Why We Need USPTO Examiners to Attend Inter Partes Reviews

“Currently, 84% of the most valuable patents are invalidated at the PTAB. This implies that either the examiner made a mistake or the APJs are making mistakes. Perhaps they should talk more?”

Scales of Justice uneven Whoever wrote the America Invents Act (AIA) left out the U.S. Patent and Trademark Office (USPTO) examiners.

The examiner on any given patent at issue in an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) agreed with the patent holder that the patent claims, as amended, were valid. Examiners are specialists, working under Supervisory Patent Examiners (SPEs), who are even more experienced, though in very narrow fields. As such, they knew the state of the art at the time a patent was being prosecuted.

Examiners-In-Chief

Prior to the America Invents Act of 2011, the PTAB was called the Board of Patent Appeals and Interferences (BPAI). Examiners-In-Chief (EICs) constituted each BPAI panel and “the majority of the panel judges were former Examiners” [Crouch, 2008].

Historically, “EICs were appointed by the President with advice and consent of the Senate, and were political equals to the Commissioner” or more recently attained their position by competition (e.g. technical competence) [Koller, 1994].

The Typical APJ Has Little or No Technical Experience

Unfortunately, the public knows little about APJs. This is the case because they were not selected in a constitutional manner. As such, their backgrounds were not vetted by the Senate.

From limited publicly available information, it seems that APJs are better educated and experienced from a legal perspective than are USPTO examiners, although it seems that a typical APJ’s legal experience is less than what one would expect for a district court judge.

Unfortunately, a typical APJ’s technical experience comes only from the classroom. From limited publicly available information [a study of 163 APJs], “60% of APJs have ZERO technical experience and 76% have less than 3 years of technical experience” (USInventor.org, “PTAB Judge Experience (Preliminary Report)”.

The typical APJ has never gained experience outside the legal profession; therefore, they do not have the background required of an examiner or a Person of Ordinary Skill in the Art (POSITA).

They are, at best, stretching to recall a classroom lecture. If you took a couple of years of foreign language in High School—and never used it—ask yourself how much of that language you recall today. To understand how much you have forgotten, just try to have a conversation with a person who speaks that language. This is the situation a typical APJ finds themselves in. They are confronted with an essentially technical task—judging patent validity—for which they are unequipped.

Not Always Obvious

Unfortunately, Congress chose to apply the AIA retroactively to all existing patents.

Much can change in technical fields in days or months, let alone over a period of 20 years. What may be obvious today was not obvious 20 years ago.

Often, the critical question a PTAB panel decides is if a POSITA would find an invention obvious—at the time it was filed. To answer this question correctly, an examiner must both understand the invention in detail and understand the current state of the art. APJs, years after the fact, often understand neither the technology nor what the state of the art was at the time of invention—even if their classroom lecture covered the material.

The examiner, SPE, or some representative from the specific “tech center” (Group Art Unit), should participate in each and every IPR.

Sharing Knowledge

This is true because examiners need to be accountable for their grant. Bad examiners need to be removed from the position. An inventor needs to rely on that granted patent to obtain investment capital and build a business. Examiners are also on trial. Participation in IPRs would allow them to defend their decision to grant.

Examiner participation in IPRs would offer opportunity for cross-pollination between PTAB APJs and the Examiner Corps. Examiners could get feedback from the IPR as to what mistakes they may have made. Currently, 84% of the most valuable patents are invalidated at the PTAB.

This implies that either the examiner made a mistake or the APJs are making mistakes. Perhaps they should talk more?

On the other hand, APJs can benefit from the examiner’s specialized expertise and have access to their original reasoning. APJs could finally get on-the-job technical experience. This would also offer an opportunity for identification and elimination of incompetent or biased APJs.

What we have now is APJs deciding obviousness without knowing the difference between the state of the art then and what’s merely hindsight now. Even the original examiner, years later, may have trouble separating hindsight from what was state of the art. Nevertheless, the relevant Group Art Unit is still in the best position to assess obviousness during IPR.

The bottom line is that the APJs should defer to the relevant Group Art Unit for technical (not legal) decisions of obviousness.

Restoring Balance

In my experience, an APJ’s legal training often only serves to obscure the truth. Legal experience is primarily beneficial in allowing a clever attorney to sculpt and control the “truth”. The smarter the attorney, the better they can use rules of evidence to control the record. APJs are legally trained to ignore what they may or may not understand as the truth if it was not introduced in a timely manner or using correct procedure. As a result, much of what is true often never makes it into the record.

