PatentlyO Bits and Bytes by Anthony McCain

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Anthony McCain

About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering. anthony.mccain@patentlyo.com

9 thoughts on “PatentlyO Bits and Bytes by Anthony McCain

  1. 1

    The charges of bias against the PTAB for “stacked” panels are unfair, and I suspect that many of the people making these arguments are acting in conscious bad faith.

    An administrative agency has an obligation to act in a manner that is not “arbitrary and capricious.” That means that similarly situated individuals must receive similar outcomes.

    If the Director looks at a given case and says “Dr. Carson is appealing his rejection. I am going to stack that panel to torch Carson, that son of a…” then this is indeed wrong and we should all complain.

    If, however, the Director looks at two cases, and sees that Dr. Blackstone’s rejection is on all fours with Dr. Carson’s, but Dr. B is getting one outcome and Dr. C a different outcome, then it is only right and proper for the Director to intervene to make sure that both panels treat what is essentially the same rejection in essentially the same manner. The best way to do that is to add APJs to one or both of those appeal panels, to make sure that both are following the same procedures and applying the same standards.

    Far from being an abuse of power, this is exactly the sort of fair and just exercise of power that we should all demand from and administrative agency.

    1. 1.1

      Greg, you should take into consideration that in the EPO various panels can actually disagree with each other. There is no such thing as stare decisis.

      The way disagreements among panels should be resolved is to take the particular issue to the Federal Circuit for decision.

      By analogy, one of the problems we have with the Federal Circuit being the sole circuit court deciding patent law issues is that we do not have other circuits that are free to decide the same case in the different way than the Federal Circuit so that we can have an honest debate about a particular issue that eventually can be resolved by the Supreme Court.

      Anyway, there is no need for the director or the PTAB Chief Judge to overturn a panel decision it does not like because a panel decision is not binding on other panels. In fact the potential for political influence and corruption suggests that the practice be discontinued to avoid even the appearance of impropriety.

      1. 1.1.1

        [T]here is no need for the director or the PTAB Chief Judge to overturn a panel decision it does not like because a panel decision is not binding on other panels.

        What do you mean, no need? I grant you that a wrongly decided PTAB decision does not create a stare decisis problem because PTAB decisions do not (in the ordinary course) have precedential effect, but an administrative agency has to be concerned about more than just bad precedent.

        Agencies are not permitted to act in an “arbitrary and capricious” manner. There is nothing more arbitrary or capricious than giving Dr. B a patent but denying a patent to Dr. C when the rejections that each is facing are wholly analogous. The Director has a duty to prevent such “arbitrary and capricious” outcomes, quite regardless of the status of each decision as precedent.

        1. 1.1.1.1

          The whole point is that the patent owner/applicant has a remedy — appeal. It is the Federal Circuit (or a court) that should decide the law, not the Director.

          When one panel binds the next, a problem that would too often occur is that a decision, a mistaken decision, that favors the patent owner or applicant becomes binding on future panels. The patents that issue are invalid until the mistake is remedied. The only way to damage can be undone – the issuing of invalid patents – is for an infringement defendant to take the case up to the Federal Circuit. This is bad practice – in bad practice in the extreme. It is important, vitally important, that the PTO get novel issues of law to the Federal Circuit ASAP.

          It is the height of arrogance and a strong shift to dictatorship that tries to insulate the decisions of the executive from judicial scrutiny. One way this is done is to keep cases out of the court system – to broadly read, for example, a narrow prohibition on appealing IPR institution decisions into a broad prohibition that insulates the PTO from judicial review on a host of issues that have nothing to do with the merits. Pardon my distaste for the current O-man’s justice department, and the people behind implementation of the AIA.

          1. 1.1.1.1.1

            It is the height of arrogance and a strong shift to dictatorship that tries to insulate the decisions of the executive from judicial scrutiny. One way this is done is to… broadly read, for example, a narrow prohibition on appealing IPR institution decisions into a broad prohibition that insulates the PTO from judicial review on a host of issues that have nothing to do with the merits. Pardon my distaste for… implementation of the AIA.

            So, I am with you on this, Ned. I agree that it is salutory and healthy for PTO decisions to be reviewed by the Art. III courts at their earliest practicable occasion. Nothing about stacked PTAB panels stands as an obstacle to such court review. Decisions by panels with 10 APJs are just as reviewable by the CAFC, on the same schedule, as decisions by panels with 3 APJs. Therefore, the salutory and urgent good of CAFC review cannot be a reason to object to expanded-panel decisions.

            [T]he patent owner/applicant has a remedy — appeal.

            You are missing my point. This is not about the patentee. It is about the agency. The agency has a duty not to hand down decisions in an arbitrary and capricious manner. A charge of a duty comes with it the investiture of power to perform that duty. Therefore, the Director must have some power at the agency’s disposal to supervise agency actions to ensure that decisions are not being made in an arbitrary and capricious manner. Panel expansion is that power, and it is altogether right and fitting that the Director use it as necessary to ensure uniformity.

            It is the Federal Circuit (or a court) that should decide the law, not the Director.

            Right. Agreed. If the expanded panel gets the law wrong, the Art. III courts are there to correct the legal error. Expanded panels are about uniformity, not accuracy. The Art. III courts are there to ensure accuracy. Each level has its own job to do. The one is not a substitute for the other, even though both are necessary.

            1. 1.1.1.1.1.1

              Incidentally, Ned, I agree with you 100% about the bass-akward implementation of the AIA. At every possible inflection point, the relevant decision makers (PTO, CAFC, SCotUS) have made one can only infer is a deliberate effort to mis-read the statute and over-extend the powers granted to the PTO. It really is not good enough.

              1. 1.1.1.1.1.1.1

                one can only infer is a deliberate effort to mis-read the statute and over-extend the powers granted to the PTO

                I call B$.

                Quite in fact, what one can infer NOW are attempts to not properly read the statute and the actions by Congress in the AIA as attempts to preserve the AIA from its own Constitutional infirmities.

                As I have chided Ned all along his own time trying to being his own case before the Supreme Court (and NOT being chosen the ‘champion’ of patents as property), one must ask the right questions.

                Those questions were never about the PTAB.
                Those questions were always about what Congress did in giving power to the PTAB.

                This “re-spinning” here of yours and Ned’s is what is “ really is not good enough.

            2. 1.1.1.1.1.2

              Not taking an issue with your “consistency” position, Greg, merely adding to the point of your comment of:

              Panel expansion is that power, and it is altogether right and fitting that the Director use it as necessary to ensure uniformity.

              is the notion that THIS panel expansion power is not a new one.

              Heck, this power was even evident in the Alappat case.

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