Posts Tagged: "appeals"

Cognitive Dissonance: How the PTAB Reported Appeal Statistics Ruins the Data for Everyone

The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for at least one ground of rejection. A case is only reported affirmed-in-part by the PTO’s statistics if at least one claim remains standing, regardless of which legal issue ((§101, §103, §112, etc.) the claim was originally rejected. Since a large portion of PTAB ex parte appeals involve rejections over more than one ground of rejection (between 35%-45% according to this statistical estimate), this reporting process masks what the PTAB is deciding on each legal issue presented to it. Because the USPTO data does not report the outcome of each legal issue in multiple issue cases, it is impossible to collect statistically meaningful data on outcomes of specific legal issues from the data set from the FOIA website.

Ignorance of the Law is No Excuse for Cost of the USPTO’s High ex parte Appeal Reversal Rates

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.

PTAB chief judge Ruschke discusses ex parte appeals, PGR reform and more with PPAC

Ruschke’s claim that only PTAB judges familiar with the technology involved are assigned in ex parte appeals seems false based on what we know has happened in at least one high-profile matter. As previously mentioned, in Ex parte Hiroyuki Itagaki the PTAB ruled a magnetic resonance imaging (MRI) machine to be patent ineligible because it is an abstract idea. See PTAB rules MRI machine an Abstract Idea. Judge Hubert Lorin, who authored the opinion in Itagaki, has a B.S. in Chemical Engineering and a B.S. in Chemistry according to his LinkedIn profile. Similarly, Judge Matthew Meyers, who was also on the panel, has a B.S. in Biology according to his LinkedIn profile. The third judge, Judge Bibhu Mohanty, does not list his technical expertise on his LinkedIn profile, but we have been told his expertise is also in the chemical area. Therefore, the PTAB does in at least some cases assign cases to judges who are not technically trained in the technology area of the invention

Ex Parte Appeal Oral Hearings: Making Your Case Right Before Decision Time

This data set shows that Oral Hearings are rarely conducted. (See Figure 1.) Across the 72,443 appeals, only 459 (0.63%) appeals had an Oral Hearing… As shown in Figure 4, Oral Hearings were associated with more full-rejection reversals (blue bars). Specifically, the full reversals accounted for 40.3% of the appeals with Oral Hearings, as compared to 32.5% of the appeals without Oral Hearings.

The Federal Circuit should never use Rule 36 if a patent claim is invalidated

What happens if a patent owner who suffered that Rule 36 summary loss to Google at the Federal Circuit were to decide to sue another party – perhaps Apple – on the same claims that were invalidated in the above mentioned hypothetical Google proceeding? No doubt Apple’s attorneys would be rightfully indignant, and if the proceeding were in federal district court you could guarantee there would be sanctions, likely against both the patent owner and the attorneys representing the patent owner. Why? Because those claims have been lost (i.e., invalidated) in a prior proceeding, and it does not matter that Apple was not privy to that prior proceeding. The underlying property right has been lost, and whether the Federal Circuit wants to admit it or not that is binding precedent.