In general, this gives petitioners a tremendous advantage. Petitioners are often the accused infringers. They are typically large, established businesses. Petitioners can afford the best legal representation, and they get it. The smartest (highest paid) attorneys are typically on the petitioner’s side and sculpt the “truth” (the record). This is done using rules of evidence and often false technical (attorney) arguments, that inexperienced APJs find persuasive. APJs know the law well enough, but not the underlying technology, or what the state of the art was when a patent application was filed.

A representative from the Examiner Corps could help APJs decide between technical testimony made by the petitioner’s expert witness and the patent holder’s expert witness. Currently, the petitioner often buys the expert witness with the best credentials, regardless of honesty.

The current system is heavily tilted against the patent holder, not due to the quality of the patent on trial, but due to the amount of resources a petitioner is able to marshal versus how much a patent holder can afford. This is not good policy. This does not promote the general welfare.

This is not what our founders intended when they wrote Article 1, Section 8, Clause 8 of the Constitution. Adding the examiner to the IPR process might make the system a little better.

Paul Hayes is a retired software engineer. He has worked for Rockwell Collins, ITT’s Aerospace Communications Division, and currently is self-employed as sole owner and Managing Member of Hudson Bay Wireless LLC. [...see more]

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.

Join the Discussion

39 comments so far.

Paul Hayes
May 21, 2020 09:52 pm
Anonymous Examiner,
re: “examiners are supposed to know to effectively dumb down or write the examiner’s response to appeals while trying not to explain the beginning of time of the technology because we know ptab have limited technology experience. ”

Excellent feedback from an Examiner!….WOW.

How about the 20 year old patent….how was that Examiner supposed to know that 20 years later there would be an APJ they needed to dumb down their language for. Ridiculous setup at PTAB. Bring the Examiner Corps back and/or eliminate the PTAB….or suffer the consequences.
Anon
May 15, 2020 02:20 pm
Mr. Malone, you too (especially you, as noted by others here) are suffering from an improper view of the legal discussions.

These are neither patronizing nor in any manner multiplicative of abuse.

Thou protests too much in your unwillingness to actually acknowledge the fact the fact that you have not been trained in the law.

It’s as if I were to walk up to a brain surgeon, accuse him of grift, tell him I read something on the Internet, and then I claim to be abused when the doctor sets me straight.

You are fed up with MY nonsense?

Maybe you should pay actual attention to MY nonsense. I dare say that you will not find a stronger pro patent, pro STRONG patent advocate than I.

Pull your head out of your arse. Stop being a YOU problem. You launch a blanket attack against all attorneys in such a haphazard and reckless manner, and then want to cry “how rude”…?

I can be far more rude — and would be entirely justified in being so. After all, us “attorney types” ALSO fight for your (and our) First Amendment rights.
Josh Malone
May 15, 2020 12:52 pm
Anon, that was rude. I was the one that said he was being shamed. He merely acknowledged it in passing.

Your patronizing comment multiplies the abuse. You suggest that the silly inventor doesn’t know what he is talking about and his perspective is invalid.

We are fed up with your nonsense. You can go ahead and hang out down the rabbit hole with your friends the Mad Hatter and Cheshire Cat.
Anon
May 15, 2020 10:30 am
Mr. Hayes @ 34,

To your comment of “I often feel legally shamed and talked down to.” from reading the interactions here, I would suggest that this feeling is a choice that you are making, rather than being objective about the advice that you may have been receiving.

As Mr. Quinn has phrased in the past on other (but similar) matters, this is a “You” problem.
Paul Hayes
May 14, 2020 10:10 pm
AAA JJ (@26),

Better interpretation of data here:

https://www.usinventor.org/2020/05/05/ptab-statistics/

and here:

https://www.usinventor.org/2019/12/20/assessing-ptab-invalidity-rates/
Paul Hayes
May 14, 2020 10:04 pm
Josh Malone (@23),

I often feel legally shamed and talked down to. But that I can live with. I understand it’s mostly ‘attorney argument’ and have come to understand what that’s worth.

More difficult is the invalidation of good claims under such a contrived process, 16 years after the fact.
Paul Hayes
May 14, 2020 09:53 pm
CP in DC (@ 27),

re: ” ‘In fact, an APJ with a career eye of going to work for a petitioner, following their stint as an APJ, can not be neutral either.’

