Office Actions per Grant Ratio (OGR): A New Metric for Patent Examiner Activity

By Prof. Sean Tu (WVU) with Chris Holt (VP at LexisNexis IP)

Previously, I published a study which set out to determine how examiners issued patent applications. This original study focused only on issued patents, and coded over 1.5 million patents issued January 2001-July 2011. The main limitation on this study was that it focused only on allowed patents. Accordingly it suffered from a “denominator” problem. Specifically, it was difficult to determine how examiners actually behaved without knowing how many pending applications they had in their docket, as well as how many applications went abandoned.

Six years later, I have followed up on this study by collecting information regarding not only the examiners’ issued patents, but their abandoned patents as well as the total number of office actions issued by every examiner with an active docket as of June 2017. Using LexisNexis PatentAdvisor, we were able to pull the dockets of all active examiners (every examiner with a pending application as of June 8, 2017). Accordingly, this study captures 8,537,660 office actions, 2,812,177 granted patents and 1,255,552 abandonments from 9,535 examiners including from January 1, 2001 to June 8, 2017.

This new dataset is both more detailed and more narrow compared to my previous study. However, I believe, this information is more useful to practitioners today because it shows what is going on at the office at this moment in time. It excludes previous examiners who have retired or are no longer at the PTO. These data exclude examiners with any pending training academy cases (Technology Center 4000) in their active docket. Accordingly, these data filter out the most junior examiners.

From this dataset, we create two new examiner metrics the: (1) Office Actions per Grant Ratio (OGR) and (2) Office Action per Disposal Ratio (ODR). The OGR score simply divides the examiner’s total number of Office Actions by the number of issued patents. The ODR score divides the examiner’s total number of Office Actions by the sum of the number of issued patents and abandonments. From these two scores, we can determine if examiners are spending their time writing a lot of Office Actions or granting patents.

As shown in Figure 1, overall, there is a wide range of OGR scores across the United States Patent & Trademark Office (USPTO), commonly ranging from approximately 0.2 to 23. Furthermore, overall, most examiners have an OGR of 3.0 or below. Examiners with training academy cases (Technology Center 4000) have been filtered from these data.

As shown in Figure 2, these OGR scores roughly correlate to allowance rates, but there are a significant number of examiners that do not have an allowance rate that corresponds with OGR scores. Predictably, those examiners with a low OGR have a high allowance rate (those examiners who grant patents within one Office Action will almost necessarily grant more patents). In contrast, examiners with a high OGR score have a low allowance rate, that is, those examiners who write many office actions before allowance will have lower allowance rate. Accordingly, at the periphery, allowance rate and OGR correlates fairly well. This relationship between OGR and allowance rate, however, is not perfectly linear, and this is especially true for those examiners with an OGR score between 2.0 and 4.9.

Furthermore, there are more examiners with high OGR scores in Technology Centers 1600 and 1700, which may reflect the complex nature associated with biotechnology and chemical patents. Specifically, of the examiners that have an OGR score of 10 or more, 17.6% and 12.8% come from 1700 and 1600, respectively. In contrast, there are a higher number of examiners with low OGR scores in Technology Center 2800, which corresponds to Semiconductors, Electrical and Optical Systems and Components. Specifically, 64% of examiners with an OGR score of lower than 1.0 come from Technology Center 2800.

Interestingly, when broken down into Workgroups, this study finds that there can be large variation in OGR scores. For example, Figure 3 shows that in Technology Center 1700 (Chemical and Materials Engineering), Workgroup 1780 (Food, Miscellaneous Articles, Stock Material) has a disproportionate number of examiners with high OGR scores when compared with other Workgroups within 1700. In contrast, Workgroup 1750 (Solar Cells and Electrochemistry) has a disproportionately high number of examiners with low OGR scores when compared with other Workgroups within 1700. Similarly, in Technology Center 3600, Workgroups 3620 and 3680 have many examiners with high OGR scores, which is unsurprising since both Workgroups encompass “Data Processing: Financial, Business Practice, Management, or Cost/Price Determination” or business methods type applications.


This paper confirms many of the findings from my previous study. Specifically, junior examiners have a much lower allowance rate and a much higher OGR score than their more experienced counterparts. This is unsurprising since junior examiners will have written only a few Office Actions (usually less than 500) and have only allowed a few cases. However, this study also goes much further than my previous study. By looking at allowances and abandonments as a function of Office Actions written, we can get an idea of the general rate of patenting at the patent office and how these rates differs among different technology centers, workgroups and art units. This study shows how examiners spend their time, either writing office actions or allowing cases.

This study focuses on overall patent office trends as well as trends at the technology center and workgroup levels.  PatentAdvisor’s “Examiner Time Allocation” metric can also be used to forecast the time and expense required to obtain a patent and is based on each specific examiner’s body of work.

As with my previous study, I note that there is no “ideal” patent allowance rate. It is possible that both populations of examiners with low and high OGR scores are doing an excellent job of rejecting “bad” patents and allowing “good” patents. This study gives insight into how “average” examiners behave in a particular technology group. One argument may be that examiners who are two or three standard deviations from this “average” should be scrutinized at a higher degree.

A full draft of “Office Actions per Grant Ratio (OGR): A New Metric for Patent Examiner Activity” is available on SSRN at: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3100326.

Is the Limiting of Scandalous Marks a Viewpoint Neutral Government Activity?

by Dennis Crouch

In the FUCT case (In re Brunetti), the Federal Circuit mooted the Lanham Act’s prohibition against registering immoral or scandalous marks — holding the limitation to be an unconstitutional restriction of free speech and reversing the TTAB holding that Bruneti’s “FUCT” mark is unregistrable.  The FUCT case follows the Supreme Court’s 2017 SLANTS decision (Matal v. Tam) which similarly voided the prohibition on registering disparaging marks. (Erik Brunetti is shown on the right.)

