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Both the United States and Polaris have requested en banc review in the recent Federal Circuit decision of Polaris v. Kingston. This case presents substantially similar issues as those that were presented in Arthrex. Namely, should PTAB judges be considered principal officers of the United States, who must be nominated by the “President” and confirmed by the Senate? My understanding is that Polaris actually raised this issue in its appeal briefing before the parties in Arthrex did so; but, due to the timing of oral arguments, the Federal Circuit panel in Arthrex was able to rule first (in a very speedy opinion after oral argument). During its oral argument, Polaris argued that its case would be a better vehicle for en banc review than the Arthrex case. I tend to agree; although, I personally would like to see both cases considered together in a joint en banc review.

You can read Solicitor Krause’s en banc petition for the PTO here:

You can read Polaris’ en banc petition here:

I seem to remember that someone once commented that the Federal Circuit courtrooms could easily implement video recordings of their oral arguments — if the court chose to do so. The Ninth Circuit has been doing so for many years. Do you think the Federal Circuit should add video recordings?

Here is the video of the recent oral argument at the Ninth Circuit in FTC v. Qualcomm:

The oral argument of the month is from the order today in In re Google, 2019-126 (Fed. Cir. February 13, 2020). [Link]. The subject matter concerns the rather dry subject of venue; but, the oral argument is very interesting. Moreover, it highlights how the courts are being forced to think carefully about how laws written in the 19th and 20th centuries should be applied in the information age.

A careful listener will hear a reference to The Scarlet Pimpernel by Judge Wallach.

Back on Friday, July 29, 1994, the CAFC decided In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). (A memorable date for me, as I was taking the Colorado bar exam on that date.) The opinion was a highly fractured one with multiple dissents. One of the main issues of contention was whether the Federal Circuit had jurisdiction to hear the appeal, because it stemmed from an enlarged panel decision at the Board. Whether the USPTO had the authority to use such enlarged panels under the statute in place back then had to be determined to decide if the appellate court had jurisdiction.

Judges RICH, NEWMAN, LOURIE and RADER, voted in favor of the court having jurisdiction.

Judges ARCHER, Chief Judge, NIES and PLAGER, concurred in the conclusion.

Judges MAYER, MICHEL, CLEVENGER and SCHALL dissented.

This issue seems relevant to me because Alappat was mentioned again today in the concurrence in Polaris v. Kingston.

The Arthrex panel’s underestimation of the Director’s power is particularly evident in light of this court’s prior en banc decision in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), abrogated on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Alappat contained strong language about the ability to control the composition and size of panels. See, e.g., id. at 1535 (noting that “the Board is merely the highest level of the Examining Corps, and like all other members of the Examining Corps, the Board operates subject to the Commissioner’s overall ultimate authority and responsibility”). While the duties of the Board and the Director have changed since Alappat was decided, the authority to determine the Board’s composition for reconsideration of an examiner’s patentability determination mirrors the current authority with respect to inter partes review. Compare 35 U.S.C. § 6(c) (2012) (giving the Director authority to designate “at least 3 members of the Patent Trial and Appeal Board” to review “[e]ach appeal, derivation proceeding, post-grant review, and inter partes review”), with 35 U.S.C. §7(b) (1988) (giving the Commissioner power to designate “at least three members of the Board of Appeals and Interferences” to review “adverse decisions of examiners upon applications for patents”). Therefore, I believe the panel should have at least discussed how Alappat’s view of the power to control the Board might impact the Appointments Clause analysis.

Polaris v. Kingston, slip opinion at footnote 5 (Fed. Cir. January 31, 2020)(Judges Hughes and Wallach in concurrence).

One should keep in mind that the Alappat decision was highly fractured. Three of the majority remain on the court, as do three of the dissenters. However, an en banc panel from an appeal of either Arthrex or Polaris would only include full time circuit judges — not senior judges. Therefore, Judges Newman and Lourie would be the only surviving members from Alappat to serve on such an en banc panel.

This prior post provides some historical context for Alappat, as well: [In 1992, 75% of the BPAI judges objected to the manipulation of the composition of Board panels].

Since Judge Hughes compared the current statute to a previous statute with respect to the Board, I wonder if there is any merit in going back further in time to when the Supreme Court decided Brenner v. Manson? See this earlier post for more on that, including Supreme Court audio: [Brenner v. Manson — footnote 6.].

The oral argument of the week is from TELESIGN CORPORATION v. TWILIO, INC., No. 2019-1312 (Fed. Cir. Jan. 9, 2020).

I thought this oral argument might interest those of you who like to follow patent eligibility issues.

The panel of Judges Dyk, Taranto, and Chen issued a Rule 36 Judgment [Link].

The oral argument is available here:

If you are in Denver on Thursday, January 30th, the Denver Patent Office is hosting a biotech roundtable:

Details:

Thursday, January 30, 2020

1:30 p.m. – 4:00 p.m.

Registration & Networking begins at 1:00 p.m.

United States Patent and Trademark Offices

1961 Stout St

15th Floor Conference Room

Denver, CO 80294

1:00 p.m. – 1:30 p.m. Registration and Networking

1:30 p.m. – 1:40 p.m. Introductions

•     Molly Kolcialski, Director of the Rocky Mountain Regional Office of the USPTO

•     Jerry Lorengo, Director of TC3700 (medical, surgical, and diagnostic instruments)

•     Andrew Wang, Director of TC1610 (organic compounds: bio-affecting, body treating, drug delivery, steroids, herbicides, pesticides, cosmetics, and drugs)

1:40 p.m. – 2:10 p.m. Restriction Practice, Renee Claytor, SPE 1651 (Fermentation, Microbiology, Isolated and Recombinant Proteins/Enzymes)

2:10 p.m. – 2:30 p.m. Application Initiatives/Online resources, Ram Shukla, Acting Assistant Regional Director of the Rocky Mountain Regional Office of the USPTO

2:30 p.m. – 2:45 p.m. After-final practice, Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration

2:45 p.m. – 3:00 p.m. Break

3:00 p.m. – 4:00 p.m. Question and Answer Session, Roundtable Discussion to include discussions on 101, written description, and enablement

Registration Link.

The Federal Circuit has updated its guidelines for oral arguments. From the Federal Circuit website:

UPDATED ARGUMENT RESOURCES

The Clerk’s Office has released an updated version of its Guide for Oral Argument, which incorporates several changes including a revised Courtroom Decorum Policy and new Guidelines for Counsel During Argument.  This document and other resources are available on the Argument Resources page of the court’s website.   

Among other changes, the guide has added a new section VI:

VI. Guidelines for Counsel During Argument

The following guidelines are provided to assist counsel in making the best use of the allotted time at argument.

• Counsel should not interrupt a judge.
• Assume the court is familiar with the facts of the case.
• Minimize reading.
• Have a copy of the appendix and be familiar with the location of items.
• Assume the court is familiar with the briefs and appendix contents.
• When raising new authority at argument, provide a copy to opposing counsel ahead of time.
• Stop your argument when your time expires unless the court permits you to continue.
• Answer questions directly.
• Avoid pejoratives.
• When referring to specific portions of the appendix, provided accurate page citations.
• Do not respond to a question with an unqualified citation to your brief in response to a question
• Counsel seated at counsel tables should neither make inappropriate facial gestures nor engage in exaggerated gesticulation.

It looks like the Utah State Bar has another outstanding line-up of speakers for its IP Summit on February 21st. [Link]. Chief Judge Prost and Director Iancu are a couple of the keynote speakers, as well.

It seems as though the decision in Facebook v. Windy City Innovations (CJ Prost, O’Malley, Plager) should be handed down soon. I noted the oral argument of this case back in August; but, you might want to check out the oral argument if you missed that earlier post. It is an interesting and well-argued oral argument. The case concerned statutory interpretation of the AIA’s joinder statute.

A few of the issues that cropped up in the oral argument were:

1. Why didn’t the PTO intervene in the case to address whether its precedential opinion should be given Chevron deference?
2. Should the PTO’s precedential opinion panel (POP) decisions be given Chevron deference?
3. Did Congress error by referring to infringement of a patent vs. infringement of a patent claim(s) in the AIA?
4. Is the statute ambiguous?
5. Is there a clerical error in the statute?
6. Should the court ask the PTO for its thoughts — even though the PTO chose not to weigh-in in the first instance? (Note: I seem to recall that the court did later ask the PTO for its thoughts.)

