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.
In view of the lengthy arguments below as to how much the IPR petition can be supplemented later if an IPR is declared, this is right from the Federal Register on the final IPR rules:
“As to filing a supplemental information during inter partes, post grant and covered business method patent reviews, the final rule clarifies that a request for the authorization to file a motion to submit supplement information is made within one month of the date the trial is instituted, and the information must be relevant to a claim.
A petitioner who seeks to submit late
information, or information that is not
relvant to a claim under review, will be
required to show why the information
reasonably could not have been earlier
obtained, and that consideration of the
information would be in the interests-of justice
(§§ 42.123(b)–(c), 42.223(b)–(c)).”
That’s right and the patent judges have already examined all the issues and at institution and decided that it is more likely than not that the claims are invalid. And Newman’s point is that by instituting they have already taken a position on each issue and so there should be a different group of people conducting the IPR than deciding whether to institute the IPR.
I said this below pretty clearly but the smoke blowers have had a grand time confusing the issues.
Notice too that if you read through the ridiculous yappy arguments below that not one of them actually address the point that Newman made.
Instead there is deflection, mischaracterization, and strawmen in abundance.
Just ridiculous that this blog is infested with anti-patent judicial activists that regularly illustrate that they have little regard for a fair discussion on the merits.
[B]y instituting they have already taken a position on each issue and so there should be a different group of people conducting the IPR than deciding whether to institute the IPR.
Why? The panel at institution makes a merits decision based on a reasonably complete evidentiary record (as you have been at pains to explain to Morse below). Why does “fairness” or “due process”—in your view—require that a different panel also reach the same conclusion on essentially the same record?
If this invalidity contest were being held in a district court, would you consider the invalidity conclusion to be unfair, or lacking due process if only one jury were to reach an invalidity verdict? Are two separate verdicts by two separate juries necessary for us to acknowledge that the proceedings were fair?
I agree that Judge Newman made this argument, but it is an unusually poor argument for one as astute as she is. This argument just does not carry the case across the line.
Yet again Greg is confused in his analogies to juries…
Filing of supplemental information is rare. The “arguments below” pertain to the entry of responsive evidence and to discovery during trial.
So, in other words, exactly what I said.
Ah, that would be no.
From dealing with my pal Shifty, you have given him (yet another) “out,” because you are not using the terms precisely enough.
You should take this comment in the same vein as my earlier notation to you on the ‘examine/judge’ wording.
Separately, I am hoping that Shifty engages on the deeper impacts of “this is not an examination.”
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.
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…
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?”
Have to side with Shifty here…
anon you are so weak minded.
Lol – believe it or not, but someone merely disagreeing with you is not a sign of being weak minded.
You want to use that label? You need more — much more.
What you do anon is play into the hands of these ridiculous people. Their goal is to be disruptive and blow so much smoke that anything that is said is inaccessible to the average person.
There is no “playing into the hands” here Night Writer.
Shifty happens to make a valid point. Goodness knows that I singularly shellack Shifty more than anyone (of course, that’s largely due to his past 0bsess10n with me), but I have never lost a contested point to him (as you are doing so here — and badly so).
I “get” that you recognize my point below on the use of the word “examine,” and I “get” that you now want to walk back your position a bit from “ALL” info at the institution decision point to something like “MOST” — but even that won’t suffice to recognize that there simply IS additional judging going on after the institution decision point.
You would be better off noting (one of my provisions) that it is AT the institution decision point regardless of any further actions, that one of the critical sticks in the bundle of property rights of a granted patent (the presence and level of the presumption of validity) has been taken with no recompense in violation of the Constitutional takings clause.
S. Morse>>
The record is not “different”. The petition is the primary document at institution and in the invalidity determination. The record is at best supplemented.
You are just blowing smoke and mischaracterizing the record.
What a POS.
And stop trying to get all this mileage out of my saying “examination.” Yes I used the wrong verb. Whoopie.
Stop the ridiculous lectures.
Tell us again how the petition to institute isn’t the main document and how the record is “different” once the IPR is instituted.
Recently discussed Valve Corp. v. Ironburg Inventions (Fed. Cir. Aug. 17 2021) involved two IPRs. I took a brief look at the first-named, IPR2017-00858.
The IPR file is available to anyone with Internet access via PTAB E2E.
In that IPR, 44 papers and 45 exhibits were filed during the trial (following the Decision to Institute).
The Exhibits included multiple patents, publications, and certified prosecution histories. The papers included the Patent Owner Response and multiple motions to exclude evidence and oppositions to the motions to exclude.
The Exhibits also included a 26 page declaration from Patent Owner’s expert witness and a 103 page Petitioner’s deposition of that witness. Patent Owner’s expert submitted a second declaration (15 pages) that was accompanied by a second deposition of the witness (33 pages). Also included is a 36 page transcript of a deposition from a District Court Action. These exhibits were in addition to multiple declarations filed by Petitioner’s fact and expert witnesses.