Wrong again, former APJs work for law firms where they stand to make far more than any petitioner can pay. ”

Sorry. I do understand that former APJs mostly go to work for law firms, which in turn work for Infringers….perhaps with the exception of Clements working for Apple.

re: “Also, the PTO has 5 year windows to prohibit what you stated. If a revolving door policy is your concern address that, include longer prohibitions on representation, just don’t offer to stack the panel with advocates for your position.”

Do you have a reference on the 5 year window?..I believe I read it was only one or two years and if so, they did not need to recuse. I am aware of no APJs ever recusing due to having worked for the law firm representing the petitioner, but there are many such cases.
AAA JJ
May 14, 2020 02:46 pm
“…we all know the scope of interpretation can be purposely skewed/modified in favor for a person’s agenda (including the examiner’s written prosecution history) . Which is why I believe an examiner should be there to defend or prevent such.”

The BRI used by the examiner during prosecution is irrelevant in IPR proceedings. And very few file histories include explicit BRI’s from the examiner, as examiners are not required to provide explicit BRI’s during prosecution (see In re Jung).

There is zero need or reason to include examiners in IPR’s. Their participation would do nothing to address the bias of the APJ’s nor the proclivity of APJ’s to rely on hindsight. In fact, many examiners have the same, or worse, biases and proclivities.
AAA JJ
May 14, 2020 02:38 pm
“… how do you like being shamed for speaking out about injustice perpetrated on inventors?”

Who is shaming him?
CP in DC
May 14, 2020 02:38 pm
Malone @ 23

Your statement is dishonest.

Perhaps you should become familiar with the writings of Chief Judge Paul Michel. Indisputably an “expert” as you put it. However, I’m sure you will lower his status since he does not have a “technical degree.” He has an AB.

He has been an endless advocate for patent reform. He refused to take senior status so he could advocate before the public, congress, and anyone willing to hear him out about the necessary reforms for the patent system.

He has filed numerous amicus brief in support of reforming eligibility, predictability in outcomes, and the need for injunctions, among other topics.

Yet, continue to denigrate “experts” by including everyone, including those like judge Michel, who advocate for the same reforms you wish. Then you wonder why such words fall on deaf ears.

Like Judge Michel, but with far less talent, many of us want a better patent system (yes, I make my living as a patent attorney). So don’t go grouping everyone simply because they disagree with you on the manner you want to implement reform. Some of us paid to do this, want an equal non-biased leveled playing field as we work for both sides. Neutrality of an APJ panel is one such reform.
David Lewis
May 14, 2020 02:04 pm
I mostly agree with what you wrote. However, although I think that the interaction between the APJs and the Examiner and the Examiner’s input would be positive things, I don’t think the Examiner’s should feel like they are on trial during the process, as that would skew the process, and second guessing what the examiner should have done at the time of examination is based on the outcome of a IPR is likely unfair.

As to IPRs, that system is just unfair to the patent holder. Patentability has an element of subjectivity in it, and there is not end to the number of IPRs that can be brought against the same patent. If you ask the same question over and over again (is this patent valid?) eventually you will likely get the answer “no,” almost regardless of the merits of the patent, just as a matter of statistics and human nature.

If you really want to improve the quality of patents, give the examiners more time to examine the patents. Do more to encourage/ensure that the Examiners in fact read the patent application, do a thorough search, and write quality office actions that actually explain what they are thinking. Perhaps remove the quota. IPRs should be essentially unnecessary, and are a backwards way of ensuring patent quality, that favors the infringer and those with deep pockets.
David Lewis
May 14, 2020 01:55 pm
I mostly agree with what you wrote. However, although I think that the interaction between the APJs and the Examiner and the Examiner’s input would be positive things, I don’t think the Examiner’s should feel like they are on trial during the process, as that would skew the process, and second guessing what the examiner should have done at the time of examination is based on the outcome of a IPR is likely unfair.

As to IPRs, that system is just unfair to the patent holder. Patentability has an element of subjectivity in it, and there is not end to the number of IPRs that can be brought against the same patent. If you ask the same question over and over again (is this patent valid?) eventually you will likely get the answer “no,” almost regardless of the merits of the patent, just as a matter of statistics and human nature.
CP in DC
May 14, 2020 01:31 pm
Paul @ 22

“Perhaps there should not be a time limit on examiner accountability…” Should’ve, would’ve, could’ve. Hopeful wishing, but not the reality. As to the remainder, not the topic of discussion, just digression.

“Unfortunately there is no neutral arbiter in an IPR – as there is no jury.” No, juries are notoriously biased. That is why venue is so important. NPE sue in the Eastern District of Texas, Eli Lilly in Indianapolis, Monsanto in Saint Louis…. wonder why? Juries are biased.

“In fact, an APJ with a career eye of going to work for a petitioner, following their stint as an APJ, can not be neutral either.” Wrong again, former APJs work for law firms where they stand to make far more than any petitioner can pay. Also, the PTO has 5 year windows to prohibit what you stated. If a revolving door policy is your concern address that, include longer prohibitions on representation, just don’t offer to stack the panel with advocates for your position.

“So if you want decisions from neutral parties, you are effectively arguing for a jury of the patent holder’s peers, yes?” Nice try. Never said such thing. I advocated for NEUTRALITY, I believe I dedicated an entire paragraph to that. A jury of “patent holder’s” would be an advocate for…. wait for it.. .”patent holder’s.” I am advocating for neutrality and not for the introduction of biased parties.

“It was only after completing multiple drafts of the article that I discovered that the BPAI (predecessor of the PTAB) used almost exclusively former examiners as Board members.” The citation to Crouch (2008) is misleading, the article only made an unsubstantiated statement without citation. It did state something of interest: “(6) the current large batch of examiners without much experience requires a serious check on potential abuses of naiveté;” as a reason to review the BPAI’s duties. This hasn’t changed.

Another citation was the Koller article in 1994. Now, this article is not 10 or 20 years old, it is 26 years old. Examiners have changed in those times. The article addressed a memo by APJs arguing in favor of their judicial independence and the commissioner’s response. Current APJs have yet to demonstrate such independence, introduction of an examiner does not address this lack of independence. It merely tries to stack the parties of the panel. Examiners whether old or new have never been free of sin, just read the CCPA (predecessor to fed cir) case law. The CCPA cases are informative of the many errors in prosecution.

So “How did this work for so many years if it was a ‘misguided’ idea?” I didn’t, that’s why the CCPA has such informative case law. Also, in those “older days” the PTO paid examiners to go to law school, they don’t anymore. Examiners today lack a lot of knowledge of the older examiners, just call one up and ask why drawings or a terminal disclaimer were rejected. They will refer you to the appropriate outsourced entity, which you may not speak to, and tell you they can answer your question. Introducing anyone with cursory understanding of law into a legal proceedings (quasi or otherwise) is not the cure.
AAA JJ
May 14, 2020 01:25 pm
Interesting data in here:

https://www.unifiedpatents.com/insights/2020/5/13/ptab-procedural-denial-and-the-rise-of-314?utm_source=Unified+Patents+Newsletter&utm_campaign=ca8294e39b-EMAIL_CAMPAIGN_2019_10_02_08_16_COPY_01&utm_medium=email&utm_term=0_5140119467-ca8294e39b-113731837
Anonymous examiner
May 14, 2020 01:18 pm
Examiners are purposely left out of ipr and instructed that our written prosecution record speak for itself. We are paid and given time to examine new applications. While i personally would like to be there for ipr/ptab in general because we all know the scope of interpretation can be purposely skewed/modified in favor for a person’s agenda (including the examiner’s written prosecution history) . Which is why I believe an examiner should be there to defend or prevent such. However, this would complicate the examiner’s allocated time for examining and the uspto’s goals of lowering the backlog of newly filed applications (all the fees associated with such-the bread and butter of USPTO). Just knowing this I can see why were are not going to be sent to ipr. Further, to your point about knowledge in technology regarding judges: examiners are supposed to know to effectively dumb down or write the examiner’s response to appeals while trying not to explain the beginning of time of the technology because we know ptab have limited technology experience. Therefore, statements of obviousness should include plain meaning explanations and a clear written connections for those who do not necessarily understand the technology (while following ksr etc). The only way I can see this working if AUs provide ptab examiners whose sole job is to liaise/defend/support/interprete the examiner’s prosecution history and maybe provide this as a support to ptab rather than a defense. Such as by giving an opinion of the examiner’s strength of rejection/allowance which can be used/not used by ptab in their decision.
AAA JJ
May 14, 2020 12:48 pm
“No. Unfortunately. But I doubt it would have mattered.”

