USPTO admits to stacking PTAB panels to achieve desired outcomes

Madison Building USPTOSeveral days ago the 717 Madison Place blog published a disturbing article detailing how the United States Patent and Trademark Office (USPTO) picks Administrative Patent Judges (APJs) for expanded panels. According to admissions made by the USPTO during oral arguments at the United States Court of Appeals for the Federal Circuit the selection of Judges for expanded panels is done with the express intent to ensure the ruling desired by the Director. In other words, the Director stacks PTAB panels with Judges that are known to hold views on issues in alignment with the Director.

The case where this nearly unbelievable admission was made during oral argument was Yissum Research Development Co. v. Sony Corp. (Fed. Cir. 2015). The pertinent part of the oral argument, which 717 has conveniently provided here, reads as follows:

USPTO: And, there’s really only one outlier decision, the SkyHawke decision, and there are over twenty decisions involving joinder where the –

Judge 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?

USPTO: Yes, your Honor.

Judge Taranto:  And, you don’t see a problem with that?

USPTO: Your Honor, the Director is trying to ensure that her policy position is being enforced by the panels.

Judge Taranto:  The Director is not given adjudicatory authority, right, under § 6 of the statute that gives it to the Board?

USPTO: Right. To clarify, the Director is a member of the Board.  But, your Honor is correct –

Judge 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.

USPTO: That’s correct, once the panel has been set, it has the adjudicatory authority and the –

Judge Taranto:  Until, in your view, it’s reset by adding a few members who will come out the other way?

USPTO: That’s correct, your Honor.  We believe that’s what Alappat holds.

So the USPTO admits that the Director does not have statutory authority to adjudicate an issue after a panel has been chosen, but argues that the Director can assert administrative authority to intentionally select Judges that will rule diametrically opposite to those Judges originally assigned to the case, thereby stacking any panel the Director chooses to achieve the result the Director wants in any case.

The USPTO also made a similar, although not so direct, admission during oral argument in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., which was decided by the Federal Circuit on Tuesday, August 22, 2017. In his concurring opinion Judge Dyk (joined by Judge Wallach) mentioned concern with the USPTO stacking PTAB panels, but said the Court did not need to reach the issue. “While we recognize the importance of achieving uniformity in PTO decisions, 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,” Dyk wrote.

These admissions by the USPTO are both stunning and scandalous for at least two reasons.

First, although APJs of the Patent Trial and Appeal Board (PTAB) are not Administrative Law Judges (ALJs), the Administrative Procedures Act (APA) does apply to PTAB proceedings. Indeed, the Federal Circuit has applied the APA to PTAB proceedings strictly. The importance of this is simple. The APA demands decisional independence, which obviously is not happening when the Director of the USPTO can stack a panel to achieve a particular desired outcome.

In Nash v. Califano, a case dealing with the Social Security Administration, an ALJ sued because he felt his judicial independence was being compromised by the agency. The case was dismissed by the district court, but was reinstated by the United States Court of Appeals for the Second Circuit. “The APA creates a comprehensive bulwark to protect ALJs from agency interference. The independence granted to ALJs is designed to maintain public confidence in the essential fairness,” Judge Kaufman explained.

Certainly, if an ALJ has standing to file a lawsuit that challenges an agency interfering with his guaranteed judicial independence, then it would seem logical to assume that all the patent owners who have lost at the PTAB where there were expanded panels would have standing to sue the USPTO. The discovery in such lawsuits, if they come and I suspect they will, should be very enlightening.

Second, multiple patent owners have been harassed with large numbers of post grant challenges. For example, Zond was faced with 125 petitions. Some of these patent owners reached out directly to USPTO Director Michelle Lee to ask her assistance. Trading Technologies International, the owners of multiple patents on graphical user interfaces that should never qualify for covered business method review, have been hauled into CBM review after CBM review. TTI asked Lee use her power — a power the Patent Office specifically and correctly acknowledges was given to the Director in the America Invents Act — to step in and put an end to this harassment at the hands of multiple petitioners and a complicit PTAB. Lee refused, explaining she did not want to place her finger on the scales. That justification is laughable in light of the admissions about what was really happening inside the USPTO. Lee was stacking PTAB panels when necessary to intentionally place her finger on the scale so that cases would come out as she wanted.

