Federal Circuit Rejects Arguments of Bias at the PTAB

Mobility WorkX v. Unified Patents (Fed. Cir. 2021)

In a 2-1 decision, the Federal Circuit has rejected Mobility’s argument that the PTAB Judges have an improper financial interest in instituting AIA proceedings.  The baseline here is that the patentee presented evidence that Board members who institute more AIA proceedings receive better performance reviews and more bonus money.  A higher institution rate also ensures job stability for administrative patent judges.  The argument then is that those incentives to institute constitute a due process violation under cases such as Tumey v. Ohio, 273 U.S. 510 (1927) and Ward v. Monroeville, 409 U.S. 57, 60 (1972).

To be clear, none of the USPTO rules or practices provide expressly give more money or quota-points for initiating IPR.  However, the only way to receive points for judging an IPR is to first institute the IPR. And, most of the quota-points are accumulated post-institution.  Likewise, the PTO receives substantial fees for institution.

The majority entertained the arguments, but ultimately rejected them after concluding that any financial interest was too remote.

Amicus curiae US Inventor, Inc. presents a statistical study purportedly showing that there are more meritorious institution decisions in September (at the end of the APJ performance review year) than in October (at the beginning of the performance review evaluation period). This hardly establishes that APJs are instituting AIA proceedings to earn decisional units.

Slip Op. at Note 7.

The majority decision was authored by Judge Dyk and joined by Judge Schall.

Judge Newman wrote in dissent arguing that the status quo creates the potential appearance of bias and that it is the Federal Circuit’s responsibility to resolve the concerns.

87 thoughts on “Federal Circuit Rejects Arguments of Bias at the PTAB

  1. 10

    There seems to be quite a bit of confusion about the difference between examination of a patent application and a trial at the PTAB.

    The Director will cause an examination of a patent application (35 usc sec. 131) that may result in a notice of rejection and a reexamination (sec. 132).

    In a post-grant review such as an IPR, a petitioner files evidence that supports the grounds on which the challenge to each claim is based. Sec. 312. The Director (through the PTAB) determines if there “is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Sec. 314.

    The petition may be denied but if granted a trial may be instituted in accordance with Sec. 316. CFR Part 42 specifies how evidence may be introduced during the trial by the parties, which may include additional documents, affidavits such as expert declarations, and written depositions (most often, cross-examination of expert witnesses) offered by a party against or in support of patentability.

    After closing of the evidence, the PTAB provides a final written decision “with respect to the patentability of any patent claim challenged by the petitioner and any new claim added.” Sec. 318. The final written decision is informed by the requirement that during trial – the inter partes review — the petitioner “shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” Sec. 316(e).

    Thus, in a post-grant review such as an IPR, there are the distinct phases of (1) determining if there will be a trial — an inter partes review — and (2) determining if, on the record that has been supplemented and completed during the trial, the petitioner has shown unpatentability by a preponderance of the evidence on that record.

    1. 10.1

      Goodness, you want blow smoke.

      The petition is the primary document to determine whether to institute the proceeding and for determining the final disposition of the petition.

      So if you read my post below at 8 it explains why having the same people decide whether to grant the petition and conduct the proceeding is a problem and why there is a motivation to grant to the petition.

      More smoke coming…

      1. 10.1.1

        Please use more of your smoke to explain your comment at 5.1.3.1. Where you accused me of “making things up.” Where you asserted that the record at institution and and at final decision is “not different” and is indeed “the same?” And how my saying the record is different is “Total BS?” A “total lie?”

        1. 10.1.1.1

          Have to side with Shifty here…

    2. 10.2

      The statute contemplated that institution would be a policy/regulations based decision separate from the merits. “The Director” shall decide institution, and “shall prescribe regulations”, and “shall consider the effect on the economy” and the “integrity of the patent system”.

      After that, the “Director shall” determine that the petition demonstrates a reasonable likelihood of unpatentability.

      THEN it goes to the PTAB for a trial on the grounds raised in the petition. There is no prohibition new arguments and evidence once the PTAB has jurisdiction.

      Institution was not intended to be a mini-trial on the merits. And it certainly wasn’t supposed to be conducted by the PTAB. That has been a huge corruption of the structure created by Congress.