How do you know it wouldn’t have mattered? If your complaint is the art that was used to invalidate your claim(s) in the IPR was “identical to” or “substantially similar to” or “cumulative of” the prior art the examiner cited/applied during prosecution then that should have been an argument that was made. Sounds like you had poor representation.

“They need to be held accountable for their allowances being accurate in order for the system to work.”

They are “held accountable” for their work. But you can’t hold an examiner “accountable” 5, 10, 15 years later because some petitioner presented new prior art that invalidated the claims. That has nothing to do with the work the examiner did. The examiners are reviewed and rated at the time the work is done given the allotted time they have to conduct the examination. It’s hardly fair to judge their work years later against a petitioner that likely paid tens of thousands of dollars to scour the planet for prior art.

“How did this work for so many years if it was a ‘misguided’ idea?”

Because reviewing ex parte appeals is vastly different than conducting a “trial” between opposing partes.

I agree with you that there are serious problems with the PTAB and the entire postgrant process. I have serious doubts about the “neutrality” of the APJ corps, in both postgrant and ex parte roles. But none of those problems will be alleviated or solved by introducing examiners into the process.

In fairness to the examiners, they don’t show up to oral hearings because they don’t get nearly enough notification. But it’s not clear how many would actually show up if they were notified. There are no counts to be had to attending an oral hearing, but maybe some non-examining time.
Josh Malone
May 14, 2020 12:10 pm
Paul, how do you like being shamed for speaking out about injustice perpetrated on inventors? Just leave it to the “experts”. Go back to inventing. Pay the “experts” to file your next patent. Pay the “experts” to do a prior art search. Pay the “experts” to file a complaint for infringement. Pay the “experts” to try to defend your patent in a reexamination. Pay the “experts” to try to defend you patent in an IPR. Pay the “experts” to file an appeal after they lose. Pay the “experts” to file a hail mary petition for certiori.

Meanwhile, the “experts” are paying their bar associations to advocate for laws to undermine the integrity of the patent. The “experts” are filing petitions and amicus briefs in favor of undermining the integrity of the patent. The “experts” are sponsoring conferences and events to schmooze with corporate executives and judges. The “experts” are sandbagging cases for patent owners. The “experts” are aggressively advocating for infringers. The “experts” refuse to sign the Inventor Rights Resolution (that a patent confers exclusive rights to the inventor, that USPTO should not revoke patents, that infringer should not profit).

Inventors are too simple-minded to understand these things. Leave such complex matters to the “experts”. You can count on them.
Paul Hayes
May 14, 2020 11:34 am
CP in DC,

re: “Because ex parte appeals take place over a year after filing the examiner’s reply, examiners do not get negative reviews or “marked down.” Once the action takes place outside the calendar year, the action does not count against an examiner.”
Perhaps there should not be a time limit on examiner accountability – much like there is no time limit on when a patent can be challenged at IPR? ….or more likely perhaps Congress should not have applied AIA retroactively to the past 20 years of patents. Constitutional? I think not.

re: “The goal should be to have a neutral arbiter. As difficult a task, the APJs don’t have skin in this game, they don’t care about the patent, only it’s validity.”

Unfortunately there is no neutral arbiter in an IPR – as there is no jury. Neither the APJs who may have worked for the law firm representing the petitioner (as recently as year ago), before becoming an APJ; nor the examiner is/should/can be neutral. In fact, an APJ with a career eye of going to work for a petitioner, following their stint as an APJ, can not be neutral either. So if you want decisions from neutral parties, you are effectively arguing for a jury of the patent holder’s peers, yes?

I am not saying I know how to fly a plane, lol. Just making observations after the flight – as an interested engineer and inventor, not an attorney, I noticed the examiner role was missing from an IPR. It was only after completing multiple drafts of the article that I discovered that the BPAI (predecessor of the PTAB) used almost exclusively former examiners as Board members. How did this work for so many years if it was a ‘misguided’ idea?
Paul Hayes
May 14, 2020 11:16 am
AAA JJ,

re: “Did either of you argue section 325(d) in your responses? ”

No. Unfortunately. But I doubt it would have mattered.
I understand that this section has been given more teeth recently, which is good. The deal I had cut with a patent assertion entity did not allow me to direct the attorney they hired.
The argument required to show that the ‘new’ prior art was substantially the same as that used by the Examiner was technical in nature. Neither the attorney, nor the expert witness that was hired by the patent holder, were experienced enough to make this argument. The attorney concluded that arguing against the ‘new’ prior art, on just the merits, was a better strategy.

re: “Examiner’s having skin in the game”
It you are correct and they do not care if their allowances hold up, which I doubt for most examiners, then I would suggest that this is a problem in and of itself. They need to be held accountable for their allowances being accurate in order for the system to work. Patent holders need to rely on a grant in order to attract investors for a patent based venture. Infringers need to know that the strategy of Efficient Infringement will fail and not be so efficient. IMO, currently with AIA, we’ve swung too far from the expertise of the Examiner Corps. Address the root problem!
CP in DC
May 14, 2020 09:53 am
The introduction of examiners is misguided.

First, an understanding of burdens of persuasion and production would help this article. If the problem is understanding the technical issue, then the burden is upon the parties to present evidence, including experts, to make the “technical” issues understandable to all. Simply because APJs don’t agree with your point does not mean they “don’t understand” the technical issues.

Examiners have no interest or “skin” in this game. Examiners only care about the count. Examiners do not show up to argue in Ex Parte Appeals. These are appeals against the examiner’s rejections, they are a party, and they still do not show up to defend their position. I’ve argued numerous times and have never seen an examiner argue a case. If they have no interest in showing up in cases where they are a party, why would they care to show up in an IPR? Because ex parte appeals take place over a year after filing the examiner’s reply, examiners do not get negative reviews or “marked down.” Once the action takes place outside the calendar year, the action does not count against an examiner.

If the complaint is that APJs don’t have “technical” experience, you’ll be surprised to find that examiner’s “technical” experience is just as thin. They examine in matters so broad, not one worked in your “technical field.” Simple examples, look at any obviousness rejection. One wonders why “it would have been obvious” to combine references A, B, and C, just because each has a single claim element.

The goal should be to have a neutral arbiter. As difficult a task, the APJs don’t have skin in this game, they don’t care about the patent, only it’s validity. If neutrality is the problem then address that. Do not attempt to stack the panel in your favor by introducing “fact finders” that will have an interest in maintaining the patent despite the evidence. This was the problem with reexaminations when they went back to same examiner that originally examined the patent. the PTO cured that bias, yes bias, by creating the CRU.

The panel should not be an advocate for either party. If the problem is lack of neutrality, then address that issue. I agree the panels appear anti patent, but lacking an understanding of technical issues before them, that burden in on the parties.

Just because the author went through an IPR does not make them an expert. I have flown in planes, that does not qualify me to fly the plane.
AAA JJ
May 14, 2020 09:36 am
” In my case, the ‘new’ prior art was substantially the same in some respects and way weaker than that prior art brought by the examiner.”

and

“AAA JJ, my observations of hundreds of IPRs is that it is not new prior art. It is often identical, usually cumulative, and hardly ever anticipatory.”

So section 325(d) is being ignored? Is that what the two of you are saying? Did either of you argue section 325(d) in your responses? Did any of the patentees in these “hundreds of cases” argue 325(d)?

“I suspect they do indeed have skin in the game.”

Your suspicions are unfounded and incorrect.

“…they know how to assess obviousness or anticipation.”

The vast majority of examiners do not. They know how to get their counts.
Anon
May 13, 2020 07:08 pm
Randy,

I do NOT disagree with your observation – I merely provide the “intended” structure as set by Congress (notwithstanding AAA JJ’s acerbic — but also likely very much real – comments).
Josh Malone
May 13, 2020 07:07 pm
AAA JJ, my observations of hundreds of IPRs is that it is not new prior art. It is often identical, usually cumulative, and hardly ever anticipatory. The art is not surprising to the examiner or applicant and if it were cited during prosecution it would not have affected allowance.

Having been through it 8 times and read hundreds of cases, I agree with the author. The examiners of the patents that are IPR’d usually did good job and did not make a mistake. The PTAB usually is butchering the claim construction and cobbling together prior art that would not have concerned the examiner.
Paul Hayes
May 13, 2020 06:33 pm
AAA JJ,

re: ” No, their job is not to track what is obvious at any given point. Their job is to examine patent applications for compliance with the statutory requirements and issue patents that meet the statutory requirements.”

