PTAB: Serial Filing Past the Deadline and Adding Judges to Achieve a Result

by Dennis Crouch

Nidec Motor v. Zhongshan Broad Ocean Motor (Fed. Cir. 2017)

Serial Filings: Important statement here from the Court against allowing a PTAB IPR patent challenger to continue to file additional IPR petitions after the 1-year deadline of 315(b) via the joinder process of 315(c); and also against stacking of PTAB Board to achieve particular results on rehearing.  The court’s statement though is entirely dicta – it actually affirmed the PTAB decision here where these actions occurred. 

On appeal in this case is the PTAB’s cancellation of the claims of Nidec’s Patent No. 7,626,349.  The patent covers an HVAC with an improved motor controller that uses sinus-wave powering (rather than square-waves) for reduced noise.

SineWave

In September 2013, Nidec sued Broad Ocean for infringement and Broad Ocean followed with an IPR petition in July 2014 (within the one-year deadline).  The Board (acting on behalf of the PTO Director) partially instituted the IPR – but denied on the grounds relating to a Japanese Publication since Broad Ocean had attested to the translation accuracy.  In February 2015 (a month after the original petition decision), Broad Ocean filed a second petition – this one including the required affidavit.

The PTAB originally denied the new petition – holding that it was filed after the 1-year statutory deadline following the lawsuit initiation. 35 U.S.C. § 315(b).  That original panel decision was split, with Judges Wood and Boucher in the majority, and Tartal in dissent.  Tartal argued that the late-filing should be allowed to be joined (under § 315(c)) to the original IPR proceeding in a way that avoided the 1-year filing deadline.    Statutes at issue:

315 (b)Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

315 (c) Joinder.— If the Director institutes an [IPR], the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director … determines warrants the institution of an inter partes review under section 314.

On the rehearing, the PTAB Chief (acting on behalf of the PTO Director) shuffled the Board seemingly to change the result – adding two additional judges – Medley and Arbes – with the result that the dissenting opinion became the majority who offered an interesting explanation of the statute.  Section 315(c) textually appears to focus on joinder of additional people.  However, the text actually allows for “joinder of any person” – and according to the majority that should be interpreted to allow the “same person” to join himself to his prior filing (and in the process bring-along additional claims).

§ 315(c) permits the joinder of any person who properly files a petition under § 311, including a petitioner who is already a party to the earlier instituted [IPR]. We also conclude that § 315(c) encompasses both party joinder and issue joinder, and, as such, permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder.

After joinder, the Board went on to find the challenged claims obvious (based upon challenges instituted in the original petition) and anticipated (based upon challenges in the second petition)

Unfortunately for the appeal, the Federal Circuit determined that it “need not resolve” the joinder issue because the obviousness finding were proper and were based upon the original petition.

Because there is no dispute that Broad Ocean timely filed the First Petition (containing the obviousness ground), the issues on appeal relating only to the Board’s joinder determination as to anticipation ultimately do not affect the outcome of this case

ExpandedPanelThe court opinion affirming obviousness was written per curiam. An important concurring opinion was filed by Judge Dyk and joined by Judge Wallach suggesting that the PTAB’s joinder decision is wrong and that stacking of panels is problematic.  The opinion’s designation as concurring appears to be an implicit recognition that the additional opinion is dicta.

They write:

[W]e write separately to express our concerns as to the [PTO] position on joinder and expanded panels since those issues are likely to recur. Although we do not decide the issues here, we have serious questions as to the Board’s (and the Director’s) interpretation of the relevant statutes and current practices. . . .

The issue in this case is whether the time bar provision allows a time-barred petitioner to add new issues, rather than simply belatedly joining a proceeding as a new party, to an otherwise timely proceeding. Section 315(c) does not explicitly allow this practice. We think it unlikely that Congress intended that petitioners could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding, whether the petitioner seeking to add new issues is the same party that brought the timely proceeding, as in this case, or the petitioner is a new party. . . .

Second, we are also concerned about the PTO’s practice of expanding administrative panels to decide requests for rehearing in order to “secure and maintain uniformity of the Board’s decisions.” . . .

[Although t]he Director represents that the PTO “is not directing individual judges to decide cases in a certain way”[,] we question whether the practice of expanding panels where the PTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the desired uniformity.