What, you didn’t know this was happening at the USPTO? You didn’t realize the Office was knowingly and intentionally ensuring that decisions were to the liking of Michelle Lee, who was the one running the USPTO as either Director or in Acting Capacity ever since then Acting Director Teresa Rea left the USPTO in the fall of 2013 and up until Spring 2017.

Don’t beat yourself up for not realizing that the USPTO has been stacking the deck in an egregiously unfair game of whack-a-patentee at the PTAB. How could you be expected to know really, at least before the somewhat vague hint in the Dyk/Wallach concurring opinion in Nidec? The Federal Circuit decided the Yissum case, where the most glaring admission was made, with a Rule 36 affirmance in December 2015. That means no substantive opinion, just a one-word decision: “Affirmed.” So despite Judge Taranto seemingly having an issue with the USPTO’s shocking interpretation of the Director’s power to unilaterally decide any case by stacking panels with sympathetic Judges, the only mention of this appeared in the oral argument transcript because there was no opinion.

As understandable as the need for a mechanism to quickly resolve cases is for the Federal Circuit, there is something fundamentally wrong with using Rule 36 as often as the Court does – which is now over 50% of the time. A judgment providing no insight into the rationale applied is problematic. A judgment that does not alert the public to what seems to be a striking abuse of power by the USPTO is unconscionable.

What exactly does the Federal Circuit envision as their role if it is not to oversee the USPTO? How could it be that in America a Court of Appeals is made aware that an appointed government official is stacking the deck intentionally against patent owners and effectively in a unilateral way deciding the outcome of cases that the statute mandates be decided by a panel of impartial Judges?

And on top of all of this, just yesterday Patrick Anderson of IPWire wrote that it appears that a pro-patent 101 decision that chastised the patent examiner was scrubbed from the Office Database. Was this intentional? Was this just a computer glitch? It is impossible to say, but when you look at the litany of growing transgressions of the PTAB it becomes increasingly difficult to give the Office the benefit of the doubt.

Make no mistake; there is no impartiality at the PTAB. The PTAB is a fake court that has the trappings of a fair and balanced tribunal on the surface, but the closer you look at the inner workings the more you realize the tribunal is hopelessly broken and wholly incapable of being fixed. Given the lack of due process, the arbitrary and capricious rulings, refusing to consider timely submitted evidence, fundamentally misapplying the law of obviousness, determining that an MRI machine is an abstract idea, the PTAB ignoring the law, very serious conflicts of interest where Judges decide cases dealing with former clients, missing pro-patent eligibility PTAB decisions from the Office database, and now stacking PTAB panels to ensure outcomes, it is time to realize only viable solution is to disband the PTAB and search for a different answer.

It is also time for someone to do something about the Federal Circuit’s love affair with Rule 36. It is bad enough when Rule 36 is used to contrary to its explicit terms in clearly precedential cases, and it is bad enough when it is used to deprive the public of the benefit of the development of uncertain, even chaotic areas of law. It is entirely a different matter when Rule 36 hides what on the surface appears to be governmental abuse by the Executive Branch, and in this case that abuse is directed at the deprivation of a property right of constitutional importance. The Constitution is a document not known for its length and specificity, but patents are explicitly mentioned, and here we have the Director of the USPTO stacking panels to deprive patentees of their property? And the Federal Circuit says nothing?

Clearly the PTAB is not the only institution in need of substantial reforms.

UPDATED on Wednesday August 23, 2017 at 2:30pm ET. An earlier version of this article incorrectly stated the Federal Circuit had not yet decided Nidec, which was decided on August 22, 2017.



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

60 comments so far.

  • [Avatar for Jim Smith]
    Jim Smith
    September 8, 2017 03:30 pm

    contact info
    [email protected]

  • [Avatar for Jim Smith]
    Jim Smith
    September 8, 2017 02:53 pm

    IP Creators Association is asking for input on these issues.

    1. From Attorneys:
    1.a. Is a class action based on this issue feasible?
    1.b. If not, is it feasible for individuals to sue the USPTO for loss of their patents based on this information?

    2. From Inventors who have lost patents in PTAB procedings:

    2.a. Are there inventors who would be willing to serve as lead plaintiff(s) in a class action (if one were possible)?
    2.b. Are there inventors who would be willing to serve as plaintiff(s) in individual litigation against the USPTO based on the information revealed in this article (provided legal grounds exist)?

    3. What are the possible funding sources for such litigation against the USPTO?

  • [Avatar for Christopher White]
    Christopher White
    August 31, 2017 09:16 am

    Gene, would you please update your robots.txt so that articles such as this one can be saved in the Internet Archive? I’d like to have a backup copy in case the USPTO hits you with a takedown notice (hey, stranger things have happened!), but is rejected by your robots.txt. Thanks!

  • [Avatar for Anon]
    August 30, 2017 09:55 pm


    This, alas, is also NOT new.

  • [Avatar for JTS]
    August 30, 2017 08:16 pm

    No pressure on an added “judge” to vote a certain outcome. I mean, the top boss of the PTO picks judge X and tells them what the outcome should be. Failure to vote accordingly would be career limiting move. This is the antithesis of justice. This is the executive branch picking winners and losers. An abomination.

  • [Avatar for staff]
    August 30, 2017 04:02 pm

    This is no revelation to us. As we’ve been saying, PTAB is where our patents and their inventions go to die. This is why we also say the PTO applies the law in the most disastrous way possible for us and why it is now far too hard, slow and expensive for us to get, keep and enforce our patents. The patent system now shelters large multinational infringers making it child’s play for them to rob and crush their small American competitors and in no small part explains why small entity issued patents and application have atrophied to only about 1/10th of their historical shares, if not less, and why America cant find a good paying full time job. When we have to fight to get, keep, or enforce our patents we go out of business.

    When one combines that injustice to a denial of our right to a trial by jury, ALL post issue admin reviews must be abolished.

    For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at
    or, contact us at [email protected]

  • [Avatar for Anon]
    August 26, 2017 11:18 am

    Gene @ 51,

    Let me (kindly) include you in the group of misdirected ranting.

    The focal point here on the immediate use of stacking is simply within a well-known and long established power of the administrative agency based on that particular agency’s formation legislation.

    This is simply not “new” news.

    Acting as if this is new lessons the power of the umbrage being brought to bear.

    It is precisely analogous to asking the CAFC the wrong questions related to IPRs (vis a vis 35 USC 314(d)).

    It is the words (and actions) of Congress that need to be the focus, as the Board is acting within the parameters as set forth BY Congress.

  • [Avatar for blue]
    August 25, 2017 06:29 pm

    It is not just the PTAB. It is also happening at the TTAB.

  • [Avatar for Anon]
    August 25, 2017 02:44 pm

    Bemused @ 47,

    Thank you for the kind words.

    As for Night Writer, my asking for retraction or apology has less to do with any hurt feelings on my part, and more so in attempting to get Night Writer to read what I actually posted in a more diligent manner.

    If he truly is as disconnected as the use of his “”MM” insult indicates, then he should think twice before posting anything. As it is, what I posted is actually meant to produce a better and more critically thought through response to the power to stack the PTAB (and the BPAI previously) that has long existed.

    As well, this is timely to engage in an actual discussion – seeing as what Congress did in the AIA with granting MORE power to the PTAB must be viewed – not from the angle of what the PTAB (or the Director) may be doing with its power as properly held – but MORE from the angle as to Congress bestowing that power in the first instance.

    The problem here simply is NOT what the PTAB/Director are doing (no matter that such is an easy talking point).

    The problem here is that Congress wrote a law that is beyond its own authority to write.

    As I have attempted to in the past, I turn to the “I Robot” movie with Will Smith:

    ironically followed (today) with

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 25, 2017 12:34 pm

    Edward Heller @46-

    It is good to hear that there is an amicus in the works that will point out these serious transgressions of the PTAB. While one may be able to have an interesting and lively debate about whether the statute sets up a constitutional process and tribunal, I don’t know how anyone at this point 5 years in can legitimately claim the PTAB operates in a constitutional manner.

    I’m not at all convinced this stacking was intended to create uniformity at the PTAB. Assuming the goal was uniformity there are MUCH better and LEGAL ways for the USPTO to ensure uniformity. For example, make cases precedential. There are woefully few of the many thousands of decisions made precedential, which is inexplicable.

