Federal Circuit Now Receiving More Appeals Arising from the PTO than the District Courts

By Jason Rantanen

Appeals arising from district court patent infringement cases have historically made up about a third of the court’s docket.  In 2011, for example, appeals from the district courts constituted 33% of appeals filed, while appeals from the PTO were about 9%.

Caseload by Category - 2011

(Graph from http://www.cafc.uscourts.gov/the-court/statistics)

That distribution no longer holds.  During Fiscal Year 2015 (which ended on September 30, 2015), appeals from the PTO exploded, to about a quarter of all appeals filed.  Appeals from the district courts also rose, but at a slower pace.

Caseload by Category - 2015

(Graph from http://www.cafc.uscourts.gov/the-court/statistics)

That trend has continued, with appeals from the PTO now overtaking appeals from the district courts.  The below chart shows the annual number of appeals filed from 1997 to the end of January 2016.  As of January 29, the court had docketed more appeals arising from the PTO than the district courts.  If this filing rate holds true for the rest of the year, we can expect almost as many appeals from the PTO to be filed as there were appeals from the district court last year.

Appeals docketed through Jan 2016

(Data source: http://www.cafc.uscourts.gov/the-court/statistics)

My primary hypothesis for this dramatic rise is relatively simple.  Since the implementation of the America Invents Act, there has been an explosion of inter partes review proceedings at the PTO.  In inter partes review proceedings, there is inevitably a winner—and a loser.  Given the relatively small cost of filing an appeal, and the current uncertainty as to outcomes on appeal, parties that are losing on IPR are filing those appeals.  There are other things going on, particularly the increased thoroughput of the PTAB, but I suspect that many of the appeals from the PTO are of IPR proceedings.

Whatever the cause, the ramifications of this increase in appeals from the PTO are quite significant.  If I’m right that most of these appeals from IPR proceedings, they’re likely to be hotly contested by both parties.  In addition, each of these cases involves its own invention and technology.  So I see this as a substantial workload increase for the Federal Circuit judges and their clerks.  One thing to take a look at going forward is how the Federal Circuit is going to be handling these appeals.

(I don’t have an explanation for the drop in appeals from the district courts, other than possibly the decline in patent cases filed and pending that occurred in late 2014 and early 2015. It could also be due to more cases being resolved through the IPR proceedings—although as others have observed, only a fraction of patents involved in infringement litigation are also involved in IPR proceedings)..

171 thoughts on “Federal Circuit Now Receiving More Appeals Arising from the PTO than the District Courts

  1. Great statistics, it seems that persons adversarial to a patent are more inclined to try their luck with a post-grant proceeding than they were otherwise willing to do with district court litigation. This is just the appellate lot. I am not sure if that is a good or bad thing…

  2. Re the complaints below about pre-appeal review requests. They are purely optional, not a mandatory additional prosecution layer. Yes they often get short shrifts in the examing corps. But they are supposed to be short simple explanations of indisputable legal or factual errors, not a re-argument with the examiner.
    For the subject of this blog the interesting question is what % of pre-appeal conferences have eliminated appeals, and thus contributed to less Fed. Cir. appeals from PTAB ex parte appeal decisions?
    An obverse issue is the number of examiners that fold and allow an application rather than do the work of writing an examiner’s answer to the appeal brief once one is filed? Another issue is an alleged lack of any feedback consequences for examiners regularly getting reversed by the PTAB, or getting rewarded for being regularly sustained by the PTAB?

    1. Paul,

      All of the statistics you ask about are available. Ron Katznelson has published plenty of information on them. It’s been reported for several years now that about 75% of the cases in which a pre-appeal and/or appeal brief are filed get re-opened by the PTO.

      1. But lumping “pre-appeal and/or appeal brief” into one statistic is lumping together two very different things with very different statistics.

        1. Not really. Whether you pre-appeal or just appeal, a conference is held and, usually, for the first time in prosecution the examiner’s rejections are reviewed by somebody else (or in the case of a junior examiner whose actions are being signed by a SPE or primary, by somebody other than the SPE or primary telling the junior what to write). And in about 75% of those cases (i.e. pre-appeal or appeal), the cases are re-opened. In either case, what the statistics say about the quality of rejections that are reviewed for purposes of appeal is: the quality st!nks.

    2. Pre-Appeal Brief reviews are questionable. They seem to have gone downhill. At one time, I won a lot of these. Now, if your argument is not absolutely clear-cut (pretty much any 103 argument since KSR will not be), you don’t win. At least that’s been my experience.

      I’m not sure what the solutions are to a lot of these issues, especially since I’ve never worked at the PTO and only have a limited understanding of its inner workings.

      My outsider’s impressions of what I’d like to see:

      1) More time for Examiners, especially in particular fields. Encryption should get several times the amount of time as other fields, for instance.

      2) More training for Examiners on how to make a good argument. I find many times I have to read in between the lines of an Examiner’s argument in order to determine what the Examiner is saying. And this drives my foreign clients crazy, when I say things like “You know, I think the Examiner is really implying X [or reading the claim language like X]” — where X is nowhere in the text of the rejection — “and therefore we might want to amend the claims to clarify the claims on this point”. The foreign clients don’t seem to understand the subtleties of US patent prosecution, and I can see why.

      3) Less reliance by Examiners on useless rejections such as making us change “A method as in claim…” to “The method as in claim…” or to add text in boxes of drawings (which foreign clients specifically don’t do), or making us change trademarks into capital letters, which are simply wastes of everyone’s time, money, and energy. Take longer searching and making good arguments, instead.

      4) More retention of good Examiners and the ability to train Examiners in certain art areas. Sometimes, Examines make arguments such that you know the Examiner has no clue what is really going on in an art area.

      5) Less reliance on searching for keywords by Examiners. It seems a lot of rejections occur simply because one reference uses a word in your claims.

      Of course, the CAFC and SC could help, by clarifying KSR and Alice, since these are basically unreadable and make little to no sense.

      1. “1) More time for Examiners…”

        Would not improve quality one iota. Not even a 0.0000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000001% improvement.

        Kappos gave all the examiners an extra two hours several years ago. Have you seen any increase in the quality of the OA’s you’ve received?

        1. “Kappos gave all the examiners an extra two hours several years ago. Have you seen any increase in the quality of the OA’s you’ve received?”

          One hour bro. Which is effectively 1/20th of the total time. Just how much of an improvement would you expect to see from such an over generous “gift”?

          1. IDK, if you got 5% more time would it be unreasonable to expect a 5% increase in quality?

            My point is, and has been for like the past 8 years: increasing the time per BD, whether it’s 5 minutes, an hour, two hours, doubling the current expectancies, tripling them, heck, cubing them to the infinite power, is not going to produce any “measurable” increase in “quality.” Examiners are still going to do the ol’, “Well, the art doesn’t have it, but the examiner takes Official Notice that it’s inherently obvious. See MPEP whatever and In re Boilerplate.”

            No amount of extra time is going to stop. Giving the examiners more time is only, let me repeat that, only, only, only, only, going to result in the same old same old Office Actions from examiners who find themselves with more time to go to the gym, check their stocks, run their side businesses, and/or go to the movies over on Eisenhower Avenue. I know that. You know that. You know that I know that. PTO management knows that. POPA leadership knows that. We all know that. So everybody, for the love of G#d, stop saying examiners need or should get more time. Jeebus.

            1. I’ll admit, as an examiner, the “in re Boilerplate” made me laugh. I have seen people passing around yellowed sheets of paper, copies of copies so blurred, from at least 20 years ago, of paragraphs some examiners still just cut and paste into actions with no idea what they actually say (or whether they are or ever were good law).

              1. I had an examiner object to my drawings because he claimed that one of ordinary skill in the art needed to be able to make and use the invention just by looking at the drawings. Cited me an unpublished Commissioner’s decision from 1901.

                That examiner is an SPE now.

                Yay!!!!!!!

            2. AAA JJ My point is, and has been for like the past 8 years: increasing the time per BD, whether it’s 5 minutes, an hour, two hours, doubling the current expectancies, tripling them, heck, cubing them to the infinite power, is not going to produce any “measurable” increase in “quality.”

              Why is “measureable” in quotes?

              All other things being equal, if you give people substantially more time to perform a time-limited task, they are going to do a better job at that task.

              Kinda weird to see someone questioning that. Then again, we all know the habitual PTO bashers around here will spout all kinds of transparently ridiculous nonsense if it makes them feel like a big tough man. You rock, AAA JJ! You’re super cool.

              1. Malcolm, the one who uses more quotes (and uses them haphazardly) is asking why someone else is using quotes…

                He funny.

                (And Malcolm, clearly AAA JJ pointed out that your “all things being equal” simply does NOT apply)

                And of course Malcolm tops it off with the A.O.O.T.W.M.D.

                “Go” “figure” “folks.”

                😉

            3. “IDK, if you got 5% more time would it be unreasonable to expect a 5% increase in quality?”

              That depends on whether or not everyone was already struggling to keep up or not. But, meh, I’m not exactly sure that 5% is going to be “felt” or “observed” in the real world.

              Meh idk about all the rest bro. It might, it might not. We’d just have to see.

                1. It may well be true. The issue that you’re looking at is just plain ol granting more time, and you’re saying they’d just waste it.

                  Perhaps.

                  That doesn’t mean that an increase in time wouldn’t be a necessary condition before people can even think of imposing more draconian quality measures where, idk, managers are trained in evidence and all the other little nuances and just on and on and then they impose stricter quality.

                  At present, even if there was management enough and which was trained enough to make sure every last oa that issued was suuuuper qualityrific, it wouldn’t matter. They couldn’t impose their ultimate quality will on the whole corps due to people not actually having sufficient time to satisfy a higher quality mark anyway.

                  If you wanted to, assuredly, measurably increase quality then you’d have to a. make sure that time was increased (as a necessary condition) b. make sure superrific trained people were heading the operation and actually managing c. change the culture in several ways, including to making it a culture of entitlement d. make sure someone who is an expert in whatever tiny sub-field an application is in reviews the OA and e. negotiate a tougher clear error standard and a better way of using clear errors that are charged (other than “getting someone in suuuper dooper troublz). And that’s at bare minimum, imo.

                  1. 6 – you carry the “plain” assumption that more time would be required to do things right.

                    Why are you making that assumption?

                    AAA JJ might point out (I don’t want to speak for him) that there is already enough waste in the “cut-n-paste” current timeframes that could be eliminated for the inclusion of “doing things right” without first adding more time.

                  2. I’ll tell you one more time about the “re-engineering lab” experiment the PTO did in the early 90’s. Took a bunch of examiners, told them to do whatever they wanted when examining cases. Get real creative. Think outside the box. Blow everything up. Challenge all assumptions. Re-engineer the whole process from the bottom up.

                    Yeah, man. It was cool. It was innovative. It was happening. All the cool kids wanted in.

                    You know what all the volunteers did?

                    Nothing. They sat around with their thumbs up their b#tts when they were actually in the office. And played lots of golf. Lots of golf. They didn’t do jack sh!t. They were given unlimited time to work on their cases. And they didn’t do a f#ck!ng thing. Nothing. Nothing. Nothing. Nothing. Nothing. They did absolutely nothing.

                    So keep telling me that examiners need more time. Keep telling me that giving examiners more time will improve quality. And I’ll tell you that the PTO has an entire year’s worth of data of how much quality will improve if you give the examiners more time. Even unlimited time.

                    None.

                  3. I tell you about several necessary conditions to improve quality and you harp on an experiment done 20 some years ago that was naught but an experiment in LACK OF MANAGEMENT?

                    I don’t even know why I should bother to respond, you’re obviously not even discussing the same topic.

                    But to be clear, your cited case study in what happens when you take management away has no bearing what so ever on the proposition that more time is simply a necessary condition, amongst many, to improve quality.

                  4. “6 – you carry the “plain” assumption that more time would be required to do things right.

                    Why are you making that assumption?”

                    It isn’t so much an “assumption” as it is an “observation”. An observation of those around me, and of myself, and of the work we’re being asked to do, and how long it actually does take. And also the results of some experiments I’ve been running myself.

                    We’re just ordinary humans anon, we’re not legal experts, we’re not super great at drafting or even interpretating legalese, and we’re not superhuman know it alls about every tiny sub-subject that comes before us. Our applications come in, and they’re generally directed, these days, to some of the most technically complex and often obscure aspects of someone’s “magnum opus” (or some team). All with de minimus information provided. The level of ridiculous complexity and obscurity of subject (and thus also ignorance in the office about said subject that can’t always be remedied by a google search etc.) is just gigantic. To truly “do some of those applications” technically correctly would take a gigantic amount of time to even do a bare minimum examination, much less a “full examination” as you would like, including all-service search every one of the hundreds of sub-features separately searched.

                    Likewise, it takes a lot of time, and a huge amount of expertise (at the intersection of drafting and knowledge of the art), to be able to execute an advanced maneuver like what we’re technically supposed to do, and point out pretty much every thing that we judge they can have a patent on (hopefully in first action) that hasn’t yet made its way to a claim. Or, in the alternative, to bring the expertise needed to get the claims correctly drafted to meet what I’ll refer to as the “bureaucratic standard” (what language is acceptable to bureaucrats signing cases to limit the case down to only the subject matter that will be allowable).

                    And to top all that off my own personal experimenting with those things for the last many years shows as much. Those things take time, expertise, and good management, unless the individual is sufficiently self-motivated, and even if they are good management is still a requirement or else management will put a dampner on the work being done. And, to top that further off, all doing all of those things will get you is less promotions. Not doing them = promotions and money and status (and presumably maybe even womenz?). Somewhat, I can say that this might be the correct way for things to be, because doing all those extraneous searches and doing this and that, end up, all too often, just being “waste”. As is the examination of 90% of dependent claims.

                    “AAA JJ might point out (I don’t want to speak for him) that there is already enough waste in the “cut-n-paste” current timeframes that could be eliminated for the inclusion of “doing things right” without first adding more time.”

                    “Could be”, perhaps, but even presuming it is so (which I do not for the above reasons), that would require management. A precious commodity that is not overly abundant. Examiners aren’t going to magically become their own perfect managers. Expecting such is ridiculous.

                  5. You contradict yourself and then hide behind “management.”

                    Not that surprising then that you neither want to take responsibility for the job that you are paid to do (as opposed to the metrics of that job) nor want to have the focus too closely on your role in not getting that job done in any true sense of the word of quality.

                    Your “womenz” comment is just the old misogynistic 6 shining through.

                    Maybe instead you want to pay more attention to that “technically we are supposed to do.”

                  6. “An observation of those around me, and of myself, and of the work we’re being asked to do, and how long it actually does take. And also the results of some experiments I’ve been running myself.”

                    I seem to recall you boasting many, many times here about your ability to find “killer, knock-out 102(b) prior art with a 5 second Google search.”

                    What happened?

                  7. “What happened?”

                    I learned the difference between finding a 102 for the claim(s) and in finding a 102 for the whole application. And I’ve been experimenting with trying to actually do compact prosecution as it is written on paper.

                    Sure, I can still find a 102 for dam near anything if I’m going all balls out bureaucratically acceptable “BRI”. And I can find 102’s for many claims even under more narrow constructions (as in, what they’re actually trying to say in the “attempt to put the invention into words” aka the claim), though obv not as many. But that’s quite different from finding the totality of subject matter of the whole application, which is pretty much never done in my art. Maybe 1% of the time or never depending on your career.

                    I’ve discussed that also for years, where you been bro?