Incidentally, the Fed. Cir.’s disposition of the appeal resulted in large part from discussion and consideration of witness testimony submitted during the trial. After the IPR was instituted.
S. Morse
Anyone that has ever done litigation knows that all that fluff was just to prove a point or two in the primary document—the petition to institute the IPR, which you still haven’t acknowledged is the primary document that has not changed.
All of those documents just come down usually to was it obvious to combine two references or does a reference disclose what the primary document–the petition to institute–says it does.
And—we all know you picked an extraordinary IPR with lots of extra documents when usually there are just a few that aren’t all that long.
You are wrong on all counts. That’s how we know you’ve never been within a thousand yards of an IPR.
And what happened to your argument that the record is “not different” following institution?
As for “picking” I did no more than look back and find the latest Fed. Cir. case discussed here that involved the merits of an IPR.
An IPR is Not An Examination.
Proving a point or two (along with the patent holder’s counters) tends to be a rather important addition to the record — in ANY instance.
You just don’t have the upper hand on THIS issue, Night Writer.
… and worth emphasizing again (but for reasons I am not certain that my pal Shifty grasps):
“An IPR is Not An Examination.”
>>You are wrong on all counts. That’s how we know you’ve never been within a thousand yards of an IPR.
So no actual substance but I am just wrong. OK. Sure.
>>>And what happened to your argument that the record is “not different” following institution?
The institution petition is the primary document and once you go through it and decide on institution you’ve done 80 percent of the work. “Different” is clearly wrong. You may use the word “supplemented” as I said below.
>>An IPR is Not An Examination.
So I loosely used the word “examination” once and admitted it was wrong and corrected myself. And you hang your entire argument on this. Sad. This is called a strawman argument.
Newman’s point I made originally remains right. What I’ve said is correct. You are talking about a bunch of minor supplemental documents that go to a few single issues that the patent judges use to interpret the primary document or the response to the primary document.
I do give you full marks as a smoke blower. Anecdotally, people I know that are patent judges have told me about the same thing as I have said here.
I am not sure why you think because a few supplemental documents are added that add little work for the patent judge are a big deal. Nor have you admitted that the primary document remains the same throughout the process. I can only assume that you have never done litigation and don’t understand that huge documents like this get generated but aren’t much work for the judge.
But whatever. I am done with this one.
Night Writer – you were done when you attempted 100%.
That you now backpeddle to 80% really does not help you.
Wow. Hanging around with all these t rolls has finally turned you anon.
Time to reset yourself anon.
“So no actual substance but I am just wrong. OK. Sure.”
As I said, you are wrong on all counts. Now you want “actual substance.” From others?
Ok. Number One, you said “Anyone that has ever done litigation knows that all that fluff was just to prove a point or two in the primary document.”
Wrong. That “fluff” was “not just to prove a point or two in the primary document.” The dispositive witness testimony (according to the Fed. Cir.) in the PTAB trial of Valve Corp. v. Ironburg Inventions concerned whether a document was actually prior art.
Shall we go on?
S. Morse >>The dispositive witness testimony (according to the Fed. Cir.) in the PTAB trial of Valve Corp. v. Ironburg Inventions concerned whether a document was actually prior art.
And you think that is a big deal? It isn’t. And that is characterized exactly as I said it was. I’ll bet the response said it wasn’t prior art and laid out the reasons and the deposition (which the patent judges didn’t have to be there for) was just an elaboration of this one issue.
So, again. Nice try. You are trying to claim that depositions are some huge amount of work for judges when they are not and you won’t admit that the primary documents and issues are the same as they are at institution.
Look, boy, your game is obvious. You just ignore the important points and yap on and on about things that are wrong. And you ridiculously repeat over and over again a few imprecise statements I made in a casual comment.
Just ridiculous crxp.
S. Morse, boy, anyone that understands litigation knows the crxp you are spewing is nonsense.
I can only image your purpose to yap on and on like this is to confuse the issues.
Newman was right in what she said. Nothing you said takes away from it. You are just a ridiculous yapper.
S. Morse, yapper boy, recognize that not only was the issue raised in the response whether it was prior art or not but that patent judges evaluated this issue at institution as they had to come to the conclusion that it was more than 50% likely that it was prior art.
Yappy little boy trying to blow smoke to make it impossible to discuss issues on a blog.
You do remind me of the Marxists that are running the D party right now. You just think you are right in face of counter-evidence and reality. Get your hands out of you pants yappy boy.
Those attorneys who actually do trial work at the PTAB will be delighted to hear that a trial is mere “fluff.”
Not An Examination.
Not sure if my pal wants to explore the ramifications of his (multiple times) stressed point of “Not an examination.”
For example, the law provides for a patent grant for examined claims (including the presence and level of the presumption of validity — the same presumption as a stick in the bundle of property rights that suffers a taking at the post-grant institution decision).