    Stacking panels against patent owners isn’t about uniformity when there is no other serious (or even half-hearted) attempt at uniformity. It is about stacking the deck even further against patent owners who may have drawn a favorable panel.

  • [Avatar for Anon]
    August 25, 2017 08:21 am

    Mr. Heller,

    You too should know better than to attempt to portray a known long-standing administrative agency power as some type of “her/his active interference with the PTAB.”

    Interference is simply not a correct word for what is (and has been) permitted under the particular administrative agency establishing (or subsequent) legislation. It cannot be “interference” when the ultimate boss IS the director, and the director as within their anointed powers the power to apply policy.

    Rather than such umbrage (alone), the key is knowledge and understanding of Admin Law: it is far better to understand what it going on than to make up “fake battles” and use “umbrage” over those “fake battles” as some type of rallying cry.

    It is far better for everyone (and that includes – especially – Congress) to understand that the setup for the administrative agency known as the Patent Office simply does NOT have an adequate separation between the political and judicial portions of that agency.

    Unless and until a true structural change is also undertaken, ANY powers provided to the Patent Office in its judicial capacity are necessarily are intermingled with its political capacity.

    As I stated above, this is not new ‘news.’

  • [Avatar for MaGnum]
    August 25, 2017 01:22 am

    Very unfortunate to see figures and institutions who are meant to be influential to tomorrow’s generation betraying the very basic ethical and moral values our fathers entrusted us with. Don’t mean to be pessimistic but what has society become but a programmed ruthless money hungry machine? Kids anyone? No thanks!

  • [Avatar for Jeff Lindsay]
    Jeff Lindsay
    August 24, 2017 11:51 pm

    Time for a new Mission Impossible movie. “Patent Impossible” could tell the story of team of secret agents working for Russia, of course, with a breakthrough invention trying to get basic patent rights as they fight the USPTO hydra and reveal the layer-upon-layer of corruption. Could be quite a thriller. But nobody will hear about it once Google sandboxes the related websites and all stories of the movie are censored for being “fake news.”

  • [Avatar for Bemused]
    August 24, 2017 08:22 pm

    Anon, I wouldn’t take Night Writer’s post too personally. Anyone who’s spent any time reading this blog and “the other one” knows that your posts are thoughtful and relevant to the discussion at hand. In short, you’re the antithesis of MM.

  • [Avatar for Edward Heller]
    Edward Heller
    August 24, 2017 06:53 pm

    Gene, I know of at least one amicus that is being edited to bring this matter to the attention of the Supreme Court. There may be others. It illustrates in spades that this is a political court — an item high on the list of factors important to Breyer, Kagan, Ginsberg, Sotomayor for determining whether an assignment to non Article III court of the adjudication of private rights is constitutional.

    While I generally support that the Director is in charge of policy, her/his active interference with the PTAB in contested matters of private rights to determine outcomes is radically inconsistent with any notion of due process and is a fundamental reason we have an independent judiciary in the first place.

    This smacks too, too much of the Star Chamber. “In modern usage, legal or administrative bodies with strict, arbitrary rulings and secretive proceedings are sometimes called, metaphorically or poetically, star chambers.”

  • [Avatar for Tesia Thomas]
    Tesia Thomas
    August 24, 2017 03:10 pm

    @The Time Is Now To Act

    That’s a good idea except the Fed Court of Claims is more kangaroo than USPTO.
    But, yeah, join the attack on USPTO with SAWS:

  • [Avatar for The Time Is Now To Act]
    The Time Is Now To Act
    August 24, 2017 02:42 pm

    Further, the law firm(s) with the chops to do it should take on this civil (or all related) actions v USPTO in a class action on behalf of affected patent owners, their investors, families, employees and others affected.

    From discovery, if further impropriety is uncovered, those companies and individuals in private industry involved in collusion with the PTO should be added to the action.

    Unless I am missing something, many members of the class are readers of this site and an advertisement from a firm representing the class would likely draw strong response and yield a wellspring of actionable information.

  • [Avatar for Tesia Thomas]
    Tesia Thomas
    August 24, 2017 02:05 pm

    @angry dude

    Maybe you guys should write a memo about me being unfit to be an inventor because of my biological differences…

    I’ll help.

