Influencing PTAB Judges

The US GAO (Gov’t Accountability Office) has released its report on the Patent Trial & Appeal Board — providing evidence to support the open secret that (1) political appointees have power to influence PTAB judicial decisions; and (2) most PTAB Judges feel their independence has been impacted by oversight practices. The report calls for increased transparency in PTAB Judicial oversight.

Read the report here:

The next report may need to move one level up and focus on outside lobbying of political appointees and its impact on USPTO decisionmaking.

72 thoughts on “Influencing PTAB Judges

  1. 10

    Off-topic:
    Nevermind the PTAB judges and the mistakes they make, it seems like basic Examiner training has really gone downhill, as well as supervision, as I’m getting a number of Office Actions (signed off by Primaries and SPEs) with basic mistakes. For example, in a recent Office Action, the Examiner cited a reference in a rejection that had filing and publication dates AFTER the effective filing date of the application. This is showing up in art units in different TCs.

    1. 10.1

      Maybe the OA template should be revised to provide a section that requires the examiner to state how each applied reference qualifies as prior art. Couldn’t hurt. And it might actually cause SPE’s and primaries who are used to blindly signing off on any OA as long as every claim is rejected to actually confirm the reference(s) is(are) prior art. And if a reference is not put a nice clear error on whoever signed’s rating. Easy fix. Which is probably why it will never happen.

      1. 10.1.1

        No template should be used mindlessly — by anyone.

        (In other words, the fault is less in any available template and more in the bureaucratic copy-n-paste use)

        1. 10.1.1.1

          That you never tire of making an a$$ of yourself is simply amazing.

          1. 10.1.1.1.1

            As if your projection means anything, mr. smelly breeze.

            Hint: you don’t have the credibility that you think that you have.

            Instead, perhaps you should develop a thicker skin and not be so ‘offended’ (by even the smallest of pushback).

            1. 10.1.1.1.1.1

              “you don’t have the credibility that you think that you have.”

              Pot, meet Kettle.

              1. 10.1.1.1.1.1.1

                Not always, but sometimes the lack of self-awareness is really sublimely amusing. Thanks for sharing that one, as I would have missed it otherwise.

                1. That he thinks “No template should be used mindlessly — by anyone” is some pearl of wisdom he is dispensing and gives him some undefined “credibility” is truly hilarious.

  2. 9

    Bros the ftc is trying to prohibit non-compete agreements as a condition of employment. You think they will succeed?

    link to yahoo.com

    1. 9.1

      Take some of the bite out of the federal trade secret legislation, which is good.

      1. 9.2.1

        Resolved newyears, to not post anything that can’t pass the Anon test, so just watch yer fingernails turn blue waiting, but …. the legalworldshattering comment from me, is… just um die Ecke,
        except, my wife writes most of it, kinda like Alan G.’s 🙂 we know
        our place. 🙂 Zingy zingh, best to ya, and be leery of disguised wooden nickels !

        1. 9.2.1.1

          +1

      2. 9.2.2

        yeah I had meant to see that jre discussion. it was in my youtube suggestions but I’ve got a lot going on lately.

        1. 9.2.2.1

          No prob

  3. 8

    The whole thing is pretty crazy when you think about it.

    The USPTO gets an inventor to pay all this money to get a patent examined and issued and then the director can decide to cancel your claims if someone thinks the PTO did a poor job. This really should not be within the PTO.

    There should be an adversarial process between the PTO and the DCs or another independent agency that accommodates the patent judges.

    1. 8.1

      If your premise is that the Director can, effectively, overrule a PTAB decision that would have held the patent not invalid, of course you’re right.
      But at least then the patentee can appeal to the FedCir (or, I think, still seek review in E.D.Va under 35 USC 145; but don’t quote me on that); so the question of validity is at least reviewable by an Article 3 court, and doesn’t lie solely within the PTO.
      I think the question is to what extent there should be an appeal body within the PTO and to what extent it should be “independent” of PTO management. My answer to the first part is definitely yes, because it provides a relatively inexpensive way to provide a check on errors by examiners during ex parte prosecution, the old function of the Board of Appeals. But the situation is much more complex now, with the PTAB also having jurisdiction over issued patents and acting in a quasi-judicial function effectively between a patentee and a third party, so the issue of management influence is a real problem. But this is what Congress, with the aid of the Supreme Court, have stuck us with.

