Judicial Network of the Patent Trial and Appeals Board (PTAB)

by Dennis Crouch

BPAI.Sample

Here is an image from a project that I'm working on with PTAB/BPAI decisions.  Each node (circle) represents one of the 160 or so PTAB judges that have participated in an ex parte patent appeal since January 2010.  These are cases where a patent examiner has twice rejected a patent application and the applicant then asks for appellate review. 

Node size varies according to the number of cases decided during the past three years.  For the most part, smaller nodes represent newer judges. Connections between judges are created each time two judges sit on the same panel.  I have also color-coded the judges according to their primary technology area.  Thus, judges coded as red judge mostly cases from Technology Center 2100 (Computer Architecture, Software, and Information Security) while judges coded as orange mostly hear cases from Technology Center 1600 (Biotechnology and Organic Chemistry). (Tech Centers).  There is extensive overlap between Tech Centers 2400, 2600, and 2800 and so I grouped those together and colored them green.  Judges coded yellow had no discernable primary technology area. 

As may be discernable from the chart, judges are much more likely to be empanelled with others in the same technology area.  Mechanical engineers are especially separate and, for the most part, TC1600 judges only interact with themselves and TC1700 judges.*  The result here is that, in the usual case, all three judges on a panel have the same technology focus. 

Now, back in 2009 there were only about 80 judges on the entire board. That made technological specialization difficult. Since then the PTAB has doubled in size and is expected to continue to rapidly grow over the next year. One question that the USPTO will need to address is whether to double-down on technological specizlization or instead to take measures that ensure that the judges have a broader spectrum of experiences.  The answer may well depend upon whether the appeals brought to the PTAB are more due to (alleged) (1) examiner errors in understanding the technology at issue or (2) examiner errors in understanding how to apply the law of patents.  Those questions are ones that we'll save for another post.  

30 thoughts on “Judicial Network of the Patent Trial and Appeals Board (PTAB)

  1. Here is an image from a project that I’m working on with PTAB/BPAI decisions each node circle represents one of the 160 or so PTAB judges that have participated in an ex parte patent appeal since January 2010 these are cases where a patent examiner

  2. The problem is a “you” problem, and any perception you have that I am “contradicting you” falls to the I am correcting you – something you evidently have a great deal of trouble with (on any number of topics).

    Is English your first language?

  3. You are confusing “you are not making any sense” with “I am not understanding you.”

    The problem is a “you” problem, and any perception you have that I am “contradicting you” falls to the I am correcting you – something you evidently have a great deal of trouble with (on any number of topics).

    Better trolling please.

  4. And at point: “ANY art that bears on a solution” is the part that you are not quite correct, given that the implication of your statement is that I am indicating that “So PHOSITAs are now presumed to have ordinary skill in every art” as if the portion of my comment bearing on the solution did not exist.

    You’re not making any sense.

    I made a simple statement: “PHOSITAs are not presumed to have ordinary skill in every art.” You contradicted me. Which part of my statement is incorrect?

    Perhaps in your earlier post you meant to say, “Your 2nd comment is true, Leo, but KSR tells us that the PHOSITA can make use of at least some knowledge outside his/her area of expertise – after all, the PHOSITA is not an automaton.” But if that’s what you meant, why didn’t you just say so?

  5. Something tells me that you are wrong (again) – because that’s what you do.

    Hey, I wasn’t the one trolling the other here – that would be you.

    And at point: “ANY art that bears on a solution” is the part that you are not quite correct, given that the implication of your statement is that I am indicating that “So PHOSITAs are now presumed to have ordinary skill in every art” as if the portion of my comment bearing on the solution did not exist.

    It’s not necessarily a matter of you going slower – it’s a matter of you not thinking that you are correct when you are obviously incorrect so that you can actaully recognize that your arrow has (badly – again) missed the mark.

    But I can see why you confuse taking correction with being contradicted.

  6. a flash of genius argument that runs something like this

    Interesting way to frame the “Flash of Genius” as what is NOT a “Flash of Genius.”

    I am not sure that the inverse follows.

  7. Is there any case law that even addresses it?

    I’m not aware of any. No, I don’t think it contradicts the courts’ concern with predictability at all. Again, all it says is that the actual circumstances of the invention are irrelevant. If you want to say that an invention is predictable then you need to support that with facts other than the mere fact that the inventor did it.

    That at least guards against a flash of genius argument that runs something like this: “That invention must be obvious because Bob invented it, and Bob is not all that bright.”

  8. “Is there any case law that suggests otherwise?”

    I don’t know. Is there any case law that even addresses it? If the language was simply to remove any doubt that an invention can be made without a flash of genius, as some suggest, does it contradict SCOTUS’s concern with whether an invention was “predictable”? In a sense, isn’t every invention predictable in that the inventor sets out to solve a problem or address a need in the art?

  9. I don’t see what is confusing about the second sentence of 103(a). By its plain words, it simply says that the actual circumstances of the making of the invention are irrelevant to the legal question of whether the invention would have been obvious to one of ordinary skill in the art. Is there any case law that suggests otherwise?