 

The US Government (USPTO/DOJ) has petitioned for en banc review of the decision – arguing that the immoral/scandalous prohibition should stand.  Notably, the US argues that limiting registration of disparaging marks at issue in Tam was more suspect because it was directed toward a particular viewpoint (e.g., disparagement of people …). On the other hand, the parallel prohibition on registering scandalous marks is viewpoint neutral.  Despite that difference, the Federal Circuit applied a strict scrutiny test.  The US argues that strict scrutiny should not apply here but rather that the Federal Circuit should develop a separate and new test for “the constitutionality of viewpoint-neutral limitations on registrability.”

Brunetti has responded. The brief is certainly not the best ever filed, but it raises important points:

  • Scandalous Marks: The Government incorrectly asserts that the Clause only prohibits registration of marks that contain “profanity, excretory or sexual” matter — despite the plain language of the text.
  • Using “Dirty” Words as a Statement: “[T]he Government chooses to ignore the Supreme Court’s decision that profanity is viewpoint.” See Cohen v. California, 403 U.S. 15 (1971).
  • As applied:  “It is obvious that many marks refused as scandalous . . .  are expressing viewpoint. Specifically in this case, the [TTAB] affirmed the refusal of Brunetti’s  mark because of his viewpoint. The Board asserted that Brunetti “objectifies women and offers degrading examples of extreme misogyny,” “anti-social imagery,” is “lacking in taste,” and contains a theme “of extreme nihilism—displaying an unending succession of anti-social imagery of executions, despair, violent and bloody scenes including dismemberment, hellacious or apocalyptic events, and dozens of examples of other imagery lacking in taste.” While the Board incorrectly characterized Brunetti’s views, it is clear that his views were intertwined with the Board’ decision as to whether his mark is scandalous.
  • Policy Parade: What if the Government Could Restrict Scandalous/Immoral Statements: “What is really frightening is what state and local governments could do if the Scandalous Clause were constitutional. For example, a city could deny a license if it did not like the name of the restaurant (Sambo’s Restaurants, Inc. v. City of Ann Arbor, 663 F. 2d 686 (6th Cir. 1981)), the name of the corporation (Kalman v. Cortes, 723 F.Supp.2d 766 (ED. Pa. 2010) (involving “I Choose Hell Productions LLC”), or a label (Bad Frog Brewery v. New York State Liquor Authority, 134 F.3d 87 (2d Cir. 1998)). . . . If the Scandalous Clause were constitutional then a city or state could effectively prevent disfavored organizations from doing business by denying business licenses, sales tax permits, etc., on the grounds that such organizations or their names are scandalous. Both the NRA and Planned Parenthood could be effectively prevented from operating in different parts of this country depending on the political views of the locality.  . . .

Read the briefs:

We are all FUCT

 

 

 

Affirming on Other Grounds at the Federal Circuit

Droplets v. Iancu (Supreme Court 2018)

A new petition for writ of certiorari questions the extent that the Federal Circuit can affirm a PTAB IPR decision on grounds different than those relied upon by the Board.

The rule in the Federal Circuit yes, affirmance-on-other-grounds is allowed so long as the Federal Circuit does not need to decide new issues of “fact, policy, or agency expertise.”  In re Comiskey, 554 F.3d 967, 974 (Fed. Cir. 2009). The Federal Circuit’s approach is in some amount of tension with the Chenery doctrine of Administrative law which advises courts to “judge the propriety of [agency] action solely by the grounds invoked by the agency.” SEC v. Chenery, 332 U.S. 194 (1947).  Droplets asks the question:

Whether “an agency’s action must be upheld, if at all, on the basis articulated by the agency itself” (State Farm, 463 U.S. at 50), or whether a court can substitute its own views for the agency’s whenever the issue is “legal in nature” (In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009)).

There are a few difficulties with Droplets case here – most pointedly is the fact that the Federal Circuit did not expressly rule on other grounds, but instead affirmed without opinion (R.36).  Here, the Droplets argument comes from a “tacit” admission from the PTO Solicitor that the Board’s basis for its decision was inadequate.

Read the petition: droplets v. iancu–cert.petition–FILED

Supreme Court: Three Patent Cases This Term!

by Dennis Crouch

The Supreme Court patent docket is light this year – at least in terms of granted petitions.  We all await the outcome of Oil States. Conventional wisdom is that the case will be a dud and that the Supreme Court confirm the viability of Inter Partes Review proceedings.  Still, the case is fascinating for its potential dramatic outcome; historic antecedents and core constitutional arguments.  The companion to Oil States is SAS Institute, which focuses on the more nuanced issue of whether the PTO can partially-grant an IPR petition.  [I’ll note here that SAS is something of a sleeper case this term being overshadowed by Oil States (I actually forgot about it when writing this post).  The outcome though could substantially change IPR strategy.]

The third case – WesternGeco v. ION Geophysical has a much more narrow focus – whether lost profit damages are available for an infringer’s extra-territorial use of an unlicensed export.  The case would have been much bigger but for the 2007 Supreme Court decision in Microsoft v. AT&T holding that electronic files don’t count as components under the export provisions of 35 U.S.C. 271(f).

Question presented in WesternGeco:

Whether the U.S. Court of Appeals for the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f).

I previously discussed WesternGeco’s opening brief and supporting amici (including USDOJ) arguing that lost profits should be available under the Patent Act.  The basic argument is that 271(f) is a form of infringement, and 35 U.S.C. § 284 requires an award of “damages adequate to compensate for the infringement.”  WesternGeco argues that this provision includes lost-profits when proven.  The Federal Circuit disagreed — holding that, after considering the presumption against extraterritorial application of US law, those eventual profits were too remote from the actual act of infringement (component export) to be actionable.

SCOTUS: Damages for Foreign Lost Profits Stemming from US Infringement

The adjudged infringer Ion has now responded along with two supporting briefs.

Respondent’s Brief: The respondent begins its brief with a restatement of the question presented — focusing on the fact that the claimed lost profits are associated with a “third party’s subsequent foreign use of the infringing product.”

Whether a patentee that establishes infringement of its patent is entitled to recover lost profits under 35 U.S.C. 284 for a third party’s subsequent foreign use of the infringing product.

In its brief ION walks through its position:

Petitioner seeks to recover the profits it would have earned for conducting marine surveys in international waters. . . The Patent Act, however, does not allow recovery for an injury that occurred outside the territorial jurisdiction of the United States. The presumption against extraterritoriality forecloses petitioner’s claimed lost-profits damages in this case. . . .

Applying this Court’s two-step framework for analyzing the extraterritorial effect of a statute. . . As to the first step: Section 284, which instructs a court to “award the claimant damages adequate to compensate for the infringement,” gives no “clear, affirmative indication” of extraterritorial reach. RJR Nabisco. . . . As to the second step: it cannot seriously be disputed that awarding lost-profits damages here requires a foreign application
of the statute, because it compensates petitioner
for a foreign injury—one that occurred outside the United States only after third parties took actions abroad. Indeed, petitioner repeatedly dubs its lost profits “foreign.” The only link that petitioner’s foreign injury has to the United States is that respondent’s act of domestic infringement is a but-for cause of that injury—a link the Court has deemed insufficient in applying the presumption against extraterritoriality.

The brief here does a nice job of directly addressing and confronting particular points made by petitioner and the US Gov’t in their briefs.

Both the EFF brief and the Fairchild Semiconductor brief argue, inter alia, that the proposed “worldwide damage regime” will have the negative consequence of overcompensating patent owners.  (quoting EFF brief).

The closest companion case this term is another Microsoft case — this one involving the extraterritorial scope of a U.S. warrant — does Microsoft need to turn-over data stored on a foreign server?

Oral arguments in WesternGeco are set for April 16.

 

Evidence Necessary for Showing a New Element Would have Been Obvious

DSS Tech. v. Apple (Fed. Cir. 2018)

In its March 23 opinion, the Federal Circuit reversed two USPTO IPR decisions favoring the patent challenger — holding that “the Board did not provide a sufficient explanation for its conclusions” of obviousness.

In its decision, the PTAB held that the “ordinary creativity” of a skilled artisan would supplied the previously undisclosed function of energizing a transmitter base-station using “low duty cycle RF bursts” — even though it was not taught in any of the cited prior art.  The PTAB did not provide evidence to support its creative-leap.  Still, that leap might have been appropriate if the addition was “unusually simple” or “particularly straightforward.”  On appeal though, the Federal Circuit found that the PTAB had not shown its case — its conclusions lacked evidentiary support.

Dissent by Judge Newman mostly on procedure.

JOLT – Special Issue on API Copyright

Just as the Federal Circuit was releasing its decision in Oracle v. Google, Harvard’s Journal of Law & Technology was also releasing its special issue on the topic: Protecting Software Interfaces with Copyright Law.

Congratulations to the AIPLA G.S. Rich Patent Moot Court finalists!

By Jason Rantanen

The regional round of the AIPLA Giles S. Rich Patent Moot Court competition took place last weekend.  I know how much work goes into these competitions–merits briefs on both sides plus preparation to argue both sides–so kudos to all competitors.  Particular congratulations go to the winners and runners-up, who will be competing at the Federal Courts Building in Washington D.C. on April 18-20.  The final round will be heard by Judges Prost, Reyna and Chen.

Spoiler alert: the names of the competitors and schools are listed on the next page.

(more…)

Federal Circuit to PTAB: Again, Explain Your Reasoning

Arista Networks v. Cisco Systems (Fed. Cir. 2018)

In what is mecoming a more regular outcome, the Federal Circuit has again vacated a PTAB IPR holding — holding that the USPTO’s panel of Administrative Patent Judges failed to “adequately explain its reasoning on a point that was central to its analysis.”

This time the case involves a PTAB finding for the patentee — that the IPR challenger Arista had not proven obviousness (for several challenged claims of Cisco’s Patent No. 8,051,211).  The identified failure was in addressing a particular argument for how the prior art taught the claimed invention.

Tunneling of Packets: Here, Cisco’s secure networking claims include, inter alia, “tunneling” through an intermediate network – where tunneling is defined as “transmitting a frame without examination, including in layer 2 and layer 3 communications.”  Based upon some claim differentiation, the Board also found that “encapsulation and de-encapsulation” of a frame don’t count as “examination” in this scenario.

In short, while “transmitting a frame” during “tunneling” must be “without examination,” certain kinds of activities involving encapsulation and de-encapsulation are not part of the excluded “examination”—hence may be present in what still qualifies as “tunneling” under the ’211 patent.

Opinion at *5.  The proposed prior art reference (Kunzinger) taught something akin to tunneling, but the PTAB concluded that its intermediary examined the packets.  Arista argued that Kunzinger’s was working with the outer-header of an encapsulated frame — and thus was not examining the frame itself.  The Board did not particularly address this argument.

Unlike the Federal Circuit itself, the PTAB is required to write final written decisions “to ensure that their [judgments] are not ‘arbitrary, capricious, an abuse of discretion, . . . otherwise not in accordance with law . . .[or] unsupported by substantial evidence.’” Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir. 2017) (quoting the APA).   The record must include all factual findings, and a “full and reasonable explanation” their foundation and reasoning.

Here, the court finds:

[T]he Board did not adequately explain why “transmission of the IPSec packet” in Kunzinger includes an “examination” excluded from the “tunneling” claimed in the ’211 patent, even while the described use of fields and tags in the ’211 patent is not such an excluded “examination.”

On remand, it will be interesting to see how the Board responds — likely adding a bit more to its 30 page opinion.

Oracle v. Google: The Federal Circuit goes all-in on copyright and software

By Jason Rantanen

Oracle America, Inc. v. Google LLC (Fed. Cir. 2018) Read opinion

Panel: O’Malley (author), Plager and Taranto*

This is a huge decision on multiple levels, and the latest exchange in the long-running battle between Oracle (the copyright owner) and Google (the alleged infringer).  In the first appeal, the Federal Circuit rejected Google’s arguments that the Java “packages” at issue were unprotectable under copyright law.  The court remanded the case for further proceedings on Google’s fair use defense.  (15 U.S.C. § 107)  On remand, the district court held a jury trial on that issue.  The jury found in favor of fair use and the district judge denied Oracle’s motion for JMOL.

Oracle appealed and the Federal Circuit reversed, essentially going all-in on the issue of copyright infringement when it comes to software. First, fair use is a question that is largely addressed de novo by appellate courts, and second, when it comes to software, the court’s analysis all but says (expressly so!) that fair use can never apply.  This opinion comes on the shoulders of the same panel’s previous opinion concluding that Oracle’s API packages meet the requirements for copyright protection.  I see the court as going “all in” here both by its adoption of a nondeferential standard of review (keeping in mind that Ninth Circuit law is controlling), as well as the combination of its conclusions on protectability and inapplicability of fair use in this context.

Standard of Review

In a detailed discussion of the standards of review, the Federal Circuit concluded that, under Ninth Circuit case law:

  • the jury role in determining whether fair use applies “is limited to determining disputed ‘historical facts’ not the inferences or conclusions to be drawn from those facts” (Slip Op. at 24); “[a]ll jury findings relating to fair use other than its implied findings of historical fact must, under governing Supreme Court and Ninth Circuit case law, be viewed as advisory only.” (id. at 26).
  • we must assess all inferences to be drawn from the historical facts found by the jury
    and the ultimate question of fair use de novo, because the Ninth Circuit has explicitly said we must do so.

This framework should be familiar: it’s essentially the same approach that the court takes in reviewing nonobviousness determination, a fact that did not escape the court’s notice.  Slip Op. at 25, n. 4.  Since the meat of the fair use analysis is in the inferences drawn from the historical facts and the balancing of all the factors, the functional result of this standard of review was that the court largely reviewed the fair use determination de novo.

Fair Use Analysis

Much will be written about the court’s fair use analysis; most of it more insightful than anything I can offer.  The court’s analysis draws heavily on Ninth Circuit caselaw.  Here’s the gist:

  • Factor 1 (Purpose and character of the use): The Federal Circuit concluded that Google’s use was (a) Commercial; (b) Non-transformative.  In addressing the “commercial” aspect, the court drew heavily on the reasoning of Harper & Row and Am. Geophysical Union, and barely mentioned Campbell.  On the question of whether Google’s use was transformative, the court applied this requirement: “To be transformative, a secondary work must either alter the original with new expression, meaning, or message or serve a new purpose distinct from that of the original work.”  Slip Op. at 31.  There’s a lot of grist to grind here in the inevitable Supreme Court appeal.  Bad faith didn’t play a role because (1) it’s one-directional, weighing only against a finding of fair use, and (2) there was no basis for disturbing the jury’s implicit finding of no bad faith.
  • Factor 2 (Nature of the copyrighted work): The Federal Circuit concluded that this factor did weigh in favor of Google, but it was the only one that did.  Here, while the Java API may have met the minimum requirements for copyright protection, “reasonable jurors could have concluded that functional considerations were both substantial and important.”
  • Factor 3 (Amount and substantiality of the portion used): The Federal Circuit concluded that Google did not duplicate “the bare minimum of the 37 API packages, just enough to preserve inter-system consistency in usage,” thus copying only “only so much as was reasonably necessary.”  Instead, the court concluded: “We disagree that such a conclusion would have been reasonable or sufficient on this record.”  (Slip Op, at 46).  Furthermore, “(e)ven assuming the jury accepted Google’s argument that it copied only a small portion of Java, no reasonable jury could conclude that what was copied was qualitatively insignificant, particularly when the material copied was important to the creation of the Android platform.” (Slip Op. at 47)  (Is the court really saying that because the copied material was functionally important, therefore its copying was not fair use?)
  • Factor 4 (Effect upon the potential market): Either the most important factor or an equally important factor; maybe we’ll get more clarity on this in a Supreme Court opinion in this case.   This is basically the derivative/licensed market issue, which commentators can go in circles about.  The short of it is that the Federal Circuit reversed the district judge, agreeing with Oracle that the market harm was “overwhelming.”

Balancing: applying its de novo standard, the Federal Circuit concluded that Google’s use was not fair use.  “There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”  (Slip Op. at 54).

All that said, the court concludes by refusing to say that fair use can never apply to software–although it’s statement simultaneously declines to cross that line while implying that’s what it’s reasoning leads to:

We do not conclude that a fair use defense could never be sustained in an action involving the copying of computer code. Indeed, the Ninth Circuit has made it clear that some such uses can be fair. See Sony, 203 F.3d at 608; Sega, 977 F.2d at 1527-28. We hold that, given the facts relating to the copying at issue here—which differ mate-rially from those at issue in Sony and Sega—Google’s copying and use of this particular code was not fair as a matter of law.

Stay tuned for the en banc petition–or perhaps direct request for certiorari.

*Note that this is the same panel as decided the earlier appeal in this case.  See 13-1021.Opinion.5-7-2014.1

Prior posts:

 

The Landscape of Modern Patent Appeals

By Jason Rantanen

For the past few years, I’ve been working on a project with the working title “the Federal Circuit Database Project.”  The goal of this project is to develop an accurate, reliable and transparent database containing information about the Federal Circuit’s patent law-related decisions that would be of interest to scholars, commentators and policymakers.  In keeping with the public nature of the University of Iowa College of Law, I wanted the database to be accessible and usable by anyone.

The first stage of that project, now called The Compendium of Federal Circuit Decisions, is complete.  The Compendium contains records for all documents released on the Federal Circuit’s website in an appeal arising from the USPTO or District Courts.  In practice, this means all written opinions back to late-2004 and all Rule 36 affirmances since mid-2007, along with a smorgasbord of orders and errata.  Each record contains multiple pieces of information about those documents, including whether the decision was precedential, who the authors are, whether there is a dissent or concurrence, the year of the decision, and more.  The data and its interface was structured from the ground-up in a format that would be useful for people seeking quantitative data about the court’s decisions, rather than for the purposes of traditional legal research.  The data export feature allows for all the information to be used in your favorite analytical toolset.

In order to kick off the Compendium, I wrote a short article describing the database and reporting some core descriptive statistics about the court’s decisions in appeals arising from the UPSTO and District Courts.  The draft of that article, called The Landscape of Modern Patent Appeals (forthcoming Am. U. L. Rev.) can be accessed here.  It’s still in production–the graphs, in particular, are low-resolution placeholders.

Below are graphs that might be of particular interest to readers of this blog: the types of nonprecedential decisions in appeals arising from the USPTO and District Courts.  The paper goes into more detail, but the short of it is that the frequency at which the court used Rule 36 affirmances fell substantially in 2017 (for district courts) and for both 2016 and 2017 (for the USPTO).  There are many more descriptive statistics and graphs in the paper, including the proportions of Federal Circuit decisions that arise from the PTAB & BPAI versus the TTAB, degree of agreement among panel members, the rate of the court’s production of precedential opinions, and even per-judge authorship data.

Although the project is now at its first milestone, there is much more to be done.  Future stages include adding new types of information to the records (such as subject-matter issues and disposition), adding documents in appeals arising from other sources, particularly the ITC, and improving the on-the-fly graphical functionality.  Comments and feedback on the project are welcome if you email me directly.

Note: In order to continue with the soft opening, and to avoid the possibility of stress-testing the Compendium, I intentionally did not include a link directly to the database in this post.  The Landscape of Modern Patent Appeals does contain the link. I’ll add it to PatentlyO in the near future.

The Administrative-Private Law Interface in IP

Important upcoming event at Harvard Law School March 29 on The Administrative-Private Law Interface in IP.  Event Begins at 9:15 EST with four panels and keynote remarks from both Dave Kappos and James Smith.

Image result for harvard law school

Topics

 Do Administrative Law and Private Law Mix in IP? (Arti Rai, Todd Rakoff, Kali Murray, Scott Kieff)
 Oil States Energy Services, LLC v. Green’s Energy Group, LLC (Adam Mossoff, Sophie Wang, John Duffy, Caleb Nelson)
 Preclusion and Deference (Melissa Wasserman, Megan La Belle, Kristin Hickman, John Golden)
 The Antitrust-IP Intersection (Keith Hylton, Anne Layne-Farrar, Scott Hemphill, Einer Elhauge)

Conference Site: http://hls.harvard.edu/event/the-administrative-private-law-interface-in-ip/

Free live webcast here: http://www.kaltura.com/tiny/uy8ca .

 

The Political Economy of Hatch-Waxman

My colleague, Professor Erika Lietzan (Missouri) has released a really interesting and thorough article walking through the history of the Hatch-Waxman legislation process beginning with some proposals in the 1970s through its passage in 1984.  The article is important in the midst of increasing calls for reform of the system.

She writes:

[T]he conventional wisdom about the Hatch–Waxman Amendments — as a privately negotiated compromise between the innovative and generic industries in which each gained and each lost — is wrong. . . . The truth is more nuanced, and the balance of benefits and costs different.

Basically – and at the risk of oversimplification – Prof. Lietzan argues that this compromise analysis ignores the important expected broad social benefit of generic involvement championed by Rep. Waxman and Public Citizen.  Lietzan writes that the outcome of this public alliance with generic entrants “made generic companies better off, and it made patent owners worse off.”  That result cannot be explained by the traditional insider-negotiated story.

Read a draft here: Erika Lietzan, The Political Economy of the Hatch-Waxman Amendments (March 13, 2018). Seton Hall Law Review, Forthcoming. Available at SSRN: https://ssrn.com/abstract=3140141

 

Guest Post by Walker and Wasserman: Situating PTAB Adjudication Within the New World of Agency Adjudication

Guest post by Christopher J. Walker, The Ohio State University Moritz College of Law and Melissa F. Wasserman, The University of Texas School of Law

In 2011, Congress created a series of novel proceedings for private parties to challenge issued patents before the newly formed Patent Trial and Appeal Board (PTAB). While the PTAB proceedings are immensely popular, they have also been controversial. A series of legal challenges to these new adjudicatory proceedings are working their way through the federal judiciary and up to the Supreme Court, and the latter is deciding this Term the constitutionality of PTAB adjudication. Yet to date, there has been no sustained comparison of these new adjudicatory proceedings with other agency adjudications. This comparison could be provide numerous payoffs, including highlighting the unique facets of PTAB adjudication that may serve for successful legal challenges as well as providing opportunities for improving the decisional processes of adjudicatory boards.

In The New World of Agency Adjudication, we seek to begin this endeavor by situating PTAB adjudication in the modern administrate state. Every administrative law student learns the basics of “formal” adjudication under the Administrative Procedure Act (APA). The paradigmatic APA-governed formal adjudication involves an evidentiary hearing held before an administrative law judge (ALJ) wherein parties are entitled to oral arguments, rebuttal, and cross-examination of witnesses. The ALJ’s decision is then reviewable by the agency head, who typically can reverse the decision for largely any reason. Thus, the critical difference between APA formal adjudication—also known as Type A adjudication—and the judicial model is that the agency head has final decision-making authority.

The vast majority of agency adjudications today, however, do not take the form of APA-governed formal adjudication. The new world of agency adjudication comprises agency actions that are adjudicated by non-ALJ agency personnel that have diverse titles, such as administrative judge, administrative appeals judge, hearing officer, immigration judge—just to name a few. These non-ALJ judges have less independence and protections than ALJs. A substantial portion of these proceedings are known as Type B adjudications which still require evidentiary hearings, and hence are relatively formal. In contrast to APA governed formal adjudication, however, the APA imposes virtually no requirements on these proceedings including agency head review. Yet similar to Type A adjudication, a common feature of Type B adjudication is that the agency head has final decision-making authority.

How do the PTAB proceedings fit within this modern world of agency adjudication? Although the new PTAB proceedings have many of the hallmarks of APA formal adjudication, they lack at least two features that suggest they should not receive a Type A classification. Perhaps most saliently, the Patent Act requires these proceedings to be presided over by administrative patent judges, not administrative law judges. The second critical difference is that the Director of the Patent Office does not have final decision-making authority over PTAB determinations. Although an aggrieved party to a PTAB proceeding can file a request for a rehearing by the Board, the Director does not have the authority to review PTAB determinations as a matter of right. As a result, we argue the best understanding of PTAB proceedings is that they are Type B rather than Type A adjudication. The more difficult question is how do the new PTAB proceedings stack up to its Type B adjudication peers? We conclude quite favorably. Drawing on a recent ACUS study that focuses on identifying the best practices of Type B adjudications, we find that PTAB meets the majority of these recommendations and scores as well as most Type B proceedings.

Our Article concludes by exploring one critical difference between PTAB proceedings and most Type B adjudications: the lack of agency-head review of PTAB determinations. The standard administrative model vests final decision-making authority with the agency head for a number of reasons, including providing the agency head with policy control and the ability to bring consistency to the adjudicatory board decisions. While the Director does not have the authority to directly review PTAB determinations, she does have the ability to influence PTAB outcomes. More specifically, the Director can assign APJs to a panel that share her policy views in hopes that they will vote in accordance with her preferences. This “panel-stacking” often occurs once a rehearing and an expanded panel has been granted, so that the expanded, stacked panel reverses the original three-member decision.

Although we conclude that the Director’s designation procedures are statutorily authorized, we argue this procedure raises a colorable due process violation. Case law on permissible agency-head designation procedures is relatively sparse. One exception is the Sixth Circuit’s opinion in Utica Packing Co. v. Block, in which the Secretary of Agriculture replaced an agency adjudicator with another when the initial adjudicator failed to rule as she wished. The appellate court refused to accept the argument that the Secretary, having delegated to the agency adjudicator the original authority to resolve certain matters, could reappropriate that power at will based on disagreement with the adjudicator’s conclusions. Instead, the court held, “[t]here is no guarantee of fairness when the one who appoints a judge has the power to remove the judge before the end of proceedings for rendering a decision which displeases the appointer.”

Under the reasoning set forth in Utica, there is at least a colorable argument that the Director’s designation procedures raise substantial due process violations. Similar to the Secretary of Agriculture in Utica, the Director in effect removes the original panel before the end of the proceedings when she designates an expanded panel that she hopes will arrive at a different substantive outcome. Although the Director does not technically replace any judge, the practical effect of adding a sufficient number of new members to reverse the original panel decision is functionally equivalent to the Secretary of Agriculture’s removal of the judicial officer in Utica.

Given this colorable due process concern, our Article concludes by examining alternative mechanisms the Director of the Patent Office could utilize to ensure that PTAB consistently applies the agency’s policy preferences. While a congressional grant of agency head review would be the most straightforward way to proceed, our Article also urges the Patent Office to consider an increased reliance on rulemaking and precedential PTAB decisions. With respect to the latter, our Article encourages the Patent Office to consider streamlining the process by which it designates PTAB decisions as precedential to provide the Director with more unilateral authority in making this determination.

The current draft of our article is available on SSRN here. It’s forthcoming in the California Law Review in 2019, so there’s plenty of time for us to incorporate any comments you may have.

 

Welcome to Iowa Law’s New Dean, Kevin Washburn

By Jason Rantanen

It’s an exciting time for Iowa Law–we have some phenomenal junior faculty members who joined us this past fall and, as of Tuesday, we have a new dean.  Kevin Washburn, Regents Professor of Law and former dean of the University of New Mexico School of Law, will be joining the Iowa College of Law as its 18th dean in mid-June.

Dean Washburn has an amazing professional history, including serving as the Assistant Secretary of Indian Affairs from 2012-2016 (a position for which he was confirmed unanimously by the Senate), an AUSA in the violent crimes section of the Department of Justice, and General Counsel of the National Indian Gaming Commission.   I’m ecstatic about the provost’s selection of dean Washburn and am looking forward to seeing where he leads Iowa Law.

You can read more at the University’s press release: https://now.uiowa.edu/2018/03/university-iowa-names-new-dean-college-law

Administering Patent Law: the Iowa Law Review Symposium

By Jason Rantanen

I’m thrilled to announce that this fall’s Iowa Law Review symposium will focus on one of the most significant issues of patent law today: the intersection of patents and administrative law.   The symposium, Administering Patent Law, is co-sponsored by the Iowa Law Review and the center I direct, the Iowa Innovation, Business and Law Center.  I’m looking forward to both serious debates about the impact of this term’s Supreme Court decisions (especially Oil States v. Greene’s Energy) and more wide-ranging discussions about the place of patents, the patent office and patent law itself within the broader context of administrative law.

We have a phenomenal lineup of scholars, including both Professor Chris Walker of The Ohio State University Moritz College of Law and Professor Melissa Wasserman of the University of Texas School of Law, whose post on their recent article Situating PTAB Adjudication Within the New World of Agency Adjudication, I’ll be running shortly.  You can read more about the October 5 symposium on the symposium website.  I’ll post about public registration as we get closer to the date.

AIA Trials and the Sunsetting of Covered-Business-Method Review

by Dennis Crouch

In the America Invents Act (AIA), Congress created two primary new forms of challenging issued patents in an administrative trial setting before the Patent Trial and Appeal Board.  The more popular form is Inter Partes Review while Post Grant Reviews have seen less interest.  The comparative popularity appears to stem primarily from the fact that IPRs can be used to challenge any issued patent — including pre-AIA patents and patents issued years-ago.  PGRs, on the other hand has two important timing limitations:  (1) PGRs are only applicable to post-AIA patents (effective priority date > March 2013); and (2) a PGR petition must be filed within 9-months after the patent grant.  That said, IPRs have a comparative downside: While a PGR may challenge patent claims on any patentability ground (except best mode), IPRs are limited only to anticipation and obviousness challenges based upon prior patents and published prior art.

The Covered Business Method Review (CBM) program is added as a layer atop IPRs and PGRs.  CBMs can only be used to challenge patents directed to financial, non-technological business methods.  However, like PGRs, those CBM patents can be challenged on any ground (including eligibility, enablement, and indefiniteness).  Further, like IPRs, CBM petitions can challenge any patent regardless of its filing and issuance dates.

The CBM program is also Transitional — it sunsets in two years 2020 (no petitions accepted after that date).

Rep. Issa is heading-up hearings and a review of the program to consider whether the CBM program should be made permanent and potentially expanded beyond its current narrow scope.  Issa has stated he sees the program as a more efficient mechanism for eliminating low quality patents.

In the recent hearing, three witnesses testified:

David Hale – TD Ameritrade.  “Thankfully, the America Invents Act appears to have turned the tide [against abusive patent litigation]. Upon the implementation of the CBM process, TD Ameritrade has actively used the process to combat several of the low quality patents brought against it, bringing a total of eight CBM petitions. [Testimony]

John Neumann – Government Accounting Office. “Stakeholders we interviewed generally agreed the effects of the CBM program on innovation and investment have been minimal or mostly positive.” [Report]

Aaron Cooper – Business Software Alliance and former Chief IP Counsel for Senate Judiciary Committee.  “Programs that target specific areas of technology – such as the Transitional Program for Covered Business Method Patents (CBM Program) – are detrimental to the patent system in general, and the software industry in particular.” [Testimony]

Watch the hearing here:

 

Means-Plus-Function and Attorney Fees

by Dennis Crouch

Sarif Biomed v. Brainlab (Fed. Cir. 2018) [SarifBiomed]

Sarif’s patent is directed to a “computer-assisted microsurgery installation” couples position sensors with images to place the location of a tool within a fixed reference frame. U.S. Patent No. 5,755,725 (1993 priority).

In the dispute, Sarif first sued Brainlab for infringement.  Brainlab responsively petitioned for inter partes review (IPR). That petition was rejected after the PTAB determined that it couldn’t decide anticipation because the claims were too indefinite. Although the PTAB statements denying the petition are not binding in any way, they are obviously influential.  Here, the district court followed the PTAB and ruled that the claims were invalid as indefinite.  In particular, the court looked at the following claim term:

(d) a computer adapted to: . . . (3) control position and displacements of the tool . . .

Although not in traditional means-plus-function language, the district court held that the claim lacks structure regarding the function of controlling position and displacement.

Claim 1’s “computer adapted to” perform this function is an insufficient disclosure of structure as there is no disclosure as to how the computer would perform the function. “[I]f a claim recites a generic term that, properly construed in light of the specification, lacks sufficiently definite structure to a person of ordinary skill in the art, the presumption is overcome and the patentee has invoked means-plus-function claiming.” Apple (2014). Moreover, as recently stated by the Federal Circuit in Williamson, “the fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed.”

The claim lacked structure.  It turns out that specification also lacked support for the claimed means and thus is indefinite under In re Donaldson Co., 16 F.3d 1189 (Fed.Cir. 1994) (en banc).

The appeal here does not focus on the merits of the indefiniteness discussion, but rather involves the accused infringer’s petition for attorney fees that was denied.  On appeal here, the Federal Circuit has affirmed the lower court’s denial of fees — holding that the district court acted within its discretion in finding no “exceptional case.”

Law of Attorney Fees: The usual rule in patent litigation is that each party is responsible for compensating their own attorneys win-or-lose.  The Patent Act authorizes a judge to order fee shifting, but only in “exceptional cases.” In Highmark and Octane Fitness, the Supreme Court collectively held that the exceptional case determination involves a flexible analysis involving the “totality of the circumstances” considered at the discretion of the district court.  The analysis involves, inter alia, consideration of any unreasonable actions, party motivations, and strength of arguments.  Because patent litigation is expensive, fee awards can easily reach into the millions-of-dollars.

On the merits here, the Federal Circuit agreed that Sarif’s claim construction position of no-means-plus-function was “well supported” – despite ultimately losing the case.  Regarding the PTAB’s statement of invalidity, the Federal Circuit wrote:

Brainlab places too much significance on the PTAB’s determination. The PTAB does not have authority to institute an inter partes review under § 112. See 35 U.S.C. § 311(b). Therefore, as Brainlab admitted, any conclusion regarding indefiniteness is dicta.

Without the weight of that objective evidence of presenting weak arguments, it was easy for the Federal Circuit to affirm the denial of fees. AFFIRMED.

Consolidating Briefs and Word Limits

Indivior v. Dr. Reddy’s (Fed. Cir. 2018) [DrReddysOrder]

This “case” is actually a consolidation of 14 filed-appeals that collectively stem from six different district court cases involving three sets of appellants.  In his consolidation order, the Federal Circuit Clerk Peter Marksteiner wrote:

The above-captioned appeals appear to be related. We consolidate the appeals, and thus one set of briefs should be filed for the appeals.

Order of November 1, 2017.

Rather than filing a single consolidated brief, the appellant’s filed three (Dr. Reddy’s; Teva + Watson; and IntelGenX + Par).  Although each brief individually complied with the Federal Circuit’s 14,000 word limit — relied upon co-appellant briefs by incorporating-by-reference arguments made by co-appellants.  For instance, Dr. Reddy’s brief explains:  “The asserted claims of the ’514 patent are invalid as indefinite. DRL adopts by reference Par’s arguments on this issue.”  The patentee then asked for extra space in its brief to respond to all of the arguments.

In a new (non-precedential) order, the clerk has attempted to resolve the issue by striking the briefs filed and demanding a single joint opening brief <18,000 words and then allowing the patentee to also file an expanded responsive brief.

One problem with the Court’s approach here is that it made no determination as to whether the incorporation-by-reference was problematic in this situation.  In particular, Federal Rule Appellate Procedure 28(i) permits incorporation by reference in consolidated cases involving multiple appellants or appellees.  In a parallel case, the 8th Circuit indicated that incorporation-by-reference in this situation does not count toward the word-limit. In re Target Corp. Customer Data Security Breach Litig., 855 F.3d 913 (8th Cir. 2017) (“Nothing in Rule 28(i) suggests that parts of briefs adopted by reference should be treated as literally incorporated into a party’s principal brief for wordcount purposes.”).  In Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014), the Federal Circuit barred a party from incorporating-by-reference (finding the incorporated argument waived).  However, that case did not fall under R. 28(i) and so is distinguishable from this situation.

 

Dell’s Arguments Too Late to Cancel Acceleron’s Claim

by Dennis Crouch

Dell Inc. v. Acceleron, LLC (Fed. Cir. 2018)

In its original decision, the PTAB cancelled claim 3 of Acceleron’s U.S. Patent No. 6,948,021 (inter alia). That holding was based upon an argument first presented by Dell at Oral Arguments (over Acceleron’s procedural objections).  The Federal Circuit in 2016 vacated that first PTAB decision — “the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”  The Federal Circuit explained:

The agency must timely inform the patent owner of the matters of fact and law asserted . . . , must provide all interested parties opportunity for the submission and consideration of facts and arguments . . . and hearing and decision on notice, . . . and must allow a party to submit rebuttal evidence as may be required for a full and true disclosure
of the facts.

On remand, the Board rewrote its decision – this time excluding and ignoring Dell’s late argument and thus finding the claim valid.

On appeal again, the Federal Circuit has now affirmed the validity finding — holding that the Board properly ignored Dell’s argument – even though the result is that we confirm the validity of a patent claim that is thought to be invalid.  The problem for Dell is that the procedural rules are clear – “No new evidence or arguments may be presented at the Oral Arguments.” (Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012)).

The primary holding here is that the PTAB was not required to allow for any re-briefing of the arguments and evidence.  In its decision, however,, the Federal Circuit goes further and states that the Board could not reopen arguments even if had wanted to:

The Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument. See, e.g., Wagner v. United States, 365 F.3d 1358 (Fed. Cir. 2004) (“[A]n agency is bound by its regulations.”); Dell contends that ignoring evidence of unpatentability is against public policy because it will not improve patent quality. We find that under these circumstances, due process and preserving the Board’s discretion outweigh any negative effects of not invalidating a patent claim, especially since our decision does not preclude another party from challenging the validity of claim 3 on the same basis.

This final quoted paragraph is potentially dicta, but will certainly carry the day within the Board.

 

Hrdy: A Response to ‘Innovation Kills Jobs’

Last week I posted a discussion of Prof. Hrdy’s intriguing new article on Technological Un/employment.  Prof. Hrdy has now provided a short response that basically explains how I took a portion of her article (automation killing jobs) while ignoring other aspects of the 79-page article (e.g., many positive benefits of innovation, including job creation).  – DC

by Prof. Camilla Hrdy

I am so honored that you found my article worth a post on Patently-O.  In the nature of academic discussion and in good fun, I would like to briefly respond. (And please do feel free to post this).

First, I really appreciate the provocative title, “Prof. Hrdy: When Inventions Kill Jobs“, but want to add a bit more color. My thesis, as reflected by the title of my paper, Technological Un/employment, is that innovation, and thus intellectual property, both create and eliminate jobs. Historically, we have had more of the former than the latter.

Second, I think some readers may have come away with the idea that I am a bit of a Luddite, when I am the opposite. Innovation is good. No: innovation is great! It is the secret to economic prosperity and where the good jobs will come from in the future. I also believe IP is, on aggregate, good for innovation. As you astutely noted, my belief in the need for some form of regulation is motivated, at present, largely by distributional concerns, not by a fear of innovation itself. Even if technology won’t be doing all work by the year 2048, the number of humans needed to build, maintain, and operate that technology is dwindling, and access to jobs is increasingly restricted to highly educated people with unique opportunities — which most people do not enjoy. (Please see Part II of the Article). Those opportunities are also unequally distributed geographically, an issue I have raised in much of my work, particularly in my papers Cluster Competition and Patent Nationally, Innovate Locally. If current trends continue, the job market will more and more resemble a pyramid consisting of a select few at the top with high quality jobs —  and a lot of IP —  and the rest of humanity unemployed or consigned to “gap filling” for the machines. I also think that when inventions make others’ skills completely obsolete, this resembles a negative externality not unlike pollution. (Please see Part IV). There is at least a case to be made that those who profit should have to internalize some of the harms their inventions impose on others.

Third, while I do support some form of regulation to help avoid these outcomes, I do not support denying patents on labor displacing inventions. While it (might have) made sense in Queen Elizabeth’s time, I reject a “labor displacing patent bar” in favor of more effective tools. Likewise, I oppose fully banning labor displacing inventions like self-driving cars. Instead, I suggest a small —  key word small —  tax on profits from certain innovations that are found, upon adoption, to displace a significant number of workers.

This “labor displacing IP tax” would have a two-fold effect. First, it would permit giving back to workers at least some of what they lose, either in the form of skills training or — hopefully we won’t come to this — a universal basic income in the scenario where skills training doesn’t help because machines are capable of performing most tasks in the economy. Second, a small tax on underlying IP would at most marginally slow down the pace at which companies take advantage of improvements in machine learning and develop ever-more sophisticated forms of automation. The leading alternative proposal is a “robot tax” levied on businesses that adopt labor displacing inventions. To me, it makes far less sense to tax the mom-and-pop restaurant that adopts software to keep costs low than it does to tax whichever mega company owns the intellectual property covering the software.

The reason I turn to regulation is not to halt innovation. It is so that we can innovate with abandon. Also, I have a video to respond to your creative use of the Mr. Rogers’ segment, courtesy of Daniel Day Lewis in There Will Be Bloodhttps://www.youtube.com/watch?v=a5d9BrLN5K4  

In any event, thanks again for your thoughtful post. It is great to have this opportunity to engage in discussion on Patently-O.

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Prof Hrdy: When Inventions Kill Jobs