PTO Proposed Pilot Program on IPR Initiation

Inter Partes Review (IPR) Trials have become an effective tool for cancelling invalid patent claims that lack novelty or fail the nonobviousness test. The IPR process has two main stages: Institution and Trial. At the institution stage, the Patent Trial and Appeal Board (PTAB) must determine whether the third-party challenge is sufficient enough to warrant a full trial on the merits of the challenge. The institution test outlined by the statute is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”

One design choice for IPRs is whether the judges who decide to institute the IPR should be kept-on to decide the ultimate merits of the trial. In its initial design of the process, the PTO determined that keeping the same judges provided for both efficiency and internal consistency. Thus, under the current rules, the same three APJs who decide whether to institute a trial also conduct the trial and ultimately decide the trial outcome.

A number of losing-patentees have argued that the process creates an improper bias or implicit presumption against the patentee during the trial stage. The basic idea is that a judge who sides with the challenger at the institution stage will be mentally locked-in to supporting the petitioner’s case and at trial will improperly give the presumption to the challenger rather.

The USPTO is now requesting comments on a proposed pilot program that would address these concerns. In particular, the PTO’s proposal is that the institution decision would be made by a single judge. If that judge decides to institute then the trial would be held before that single judge along with two additional APJs added to the panel who were not previously involved in the decision to institute.

The statute requires the two-step process and also requires a set of three APJs to decide the trial, but gives the USPTO authority to determine additional process elements. There are a host of alternative designs and structures available, such as an entirely new panel.

The PTO’s proposal benefits the PTO by requiring only one judge at the institution stage – likely allowing it to handle more cases. Right now, the PTO is looking for comments on the proposal. If those seem favorable, the PTO is likely to move ahead with a pilot program. Comments to PTABTrialPilot@uspto.gov by October 26, 2015.

I am personally concerned about the initiation decision by a single APJ.  Generally, you might think that three-judge panels would offer more consistent decisions because more eccentric judges would be outvoted.  However, there are team-project problems that can arise with panel decision making– often one or more panel member can check-out mentally and simply rely upon the decisions by a single judge.  I do not know which of these (if either) is more likely with PTAB judges.

 

79 thoughts on “PTO Proposed Pilot Program on IPR Initiation

  1. 79

    More of the classic Malcolm being Malcolm and the A.O.O.T.W.M.D.

    Notice how you did not address the substance of the point: it very much is the PTO’s job (or “PTO’s job”) to find the best prior art (or “best prior art”).

    What you “already mentioned” is nothing more than your typical baseless ad hominem instead of actually discussing anything of merit.

    But somehow it is always the other person who is a “dishonest hack” or an “ignorant tr oll” or something.

    The Prof must be so proud of you and your ability to NOT contribute meaningfully to any conversation.

  2. 78

    Is there a (legally cognizant) reason for adding those quotation marks Malcolm?

    The reason the quotes are there is because I’m addressing NW’s specific assertion.

    Pretty simple stuff but understandably difficult for an ignorant tr 0ll like yourself.

    finding the best prior art sounds EXACTLY LIKE the PTO’s job.

    I already mentioned that you’re ign0rant, right? Yes, I did.

  3. 77

    ejee, I, of course, agree with you. “Abstract” is not being used in the same way by the Supreme Court today as it did when the principle was first announced in Le Roy v. Tatham.

    Claiming at the level of an idea, claiming a result is what “abstraction” is about. It really does not apply where the subject matter is claimed with particularity but where the subject matter is non statutory.

    Being non statutory is a horse of an entirely different color. The Supreme Court however punted in Bilski. Stevens had it right in his dissent.

    So, now we are left with a mess, where words are used in a sense never intended by the Court when they were first used in its decisions.

    Thank you Justice Kennedy.

  4. 76

    Let’s not forget that “principle in the abstract,” and its many variants was reacted against by Congress in the Act of 1952.

    That is part of the genesis of the major rework (and not mere codification, as those hungry to retain their power may say in DICTA) that carved up a single paragraph and created section 103.

    Thus, citing to and relying on case law that is pre-1952 – on the particular topic affected – is legal error.

    Note that this is NOT the spin that Ned attempts, that the whole of patent law was thrown out. It is on point though to the runaway problems caused by the Court.

