United States: Who's Kidding Who?

Last Updated: June 25 2018
Article by Teddy S. Gron

A Feature Article of Law360 entitled "Ex-PTAB Judges Say Board Policies Don't Squelch Dissents," by Ryan Davis, argued that policies of the Patent Trial and Appeal Board (hereafter Board) do not stymie dissenting and concurring opinions by one or more of the three members of any panel of the Board charged with "hearing" an appeal, in accordance with their 35 U.S.C. § 6(b) Duties.  The article quoted former Administrative Patent Judges (APJs), one of which is a former colleague of mine on the Board who was highly respected for his views and judgments.  However, other former APJs must be asking themselves, "Who's Kidding Who?"

Preliminarily, IP practitioners must understand that, even with all the published and unpublished policies instituted by Board management in the 21st Century, three member panels still "hear" each appeal.  Practically, however, today, for reasons explained below, no more than one member of any three member panel of the Board often decides the appeal.  And, the other APJs "hearing" the appeal cannot be faulted for poor administrative policies and inadequate working space, which stymie consultation and discussion of every appeal.

In 2002 I wrote a 400 page Decision On Appeal in a five-party interference based on a record with thousands of exhibits.  That Decision was affirmed by the Federal Circuit in In re Scott T. Jolley, 308 F.3d 1317 (Fed. Cir. 2002).  The Board's final decision in that case took at least four months to complete, i.e., prepare, draft, circulate to the other two members of the three member panel, and amend at their behest, before three signatures could be obtained.  Shortly thereafter, the members of the Board were informed that new quotas were being instituted by administration and management of the Board.  For example, each APJ must write 100 total decisions, sign 100 more decisions as the second APJ, and sign 100 more decisions as the third APJ in order to achieve an outstanding rating.  That's 300 appeals to be reviewed and decided in no more than 230 working days.  It cannot be done, especially when the new administrative policies allowed no working credit for dissents and concurring opinions which are inevitable when three different APJs participate on every panel.  Not surprisingly, today it is almost always the case that all three members of any sitting panel of the Board will inevitably agree.  At times, sitting APJs have been so frustrated by Board policies that they simply concur in the result, with no written opinion.

The Board's administrative response has always been, "Well, one must write justifications for one's time when drafting very difficult decisions."  However, writing justifications often takes more time and effort than writing the final decisions.  Nevertheless, Board administrators state, "Justifications are now required."  I retired from the Board in 2008 in response.

What happened and why?  New policies invariably are adopted to handle the massive onslaught of new appeals, the expectation of impending IPRs, and the Bar's demand for quick decisions.  However, quickly decided appeals are not necessarily correct.

The Board has adopted policies which force three-member panels of APJs to act in unison, without ever dissenting, without ever concurring, without ever objecting, in order to eliminate the ever-rising backlog of appeals.  Let's be realistic.  Who's kidding who?  The Board's policies are difficult for APJs to accept and follow in good conscience.  At times, even the best judges make mistakes.  However, pushing a timer, setting quotas, and colleague performance ratings cause three member panels of APJs to make more mistakes.  It is not their fault.

In 2008, the Chief APJ at the time circulated a memo to the members of the Board stating that only the "Presiding Judge" was allowed to draft a per curiam decision with more than one written opinion.  I entered a per curiam final decision because I regularly was the "Presiding Judge" on any three-member panel in which I participated.  The Chief stormed into my room and admonished my defiance of policy.  I pleaded misunderstanding at the first violation and forgetting the reprimand at the second violation.  After a third violation, I retired from the Board after spending 34 years at the PTO.  Like the respected former APJ quoted in Mr. Davis' Feature article, my decision to dissent could not be squelched.

Do not pronounce that the Board's administrative policies do not squelch some APJs from writing dissenting opinions, concurring opinions, and per curiam opinions.  The Board's administrative policies do indeed often foster ill-considered and ill-advised decisions and opinions on appeal.  However, the administration responds that the Board cannot otherwise handle the work load.  That may be so.  Nevertheless, in many important appeals, the final decision on appeal is likely to suffer. 

At one time, Chief McKelvey emphasized that it was most important for the Board to reach the "correct result".  The Chief is now dead.  Hopefully, that overriding policy will not die with him.

The opinions expressed in this paper are my own and do not reflect the views or policies of OBLON.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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