It would seem the Patent Trial and Appeal Board (PTAB) sees nothing wrong with allowing any Administrative Patent Judges (APJs) to participate in the deliberative process of any inter partes review (IPR) even when those APJs have not been assigned to the three-member panel. This disturbing revelation about phantom expanded panels comes thanks to document production received in response to a FOIA request.
The first document in the heavily redacted production clearly shows an e-mail communication between APJ James Arpin (not assigned to the IPRs involving the RESTASIS patents) and APJ Sheridan Snedden (who was assigned to the IPRs involving the RESTASIS patents). The subject of the e-mail communication reads: “Tribal Immunity”, which makes it clear the two were discussing the RESTASIS IPRs. The e-mail body is redacted, so we don’t know what they were communicating about, but the United States Patent and Trademark Office (USPTO) claimed deliberative process privilege pursuant to section (b)(5) of the Freedom of Information Act.
What is an APJ not assigned to the cases doing deliberating with an APJ assigned to the panel that is to render a decision?
This revelation matters because the deliberative process privilege only shields information that is both “predecisional and a part of the deliberative process.” Judicial Watch, Inc. v. U.S. Dep’t of Justice, 20 F. Supp. 3d 260, 269 (D.D.C. 2014).
The USPTO justified its redaction under the deliberative process privilege because it “consist of opinions and recommendations regarding proposed agency actions”:
Here, the withheld information consists of opinions and recommendations regarding proposed agency actions, i.e., antecedent to the adoption of an agency position (Judicial Watch, Inc. v. U.S. Dep’t of Commerce, 337 F.Supp.2d 146, 172 (D.D.C. 2004)), and are deliberative, i.e., a direct part of the deliberative process in that it makes recommendations or expresses opinions on legal or policy matters. Skinner v. U.S. Dep’t of Justice, 2010 WL 3832602 (D.D.C. 2010) (quoting Vaughn v. Rosen, 523 F.2d 1136, 1143-44 (D.C. Cir. 1975). Facts expressed in these deliberative communications are not reasonably segregable, and thus are not suitable for disclosure.
In other words, the PTAB is admitting that APJs who were not assigned to a panel are, nonetheless, actively participating in “proposed agency actions” in those IPRs. In the case of the Saint Regis Mohawk Tribe’s IPRs, APJ Arpin, who is not on the panel insofar as the public and parties are concerned, actively participated in the “deliberations” that led to Board’s decision to deny the Tribe’s Motion to Dismiss based on Tribal Sovereign Immunity.
If this practice of phantom expanded panels, with APJs not identified on the record or to the parties, is legal then IPR panel assignments are nothing more than a farce. Any APJ, including Chief Administrative Patent Judge Ruschke, can actively participate in the deliberative process of any IPR without ever disclosing that fact to the public or to the parties. So, in effect, all IPR panels may be secretly stacked!
An expanded panel under the PTAB’s Standard Operating Procedure 1 (revision 14) would simply be a panel that the PTAB has decided to admit is stacked. But how many more phantom expanded panels — panels where the PTAB does not admit to stacking — exist?
Given these revelations it is no longer hyperbole to call the PTAB a Star Chamber. Those on the wrong end of the awesome power wielded by the PTAB have long claimed the tribunal was, in fact, a modern-day Star Chamber. But such a charge has largely been believed ridiculous; nothing more than sour grapes. But it does seem that the PTAB has evolved to become an administrative body with arbitrary rulings and secretive proceedings, the very definition of a Star Chamber.
Unfortunately, the PTAB’s position is not necessarily inconsistent with the statutory requirement that IPRs be heard by “at least” three-member panels assigned by the Director. See 35 U.S.C. § 6(c). And it also conforms with the PTAB’s definition “Panel” as “at least three members of the Board.” 37 C.F.R. § 42.2.
While expanded panels and the exerting of political pressure may be the new norm in order to prevent panels from issuing decisions that might be disfavored by PTAB and USPTO leadership, phantom expanded panels raise serious questions about compliance with the Administrative Procedures Act (APA).
If Lead APJs, the Chief Judge, Deputy Chief and Vice Chief Judges are engaging in secret deliberations with APJs assigned to cases (which we know they are because of the FOIA production) the independence of those APJs assigned to decide matters is seriously in question. What pressure must an APJ — many who are only senior associates at best — feel when they are engaging in secret, off-the-record deliberations with superiors? This just can’t be the level of judicial independence the APA requires, or the U.S. Constitution envisions.
“The APA creates a comprehensive bulwark to protect ALJs from agency interference,” Judge Kaufman explained in Nash v. Califano. “The independence granted to ALJs is designed to maintain public confidence in the essential fairness.”
The optics of this are terrible. Some 10 off-the-record communications between APJs — even APJs with supervisory authority — and those on panels deciding issues of State and Tribal Sovereign Immunity are known to exist. How many more exist in other cases?
For those searching for another possible, less nefarious explanation other than the existence of phantom expanded panels, the choices are few. Indeed, there really are only two possible interpretations of the documents disclosed by the USPTO: (1) Administrative Patent Judges not assigned to decide petitions are engaging in off-the-record, secret communications and deliberating as part of a phantom expanded panel; or (2) The USPTO is violating FOIA in an egregious and rather abusive manner (i.e., characterizing communications that are not deliberative as deliberative in order to refuse production of documents). Either is unacceptable, just for different reasons.
Because there is no reason at this juncture to question the propriety of the USPTO claiming deliberative privilege for hundreds of pages of communications, the only reasonable interpretation seems that APJs not assigned to these petitions are engaging as part of phantom expanded panels, where the collaboration of the APJs is not disclosed on the record, or to the parties.
Shockingly, there is nothing in PTAB Standard Operating Procedure 1 (revision 14) that requires notification to the parties that an expanded panel has been authorized, or even the names of those on expanded panels to be made of record. Thus, even despite the likelihood that phantom expanded panels do exist, the PTAB can say with all honesty that they faithfully carry out the dictates of their own Standard Operating Procedures, which is no doubt what they will say.
Of course, all of the APJs on the PTAB are employees of the United States Patent and Trademark Office, and bound by USPTO rules, regulations and laws pertaining thereto. The existence of phantom expanded panels would necessarily mean that those APJs ostensibly deciding cases insofar as the public and parties are concerned are violating 37 C.F.R. 1.2, which says:
All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
Obviously, the consideration of deliberative correspondence from those not assigned to the case means the APJs are deciding cases not exclusively based on the written record. Thus, any way you slice this the PTAB seems to be violating one or more rules.
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Copyright: Gor Grigoryan