True, but Examiners work typically in very narrow fields. A side-effect, if you will of their job is awareness of where the state of the art is. By constantly seeing the edge of the world of knowledge extended out in front of them, as new inventions in their field come in….they know where the edge is…they know how to assess obviousness or anticipation.
Paul Hayes
May 13, 2020 06:31 pm
AAA JJ,

re: “Most IPR’s involve prior art that was not considered by the examiner during examination. It’s irrelevant that the examiner agreed with the applicant that the claims were not obvious. The issue of obviousness is being decided in the IPR on different evidence and arguments.”

I don’t think so. In my case, the ‘new’ prior art was substantially the same in some respects and way weaker than that prior art brought by the examiner. The language I had amended a claim with, to get allowance over the examiner’s prior art, was the same language at issue in the IPR. Unfortunately the examiner was not around to defend his decision. I suspect they do indeed have skin in the game. Not all work just to satisfy a quota. And those that do should be required to defend their decisions to being more accountability to their job.
Paul Hayes
May 13, 2020 06:30 pm
AAA JJ,

re: “Most IPR’s involve prior art that was not considered by the examiner during examination. It’s irrelevant that the examiner agreed with the applicant that the claims were not obvious. The issue of obviousness is being decided in the IPR on different evidence and arguments.”

I don’t think so. In my case, the ‘new’ prior art was substantially the same in some respects and way weaker than that prior art brought by the examiner. The language I had amended a claim with, to get allowance over the examiner’s prior art, was the same language at issue in the IPR. Unfortunately the examiner was not around to defend his decision. I suspect they do indeed have skin in the game. Not all work just to satisfy a quota. And those that do should be required to defend their decisions to being more accountability to their job.

re: ” No, their job is not to track what is obvious at any given point. Their job is to examine patent applications for compliance with the statutory requirements and issue patents that meet the statutory requirements.”

True, but Examiners work typically in very narrow fields. A side-effect, if you will of their job is awareness of where the state of the art is. By constantly seeing the edge of the world of knowledge extended out in front of them, as new inventions in their field come in….they know where the edge is…they know how to assess obviousness or anticipation.
Randy Landreneau
May 13, 2020 02:28 pm
@Anon

It seems virtually impossible for PTAB judges to be a neutral arbiter. Even if Director Iancu were to succeed in this before the end of Trump’s second term (a lot of time and a big if), the next Director will likely be who the big donors put forward to turn things back.
AAA JJ
May 13, 2020 01:59 pm
“But the examiner or representative from the Group Art Unit have some skin in the game….”

No they don’t. Examiners don’t care what happens to patents they issue once they’ve gotten their counts for disposing of the case.

“….they at the time of issue agreed with the inventor that the claims were not obvious.”

Most IPR’s involve prior art that was not considered by the examiner during examination. It’s irrelevant that the examiner agreed with the applicant that the claims were not obvious. The issue of obviousness is being decided in the IPR on different evidence and arguments.

“Their job is to track what is obvious at any given point in time and thus their memory is better than an APJ who may not have been paying attention to such things 20 years ago.”

No, their job is not to track what is obvious at any given point. Their job is to examine patent applications for compliance with the statutory requirements and issue patents that meet the statutory requirements.

Not sure why you think examiners’ memories are better than APJ’s memories. But that’s irrelevant also. The issues in an IPR are being decided on new evidence and arguments presented by the petitioner. The examiner could have a photographic memory of the prosecution of the patent from 5, 10, 15 years ago. So what? The prosecution record of the patent is available for all to see and review. The examiner’s “memory” of it doesn’t add anything to it.

The problem with the PTAB is that the organization views itself as being tasked with “dealing with bad patents” (although nobody from the organization would ever admit that) and the relative ease with which hindsight can be used to accomplish that task.
AAA JJ
May 13, 2020 01:45 pm
“And it would probably look bad if lots of APJs were saying that there was sufficient evidence to institute, but then reversing at the final written decision and finding that no, in the end, there wasn’t actually enough evidence.”

That would “look bad” only if the APJ’s were ignoring the arguments and/or evidence that the patentee presented to rebut the petitioner’s case.

That’s not happening, right?
AAA JJ
May 13, 2020 10:54 am
The notion that APJ’s are “judges” and that post-grant proceedings are “trials” is farcical. The problem is not that the APJ’s lack “technical expertise” (most examiners have no practical engineering experience either), it is that the “culture” of the PTAB is “invalidate at all costs.” The PTAB was set up as a “less expensive” and “more efficient” way to “deal with bad patents.” It was not conceived of, created, or set up to be neutral. With the marching orders of, “Ok APJ’s, go deal with those bad patents!” what did we expect was going to happen?

Hindsight is a helluva drug. Both the examining corps and the PTAB are packed with its junkies.
Anon
May 13, 2020 07:45 am
I agree with AAA JJ – the problem is at both times, less of what is directly suggested here, and more deeply rooted in the notion that the post grant review is supposed to be (but clearly is not) before a neutral arbiter.

Lab work on fingerprints on the fire hose has come back: Justice Ginsburg, these belong to you.

(but she is not alone)
Paul Hayes
May 13, 2020 06:50 am
Anon,
Having lost claims at PTAB I am unable to gain licensing revenue and I cannot afford an attorney to review draft articles. lol.
I can see where an attorney or legal scholar might bristle at some of the implications in the article, but I have to call it the way I see it. I am curious enough to ask what statements I made, in your view are, are “incorrect and a detriment to my message” and further, if you have stopped bristling yet, can you expand on the “legitimate legal opportunities” I should have honed in on?
Paul Hayes
May 13, 2020 06:39 am
AAA JJ,
I don’t doubt you are correct wrt use of hindsight goggles. But the examiner or representative from the Group Art Unit have some skin in the game….they at the time of issue agreed with the inventor that the claims were not obvious. Their job is to track what is obvious at any given point in time and thus their memory is better than an APJ who may not have been paying attention to such things 20 years ago. Even if an Examiner representative is added to the panel without a vote, at least their argument hits the record and CAFC has a chance of getting it on appeal. I disagree and believe this is a vital missing feature, if there must be a PTAB at all.
examution
May 12, 2020 11:01 pm
2 things: Bias and Incentives

For bias, only one side can file an IPR, so it may be reasonable to assume that the one party that can bring a challenge only brings that challenge if they think they have a good shot of winning.

Then, for incentives, Examiners may get 1-3 working days to examine a case to allowance, meaning reading and understanding the invention, searching and analyzing the prior art, and writing up one or more rejections and an allowance. So examiners are incentivized to “move” cases, whether to allowance, or abandonment. Meanwhile, a company being sued that brings an IPR to short-circuit the court may spend literally months of attorney/searcher/expert time trying to invalidate the patent. It would be surprising if they were NOT able to find better art than the examiner, given the orders of magnitude greater resources poured into the effort.

And as for APJs, they get credit for doing the institution decision, and then if they institute, they get a lot more credit for doing the final written decision. The fastest way for APJs to get their counts is to institute, then use the same reasoning for the institution in the final written decision. So there is an incentive to find a way to institute, so they can get double counts for not much more work. And it would probably look bad if lots of APJs were saying that there was sufficient evidence to institute, but then reversing at the final written decision and finding that no, in the end, there wasn’t actually enough evidence. (note that I am not saying that any or all APJs do this, just that the incentive exists, like how examiners might have an incentive to get an extra RCE before allowing a case).
AAA JJ
May 12, 2020 06:35 pm
APJ’s and examiners are equally prone to donning their hindsight goggles. And both are equally prone to lazily inserting form paragraphs that are nothing more than Improper per se rules of obviousness. Including examiners in IPR’s won’t improve the system one bit.
Randy Landreneau
May 12, 2020 04:40 pm
Great points, Paul. A majority of the PTAB judges in an IPR should be Examiners, including the Examiner for the particular patent in question.
Anon
May 12, 2020 03:19 pm
I would recommend that you do not write such articles for a legal forum without at least having an attorney proofread your article.

You make several seriously incorrect statements that are a detriment to your message.

Also, you do not take the opportunity to hone in on legitimate legal considerations of a post grant review in which the PTAB is decidedly NOT supposed to be acting in a capacity of being a “super examiner.”

So while I may not disagree with what I suspect the thrust of your article is meant to convey, I end up bristling more than agreeing with you as I read the article.
Pro Say
May 12, 2020 02:29 pm
Thanks Paul — adding an (experienced Primary) Examiner to each IPR; even in a consultative, non-decisional role; is an excellent idea.

Especially if the original, claim-granting Examiner for the patent in question is available.

As you make crystal clear, these unconstitutional “judges” could use all the help they can get.
Josh Malone
May 12, 2020 01:53 pm
This is exactly right. My examiner was writing notices of allowance refuting the PTAB decisions on the parent patents. It is a real tragedy that Congress gave these 270 mostly unqualified individuals the power to wreck our innovation system.