      The current system was set up by Google and Director Kappos in 2012 and did not follow the statute passed by Congress. It has created chaos and corruption. It has destroyed the integrity of the patent system and with it our ability to compete globally in innovation.

  2. 9

    link to ft.com

    Gee, seems patents are a good idea after all despite what people like Chien, Lemley, and Lee, who all magically seem to be getting very rich, say.

    1. 9.1

      The issue here is IPRs, hypocrite.

      1. 9.1.1

        My, aren’t we getting a little touchy, Ben?

        Clearly, there is a difference between a post that happens to be along a different topic and another post that attempts to obfuscate an ongoing topic.

        YOUR posts fall into the obfuscation category, given that YOU are attempting a ‘What-aboutism’ (that also happens to F A 1 L miserably).

  3. 8

    Again, this blog is being overrun with paid anti-patent judicial activists or those that don’t want the patent right and have little regard for a fair dialogue.

    Newman’s arguments include:

    “The separation of investigative and decisional functions is necessary, the
    Court explained, lest the agency decision “lie under the suspicion of being rationalizations of the preliminary findings which the commission, in the role of prosecutor, presented to itself.” Id. at 42 (internal quotation marks
    omitted). ”

    She also says that the intent of the AIA is clear to separate the institution decision from the adjudicative function.

    The amount of misinformation below is stunning. One example, is a yap boy saying that the issues are different at institution than adjudicating the IPR, which of course is ridiculous as the petition to institute is the primary document for the IPR.

    1. 8.1

      Yes Night Writer,
      Did you know my identity thief that Dudas and Doll used has no power over anything she has stolen either because she used my real birth certificate

    2. 8.2

      Ben being an examiner and consistently being anti-patent belies his own assertions of a pro-patent systematic examination bias.

      It also simply flies in the face of history (the embedded ‘just say no’ and Reject Reject Reject and the plethora of shadow programs of which SAWS was but one AND the implicit assertion that pro-patent people WANT rubber stamp allowances).

      Which makes Malcolm’s appearance and thrust about inte11ectual honesty so amusing.

    3. 8.3

      “The separation of investigative and decisional functions is necessary, the
      Court explained, lest the agency decision “lie under the suspicion of being rationalizations of the preliminary findings which the commission, in the role of prosecutor, presented to itself.”

      The PTAB (and the BPAI before it) has always had both an investigative and a decisional function. That is to say, it was always able both to adjudicate disputes over an examiner’s rejection and to make its own rejections. Why has this never bothered anyone before?

      1. 8.3.1

        Oh, it’s always bothered me that the PTAB make new rejections in ex parte appeals. That is, when they are unable to do anything to salvage the pitifully insufficient rejections made by the Examiner.
        My understanding is that the vast majority of APJs of the BPAI came up the ranks from the Examiner Corps so the inherent pro-Examiner bias built into the PTAB from its start is understandable given that history, and I’m not aware of any studies breaking down the background and experience of all the PTAB judges so patent practitioners can have an understanding of how many current PTAB judges have drafted and prosecuted patent applications prior to joining the PTAB.

        1. 8.3.1.1

          As I have noted, the old BPAI judges were once known as Super Examiners.

          This was expressly NOT to be the case with the PTAB.

          Greg’s ‘choice’ is not a fully honest one (and that’s being generous).

  4. 7

    Judge Newman is correct as usual. Even when I disagree with one of Newman’s opinions, I always read it carefully knowing she is usually more discerning than everyone (including me). As to compensating judges for IPRs, I think the majority are living in an ivory tower. When I was an examiner, the count production quota drove everything including quality examination into the ground because examiners were regularly getting fired for not meeting the insane production requirements. If the administrative judges are getting pushed financially by the compensation system then it is impossible for a fair hearing on the merits. I hope the appellant appeals to the US Supreme Court on this one because this goes to the heart of the administrative judicial system.

    1. 7.1

      I certainly agree that one should always take Judge Newman seriously, and that she is right far more often than she is wrong. Here, I think that Judge Newman’s concurrence was a mixed bag.

