“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?”
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.
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.
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.
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.