                    Something did change in so far as I’ve been experimenting with trying to see what it would take to go ahead and put the application into condition for allowance in terms of subject matter, definiteness and bureaucratic correctness etc. It can be done, usually, with good management behind you. It cannot be done with bad management behind you, period. Indeed, it could be done to an adequate settlement on first action in the lion’s share of cases. But it takes enormous expertise and time (not least of which because you have to, have to, have to, complete the search as to the overall invention entirely, AND be sure to complete a search as to whatever you’re proposing to change in the claims), which not even most SPEs have. Though not because the SPEs don’t have the experience basis to do it, it’s because they lack for motivation to try (and to spend the time to), and fail a few 100 times, and learn the tricks of the drafting trade to where you actually have the ability to robustly accomplish the goal on a routine basis within something approximating an acceptable amount of time. What’s worse, it can result in outright waste, because whatever suggestion you’re thinking of adding in there (esp if you’re thinking about adding a whole new limitation/element instead of being more particular about an existing limitation) also ends up being shown in some art, and thus the whole proposal you were thinking about making goes down the tubes and then you’re back at square one, just having wasted time.

                  8. “You contradict yourself and then hide behind “management.””

                    You’re obviously not paying attention if you think that anon. Or you don’t understand the words coming out of my mouth.

                  9. I’ve discussed that also for years, where you been bro?

                    LOL – in other words you are also backtracking from your previous view that you can just do key word searches on the claims and not pay any attention at all to the specification (of which I have routinely schooled you that such a view is clear error)….

                    You must have gotten a new “boss” who finally set you straight.

                  10. “…, where you been bro?”

                    Responding to an endless stream of rejections that go something like this: The references don’t show anything that’s actually claimed, but the examiner takes Official Notice that it’s inherently obvious to optimize the prior art.

                  11. “Responding to an endless stream of rejections that go something like this: The references don’t show anything that’s actually claimed, but the examiner takes Official Notice that it’s inherently obvious to optimize the prior art.”

                    Yeah my buddy in the compooter arts was asking me about a restriction he did where they traversed and he apparently just totally neglected to put the “body” of the restriction explaining what the restriction actually was in terms of method/device, unrelated device etc. into the actual restriction. We’re hoping they just cancel the withdrawn claims and proceed to issue :) Oh compooter arts, they so funny. He’s going into the 2nd part of the program btw. lol the program.

                2. “I tell you about several necessary conditions to improve quality and you harp on an experiment done 20 some years ago that was naught but an experiment in LACK OF MANAGEMENT?”

                  Repeat the experiment today. Take 100, 200, heck 1,000 examiners and give them unlimited time. Won’t change a thing about what I said. Won’t improve quality one iota.

                  “I don’t even know why I should bother to respond, you’re obviously not even discussing the same topic.”

                  We’re talking about whether the examiners need more time to examine the cases. And whether giving them more time would result in an increase in quality. Seems like the same topic to me.

                  “But to be clear, your cited case study in what happens when you take management away has no bearing what so ever on the proposition that more time is simply a necessary condition, amongst many, to improve quality.”

                  I disagree. More time is not a necessary condition to improve quality. I agree more training wold be helpful to improve quality, but simply giving more time is not going to improve quality.

                  Why? Because the examiners have been trained to, like robots, cite In re Boilerplate when they see a claim limitation like “…between X micrometers and Y micrometers.” Giving them more time is not going to change this behavior. It’s not like the primaries and the SPE’s and QAS’s are going to go actually read In re Boilerplate and do an analysis of the facts of that case with the facts of the application and make a judgement as to whether the rationale is applicable. Why? Because they’re not trained to do so. And I seriously doubt they would even if they were. They’d more than likely just say, “What’s that form paragraph about change in size?” and cut and paste it in the OA. Why? Because there are no consequences for doing that. Or doing it wrong.

                  So no, more time is not a “necessary condition” to improve quality.

                  1. “Take 100, 200, heck 1,000 examiners and give them unlimited time.”

                    Give them unlimited time, good, attentive and better trained than today management, instructions to get the case in condition for allowance asap, instructions to try to draft them an allowable claim if possible, and instructions to an overly robust search, and maybe have some attorneys come in and give talks on the law (all the later ones to instill the culture of entitlement), and finally do all this to a new class of trainees squirreled away from the normal corps and do the final evaluation 4 years into employment. Oh, and adjust the clear error guidelines to be more strictly and easily enforced but lesser in effect on the individual. You will see at least a slight increase in quality. At least that is my contention.

                    But, it probably isn’t worth the effort/$$$ and cannot be replicated across the corps anytime soon.

                    “but simply giving more time is not going to improve quality.”

                    That is not my contention, so you can set aside the straw man already.

                    “Why? Because the examiners have been trained to, like robots”

                    Yeah that isn’t really all that big of a deal, usually just move it up to the ind, contest it, and get your allowance. And anyway, those situations aren’t that prevalent. And there is even less of a prevalence if you consider that going those amending routes are generally not even the best way forward for the application. But you’re right that we’re taught to do those sorts of things and they’re hard hard hard to root out. Heck they just now amended the part about “optimization” to reflect the law in the MPEP, when the law changed back with KSR coming out. Indeed, I do them some myself, because signatories insist (and if they insist then it’s all “insubordination this and insubordination that” blah blah if you don’t). But even so, most people seem to understand that if they really want that subject matter they just move it up. If that’s your biggest quality complaint, that the PTO behave as if they’re not legally trained in legal matters, whooptie do bro. That’s the least of our quality concerns and the hardest/most costly to remedy.

          1. IDK. Of course, it’s been pointed out many times that the “one size fits all” model the PTO uses doesn’t work. Some apps require more time, some less. Every application should have its own expectancy. There’s plenty of data that would allow the PTO to figure it out. Would the calculation of each and every expectancy for each and every case be perfect? No. But it would be better than the system they have now. The PTO is unwilling to do it though. Why? Again, IDK. The PTO loves charges extra page and extra claim fees on the theory that “more pages and claims require more examining resources.” But they’ve never given applicants, or examiners, what’s been paid for: more examining resources. So they’ve been charging for something, pocketing the money, and then never delivering what was paid for. Great scam they’re running. If customers were paying you for something and you never delivered it, but they kept paying you anyway, would you ever deliver?

            1. “The PTO is unwilling to do it though. Why?”

              First and foremost I would state that it is likely because any such “algorithm” or whatever that was being used would quickly balloon the examination times into the stratosphere over the course of a decade or two. If they implemented it in the 90’s then the time I have now would likely be double what it actually is.

              “So they’ve been charging for something, pocketing the money, and then never delivering what was paid for. ”

              You say “pocketing” as if the money goes into their personal pockets. It goes into the general operating fund like everything else. Although yes, I do overall agree with you that it is kinda scammy. But why are you and others not down at every town hall holding Lee’s feet to that fire? Every single month? They’d get on it if you guys came en masse, btching. The real issue there is that the vast mass of people appear just glad to have the office doing the job they already are. Or at least that’s how it seems when I see them irl.

              1. Your “balloon into the stratosphere” carries the assumption that the examiner remain at the knowledge level of yesteryear (and just is not cognizant of any movement of the state of the art).

                This assumption is a major flaw in your understanding of your job, of innovation, and of the applications submitted to the patent office.

              2. “But why are you and others not down at every town hall holding Lee’s feet to that fire?”

                Because I don’t think the examiners need more time. I’m fine with getting my 20/3 examined. I don’t pay extra claim fees, so I don’t care enough to spend my time at every town hall meeting.

                1. Good times then, why bring that subject up all the time on here? Because it’s a tired old trope you can’t let go of. Just like everything you go on and on about. Your positions practically never change, because you never seem to learn anything new :/

                  1. If his views “never change” – and yet still fit, the problem is not with him and his ability or otherwise to “learn anything new

                  2. If they had ever fit then that would be fine. He has about as much understanding of the office as you’d expect from someone that did a few years here and that’s it. Just like you have about as much understanding of the office as someone with 0 years experience here.

                  3. You moved the goal posts 6 – Now you want to claim that they never fit. And then that things have changed from that “never fit”

                    Your problem of course, is that what he states is just too accurate for your convenience.

                    Thus you react as you have been reacting.

                2. I did more than a few years there. And I still have many friends who are examiners, SPE’s, APJ’s, etc. that I’m in contact with on a daily basis. I know what goes on there, 6. Even better than you do.

                  And I bring it up all the time because the examiners posting here, all the time, bring up the old “WE NEED MORE TIME!!!!” trope. Your positions practically never change because you never seem to learn anything new.