Judge Plager expressed the view that the USPTO’s precedential opinion panel decisions were not entitled to Chevron deference:

You can listen to the entire oral argument here:

The briefing in an earlier iteration of this case is available at this prior post: [ https://www.717madisonplace.com/?p=9474 ].

I stumbled across this quote this evening and thought it was interesting:

It is quite true that the Revised Statutes, in the title which establishes and regulates the Department of Justice, simply declares, in § 346, that “there shall be at the seat of government an Executive Department to be known as the Department of Justice, and an Attorney General, who shall be the head thereof.” There is no very specific statement of the general duties of the Attorney General, but it is seen from the whole chapter referred to that he has the authority, and it is made his duty, to supervise the conduct of all suits brought by or against the United States, and to give advice to the President and the heads of the other departments of the government. There is no express authority vested in him to authorize suits to be brought against the debtors of the government, 279*279 or upon bonds, or to begin criminal prosecutions, or to institute proceedings in any of the numerous cases in which the United States is plaintiff; and yet he is invested with the general superintendence of all such suits, and all the district attorneys who do bring them in the various courts in the country are placed under his immediate direction and control. And notwithstanding the want of any specific authority to bring an action in the name of the United States to set aside and declare void an instrument issued under its apparent authority, we cannot believe that where a case exists in which this ought to be done it is not within the authority of that officer to cause such action to be instituted and prosecuted. He is undoubtedly the officer who has charge of the institution and conduct of the pleas of the United States, and of the litigation which is necessary to establish the rights of the government.

United States v. San Jacinto Tin Co., 125 U.S. 273, 278-79 (1888).

Does the Federal Circuit have all the information that it needs to evaluate whether PTAB judges are Principal officers versus Inferior officers? If en banc review is granted in Arthrex, perhaps the court should instruct the government to explain in its brief the behind-the-scenes operations of the PTAB. For example, are other judges allowed to comment on a draft opinion? Are there any levels of review that take place on a draft opinion? Are draft opinions circulated for review by other judges? Are judges assigned randomly? Has non-conformance with agency memos affected any PTAB judge’s pay or promotion? Does the Solicitor’s Office have any input on PTAB decisions, particularly after remand from the Federal Circuit? Does PAIR reflect all the steps taken by the PTAB or is there a non-public database that reflects additional steps or processes? If so, what are those additional steps or processes?

At the very least, the Federal Circuit needs to know the full process that goes on at the PTAB so that it can thoroughly evaluate the supervisory power of the Director. Right now, the court seems to be assuming that it knows the process. One issue that I have been wondering about is whether the Director has been acting with “apparent” authority. Fo example, if the Director and his subordinates have been reviewing draft opinions prior to issuance without any pushback from the PTAB judges, that might be a relevant factor in deciding whether the Director has been acting with “apparent” supervisory authority. If judges have been reviewed based on their conformance with agency policy, that, too, might be indicative of “apparent” supervisory authority. Whether “apparent” supervisory authority is sufficient to answer the underlying question in Arthrex is another matter.

If there are indeed additional steps going on behind the scenes, it would be an interesting question of whether the government attorneys have a duty of candor to inform the court of those processes regardless of whether the government is requested to do so by the court.

If the House is contemplating further hearings about how to fix the AIA to make appointments of PTAB judges constitutional, one name they should keep in mind is Professor Scott Kieff’s. One proposed solution is to add a higher level of review to PTAB proceedings. Professor Kieff has the unique experience of having served as a Commissioner at the International Trade Commission (ITC). So, he has firsthand experience with such a system, as well as an understanding of the intricacies of the patent system.

The House held a hearing on the PTAB Appointments clause issue yesterday. The video is available here: [Link].

I think Professor (and former USPTO Solicitor) John Whealan’s opening comments will probably be of the most interest to patentees who have gone through a PTAB proceeding:

I don’t think I ever saw this Schoolhouse Rock short:

It seems odd to me that an application being prosecuted with a non-publication request is opened up to the public when an applicant proceeds to the Board. An interesting article might delve into the reasoning behind that odd structure and propose a solution. I find it hard to believe that Congress intended secrecy only to apply to proceedings before examiners, but not to proceedings before Board members. Moreover, it has a chilling effect on applicants who might want to take their arguments to the Board.