  • [Avatar for angry dude]
    angry dude
    August 24, 2017 01:45 pm

    Well, who really cares about corruption in USPTO ?

    They won’t talk about this on CNN or Fox – despite all the ugly facts calling for criminal prosecution

    But… Russian interfered with US elections… lets investigate that until the end of days with no single fact of voter tampering found so far .. other than exposing dirt about Hillary which everybody and his brother knew anyway regardless

    what a circus

  • [Avatar for Don Hilliard]
    Don Hilliard
    August 24, 2017 01:27 pm

    And ever since KSR, with its whimsical language (the “Citizen’s United” of patent law), the possibilities for collusion are endless.

  • [Avatar for Chuck Lantz]
    Chuck Lantz
    August 24, 2017 01:13 pm

    It’s a shame that The Good Wife was cancelled. They would have presented this issue and solved it, all within one hour, with commercials.

    More seriously, this article very literally caused my jaw to drop, and stay dropped throughout. The fact that the director had this much unethical power is bad enough, but the fact that it was considered to be business as usual by so many is sickening.

  • [Avatar for Eric Berend]
    Eric Berend
    August 24, 2017 01:11 pm

    Inventors have fled from any trust and reliance on the formerly best patent process and jurisprudence in the world.

    Any inventor who, although willing to participate in the Constitutional bargain implied in Section I, has become daunted by the prospect of having their private property and genius work subjected to this savage, unprincipled kangeroo court dedicated to utter antagonism against patents and inventors – has now been proved to be correct.

    We do not trust the USPTO, the Congress, the U.S. Courts, nor any other organ of U.S. government that is supposedly guided and controlled by the rule of law.

    The is NO rule of law, when it comes to American Inventors. There is only the Rule of AlphaGoog and IP Pirates, who are especially well favored and supported in their mammoth exploit against the ‘publick welfare’ of the U.S.A., by destroying the Constitutional interests of individual and small entity inventors.

    None DARE call it TREASON.

  • [Avatar for The Time Is Now To Act]
    The Time Is Now To Act
    August 24, 2017 12:58 pm

    Tesia- agree. I have posted several times that the combination of these acts herein and in other matters is under DOJ jurisdiction.

    It was broadly stated for several years that an attorney is most like guilty of malpractice if they do not file for IPR when defending a client who is sued for patent infringement.

    I’ll take Gene’s flashlight on the civil suit ramifications here a bit further:

    If an attorney represents a patent owner who was stripped of their patent rights via PTAB is not advising their client to review a possible civil action against the USPTO et al they are likely committing malpractice.

  • [Avatar for Tesia Thomas]
    Tesia Thomas
    August 24, 2017 12:27 pm

    @Pro Se

    A Crony casserole uses as many ingredients as it needs to.

  • [Avatar for Tesia Thomas]
    Tesia Thomas
    August 24, 2017 12:24 pm

    Where are the trust busters?
    How is all of this not evidence of collusion?

    This dialogue hands the case to DOJ.
    Google picked the APJs. APJs picked which patents would go.

  • [Avatar for Night Writer]
    Night Writer
    August 24, 2017 11:19 am

    @34 John Fetter

    We are burning our country down. Really weird. We have moved into this period of post-reality where it is impossible to have any discussion in the USA. Google will just say patents are bad and that’s that.

  • [Avatar for John Fetter]
    John Fetter
    August 24, 2017 10:58 am

    The rest of the world is looking on in amazement as American officialdom appoints unsuitable people to administrative positions and then looks on benignly as they engage in destroying their country’s technological lead in the world.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 24, 2017 10:51 am

    Robert W.

    The case you cite if from Canada and wouldn’t have any precedential value in the United States. Appellate Courts are authorized under the Federal Rules of Appellate Procedure to issue judgments without a decision. There is some question about the extent to which that applies to certain cases, and the Federal Circuit using that authority found in Rule 36 in 50 percent of its cases is in my opinion abusive. See:

  • [Avatar for Robert W.]
    Robert W.
    August 24, 2017 10:37 am

    You said in your article that: “A judgment providing no insight into the rationale applied is problematic. A judgment that does not alert the public to what seems to be a striking abuse of power by the USPTO is unconscionable.”
    Sorry, but that’s a legal understatement!
    A court’s decision without an opinion is unconstitutional & therefore void.
    “[24] Trial judges must give reasons for their verdicts. Reasons that explain to the parties and the public the result arrived at by the trial judge are crucial to maintaining the proper level of transparency and accountability essential to the maintenance of the integrity of the trial process and public confidence in that process. Reasons for judgment allow the parties to know that their claims have been heard, understood and adjudicated upon in an objective and reasonable fashion that accords with the applicable legal principles: see R. v. Sheppard, 2002 SCC 26, [2002] 1 S.C.R. 869, at paras. 15, 22, 24.
    [25] On an appeal based on the trial judge’s failure to give reasons, the appellate court measures the adequacy of the reasons against the requirement that the reasons permit meaningful appellate review of the trial decision. If the reasons serve that function, any shortcomings from a due administration of justice perspective, do not justify appellate intervention. However, reasons that frustrate meaningful appellate review constitute an error in law. That error requires the quashing of the verdict unless the trial record as a whole permits effective appellate review of the verdict: see Sheppard, at paras. 25-33, 46.”
    It follows that the decision in Yissum case could be set aside on further appeal.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 24, 2017 10:36 am


    I think this and all the other revelations/transgressions will have an impact on the Supreme Court if they are brought to Court’s attention. Amicus support in Oil States will be critical to highlight all the transgressions of what is becoming a rogue tribunal. I know I’ve said it in the past — that the PTAB is a kangaroo court — but with each passing day the evidence becomes overwhelming that the PTAB is outrageously broken.

    The statute may or may not set up an unconstitutional tribunal and adjudication process (I think it does) but the way the PTAB is administered day to day is absolutely unconstitutional. That has to matter if it is argued.


  • [Avatar for Glenn Lammi]
    Glenn Lammi
    August 24, 2017 10:22 am

    Gene, what impact do you think this revelation will have on the Oil States v. Greene’s Energy Group case the US Supreme Court will hear this fall regarding the authority of an Article I court (PTAB) to extinguish patent rights?

  • [Avatar for Anon]
    August 24, 2017 09:16 am

    Night Writer,

    Read again what I actually wrote – your insult is not appropriate.

    Nowhere do I indicate that patents are not valuable.

  • [Avatar for John K]
    John K
    August 24, 2017 09:07 am

    What a great expose Gene. This is the Watergate of patents. This is the kind of thing you expect to happen in a banana republic. Great article Gene. The PTAB has to go and there should be investigations for abuse of power. I wonder if individuals do not get sued in civil court for abuses of power as well.

  • [Avatar for Night Writer]
    Night Writer
    August 24, 2017 08:57 am

    @26 Anon

    I think you misinterpreted the MM reference. It was an insult to be sure, but not that you were acting like MM, but that he had convinced you that patents are not valuable.

  • [Avatar for Anon]
    August 24, 2017 08:46 am

    Night Writer,

    You responded directly to me, and did so wielding the “MM” insult.

    I ask that you verify why you chose to use that insult.

    Feel free to read what I actually posted – and retract the insult.

  • [Avatar for Pro Se]
    Pro Se
    August 24, 2017 08:39 am

    @16 Yes, 10 references for 1 claim dude… they seriously ramrodded it and accepted an “expert” affidavit to compensate for teachings NOT found in the printed publications…

  • [Avatar for Night Writer]
    Night Writer
    August 24, 2017 08:33 am

    @20 Anon

    I think this blog post provides details that provide substance to the fact that the PTAB is controlled by the Director and the Executive branch.

    The details of stacking panels should shake anyone’s ethics and sense of fair play.

  • [Avatar for MILENA SUKOVIC]
    August 24, 2017 08:27 am

    Sad. I chose this profession because it was technical and supposed to be the most logical area of law. I thought not able to be politicized. How could Michele Lee even think this was ok? Now I welcome AI taking over as judges.

  • [Avatar for Tim]
    August 24, 2017 08:19 am

    Not surprising to me. I knew the game was dirty when Vringo won their case of infringement against Google, AOL, Target & Gannett in “Vringo vs IP Internet”, after they won the infringement case with a 12-person jury, unanamiously on all 14 charges: 14-0. Only to have the Appeals Court, 2 of 3 judges, “Wallace & Mayer” toss it for no real reason, as the only qualified judge with a computer technology background, “judge Chen” highly dissented. And afterwards it went to the US Supreme Ct, where the court “refused” to look at the case. I believe this corruption went all the way up. Who greased the skids?