Part of the reason why this is all dicta is that the PTO Director’s decision whether or not to initiate proceedings is – by statute – not appealable.

 

74 thoughts on “PTAB: Serial Filing Past the Deadline and Adding Judges to Achieve a Result

  1. One comment here asked about the “Chevron doctrine” [of judicial deference to agency legal interpretations.] Good question, but the Fed. Cir. made that issue moot in this specific case.
    But it reminded me to ask: what happened to the legislation that was supposedly easily sailing through Congress to kill it? In January 2017 the House of Representatives passed a package of bills aimed at regulatory agencies which included killing Chevron but attached others accused of “grinding all Federal rulemaking to a halt” with mandatory mandatory litigation stays for all new rules, etc. Did attaching those poison pill bills keep Chevron killing tied up in the Senate? Has there been a hearing?

      1. Excellent link, dcl.

        On the “All Actions” tab, we have this as the last action:

        01/05/2017 Referred to the Subcommittee on Regulatory Reform, Commercial And Antitrust Law.
        Action By: House Judiciary

        That cubbyhole is chaired by Goodlatte.

        link to judiciary.house.gov

        Membership link:

        link to judiciary.house.gov

        (note: Issa is on that committee which may explain why nothing meaningful is moving)

  2. >The Director represents that the PTO “is not directing individual judges to decide cases in a certain way.” Director Br. 21 (quotation marks omitted).”

    This is not believable. Why was the panel expanded then? Besides anyone that knows anything about the inner workings of the PTAB knows that the CJ knows the biases of the patent judges.

    1. PTAB is a policy court, 35 USC 6, that can most definitely arrange itself to create desired outcomes. Here again, the CAFC is pretending not to know things to keep up the pantina that it’s little pet PTAB is not a political court. “Caesar’s wife must be above suspicion,” is the expression that comes to mind.

  3. The briefs and record might be worth a look for those able to dig in.

    A few people make points like these from Greg DeLassus does in comment 1 at the bottom of the thread.

    without explaining why they question this mechanism, nor what alternative mechanism they think more suitable.
    ***
    I guess I do not see what is wrong with the Director packing panels to achieve a given result.

    The concurrence says this: “Nidec alleges that the two administrative judges added to the panel were chosen with some expectation that they would vote to set aside the earlier panel decision. The Director represents that the PTO “is not directing individual judges to decide cases in a certain way.” Director Br. 21 (quotation marks omitted).”

    Manipulating process for result-oriented reasons (if that’s what the Director’s actually doing) is arbitrary and capricious, and the sort of thing that courts are supposed to set aside on APA review if they have jurisdiction. At a high level it “feels” a bit like Roosevelt’s court-packing plan. If you don’t like how a quasi-judicial body rules, pack it with your friends and ask the newly constituted group to reconsider. It’s a poor analogy because there’s really no such thing as separation of powers within the PTO and at the institution stage, the PTAB is acting as the Director’s delegate. But if the Director wants to institute against a PTAB panel’s wishes, the Director should just make the call rather than engaging in what looks like a charade to create the appearance of process. In Cuozzo, the Supreme Court hinted that “shenanigans” by the PTO at the institution stage might be reviewable, and this certainly sounds shenanigan-y. That’s what I take the thrust of the argument to be, anyway.

    The following things show up in briefs and seem interesting:

    (1) The institution decision was originally 2-1 against institution, then 3-2 for institution, with the original 2-APJ majority in dissent. The then-dissenting APJs cried foul and objected to the panel-packing practice. See Paper no. 16 in IPR2015-00762

    (2) This issue of panel-packing has come up before. There’s a Yissum case where a panel of Prost, Dyk, and Taranto asked the PTO Solicitor some questions about the practice. And there are other IPR proceedings where ALJs have dissented.

    (3) The BIO amicus brief in the listing of counsel seems to have been filed specifically for this panel-packing issue

    (4) PTO brief invokes Chevron deference, arguing that 35 USC 315 is ambiguous about whether “joinder” includes self-joinder, and that the PTO’s reading is permissible.

    1. What difference does it make if the Director makes the call himself or demonstrates to everyone that the two judges who blew it are in the minority?

      The maximalist sets are going to whine and cry foul no matter what. That’s predetermined.