    Lest not we forget as well, 35 USC 100(b) was explicit about that “new use of an old machine.”

    Ned likes to dredge up all types of old cases (even incorrectly relying on them as a form of precedent where no such reliance is warranted – noted by Prof. Crouch directly to Ned). David Stein shredded Ned’s “case set” as well.

    Won’t stop the propaganda machine.

  5. 75

    Ned, I don’t find that case particularly persuasive on the matter.

    The case was about the jury instruction that the novelty was not in the machine but in the principle underlying the machine. As I understand, the lower court basically said “it doesn’t matter if you have an old machine as long as the principle of operation is new”. The Court stated that this was incorrect, as the claim cannot be to the principle itself. I agree with that, and I don’t see Bilski as being inconsistent with that principle.

    But any notion that there *must* be some sort of physical machine or transformation of a physical article tied to the invention is inconsistent with the more recent Bilski decision. If the Court thought useful arts meant only “machines, manufactures or compositions, or processes of making these, or using these to produce a new physical result” than it would have been a whole lot easier for it to merely endorse the machine or transformation test and cite to Le Roy.

    Also I don’t see the preamble of the copyright clause as being a requirement. The PTO does not evaluate patents to find out whether they do in fact “promote the progress of science and useful arts”. Many of the intangible/business/computer patents may run afoul of the spirit of the clause, but I am skeptical that they are forbidden by it.

  6. 74

    Top to bottom, there is all kind of W1ld A$$ Wr0ng with that Ned.

    Your Con Law is downright abysmal.

    You are not even close. Not by a mile. It is shocking that you actually practice law with views like that – even for Ned-IMHO law (and that’s saying a lot).

  7. 73

    ejee, While I do not fully agree with this reasoning from Bilski, the reason that one cannot patent business methods and other subject matter not or relating to an improved machine, manufacture or composition is that they are said to be abstract. The reason one cannot patent the abstract is that such does not promote the progress in the useful arts. They can be abstract by claiming effects or results. They can be abstract by not claiming improvements in machines, manufactures or compositions. I think the two cases are different in kind. But the Supreme mixes them together in one bucket: abstract.

    Let me quote the seminal case, Le Roy v. Tatham, link to scholar.google.com

    “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.

    In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.

    A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.

    As I said above, in my view, business methods or other non statutory subject matter cannot be patented simply by reciting the use of conventional items or machines. One cannot claim the improved novel by reciting its printing on a book. Ditto the cooking recipe, even though the recipe may be used to create an improved meal.

    But at the constitutional level, useful Arts really means machines, manufactures or compositions, or processes of making these, or using these to produce a new physical result. Jefferson really got it right when he wrote this in 1793.

  8. 72

    >>That’s just false. But you’re a dishonest hack and we all know that.

    Really. Tell us how many claim amendments there have been? I think it is 3. But, OK, I’ll amend my comment to say that claim amendments are very costly and extremely difficult to get allowed.

  9. 71

    It was never the PTO’s “job” to “find the best prior art”.

    Is there a (legally cognizant) reason for adding those quotation marks Malcolm?

    Because, you know, finding the best prior art sounds EXACTLY LIKE the PTO’s job.

    At least in this realty.

    (Maybe you should put “dishonest hack” in quotes too – because what you are doing is far more like that than anyone that you are whining about)

  10. 69

    What the IPR does is what Dudas wanted–it has shifted the burden from the PTO to the applicant to find the best prior art.

    It was never the PTO’s “job” to “find the best prior art”.

    If that was ever the PTO’s “job”, the PTO would be much a different place.

    More importantly, it’s always been in applicant’s best interests — and always will be — to be as familiar as humanly possible with the best art that’s out there.

    Of course, that requires applicants to grow up and stop pretending that they weren’t born yesterday and we all know that’s impossible for your favorite applicants.

    no claim amendments!

    That’s just false. But you’re a dishonest hack and we all know that.

  11. 68

    “I agree that congress could not, even if it wanted to, constitutionally authorize the patenting of business methods, or computer impelemented subject matter that has nothing to do with new or improved machines, etc.”

    Maybe I’m missing something (I haven’t been doing this very long), but why would Congress not be authorized?

    Article I, section 8, clause 8 only says: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    Discovery is a pretty broad term. Under most definitions I see, “discover” means to first find or observe something. Of course, it would be a bad idea to grant computer-implemented patents for centuries-old methods just because computers didn’t exist until the last few decades. Thus, the statutory and judicial limitations. But, if nobody has actually thought of implementing a particular method on a computer before, why would Congress, in theory, not be constitutionally authorized to write a statute allowing such a practice?

  12. 67

    Your friend Madison would add a note or two about co-locating authority without checks and balances…

  13. 65

    The problem with the PTAB is that they are under statutory time deadlines, so they do wrong things like reject new petitions for no valid reason if the are overworked and fear they will not meet the statutory deadlines for the petitions that they have granted. Why? Because they know that any decision not to institute cannot ever be reviewed or reversed. They can abuse their discretion all they want, and the CAFC will simply refuse to even consider the facts. Face it, the system is broken – giving anyone the absolute, unreviewable authority not to work but to still get paid is a bad idea.

  14. 64

    This is a real problem, too. If a petitioner files a second petition after the denial of the first, here is a very high likelihood that they’ll just deny the petition under 35 U.S.C. 325(d) by saying that the new petition presents “substantially the same” art or arguments as the first petition.

    Bottom line, I tend to agree with other commenters that having institution decisions decided by 1 ALJ isn’t going to either change the confirmation bias to Final Decision, or the institution rate, because the other two judges just don’t give a damn either way and are phoning it in. The incentives are just whacked.

  15. 63

    MM>>Sometimes a comment just leaps off the page in its magnificent wrongness. Here is one such comment: “the way the system is now structured, it is inherently unfair to patent owners.”

    Yeah it is. It has turned into something close to a registration system. What the IPR does is what Dudas wanted–it has shifted the burden from the PTO to the applicant to find the best prior art.

    If you don’t, your claims may be canceled in an IPR.

    The PTO should take responsibility for at least finding the best art. Most attorneys will make sure they have claims that are patentable over the cited art.

    So, you see, what has happened is a complete burden shifting. The IPR is really best seen as a super-duper office action with 100’s of K behind it to find the best art and the claims subject to the same BRI and more likely than not standard of an office action, but no claim amendments!

    So, it is unfair. To make it fair the PTO needs to take responsibility for finding the best art and permitting claim amendments as a matter of right if new art is used in the IPR.

    But, then you know that. We are dealing with the never ending nonsense of the paid blogger who day in and day (8 hours a day 5 days a week) paints a picture of the patent world that has nothing to do with reality.

  16. 62

    On computer implemented, I agree that congress could not, even if it wanted to, constitutionally authorize the patenting of business methods, or computer impelemented subject matter that has nothing to do with new or improved machines, etc.

    That the PTO, in an effort to better service its clients, and then the Federal Circuit in State Street Bank, decided to authorize the patenting of business methods and other computer implemented, but otherwise nonstatutory subject matter, is a black mark on their history that must never be repeated. That they were aided and abetted by the likes of the AIPLA and IBM has to be noted.

  17. 61

    MM, mere speculation that one may infringe in the future and that the patentee might sue is not sufficient for standing. You might want to read a recent Supreme Court case on this topic: Steel Co. v. Citizens for a Better Environment link to scholar.google.com

    How would you feel if someone interested in “public safety” set up a roadblock and searched your car for weapons in a private enforcement effort of a local law banning possession of unlicensed firearms.

  18. 59

    Move the goalposts back – if you are sued than you have standing. Ned’s comment was to something else.

    Funny that – you won’t tackle that head on…

  19. 58

    Obviously, some self interests are more “equal” than other self interests.

    And the porcines continue to want their equality first…

  20. 57

    people who have no interest in a matter

    Everybody has “an interest” in being able to conduct themselves freely without being sued by a patentee who was wrongfully granted a patent.

    Consider: the PTO grants a claim to X that recites “The earth and everything in it.”

    Do people really need to wait until they are threatened with a lawsuit to go to the agency and ask them to fix it? Respectfully: that’s ridiculous.

    Now let’s say instead X is granted a patent on “a method of receiving an insurance quote wherein the quote is received wirelessly by a rectangle-shaped device with rounded edges.” That claim is no less junky, of course, to anyone who understands patent law. Do people need to wait until they are sued before they can ask the agency to fix the mistake? That’s just as ridiculous.

    People can now attack the validity of patents without even the remotest constitutional standing?

    You are forgetting that these “properties” are nothing more than rights to sue handed out by an overtaxed government agency that has gleefully ignored Constitutional limits on its power for decades. Where on earth did the PTO get the “Constitutional right” to hand out “do it on a computer” or “do it on the Internet” patents without making the slightest effort to understand why computers or the Internet were built in the first place???

  21. 54

    MM, I see. People can now attack the validity of patents without even the remotest constitutional standing?

    Name me anyplace else in American jurisprudence where people who have no interest in a matter have standing to put their two cents in? Not even the government has standing to seek to revoke a patent.

    Why no one has raised the government’s Article III standing in an appeal from a reexamination or IPR is beyond me. Even the Federal Circuit has agreed that Article III standing is required in an appeal.

  22. 53

    do you really believe that Supreme Court would find it even remotely acceptable that the trial jury include even one member of the grand jury that issued the indictment?

    No. But that’s because the Supreme Court understands that juries and judges are distinct and deserve to be treated differently.

  23. 52

    the petitioner can file a DJ action for invalidity.

    Only if he/she is threatened with a lawsuit first.

  24. 51

    Ned: there is the flip side of the coin where an accused infringer is using the PTO to tank a patent it could not tank in court — and to harass the patent owner with having to proceed on multiple fronts.

    Here’s a truly radical idea: maybe the patentee should dial back its expectations when (1) there is no evidence of copying and (2) the value of its patent is mostly a function of how well its legal team can manipulate the emotions of 12 clueless people.

    The use of the PTO for collateral attacks is too well established

    I missed the part where it became unseemly to ask the agency responsible for the mess to clean it up.

    Some folks fell asleep at the wheel (or worse) and a class of patentees was fed steroids for fifteen continuous years. Now it’s time for a serious haircut and these gazillionaires are behaving like three year olds.

    Nobody could have predicted.

  25. 50

    Not much of a “hazard” there Mr. Snyder.

    Maybe you want to come up with a better position against anonymous and pseudonymous posting.

    I will hook you up with my friend Publius.

  26. 49

    Ned, once again it is your “credibility” that takes a hit with your inability to be objective about your curse-ades.

    Everything (including 6 and Malcolm) “is a genius” when they happen to align with you, and nobody knows nothing when they do not.

    It is quite transparent that you lack basic objectivity and cannot tell the difference between the law as it IS and the Ned-IMHO law that you wish it to be.

  27. 48

    MM, of course people always pursue their self interest. This pertains just as much to willful infringers as to grifters.

    But you are right that the PTO is and has been a major part of the problem except under Dudas, who alone tried to do something about State Street Bank. Every other commissioner or Director, since the reference to Hotel Security was removed from the MPEP, has to be condemned to the extent they actively promoted business method and computer implemented patents on anything and everything under the sun but technology.

    Condemned is probably not sufficient. Banned from patent law, like Shoeless Joe and Pete Rose were banned from baseball, would be a better course. Perhaps an executive order might be appropriate here.

    Getting rid of that Advisory Committee ASAP is also a must.

  28. 47

    Why put a perfectly good idiom to rest?

    Oh, that’s right, then you will have to do more than parrot your short script and actually engage in (inte11ectually honest) critical legal thinking.

    Wouldn’t that be a hoot to see!

  29. 46

    MM, some of what you say might be true.

    Then there is the flip side of the coin where an accused infringer is using the PTO to tank a patent it could not tank in court — and to harass the patent owner with having to proceed on multiple fronts. The use of the PTO for collateral attacks is too well established and even taught in training courses to be denied.

  30. 45

    without conducting an independent review, how the frack are we going to know about whether the tanked inventions are meritorious

    Were Progressive’s tanked inventions “meritorious”? Of course they weren’t.

    The Federal Circuit is not helping, using Rule 36 affirmances.

    The Rule 36 affirmance means that the CAFC has nothing to add that wans’t already said by the Board.

    Many of the IPRs involve claims that are plainly ineligible anyway. This might be why the Feds are not reversing even though the PTAB may have gotten something wrong in its procedures.

    No doubt. Moreover, for nearly every instance in which the PTAB messes up some “procedure” resulting in zero change in the outcome (i.e., a tanked patent), one or more of the following happens: (1) the PTAB fails to tank a patent because it missed the best art/argument; (2) the PTAB fails to tank a patent that should be tanked because the PTAB applies procedural rule against a petitioner; (3) the PTAB fails to tank a patent that should be tanked because the patentee is obfuscating and should be permanantly barred from the patent system; and/or (4) the PTO grants upwards of 100 patents that should never have been granted.

    All this handwringing about “procedure” is just a smokescreen for the real “problem”: rich entitled patentees with junk patents are being taken to the cleaners and they don’t like that. Everyone knew the patentees would whine and complain when their PTO sugar daddy’s shoddy work was exposed and their junk patents were eradicated. This was all predicted.

  31. 44

    anon, you may be abstractly correct, but the problem with IPRs remains fundamentally an Article III problem.

    Under Marbury, the Supreme Court held that once a right for a period of time has issued from the executive, that the executive had no power to cancel it, even if it was issued by mistake. That was a matter for the courts.

    This holding was followed time and again, directly resulted in McCormick Harvesting.

    Furthermore, the Supreme Court repeatedly held that the executive did not have standing in court to challenge the validity of an issued patent. The last such case was decided just prior to congress authorizing reexaminations.

    Then we had Patlex from the Federal Circuit that all but ignored all this precedent from the Supreme Court.

  32. 41

    the ends never justify the means.

    This idiom has been used and abused so often here (and elsewhere). Can we just put it to rest?

    Sometimes the ends do justify the means. It depends on the specific “ends” and the”specific” means.

    If we step back and look at the larger picture you’ll see the PTO justifying burying its head in the sand (at best) or actively facilitating the granting of hundreds of thousands of incredibly junky patents because (wait for it!) the “ends” (“promoting progress” is what they’d tell you) justified their “means” (e.g., spotting the term “computer” or “online” or “wireless” and pulling out the rubber stamp). The complete lack of any sane examination procedure or any understanding of why subject matter eligibility concerns are important was apparently “justified” for years by the “ends” — certainly the patentees never complained! Meanwhile, the public was gifted with the IP equivalent of a toxic oil spill that will take years to clean up.

    But now see what happens when the PTO is forced by Congress (and third parties) to double-check its work: suddenly the patentees who sat buy and watched the system implode care very deeply that “everyone” (meaning people who believe they deserve even more patents than they already have) are given gold-plated due process.

    Go figure.

  33. 40

    MM, the petitioner can file a DJ action for invalidity. He or she is not foreclosed of a full and fair opportunity to litigate validity.

  34. 39

    MM, without conducting an independent review, how the frack are we going to know about whether the tanked inventions are meritorious? The Federal Circuit is not helping, using Rule 36 affirmances.

    Many of the IPRs involve claims that are plainly ineligible anyway. This might be why the Feds are not reversing even though the PTAB may have gotten something wrong in its procedures.

  35. 36

    Max, you have it wrong. The institution decision involves the same references and arguments as the final decision — just different standards. This is very much like an appeal.

    Even to the average 5-year old, what we have here is shocking.

  36. 35

    MM, do you really believe that Supreme Court would find it even remotely acceptable that the trial jury include even one member of the grand jury that issued the indictment?

    The system created by the PTO is, in fact, unheard of. Even in reexaminations, the examiner who decides to order reexamination is not the one who conducts it.

  37. 34

    Except it doesn’t – clearly your windmill chase against that type of examination protocol lacks any credibility, Ned.

    But hey, engage in your drive-by monologue ad infinitium as as nauseum long enough and you will “convince” the usual ec(h)osystem.

  38. 33

    Classic Malcolm and his AccuseOthersOfThatWhichHeDoes:

    Sometimes a comment just leaps off the page in its magnificent wrongness.

  39. 31

    Missed some formatting:

    MD: Nobody is suggesting that first instance judges also hear any appeal.

    Correct.

  40. 30

    MD: It seems to me that nobody is depriving anybody of an “appeal” instance.