                  No, examiners don’t need more time. No, giving examiners more time will not lead to improved quality.

    3. “An obverse issue is the number of examiners that fold and allow an application rather than do the work of writing an examiner’s answer to the appeal brief once one is filed? ”

      Not many I doubt. It generally isn’t that much work to write one. It’s more of a PITA to go through the whole process than writing the answer.

      “For the subject of this blog the interesting question is what % of pre-appeal conferences have eliminated appeals, and thus contributed to less Fed. Cir. appeals from PTAB ex parte appeal decisions?”

      Hypothetically seems like 0 or nearly so. Supposedly the ones that don’t make it past pre-appeal are ones that would never make it by the board anyway.

      “Another issue is an alleged lack of any feedback consequences for examiners regularly getting reversed by the PTAB, or getting rewarded for being regularly sustained by the PTAB?”

      How about the people that don’t end up appealed at all anyway? But setting those people aside and addressing the ones you’re talking about, meh, nobody gets appealed that much I doubt, for it to matter all that much.

      1. Supposedly the ones that don’t make it past pre-appeal are ones that would never make it by the board anyway.

        Care to clarify…?

        Are you talking about the ones that are merely re-opened with the examiner mindset of “oh, this one is serious and I am going to have to do an actual examination”…?

        1. I’m stating that supposedly the ones that don’t make it past pre-appeal are the “bottom of the barrel” that wouldn’t get the board to affirm them anyway and thus wouldn’t go to the federal circuit anyway. Though some pre-appeals are decided on other grounds, like policy etc. we can set those aside.

          1. What you are stating is flatly contradicted by the empirical evidence (as supplied – and already referenced – by Ron Katznelson).

            Just because the facts are inconvenient for you, does not mean that you get to make up your own.

            As to “decided on other reasons… Policy… Set those aside”….

            I SAWS what you did there, and NO, that too is just not “ok.”

            1. Brosef you’re off on a crazy man’s rant about something that is easily agreed to by everyone. The evidence supports what I said. You’re just lost off in your own little la la land as usual.

    4. An obverse issue is the number of examiners that fold and allow an application rather than do the work of writing an examiner’s answer to the appeal brief once one is filed?

      Sounds like the old canard of “wearing down an examiner.”

      It is just soooo hard to “do the work of writing an examiner’s answer” that there just “must be” those patents granted that just should not be granted…

      /off sardonic bemusement.

  3. Something Ned might find interesting is that while the invalidation rates in the new reviews are still at around 75% or so, the actual number of reviews filed dropped by 50% or so. Thus, the actual number of patents being killed off would have thus dropped by 50% or so as well, if the rates hold.

    1. Yes, the % of IPR petitions denied [challenges to patent validity not even successful in starting an IPR and thus immediate victories for the patent owners] is a vital part of IPR reality. It varies considerably between different technologies. IPR settlements, and IPRs in which only some of the challenged claims are even tried, seem to have also increased. But Ned and others here will continue to ignore any such statistics and present only the percentage of IPRs in which the IPR WAS instituted, even if only instituted on one claim of the patent, and even if only some of the challenged claims were rejected.

  4. Maybe instead of offering $100,000 to people who “dare” to debate him in public, super serious person Erich Spangenberg could donate that money to one of those thousands of starving start-ups he and his cohorts are always whining about. You know, one of those poor starving start-ups that has a zillion dollar idea like “using a proxy server to test computer-implemented methods of sorting appliances by price” but is struggling with an IPR or just getting the application out of the PTO because “death squad.”

    He’d be like some white knight in shining armor coming to the start-up’s financial rescue. Nobody wants to listen to you debate anybody, Erich. Just get on your pony and ride!

  5. anony: A few years ago, they introduce the “pre-appeal” request for review. Another layer. Soon, with the ever increasing number of applications and examiners, there will need to be another layer, whether the “pre-appeal” grows, or through an expanded PTAB panel review, or a super-PTAB review board, or empowering a group of primary examiners to perform an appeal review, the bureaucracy will continue to grow.

    The “bureaucracy will continue to grow” until the system catches up with the massive historically unprecedented tidal wave of junk that flowed into and out of the PTO for decades while the same complainers about “bureaucracy” were popping champagne corks about all non-existent “progress” they were promoting and doing everything in their power to prevent the PTO from stemming the tide.

    I’ve said it before and I’ll say it again: can you imagine where the system would be right now without KSR, Bilski, Prometheus, and Alice (and, to a lesser extent, Myriad)? Instead of a plateau of grants at around 300K per year (!!!) we’d be looking right now at half a million patents/yr and exponentially growing.

    You think a shrinking bureaucracy could deal with that kind of growth? Of course it couldn’t. But a PTO that can’t handle the flood of junk being thrown at it is, of course, exactly the kind of PTO that the patent maximalists crave. And we all know why.

    The “do it on a computer” junk lovers should be happy that the air is being taken out of their balloon slowly. The bubble should have been poppped ten years ago but instead Kappos turned the spigot up to eleven. Heckuva job. Nobody could have predicted how that would turn out.

      1. Talk about your conspiracy theories…

        Is that what your fillings are telling you to do, “anon”? Go ahead and talk about them, if you like. Otherwise nobody will know what you’re bizarre non-sequiturs are supposed to mean.

  6. “anon” the fact that NO ONE “knows for sure” what is being discussed is exactly part of the problem.

    Anytime you and your patent worshipping cohorts want to get together and use your limitless whining energy to fight vociferously for either

    (1) ending examiner/applicacant telephonic/personal interviews altogether; or

    (2) recording every such interview; or

    (3) immediately publishing all submarine applications and ending the ability of US filers to request non-publication

    then I’ll be ready to listen to your super serious complaints about “transparency”. Otherwise you’re just a bunch of incredible entitled hypocrites who have taken relished and taken every advantage of “secrecy” for decades.

    The fact that this even has to be pointed out to you guys shows what an incredibly self-absorbed pack of cl0wns you all are.

    1. MM – I agree with ALL of the items listed in your response. Now can I have an opinion beyond “all patents are junk”?

    2. You do realize the fallacy involved in your attempts to equate two very different things, right Malcolm?

      There is a larger (non-patent) reason why negotiations are treated the way they are under law that you should at least try to be inte11ectually honest about in your rants.

    3. (3) immediately publishing all submarine applications

      Ever hear of the rule against post facto laws…?

      and ending the ability of US filers to request non-publication

      Ever hear of the Quid Pro Quo…?

      That you want to NOT understand the differences here is a bit startling.

      Oh wait, this is Malcolm – it’s not startling at all.

        1. Here’s how they go (if you don’t already know):

          A – did you get the agenda we faxed.
          E – yes. I looked at it. Whenever you’re ready.
          A – So, as background, the invention is (explains the invention by quoting the spec and referencing a figure).
          E – Okay.
          A – And we’re thinking that the amendment we sent you distinguishes the references you cited because they don’t have (feature we amended).
          E – I agree/disagree (the above cycle is repeated until they agree or agree to disagree).

          So, really, you don’t learn much. Except that now the Office is really pushing Examiners to attach the agenda to the interview summary. Hooray.

        2. There’s no good reason not to record them in 2016.

          Except for the fact that negotiations are different – and treated differently as a gen eral legal matter.

          Not sure why you want to pretend otherwise…

          Maybe you should brush up on your basic communication theory.

  7. I must say, I do like these split 2:1 Decisions. I think they are a rational response to a stare decisis system in which the top court has i) no idea how to lay down a quality precedent but nevertheless ii) delights in telling the Federal Circuit to think again.

    What would you do if you were a CAFC 3-member panel in this predicament?

    How about this:

    1. Debate, and arrive at a consensus which Litigant shall get 2 votes and which only one.

    2. Agree who shall write the arguments that favour the majority holding and who shall set down all the arguments that favour the minority line.

    3. Issue the Decision and the Dissent, to reveal to the superior court all the arguments, both ways, thereby putting that court in the best possible decision, when its turn comes, to get it more right than wrong.

    That, dear Readers, strikes me as a pragmatic and intelligent way to manage the orderly progress of patent law in the USA. Bravo!

