The U.S. Patent and
Trademark Office (USPTO) has admitted, through Solicitors for the USPTO, that in
several different instances the Director of the USPTO has intentionally
manipulated the composition of the Patent Trademark Trail and Appeal Board (PTAB)
during rehearings to reverse a panel’s judgement and ensure that Board rules in
line with the Director’s policy. This type of intentional and methodical
manipulation of the PTAB may prove to be a critical public policy basis for dismantling
or substantially overhauling inter partes
review (IPR) proceedings in the Supreme Court’s upcoming case Oil States
Energy Servs., LLC v. Greene’s Energy Group, LLC (Supreme Court 2017),
during which the Court will consider the constitutionality of IPR proceedings. While
panel manipulation may have temporarily achieved uniformity in accordance with
the USPTO’s Director’s policy, this myopic approach may tarnish the reputation
of the former Director and the USPTO.
Further, and more
detailed, discussions on this matter can be found at IPWatchdog
Both blog postings provide separate examples of the Federal Circuit’s distaste
for the USPTO’s manipulation of Panels during rehearings. IPWatchdog includes a
partial transcript of the oral arguments in Yissum
Research Development Co. v. Sony Corp. (Fed. Cir. 2015), which is reproduced
there’s really only one outlier decision, the SkyHawke decision, and there are
over twenty decisions involving joinder where the –
Taranto: And, anytime there has been a seeming
other-outlier you’ve engaged the power to reconfigure the panel so as to get the
result you want?
Taranto: And, you don’t see a problem with that?
Honor, the Director is trying to ensure that her policy position is being
enforced by the panels.
Taranto: The Director is not given adjudicatory
authority, right, under § 6 of the statute that gives it to the Board?
To clarify, the Director is a member of the Board. But, your Honor is
Taranto: But after the panel is chosen, I’m not sure I see the
authority there to engage in case specific re-adjudication from the Director
after the panel has been selected.
correct, once the panel has been set, it has the adjudicatory authority and the
Taranto: Until, in your view, it’s reset by adding a few
members who will come out the other way?
correct, your Honor. We believe that’s what Alappat holds.
Patentlyo further highlights dicta from Nidec
Motor v. Zhongshan Broad Ocean Motor (Fed. Cir. 2017), which is reproduced below:
Although we do
not decide the issues here, we have serious questions as to the Board’s (and
the Director’s) interpretation of the relevant statutes and current practices.
. . .
[W]e are also
concerned about the PTO’s practice of expanding administrative panels to decide
requests for rehearing in order to “secure and maintain uniformity of the
Board’s decisions.” . . .
Director represents that the PTO “is not directing individual judges to decide
cases in a certain way”[,] we question whether the practice of expanding panels
where the PTO is dissatisfied with a panel’s earlier decision is the
appropriate mechanism of achieving the desired uniformity.
It will be interesting
to see if former patent owners attempt to sue the USPTO for improperly
tampering with IPR panels, which ultimately resulted in their respective
patents being invalidated. It seems reasonable that the Director’s intentional manipulation
of panels creates a case or controversy for which former patent owners may sue the USPTO.