    In fact, the petitioner is denied an “appeal.” If the PTO refuses to open up the IPR process to the petitioner, the petitioner can not appeal that decision. Once again, the “unfairness in the system” benefits the patentee.

    Nobody is suggesting that first instance judges also hear any appeal.

    Correct.

    If the petition fails, it is not as if this denial of the petition shuts off any further attack on the validity of the claims.

    It’s true that petitioner can file a second petition to address shortcomings in the first petition. But — if I may borrow the “logic” of the complainers here — it’s “human nature” for the PTO to be biased against the petitioner who struck out so badly the first time. Right? Who’s the expert on “human nature” here? Seems like there’s a million of ’em.

  41. 28

    Gah. Not sure how I reverse formatted that last bit. Let’s try again:

    If anyone has any evidence that some substantial percentage of valid patents are being unreasonably tanked by the USPTO, please present it. I’m not going to hold my breath, of course, because that evidence doesn’t exist.

    On the other hand, I’m certain that a great case could be made that the PTO isn’t granting enough petitions because, in part, the PTO continues to be willfully ignorant of subject matter eligibility issues. That would be very easy to do. In other words, the “unfairness” in the system undoubtedly benefits the patentee.

    Now, back to our regularly scheduled whining by a bunch of rich, entitled attorneys whose only concern in life is grabbing more patents, all the time, that are easier to enforce, at the expense of everyone else.

  42. 27

    MM, help please. Have I got it right? It seems to me that nobody is depriving anybody of an “appeal” instance. Nobody is suggesting that first instance judges also hear any appeal. There is an important distinction between a threshold decision, a final first instance decision on the merits, and a final decision on appeal.

    Take the decision whether or not to institute. If the petitioner wins, the case is then opened, not closed. If the petition fails, it is not as if this denial of the petition shuts off any further attack on the validity of the claims.

  43. 26

    independently digging into hard or close issues.

    Nearly all of the time in these IPRs there aren’t any “hard” or “close” issues.

    Nice try, though.

  44. 25

    Sometimes a comment just leaps off the page in its magnificent wrongness. Here is one such comment:

    the way the system is now structured, it is inherently unfair to patent owners.

    LOL. Try to believe it, folks. “Unfair to patent owners”. Now I’ve heard everything.

    Let’s get this straight: more patents have been granted over the fifteen years than in any previous time in history. The grant rate remains as high as it’s ever been. The Supreme Court has been doing whatever it can to dial the insanity down while the PTO does whatever it can (or does nothing at all) to maintain the bubble.

    As a result of the PTO’s rank incompetence and lack of any reasonable effort to search “computer related” “innovations”, there are literally hundreds of thousands of junk patents out there that never should have been granted either because they are anticipated, obvious, or ineligilble (among other reasons).

    So Congress creates the IPR system for post-grant review. As any reasonable observer would predict and expect, the patents that are reviewed by the Office with the assistance of a third party who isn’t inclined to simply roll over like PTO has for decades are being tanked. In nearly every instance, these tankings aren’t even close calls. The patents are d.o.a.

    The bottom line is that the “unfairness” in our patent system is not towards the patentee. As has been the case for years, the “unfairness” is towards the public who remains burdened with the endless reams of junk patents that the PTO hands out and will be shouldering that burden for years to come. It’s the public who ends up having to waste its time — typically at the point of a lawsuit — begging the PTO to undue the horrible (non)work they did in the first instance.

    If anyone has any evidence that some substantial percentage of valid patents are being unreasonably tanked by the USPTO, please present it. I’m not going to hold my breath, of course, because that evidence doesn’t exist.

    On the other hand, I’m certain that a great case could be made that the PTO isn’t granting enough petitions because, in part, the PTO continues to be willfully ignorant of subject matter eligibility issues. That would be very easy to do. In other words, the “unfairness” in the system undoubtedly benefits the patentee.

    Now, back to our regularly scheduled whining by a bunch of rich, entitled attorneys whose only concern in life is grabbing more patents, all the time, that are easier to enforce, at the expense of everyone else.

  45. 24

    This is a farce – the new rules will not help.

