”? And further, does the Director (i) really have such authority and, if so, (ii) is that authority properly delegatable to a TC Director?

    The CFR has comments, several of which go to the heart of 37 CFR 1.198, which is viewed by many to be unfair/unjust. In Petition Decisions, the USPTO says 37 CFR 1.198 is appealable as it is substantive at its core (rather than procedural). Petition Decisions usually cite In re Gould and In re Fischer. However, those are about “remand” and do not arguably support a TC Director (employee or Officer?) single-handedly making “unwritten” determinations that impact an appellant’s paid-for FWD of a panel of APJs.

    The current opaque implementation of 37 CFR 1.198 (i.e., lack of an accurate and reasoned transparent written record), at the hand of a single TC Director, smells of SAWS.

    How does one square Arthrex with the USPTO’s current practice under 37 CFR 1.198?

  4. Pro Say November 12, 2019 11:14 am

    At this point, the only thing certain about Arthrex . . . is its uncertainty.

  5. Eileen McDermott November 12, 2019 1:23 pm

    Paul, I believe the answer is in the parenthetical immediately following that statement: “(Act of March 2, 1927, ch. 273, § 3, 44 Stat. 1335. The names of the agency, the board, the agency head and the board members have changed over time. For simplicity, this article uses the current names in all cases).”

  6. Ron Katznelson November 12, 2019 8:04 pm

    BP @3:
    You may be misreading Rule 198. The reference to “written authority of the Director” in the rule is to the PTO Director – not to a TC Director. While TC Directors may be signing authorizations under Rule 198, they do so under the delegated authority of the PTO Director. (See MPEP 1002.02(c)).

    That said, I would pay attention to a more frequent problem: violations of the requirement in Rule 198 prohibiting reopening prosecution after Board decision (even under authorization of the Director) for the consideration of matters already adjudicated.

  7. Anon November 12, 2019 8:39 pm

    Ron,

    As I understand it, matters already adjudicated does not include any new art found in a new search run before authorization to re-open, yet after the appeal decision.

    Yes, I personally know of this having happened. The examiner ran a new search prior to being authorized (by the TC Director), and then had the TC Director authorize re-opening prosecution based on that new art found in the post-appeal search.

    My colleague considered screaming bloody murder, but the horse was already out of the barn when he received the re-opened rejection. The fact of the searches being time-stamped, and quite evidently “prosecuted” prior to proper authorization did not sway the Director (as my colleague relayed to me from his phone conversation). There was talk of pushing this higher, but at the end of the day, the new found art was pertinent and was now on the public record (and iirc, this would have been up to a petition to correct — and you may be aware of what a black hole petition practice is), so my colleague had to engage in more prosecution.

    He did end up successfully obtaining obtaining the same claims.

  8. BP November 12, 2019 11:44 pm

    @6, thanks Ron (and @7 anon too). Yes, the authority is to be with the Director in 37 CFR 1.198. But, read Arthrex. MPEP 1002.02(c) is a house of cards, the USPTO has kluged together its current practice under 37 CFR 1.198. Think about what the Fed Cir said in Arthrex – now apply to TC Directors as SESs (SES-1). Are they, in fact, “Officers” too? Anon is correct as to the abuses, these need to be reviewed by a higher authority, other than a single TC Director – authority being delegated is questionable, especially if “the Director” does not have it.

  9. BP November 13, 2019 10:42 am

    To be clear, from Arthrex:
    There is no provision or procedure providing the Director the power to single-handedly review, nullify or reverse a final written decision issued by a panel of APJs. If parties are dissatisfied with the Board decision, they may request rehearing by the Board or may appeal to this court. 35 U.S.C. §§ 6(c), 141(c), 319. “Only the Patent Trial and Appeal
    Board may grant rehearings,” upon a party’s request. Id. § 6(c). Again, the decision to rehear would be made by a panel of at least three members of the Board. And the rehearing itself would be conducted by a panel of at least three members of the Board.

    Case law is settled. APJs’ status as “Officers” does not change with function. Thus, it makes NO difference whether inter partes or ex parte. There is ONLY ONE type of FWD, not two. Thus what is said in Arthrex applies to ex parte FWDs.

    For constitutionality, 37 CFR 1.198 should involve the Board. Per Arthrex, the Director does not have authority to essentially “nullifying” a FWD. The Director cannot delegate what he does not have. If a TC Director has the power to essentially nullify a FWD, then that TC Director is an “Officer” because that is significant power (i.e., greater than the Board) as the TC Director can prevent an applicant from ever leaving the USPTO, each and every FWD can be stripped away by a TC Director. And, if a TC Director is an “Officer”, that TC Director has been unconstitutionally “appointed”. Note that SES is a common “Officer” level.