  8. Has anyone studied whether, with an uptick in the number of appeals, there has been a similar uptick in the number of Rule 36 affirmances? Has anyone studied the use of Rule 36 generally? Does anyone know if other courts routinely summarily affirm without opinion?

    I have generally found the use of Rule 36 to be concerning, given the lack of guidance it provides to the parties and to the public (among other reasons).

    1. Jane: Has anyone studied whether, with an uptick in the number of appeals, there has been a similar uptick in the number of Rule 36 affirmances?

      I haven’t done anything remotely resembling a “study”, Jane, but I have been checking the CAFC opinion page on a near-daily basis for years. My sense is that there has been increase in Rule 36 affirmances over the past year and most of that increase is from affirmances of appeals arising from IPRs. It’s possible, though, that this impression is only the result of increased attention to that possibility.

  9. We all know where this is heading. Another level of PTAB like in Japan. Fear it. It will enable the director to have a lot more control on the outcome of the appeals.

    1. That would require new legislation, and nothing like that is even contemplated. Lets stick to what we actually have to deal with.

      1. Which is a F A I L of the AIA purpose of avoiding workload for the CAFC….?

        If the Office was meant to be an alternative, but is instead merely another layer and a front-loaded cost instead of a true alternative, then the legislative purpose simply is not met.

        ADD that to the already arguable point of Constitutional infirmity, and your beloved item seems really not so well off.

        1. Well they’d still be saving a bundle in judicial costs at the district court level one might think. That part has yet to be looked into it seems.

          1. You are likely correct.

            A few years ago, they introduce the “pre-appeal” request for review. Another layer.

            Soon, with the ever increasing number of applications and examiners, there will need to be another layer, whether the “pre-appeal” grows, or through an expanded PTAB panel review, or a super-PTAB review board, or empowering a group of primary examiners to perform an appeal review, the bureaucracy will continue to grow.

                1. A. Because it is still just a “pilot”. If we haven’t learned whether we want it or not by now then we never will.

                  B. It is operating outside the statutory framework. And further it takes the decision away from the signatory examiner. Also, it being outside the statutory framework is a reason why it being a “pilot” should never have been permitted in the first place as we’re essentially disobeying the congress (even if it is on a psuedo-procedural issue). If congress wants it in there, then let the congress put it there. The congress was very clear about the “overall procedure” that it wanted.

                  1. You do realize that you are quite clearly off on this – especially given your past views on the Tafas case, eh?

                    What exactly do you think is violating statute in the pilot?

                  2. “What exactly do you think is violating statute in the pilot?”

                    A. I didn’t say it is “violating” statute.

                    B. I said it is operating outside the statute. They make you file a notice of appeal, and then kick it to something other than the board, where the statute states you may appeal to.

                  3. I didn’t say… I said…

                    So your implication is meaningless, as the way the system is set up (necessarily having implementation rules “outside the statute” is somehow a problem for you…?

                    Not sure what you are whining about here…(the MPEP which is even lower must really be upsetting to you….)

                  4. “A. Because it is still just a ‘pilot’. If we haven’t learned whether we want it or not by now then we never will.”

                    The PTO wants to keep it. That much is clear. It allows the PTO to keep the flow of garb#ge rejections that would otherwise flow to the PTAB to a manageable level. It fits in very well with the PTO’s philosophy that the examining corps should be given unlimited opportunities to get it wrong.

                    Many years (2005’ish IIRC) ago I asked John Love at a bar association meeting if the “pilot program” would ever be made permanent and put into the rules. He said it wouldn’t. The PTO doesn’t want to propose rules because it would lead to a bunch of comments like DanH made, e.g., the program is unfair, opaque, could be improved by permitting applicant participation, etc. The PTO knows that all of those comments would be accurate, so why bother subjecting itself to them if they don’t have to?

                    “B. It is operating outside the statutory framework.”

                    No, it’s not. The PTO “shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law.” See 35 USC 1.

                    “And further it takes the decision away from the signatory examiner.”

                    Sometimes that’s the point. Lots of lazy, ignorant primaries whose only real “work” is the constant priming of the RCE pump need supervision. Same with chicken sh!t SPE’s who don’t want to allow anything.

                    “Also, it being outside the statutory framework is a reason why it being a “pilot” should never have been permitted in the first place as we’re essentially disobeying the congress (even if it is on a psuedo-procedural issue).”

                    Already addressed this mistaken point of yours.

                    “If congress wants it in there, then let the congress put it there. The congress was very clear about the ‘overall procedure’ that it wanted.”

                    Again, I already addressed this. See 35 USC 1. Congress is not going to get into the weeds of how the PTO sets the procedure for appeals actually going to the Board. The PTO’s position will be, “We have to do what we need to do to prevent unripe and inappropriate appeals going to the Board and backlogging the process.” That’s true. Of course the best way to do that is to send a clear message to the examining corps and the legions of useless GS-15’s that manage the examining corps: if you reject claims a second time, make sure the rejection is proper as applicants can appeal, and we’re going to let them by taking away your ability to pull shenanigans on applicants by re-opening, and we’re going to hold useless GS-15’s who sign off on these garb@ge rejections accountable.

                    Wont happen though. Ever.

                  5. “It fits in very well with the PTO’s philosophy that the examining corps should be given unlimited opportunities to get it wrong.”

                    You do know that the “philosophy” that you’re attributing to them having is actually the opposite of compact prosecution, a “philosophy” they came up with that is directly counter to what you’re talking about.

                    “Many years (2005’ish IIRC) ago I asked John Love at a bar association meeting if the “pilot program” would ever be made permanent and put into the rules. He said it wouldn’t. The PTO doesn’t want to propose rules because it would lead to a bunch of comments like DanH made, e.g., the program is unfair, opaque, could be improved by permitting applicant participation, etc. The PTO knows that all of those comments would be accurate, so why bother subjecting itself to them if they don’t have to?”

                    Lol, sounds illegal as a mo.

                    “shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law.”

                    Mmmm, yeah kinda a stretch to say that pre-appeal conferences fall under “management and administration of its operations”, and that part just talks about responsibility anyway. And it certainly doesn’t fall under any of those other things. Making a determination of whether or not to issue a rejection/patent is not a “administrative or management” “function”, what’s more, making a whole new program outside normal examination provided for by statute is definitely not an administrative or management “function”. 35 USC 3 would probably be a better bet for justifying it under the law. Even that is a stretch.

                    I mean, frankly it hasn’t even impacted me for a few years now so I’m not that concerned about it, but overall, yeah, still say it should go.

                    “Sometimes that’s the point. Lots of lazy, ignorant primaries whose only real “work” is the constant priming of the RCE pump need supervision. Same with chicken sh!t SPE’s who don’t want to allow anything.”

                    Certainly right about that, but there are good reasons for both of those things to exist. If they want to alleviate those concerns then they’re going about it arse backwards.

                    “We have to do what we need to do to prevent unripe and inappropriate appeals going to the Board and backlogging the process.”

                    If they’re sooooo “unripe and inappropriate” then there should be clear errors flying. But I hear you on why you’re saying congress won’t get into the procedural weeds on that. Still, that seems to be more of a reason to not have it than to have it, since congress would never approve a procedure other than that they laid forth.

                    “Wont happen though. Ever.”

                    Probably.

                2. … then there should be clear errors flying.

                  6, what do you mean, exactly? I agree completely that there should be clear errors flying. I’ll take you at your word that this doesn’t go on in your world, but I’m talking about cases, for example, where the examiner doesn’t even bother to address some of the independent claims, even after it’s been pointed out to him/her, or where the examiner makes obviousness arguments in defense of an anticipation rejections. In some of these cases, the pre-appeal comes back with “proceed to the Board”!

                  So, how do I get the “clear errors flying”? How is this supposed to happen, if nobody’s supervising the examiner, or if the SPE refuses to? Serious question.

                  I know you’re an advocate of telephone calls, and I try that too. But I’ve literally had, for example, an examiner sneer “I welcome your appeal!,” even after admitting that his third new grounds of rejection (on the same art!) was just as bogus as the first two. Another time the examiner and his SPE both insisted that “the amplifier output is conductively coupled to the filter input” didn’t actually require any connection between the amplifier and filter at all, because “anything will conduct if you try hard enough.” Yet somehow the rejections get abandoned, not after the pre-appeal, but only after a full appeal brief is filed. You can chalk it up to my poor communication skills, if you like, but I find that very rarely are these guys prepared or equipped to talk about the substantive issues in any detail.

                  1. “6, what do you mean, exactly?”

                    I mean they should be handing out a clear error. Just what I said.

                    “So, how do I get the “clear errors flying”? How is this supposed to happen, if nobody’s supervising the examiner, or if the SPE refuses to? Serious question.”

                    You can’t. And for that matter, even the SPE barely can, even if they wanted to, because the clear error standard is set suuuuper high in the agreement with POPA, esp for 103’s and other questions of lawl. There’s literally nothing in the guidance on making clear error allegations regarding claim constructions either. And, on top of that sht salad, signatories get “wide latitude” in their decision making, as a matter of management policy (which is probably wise strictly from a management of human beings point of view).

                    “But I’ve literally had, for example, an examiner sneer “I welcome your appeal!,””

                    There are some power mad people around. And be clear, they have actual power, and sometimes abuse it. I find that it is best, as a general generic policy once you know you’re dealing with such a person, to make overtures towards bowing to their power while still attempting to get essentially what you want. Also, you can make appeals to their status as a government professional etc., and entertain their opinion on how to move things forward, ask them how they would say x y z if you’re looking for a way to word things that will appease them. Also, reframing the issue into an entitlement can be of assistance at times if you can get the person to buy into the notion that the applicant is entitled to a patent on the underlying invention, regardless of whether or not they’re statisfied with your wording. And you can remind them that their chief power is to issue patents. Also, there are things on the interbuts and in books about how to deal with difficult people.

                    ““anything will conduct if you try hard enough.””

                    That kind of thing happens. Often you might want to run them through what an imaginary person of skill in the art is, and ask them whether or not they are to interpret the claim from their point of view as a government administrator or from that of the imaginary man. And even if they persist, then ask them what kind of language they’ve seen used in the past to more clearly specify that you’re talking about conductively connecting at normal operating ranges or whatever.

                    “You can chalk it up to my poor communication skills, if you like, but I find that very rarely are these guys prepared or equipped to talk about the substantive issues in any detail.”

                    Nah, I’m sure that part isn’t you. But you have to remember, they’re just a bureaucrat bureaucratin’. It’s a feature (bug?) of what the agency fundamentally is.

              1. I think the pre-appeal pilot would be great if it were operated in good faith. From what I can see, however, it increasingly is not. More and more often, the review panel consists of the examiner who made the ridiculous rejection and the supervisor who told him to do so. Several times my pre-appeal brief has focused on crystal clear errors, like neglecting to address at all the elements of an independent claim, only to get back a “Proceed to the Board” decision.

                The latest trend, which I’ve seen over the last couple of months, is for the examiner to call you after the pre-appeal brief is filed, to try to talk you into amendments that necessitate an RCE. These can be truly bizarre – they’ll essentially admit that their rejection is going nowhere, but this will be accompanied with a threat, usually implicit, but sometimes explicit, that if you don’t play ball, you’ll be forced to go to appeal. Given the time and expense associated with filing an appeal brief and forwarding the appeal to the board, this feels a bit like extortion…

            1. I agree with you. Get rid of all these layers. Applicants whose claims have been twice rejected should be able to appeal without any layers deciding whether the case goes to the Board. If the applicant files an appeal brief, the case must go to the Board. No more “pre-appeal conferences” and “appeal conferences” and know-nothing, do-nothing, useless, GS-15 “appeal specialists” inserting themselves into the appeal. No more re-opening by the examiner or some “conference” or some “specialist.” Claims twice rejected, applicant appeals and briefs the case, the case goes to the Board. That’s it.

              1. “No more “pre-appeal conferences” and “appeal conferences” and know-nothing, do-nothing, useless, GS-15 “appeal specialists” inserting themselves into the appeal. No more re-opening by the examiner or some “conference” or some “specialist.” ”

                And there’s some of that which happens also anon, that kind of stuff is just… a waste of time. It’s literally the government creating waste for itself.

                1. The waste is created by examiners and SPE’s who make terrible rejections hoping, with their fingers crossed, that applicants will RCE instead of appeal. The pre-appeal and appeal conferences are a symptom of the problem, not the cause of it.

                  1. “The waste is created by examiners and SPE’s who make terrible rejections hoping, with their fingers crossed, that applicants will RCE instead of appeal. ”

                    You lay that at the feet of examiners, I lay it at the feet of the production system, coopted by management into what it is today. So, ultimately just at the feet of management. Besides, 35 U.S.C 1 says the PTO (meaning management) gets all the responsibility lololol.

                    “The pre-appeal and appeal conferences are a symptom of the problem, not the cause of it.”

                    Could see it that way, could see it as a radiation form of therapy for the disease that may well be worse for the patient than the disease itself.

      2. That would require new legislation

        So will picking up the pieces after your beloved bites the dust.

        Just saying.

    2. You are likely correct.

      A few years ago, they introduce the “pre-appeal” request for review. Another layer.

      Soon, with the ever increasing number of applications and examiners, there will need to be another layer, whether the “pre-appeal” grows, or through an expanded PTAB panel review, or a super-PTAB review board, or empowering a group of primary examiners to perform an appeal review, the bureaucracy will continue to grow.

    3. You are likely correct.

      A few years ago, they introduce the “pre-appeal” request for review. Another layer.

      Soon, with the ever increasing number of applications and examiners, there will need to be another layer, whether the “pre-appeal” grows, or through an expanded PTAB panel review, or a super-PTAB review board, or empowering a group of primary examiners to perform an appeal review, the bureaucracy will continue to grow.

  10. For the approximately 80% of IPRs that are the direct result of being sued in a D.C., their appeal to to Fed. Cir. [if they are not settled before then] would seem almost inevitable. But IPR cancelled claims should reduce some proportion of appeals from what otherwise would have been appealed D.C. decisions in the parallel D.C. case? That proportion is subject to considerable debate, because such a very small proportion of patent lawsuits filed actually go through trial these days. But the IPR decisions are also reducing lawsuit pre-trial settlement payments that end many patent suits.

  11. Jason, there is another factor involved in the prior low rate of Fed. Cir. appeals directly from the PTO. Most of those were Fed. Cir. appeals from PTAB decisions in ex parte pending application examinations, and a few interferences. They had a very low percentage of success. Maybe 1 in 9? Besides that discouragement, for many years the advice from Don Dunner, the dean of such appeals, and others, has been to instead file continuations or RCEs to get supporting declaration evidence into the record and better claims that might get allowed, instead of just directly appealing to the Fed. Cir. Note that is something that cannot be done after a PTAB IPR trial or reexamination decision, and the alternative of going to a D.C. first has also been eliminated.

  12. Who appeals? Well, at the appeals court in England it is 1 in 3 of the losers while at the EPO it is more or less all the losers. The difference arises because at the EPO they all see reasonable prospects of a reversal, while in England very few do. The level of case law stability is what sets the propensity to appeal.

  13. Given that patent owners are losing 85-90% of the time in IPRs and always in CBMs, you know who are filing the bulk of these new appeals.

  14. Another factor driving these appeal rates may be due to the Supremes eliminating objective tests for obviousness and subject matter eligibility. With the current 103 and 101 frameworks based on non-objective factors that are difficult to apply in a consistent manner – of course people are appealing at higher rates.

    1. I invented that, it is also the complete unfairness of the IPR procedures, the lower standard of proof, BRI and a heavy and pronounced bias against patents exhibited by the PTAB. The seem to think they are on a mission of some sort. As they themselves bragged, they are death squads whose purpose is to terminate.

      Moreover, the willingness of the Director to tell the PTAB how to decide cases his now beyond dispute. This, combined with the fact that the Director consults privately with interested parties should tell everyone that we now have a rigged and very corrupt system. The only way forward is to get the patent office out of the business of invalidating patents.

      1. “Moreover, the willingness of the Director to tell the PTAB how to decide cases his now beyond dispute.”

        It is? Do you have some IPR and/or CBM case numbers that would prove this? What other evidence do you have that would prove, beyond dispute, that the Director is telling the PTAB how to decide cases?

        “As they themselves bragged, they are death squads whose purpose is to terminate.”

        Never seen, heard, or read any APJ claim the PTAB is a death squad. In fact, former Chief APJ Smith unequivocally denied the accusation during a PPAC meeting last year.

        1. What is going to happen is there is going to be another level created at the PTAB and that will give the director a lot of control over how the appeals are decided. Kappos, I think, was trying to create precedents that would have to be followed, but without an appeal board it is just too hard.

        2. I know APJs and I don’t think there is much fiddling with the outcome of the cases. They really don’t have the mechanism to do it. Look for expanded panels. Those are the ones they are looking at closely.

        3. AAA JJ, you might want to follow discussion occurring over at IPWATCHDOG and Quinn’s observations. It appears that interested parties are being privately entertained by the Director and that certain decisions of the PTAB involving related IPRs cannot be explained except on the basis that the PTAB wanted to achieve specific a outcome.

          The evidence seems plain.

          Moreover, the willingness of the Director to entertain private parties with disputes before the office is documented. The case documented in the IPWD thread does not involve the present Director, but that the issue here does not involve one person, but the fact that Director does entertain private parties or groups with an interest in the outcome of IPRs and other disputes, and the fact that the Director does appear willing to use his or her influence in determining the outcomes of decisions in some fashion.

          If we are going to continue with the an Article I court being the final decider of patent validity, we need to get that court out from under politics. The PTAB must be separated completely from the PTO.

          1. The PTAB must be separated completely from the PTO.

            Congress has already fashioned such a body, albeit, they have been brow beaten into abject silliness by the Supreme Court.

            1. Lol it’s this same Kyle bass guy that was being talked about before. Gene said his concept of making money by invalidating patents was “novel”. It wasn’t novel, I proposed it years before AIA was even a proposed law, and many people proposed it during the passage thereof.

              1. 6, I do not defend Bass. I am disturbed by the fact that the Director apparently interfered with the PTAB and is known to meet with “stakeholders.” Prior Directors even met with the parties to ongoing disputes.

                People may lobby Congress all day long. I simply am aghast that people feel free to lobby the Director about private disputes.

                I have been told by other patent owner counsel that the PTAB has met ex parte with petitioners counsel. It might be nice to have other patent owner counsel come forward with the information they have on similar events.

                The system stinks to high heaven of being rigged.

            2. Lol billionaire balls:

              “I will up the offer–I will donate $100,000 to any charity you pick, if you and Ron will debate us in a public forum? Interested?”

              1. “I will up the offer–I will donate $100,000 to any charity you pick, if you and Ron will debate us in a public forum? Interested?”

                ROTFLMAO

                First, $100K is chicken feed for Spangenberg.

                But I’d debate him for $100K. I’ll even let him stand on a stool behind the podium if he wants. He’ll end up with an appropriately short stick either way.

                1. But I’d debate him for $100K.

                  You quite miss the point about that money going to charity.

                  And seeing how you “debate” on these threads, with your short script and refusing to address (in any sense of inte11ectual honesty) the counter points put to you, your position as the Trump of anti-patent propaganda would make the political Trump look like a piker.

                  Pick yourself up off the floor with your ill-advised laughing, put your empty, tired, decrepit short script away, and treat laws, facts, and what others say without spin.

                  Let’s start there in order to avoid where that “short stick” really is. You will likely notice a difference in your sitting and walking.

          2. but the fact that Director does entertain private parties or groups with an interest in the outcome of IPRs and other disputes,…

            Ned, it was noted approaching two years ago on this blog that the (then interrum) director was having private and undocumented meetings with special interest groups (and rolling out Office initiatives aimed at “Tr011s” that used special Google programming).

            Some of us even SAWS problems in other non-transparent Office shenanigans (while other certain sAmeones simply attempted to minimize such lack of transperancy and mock those that attempted to draw attention to the things that you are so critical of here.

            Your “6-is-a-genius-because-he-agrees-with-me” blinders have been on so long that you seem unaware that you are wearing them.

            1. Anon, Ned, it was noted approaching two years ago on this blog that the (then interrum) director was having private and undocumented meetings with special interest groups (and rolling out Office initiatives aimed at “Tr011s” that used special Google programming).

              Anon, I had thought that your concern was primarily with examination of patents. I had thought that the interest groups were arguing that patent examination had to be made better so that so many invalid patents not be issued. I had not considered that the pressure groups were trying to get the director to influence the PTAB to institute IPRs and to find patents invalid because of the so-called troll problem. I now acknowledge that I was either naïve or wrong in this belief. The evidence does suggest that the director did intervene with the PTAB, maybe not on particular cases, but in at least general. That would help explain why the rate of institution and invalidation is so high.

              1. Ned,

                I have been on record like forever as desiring good solid examination.

                Your offer of that as some type of reason why you were asleep at the switch seems most odd.

                1. anon, of course you were and are. Everyone wants a quality examination so their patents will stand up in court.

                  As to me and not recognizing what was going on when anit-patent interest groups met with the Director, I never even considered the possibility that she might act to to influence reexaminations or IPRs either from a policy level, or even worse than that. But the evidence seems there that the Director and the PTAB work hand in glove to achieve policy goals.

                  1. But the evidence seems there that the Director and the PTAB work hand in glove to achieve policy goals.

                    As the Director of the USPTO is supposed to do (it is one of the stated job requirements).

                    I will once again though remind you of the admin law principles that I have shared in the past and have you take a look at the spectrum of independence in the various administrative agencies (some have their ‘judicial component’ with objective safeguards and separations from the ‘executive component,’ and some, like the USPTO, do not.

                    There can be no doubt that for those executive agenices which do not include in their charter and admin structure enough such safeguards, that a mirror of what is contained in a true Article III court is necessarily lacking.

                    I will also remind you to look back at those setting up the separation of powers and their concern for ANY one branch of the government having too much power (and yes, Ned, even the judicial branch itself can have too much power and violate the separation of powers).

                    It is no accident that executive agencies are often derisively called “the fourth branch” of the U.S. government, and their actions should be kept in the open spotlight (not in shadowy star chamber tactics).

          3. So your “evidence” or “proof” that, “beyond dispute,” there are shenanigans afoot by the Director is Mr. Spangenberg’s (sp?) article at IP Watchdog? Wow. Just wow. I would imagine there is quite a bit of “dispute” about that.

        4. What authoritative body would an attorney have an ethical obligation to report such improper activity to, if it were true?

      2. How is Lee’s interference “beyond dispute”? I’m not being cute, I’d really like to see that evidence. (I am already familiar with the one sided consultations, which looks bad)

        1. Bob, see the discussion at Quinn’s place and his conclusions.

          Since the Director does appear willing to influence the PTAB one way or the other as their boss, he or she should never meet privately with anyone having any interest in any litigated matter, especially so-called “stakeholders.” Any meeting with anyone must only take place at a public forum where anybody can attend.

          Being in charge of examinations is one thing. Being in charge of the PTAB a court deciding private disputes is quite another.

          1. “Since the Director does appear willing to influence the PTAB one way or the other as their boss, he or she should never meet privately with anyone having any interest in any litigated matter, especially so-called “stakeholders.” Any meeting with anyone must only take place at a public forum where anybody can attend.”

            Idk about that bro. The congress outright gave her the power to institute. And they always know that the board answers to the director. And whom the Director talks to is of their own discretion.

            #datpublictrust

            “PTAB a court”

            Not an article 3 “court” tho :/ Administrative agencies gotta administrate.

            1. 6, Imagine that? She can decide to institute or not and still she can meet with interested parties in private?

              You are endorsing this?

              1. I’m not endorsing it, I’m saying that it appears to be legal. Personally if I was her, then I would have met with both sides. That being said, who even knows whether she actually discussed Kyle at the meeting? We don’t know for sure. All we know is she got some emails about him, and then she had a meeting with bio that they allege was priv.

                1. 6 – the fact that NO ONE “knows for sure” what is being discussed is exactly part of the problem.

                  1. SAWS might be “legal” only to the extent that it involves patent applications. It is not legal to the extent it involves issued patents in reexaminations or other post-grant proceedings.

                  2. “SAWS might be “legal” only to the extent that it involves patent applications. It is not legal to the extent it involves issued patents in reexaminations or other post-grant proceedings.”

                    I never heard of any of those cases being involved in it, and further, why do you think it is not legal in post-grant proceedings? PTO management can take over any proceeding they wish to, with the director’s blessing. All examination, of any kind, or review thereof prior to issuing an action, is done under the director’s delegation.

                  3. You are throwing a conniption about properly vetted (i.e. notice and comment as through the APA) rules above and here you want to defend unpublished star chamber tactics…?

                    Even for you 6, that incongruity is startling.

                  4. 6, prior to examination, applicants have only administrative due process rights. When their patents are being revoked, the level of due process rises to the constitutional level.

                2. 6, I daresay that what happened was not legal.

                  A petition is filed it must be instituted or not instituted based upon the merits of the petition. If the petition is denied or trial is instituted based upon politics or pressure from interest groups, or based upon other forms of corruption, I would daresay we are beyond the legal.

                  1. “If the petition is denied or trial is instituted based upon politics or pressure from interest groups, or based upon other forms of corruption, I would daresay we are beyond the legal.”

                    Let me know when you get a denial or institution based on politics or pressure from interest groups or other forms of arbitrary and capricious actions/corruption and I’ll point you to the district court to have yourself an APA case to have that agency determination set aside.

            2. #datpublictrust

              What does that even mean in the spotlight here, 6?

              Your posts on this topic have a very surreal “1984” appearance.

      3. Ned, any system that charges inventors X$ to “birth” a patent, and 10X$ for a deep pocketed infringer to have it “killed” is rigged as you say. How we got here is easy to see: eyeing the big $ spent in patent litigation, the PTO set up its own patent slaughterhouse in competition with the District Courts. If it didn’t perform that function quickly and efficiently for their corporate sponsors, filings would dry up, and hundreds of govt employees would lose their jobs. Its just more perpetual employment by design.

        1. So, how about a system that issues patent claims that only had a mere $400 prior art search by an examiner yet requires hundreds of small companies spending $2 million or more as the only way to invalidate such claims – with only a jury trial and Fed. Cir. appeal? Which forced settlement payments in almost all such suits just to avoid those litigation costs no matter how invalid the patent claims were. That was the “troll business model” that the AIA was enacted by a huge bi-partisan vote to deter.

          1. curmudgeon, “$400 search.”

            If a patent arguably covers entire industries its claims are

            1. probably invalid; or
            2. functionally described — apparently broad but actually narrow.

            These problems are distinct.

            If an asserted claim reads on the prior art, clearly anticipated, then it should easily be disposed of at summary judgment. Now that we have Octane Fitness, if a patentee files suit in face of such prior art provided to the patentee by the accused infringer, the book should be thrown at the patentee and his or her counsel. We can and should expect far fewer invalid patents being bandied about by patent owners in the future thanks that Supreme Court case.

            However the second problem, functional claims is a problem created by §112(f) which authorizes functional claims. Patent owners wave very broad claims in front of scared in-house counsel and in-house executives, who are forced to cough up protection money.

            This problem has nothing to do with IPRs or validity. The problem of functional claims can only be remedied by repealing 112(f).

            1. Ned – your windmill ho attempt is just not in accord with the fact that Congress opened up the use of functional language in claims outside of just 112(f).

              We’ve been over this. See Federico.

            2. Ned btw, you say at IPwatchdog:

              “But, still, the 70+% invalidity rate is well above the court invalidity rate of 43%.”

              That’s true, but there is selection bias at play. The ones in the court are the ones that the owner truly believes are valid enough to survive litigation and want to enforce. Many of those caught in IPR’s may never have been enforce at all, and that may have been because of dubious validity as determined by the patent owner themselves after more and more art piles up.

              1. 6, patent owners normally do not make charges of infringement of wrt claims unless they are willing to be hauled into court immediately to defend the charge.

                But I have seen that a some IPRs are terminated by the patent owner voluntarily disclaiming claims upon which the IPR was instituted. I presume that the patent owners in such cases either cannot afford the IPR, or that they too have concluded that the claims are not valid.

                But if the truth be told, accused infringer should have been telling patent owners about such prior art long prior to any lawsuit being filed so that patent owners might know that they have no chance on validity. Now that Octane Fitness has been decided, pursuing infringement of a claim one knows to be anticipated has got to be in iffy proposition.

                So, I do not know how selection bias could result in such disparity of outcomes given Octane Fitness.

                1. “6, patent owners normally do not make charges of infringement of wrt claims unless they are willing to be hauled into court immediately to defend the charge.”

                  Exactly that’s what I’m saying.

                  But in IPR’s a significantly expanded circle of patents is encompassed, namely patents that people want to be free and clear of.

                  “But if the truth be told, accused infringer should have been telling patent owners about such prior art long prior to any lawsuit being filed so that patent owners might know that they have no chance on validity. ”

                  That’s a strategical decision. Personally I would hold my invalidating cards close to my breast, esp if the patent was already licensed to other folks for big $$$, and refuse to give up the goods unless patent owner paid me to not disclose what I know to the PTO or other licensees (ala MM’s plan in the other thread or the top of this thread). That info is valuable my friend. No reason to not be remunerated therefor.

                  “So, I do not know how selection bias could result in such disparity of outcomes given Octane Fitness.”

                  Because there is a larger pool of “patents of interest that may be invalid and which people want invalidated” than just the ones that make their way ultimately to the district courthouse steps for a lawsuit. In another way of saying the same thing pretty much, “standing” to invalidate patents that people want invalidated has been vastly increased. Now the candidates are selected from a greater pool.

                  1. “That’s a strategical decision. Personally I would hold my invalidating cards close to my breast, esp if the patent was already licensed to other folks for big $$$, and refuse to give up the goods unless patent owner paid me to not disclose what I know to the PTO or other licensees (ala MM’s plan in the other thread or the top of this thread). That info is valuable my friend. No reason to not be remunerated therefor.”

                    That sir, is illegal.

            3. Re: “If an asserted claim reads on the prior art, clearly anticipated, then it should easily be disposed of at summary judgment..”

              The statistics show that summary judgment is rarely granted by D.C.’s on 102 or 103, and frequently not sustained by the Fed. Cir. [KSR is a good example of the latter.]
              If Octane Fitness is so patent-suit-discouraging, why did the total number of new patent suits increase in 2015?

              1. Paul, my comments were limited to anticipation.

                On 103, that is exactly the kind of issue that should go to the jury. I can hardly believe, hardly, that any patent is invalid under 103 as a matter of law.

        1. Thanks for noting that the Cooper cert petition for holding IPRs unconstitutional got one amicus brief in support, from one patent law professor (Adam Mossoff). Aren’t there any other amicus briefs being filed on such an important issue with such high potential impact, the kind normally of interest to legal academics and IPL associations? Is it perhaps not being treated as seriously as in some blog comments here?

          1. s it perhaps not being treated as seriously as in some blog comments here?

            I just put down some more money with my friend in Vegas that you still won’t provide a cogent legal position on our favorite topic, Paul.

            This is one bet I would just love to not win (mind you, we both know you just won’t venture forth yourself on the topic, even as you call others to weigh in).

        2. Like that Amicus. It begins

          This Court unequivocally defined patents as
          property rights in the early American Republic. In
          1824, for instance, Justice Joseph Story wrote for a
          unanimous Supreme Court that the patent secures to
          an “inventor . . . a property in his inventions; a property
          which is often of very great value, and of which
          the law intended to give him the absolute enjoyment
          and possession.” Ex parte Wood, 22 U.S. (9 Wheat.)
          603, 608 (1824).2

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