Posts Tagged: "Michelle Lee"

The nation’s highest court will once again address issues surrounding the controversial Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). The case it will decide is SAS Institute, Inc. v. Lee, which will be argued during the October 2017 term, and which will force the Court to again look at how the USPTO, and more specifically the PTAB, is implementing the post-grant patent validity trials created when Congressional passed of the America Invents Act (AIA) of 2011… As SAS Institute’s petition notes, the track record of the PTAB is clear. The PTAB believes that final written decisions need only to address certain challenged claims, not every challenged claim.

In prepared remarks Director Lee said the Office must significantly raise Patent Trial and Appeal Board (PTAB) fees in order for the PTAB to be self-sustaining on a going forward basis. On one hand the fact that Director Lee acknowledged that the PTAB is not self-funding is significant, but her comments dramatically under played what seems to be really happening at the PTAB. The reality appears to be that patent owners and patent applicants are subsidizing the PTAB… [I]t seems the PTAB has been operating at a substantial deficit for some time and even with significant fee increases the Office continues to plan to run PTAB trials at a deficit, which means patent owners and patent applicants will be subsidizing the PTAB and infringers challenging patents moving forward. To call this outrageous is an understatement.

One of the most straightforward steps President Trump can take to steer the ship of state on its new course is to put good people in place throughout the government… At the FTC, President Trump has already made the salutary move of naming Commissioner Maureen Ohlhausen the agency’s Acting Chairman. This early move was a great first step. The even more significant step would be to name Ms. Ohlhausen the permanent chairman of the FTC and to do so quickly.

What I do know is that the Department of Commerce has created a Regulatory Reform Task Force and that the USPTO will participate on that Commerce Department Regulatory Reform Task Force in some unexplained and rather ambiguous capacity. I have still not been provided the name of any USPTO appointed Regulatory Reform Officer, nor have I been provided the names of any individuals who have been appointed to any USPTO Regulatory Reform Task Force. If you read the comment I received on the record from the USPTO together with the USPTO belief that this comment moots my FOIA request it seems clear that the USPTO will not be forming its own Regulatory Reform Task Force and will not be appointing a Regulatory Reform Officer. Unfortunately, all attempts to get the USPTO to confirm on the record that they will not be forming a Regulatory Reform Task Force and will not be naming a Regulatory Reform Officer have failed.

Inter Partes Review (IPR) is viewed by many as late-stage destruction of fully developed early-stage investor ROI in patented property. The Lee study will presumably weigh the costs of the PTAB and IPR against its benefits, but the worst far-reaching costs will not show either in its records or dialogue with its “users.” Examining “five years of PTAB files and user experience” cannot reveal the indirect harm the PTAB has inflicted on our innovation ecosystem through the threats to file IPR petitions during licensing negotiations, the impact on declining patent values, the weaponization of the PTAB by the infringement defense bar and its unexpected heavy utilization. Discovering what the PTAB hasn’t seen and why it never saw it would be more informative and more relevant.

The timing of the announcement is curious given that Michelle Lee’s days seem numbered as Director of the Office. As first reported on IPWatchdog.com, Commerce Secretary Wilbur Ross has interviewed at least three candidates for the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Those receiving interviews were Phil Johnson, former Vice-President for Intellectual Property Strategy & Policy for Johnson & Johnson, Randall Rader, former Chief Judge of the United States court of Appeals for the Federal Circuit, and an unidentified patent attorney characterized by one source as a dark horse candidate.

Michelle Lee’s days seem numbered at the Patent Office. According to credible sources, Commerce Secretary Wilbur Ross has been interviewing perspective candidates for the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). One of the individuals receiving an interview this week was Phil Johnson, former Vice-President for Intellectual Property Strategy & Policy for Johnson & Johnson, and a past President of the Intellectual Property Owners Association.

According to the announcement, the members of the USPTO Working Group will also make up the USPTO regulatory Reform Task Force… The names of the members of the Working Group/Task Force were not provided in the USPTO announcement, although the announcement does say: “Nicolas Oettinger, Senior Counsel for Regulatory and Legislative Affairs in the USPTO’s Office of General Counsel, will lead this effort.” That presumably means that Oettinger has been designated the Regulatory Reform Officer by Director Lee, although that remains unconfirmed.

By letter dated March 10, 2017, the USPTO responded to Mr. Shuster’s FOIA request by informing him that “Michelle K. Lee is the Director of the United States Patent and Trademark Office.” This is the first confirmation from anyone at the USPTO, or from anyone within the Executive Branch. There still has not been an official announcement from the USPTO, Department of Commerce, or White House. Up until today the best evidence that Lee remained as Director had been that she allowed herself to be introduced as “Director of the USPTO” at an industry event and gave opening remarks at the most recent PPAC public meeting… But the more immediate question now becomes: How long will Michelle Lee remain Director of the USPTO?

Lee has finally been publicly introduced at an industry event as Director of the United States Patent and Trademark Office. Indeed, earlier today Lee delivered a keynote address at the luncheon of the PTAB Bar Association meeting taking place at the Ritz-Carlton in Washington, D.C… While Michelle Lee does not appear on the meeting agenda, she was in attendance this morning at the public PPAC meeting and delivered opening remarks, although she was not then introduced as or referred to as “Director.” According to the PPAC agenda opening remarks were to be delivered by Drew Hirshfeld, Commissioner for Patents.

The first and perhaps most obvious news story here relates to the fact that the United States Supreme Court believes that Michelle Lee remains Director of the USPTO… This dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB). There are three questions presented by Oil States in the petition for writ of certiorari… Despite these very important questions, the Federal circuit affirmed the Patent Trial and Appeal Board (PTAB) without opinion with a Rule 36 judgment, which is simply a one-word judgment that says “Affirmed” without any explanation.

One of the many questions about the Trump Administration after its first month is how it views the U.S. patent system. I asked several experienced veterans of the patent reform wars to review the article and share their thoughts on some key questions. Do you feel that the Trump Administration will be pro-patent? Can you provide any reasons for your opinion? What do you make of the decision to retain Michelle Lee? Do you think the Administration and Congress will work together on patent reform this session and if so, what elements are most likely to be addressed?

According to these regulations cited by the USPTO, an extension is warranted in “unusual circumstances” where there is a “need for consultation… with another Federal agency having a substantial interest in the determination of the request.” On its face it would seem that invoking of 37 C.F.R. 102.6(c)(1) and (2)(iii) is an egregious abuse of authority and obvious violation of the Freedom of Information Act. Request for information about who is running the agency cannot under any reasonable definition create an “unusual circumstance,” and there seems to be no justifiable or defensible reason why another Federal agency would, could or should have an interest in Mr. Shuster, or the public, being properly informed about who is running the USPTO.

One Administrative Patent Judge — Judge Meredith Petravick — dissented. Petravick said it was inappropriate for the PTAB to terminate the ‘304 patent CBM because the parties were different when compared to the Federal Circuit case. Petravick said that the review should be limited to the record of the ‘304 patent and not consider extraneous, out of record matters such as a Federal Circuit determination that the very same claims are, in fact, patent eligible. Petravick dissented saying that he would find the claims to the graphical user interface just found patent eligible by the Federal Circuit to be patent ineligible.

Michelle Lee seems to still be Director. She is signing patents and Federal Register Notices, but both Commerce and USPTO decline comment on her status… Presumably at some time we will be told who is the Director of the United States Patent and Trademark Office, but until then that information is being protected as if it is a State secret. Information on who is running the USPTO seems to be on a need to know basis and I guess the public just doesn’t need to know.