      She really wrote two concurrences: one on the appointments clause issue; and another on the due process issue. Her arguments about the appointments clause issue give me pause. Arthrex did not really engage with the question of how we should think about political accountability with regard to the Director’s unreviewable discretion to deny institution. That power is not really implicated in this case, but Judge Newman is not obviously wrong to suggest that there might be something Constitutionally unsupportable here.

      The due process question, however, is really much simpler than she is making it, and the majority clearly got this part right.

      The CAFC was not adjudicating an issue of first impression here. The Court has already delineated the border between structural bias that creates a due process problem and structural bias that does not. The only question in front of the CAFC was whether this case was more like Tumey, or more like Dugan. The majority is clearly correct that this case is more like Dugan.

      Judge Newman never bothers to address this question, but really—for the CAFC—this is the only question that matters. All of the various policy arguments that Judge Newman advances—no matter how rhetorically fine—are simply irrelevant to the only question that the CAFC has the authority to tackle.

      1. 7.1.1

        Good analysis of Judge Newman’s puzzling two part dissent in this case Greg.

    2. 7.2

      JR, a lot of what goes on at the PTAB is driven by financial concerns. One of the biggest is claim amendments. There are no extra points for that so the patent judges don’t want them and make it very hard to amend the claims.

      Greg, Newman did bring up that the AIA says that the director shall decide whether to institute and that the patent judges are to adjudicate validity. She points out this is against the intent of the AIA to have turned both over to the patent judges.

      1. 7.2.1

        Slightly different perspective – but a significant processing one:

        The post grant mechanisms are NOT examination or examination-based.

        This means that things such as claim amendments or other similar changes that might occur in the normal course of examination simply are not properly in context in the post grant review.

        Think of it this way: examination is the Congressionally set process of determining a proper metes and bounds of a claimed innovation.

        The post grant review is about tearing up the fence posts of what was previously set out as the limits of those metes and bounds.

        There is nothing in the post grant review mechanism about ANY replacement examination to reset what would be proper metes and bounds.

        The PTAB is expressly NOT there to be any type of ‘super-examiner’ (and that is what the OLD proclivity was). The PTAB is supposed to be a NEUTRAL arbitrator between the patent owner and the patent challenger.

        Nothing more.
        Nothing less.

        Examination (and thus, amendments, which of necessity, must be examined since the very basis of the prior examination has been attacked) is simply NOT a part of the post grant mechanism — at a meaningful level.

        Sure, the word “amendment” may be provided for, but this certainly does not mean that the post grant mechanism thought through what would be needed to make such be a meaningful item. It is well known that the AIA was extremely poorly written, and this is but one of the examples of that.

      2. 7.2.2

        [T]he AIA says that the director shall decide whether to institute and that the patent judges are to adjudicate validity. She points out this is against the intent of the AIA to have turned both over to the patent judges.

        Sure, that argument was made—shoehorned into the “due process” challenge. Unfortunately for the appellant, this is pretty weak sauce as a “due process” concern. Due process = notice + opportunity to be heard in front of a neutral arbiter. Mathews v. Eldridge, 424 U.S. 319, 333 (1976). Notwithstanding the appellant’s bellyaching, due process does not require two separate neutral arbiters. The fact that the same APJs decide both the institution and final stages just is not a “due process” problem.

        Really, this challenge amounts to an “ultra vires” challenge, although it was not honest enough to say so outright. No matter, however, because the majority saw the challenge for what it was, and rightly noted that the ultra vires argument was settled in Ethicon. As the Ethicon court already noted, Title 35 is littered with “the Director shall”s, and it simply could not be possible for one Director to do all of those things himself or herself. Indeed, it is quite ridiculous to imagine that the Director should personally decide every institution decision, just as it would be absurd to imagine the Director should personally “develop an electronic system for the filing and processing of patent and trademark applications” (Pub. L. 107–273, div. C, title III, §13103). Clearly, in context “the Director” means a responsible party to whom the Director delegates the specified task and whom the Director supervises.

        Nothing about the present arrangement is the leastwise improper from either a due process or an ultra vires perspective. Judge Newman’s suggestions to the contrary were much the less convincing part of her concurrence.

        1. 7.2.2.1

          Greg’s got the better read here.

          (egads, me agreeing with both Shifty and Greg on the same day)

  5. 6

    “On the financial incentives, the Patentee argued that institution fees are 24% of PTAB collections, and the PTAB Chief Judge participates in the budget process. But, the Court explained that there was no structural incentive for judges to institute trials for purposes of funding the agency

    …if the Court found otherwise, the same argument can be made for patent maintenance fees. Maintenance fees are the overwhelming bulk of USPTO funding. Thus, by the same token, one could argue that the 70-80% (historical) patent grant rate is inflated by examiners for job security.”

    link to patentspostgrant.com

    1. 6.1

      You do realize that Maintenance fees are set higher in order to dissuade people from holding onto their (un-worked) patents as opposed to generating income from the office, right?

      It’s long been a part of the limited fee-shifting ability of the Office (which also goes to the point that fees charged for searching are “low”).

      You seem so absolutely convinced that you need to speak on topics that you just do not understand.

      1. 6.1.1

        anon, Ben is deflecting or blowing smoke. He knows that there are some structural issues with IPRs and he is trying to change the topic.

        1. 6.1.1.1

          That’s right folks.

          Pay no attention to structural biases that advantage applicants. We only have time to discuss structural biases that disadvantage patentees.

          Why don’t you just come out and say that your only principle is “whatever is good for applicants is right, and whatever is bad for applicants is wrong”? It’d be less dishonest than your current dance.

          1. 6.1.1.1.1

            More smoke Ben. The issue in this case is IPRs.

            We talk about the structural problems with examination often in terms of patent quality.

          2. 6.1.1.1.2

            My dear Ben, surely you aren’t you aren’t accusing the Bobbsy Twins of being intellectually dishonest shills…?

            Oh, the incivility ….

            1. 6.1.1.1.2.1

              Night Writer’s arguments are his own — and Ben apparently studied your tactic of one-bucketing.

              But regardless of whether or not Ben’s attempted “What-aboutism” is solely a distraction, he is simply wrong about what he is attempting to say.

              And I love the irony of you Malcolm slinking out of your muck to make a comment on inte11ectual honesty.

              That’s Rich.

  6. 5

    A big issue that Newman raises is that the same patent judges that determine whether to institute are the same that decide the case and that this is against the intent of the AIA where the director is to decide whether to institute and then patent judges determine whether the claims are invalid.

    This does provide an incentive to institute as you examine the case and determine whether to institute and get points and then decide the case to get points and you get efficiency as you have already examined the case to determine to institute the case.

    There are other issues raised by Newman that have merit.

    Newman as is usual is right. Obama really destroyed the CAFC by stacking it with anti-patent judicial activists judges.

    1. 5.1

      “This does provide an incentive to institute as you examine the case and determine whether to institute and get points and then decide the case to get points and you get efficiency as you have already examined the case to determine to institute the case.”

      Absolutely.

      Query for people more familiar with IPRs:

      Does this point-bias only favor institution, or does it also favor invalidation?

      In other words, does the work that an APJ does to process an institution facilitate the work to process an invalidation? Or is the final decision step so different that once the case is instituted, there is no “efficiency” favoring either outcome?

      1. 5.1.1

        The proceedings and built-in bias favors invalidation. After institution patents are presumed invalid and the burden shifts to patent owner. It’s like an application, with opposition, wheren the first office action is the final disposition of the patent. The judges are told their duty is to come up with an argument to invalidate. An instituted patent is equivalent to being on death row – 84% chance of death.

        They get the same number of points for FWD. The problem is the incentive to institute/convict innocent suspects.

        1. 5.1.1.1

          I don’t know if it is still the case but it used to be to write a dissent (either way) that you had to have the chief judge’s permission or you would not get points.

          Think about that one.

          1. 5.1.1.1.1

            That was put in in the name of “efficiency,” and there has NOT been a public retraction of that protocol.

      2. 5.1.2

        Re: “does the work that an APJ [3 APJs] does to process an institution facilitate the work to process an invalidation?”
        Yes. Unlike DC patent litigation, an IPR trial is limited to 102 or 104 evaluation of only the prior art and declarations against the contested claims which are cited in the petition itself. So yes, it would be duplicative and inefficient to have two different sets of PTO employees, one set to make IPR institution threshold decisions and another set to supervise trials and conduct final hearings and write decisions on the same prior art, declarations, issues, and claims.
        [BTW, the Post-Grant Blog again notes that the the APJ bonus system this subject case’s argument was largely based on was eliminated in 2016.]

      3. 5.1.3

        Absolutely? What absolute nonsense. The count is the same whether you institute or you deny. It’s not an examination. It is Not An Examination. The institution phase is based on a different record and a different standard of proof from the final decision. Whether you institute or you deny trial, you just pick up the next case (there are plenty in the queue).

        1. 5.1.3.1

          S. Morse, “The institution phase is based on a different record and a different standard of proof from the final decision. Whether you institute or you deny trial, you just pick up the next case (there are plenty in the queue).”

          Complete BS. Total lie. The record is not different. In fact, the record is the same. Once you read and understand the invalidity arguments for institution those are the same arguments and same brief for invalidity.

          Stop making things up.

        2. 5.1.3.2

          The institution phase is based on a different record and a different standard of proof from the final decision.

          Did you leave out a “not” there (i.e., “… is not based on a different record…”)? The point you are trying to make (the same count whether you institute or deny) seems at odds with your statements above. I wonder if this is one of those omitted-“not” typos that totally change the meaning of the sentence.

          1. 5.1.3.2.1

            Actually, I meant what I said as explained at comment 10 above. It’s a simple matter to look at a post-grant file on PTAB E2E and determine the papers and exhibits that formed the record at institution and those that were added during trial (usually, many more). The Fed. Cir. tends to give more weight to the PTABs’ evaluation of expert testimony (and cross-examination) than to any findings about the prior art by a panel. Not An Examination.

            1. 5.1.3.2.1.1

              Ah, got it. I follow now. Thanks for the clarification.

            2. 5.1.3.2.1.2

              Worth emphasizing this note from my pal:

              Not An Examination.

      4. 5.1.4

        BTW, you are correct that the rules grease the skids for allowance in the examining corps. Been that way since at least Sputnik.

    2. 5.2

      Judge Schall was nominated by George HW Bush and Judge Dyk was nominated by Clinton.

      1. 5.2.1

        And Magistrate Judge Edward glenn Bryant was nominated by George W for Jon dudas.

      2. 5.2.2

        Dmitry, I am aware of this. I’ve gone over this. The Obama anti-patent judicial activists have taken over the thinking of the CAFC. Taranto is the intellectual center of the CAFC. Six of the twelve active judges (non-senior status ) are Obama appointments.

        1. 5.2.2.1

          NW: “These Obama-judges are really messing up patents!”

          Dmitry: “None of these judges are Obama appointed.”

          NW: “I said “These Obama-judges are really messing up patents!!!” *assorted feral grunting noises as foam appears at edge of mouth*

    3. 5.3

      PTAB “examines” the “case” and determines whether to institute? You’ve never been within 1000 yards of an IPR, have you?

      1. 5.3.1

        The large percentages of Petitions for IPRs that are denied IPR institution as a result of being initially examined are of public record and regularly published for anyone interested in facts.

      2. 5.3.2

        S. Morse >>PTAB “examines” the “case” and determines whether to institute? You’ve never been within 1000 yards of an IPR, have you?

        So what do you think is wrong with that? In fact that is exactly what happens.

        1. 5.3.2.1

          I think that he got hung up on the word ‘examine.’

          Given that our shifting historical-pseudonymed friend has given repeated clues that he was employed by the patent office prior to his retirement, the word ‘examine’ WILL trigger him (even though it was pretty obvious that you intended the meaning of ‘judge’).

          Our pal though has never answered the question of just what his role was at the Office.

          Since he seems to lack a basis of technical understanding, my thoughts have been a clerical position, possibly to one of the higher-ups (based on his over-inflated view of his logical abilities).

  7. 4

    Judge Newman is absolutely correct. I don’t know about the APJs but, as a former Examiner, I can tell you that Examiners are always mindful about making the production they need to make in order to receive a top performance review or bonus. There is a reason that Examiners are forbidden from practicing before their old art units for two years after they leave the office. Why is this not applicable to APJs? There is definitely the potential, if not actual, appearance of bias.

    1. 4.1

      ? This case was not about what APJs can do after they retire, and APJs [who are all attorneys]would not be ethically able to argue at the PTAB any case they were previously involved in at the PTAB. That was always the case, even for interferences.

      1. 4.1.1

        The case was about the potential, if not actual, appearance of bias. You appear to be missing the forest for all the trees.

    2. 4.2

      “I can tell you that Examiners are always mindful about making the production they need to make in order to receive a top performance review or bonus.”

      Amen.

      My question is, why does structural bias only matter when it disfavors patentees?

      1. 4.2.1

        With counts for both allow and reject, why in the world do you continue your slipshod ‘logic’ and attempts to portray the examiner position as necessitating a “pro-patent” view?

        1. 4.2.1.1

          I’ll reply here for any lurkers who might be genuinely confused.

          Writing up an allowance takes less time and effort than writing a rejection, writing a new rejection with new art, and then writing an examiners amendment.

          But writing an allowance gets the same amount of examiner credit as writing a rejection, writing a new rejection with new art, and then writing an examiners amendment.

          And so to spell it out for the most obtuse among us…

          When people get paid the same for doing an easy thing as a hard thing, those people are biased towards the easy thing.

          1. 4.2.1.1.1

            Tell me about those quality aspects you are always whining about there…

            (talk about dishonest posting — that would be you, Ben)

            By the by — would love to see Prof Crouch do a study on any trends in first action allowances.

          2. 4.2.1.1.2

            “Writing up an allowance takes less time and effort than writing a rejection, writing a new rejection with new art, and then writing an examiners amendment.”

            That is true, but it takes even less time to make a Final Office Action that is a copy-and-paste of the Non-Final, gives a blanket statement in the Response to Arguments that the applicant’s arguments were considered but not persuasive, and then lets the applicant decide if they want to file an RCE, file an appeal, or abandon the application. If they go the appeal route, then the same arguments are re-hashed in the Examiner’s Answer (for which a count is received), and there is no negative impact on the Examiner if the PTAB reverses the rejections (heck, the PTAB may reverse the Examiner’s rejections but throw in their own new grounds of rejection!). If an RCE is filed, then more counts go to the Examiner for the RCE and the next Non-Final Office Action.
            Until an Examiner and their Art Unit SPE experience negative consequences, nothing will ever change.

            1. 4.2.1.1.2.1

              Here, we agree, ipguy.

              1. 4.2.1.1.2.1.1

                We generally agree on patent issues, anon.

            2. 4.2.1.1.2.2

              I think what you wrote could mislead the unfamiliar on how many counts are issues… in terms of counts, an allowance is equal to non-final+final+examiner’s-answer+RCE.

              It seems like you are saying that doing a bad job can make the effort for a rejection-through-RCE equivalent to an allowance.

              So, as best I can tell, your point is that there is no structural bias towards allowance for bad examiners. This argument does not address the issue of a good examiner who may be influenced by structural bias of the count system.

              If that’s your point, I don’t disagree. But I don’t think it makes sense to design a system which assumes examiners are all bad actors. Average humans? Sure. But not deliberately-sending-out-errors bad actors.

              And if you were being consistent and assuming that APJs were bad actors, you would conclude that APJs would just churn out unreviewable non-institution decisions. In which case, the structural bias of the PTAB point system is irrelevant.

              1. 4.2.1.1.2.2.1

                You just want to keep on posting inanities….

                APJs would just churn out unreviewable non-institution decisions

                No.

                Not even close.

              2. 4.2.1.1.2.2.2

                “an allowance is equal to non-final+final+examiner’s-answer+RCE”

                That is correct.

                “So, as best I can tell, your point is that there is no structural bias towards allowance for bad examiners. ”

                It truly is a great argument. lol

                “This argument does not address the issue of a good examiner who may be influenced by structural bias of the count system.”

                Which according to NWPA, is like 80%+ of the examiners in the useful arts (although it is reversed according to him in the non-useful arts).

              3. 4.2.1.1.2.2.3

                “And if you were being consistent and assuming that APJs were bad actors, you would conclude that APJs would just churn out unreviewable non-institution decisions. ”

                I don’t think that is correct bro. I think they’re saying that they would issue bad decisions after institution decision being made to institute. Or something like that.

                1. But why?

                  If you’re a truly bad faith APJ, why would you bother instituting any IPR? Yes, you can get something analogous to double credit for institution+final-decision, but that also subject you to review. What’s better?? 2x credit for y work, or 1x credit for 0.1y work? A smart, bad actor would just crush tons of institution decisions and would not have to worry at all about the CAFC slapping slapping them down.

                2. If you’re a truly bad faith APJ, why would you bother instituting any IPR?

                  Asked and answered — but Ben, you are far too invested in your own preconceived notions to be able to recognize this.

                3. “If you’re a truly bad faith APJ, why would you bother instituting any IPR?”

                  Make-work? Or because you think said patent is bad? Etc. etc.

                  ” but that also subject you to review”

                  Meh.

                  “A smart, bad actor would just crush tons of institution decisions and would not have to worry at all about the CAFC slapping slapping them down.”

                  That also might start looking a little weird.

            3. 4.2.1.1.2.3

              “but it takes even less time to make a Final Office Action that is a copy-and-paste of the Non-Final, gives a blanket statement in the Response to Arguments that the applicant’s arguments were considered but not persuasive”

              This happens like 2x a year. Even when I reapply art previously used I usually have to change the rejection all around or add new 103’s.

              “are re-hashed in the Examiner’s Answer (for which a count is received)”

              Unless that is new I don’t recall getting a count for an examiner’s answer. It might be the last .5 counts, I haven’t written one in like a decade so I can’t remember.

              “and there is no negative impact on the Examiner if the PTAB reverses the rejections (heck, the PTAB may reverse the Examiner’s rejections but throw in their own new grounds of rejection!)”

              You do know most don’t make it through pre-appeal right?

              “If an RCE is filed, then more counts go to the Examiner for the RCE and the next Non-Final Office Action.”

              Pretty sure no more counts go to the examiner if they already got all the counts for the overall case at time of examiner’s Answer.

              Going through writing an examiner’s answer and all that is literally the least efficient use of an examiner’s time imaginable. Even with copy/paste, you’ve also got to usually have an interview with pre-appeal person, do all the scheduling etc. Ridiculous to think this is like raking in the counts/OT.

              “Until an Examiner and their Art Unit SPE experience negative consequences, nothing will ever change.”

              As just explained, it already mostly is, and you don’t even explain what you want to “change”.

              1. 4.2.1.1.2.3.1

                6,

                This happens like 2x a year. Even when I reapply art previously used I usually have to change the rejection all around or add new 103’s.

                Second time in a short while that your answer (perhaps geared to what YOU would do) absolutely misses the point about what the VAST majority of examiners do.

                As to the rest of your reply, it seems that YOU are quite unsure of how the count system works.

                That’s more than a bit odd, eh?

                I think that we may have covered this previously, but is the full count system published somewhere?

                1. “Second time in a short while that your answer (perhaps geared to what YOU would do) absolutely misses the point about what the VAST majority of examiners do.”

                  I’m just not sure how they are able to do this unless the applicant is messing up the amendment.

                  “As to the rest of your reply, it seems that YOU are quite unsure of how the count system works.”

                  Well I wasn’t 100% because I haven’t bothered with those parts of it in a decade, but ben confirms my original suspicion.

                  “I think that we may have covered this previously, but is the full count system published somewhere?”

                  Yeah I have a copy of it in my email even if you guys don’t have it on the outside. But I think it should be in the PAP on popa’s website.

      2. 4.2.2

        You’re most likely not a patentee yet when you’re dealing with Examiners (unless you’re in Reexam or Reissue). I’m sure arguments can be made on both sides as to whether the current production system at the USPTO favors or disfavors applicants. Examiners interested in doing a quality examination will do a quality examination regardless. Those who aren’t interested don’t care to begin with. Same applies to those doing prosecution. Some will put the same level of quality into an application regardless of how much they are being paid for that particular application, and others will take the attitude that they are only going to give the client the bare minimum if they feel that is only what the client was willing to pay for. Ethical issues abound.

