Dr. Ron D. Katznelson is the Founder and President of Bi-Level Technologies, an image and signal-processing technology company in Encinitas, CA. He is a technology entrepreneur, named inventor on 25 U.S. patents and applications and an independent scholar of the patent system. He authored the Amicus Brief to the US Supreme Court in Peter v. NanKwest on behalf of IEEE-USA, arguing the importance of Section 145 proceedings to applicants, and reporting on his historical study of Section 145 usage.
Dr. Katznelson also advises high technology startups; he served as the Chairman of the Intellectual Property Committee of IEEE-USA during 2019 and 2020. From 1990 to 2005, he was at Broadband Innovations, a San Diego digital RF technology company he founded, where he served as Chairman, Chief Technology Officer and a contributor to the DOCSIS® cable modem specifications. Prior to 1990, Dr. Katznelson was the Director, New Technology Development at General Instrument Corp. (GIC), where he directed the R&D in Advanced Television Systems that led to the MPEG standard; at GIC, he managed the Division’s intellectual property portfolio, patent litigation matters, and representation in industry groups and standards organizations. Prior to that, Dr. Katznelson was a professor of electrical engineering at the University of California, San Diego.
He received his doctoral degree in Electrical Engineering from the University of California, San Diego, CA; his Masters in Applied Semiconductor Physics, and a dual BSc. degree in Mathematics and Physics, both from the Hebrew University in Jerusalem, Israel. He is a licensed private pilot and a licensed ham radio operator.
Under the U.S. Constitution’s Appointments Clause, “Officers of the United States” generally are required to be nominated by the President “by and with the Advice and Consent of the Senate.” This rule applies equally to the Director of the U.S. Patent and Trademark Office (USPTO), who has an important executive role with political accountability and therefore, by statute, must be Presidentially-Appointed and Senate-Confirmed (PAS). The Vacancies Reform Act of 1998 (VRA) provides that the President (and only the President) may direct an “acting” official to temporarily perform the functions and duties of the vacant PAS office. The VRA states that its mechanisms are “exclusive” of all other mechanisms for temporarily filling a vacant PAS office. On several occasions since 2013, including most recently with Commissioner Andrew Hirshfeld, the USPTO has adopted a modality for filling a vacancy in the office of the Director, not with an Acting Director as the VRA requires, but with a non-PAS official “designated” to “perform the functions and duties” of the Director.
Since the Supreme Court decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), there has been much discussion about the Court’s ruling mandating an option for users to request that the Director of the U.S. Patent and Trademark Office (USPTO) review Final Written Decisions of the Patent Trial and Appeal Board (PTAB) rendered in trials under the America Invents Act (AIA) on the validity of issued patents. But there has been little or no discussion on such Director’s review of PTAB decisions on institution of AIA trials.
Would you believe the following scenario could happen under our patent system? An inventor of a fundamental technology receives a patent less than three months after filing; despite the public disclosure of the patent, industry contemporaries fail to appreciate the invention’s significance for nearly two years; once appreciated, widespread adoption and infringement of the patent ensues. Commanding 50% market share in unit sales of the patented product, the patent holder prevails in patent infringement suits obtaining court injunctions against all major rivals and maintaining a strict no-licensing policy. What happens next during the patent enforcement period would defy all conventional anti-patent narratives:
In a recent Supreme Court decision in Arthrex v. Smith & Nephew, the Court held that the unreviewable authority wielded by Administrative Patent Judges (APJs) at the Patent Trial and Appeals Board (PTAB) of the U.S. Patent & Trademark Office (USPTO) exercises authority of a “principal officer” and is incompatible with their appointment by the Secretary of Commerce to an “inferior office.” Instead of declaring their appointment unconstitutional, the Court’s remedial ruling was aimed at making PTAB judges “inferior officers.” It did so by a ruling interpreting 35 U.S.C. § 6(c) as enabling the USPTO Director to “review decisions rendered by APJs,” subordinating them to the Director’s full supervision.