    Some of these points may “seem” absurd – but that’s because the way the USPTO implements 37 CFR 1.198 (ala SAWS) is absurd. And, we know that AIA is in many ways absurd, as it was rushed/hasty legislation.

    37 CFR 1.198 on its face or in its current implementation is a house of cards. Read In re Gould and In re Fischer, they clearly deal with “remand”. The USPTO should stop citing those cases to support current implementation of 37 CFR 1.198.

    It is well settled law that in any appeal to an agency (municipal, state or federal) appeal board, a victory does not give the agency authority to screw you again. The agency must request rehearing/remand by the appeal board or appeal to a higher authority. That’s consistent with Arthrex.

    The ability of a single TC Director to single-handedly trap an applicant in an infinite loop is unconstitutional. Again, (i) request for remand, (ii) request for rehearing or (iii) appeal are the proper options.

  10. Anon November 13, 2019 1:01 pm

    Thanks BP – your point is much more clear now.

  11. Ron Katznelson November 13, 2019 3:03 pm

    BP, you say @8: “authority being delegated is questionable, especially if ‘the Director’ does not have it;” @9: “the Director does not have authority to essentially ‘nullifying’ a FWD.”

    As I noted above, the PTO Director is not authorized under Rule 198 to reopen prosecution for the consideration of matters already adjudicated — matters on which the Board rendered a Final Written Decision (FWD). The rule implies such Director authority, however, “only for the consideration of matters not already adjudicated..” It seems to me that there is no inconsistency because your explanation @9 focuses only on matters already adjudicated, i.e., “rehearings” that can only address matters that were “heard” before, and “review, nullify or reverse a final written decision,” that can only address matters that were finally “decided” before.

    Rule 198 is akin to an issue preclusion rule, administratively applied within the agency. Do you have any pointers to a legal provision, or a court decision interpreting such provision, that would support a conclusion that the PTO Director does not have the authority to authorize reopening prosecution “for the consideration of matters not already adjudicated.“? How do any such sources comport with the Federal Circuit’s finding of sweeping powers vested with the Director to withdraw from issuance patents that have been previously determined patentable and issue fee paid? See BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 1273 (Fed. Cir. 2002) (The PTO is not required to make final determination of unpatentability before withdrawing an application from issue pursuant to 37 CFR 1.313(b)(3), which permits the Office to withdraw an application after payment of the issue fee on ground of “unpatentability of one or more claims.”). If the Director has the authority under BlackLight to withdraw from issuance pursuant to Rule 313(b)(3) (ultimate authority to reopen prosecution) for want of patentability, the outcome would be the same whether or not such authority exists after a Board decision on appeal.

  12. BP November 13, 2019 6:06 pm

    @11 Ron, thank you, 37 CFR 1.198 is clear: “consideration of matters not already adjudicated, sufficient cause being shown”. So, your points are clear too. But there is a difference between BlackLight Power and FWD by APJs, as the FWD has special status in our legal system that can’t be “trumped” by mere action of a TC Director under purported delegated authority without some amount of transparency/written record and review. The doctrine of exhaustion of administrative remedies is eviscerated by the USPTO’s actual implementation of 37 CFR 1.198 with respect to the FWD and the panel of APJs, who stand better to assess “not already adjudicated” and “sufficient cause”. I have lobbied in several states for the Model Procurement Code’s Appeal Body, the doctrine of exhaustion of administrative remedies is powerful. At the USPTO, what do you do? Petition to those in the USPTO that think the way 37 CFR 1.198 is implemented is OK? And have them tell you IT’S AN APPEALABLE MATTER, NOT PETITIONABLE? Then go to court on the Petition Decision that says 37 CFR 1.198 is not petitionable? And, if the court agrees, then you are screwed – in an infinite loop. Or do you go to court under the APA? What’s the answer? Hopefully you see there is something seriously wrong with how 37 CFR 1.198 is actually implemented. Your points are good, but IMHO there’s a larger context that has not been taken into account, one that is beyond issue preclusion and more towards exhaustion of administrative remedies. What does the flowchart look like? The standards of “not already adjudicated” and “sufficient cause” need to be set in stone, otherwise we have abuse. Those should be set/reviewed by the panel of APJs that issued the FWD. Did I mention a time limit as well? Hmm, or refund of fees? Hmm. All I see is abuse, pure abuse. Because there is no meaningful standards/review.

  13. BP November 14, 2019 10:18 am

    From a little research: Petitions decisions saying 37 CFR 1.198 is substantive hence appealable and PTAB decisions saying 37 CFR 1.198 is procedural hence petitionable. That is called abuse.

  14. Night Writer November 14, 2019 12:32 pm

    @9-13

    Great discussion! Thanks!

  15. Anon November 14, 2019 12:44 pm

    BP @ 13,

    Any citations? (Not doubting you, but would love to see the details)

  16. Ron Katznelson November 14, 2019 12:58 pm

    BP @12, 13: Your argument is compelling and exposes a real problem. It appears, however, that the problem is not necessarily with the existence of the Director’s authority to act pursuant to Rule 198, but rather the abuse of this rule by his delegates and the sweeping discretion delegated to them with no checks and balances. Indeed, Gene has shown in an earlier post on this blog that the PTO often makes a mockery of Rule 198, essentially rendering the appeal process an exercise in futility. Gene’s examples of abusive reopening prosecution after Board FWD are illuminating: none appear to make a prima facie case of “sufficient cause being shown” for reopening prosecution — they simply enter new grounds of rejection. In some cases the examiner did not even declare prosecution as being reopened, but merely entered a rejection without even mentioning Rule 198, let alone “sufficient cause being shown.” See Application No. 11/754,676 Board Decision – September 16, 2015 and Office Action reopening prosecution – February 8, 2016.

    I believe there is an administrative solution applicants can use for dealing with such abuses. Those interested should reach me directly offline to discuss. I would also be interested in seeing the specific conflicting Catch 22 “petitionable” v. “appealable” decisions you describe @13.

  17. Ron Katznelson November 14, 2019 1:06 pm

    The links did not come out above. Gene’s article is at https://www.ipwatchdog.com/2016/07/17/impotence-patent-trial-and-appeal-board/id=70952/

  18. BP November 14, 2019 2:14 pm

    @15: Here are some cites, you can see the conflict and how the Board sometimes does things and sometimes not, while Hirshfeld is clear, the substance is appealable, not petitionable. Again, thanks to all for the great comments.

    37 CFR 1.198 may itself be OK (or not?), but the way the USPTO acts under the guise of 37 CFR 1.198 is highly problematic under admin law and what is a FWD. Again, as the issue is substantive, the examiner/director should request remand by the PTAB where the PTAB determines, on the record, whether 1.198 is met or not. Where met, the PTAB may remand as a non-final written decision and where not met, the PTAB can issue a FWD. Further, for additional thought, see ITC Cisco and Arista “ITC Not Treating PTAB Decisions Like Other Agency Rulings”. A FWD is a FWD, period.

    See In re Svatovic, 11/397,977, Aug 13, 2012, signed by Hirshfeld, stating explicitly that “the form of the rejection and its supportive reasoning, or both, are facially insufficient to demonstrate sufficient cause for reopening of prosecution” “go more to the merits . . . as opposed to the procedural question of reopening . . . they will not be further addressed on petition.” Also: “It is well settled that the Director will not, on petition, usurp the functions or impinge upon the jurisdiction of the BPAI”.

    Now compare: Ex parte Belokin (11/544,675), March 1, 2016. Appellant asserted that the Office failed to show or allege “sufficient cause” for reopening prosecution. The PTAB held: “The Technology Center Director’s decision to reopen prosecution after the Second Board Decision is reviewable by petition under 37 CFR 1.181, and is not within the jurisdiction of the Board”.

    Then also: Ex parte Carley (07/333,362): “Rather than remand the application to the examiner to follow proper procedure, in the interest of administrative economy, we have proceeded to decide the issues presented in this appeal”.

    And, Ex parte Mitchell (09/238,804): “We remand so that the examiner need not seek permission of the director to reopen prosecution under 37 CFR 1.198”.

  19. BP November 14, 2019 3:48 pm

    @17, thanks Ron, I sent an email to a road runner, if that’s the best way to connect?

  20. Randy Landreneau November 18, 2019 10:59 am

    As long as the “legal” process to invalidate valuable, issued patents is controlled by the Director of the USPTO, inventors and American innovation will be in trouble. While the current Director appears fair, the last two were perfect examples of the bias of the system. Think USPTO Director Michelle Lee, former Head of Patent Strategy at Google, had anything to do with the patent killing machine the PTAB became? Before her, it was David Kappos, former Head of Patents at IBM and involved in pushing for the changes in the America Invents Act before he became Director.

    The norm is a Director who is from the camp that is against disruptive innovation, period. What we have now is an anomaly. You can bet money that a future Director will be from the wrong camp and will put his or her thumb on the scale at the PTAB, and Arthrex vastly increases the weight of that thumb. The only chance for justice for an inventor is a real court with a jury.

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