GIVEN that the IPR is “Not an Examination!”… by what mechanism is ANY change in claim (and thus new claim scope, and thus new ‘metes and bounds’ of any resultant patent rights actually established under the law?
This is a MAJOR ‘oopsie’ and extremely poor writing of the AIA that is (at least one of) the elephant in the room.
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.
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.
The issue here is IPRs, hypocrite.
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).
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.
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.
“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?
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.
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).
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.
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.
Good analysis of Judge Newman’s puzzling two part dissent in this case Greg.
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.
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.
[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.
Greg’s got the better read here.
(egads, me agreeing with both Shifty and Greg on the same day)
grow a pair anon.
Again — just because you do not agree does not mean that the other person is weak or needs to grow a pair.
For example, in this thread alone I provide many distinctions. Feel free to actually engage on the merits of any of them.
The point is that the patent judges are not a “neutral arbiter” because they have a motive to institute to get more points because once they have spent the time to institute they have done most of the work to either invalidate or not.
The petition is the primary document in both cases.
Nice try Greg but you mischaracterized what Newman said.
[Administrative p]atent judges are not a “neutral arbiter” because they have a motive to institute to get more points…
Do they have such a motivation? I have certainly read a lot of allegations to that effect, but I have not seen much actual evidence on point. Here is what we know, from Ron Katznelson’s very informative publication on the subject (URL below]:
The institution process takes six months start-to-finish, while a trial, once instituted, takes one year. That is to say, if APJ #1 chooses to institute, she will receive 12 DUs for 18 months of work.
Meanwhile, APJ #2 chooses not to institute a different petition, so he will receive 5.5 DUs for 6 months of work, at which point #2’s docket will remain free to take on another institution decision (good for another 5.5 DUs) over the following 6 months. If that second petition is also denied, then #2’s docket remains free to take on yet another institution petition.
At the end of 18 months, APJ1 will have earned 12 DUs, while APJ2 will have earned 16.5. Explain to me again how this amounts to a structural bias in favor of institution.
link to poseidon01.ssrn.com
Naïvely modeling an institution as taking 6 months of work and a FWD as taking 12 months of work is begging the question. The issue is: based on the actual effort necessary to complete these tasks, whether or not APJs are incentivized towards institutions.
Very true. In order to know whether there is a structural bias here, we would need to know what effort is required for each of these tasks, what control each APJ has over what sorts of cases are assigned, and a host of other factors that we cannot learn merely from Appendix C of the Katznelson paper (interesting and informative though Appendix C might be).
NW, however, is proposing a naïve model, in which an APJ is biased to institute to get the extra 6.5 DUs. I was merely illustrating that one can just as plausibly gin up a naïve model in which the bias is actually to deny institution.
How the actual self-interest calculus runs is largely opaque to any but an actual APJ. I would, of course, love to hear some inside accounts in that respect, but I doubt that any such are forthcoming. Short of that sort of evidence, however, good luck to the appellant here (or the US Inventor amici) proving their due process challenge.
How the self-interest calculus runs is it that it matters not one whit whether we grant or deny. We just pick up the next case because there is plenty of work for everybody.
That has to be the most PollyAnna and unrealistic view of any bureaucratic environment that I have ever seen — the very opposite of a “self-interest” driver.
S. Morse >>How the self-interest calculus runs is it that it matters not one whit whether we grant or deny. We just pick up the next case because there is plenty of work for everybody.
You are so FOS. 1) I know that you don’t take things off the docket as there is a person that assigns the IPRs and that getting similar IPRs can save a massive amount of work.
2) The point of Newman is that all the issues have already been visited in the primary documents during institution so the patent judge has already determined that they are more likely than not indicate that the claims are invalid. So doing both the institution decision and invalidity decision biases the fact finder.
Never ending crxp from you.
If there is any doubt (due to the comment nesting limit), my comment is to my pal Shifty.
The point of Newman is that all the issues have already been visited in the primary documents during institution so the patent judge has already determined that they are more likely than not indicate that the claims are invalid. So doing both the institution decision and invalidity decision biases the fact finder.
How does this introduce bias? The implication is that we would only have an unbiased conclusion if one panel decides institution and a second, independent panel delivers the final decision.
Imagine, however, that the invalidity contest were to play out in an Art. III court, instead of the PTAB. Would you call the process “biased” because all issues are decided by a single jury? Does anyone suppose that two separate juries are necessary in order for the trial to be regarded as “unbiased”?
The PTAB panel that delivers the final decision is not “biased” because it also decided the institution. That panel is simply well informed about the record, which is not the same thing as “bias.”
Gregg,
For your analogy to work, you would need to have the juries deciding whether or not a case could even be filed.
“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
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.
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.
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.
More smoke Ben. The issue in this case is IPRs.
We talk about the structural problems with examination often in terms of patent quality.
My dear Ben, surely you aren’t you aren’t accusing the Bobbsy Twins of being intellectually dishonest shills…?
Oh, the incivility ….
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.
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.
“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?
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.