As the Federal Circuit temporarily moved to telephonic oral arguments, the court also began denying more oral argument requests after deciding that “oral argument [are] unnecessary.” In denying oral arguments, the court has generally been citing Fed. R. App. P. 34(a)(2)(C) which allows an assigned appellate panel to decide that oral arguments are not needed based upon a determination that “(C) the facts and legal arguments are adequately presented in the briefs and record, and the decisional process would not be significantly aided by oral argument.” The decision to deny a request for oral arguments must be unanimous.
The Federal Circuit recently completed its April sitting and I used the oral argument schedule to create the chart below. The chart below shows the percentage of cases with oral arguments for each Judge. Chief Judge Prost heard the highest percentage of oral arguments while Judges Lourie and Hughes were on panels that cancelled all of their oral arguments. One interpretation is that Chief Judge Prost sees oral arguments as more important for her decisional process, while Judges Lourie and Hughes find less importance. Although the number of cases was small (10 to 20 per judge), the dramatic shift in distribution is unlikely due to chance.
One thing to recognize here is that the R.34 standard did not change because of COVID-19 and the National Emergency. What did change is the mechanism for oral arguments and potential emergency pressures on various judges. These issues might explain the differences in judicial rates more than whether a judge “cares about oral arguments.”
Moving forward we are going to see lots of results from the “natural experiment” created by the COVID-19 National Emergency and Global Pandemic. While the results may end up being interesting and teach us something, the nature of this experience probably includes too many confounding factors to provide real results.
OT but important. A key argument against IPR claim amendments [substitutions] was the likelihood of issuing new [albeit narrower] claims into the patent that were never examined for patentability by the PTO. This was just partially addressed in Nike v. Adidas, Case No. 2019-1262. The Federal Circuit held that the Board may sua sponte identify a patentability issue for a patent owner’s proposed substitute claim, based on prior art of record in the IPR, even if not part of the original trial grounds and not opposed by petitioner, PROVIDING the parties are given APA and due process notice and opportunity to respond to that Board action. The Court reasoned that if the Board could not identify new patentability issues, it would be unable to perform its duties:
“[W]ere a petitioner not to oppose a motion to amend, the Patent Office would be left with no ability to examine the new claims. Where the challenger ceases to participate in the IPR and the Board proceeds to final judgment, it is the Board that must justify any finding of unpatentability by reference to the evidence of record in the IPR. It makes little sense to limit the Board, in its role within the agency responsible for issuing patents, to the petitioner’s arguments in this context. Rather, based on consideration of the entire record, the Board must determine whether the patent owner’s newly presented, narrower claims are supported by the patent’s written description and unpatentable in the face of the prior art cited in the IPR.”
A key argument against IPR claim amendments [substitutions] was the likelihood of issuing new [albeit narrower] claims into the patent that were never examined for patentability by the PTO.
I am not sure how key this argument has ever really been. I can agree that it is a widely repeated argument, but it is weak to the point of lame. Mostly it is just something for malcontents to mutter because they do not have really compelling arguments to make on this front.
“but it is weak to the point of lame.”
So decrees Greg, who has ONLY ever sniped from the sidelines on the topic.
Gee, does anyone see a problem with Greg’s approach?
+1000 for Greg!
Er, thanks. I did not think my #6.1 was quite so good as to merit “+1000,” but I will take my plaudits where I can find them. 🙂
Greg, in the political and social media world we now live in, and with inherently patent-practice-clueless-Congresspersons, “a widely repeated argument” is not necessarily a “weak” argument for those lobbying for drastic patent law changes even though that issue only affects a very small number of patents.
BTW this was one of several other prior IPR criticisms that have now been addressed and ameliorated by Sup. Ct. and Fed. Ct. decisions, PTO Rulemaking, and/or PTAB IPR decisions binding on subsequent PTAB IPR decisions.
Fair enough, Paul. I will not dispute your point that this particular argument is made weaker still in view of the recent Nike v. Adidas decision.
When the IPR Petitioner drops out of an IPR (usually because of a settlement or license) before opposing a motion to amend, the claims have a high likelihood of being confirmed if the limitations recite new features that go beyond the prior art already of record in the proceeding. The CAFC’s decision in Nike v. Adidas makes clear that the Board isn’t required to go outside the prior art identified in the proceeding, and in practice, they rarely would given time constraints. This is a huge incentive for patent owners to give sweetheart license deals to IPR petitioners in exchange for them going pencils-down on opposing motions to amend, in order to get amended claims that have been “blessed” by the IPR process.
And? Who is harmed in the scenario that you describe?
* The IPR petitioner is content with this hypothetical sweetheart license deal, else they would not accept the settlement.
* The patentee is better off with the substitute claims than with no claims.
* The public loses nothing that they ever had before the IPR and subsequent settlement, and the public domain has actually grown that much bigger in the process.
Win/win/win. Would that all incentives to collusion had such unambiguous social benefits all around.
Incidentally, one notes that the actual incidence of IPR settlements with substitute claims issuing after the petitioner drops out is rather slight. The lived reality of these things is evidently more complicated than the 6.1.4 hypo quite encompasses.
Yes, “..the actual incidence of IPR settlements with substitute claims issuing after the petitioner drops out is rather slight.” Even attempting to obtain substitute claims in an IPR is still untypical in spite of now being easier.
But if a Petitioner gets a cheap license for dropping out of an IPR, and narrowed OR remaining original claims can still be read on products of their competitors [who did not file their own IPRs] it is not a a good deal for them.
[I]f a Petitioner gets a cheap license for dropping out of an IPR, and narrowed OR remaining original claims can still be read on products of their competitors [who did not file their own IPRs] it is not a a good deal for them.
Sorry, not following you here. Do you mean that the IPR is not a good deal for the non-participating competitors? Who cares about them? If they cannot trouble to show up, they can scarce complain that their interests are not considered.
If they cannot trouble to show up, they can scarce complain that their interests are not considered.
Moreover, the competitors are no worse off on account of the IPR settlement than they were before the IPR. As I said, no one is harmed relative to the status quo ante.
I don’t really follow your logic, Greg. Competitors would be worse off in many cases. It takes very little effort to amend claims in IPR to recite limitations not in the prior art of record, but which from a practical standpoint, do not meaningfully limit the scope of the claims.
This is one reason many motions to often amend fail; patent owners introduce fairly trivial features (sometimes things that are arguably inherent in the cited prior art), understandably in an attempt to maintain the broadest scope possible. IPR petitioners can readily find new prior art for those features, and use the new art to oppose the motion. But if the IPR challenger settles out, the PTAB on its own is unlikely to do a separate prior art search, meaning that the claims are likely to get confirmed if the features cannot be found in the references cited in the IPR petition.
The public clearly loses in that situation, as do other competitors. Almost all motions to amend in IPR are contingent, which means that if the motion is even being looked at, the Board has already determined that the original claims are unpatentable. If substitute claims slide by and get issued on really dumb features that happen to not be in the specific prior art of record (but which an examiner could have found in a ten minute prior art search), and that’s a lose-lose for the public and competitors. The new claims are nearly as problematic as the original claims from an invalidity standpoint, but the new claims are much harder to attack because they have been “blessed” by the PTAB, and the PTAB is much less likely to grant a serial petition by another competitor against the new claim. It’s a win-win only for the patent owner, and the IPR challenger who got a license.
[T]he PTAB is much less likely to grant a serial petition by another competitor against the new claim.
What is the evidence for this claim? This assertion runs entirely to contrary to my own experience. It is possible—of course—that my own experience is atypical, but I would be obliged for a citation to some statistics from a study of meaningful sample size if you know of such.
On the flip side, as Greg himself is quick to note (and quip): anecdote is not data.
So even though Greg wants data for a view opposing his, he lacks giving the data for his own position.
Hmmmmm.
Following up on my question from last night, I am really dubious that anyone can meaningfully establish any assertion about the likelihood of a follow-on petition being instituted after a first IPR-cum-settlement. The instance of follow-on petitions to date is just too rare (see slides 20 & onward) to derive statistically meaningful conclusions about whether the PTAB does or does not resist follow-on petitions after a first complete IPR.
link to uspto.gov
… so the Board (supposedly the neutral arbiter) is being (in a rather retrograde fashion) being made back into ‘super examiners’…
Is that how Congress set up the system, or this more re-legislating from the bench?
I forget how the cases are allocated. Does Prost allocate the cases and panels?
Maybe Prost is putting the more important cases in front of herself?
Fed. Cir. case assignment is computer-random per Fed. Cir. IOP 3. [It even leads to the inefficient assignment of new panels to the same case coming back to the Court after remand by a prior panel.]
————-
An interesting question for anyone regularly observing Fed. Cir. oral arguments would be if the above table of the April assigned judges for oral arguments not denied has any correlation to the judges that normally ask the most questions in oral arguments?
Thanks Paul.
I echo Night Writer’s thanks. I have long wondered how panels were allocated. Now I know. Where does one find the CAFC IOPs? Are they published somewhere?
link to cafc.uscourts.gov
Thanks. That also included the procedures for deciding who authors the opinion, which is another point about which I have long wondered.
Given present editing changes, I may have to recommission the crawling of the blog’s comment sections.
Litigants have a heavily overinflated sense of the importance of oral argument in the appellate process. For the vast majority of appeals, the judges have already figured out the decision beforehand based on the briefs, and in only a tiny fraction of cases does oral argument move them from that position. Several CAFC judges have said as much at practice conferences and seminars, and it’s a widely held view among appellate judges. Oral argument does provide entertainment for some of the judges, a chance to spar with lawyers, and a billing exercise (and chance to grandstand to clients) for counsel, but it rarely advances the decision-making process in any material way. That’s why I’m not surprised that even the minor inconvenience of having to argue telephonically (which shouldn’t be a big deal as arguments are usually limited to 15 minutes) is causing so many appellate courts nationwide to say, screw it, and cancel most oral hearings.
LR,
My impression of how judges (including Justices) act during oral arguments tends to reverberate with your comment of “ For the vast majority of appeals, the judges have already figured out the decision beforehand based on…”
But I see this as indicative of a different and more pernicious problem: the Ends have been decided before all inputs have been collected.
We have a rampant problem of such ‘pre-decisions to fit a desired Ends.’
We, of course, being the Royal We.
Oral arguments are supposed to be a step that is still in the pre-judgment zone. What next may be considered ‘unnecessary?’
Should we simply sacrifice ALL arguments and counsel, and like sheep merely accept what the Royal courts may deign to provide?
I realize this is hyperbole, but the gnawing part of the problem (and one often seen in patent law), is that the hyperbole does reflect an underlying Ends justifying the Means issue.
Anon, I agree that this is a problem, and it’s by no means limited to the CAFC. Generally speaking, the more time a court puts into understanding the case before oral argument, the less important oral argument tends to be. This is because when a court really digs in, it often comes up with a fairly crystalized view of what the result will be. The subsequent oral argument then becomes an exercise in confirmation bias–the judges couldn’t care less about the arguments, they’re just looking for something to confirm their existing viewpoints. You see that in the judges’ questions in so many cases, they’re just pushing for admissions or concessions to make it easier to write the decisions. That’s also why you see CAFC decisions citing the oral argument transcript for the “gotcha” admission that the judges pushed counsel into giving up, to bolster the decision they knew they were going to issue all along.
Yeah, judges should use oral argument as one of the “inputs” (to use your term) into the decision-making process. But by the time of oral argument before the CAFC, there are too many “sunk costs” from the judge and law clerks into coming up with the recommended outcome. It’s basic human nature, once someone comes to a decision on something, it’s usually very hard to move them off that decision.
I don’t think there’s an easy solution, either. In my personal experience, ironically, oral argument matters MUCH more when the judges are LESS prepared and less familiar with the issues. This is because they come into oral argument with an open mind, they listen to get an impression of the case, and the arguments give the judges a feel for the parties. That impression can often guide them in their subsequent review of the briefs/arguments, and in formulating a decision.
“Sunk costs” (as you put it), are nothing more than a pre-judged desired Ends overcoming the proper Means.
THAT very much is part and parcel of the problem.
… human nature is not — and cannot be — allowed to be an excuse.
That is why we ascribe to the Rule of Law rather than the Rule of Men.
Also, I reject on its face the notion that being open minded must be equated with being less prepared and less familiar with the issues.
Impartiality and incompetence have merely a non-causal relationship, and ANY judge (and their clerks) doing their job correctly will always strive to be impartial and collect ALL inputs prior to making a decision.
Yes, I ‘get’ that this is often not the case, and the games of ‘gotcha’ may well be played on a skewed (and predetermined) field. But it is critical (for the critically minded) to recognize that as part of the problem, and judges playing those games should be called out for doing so (and that most definitely includes Justices of the Supreme Court).
Here’s what the Supremes just did about oral arguments:
“The U.S. Supreme Court announced on Monday it will hear arguments by teleconference next month in the high-profile dispute [three appeals] over whether President Donald Trump’s tax and financial records should be disclosed. Also other cases due to the coronavirus pandemic. The court also will hear arguments by teleconference in a case over the U.S. presidential election system on whether Electoral College electors can break their pledges to back the candidate who wins their state’s popular vote. The justices will participate remotely, court spokeswoman Kathy Arberg said.”
The court will hear those cases and a handful of others on May 4, 5, 6, 11, 12 and 13. ..”
“What did change is the mechanism for oral arguments and potential emergency pressures on various judges. These issues might explain the differences in judicial rates more than whether a judge “cares about oral arguments.”
Would a time series of year over year comparisons be helpful on this point?
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