      1. What difference does it make

        The Ends do NOT justify the Means.

        Your question (still) reflects that you want an Ends-based “reasoning.”

    2. Manipulating process for result-oriented reasons (if that’s what the Director’s actually doing) is arbitrary and capricious…

      I want to pause here and introduce a distinction regarding “result-oriented reasons”:

      (1) The director wants Broad Ocean to win, and stack the panel to see that this happens. Call this a party-result.

      (2) The director wants to make sure that future boards do/don’t institute in a given fact situation and packs the panel in a case that presents such a fact situation to create a precedents all decision that achieves the director’s preferred outcome. Call this a situation-result.

      Packing a panel to achieve a party-result means that similarly situated individuals receive different outcomes, which is the essence of arbitrary & capricious. Therefore, party-results should rightly be set aside.

      A situation-result, however, is intended to achieve a uniformity of results. That is to say, a situation-result panel packing is intended to ensure that similarly situated individuals receive the same outcomes, which is the polar opposite of arbitrary & capricious.

      Near as I can tell from the facts presented here and in the opinion & oral arguments, this case represents a situation-result.

      At a high level it “feels” a bit like Roosevelt’s court-packing plan… It’s a poor analogy because there’s really no such thing as separation of powers within the PTO and at the institution stage, the PTAB is acting as the Director’s delegate.

      100% correct on both counts. This is a poor analogy, and yet the present case does superficially resemble Roosevelt’s court packing plan. It is a terrible analogy because, as you note, the PTAB is supposed to be a cat’s paw of the Director, while the SCotUS is supposed to be independent of the president. Nevertheless, I expect that most of the objection to what the Director did here rests, not on a logical objection to an identifiable overreach, but rather to the unexamined false analogy between the Director’s action and Pres. Roosevelt’s historical overreach.

      1. “… a precedents all decision…”

        Another auto-correct blunder. This should read “… a precedential decision…”

      2. To be clear, the Roosevelt analogy is mine. I didn’t see it in my skim of the briefs. I’m just trying to figure out what the objection seems to be to panel packing, and that analogy seemed to me to be useful to illustrate a narrow, specific point.

        Greg DeL. and MM may be right that once you accept that the PTAB panel–at least at institution–is in no sense independent of the director, then the objections to panel packing aren’t much good. The “situation” vs. “party” result distinction is interesting. I suppose if the Director’s view is that self-joinder is permissible under the statute, then PTAB panels that take the opposite view and reject petitions without considering the substance of the unpatentability arguments aren’t being very good delegates.

        If that’s right, then the more interesting question may be the “first” question Judges Dyk and Wallach raise: does the AIA permit “joinder” only to add otherwise-time-barred parties to a petition filed by a non-time-barred petitioner, or does it also permit otherwise-time-barred parties to add new issues. If the FedCir looked at this directly, it might get resolved on Chevron grounds, on the idea that the statute is sufficiently ambiguous and the PTO’s view sufficiently reasonable that the court must defer. But if you look at it without any thumbs on the scale, Dyk and Wallach may have the better of the argument.

        1. What his does, dcl, is point an even BIGGER spotlight on the legally separate initiation decision point – a point where sticks in the bundle of a granted property right are taken. Taken with NO remuneration, taken with no ability to appeal that separate legal decision point. AND (the point being augmented here), taken by a politically driven operative.

          1. I don’t quite follow. At the institution point, he PTAB has only agreed to begin a proceeding that may have consequences later. It’s inconvenient, might push you to spend legal fees, and might put a cloud on licensing discussions or demands. But your patent is still there, still in force, and still yours. What “sticks in the bundle” have been taken?

      3. One caveat Greg – that “uniformity of results” is NOT something that necessarily means something good comes from the “ensures similarly situated individuals receive the same outcomes.”

        That “sounds good” – but when the “same outcomes” is a backward step vis a vis a strong patent system and towards a system that favors market competition by OTHER THAN innovation, and such is embedded in the system for promoting innovation, then you have systemic problem that hides in the plain sight of your “logic.”

        Then, take that next step to realize that this is a direct collision between the political and the judicial, and you should be able to begin to grasp the actual issues here.

        It simply is NOT enough to draw a distinction between party and situation, and to imply that SUCH is enough is to serve up obfuscation as clarity.