  • [Avatar for EG]
    August 24, 2017 08:01 am

    Hey Gene,

    Certainly scandalous, making you wonder about whether what the USPTO generally and PTAB specifically does is really compliant with the APA. But not unheard of. It’s fairly well known that Harry Manbeck, when he was Commissioner back in the ’90s, pulled a similar Board-packing stunt in Alappat.

  • [Avatar for Anon]
    August 24, 2017 07:56 am

    Night Writer @ 13,

    Before the train leaves for the Google-bashing seminar, let’s be clear about what I posted.

    Your reference to “MM” was not only uncalled for, it is rather incorrect.

    Please tell me what I posted that was in error, that employed baseless ad hominem, that accused others of that which I undertook, or any other “MM”-like attribute?

    What I stated was not only completely accurate, but also germane to the main point here and to the (to me) surprising “shock” that the power to stack (or otherwise tilt) the Article I judicial function of the Patent Office resided (and has LONG resided) in the politically controlled Director.

    Please do not engage in the very Malcolmesqe baseless accusations, just because you may not like the (accurate) point that I presented.

  • [Avatar for Night Writer]
    Night Writer
    August 24, 2017 07:01 am

    Basically, from what I am seeing, corporations are starting to re-think their patent filing strategy and the worth of patents. Which —-believe it or not—means they will feel no need to spend on innovation and research. They will start to take positions of maximum copying to maintain market share.

    It is really too bad someone like Mark Lemley won’t spend the time outside of Google to look how real innovation works.

    Google is all about their ads. They make 90 percent of their money from the ad revenue and want everything to be free to us so we can have better searches and they can get more money from their ads. And, they won’t all tech to be free because they are on top and want to be able to copy anything anyone does.

  • [Avatar for Night Writer]
    Night Writer
    August 24, 2017 06:55 am

    >>and what arguably may amount to the worst devaluing of US patents since its inception.

    There is no doubt about this. Patents are worth about 10% of what they were 10 years ago.

    Again, my prediction, during the next recession patent filings by US corporations will fall by 25%.

  • [Avatar for PTOIndentured]
    August 24, 2017 03:02 am

    Coincidence? You be the judge: Get shmoozed into installing a Google top IP attorney at PTO’s helm. Result: a PTO Director who essentially ‘Open-Sourced’ (‘get ’em for free’) 90% of PTAB/BRI-attacked US patents.

    Big difference though, Google’s open-sourcing got them top positioning in the heated Smart Phone wars (and apps designed to bring them billlions in personal data). The PTO got, a 1st-ranked international patent system, devolved to 10th-ranked position, and what arguably may amount to the worst devaluing of US patents since its inception.

    Good: that Director is gone. Bad: the ‘open-sourcing’ of US patents remains.

  • [Avatar for Night Writer]
    Night Writer
    August 23, 2017 10:45 pm

    @15 10 references for one claim?

  • [Avatar for Pro Se]
    Pro Se
    August 23, 2017 09:17 pm

    again… 10 REFERENCES TIED TOGETHER led to an accepted “‘Reasonable Likelihood of Success’ for my petitioner…

    I can’t even think of any food dish that has to use 10 ingredients to be made… unless it’s a kitchen at the USPTO.

  • [Avatar for JPM]
    August 23, 2017 08:59 pm

    Money and politics don’t mix. When politicians can be bought, we get laws like this and crooked judges and a corrupted system.

  • [Avatar for Night Writer]
    Night Writer
    August 23, 2017 08:04 pm

    @7 Anon: you sound like you have been spending too much time with MM.

    What a mess. Not even close to fair.

  • [Avatar for The Time Is Now To Act]
    The Time Is Now To Act
    August 23, 2017 07:54 pm

    Brian and David – a timely idea that must be implemented by as many as are able. Thank you for taking the to post it.

    To those who are in a position to write pro patent amicus briefs:


  • [Avatar for David]
    August 23, 2017 07:42 pm

    Brian that is a good idea. A personal take from a party that was on the receiving end of one of these stacked panels would be effective.

  • [Avatar for Brian]
    August 23, 2017 07:20 pm

    Can someone please write these issues in an amicus brief for oil state ? or may be couple of amicus brief highlighting few issues in each brief.

  • [Avatar for curoius]
    August 23, 2017 07:11 pm

    Gene – in your list of problems with the PTAB, you missed the fee diversion from the examining corps. Applicants pay for examination, and their money instead goes towards cancelling patents.

  • [Avatar for Curious]
    August 23, 2017 07:10 pm

    Gene — the only point I disagree on (i.e., I agree about everything said about the PTAB — IMHO, the entire lot of them should be disbanded and a new group hired that is trained to have judicial independence) is about the Federal Circuit using Rule 36 less often. In a different time, I would agree with you. However, the Federal Circuit is very anti-patent these days.

    More opinions from the Federal Circuit would mean more opportunities for the USPTO (and lower Courts) to use decisions invalidating patents (or affirming rejections) against applicants/patentees. I suspect that this is why the good professor on the other patent blog wants the Federal Circuit to do away Rule 36 when it comes to cases coming out of the USPTO. I suspect his handlers know that Rule 36 hurts the anti-patent crowd more than it helps.

    It is hard enough to navigate the BS 101 rejections coming out of the USPTO today. Imagine if the USPTO had 3 times as many decisions affirming 101 rejections to work with. Invariably, we’ll be having to deal with the fallout of other decisions (like Electric Corp) that use grossly over-broad language (e.g., “collecting information, analyzing it, and displaying certain results of the collection and analysis”) in describing alleged abstract ideas.

    For me, this is a great example of the admonition of “be careful of what you ask for.” More written decisions from the Federal Circuit = more ammo against patent applicants and patent holders.

  • [Avatar for Anon]
    August 23, 2017 06:14 pm

    I (for one), am a little bit surprised by the reactions to this news.

    This really is NOT “new” news, as the reference to the Alappat case indicates.

    Also, as I have noted previously, administrative agencies have a spectrum of “separateness” between their “judicial” and their “political” functions – as is typically set at the time the agency is created.

    Those who have studied Admin Law have known this like forever.

    This is NOT to say that Congress may need to be reminded of this (for example, they seem to have totally forgotten that very same “closeness” when they drafted the AIA and decided to give so much power to the Article I “judicial function” of the Patent Office.

    Of course, other words than “forgot” may be used (depending on your level of cynicism).

  • [Avatar for Valar Morghulis]
    Valar Morghulis
    August 23, 2017 03:26 pm

    Is there a list of cases that have been decided using these stacked boards?

  • [Avatar for Josh Malone]
    Josh Malone
    August 23, 2017 03:17 pm

    I asked for an expanded panel when my patents were declared more likely than not obvious, citing 1) contrary holdings by the examiner 2) contrary holdings by the district court, and 3) commercial success evidence ignored by the panel. I did not get an expanded panel.

  • [Avatar for John White]
    John White
    August 23, 2017 02:35 pm

    Wow, Gene. The PTAB should be disembled immediately and all decisions summarily vacated. It truly is a kangaroo court. It is, as has been suspected, a paid for ploy to take property without due process. Disgusting.

  • [Avatar for Appearance of ...]
    Appearance of …
    August 23, 2017 02:30 pm

    Guess I picked a good user name!

  • [Avatar for CP in DC]
    CP in DC
    August 23, 2017 02:06 pm

    Wow. First we deal with the SAWS program. Then we deal with admin judges without a conflict check. Opinions being white washed as well? Now we deal with this.

    With each passing day, the PTO looks like a third-world patent office with all the deficiencies and shortcomings.

    Nidec was decided yesterday and Dyk and Wallach are voicing their concerns in the concurring opinion.

  • [Avatar for Bemused]
    August 23, 2017 01:55 pm


    Just when I thought it was impossible to be any more disgusted with the USPTO (e.g. the SAWS program, etc, etc), along comes this information.

    Truly, if there was ever an governmental agency who’s statutory interpretations deserve absolutely no Chevron Deference, its the USPTO.

    At the risk of being called an anarchist, the USPTO is lucky that the only thing that independent inventors burned down last week was their own patents.