      1. 8.1.1

        Thanks for a substantive comment.

        1. 8.1.1.1

          You’re welcome.

    2. 8.2

      The USPTO gets an inventor to pay all this money to get a patent examined and issued and then the director can decide to cancel your claims if someone thinks the PTO did a poor job. This really should not be within the PTO.

      Definitely. The conflict of interest here is very clear—the PTO can collect one set of fees from the patent applicant to allow a weak set of claims, and then another set of fees from the accused infringer to annul those granted claims. There must be a review mechanism for granted claims (no agency operated by humans will achieve 100% correct results), but the entity reviewing granted claims should not be under the same direction as the entity granting the claims.

      Ideally, the PTAB should exist as a specialized court within the Art. III branch. The structural guarantees of Art. III are designed to ensure independence of the decision maker from political influence, and they have a >240 year of a track record of achieving that goal.

      1. 8.2.1

        “The conflict of interest here is very clear—the PTO can collect one set of fees from the patent applicant to allow a weak set of claims, and then another set of fees from the accused infringer to annul those granted claims.”

        No one worries about the conflict of interest that is the PTO being funded by maintenance fees.

        Conflicts of interests are fine as long as their favor applicants and patent holders.

        1. 8.2.1.1

          This is a worthy point, but it does not really negate the force of the conflict of interest that is discussed in 8.2. It is possible for both conflicts of interest to be bad. Moreover, it is possible to achieve an improvement by removing either, even if one does not remove both.

        2. 8.2.1.2

          Funded for services rendered is entirely different.

          Yet again, actual facts get in the way of your desired narrative.

      2. 8.2.2

        Greg, yes, I think that too. The patent judges should be as independent as possible and outside the USPTO.

    3. 8.3

      It is utter nonsense. The USPTO should be required to indemnify their product.

      1. 8.3.1

        Here we agree. It would go a long way to resolving the conflict of interest if there were a rule that the PTO must refund filing & prosecution fees for any patents whose claims are later canceled in a certificate of correction post-IPR, -PGR, or -interference.

        1. 8.3.1.1

          Hmmm, what other expectation values are created with that while “turn the inchoate right into a basket of legal personal property rights” thing – with the legislated presence and degree of presumption of validity obtained AT grant?

          Refunding fees does not even begin to scratch the surface, now does it?

      2. 8.3.2

        Josh,

        Do you mean like a FranchisOR would indemnify a FramchisEE?

  4. 7

    I’d like a breakdown about whether we’re talking general policy influence (e.g., pro/anti patents) or specific influence (e.g., party x should win).

    I think we generally accept that the latter type routinely occurs wrt “executive actions,” but it would seem to be at odds with the supposedly “quasi-judicial” nature of PTAB.

  5. 6

    USPTO Kangaroo court.

    1. 6.1

      Why disparage kangaroos?

  6. 5

    Naturally, it is important to have reports like this from time to time. Congress needs up to date info in order to make adjustments as necessary. To speak, however, of “PTAB Judges feel[ing that] their independence has been impacted” rather misunderstands the fundamental arrangement. The PTAB is not intended to be independent of political influence. That is why Congress placed it under the direct supervision of a political appointee.

    If Congress wants independent decision making in IPRs, they should pluck the PTAB out of the PTO and replant it in the Art. III branch. I think that would have been the better idea from the start, but that is not what Congress chose to do. They can change that whenever they wish, but I do not see much evidence of an enthusiasm among Congress for such a change.

    1. 5.1

      Let’s not forget that the Supreme Court (again) legislated from the bench and rewrote the words of Congress to change the background under which Congress wrote (albeit p00rly, as has been pointed out many times) the AIA.

      The nature of the pseudo-judicial function within the administrative agency of the patent office is NOT what it was when Congress passed the AIA.

    2. 5.2

      Small world. Often, events unfolding in one jurisdiction remind us of similar events that just happened in another. The judicial function of the European Patent Office, its Enlarged Board of Appeal, which sets the law of patentability for all Europe, was until recently universally seen as being free from politics, and seen as being free from pressure from EPO management or from the EPO’s administrative function in patent law. Not any more though.

      Once upon a time, there was trust in the separation of powers. Hence the supposition in 1973, when the European Patent Convention was ratified, that the European Patent Organisation (and its President) could be entrusted with a judicial function. That trust held until very recently. Now though it is withering away as a consequence of some remarkable recent Decisions of the EPO’s President and Administrative Council and, afterwards, the EPO’s EBA, giving effect to the wishes of the President. Intelligent people, mindful of what might hold for their own personal future, can see which way the wind is blowing and on which side their bread is buttered, so one can hardly blame them for their pragmatism. Nevertheless, it’s all very regrettable, I must say.

      1. 5.2.1

        Events have not “unfolded” in parallel as you suggest, MaxDrei, as here, Executive Branch administrative agencies that have judicial-like functions have their “degree of separation” set by their charter laws.

        The USPTO (especially in comparison to other Executive Branch agencies) has always had a “smaller separation of powers.”

        I do not fault you though, as understanding the nature of administrative agencies often eludes even our Congress critters.

      2. 5.2.2

        Hey MD aired it is still my son. It is still identity theft, bankruptcy fraud, and family law. Just because
        they assumed I hired them and was in the North Shore doesn’t change anything. Slither back under your rock

          1. 5.2.2.1.1

            I am now out of TN. The embezzlement collected on the hidden bankruptcy identity theft will now be addressed.

  7. 4

    This is pretty much in line with what I’ve been saying. I think too there is a big prejudice in hiring patent judges that are anti-patent. At least from the first batch.

    I think there are financial incentives to invalidate claims and I think the patent judges are under pressure to be anti-patent to stay on the PTAB portion that judges the IPRPs rather than the appeals.

    The patent judges can be moved from appeals to IPRPs and the IPRPs is a much more desirable job from what I’ve heard. So, there is a lot of power to control the outcome of the IPRPs in that if you don’t comply you are vanished to the appeals portion. From what I’ve heard, it is much harder to make your hours in the appeal portion and there are more bonuses available in the IPRP portion.

    1. 4.1

      I think the patent judges are under pressure to be anti-patent to stay on the PTAB portion that judges the IPRPs rather than the appeals.

      It is a common misconception that there is a “portion” of the PTAB that handles IPRs and another “portion” that handles ex parte appeals. There is no such division. Anyone who has not already listened to the Clause 8 podcast episode with former APJ Joseph Lentivech should do so. It is enlightening to learn how cases are assigned among APJs and who does what.

      From what I’ve heard, it is much harder to make your hours in the appeal portion and there are more bonuses available in the IPRP portion.

      For what little it is worth, the exact opposite is true from what I have heard. Of course, our own anecdotal reports are worth rather little. It would be useful if there were real data to speak to this point, but I am not aware of any published data. Does anyone else know of such?

      1. 4.1.1

        Well, I have friends who do the IPRs (and have done the ex parte appeals) and what I said is correct.

        1. 4.1.1.1

          B-b-b-but you do not have published data so Greg won’t believe you.

          1. 4.1.1.1.1

            Just bizarre how no matter what I write that reflects reality there is always all this ridiculous blowback. It is as if people are paid just to try to discredit any statement made that is not anti-patent.

            1. 4.1.1.1.1.1

              Not too bizarre at all, considering that “the narrative” IS the modern day battleground.

      2. 4.1.2

        Wrong wrong and wrong. Listen to the podcast again. And in fact wrong.

        1. 4.1.2.1

          Thanks for the correction. Can you be more specific in particulars?

          1. 4.1.2.1.1

            For example, in the podcast the former APJ said that all newbies do only ex parte appeals. After some learning he was asked each year if he wanted to do inter partes and always declined. There remains a non-trivial number of APJs who work solely in ex parte appeals.

            1. 4.1.2.1.1.1

              So, A. Lincoln, nothing you wrote there contradicts what I said.

              1. 4.1.2.1.1.1.1

                Quite the contrary. You postulated that APJs “are under pressure to be anti-patent to stay on the PTAB portion that judges the IPRPs rather than the appeals.” As Lincoln confirms, any APJ of sufficient seniority can get on the IPR panels if they wish. Many choose not to, but there is no scramble to toe the company line in order to be allowed on those panels. A. Lincoln has meaningfully contradicted the essential thrust of your #4.

                1. Greg >>any APJ of sufficient seniority can get on the IPR panels if they wish.

                  Lincoln >>After some learning he was asked each year if he wanted to do inter partes and always declined.

                  What school did you take logic from? A patent judge being asked if he wanted to be on an IPR panel and declining does not refute a single thing I said. And a patent judge that never sat on an IPR panel has no first-hand knowledge regarding the issue.

                2. Greg,

                  It more appears that my pal with the shifting historical pseudonym has meaningfully contradicted the thrust of YOUR position (and not that as advanced by Night Writer.

                  After all, he responded not only directly to YOUR post (by number indicator) but also directly answered YOUR clarifying post.

                  Why you would now want to make it appear that it was your antagonist that was being corrected is rather bizarre (even if unsurprising given your typical hypocritical dissembling).

      3. 4.1.3

        Greg, there is fairly thick division line. Not much cross-over.

    2. 4.2

      “From what I’ve heard, it is much harder to make your hours in the appeal portion and there are more bonuses available in the IPRP portion.”

      It’s also a lot easier for examiners to make their hours and earn bonuses by allowing claims. Haven’t seen much concern over that bias.

      1. 4.2.1

        Your “theory” is not actuality.

        But why let an article inconvenient fact get in the way?

        1. 4.2.1.1

          Article ==> another

          Damm autocorrect

      2. 4.2.2

        Really? I do not know the count system well. Does an examiner get greater credit for an allowance than a final rejection? If yes, I would agree with your assertion. If not, it would seem that the favored course might be to go the final rejection route. Isn’t it easier to revisit the same claims in an RCE or continuation, or claims that have not been examined?

        1. 4.2.2.1

          I do not know if the numbers cited here are still accurate, but at least back in 2014 an examiner received 0.25 counts for a final rejection, but 0.5 for an allowance.

          1. 4.2.2.1.1

            – an allowance ended the train though, and — typically — the rejection led to an RCE and more counts.

            1. 4.2.2.1.1.1

              And if the difference between an allowance and a final rejection that is likely lead to an RCE is just 0.25 counts, I am guessing the final rejection is the path of least resistance to more counts.

              1. 4.2.2.1.1.1.1

                Absolutely — and it used to be even worse (would be interesting to see one of those histograms on frequency of “RCE Gravy Train”)…

                And in addition to counts, you also have the general “Just Say No” zeitgeist of the Office. Greg — yet again — shows just out of touch he is.

                1. Met a former examiner (now attorney) this week (through mutual friends).

                  He bragged that in the business unit section he had given three grants in four hundred cases.

                  Still trying to figure out why that was a bragging point.

  8. 3

    Let’s face it. As far as I know, the majority of PTAB judges are former Examiners, and they are used to being told what to do by USPTO Management, including the political appointees, and PTAB judges don’t have POPA to protect them.

  9. 2

    ? That was no secret, the PTO Director could always appoint herself to any PTAB board by statute. Now we also have the Sup. Ct. recently deciding the Director MUST have agency executive authority over the Board. Is the point here to only exert that necessary presidential-appointed executive control over the Board in written communications?

    1. 2.1

      Sunshine.

      Is that too much to ask, Paul?

      1. 2.1.1

        Is it too much to expect a legal definition of the vague term “sunshine,” what kind of “sunshine” is intended and required, and how it should be implemented?

        1. 2.1.1.1

          Are you seriously saying that you think that the term ‘sunshine’ is too vague?

          Really?

          1. 2.1.1.1.1

            Perhaps he has not heard the phrase “sunshine is the best disinfectant.” I would think after covid, everyone would be familiar with this phrase.

            1. 2.1.1.1.1.1

              I am more than certain that he has heard of it (I have used it on multiple occasions in several different contexts).Paul is just being Paul and not wanting to accept the wisdom of yours truly.

              As usual, his loss.

  10. 1

    Lobbying alone may well be merely small potatoes in the ‘influence’ game.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture