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While takings of patent rights is an unusual cause of action faced by the Federal Circuit, the court recently encountered an even more unusual takings case — one related to sleep deprivation caused by barking dogs. Barth v. U.S.  Of course, this case “begs” the question:  “Who let the dogs out?”

If somebody is looking for an article to write, let me suggest one.  I think it would be helpful to have a scholarly article published somewhere that discusses the role, responsibilities, and decision making processes of the Solicitor’s Office (SO) of the USPTO.  Particularly, it would be interesting to know the decision process the SO goes through in deciding which IPR decisions of the PTAB to defend and which not to weigh in on at the Federal Circuit.  Also, it would be interesting to know the decision making process the SO goes through in deciding whether to defend a PTAB decision or admit that the PTAB was simply wrong.  And, it would be helpful to understand if/when the SO can simply send a decision back to the PTAB for reconsideration.  Moreover, it would be interesting to know how such authority is vested in the SO.

One of these instances popped up today at the Federal Circuit and made me wonder about this topic.  The SO of the USPTO effectively vetoed a portion of a PTAB decision by conceding to the Federal Circuit that the PTAB erred.  Because the PTAB erred — i.e., the Federal Circuit ruled that way today — the decision by the SO in retrospect seems like it was the right thing to do.  It was an expeditious way of proceeding; it prevented the SO from wasting the court’s time; and, it prevented officers of the court from making frivolous arguments to the court.  However, what about closer calls.  The authority of the SO to concede that the PTAB erred effectively gives the Director power to reverse a decision of the PTAB that the Director does not like.

The case that I am referring to was decided today, In re Mouttet [Link].  The pertinent portion of the Federal Circuit opinion is quoted below:

Brenner v. Manson, 383 U.S. 519, 523 (1966)(emphasis added).

Perhaps there has been some intervening legislation since Brenner v. Manson that no longer causes the Commissioner (now Director) to be bound by Board determinations.  But, if that is not the case, then it would be interesting to know whether “being bound by Board determinations” requires the Director to defend all of the Board’s determinations.

At any rate, if you write such an article, I would be pleased to read it.

Update 1/25/18:

A reader was kind enough to point me in the direction of some material that touches on the issues raised above:

1. Professor Dmitry Karshtedt’s recent article: “Acceptance Instead of Denial: Pro-Applicant Positions at the PTO” [Link]; and

2.  The DOJ/USPTO’s brief in Knowles v. Matal (decision pending) [Link].  Interestingly, the DOJ/USPTO assert that the USPTO solicitor’s office can assert any position it chooses — and even argue against the PTAB position–when the appeal is taken to the Federal Circuit.  That might be unsettling to the 300+ PTAB judges at the USPTO.

Query#1:  If PTAB judges are required to meet certain legal and technical qualifications in order to provide the particular expertise of the Patent Office, are similar qualifications required of the SO’s office, i.e., the people asserting the right to take any position they choose on appeal?

Query#2:  The USPTO’s brief relies on the Supreme Court’s Ingalls v. Office of Workers’ Compensation Programs case — is the PTO really structured the same as the Office of Workers’ Compensation Programs?

Query#3:  If the SO’s office were ever to refuse to defend a PTAB decision, could the PTAB represent itself?  See Justice Scalia’s dissenting opinion in Ingalls at 273 (“The second argument offered in support of the view that the Director is a proper respondent when review is sought of an order of the Board is that (1) Rule 15(a) requires the naming of someone representing the agency, and (2) the Director is certainly a more sensible candidate than the Board. Ante, at 267, 268. The second part of this analysis, the faute de mieux point, is questionable: The Board could readily develop a staff to defend its judgments, and it is hard to imagine a worse defender than an entity that is free to disagree (and often does disagree) with the order under review.”).

Update 1/29/18:

Query #4: If PTAB judges are required to submit financial data to ensure impartiality, does the same requirement apply to other members of the Office who take a position opposite to the PTAB position on appeal?

Query #5:  When the USPTO handles an initial PTAB decision “administratively,” how is that memorialized on PAIR?

The oral argument of the day is from IN RE LEVENSTEIN, No. 2017-1067 (Fed. Cir. Oct. 10, 2017).

The oral argument focuses on 35 U.S.C. §101.  If you have not heard, section 101 has been in the news in recent years.

You can listen to the oral argument below:

You can review the Federal Circuit judgment [here].

You might recall that in Nidec v. Zhongshan the Federal Circuit frowned upon some of the USPTO’s joinder practices under the AIA.  It was unnecessary for the Federal Circuit to resolve the joinder issue in Nidec, however, because the Federal Circuit was able to affirm the PTAB without having to reach the joined issue.

The Federal Circuit will have another opportunity to address joinder in an upcoming matter.   A petition for a writ of mandamus has been filed in In re Windy City Innovations.  The matter concerns joined IPR’s brought by Facebook against Windy City Innovations.

You can review the briefing here:

Petitioner’s brief: [Link]

Respondent’s brief: [Link]

Petitioner’s reply brief: [Link].

The PTAB’s opinion is available as an Exhibit to the Petitioner’s brief.

In a curious turn of events, two of the three PTAB judges noted in concurring remarks in the PTAB opinion that they did not believe that the statute authorized same-party joinder; however, despite that belief, they ruled in favor of permitting joinder because the Director had noted in a previous case that same-party joinder should be permitted:

In the oral argument of Oil States, Justice Kennedy asked what would be the situation if the stacking of panels by the Chief Judge of the PTAB were rampant:

11   MR. KISE: Well, Mr. Chief Justice,

12   the panel packing, if you will, mentioned by

13   Petitioner in the briefs, I don’t believe -­

14   and — and I’ll leave it to the government to

15   — to have the exact statistics — precise

16   statistics, but I don’t believe that’s taken

17   place more than one or two times, and I don’t

18   believe it’s taken place with respect -­

19   JUSTICE KENNEDY: Well, suppose it

20   were rampant.

I suppose rampant is a subjective term; but, in the oral argument of Nidec v. Zhongshan, the Solicitor for the USPTO, who once served as the acting Chief Judge of the PTAB, commented that over the years panels of the Board have been expanded “many, many times.”

You can listen to the sound bite from Nidec here: [Listen].  Or, you can find it at the 25 min 40 second mark of the oral argument in Nidec Motor Corp. v. ZHONGSHAN BROAD OCEAN MOTOR, 868 F.3d 1013 (Fed. Cir. 2017), available at: [Link].   Or, you can review the exchange from Nidec below:

Judge Reyna: What kind of uniformity or certainty do we have in that where the PTAB can look at a prior decision and say well we don’t like that, let’s jump back in there and change that?

PTO: Well, ….

Judge Wallach: How does the Director choose which judge to assign to expand the panel?

PTO: Uh, that’s provided, your Honor, by our standard operating procedure. And, the Chief Judge actually makes that decision.And, the judges are selected based on their technical and legal competency. And, over the years, many many panels at the Board have been expanded. In fact if you looked at the thirty . . . .

Judge Reyna: Are they selected on whether they’re going to rule in a certain way?

PTO: Uh, well, people can be placed on the panel . . . for example, the Director can place him or herself on the panel, and certainly the Director knows how they’re going to rule. Nidec has not said and they say at their blue brief at page 43 that they don’t challenge the independence of these judges on this panel. Um, these judges were not selected and told to make a particular decision. If judges could be told to make a particular decision, there would be no need to expand a panel in the first place.

The audio recording of the oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC is now available.  You can listen to it below:

The audio recording of the oral argument in SAS Institute Inc. v. Matal is now available.  You can listen to it below:

In today’s oral argument of Oil States, there was an exchange where the government’s representative was asked how frequently panels are enlarged by the Board. The answer given is shown below (with a chunk omitted for brevity):

15             CHIEF JUSTICE ROBERTS:  Does it

16    comport to due process to change the

17    composition of the adjudicatory body halfway

18    through the proceeding?

19             MR. STEWART:  This has been done on

20    three occasions.  It’s been done at the

21    institution stage.

22             CHIEF JUSTICE ROBERTS:  So I’ll

23    rephrase the question.  Was it illegal under

24    those three occasions?

 

…

 

11             MR. STEWART:  I — I don’t know how

12    the institution decisions came out.  This has

13    not been done at the merits stage, if you will,

14    when patentability was actually being — being

15    determined.  But our primary point would be

16    that if there’s a constitutional flaw in that

17    procedure, then a person who is actually harmed

18    by its use in a particular case -­

You can view the whole exchange in the transcript at pages 45-47 [here].

I came away from reading that exchange thinking that the government was saying that the PTO has only expanded IPR/CBM panels three times.  If that was the intended message to the Court, then I think the government needs to double-check its figures.  By the Chief Judge of the PTAB’s own slide presentation to PPAC on November 9, 2017 [Link], there have been four expanded panels in 2017 alone.  Also, those do not include the expanded panels in IPR2013-00219 (Yissum), IPR2014-00508 (Target), IPR2014-00319 (Apple), and IPR2015-00762 (Zhongshan).  If four expanded panels were used in 2017 alone, it appears that the PTO is using expanded panels with increasing frequency.