    PTAB judges get “credit” for productivity/quota by writing the opinions (“the #1 Judge”); not so much for the reviewers (#2 and #3). Because humans predictably and consistently act in accord with their economic incentives, the #2 and #3 largely phone it in and as a practical matter more just a back stop for crazy things happening, as opposed to independently digging into hard or close issues.

    So as long as the same judge is #1 for the Institution and the Determination, the problem will persist – doesn’t matter if you change out the potted plants.

  46. 23

    A number of losing-patentees have argued that the process creates an improper bias or implicit presumption against the patentee during the trial stage.

    Isn’t this process (i.e., the same jurist(s) determining both a “likelihood of success” and the eventual result) already pretty well established in our legal system?

    Answer: of course it is. There is no “improper bias” or “implicit presumption against the patentee” here. What’s going here is just the usual: the worst patentees ever are whining because their junk patents (which should never have granted in the first place) are getting tanked.

    Also, just for the record, exactly who are these “losing patentees”? That seems like relevant information, given the losers we know are out there.

    Who has the information about the identify of these paranoid, entitled “losing patentees” who feel tha the whole wide world is biased against them? Please share.

  47. 22

    Dennis, in case you haven’t been following the Discussion between Random and me regarding priority and CIP’s, but this discussion illustrates one more time that a major cause of bad patents issuing from the patent office is compact prosecution by itself.

  48. 21

    anon, they are not “taking” anything. They are revoking or cancelling. The patent no longer exists. There is a difference.

    The government has a right to “take” provided it pays. It has no right to cancel a right once granted. That principle was established in Marbury.

  49. 20

    Max, Efficiency should have no bearing on the issue when an appeal is involved. The point of the appeal is singular — a fresh view.

  50. 19

    But Ned, is there not an insoluble problem when it comes to deciding whether you get your appeal as far as the next court up? Either the court below decides, or the court above. And if the court above, then has it already made up ist mind to some extent?

    Since the EPO started in 1978 there has been a debate whether the primary examiner in the 3-member Examining Division prior to issue should also be the “First Member”, the case Manager, of the 3-member Opposition Division that decides whether any post-issue Opposition shall succeed. Some think she should be, for efficiency. Others think she should not be, to shut out prejudice. The debate continues, perhaps because even after 30+ years it is not clear that retaining the same case Managing EPO Examiner is bad for justice. After all, the EPC requires at least two members of the Opposition Division to be new to the case and they should be able to deal with any maverick case Manager should they not?

  51. 18

    Night, the people involved in the institution decision must be totally separate from the people making the final decision. The way the IPR works is that the institution decision virtually decides the case because the evidence and arguments pretty much remain the same at the time of final decision. It is wholly inappropriate to have anyone involved in the decision to institute to be involved in the “appeal.”

    Even a five-year-old gets this. Assume his mommy accuses him of stealing candy from a baby. He claims a right of appeal. So who does he get the appellate judge? His mommy.

    Tom Brady also gets it. Fortunately, Brady as a right to his day in court with a real judge. Congress took that right away in enacting the AIA.

  52. 16

    anon, using non standard language seems to be a feature of the AIA. Nothing like chaos enhances the reliability of patent rights and encouragement of invention, right?

  53. 15

    Max, one might ask whether a system of justice is best served by having the same court review its own decision.

  54. 14

    I do not see how having one judge making the decision to institute the proceeding really fixes the bias problem. The post indicates that judge will still be on the panel along with the perceived problem being addressed the bias of the judge. With the 1+2 system it seems to me you might exacerbate the problem and get at least the perceived outcome in other board proceedings (appeals) where one judge is really assigned the case and the other two just make up the panel and the one judge is the only one who has any real in depth understanding.

  55. 13

    Maybe Night Writer was confused by the introduction of a concept that the introducer then seems to blindly engage in…

    Ned does that quite often, from his introduction of the work of Judge O’Malley to the work explicating the difference between holding and dicta (and the danger of letting dicta “become law”).

    You too tend to do that.

  56. 12

    Sister anon, please stop the inappropriate posts.

    We’ve been through this before – it wasn’t amusing then either.

  57. 9

    I agree Ned. The important point is that the other two act like reviewers. Your work has to be enough (the one) so that the other two are willing to put their names on it too. It is a lot more fun being able to do things all by yourself, but 3 will turn out better work product.

  58. 8

    Bearing in mind the notorious confirmation bias, I recommend some reading. First the well-known Kahnemann “Thinking Fast and Slow” then Jonathan Haidt for the very powerful “Elephant and Rider” metaphor:

    link to en.wikipedia.org

    and then there’s an academic research paper that looks at how that works out in the field of judging disputed cases. Just as you might imagine, after reading the books. Question: did the authors get the result they were expecting all along, ha-ha!

    What the sources all say is that the best way to minimise aberrant decisions is to have the case manager persuade two sceptical colleagues on the bench. One rider isn’t enough to turn a charging elephant. But two other elephants can do it.

    So, more important than whether a new case managing judge takes over is whether the case manager has to justify her thinking to two seriously engaged colleagues of at least equal rank (pushing power).

    Reverting to the egregious “confirmation bias”, one of the books relates the (true) story of Prime Minister Salisbury standing up in the British Lower House and declaring (more or less) “I will be more than happy to look at all the evidence you’ve got which confirms the decision I am taking”. As an advocate at the EPO, having read that story, one routinely has the feeling that it’s happening all over again. Any such evidence is seized enthusiastically by the panel. Any pointing in the other direction runs into a collective cloth ear.

    That might be because, once the panel of three have solemnly declared to each other, the day before the Oral Hearing, how they view the case, not one of them is going to lose face, by admitting to the other two, after the Oral Hearing, that they have changed their mind (or even that they now have misgivings they didn’t have before the advocates spoke. In that respect, a single judge (as in England) gives you much more of a fighting chance to win the case at an Oral Hearing.

    But hey, what do I know. I’ve only done a modest number of oral proceedings at the EPO in disputed high value cases over the last 30 years. Some of my senior colleagues have done thousands of them by now. See if they have any sensible advice for you.

    There is much criticism of the EPO, for the expense of using a 3-member panel for all decisions. Because EPO examiners are drawn from 38 EPC Member States, a 3-member panel is useful, to steer towards consistency. THe USPTO is trying to balance fairness and justice with efficiency and economy. I think it has read about the Elephant and Rider and I think it’s proposed compromise might be the best compromise.

  59. 7

    You do realize that one of the sticks in the bundle is missing betwix the two, eh?

    You also realize that patents, being meant to be – by purposeful design – fully alienable property, matters not the “who” in relation to the what, eh?

    You should be able to get these things right by now, Malcolm.

  60. 6

    A number of losing-patentees have argued that the process creates an improper bias or implicit presumption against the patentee during the trial stage.

    Isn’t this process (i.e., the same jurist(s) determining both a “likelihood of success” and the eventual result) already pretty well established in our legal system?

    Also, just for the record, exactly who are these “losing patentees”? That seems like relevant information, given the losers we know are out there.

  61. 5

    According to the Congressional record, the standard for institution was “supposedly” a higher standard – not a lower one.

    But they conveniently used non-standard language in describing that standard (as I pointed out at the time)…

  62. 4

    Les, the designers of the system did not consult patent owners, it appears, or if it did, ignored them in favor of the Big Infringer lobby, and we know who they are. The system is rigged against patent owners, big time.

  63. 3

    The Director should have a senior experience examiner determine the 314(a) issue. The full panel should determine 315 or 312 issues that might arise. These should be decided before 314(a) is decided.

    What is paramount is that the panel making the final decision on the evidence have nothing at all to do with the institution decision. Human nature being what it is, will tend to defend the initial decision even though the standard of proof is extremely low — not even a preponderance.

    Imagine that a jury made the decision both to indict (probable cause) and to determine the verdict (beyond a reasonable doubt)? The Supreme Court would have a field day on that one, would they not? Human beings are human beings, and the way the system is now structured, it is inherently unfair to patent owners.

  64. 2

    I’d be interested to know what the numbers are regarding how many institution decisions are split vs. unanimous? Those seem to be the decisions in danger of coming out a different way if there is only one judge involved.

  65. 1

    What is the benefit to keep the one judge on? The other two still have to repeat the legwork. Or… they could just punt and copy off the one judge.

    Right.

    There needs to be a bouncer at the door that keeps out the riff raff and a complete staff behind the bar serving drinks and listening to sob stories.

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