        No thanks.

        1. “[U]niformity of results” is NOT something that necessarily means something good comes from the “ensures similarly situated individuals receive the same outcomes.”

          Definitely not. I have not had occasion to comment on what I think of the PTAB’s decision in this case, but for whatever little my opinion is worth, I think it was a bad decision—both as a matter of statutory construction and as a matter of policy.

          My only point is that the Director is entirely within his lawful authority to set this policy (at least until some Art. III court with jurisdiction of review tells him otherwise), and to do so by this particular means. One need not like a policy, or think it wise, in order to acknowledge that the executive officer enacting the policy has the constitutional and statutory authority to enact it.

          1. My only point is that the Director is entirely within his lawful authority to set this policy

            Not sure that your point now being presented is within the comment to which I replied.

            You started with “I want to pause here and introduce a distinction regarding “result-oriented reasons”:

            And led to: “which is the polar opposite of arbitrary & capricious.

            coupled with: “ the PTAB is supposed to be a cat’s paw of the Director

            While I see your main point in distinguishing the Roosevelt Article III court-packing from the current Article I court packing with: “most of the objection to what the Director did here rests, not on a logical objection to an identifiable overreach, but rather to the unexamined false analogy between the Director’s action and Pres. Roosevelt’s historical overreach.

            It is not just your main point that I added the caveat (caveat, mind you, NOT a direct rebuttal).

            Your “only point” was NOT the only point that you revealed. Your writing included more than (perhaps) what you wanted to share – the occasion was present, even if you were not aware of it.

            As to “Director is entirely within his lawful authority to set this policy,” I have L O N G pointed out (in conversations with Ned) that the host of administrative agencies with judicial powers runs a spectrum of how independent the judicial function is from the political function and that the USPTO is one of the worst for separation of those functions.

            This necessarily impugns any sense of objectiveness with the Article I judicial nature.

            Something that ALL of us (including, especially, Congress) needs to keep in mind.

            1. As to “Director is entirely within his lawful authority to set this policy,” I have L O N G pointed out (in conversations with Ned) that the host of administrative agencies with judicial powers runs a spectrum of how independent the judicial function is from the political function and that the USPTO is one of the worst for separation of those functions.

              This necessarily impugns any sense of objectiveness with the Article I judicial nature.

              Exactly correct and on point.

  4. Why should a supplemental IPR and its joinder be required just to resolve an issue of the accuracy of an English translation? Why could not that issue have been handled by discovery in the trial of the first IPR, especially since it was already declared on another ground? [With less effort, time and cost for both parties AND the PTO.]

    1. P.S. How was it allegedly determined that the two extra APJs were assigned to change the outcome, rather than logically assigned because of the CAPJ’s legitimate concern for the “hot potato” issue here of a post-bar-date IPR & joinder by the same party?

      1. That “hot potato” issue can and should be addressed in a real case in which it would make an actual difference – a post-bar-date 2d IPR & joinder request by the same party on the same claims after their first IPR petition has been Denied.

        1. And Judge Dyk and Judge Wallach should hope they are the judges “randomly” assigned to the panel that hears that appeal so their views expressed in the “concurring dicta” in this case will win the day, as opposed to the views of any of the other Federal Circuit judges who might decide the issues the other way.

      2. P.S. How was it allegedly determined that the two extra APJs were assigned to change the outcome, rather than logically assigned because of the CAPJ’s legitimate concern for the “hot potato” issue here of a post-bar-date IPR & joinder by the same party?

        I think this point is disputed. I don’t think it was determined. Nidec says that it isn’t arguing that the Director is directing individual PTAB APJs to decide individual cases in certain ways.

  5. The issue of interpretation of the statute is one for the Director in the first instance, not for the PTAB.

    This seems a touch naive, if you will forgive my saying so. We all know that when the statute says “Director,” it really means “someone to whom the Director delegates the task.” Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016). The Director has delegated the implementation of §315 to the PTAB. What is wrong with that?

    He should implement that interpretation through rules, not by stacking panels.

    Why? Given that regs in the CFR and precedential PTAB decisions have the same ultimate effect in this instance, why is one mechanism of achieving that ultimate effect superior to the other? What is the informed basis for that “should”?

    1. Whoops, this should be in reply to Ned’s 1.3 below. Sorry about launching it uselessly to the top of the conversation.

    2. Greg, applying the law to a given case is one thing. Interpreting the statute is quite another.

      One of the fundamental problems with the non appealabilty position of 315 per Achates is that the PTO is not a court and cannot adopt a binding interpretation of the statutes. Those adversely affected by the Director’s interpretation ought to be able to appeal that interpretation to the courts even if the applicability of the statute to a particular fact situation cannot be.

      This is another fundamental separation of powers issue. Congress cannot stop the courts from determining the law.

      1. One of the fundamental problems with the non appealabilty position of 315 per Achates is that the PTO is not a court and cannot adopt a binding interpretation of the statutes. Those adversely affected by the Director’s interpretation ought to be able to appeal that interpretation to the courts even if the applicability of the statute to a particular fact situation cannot be.

        I agree 100%. I think that Achates got §314(d) all wrong. The right way to understand §314(d) is that failed petitioner is not permitted to try to force the PTAB to institute against their better judgment. It is crazy to read the statute as if Congress had put in a series of restrictions intend to prevent petitioners from abusing the IPR system to harass a patent owner, and then in the next breath enervated those restrictions by leaving no mechanism to enforce them in court.

        In any event, now that you put it that way, I see your point. Regs (at least for now) are better than PTAB decisions because regs are subject to court supervision while PTAB decisions are not. Fair enough. Once the WiFi One court—sitting en banc—tosses out Achates, would you agree at that point that PTAB decisions are neither better nor worse vehicles than regs in the CFR for promulgating rules of PTAB practice?

        1. Well, the PTAB is supposed to decide cases presented to it, not interpret the law. If a novel issue of law is presented to the PTAB, the Director should make the call on what the USPTO’s position is. She or he, as the case may be, is in charge, not the PTAB. Any position on a novel issue should be influenced by policy choices, a purely political job, not a judicial job. The policy choices may ultimately involve our relations to other countries, treaties and what is best for the economy. Even the president might get involved as president Obama did when mentioned functional claiming as a problem.

          Courts are a different matter because they have the power to interpret the law, and their views are binding.

  6. Part of the reason why this is all dicta is that the PTO Director’s decision whether or not to initiate proceedings is – by statute – not appealable.

    I don’t think this is right. See the paragraph straddling pages 5-6 (below in itals if I’ve done the html right. The reason it’s all dicta is that the panel affirms on the basis of the original, timely-filed petition and the decision resulting from that. Because of that, the panel doesn’t need to reach any of the issues concerning the joined petition. It looks from the opinion like the joined petition raised new grounds of unpatentability, but not new claims to kill. Once those claims are dead, every issue concerning the new petition ultimately goes only to whether the claims should be dead for one reason or two.

    Both Broad Ocean and the Director argue that the Board properly applied the joinder and time bar statutes to allow joinder and institution in this case. Nidec disagrees. We need not resolve this dispute. Nor need we address the Director’s and Broad Ocean’s arguments that the Board’s joinder determination is non-appealable in light of 35 U.S.C. § 314(d)’s bar of judicial review for institution decisions or Nidec’s argument that the Board’s
    practice of expanding panels violates due process. For the reasons set forth below, we affirm the Board’s conclusion that all of the challenged claims are unpatentable as obvious over Bessler and Kocybik. Because there is no
    dispute that Broad Ocean timely filed the First Petition (containing the obviousness ground), the issues on appeal relating only to the Board’s joinder determination as to anticipation ultimately do not affect the outcome of this
    case. Both parties agree that, if we affirm as to obviousness, we need not address Nidec’s argument that various procedural aspects of the Board’s joinder decision require reversal of its holding concerning anticipation by Hideji.

    1. Agreed. It’s dicta because it’s not at issue in the appeal, not because there’s a statute that says the issue is unappealable.

    2. Agree that it’s dicta for the right reason, but I am still having a hard time seeing it described as “new grounds of unpatentability” given the facts of the case. It was presented, denied institution based on the lack of certification, and then re-presented in the joinder request. There is nothing new about it. The fact that it wasn’t instituted based on the certification oversight doesn’t suddenly make it a “new” ground.

      If the Hideji reference had come to light AFTER the original IPR was instituted and the deadline passed, that feels like a new ground. Correcting the procedural mistake made during the initial filing just seems like a back door maneuver not intended by the statute to raise a new ground of unpatentability.

  7. Note as well (for those following actual due process issues) – the separate legal point of the initiation decision point is not appealable.

    1. Not appealable per the AIA statute but certainly contestable under the APA and possibly other avenues. The PTO can’t arbitrarily/irrationally/capriciously decide what decisions to institute / not institute.

    2. For the record: the claims that were tanked here were junk and shouldn’t have been granted in the first place. The PTAB got rid of them, which is great for everybody.

      This actually matters to a lot of people. Shocking, I know.

        1. Oh look! It’s another entitled whining patent maximalist snowflake who needs to be coddled.

          You’re in the wrong place, “Bluejay.”

          This is where the grown ups hang out. Go back to your sandbox.

          1. MM

            This is what you don’t get. The PTAB is a kangaroo court that doesn’t follow the bare minimum due process requirements.

            And your “patent maximalist” meme is just another way to say “patent troll.”

            Sandbox and snowflake is just more name calling.

            My guess is that you are Left coast liberal (associated with the software industry) and your preferred method of argument is name calling. Just like anyone who doesn’t buy in to global warming 100% is a “denier.” Just like those Holocaust deniers who don’t acknowledge the historical fact of 6 million dead.

            FYI, name calling is not an argument. Try that before a real judge.

            1. The PTAB is a kangaroo court that doesn’t follow the bare minimum due process requirements.

              Which particular “bare minimum due process” features does the PTAB lack?

              1. Neutral judges who aren’t appointed to panels because of their pre-determined bias.

                The Catholic Church annulment “judges” grant 98% of all annulments. They have a known bias to annul marriages.

                Same deal with PTAB. Rigged game.

                1. Neutral judges who aren’t appointed to panels because of their pre-determined bias.

                  I agree that the citation you offer about Catholic marriage tribunals (if accurate, I have no good way of verifying the assertion) is strong evidence of the bias of the judges. The PTAB does not find anything like 98% of challenged claims unpatentable, however. Indeed, 50% of IPRs filed end with no claims cancelled or disclaimed. What, then, is the evidence for the allegation of bias with regard to the PTAB.

                2. “only 4 percent of all PTAB petitions end with a final written decision in which all claims are upheld as patentable!”

                  Source: IPwatchdog, June 14, 2017.

                  Right in line with the Catholic Church Marriage Tribunal. With that kangaroo court, you pay your filing fee after your annulment is granted. I kid you not.

                3. “only 4 percent of all PTAB petitions end with a final written decision in which all claims are upheld as patentable!”

                  I do not see how this amounts to meaningful evidence for bias. Much of the work of the PTAB is done at the institution stage, not just the final written decision stage. By ignoring decisions not to institute in evaluating the “bias” vel non of the PTAB, you are simply applying a biased criterion for detecting bias.

                  As I noted above, 50% of IPR filings end with no claims canceled or disclaimed. How is that outcome consistent with the idea of a “biased” PTAB?

                4. only 4 percent of all PTAB petitions end with a final written decision in which all claims are upheld as patentable

                  So?

              2. A real federal judge said the PTAB would be a patent killing field. The historical results after his prediction was true.

                It’s a rigged game that subverts due process in many ways.

                1. A real federal judge said the PTAB would be a patent killing field.

                  So? There’s a lot of junk patents out there that need to be k i lled.

                  It’s a rigged game that subverts due process in many ways.

                  Maybe you can name three of those ways. Since you’re so very serious and totally not just shilling for your own feeble self-interests.

            2. This is what you don’t get. The PTAB is a kangaroo court

              This is what you don’t get: the PTAB gets it right nearly all of the time and you sound like an entitled patent-worshipping crybaby. Which is exactly what you are.

              1. Is it better that 10 bad/junk patents go on existing, that one not so bad, and technically valid, patent is not erroneously invalidated?

                How many good/valid patents being invalidated is it worth to have the bad/junky ones killed at the board?

                Just looking for a ballpark figure here.

        2. Malcolm (aka MM) is well known as being the self-appointed guardian of the fields of patent rye, protecting children from the various ISMs that are out there.

          😉

      1. The Ends do not justify the Means.

        No matter how many times you want to “sniff” and say “junk,” more than that is needed.

  8. As stated elsewhere:

    While perhaps disconcerting to see (or be reminded of) blatant evidence of the political nature of the Executive Agency “judicial function” at work like that – this is NOT a new thing (as witness the reference to the Alappat case).

    As I have previously pointed out (in discussions concerning admin law); various executive agencies have a range of how truly distant a judicial function is from the political controls of the agency, and OFTEN less “respect” (or if you prefer, comity) is due to those agencies that do not have the judicial function sufficiently separated. Further, the separation is typically set in the particular agency’s establishing legislation.

    The USPTO is one of the lowest “respected” executive agencies because of the lack of meaningful separation of the judicial functions and the political controls.

    Sadly, this aspect of admin law is often not understood by the very legislatures that want to give more power to the Article I entities, and then do not seem to understand how those who DO understand admin law point this (granting more power) out as inviting corruption.

    This too is another factor that makes the upcoming Oil States case so important. If patents are deemed to be NOT personal property, then protections afforded personal property are out the window, and the (captured) legislature can make ALL adjudications (of granted patents) fall under the Article I agency power.

    1. If patents are deemed to be NOT personal property, then protections afforded personal property are out the window

      So what?

      Are you going to take your football and go home? We’ll turn into the Amish?

      Or is it going to be bit harder to afford that second “investment” home in San Diego?

      Ask Paul. He’s a very serious person, just like you.

    2. If patents are deemed to be NOT personal property…

      And if the Supreme Court declares that all briefs to an Art. III court must be filed in Latin, it will cause real headaches for 99.8% of practicing lawyers. Somehow, however, I feel supremely confident in asserting that the Supreme Court will not announce either of these two shocking declarations.

      I do not know who will prevail in Oil States, but I fee quite confident that the Court will not decide the case by declaring that patents are not intangible personal property. They need not decide that issue in order to reach any particular outcome. Why, then, would they say something so crazy, to no particular end?

      1. Since due process is not raised in the questions presented, I am not sure how the question of property is decisive to the Article III or 7th Amendment issues. It was important in McCormick Harvesting, however.

  9. The key claim language:

    wherein the motor controller is configured for performing sinewave commutation

    Gosh, anybody see a problem in relying on that limitation for patentability, when it was known for decades that sine waves are quieter than square waves of the same frequency?

  10. Judge Dyk’s concurrence merely notes that he and Judge Wallach “question whether the practice of expanding panels where the PTO is dissatisfied with a panel’s earlier decision
    is the appropriate mechanism of achieving the desired uniformity,” without explaining why they question this mechanism, nor what alternative mechanism they think more suitable.

    I guess I do not see what is wrong with the Director packing panels to achieve a given result. Part of the Director’s job is to encourage uniformity in PTAB practice, and expanded PTAB panels is one of the tools in the Director’s kit by which the Director can achieve such an outcome. I suppose that the Director could equally well promulgate a regulation in the CFR, but why is this method of achieving consistency worse than a notice-&-comment?

    1. I guess I do not see what is wrong with the Director packing panels to achieve a given result.

      Just to clarify, if there were evidence in the record that the Director chose this case as a means of getting at Nidec in particular, I could see the problem. I gather that there is no such allegation here, however. So long as the Director is not trying to achieve a particular result for a particular party, but is rather trying to obtain a precedential decision to achieve uniformity in PTAB practice, I do not see a problem. What am I missing?

    2. The issue of interpretation of the statute is one for the Director in the first instance, not for the PTAB. He should implement that interpretation through rules, not by stacking panels.

      1. Ned, this [undecided here] issue of a joinder of a second IPR filed by the same party after the one year deadline from its suit date does seem appropriate for a PTO rule.

        1. Paul, we agree on this. At best, the PTAB’s views were advisory to the Director. But she should have gone through the process of proposing a rule for comment, etc. In the meantime, the IPR in question should have proceeded based on the unexpanded panel ruling.

        2. Recall the flap about MPF and expanded panels in Alappat? The Commissioner could have issued a Commissioners opinion that would have been binding on the Board unless overturned by the Federal Circuit. That would have been better form.

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