  10. OK, I’ll go slow.

    You said: “Further to your second comment, you are not quite correct, as indeed ANY art that bears on a solution provided in a patent application is fair game – after all, PHOSITA are not automatons.”

    Your statement unambigously says that my second comment is “not quite correct,” right?

    My second comment, in its entirety, was: “And your quote notwithstanding, PHOSITAs are not presumed to have ordinary skill in every art.”

    Which part of my second comment is “not quite correct”?

    Something tells me that you’re contradicting me simply because that’s what you do.

  11. I have never heard of a satisfactory answer as to what that second sentence of 103(a) means. On several levels it is incongruent with the first sentence.

  12. Leopold,

    Please read my response again – make sure you don’t skip any words (this will help you not shoot your arrows directly into the ground in front of your feet).

  13. “That was the exact point addressed by KSR.”

    While I’ve read the KSR decision numerous times, I’m not as sure as others that it addressed the issue of “art to which the subject matter pertains.” Although the MPEP quotes KSR in section 2141.01 (“under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed”), none of the prior art at issue in KSR (e.g. Asano) was outside the field of endeavor. So I don’t think KSR really resolved, or even addressed, the scope and content of the prior art to which said subject matter pertains” as required by 35 USC 103(a).

    “Patentability in KSR was negatived by prior art, as modified by a person of ordinary skill in the art. Pretty sure that’s permitted by 103.”

    I don’t think that addresses the issue. Many argue that the particular language of 35 USC 103(a) at issue was put into the statute to remove the “flash of genius” requirement of previous court decisions. If “invention” does not, according to 35 USC 103(a), require a “flash of genius” than what does it require? Is dogged persistence enough?

    I just don’t agree that KSR addressed or resolved these issues.

  14. For example, what is meant by “a person having ordinary skill in the art to which said subject matter pertains”

    That was the exact point addressed by KSR.

    “patentability shall not be negatived by the manner in which the invention was made”?

    Patentability in KSR was negatived by prior art, as modified by a person of ordinary skill in the art. Pretty sure that’s permitted by 103.

  15. To me the most disappointing aspect of the KSR decision was the court’s failure to address the actual language of 35 USC 103(a). For example, what is meant by “a person having ordinary skill in the art to which said subject matter pertains” and “patentability shall not be negatived by the manner in which the invention was made”?

  16. Further to your second comment, you are not quite correct…

    Gee, what a surprise. So PHOSITAs are now presumed to have ordinary skill in every art?

  17. Leopold,

    While your distinction between hypothetical constructs and actual beings is true, it quite misses the point that those actual beings are applying the law as seen by the hypothetical constructs – so my point is valid notwithstanding your observation.

    Further to your second comment, you are not quite correct, as indeed ANY art that bears on a solution provided in a patent application is fair game – after all, PHOSITA are not automatons. In other words, the “worlds of prior art” between a 102 analysis and a 103 analysis was collapsed to an unprecedented level with the KSR decision, and (once again) the judicial branch has had their fingers in the virtual legislating of patent law from the bench based solely on their view of ease/difficulty of obtaining patents – quite apart from the actual words of law as provided by those with the proper constitutional authority.

  18. The PTO, in its infinite wisdom, shuffles some of the backlog of appeals from TC 3700, by far the worst TC in the PTO, hands down, no doubt about it, to some of the APJ’s who normally handle TC 1700 and TC 1600 appeals, on, I guess, the theory that “anybody can understand and decide these mechanical cases.” So on top of getting a terrible examination for their filing fee, applicants get to have their appeals decided by APJ’s with no understanding of the technology. It’s a double whammy.

  19. PHOSITAs are hypothetical beings. Administrative law judges are not.

    And your quote notwithstanding, PHOSITAs are not presumed to have ordinary skill in every art.

  20. Does a PHOSITA really care about the art unit number as long as “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one“?

    And if a PHOSITA should not care, and be able to piece various pieces together like a jigsaw puzzle, should not too, the judges likewise not be constrained by art unit numbers?

  21. Another reason that 3700 is going to be weird is that they have almost all of the medical devices. Why they are lumped together with pumps, heating systems, etc., is way above my pay grade.

  22. The separation you are seeing with 3700 is likely due to the backlog of appeals in that subject matter. This also explains four 3700 judges who are closely related to the 1600 judges. A number of these 3700 cases involve technologies that are closely (or even just tangentially) related to biotech. This dual nature permits them to pull in 1600 judges to fill the three member panel.

  23. Re: “..the PTAB has doubled in size and is expected to continue to rapidly grow over the next year. One question that the USPTO will need to address is whether to double-down on technological specizlization or instead to take measures that ensure that the judges have a broader spectrum of experiences.”
    What the Board needs far more importantly to “double-down on” is complying with its express statutory requirement of handling reexamination appeals with “special dispatch,” and the express PTO requirement of handling reissues with high priority. In both cases that means taking up and deciding those appeals ahead of all other ex parte appeals in the Board’s backlog.

  24. How about making the size of the circles related to rate or some other metric of efficiency than just a pure number of cases heard…?

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