        1. 4.2.2.1

          Ok. But if your system is designed to rely on ideal actors ignoring the influences of structural bias…

          …why does the structural bias in the APJ system matter?

          Keep in mind, I’m not saying it doesn’t matter! I just think it matters in both contexts, rather than just one.

          1. 4.2.2.1.1

            .,. and you keep on misapplying that context — in BOTH cases

        2. 4.2.2.2

          “Examiners interested in doing a quality examination will do a quality examination regardless”

          You say that, but the time constraints grow by the day. They are, by all accounts, getting quite acute in my art. I would tend to agree.

          1. 4.2.2.2.1

            LOL – there you go again, making YOUR internal metrics be a problem for my clients.

            You do realize that such is simply not professional, right?

          2. 4.2.2.2.2

            In my day, VOT (“voluntary overtime” for those who weren’t Examiners during the late 20th Century) was pretty common for Examiners. Though back then we had our own offices and no one tracking whether or not we were online and doing work. You made your bi-week production, and if you needed to do some VOT to make that happen, that’s what you did. There were Examiners practically living in their offices at the end of the quarters or fiscal year so they would make bonus.

            1. 4.2.2.2.2.1

              “In my day, VOT (“voluntary overtime” for those who weren’t Examiners during the late 20th Century) was pretty common for Examiners. ”

              See it’s a long running problem. And I’d be more or less fine with it if the whole system wasn’t designed to literally discourage work. It’s like “here’s some cases, all of them will take you longer than we’re going to give you to do a good job. Plz do a good job. ” like wtf bro.

  8. 3

    As noted in recent blogs, there are now at least three pending APA suits against the PTO alleging that PTAB APJs are abusing their discretionary authority to deny many IPR institutions that should have been declared. This is obviously contrary to the [unsuccessful] attorney allegations here* arguing a strong PTAB APJ incentive to declare more IPR institutions. It is surprising that this clearly inconsistent litigation headed for the Fed. Cir. has not been noted.
    *Raised for the first time on appeal, hence the PTO objects that it was denied the opportunity to factually rebut these allegations.

    1. 3.1

      P.S. I cannot resist noting that a former legal mentor of mine would have said something like this: Note that this case is being sent back to the PTAB to make the actual decision on the merits of the IPR. Do you think you really did your clients a favor by an appeal attacking the integrity of the judges who are going to decide your case?

      1. 3.1.1

        Do you think you really did your clients a favor by an appeal attacking the integrity of the judges who are going to decide your case?

        What an Fn cheerleader you are.

        The correct answer is that if a proper legal argument for impropriety can be advanced – you advance it.

        Period.

        If the judges are pristine, then your advancing will have NO effect. The snide takeaway in your comment is the implication that the judges will punish you — which only proves the point that they should be challenged.

        Newman — once again — has the better position.

    2. 3.2

      Wait, do you mean to tell me that attorneys raise arguments in lawsuits not based on a principled opinion of right and wrong, but on whether the argument supports an outcome favorable to their client?

  9. 2

    We need the FBI and IRS to investigate all the APJ’s and their families to see if anyone of them has been compensated by any means other than their salaries for canceling patents. Starting with Ms Lee!

  10. 1

    Examiners can either immediately get 2 counts for an allowance, or they can get 2 counts by writing a first office action, writing a final office action which accounts for arguments and amendments, and then waiting some months possibly needing to write an examiner’s amendment.

    If the APJ point scheme creates a pro-institution bias, then the examiner count scheme must create a pro-allowance bias.

    1. 1.1

      Your “reasoning” is as slipshod as ever.

      1. 1.1.1

        I will FAX it to the NH Atty General. Whatever you try to stop Just like the LOLOL Mail it must be delivered

      2. 1.1.2

        +1

    2. 1.2

      If you are a PTAB APJ and you cancel patents litigated against Apple, you get hired by Apple with a million-dollar salary package & stock options.

      In another case if you are an examiner and you allow a patent for a no name small company / inventor after narrowing it 3 times, you get to go back to your cube and examine another patent from another no name small inventor.

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