Moreover, the substantive use of an expanded panel in Ex parte Alappat cannot be overlooked.  Granted, Alappat was pre-IPR days.  However, the PTO showed in Alappat that it is certainly willing to use an expanded panel for a substantive issue rather than just procedural issues.  For more on Alappat, see the Federal Circuit’s en banc opinion, particularly Judge Mayer’s (and Judge Michel’s) dissent, [here].

Ex parte Alappat was recounted in rather dramatic fashion in this FICPI publication [Link]  at pages 98-99, where it was noted that the original three-member Board panel was expanded by adding the Commissioner of the USPTO, “Deputy Commissioner Comer (a person with no patent background or expertise), Assistant Commissioner Samuels (a trademark expert with no patent background) as well as the Chair and Vice-Chair of the Board.”  The original three-member panel was subsequently out-voted 5-3.

UPDATE 12/21/17:

A further expanded panel was used in IPR2017-01186 on December 19, 2017.  The Chief Judge of the Board, acting under authority delegated by the Director, expanded a three judge panel by adding himself, the Deputy Chief Judge of the PTAB, and two Vice Chief Judges.  The issue dealt with was the constitutional issue of sovereign immunity:  [ERICSSON INC. and TELFONAKTIEBOLAGET LM ERICSSON v. REGENTS OF THE UNIVERSITY OF MINNESOTA].

Justice Kagan recently mentioned Justice Oliver Wendell Holmes’ stand-up desk, during the roundtable discussion celebrating Harvard Law School’s 200th birthday.  You can see the roundtable below or at this [Link].  As an aficionado of stand-up desks, I was intrigued when she mentioned that Justice Holmes had used a stand-up desk.  In fact, I understand that he wrote most of his opinions in his home office standing at his stand-up desk.

It was quite difficult to locate any pictures of this famous desk.  Below are a few as well as a picture of Justice Holmes’ home study.  The desk now resides in the office of the dean of the Harvard Law School.

Click on images for a larger view.

Link to article on how sitting is the new smoking: [Link].

That the government of the United States when it grants 358*358 letters-patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser, we have no doubt. The Constitution gives to Congress power “to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” which could not be effected if the government had a reserved right to publish such writings or to use such inventions without the consent of the owner. Many inventions relate to subjects which can only be properly used by the government, such as explosive shells, rams, and submarine batteries to be attached to armed vessels. If it could use such inventions without compensation, the inventors could get no return at all for their discoveries and experiments. It has been the general practice, when inventions have been made which are desirable for government use, either for the government to purchase them from the inventors, and use them as secrets of the proper department; or, if a patent is granted, to pay the patentee a fair compensation for their use. The United States has no such prerogative as that which is claimed by the sovereigns of England, by which it can reserve to itself, either expressly or by implication, a superior dominion and use in that which it grants by letters-patent to those who entitle themselves to such grants. The government of the United States, as well as the citizen, is subject to the Constitution; and when it grants a patent the grantee is entitled to it as a matter of right, and does not receive it, as was originally supposed to be the case in England, as a matter of grace and favor.

James v. Campbell, 104 U.S. 356, 357-58 (1882).

The petitioner in the Oil States v. Greene’s Energy Group case has filed its reply brief. The reply brief is available [here].

You might have noticed today two rather succinct opinions issued by the Federal Circuit.  One wonders if that is in response to recent criticism of the Federal Circuit for issuing so many Rule 36 opinions in patent related appeals.

I thought it was interesting that one of the Federal Circuit’s judicial clerks recently moved on to become a Supreme Court Fellow.  Namely, Judge O’Malley’s former clerk, Matthew Sipe, moved on to become a Supreme Court fellow assigned to the administrative office of the United States Courts. [Link].  You can listen to Judge O’Malley nominate Mr. Sipes for admission to the Federal Circuit Bar [here].

I have to admit that I had never heard the term “Supreme Court Fellow” before.  It appears that there are only four appointed each year.  At any rate, to the extent that the administrative office of the United States Courts has any influence on Congress, Mr. Sipes should be well-positioned to make the administrative office aware of the Federal Circuit’s plight and the possible need for Congress to propose legislation to create additional Federal Circuit judgeships to alleviate the Rule 36 problem.

The Supreme Court of Texas heard oral argument the other day in In re Andrew Silver, the patent agent privilege case. The issue has been characterized as follows:

“The issue in this mandamus to rescind a discovery order is whether Texas evidence rule 503 protects confidential communications between a patent applicant and his non-attorney patent agent authorized to practice law in federal patent proceedings.”

You can watch the video recording of the oral argument [here].

David Hricik wrote about the USPTO’s new patent agent privilege rule [here].

With Oil States coming up for oral argument in a few weeks, it is interesting that five of the current Justices of the Supreme Court were recently present to hear Justice Souter’s comments about the inestimable moral value of jurors.

I stole this from the Scotusblog, where I noticed it today: