July 6, 2021
Josh Malone: Okay, welcome everyone. I’ll invite our speakers for today’s webinar to join us now. So looks like we’re all here. So thanks, everyone for joining today. A couple weeks ago, I think it was the last week of June, the Supreme Court issued a decision in Arthrex finding that the judges, the administrative patent judges were unconstitutional to the appointments clause. Of course, in that same decision, they severed the Congress’s prohibition on Director review and said, no, no, the director from this day forward may review these decisions by Administrative Patent Judges, thereby rendering them inferior officers.
And so the issues that have been raised and there’s a great paper on this at U.S. Inventor who’s hosting this webinar today, can he just get out a rubber stamp and start stamping these decisions as that count is review sufficient to meet the standards for an inferior officer and due process and all the other requirements and so the question is, if you’re a party in an IPR proceeding, and you don’t like the determination made by the PTAB judges, how do you get this relief? And what rights do you have? And so the patent office has issued initial guidance on this. But it’s incomplete and preliminary. And so today, this panel we have some experts on the PTAB, on the American Invents Act, on administrative law, constitutional law. And so we’re going to peel this apart and see what rights does a party have at the PTAB now after Arthrex and how do we go about availing ourselves of them.
So today’s panel, and I left my notes, left on my notes to the side, so I’m going to wing it. We have four distinguished panelists. Bridget Smith is Attorney at Lowenstein & Weatherwax who handles many, many proceedings at the PTAB IPR proceedings and other matters. And she’s going to moderate today and kind of give us the viewpoint of an advocate at the PTAB and what sorts of things do we do going forward here, especially in the meantime, as this is sorting out, we also have Rob Greenspoon, with Flachsbart & Greenspoon. He practices at the PTAB and Federal Courts and Federal Circuit, and Supreme Court even as an Amicus at least, and petitioner. So we’ll see they’ll grant one of these days. He’s a great advocate for Inventors, and he’s actually lead counsel on a case right now under the Administrative Procedures Act against the patent office and had a hearing last week on a very, very interesting case that he’s pursuing there.
You can find out more about that at usinventor.org as well. We also have the Honorable Scott Kief, Former Commissioner at the ITC, and clearly an expert on these matters. He’s now a private consultant. And he’ll tell you more about his experience and views on, we want to get a broader picture here, right, because a lot of times we get stuck in the patent world or like Well, whatever the patent office said in the MPEP. That’s what we can do. It’s much bigger than that. There’s a lot of other statutes and regulations and presidents that govern patent proceeding. So also, we’re very privileged to have Ron Katznelson, he’s the past Chair of the IP Committee for the IEEE-USA, an expert on patent and administrative law, and he’s an engineer and inventor of 25 patents and an expert on these issues.
So I didn’t do justice, but I’m going to step away now and I’m going to have these guys tell us more about what they’ve learned in their experience. Bridget, it’s all you, hence we’ll look forward to hearing more and learning more about this important issue.
Bridget Smith: Great. So, we were going to have the panelists provide a little bit of background about their particular expertise on this topic, and I want to do that. But we’ve already had some questions come in on our chat window. And I think this is a great segue. So let’s just get that preliminary question out of the way. And then I’ll turn and we’ll do this. We’ll do this session to do a deep dive before we go into the moderated session. So the first issue is in Arthrex, the Supreme Court was considering two questions.
So I don’t have them memorized. So I’m going to have to go to my notes. And the first one was whether for purposes of the appointments clause under the Constitution, whether APJ’s, Administrative Patent Judges of the U.S. Patent and Trademark Office are Principal Officers, who must be appointed by the President with the Senate’s advice and consent, or are they inferior officers whose appointment Congress has permissively vested in a department head and then the second question was whether if APJ’s are Principal Officers, whether the Court of Appeals, this is the Court of Appeals for the Federal Circuit properly cured any constitutional defect, any appointments clause defects in the current statutory scheme by severing their job protections, under there is a statute it’s 5 USC, I think it says 7513. I don’t remember that one off the top of my head, but they severed their job protections, thereby rendering them inferior officers.
Now anybody can just pick this up and run with it. As to the first question, it strikes me that the majority in Arthrex took no opinion as to whether the judges or Principal Officers or inferior officers, is that right?
Robert Greenspoon: The Thomas dissent picked up on this right away. I’m Rob Greenspoon, obviously. And I believe the proper calling strikes is that they held that they were inferior officers, but mingling with issues that inferior officers are not supposed to mingle with, that is the final determination on patent validity. And so the cure, I don’t want to steal your thunder, but you can talk about the cure, Bridget?
Bridget Smith: Yeah, so that’s perfect, perfect segue. So the majority did think that there was a constitutional problem. That’s pretty clear. But and that’s the unreviewable authority wielded by APJ’s during inter parties review is incompatible with their appointment by the Secretary of Commerce. So just to be clear, what was the remedy for that constitutional defect? Rob, do you want to pick this one up again?
Robert Greenspoon: Sure, so the remedy, according to the Supreme Court, was to inject the director into the process, the Director of the Patent and Trademark Office, who is nominated by the President and confirmed by the Senate. So he’s a proper Principal Officer, make that individual he or she, whoever ends up becoming the sort of intermediate layer of appeal between the PTAB board and the Court of Appeals for the Federal Circuit and the Supreme Court majority believed and this was actually seven to two, the Supreme Court majority on the remedy believes that injecting the director, a true Principal Officer into that position and into that role, made that individual, the spokesperson for the agency so that the agency is properly issuing a final determination through the Office of Principal Officer.
Scott Kief: I will add to that, can I add to that. I think it was more from the point of view of confirming that the APJ’s are inferior officers. The test, I think has meant was that we should have a supervisor above them that fundamentally oversees or can review their substantive decisions. And the only way that could happen, because it wasn’t there under Section 6C is to interject and to modify Section 6C of the Patent Act to enable the director to review and essentially demote them to the position of Principal Officer, it’s not as much as representation before of the agency. It’s more in terms of just making sure they’re inferior.
Bridget Smith: Perfect, and they have their job protections back, so I’m sure they’re pleased about that. So now I understand that each of you has kind of a unique take on the issues that we’re going to be talking about today. Rob has a group of slides. And so Rob, I want to go with you last, because a lot of my questions are going to pick up on some of those topics. So I’m going to start off with Scott Kief. Scott, do you want to take the lead on this?
Scott Kief: Sure, I’m happy to and if it’s okay, I’ll just quickly share my screen to just give a little, a little glance at some slides that may just help folks generally think about some things, give you a sense of how I’ve been approaching these issues to try to help people get some practical traction on this. Look, I’m a law professor and like all good law professors, I believe deeply in curing insomnia. So I’ve got lots of books and articles and footnotes that can do the trick. But I take it that that’s not what we want to do today. What we want to do today is get some kind of practical glance at what people can do in the real world.
And so to that end, I thought I’d talk a little bit about my perspective, having been a Principal Officer and adjudicator as well as my work with colleagues in our consulting practice, where we are helping folks manage strategies around these things. So my Chief teammate here, Tom Grant, and I have been out in the real world and we thought we’d give you a bit of a report from the field, a little bit about what we’re seeing in this space and located in some larger context.
So, look my work, having grown up as a patent lawyer, started out at Pennie & Edmonds work for Judge Rich have a book on patent law with Judge Newman. It’s taken me in a lot of different areas, including in business and security. And that’s where Tom and I have met in the international business and security space, Tom has really done a lot more international, nation state to nation state work, whereas I’ve done more party to party work. But we all think back as patent lawyers, and we think about Judge Rich and his famous aphorism that the name of the game is a claim. And we see in the real world, something else Judge Rich often used to point out, which is the strategy and the strategy is, every patentee likes to think about her claim, when she’s on offense, like a balloon, she wants to blow the claim up. So it covers the world makes us patent really strong on our offense.
But a patent that’s really strong on offense is often very weak on defense. And of course, the opposite is true as well. A patent that is laser like focused with its claim on a particular embodiment only is much more likely to avoid the prior art and survive various 112 issues at the same time likely to make it easy for the alleged infringer to avoid infringement.
And so I think in these debates about Arthrex and cases like Arthrex, you can get into a lot of nitty gritty of constitutional con law. Sorry, nitty gritty, structural constitutional law. But I think instead, it may help to ask what are the interests at stake? What are the mechanisms? What are people really concerned about? And this slide is just designed to help people notice that there are really two things happening as you move across the slides. One is you’ve got increasing political independence. And the other is you’ve got an increasing mix of issues. And I think that while the structural constitutional law debates that underlie cases like Arthrex are interesting, from the party’s perspective, it’s really much more about the issues and the business impact. So what do I mean by that? Well, what I mean is, if you’re only arguing over patent validity, or you’re only arguing over anti-competitive effect, it’s quite easy to be pretty hyperbolic for the parties on both sides.
But when patent validity, patent infringement, remedy and anti-competitive effect when all four of those issues are on the table at the same time. Each side of the V is faced with this Judge Rich tension about strong and weak. Each side has her own selfish incentive to be moderate or modest and the way she presents her arguments and the way she builds her record. Similarly, the adjudicators or the terminators, the people making the decisions, whether they’re commissioners or hearing officers or administrative law judges or secretaries of commerce, or their designees, these determinators or adjudicators, we all as parties are more likely to have faith in their determination or adjudication, if the determination or adjudication is not hyperbolic, if it is grounded in the record, and if its reasoning is articulated.
And what you can see in the slide is, there are straight forward, ordinary incentives for the parties when arguing and the determinators when determining to make very different outcomes before these different bodies. It’s not because you suddenly become a rocket scientist, or a really honest or good person when you inhabit one of these domains. But it is that your incentives are very different, when you find yourself in these different domains. So what are we noticing, what we are noticing is that what actual private parties can be doing is pursuing a range of remedies outside of the PTO, including the use of alternative dispute resolution techniques like mediation and arbitration.
And I’ve done a lot of work in this space both as, or I should say, we at strategies have done a lot of work in this space, as tribunal designated neutrals or party designated neutrals and both the Federal Circuit and the PTO have signaled some interest in this. So what does this all have to do with Arthrex? If you’re upset about Arthrex, or you’re licking your chops delighted at the outcome of Arthrex, either way, your outcome is more likely to survive and be robust, if it is articulated in its reasoning, and grounded in the record, and the current state of affairs inside the PTO at least it looks post-Arthrex is not likely going to give you that.
So these alternative techniques are more likely going to give you that, that will be more useful to you tomorrow, and a few years from tomorrow. So let me just wrap up there and invite follow-up for more policy discussions or more practical discussions as folks prefer. Thanks. I’m sorry, Bridget, I think you may be muted.
Bridget Smith: I am, thank you. So, Ron, let’s go with you next. Are you all set? You’re muted too.
Ron Katznelson: This is Ron, you’ve talked to Rob or Ron.
Bridget Smith: Ron, it was Ron Katznelson, are you?
Ron Katznelson: Yeah, I’m okay. So I just want to take a few moments to describe what I’ve been looking at, particularly because I’ve been involved in studying some of the regulations of the PTAB as part of our comments to the PTO on institution, then some real in-depth studies on regulation and the history of the regulation for institutions. I’m going to focus on the issue of institution. And I’m struck by the fact that the PTO’s guidance says nothing about institution.
The decision to institute is something the PTO guidance ignored as a matter for the Principal Officer to make, is if that is chump change. The reality is that the decisions to institute is for the Director to make by statute; it is the director to start with who is a Principal Officer. And there is a rule that delegates that authority. But the decision to institute is just as serious as a final written decision. It’s almost as if you’re canceling the patent because the decision to institute effects patentees acquire title, it undermines property rights and it disrupts investment-backed, settled expectations, triggers substantial expenses for the parties, all of which are adverse actions that can only be imposed by Principal Officers. That’s the holding, frankly, of prior decisions about the distinction between a Principal Officer and an Inferior Officer.
The point is that even the delegation regulation that is now on the books is essentially repealed in as much as it does not address the fact that delegation is subject to the Director’s review. The actual regulations themselves, the regulation in Sections 37 CFR 42.108 and 208 for institution, speak solely of the Board, the Board’s exclusive authority to deny, Board exclusive authority to decide whether the information presented demonstrates the likelihood of success, and so on. No mention of any subordination to additional review authority of the Director. So we have regulations on the book now for institution that are inoperable; the question is, can you run a process where you have no regulations for institution and where Congress says that regulations shall be promulgated for that process?
Overarching issue for me has three points to it: one, the Director delegated authority to the Board, regardless of Arthrex is probably suspended now; regardsless of Arthrex, you have an agency that has no Principal Officer as a Director. And the statutory provision that the Director should institute is promulgated as a delegation. But delegation doesn’t absolve the person delegating that authority, — it’s not a fire and forget delegation to the Board; it does not remove or shield the Director from responsibility and accountability for the actions of the Board.
This is a non-delegable duty, because a principal is not relieved of liability on the basis that the principal has delegated performance of the duty to another person, whether or not that person is an agent of the principal. So this is a common law principle, we see it in the duty of the Director to protect the parties. That is the duty, that is not delegable, and under Restatement (3rd) of Agency Section 7.06, “a principal required by contract or otherwise by law to protect another cannot avoid liability by delegating performance of the duty whether or not the delegate is an agent.” That’s Restatement (third), Agency, Section 7.06.
So there is no Principal Officer to fill the Director’s statutory institution role. There is no accountable person that assumes the non-delegable liability and responsibility to protect the parties. And so I believe that there is no ability to institute, to actually get a decision to institute, there’s no way that that delegation can happen when there’s a vacancy, the Director must be there to be able to assume the responsibility of every decision to institute or not to institute. Under the new PTO guidance, there is no review of institution decisions even by the person fulfilling “the functions and duties” of the Director. Even a decision to deny institution is a fundamentally final agency action. And it has its weight, just like any other decision by the agency and the decision to institute has its other implications, as I said earlier, so I would not be surprised if parties will now approach upfront the Board and say, you cannot institute, you don’t have delegation, you don’t have the full panoply of the load that comes with delegation. And you don’t have the rules, the regulations that must be in place before you institute or decide to deny institution.
So I see a big pull and big opportunities for patent owners to essentially challenge right up the threshold, prior to the preliminary response for a petition to challenge the ability to institute and to take it under the APA to the court.
Bridget Smith: Very good. And I think that provides a good transition. I want to keep on our clock today. So that was our five minute warm up here. And we’re going to get into some of those issues in greater detail, Ron. So thanks for that overview. Rob Greenspoon, I want to turn to you next, to give you an opportunity to go over your slides as well.
Robert Greenspoon: Yeah, absolutely. And thank you for bringing me on to this panel. This is fantastic. The elephant in the room, everybody is that, as Ron just referred to, there is no director right now. We have this Arthrex decision from the Supreme Court, talking about the centrality and the importance of having a President nominated Senate confirmed Principal Officer performing these roles, whether you view it as being the voice of the agency, or some other philosophical mouthpiece, if you will.
And there is no officer, there is a Vacancies Act, which is a law passed by Congress that’s intended to deal with these transitional times. I won’t go into any of that, that unless we get into that in the question-and-answer session. But as I understand the Vacancies Act, and I’m not an expert in it, the current person performing the functions and duties of the director does not qualify as the so called Acting Director, these are terms of art.
So we have a very unstable situation like it’s called the elephant in the room, and there’s not a single peep about it in any of the Arthrex decisions. I’m sure there’s none in the majority decision. And I think it’s easy to confirm that there’s no peep about that in any of the concurrences or dissents. So, what I intend to do in my brief time, my introductory remarks is go over what did Arthrex say? What was the majorities model for saying that? What did the Patent and Trademark Office just do with its, what they call the board side chat? What are their obligations that the law seems to impose upon them going forward as an administrative agency and the director in this role that he’s now going to perform or she and what are some practical features of the system as it is now evolved before our very eyes, that litigants might be very, very keen on and tuned into.
So let me let me get to my slides. My slides are going to violate the first rule of PowerPoint, which is don’t put too many words on a slide. However, the point of this slide is really to bring in a blob of text from the actual Arthrex decision and demonstrate that they were, what they were doing was modeling the Arthrex decision off of this prior decision called Edmond and Edmond as you see on the screen, it involved a very complex and in some ways, even more complex administrative scheme to adjudicate criminal liability within the Coast Guard, I suppose it’s something like a court martial.
And so Edmonds had to confront this issue. The final result of Edmond is that the Supreme Court approved of their existing Coast Guard model as passing all necessary tests under the appointments clause. So it’s natural that they went to this when they were looking at the patent trial and appeal board. So in the case of Edmonds, would have highlighted here, primarily the bottom is that there was a layer of review of the let’s call it the lower agency tribunal. And that layer of review was vested in an outfit called the Court of Appeals for the armed forces, evidently it was nominated by the President and confirmed by the Senate. So those are Principal Officers, even if the lower tribunal was not. And so this executive tribunal could review those decisions under de novo standard. I’m going to, there we go.
So, today, we reaffirm and apply the rule from Edmond, and then it goes on and the Arthrex text to be clear, the director need not review every decision of the PTAB, what matters is that the director have the discretion to review decisions rendered by APJ’s. So you read that if you just stop right there. You’re going to think to yourself, okay, well, this is where the rubber meets the road is probably going to be something like a discretionary review something like a Cert petition, something like Rule 36 affirmance is the Federal Circuit, if we just stopped reading that right there. So let’s take one more peek at a block of text from the Supreme Court. And the next slide is going to be a block of text from the actual Edmond decision.
So as I titled the slide Edmond itself involved a narrow scope of review. And I won’t read any of the words here, but I’ll just point out that it was – as relevant here, the court of appeals for the armed forces would receive petitions from the accused. I’m imagining this is something like a cert petition, completely discretionary, whether that arm of the agency accepts the petition. And when they do review it sort of a split standard of review, they review issues of law Denovo, which is the most common way, any kind of reviewing body reviews issues of law Denovo, you start from scratch, and they review factual evidence based on the words or something like some competent evidence in the record to establish each element of the offense. So remember this is a criminal or quasi-criminal proceeding. To me that looks like a substantial evidence standard review on the facts, so far, so good.
So stopping right there I thought, well, it seems like we’re just going to get this through way, a layer of review that won’t mean too much to any of the litigants, whether it’s a patent owner or petitioner. And then we got the director’s board side chat last week. And I would love to take a vote of all the participants, how many folks will count them later. But how many folks were surprised that the director’s review in this instance to comply with Arthrex was going to be Denovo on both fact issues and law issues. To me, that’s remarkable. And let’s also combine that with — hold on a second I’m going to — I wish I knew how to — there we go.
All right. I’m going to go ahead a couple of slides. Combine that with what the administrative procedure act says are the obligations of a person in the director’s position. So Denovo review on fact and law. And if you look at 5 U.S. Code Section 557, this is in the Administrative Procedure Act. There are some fairly stern and mandatory obligations imposed upon the director when he or she performs this type of review that director has to give a reasonable opportunity to submit for consideration, any kind of exceptions to the decision of subordinate employees.
And the ruling on each exception must exist in the final determination of the agency, including reasons and basis on all material issues of fact law or discretion. So what we’re talking about here is, if I’m accepting it now on face value, what I’m seeing in the board side chat combined with the background obligations, this is going to be a very intensive or it should be a very intensive intermediate level of appeal between the board and eventually the court of appeals for the Federal Circuit.
So now I’m going to go back a couple of slides. I pass by very quickly. The contrast this with the legislative purpose of not having director review and your original administrative — in the original America Invents Act. Senator Kyle was crystal clear that it was actually a positive and beneficial feature of the system as they perceived it, that there would be only appeal directly to the Federal Circuit. And then if you compare that to a predecessor of the administrative or I’m sorry — I’d get that mixed up all the time. A predecessor to the America Invents Act, The Patent Reform Act of 2007 often believed to be the parent or the grandparent of the eventual act. There was all kinds of talk about the inefficiency of the preexisting two layers of appeal that existed at the time in inter parties reexamination.
So what does this mean where the rubber meets the road? So this is a screen grab I picked up today from Lex Maritima. I just used yesterday as the end date, and I went back exactly one year just to get a number, just see what we’re dealing with. We have 428 final written decisions from the Patent Trial and Appeal Board in the last exactly 12 months as of yesterday. So here is my back of the envelope. And people can debate with me whether these are the right numbers to use that I just picked something to have a starting point. Let’s say each final written decision requires 10 hours of review for a true APA compliant review layer. You’re talking there about 4280 person hours just to catch up with the last year’s final written decisions. If you estimate a thought worker if you will someone on the director staff, focusing attention exclusively on that as that person’s job, let’s say a thousand hours of intense thought work high intensity to assist the director and performing this job.
So by my count, they’re going to have to be at least four or five additional employees brought into the director’s office in particular, with a role solely to conduct these reviews. So let’s — this is my final slide, and these are some practice tips or some thoughts that I would love to open it up to the floor to consider Ron mentioned discretionary denial is so very, very important. Josh mentioned that I’m lead counsel in an APA challenge to the current lack of notice and comment rules on discretionary denial, consider FinTech, and I’m going to assume knowledge and the audience of what FinTech is. I apologize, but I need to finish. So FinTech allows discretionary denial if there is co-pending parallel litigation, and that parallel litigation essentially will finish or complete itself on substantially similar issues before the PTAB can.
So it’s one of the offer we call the off-ramps to the institution decision that can benefit a patent owner. Currently, the competitor for the PTABs progress has always been the 12-month deadline, but I think that 12-month deadline is out the window. I think if we’ve truly have these kinds of reviews that we’re talking about that I’d mentioned in my prior slides, that level of review that level of attention by the intermediate intra agency appellate level is going to push that date very, very far back. So I think that could lead to more discretionary denial opportunities for litigants. And then finally just tracking the exact language of Section 557 of the APA.
This is going to be brand new ground to break new territory for a lot of patent attorneys. We’re going to be titling our document exceptions. We’re going to be titling it exceptions to the ruling of the Patent Trial and Appeal Board in the final written decision date and whatever. Those sides will file their exceptions, whoever loses and well, this is something I hadn’t mentioned yet in the board side chat, there was mentioned that the rehearing, the current conventional re-hearing alternative remains, but there is going to have to be an election. So a litigant in the position of having lost in front of the patent trial and appeal board is going to be forced to choose between the preexisting rehearing process and the director review. And with one tiny exception, there is no going back you either pick one or the other.
So in this instance, because rehearing review is so deferential, lightning has to strike before you win because of your rehearing petition. Denovo review is going to be just two years this table, and that’s the only thing that litigants are going to be attempting to do. So thank you for that. And those are my slides.
Bridget Smith: All right, perfect. So let’s get started with the Q&A session now. So this is kind of where the rubber hits the road. So the first question.
Ron Katznelson: This is Ron. Could I just make one comment — not the first question, but a comment to add to Rob’s point and Section 557. The APA also has sections 554 and 556, which provide separately, because this is a formal adjudication an AIA trial, other procedural protections: it requires that there be opportunities for the parties to understand what “the law asserted” is,. 554(b)(3); it needs to give an interested party opportunity for “consideration of facts and arguments or proposals for adjustment,” 554(c)(1), and allow a party “to submit rebuttal evidence,” 556(d), and that includes rebuttal to any argument.. So the point is that there are other aspects of the APA that permit parties to interject, to be able to respond and to be able to interact with whatever the Director is going to do in this review. It’s just a right under the APA.
Bridget Smith: Okay. So let’s talk about what the PTO has done so far, and how this impacts practitioners. So I’m sure that everybody listening in those. The PTO issued some interim procedures and some Q&As outlining how it intends to. No, I was going to say how it intends to implement the Arthrex decision, but that’s not strictly correct. It’s about how practitioners should take steps to follow up on the Arthrex decision. And they followed up with that with a board side chat. So the first thing I wanted to talk about was whether somebody could just briefly very, very quickly summarize those procedures and then we’ll get into what’s wrong with them and I’ll ask specific questions. So it’s not that it doesn’t become an open narrative. This is just a procedural outline for those who have not had an opportunity to read them yet. Can somebody briefly talk about that? Rob Go ahead.
Robert Greenspoon: Yeah, there is just a way to file a paper on the docket. You designated in a certain way within the 30 days otherwise available for a rehearing request. And when you file that paper on the PTAB docket in your case, you have to simultaneously use a special purpose email address and send the very same documents to the email address. As you mentioned, it’s a process for the litigants. There has been clearly I guess delineated. And as I said, it’s an either or at that moment, you have to make an election or a choice. Is this a conventional re-hearing request back to the same board with its deferential we’re hearing standards, or is this a Denovo review being requested of the director in his role as a Principal Officer.
Bridget Smith: Perfect. And just so our participants are clear, can aggrieves petitioners or patent owners take advantage of these interim procedures, Rob?
Robert Greenspoon: I’m at a disadvantage. I wasn’t able to see the webinar. I tried to find a video of it, but I couldn’t.
Bridget Smith: Okay. Yeah. That’s my understanding of it as well. So let’s get into the details of what we need to discuss today. So these interim procedures and the Q&A’s talk about what parties need to do to invoke director review. And just to be clear, this is not for just people agreed with the system in general. It’s for actual impacted parties though. Q&A’s make that pretty clear. Now it struck me that they leave out entirely what the director review entails behind the curtain. Okay. So that’s where a lot of open questions remain. During the board side…
Scott Kief: Who is the director to review?
Bridget Smith: Right. So that’s a perfect segue during the board side chat, Mr. Hirshfeld, the commissioner for patents who is performing the function and duties of the director said, and I’m quoting, I have every intent to make decisions as the director for this time. And I will not be deferring or waiting until there is a political appointee. Ron, as you mentioned, Mr. Hirshfeld is not the director. And the PTO does not style his title as the acting director. He was not appointed by the President or confirmed by the Senate. He is the commissioner for patents. Does his role in director re-hearings raise constitutional concerns? Let’s start with Ron. What do you think?
Ron Katznelson: Well, I’m not a constitutional expert, but I just read the Arthrex decision and it is saying that the person who was appointed by the president confirmed by the Senate is the one for whom they’re building this interstitial review process. So here comes the PTO having no party, no person in that role saying, go ahead, send us your review and we will do it, notwithstanding what Arthrex has said. Arthrex ironically had totally ignored the provisions of the vacancies act. It did recognize an acting Director as a role, but it may have just assumed that he’s got all the authority of a Principal Officer.
I just don’t think that’s the case, given the Vacancies Act. So I think its fertile ground for challenges as fact, nobody at the PTO is able to do anything now without new regulations. In my view on institution is the PTO’s only action that is consistent with law and Arthrex is to say under the general authority of the PTO in this case, the Director suspending decisions on institution. We’re just not able to institute. We don’t have the regulation for it. We don’t have the authorities for it. You can go to Article III courts and get your challenges there. That’s what it used to be before 2012, we’re back to 2012. We will come out of it when we have a Director.
Bridget Smith: Okay, perfect. Let’s see here. So this is plainly, so the interim guide or the interim procedures instituted by the PTO, this is plainly an impossible workload for a person who is already running an agency with thousands of employees and has far more to do than just review board decisions, some work will need to be delegated, but that itself seems to run afoul of Arthrex again. What will the PTO need to consider when delegating work? Let’s start with Rob. I’m going to put you on the spot, Ron, if you want to chime in, because I know you have a lot of opinions on this, but let go ahead, Rob why don’t you take the lead?
Robert Greenspoon: Yeah, I think on one level that’s the least problematic aspect of the practical considerations going forward, because it’s commonplace for high ranking officers to have a staff. They do the lead work if you will. Anyone who has been a judicial law clerk, I was for a district court judge understands that the final signature goes on to the final decision and that’s the official act of the person signing the document. So I don’t think that’s too problematic except what I alluded to in my slides, which is we don’t have that staff right now.
And then in the U.S. essay, if they backgrounder on the U.S. and our webpage, I think there’s a link to it in the chat. There was discussion, which I found very insightful and no expert in this, but it appears that the person who are participating in the decision with the director possibly ought to be made known to the parties that’s just pure due process. And it also facilitates important background due process rights such as recusal. So I’d be interested to hear judge keeps point of view professor Kief on the — what do you think of having let’s say line workers, do the initial work for — let’s say 400 to 500 decisions per year under the signature of a director?
Scott Kief: Look, I think these are really challenging issues, and the United States government is a very big thing and it has a very big administrative arm that arm has many, many, many different fingers, and they’re all over the place and it would all go away if the specific things that are being discussed here were being followed as precisely as the speakers wish they were. So you’re left with some choices, imagine or wish that it all goes away, or deal with it. And I think what you’re describing, what we’re all observing resembles very much what Charles Dickens wrote about when he wrote A Poor Man’s Tale of a Patent, and he described the then patent office, the circumlocution office, and everything that’s being described here is maddening because it’s quite crazy-making.
But that’s I think upsetting and confusing, but it was foreseen. This was discussed and debated before the 2011 statute. And it is what has happened because the statute has been implemented. And regardless of your politics, nobody really wants to totally shut down the U.S. government. They wanted to function as well as it can, and then be mindful about which parts of the government we choose to use to do different functions, recognizing the strengths and weaknesses. So I’m very sympathetic to the question asked in the Q&A about the bottom line, how do IP owners and IP users cope with IP. And I think the answer is right now using the PTAB is it going to be a very process heavy system.
And for those whose strategic interests are further by that, they will use it. And for those who are frustrated by that, they will fight as best as they can. And some will be won and some will be lost, but you see the same thing in other administrative disabilities settings for example, whether it’s social security, disability, or veteran’s disability, I mean, you’ll find that vast range, you’ll find human beings so disabled. They cannot in fact get themselves before the hearing officer declared by the hearing officer to be fit and able, and you’ll see human beings come off the golf course and fly in on their Learjet and be declared full disabled. You’ll see both extremes and the administrative system is designed not to make those decisions perfectly. It’s designed to cope with the vast set of those decisions.
So let’s talk about sets. The Patent Office is about $3.5 billion operation, it’s a big operation, but it makes only a relatively small amount of its budget. It is self-funded. It makes only a small amount of its budget on patent application feeds. So for those who are going to get patents, you’re not the customer, the patent office is most focused on the way any business is most focused on its marginal revenue dollar. The marginal revenue dollar from the patent office these days comes mostly from challenging patents before the PTAB or from out year maintenance fees, but not from application feeds. So in effect, we’ve got a little bit of robbing Peter to Paul going on, where in effect seeing the patent office trade out year maintenance fee income for short term PTAB procedure income, that may or may not be a prudent decision for the office or for the system, but it is descriptively what is happening.
I think, I’m a big fan of follow the big money and follow the big picture, not just down in the weeds. We can talk down in the weeds. Again, I’m a fan of footnotes and thousand-page books. I write them and I fall asleep on them. I’m sure you do too, but I don’t think that’s really going to be driving the business outcomes here. So I think in direct answer to Rob’s question law clerks usually do not make their names known to the parties. Neither do any other of the court assistants and same with most agency staff. So it’s going to be a bit of an uphill battle to completely shift the adjudicative process or the administrative process to meet the kind of finally tailored, I disagree with your approach kind of arguing. We all want to speak disagreement. That’s natural, it’s natural for us as lawyers. It’s natural for us as citizens. But it is unnatural to see these systems meet that need. They’re not designed to meet that need. They’re designed to meet a different need.
Bridget Smith: All right, great. So let’s move on to another topic that came up at the board side chat. So as you know, 35 USC 316(a) I think requires that a “final determination be issued within one year from the date of institution extendable for good cause for six months.” And the actual statutory language is “final determination.” During the Board side chat, the PTO expressed no cause for concern in meeting this deadline. And that appears to be because the PTO is interpreting the statutory language final determination to mean “final written decision.” Does the PTO have a basis for that interpretation? Ron, do you want to take that?
Ron Katznelson: Well, first I want to make sure that it’s clear that the statutory requirement is not an absolute requirement, it is essentially a requirement that the regulations provide for a year and 18 months. I do see a difference between the statute requiring a promulgation of regulation that has particular features, than an actual absolute statement in the statue that the Office or the Director shall terminate proceeding within 18 months. These are different obligations. And so if you radically — if the agency is not meeting its requirement, (I’m not even getting into the distinction between a final written decision and the final determination, because I think that’s a cosmetic difference), I still have questions, whether there is any cause of action for a private party on a matter in which the regulation the PTO has to promulgate were not complied with. The statute doesn’t actually say the proceeding shell be concluded within 18 months or a year. So I’m somewhat concerned that this may have been over played in terms of the legal obligation of the PTO.
Bridget Smith: Okay. Very good. Let’s see here. For now, we only have procedures for these director re-hearings available on the PTO webpages to PTO webpages. Professor, let’s start with you. Can the PTO use a website to promulgate directory hearings, and if not, what is the legal framework that it should be using instead? Is there anything that they could have done at this stage? For example, could we have used the pop framework already in place or something else? And Ron I’d like you to chime in after professor Kief?
Scott Kief: Sure. Again, there are a lot of frameworks, and there are a lot of options to make the stuff more accessible including a large package of executive orders and inter agency procedures, convened around the use of alternative dispute resolution. So you just go to adr.gov. There is an inter-agency working group on the executive order for agencies like this to use ADR techniques, alternative dispute resolution techniques. So there are a lot of agencies that kept commercial litigation type proceedings going through COVID. There are a lot that have used those kinds of proceedings to cope with the lack of a person in power with full authority regardless of how you want to think about that person. So there are a set of techniques and I would just encourage the parties to ask for them as well as the agencies to use them. And the agencies are encouraged by themselves by their own internal rules, their own internal executive orders and the inner agency, adr.gov.
Bridget Smith: Ron, do you want to?
Ron Katznelson: Yeah. Normally there are proceedings, there are channels for an agency to Institute to promulgate emergency regulations very quickly as an interim regulation that would solve a problem like this, because it wouldn’t require the full notice and comment process. And the period of 60 days and other notifications to Congress. So there are means of getting regulations right away in the books, and then allowing in parallel to promulgate final rules, but those are regulations. And those regulations can be promulgated only by a Director that has been appointed and confirmed by the Senate.
An acting Director cannot, he can go through the process of promulgation and set the process, but cannot actually enforce them. So in a way, the PTO to some degree is in a pickle. I think they chose the least responsible path to regulation through these chats and through these procedures, even the minimal requirement to bind the public under 5 USC, 552(a)(1) hasn’t been met. I don’t think they’ve published anything in the Federal Register about these procedures. So they can’t really bind the public. And neither can POPs do the same thing. So there is a fundamental vacuum in the regulatory process, particularly where the statute provides for all of these elements related to what the case here requires, “shall” promulgate regulations. So I think they’re missing the ball here frankly. And I can see various challenges,. And now I’m not sure that there is a way to promulgate without a Director, confirmed by the Senate.
Robert Greenspoon: Yeah. Bridget, would you mind if I said a few words following up on Ron?
Bridget Smith: Yeah.
Robert Greenspoon: Yeah, I fear that this is an unforced error by the agency. And I personally don’t understand why the U.S. PTO is so culturally averse to going through the regulatory process that every other agency in the country goes through, as if they were breathing. Everything’s very hard for the U.S. PTO. Sometimes they do right. Sometimes they drag their feet and eventually do it. And sometimes they just choose not to do it. And Ron is absolutely right. I mean, the federal register is there. It’s published on every Government Day, I think the federal register is there to receive interim regulations, which have their own sort of umbrella of how they apply.
But the interim regulations don’t have to be promulgated with anyone’s consultation. That could be just what the director did in the board site chat. So I believe it might set up some time triggers for formal regulations to occur, but that should occur anyway. Because section 316 A4, puts a requirement on the Patent and Trademark Office to promulgate regulations that “govern” or prescribe regulations “govern” these AIA trials. So for all those reasons, I would hope that they can walk back the unforced error and maybe in the next week or two, we’ll have a correct administrative procedure act treatment of what has to be done from before.
Bridget Smith: Okay, perfect. So let’s see here. Does Arthrex create additional conflicts with existing regulations? For example, some of these regulations grant the board exclusive power to make certain decisions as the institution and the director by statute has discretion whether to institute. Is he not permitted to delegate these discretionary issues to the board for institution decisions? Ron, we’ll start with you.
Ron Katznelson: Well, I think the delegation of authority to institute is one thing. There’s no delegation of rulemaking authority. Okay. That cannot be done, even if the Director wanted to; the board, by statute doesn’t have the power to promulgate regulations. So what the Director can do is regulate, promulgate regulation, and delegate authority to operate under those regulations, or even authority to exercise the discretion as specified in regulation, to the Board. So I think the PTO back in 2012, throughout the years have conflated delegated authority to decide cases with delegated authority that doesn’t exist for promulgating regulations. So I think that answers your question. I think the Board has no such authority.
Bridget Smith: Perfect. Does anybody want to piggyback on that one or otherwise, I can move to the next question, which is one that Josh raised this morning when we were chatting, and I think others may have the same question. But before we move on, does anybody want to chime in? It sounds like no. So that’s perfect. Can the director through procedures implement an ITC like proceeding? And maybe Professor Kief, this might be a good one for you to start with. You’re on mute?
Scott Kief: Well.
Bridget Smith: There you go.
Scott Kief: Look, I’m on record having written a fair amount before, during and after the implementation of the AIA itself, that if what society wanted to accomplish was a fast, full and fair adjudication of let’s call it patents of questionable validity. You could engineer a set of proceedings that would be reasonably calculated. Engineers, systems engineers are always aware of the strengths and weaknesses of different approaches. You could engineer a system that would maximize strengths or minimize weaknesses or you could kind of do the opposite and we have kind of done the opposite with the AIA. It is always hard to argue in the abstract about either validity or infringement, because they are so keenly relevant to each other in opposite ways.
And what ITC like proceedings provide, just like District Court, article three, patent infringement or declaratory judgment litigation is a set of parties with a set of interests and a set of issues that provide incentives for the parties to put facts and arguments on the table that allow the adjudicators to make adjudications grounded in the record, but you get the opposite of that, when you do it inside an agency like the PTO, which has pretty limited capacity. It’s only supposed to assess validity. So you can’t really ask it to assess all of that other stuff. So I do think the ITC 337 docket is much faster than commercial court litigation. It’s not radically less expensive. It’s about the same overall cost.
But what do parties want when they go into adjudication? Do they want a quick result if that’s what you want, by six-sided die and roll it or a deck of cards and pick a card? If you want an accurate result reasonably well grounded in the record, then you need evidentiary rules and procedure rules and some process to follow, including all the things each of us has been discussing as an authentic interest of let’s call it an advocate or a litigant. What do advocates and litigants want, they want to be heard, they want their arguments to be responded to on the merits. They want the responses to be grounded in the record. Well, that stuff costs something, you have to make a record and you have to get the adversarial proceeding into play so that facts and arguments can be mustered on both sides.
So I do think something fast like the ITC 337 docket is to both IP owners and implementers a very attractive option. And that’s why you see it increasing in popularity. I think that the effort to go to the PTAB there is an effort, generally, that is not leading in the same direction. Now, that doesn’t mean that the people who go there are bad people. And it certainly doesn’t mean that the lawyers who litigate there don’t bring immense value to the table. They do. People like Rob and Bridget are expert at this very important tool. But their expertise is not limited to that tool, they can use the same human capital that they have to help their clients, help their clients in a range of proceedings outside of the PTAB. So I think that that the PTAB has become a big thing.
But again, there are for both sides of the commercial battlefield alternatives and alternatives like the 337 docket or other fast commercial dockets or fast commercial alternative dispute resolution techniques like arbitration or mediation. I think those are going to be more satisfying for most of the business interests that play.
Bridget Smith: Okay, that’s great. And see, we have about 20 minutes left. And so, if people have some more questions, be sure and get them in. I’ll try and read them, but I want to get into some real specific practice type questions now. So my first one is this and I asked it only because I get this question so often and I’m sure that many on the line have this question today. Okay. My case is over. But the judges who decided that were unconstitutionally appointed. Now, just to be clear, the case is over, I lost my claims. There’s no pending appeals right now the decision is, as they call it final, is there anything I can do now that I know that these judges were unconstitutionally appointed? Or is it too late? And I don’t know if anybody wants has a compelling desire to take that because I’m certain that more than one person here today has that question.
Scott Kief: Well, let me just ask when you say unconstitutionally appointed? How do you mean?
Bridget Smith: I’m sorry. So let’s say the judges who decided it were subject to this defect. Right. And whether that be that they are Principal Officers who — that were not appointed by the President confirmed by the Senate, or they’re inferior officers operating outside the scope of that have too much power for an inferior officer, either do you think? Okay.
Scott Kief: Yeah, I think what we keep observing in the string of Supreme Court cases, is a general reticence by the court to give comfort to those asking that question. In anything resembling what any of us as human beings would conclude as comforting. I mean, I can, I’m more than happy to give you a very, very long and drawn out structural constitutional law, discussion, but I think it will be possibly, technically correct, although just get a bunch of academics in a room and everyone will tell you, everyone else is wrong, except the speaker who is right until the next speaker speaks. But even if you find that satisfying, it won’t be — there won’t be to use modern parlance agreeance around that.
There’ll be disagreement, the agreement will be observable in the rearview mirror. And what we observe in the rearview mirror is the Supreme Court finds the system to be allowed, passive voice. It is found to be allowed. It is determined to be okay. It still exists. So shutting the system down on constitutional law grounds for I just think, it hurts your brain if you’re a very detail-oriented person. I’m sorry about that. But the Supreme Court is not going to help you with that. Go out, hit a tennis ball, golf ball, go for a run, do something else. But don’t go to court that’s not going to solve that problem.
Ron Katznelson: Can I? This is Ron. I think there are two aspects to it. If you note, the Federal Circuit has asked parties who are in proceedings within the Federal Circuit to provide briefing on this very issue about what should their situation within the Federal Circuit proceeding be and how the parties would move forward. What to me is important is the fact that they have selected only those parties who have raised due process or the Arthrex type issue in the Federal Circuit. They have never — they have not approached or never asked anybody whose case was already decided to do so. And so in some respects, I think they’ve pre-selected for those who have not waived the argument. So I think their element of waiver is probably going to be a distinguishing line. So when you said, well, the whole bunch of people whose cases have been already decided that were decided by APJ’s, who had not had a supervisory expectation, therse cases may have been a waived.
And by the way, it’s not enough that now you can find one that has had ne review. It’s important that there be one at the time the decision of the APJ’s was made to actually be subject to supervision and know that their decision is being looked over. And so the argument could be there. The question was whether you’re expected to be a clairvoyant of Arthrex and know that now the issue is where there’s no review. Nobody earlier said, I want to see your Director’s review. And the Supreme Court here didn’t actually rule that the APJ’s are now unconstitutional. They just said that the review has to be in there for those decisions to be constitutional. So to me, it’s kind of question of a waiver. Is there anything in the color of the argument that this decision was not done under supervisory review of a Principal Officer? Some parties may find that they actually made that case. And I would argue that they may not have waived it, and maybe they’ll be able to resurrect it. As Scott Kief, says it may not be a satisfactory outcome, but that can — attorneys probably have to protect their interest or the interest of their clients and raise it.
Bridget Smith: That’s a pretty — that’s a good comprehensive answer. There’s got to be a large. Yeah. I always hate to say it, but the people who failed to preserve this issue, I understand you’re not clairvoyant. But sometimes there’s not much that can be done, and especially in these in civil cases. And so, it’s hard to be the bearer of bad news. But sometimes you have to be the bearer of bad news. That said, Josh, had — in our chat window raised a very good point. If you are not — if you are still in the pipeline, and my question was directed for people who are now outside the pipeline, if you have an active case, that is still somewhere in the pipeline, file a review request regardless. And then, you’ve now put that issue in play, and then we’ll sort it out later wait for it, Senate to confirm a director. Just, talk to your attorney for people who are in the pipeline and ask them what should be done, because there are — there’s a lot of uncertainty in this right now. And I think all the panelists will certainly agree with me on that.
Let’s talk about that. Now, this segues into a question that I did actually receive via the chat panel. Is there a procedure to petition the director for review of patents invalidated? During IPR you’ve received a final written decision of unpatentability. The due date for filing a notice of appeal has expired. My recollection is that the Q&A’s or the interim procedure does actually discuss this, does anybody recall it off the top of his head and want to feel this?
Scott Kief: Right. So in that finite situation, so the 30-day rehearing period has expired. I think it’s what the — I can’t remember, 90 or 120-day notice of appeal period has not expired. There can’t be that many in that basket. In those situations. If you want to advantage yourself of this new process, you make a simultaneous. Well, you make some sort of request to waive the 30-day deadline inside the agency. My sense is they’re going to grant all those waiver requests, because it’s just not going to be materially different for them.
Bridget Smith: I think that’s right. Thanks. Thanks for that. And again, if it’s — if you have — if you’re in this situation, we’re in the pipeline, talk to your attorney as soon as possible, get it straightened out. And maybe there’s something to be hunt that can be done to help you. Let’s talk next about remands. Because that I view, there’s two types of buckets. So there are a group of cases just so everybody knows of remands that have been held in abeyance pending Arthrex. I think it’s like 100 some odd cases.
And during the board side chat, I think somebody asked, so what’s going on with the cases being held in abeyance? And the PTO said, we’ll figure it out later, we are still going to be held in abeyance as far as I know. And so we should be receiving some word on that within the next few weeks, I’d imagine.
Scott Kief: Well, by enlarge, they’re also subject to a government cert petition. So there’s this–
Bridget Smith: Yeah, yeah.
Scott Kief: What we might call a class action cert petition that the government filed as a sort of parallel cert petition. So they’re actually even wrapped up in Supreme Court process right now, by enlarge. They were GVR. In other words, there was a grant, vacate, remand order on the class action cert petitions.
Bridget Smith: So if you are in that very small group of people, you’ll be hearing some more about that soon, but just to let you know there is no official PTO word on that, and in the future cases will be remanded. Right. So these are the cases that are not in that small 100 group. But let’s say you appeal to the Federal Circuit. And they remain the case for future — further proceedings. Okay. So this is actually I’m expecting this a few months in the future. So we — you have now had your case, you’ve asked for a director review, the director review is denied. It goes up to the Federal Circuit, you perhaps win your case is remanded for further findings, the PTO issues, another final written decision. Will that other final written decision be subject to director review? Any thoughts panelists?
Scott Kief: I think it has to be.
Bridget Smith: I think it has to be, yeah.
Scott Kief: Yeah, in the — they haven’t written about this in their board side chat. But they read it — wrote about something that’s quite analogous, which is, if there’s — if you elect to the rehearing pathway, because you just haven’t thought it through very well, but you elect the rehearing pathway instead of director review. And lightning does strike and you get rehearing that overturns the outcome, then that sort of refreshes the opportunity for director review. So that’s all intra agency. So if there’s a remand from the Federal Circuit with a brand new final written decision of the board, I think it just has to go through the same director, meat grinder.
Robert Greenspoon: Well, but let’s also just, I mean, this is where strategy matters. And you can fight hard and win your fight and lose your war. The patent office director has, for decades under political administrations of both political parties, occasionally, simply taking the position that it in effect gets to decide. And when that happens, I think it’s going to be pretty unsatisfying to most of the process-oriented concerns expressed today. But I think, almost explicitly consistent with the text of recent Supreme Court cases including Arthrex. So I think it’ll be in effect, an easy poison pill. And that push hitting the table harder, banging on the door, may just get the know, to be louder, not and faster, and firmer, but I’m not sure it’ll change the note.
Ron Katznelson: This is Ron, I want to take issue with some aspect of that, from the perspective of a new decision, new realities, totally uncertain conditions. I agree with Professor Kief that a patent owner should consider broader options other than rehearing as a negotiating strategy, but to strengthen one’s negotiation position, one should shift risks onto petitioners and avoid the risk of waiving or leaving on the table certain challenges that could have been and should have been made. I’m focusing on the institution. I would err on the side of demanding something and getting it in now, then being sorry later that I haven’t preserved a particular argument or request. So if I were a patent owner just dragged into IPR. I would ask for a Director’s review even though the PTO has made no statement about petitions to review institution decisions. I would ask that the institution decision be reviewed, not just the final written decision; I would actually prophylactically expect or file right after the petition, in the patent owner’s preliminary response. I would say that the Board has no authority to institute and I would repeat that argument until the PTO has ability to have the Director review of the institution. The PTO has not acknowledged that institution decisions are going to be reviewed like the FWD. So there’s a vacuum here that I wouldn’t just leave on the table. I would just file.
Scott Kief: Yeah, so if I may the prudence that Ron is laying out, coheres well, if you’re thinking about two options, make your best shot as kind of a bad one. And then, lose quickly versus, make a better shot, make a really well tailored argument. Yes, I agree with you. All things considered. I’d rather if I have the time and money make a better argument than a weaker argument. But I think a broader strategy is worth keeping in mind in addition and a broader strategy asks us to think about where and when we make our argument, not just how well we make it. So yes, all things being equal. If one is going to make an argument, one should make a complete argument. But sometimes the better path is, go to another venue, not stay in this venue, making more arguments that this venue is teaching you. It will eat you with.
Ron Katznelson: Yeah, I agree with that. In principle, I’m just saying that the ultimate decision makers may not be the ones at the PTAB who are going to say no.
Scott Kief: Okay.
Ron Katznelson: They will say no, but then you reserve that issue to raise with a different tribunal. Because the PTAB may have no authority to say no, or they don’t have authority to rule on whether your argument is correct or not. And that’s typically Arthrex in general, raising those issues at the PTAB wasn’t going to help much.
Scott Kief: It is — it’s also very typical of the circumlocution office.
Bridget Smith: Okay, we have about three minutes left, and I know that Josh wants to make some closing remarks. Before we go. I just want to briefly I’m going to commandeer as my god given right as a moderator here. The question on everybody’s mind is, a party believes that the panel and its final written decision has not followed the law, or got the facts wrong, or potentially both. What should they do? Okay, so, just so that everybody is clear there, for better or for worse, we do have interim procedures on a website. Okay. And it is of utmost importance that you comply with those for now, I don’t want you to think because we’ve suggested here that there are problems with those that you can just ignore those problems and proceed as you want to proceed.
Talk to your attorney, if you are in that pipeline, if you are impacted by a final written decision, and discuss what is your best path to success, whether that be director rehearing, panel rehearing, proceeding directly to appeal because there are different concerns applied to different groups. Okay, and maybe proceeding directly to appeal is your best option, and your attorney can help make that decision with you. So if you’re impacted, talk to your attorney and get that sorted out. It’s very important that you do so and you do so quickly. Josh, I’m going to turn it over to you to make some closing remarks.
Josh Malone: Thank you, that went really fast as quick at the tip of the iceberg, and that’s okay. Just one comment to kind of try to synthesize this. And the audience may sense this. We like to tilt at windmills at U.S. inventor and certainly I’ve tilted my share. I took one down though. But at the same time, I — either we’re going to have a patent invalidation program that is fair and predictable. And we’re going to make it work. And this is going to be the trigger that makes it work. And or we’re just not going to participate. I mean, that’s where we’re at here. So the 2012, through 2021, implementation of the American Invents Act has been a train wreck. I mean, it’s just, this is just another in a series. And if you look at the work that Ron has done, that we’ve posted on U.S. inventor, we’re not through it yet. And we’re not just sour grapes. We don’t like the outcomes.
We don’t know what to do. We have no idea how to get our patents and to build a business or to compete in the marketplace. Because we don’t know what the patent office is going to do. The moment we try to use that patent, and this is just another area where it’s just kind of like, what’s going on here. Who’s going to review these and what are the procedures and there’s yet another website post on what the procedure is, and we’re going to — I think we’re going to see changes. I think we see them developing. I don’t know what’s going to happen as a result of the vacancy at the patent office, if they’re able to find a way forward or if there’s going to be a whole another controversy over who runs the agency now.
But anyway, we’re here — we want to do better at advocating for truly fair and balanced procedures. We don’t want vague and obvious and invalid patents. We don’t want to go out and harass people with patents that we don’t deserve or for an invention we didn’t come up with. We want to participate in the system. And we can’t do that today. And so if Arthrex is the trigger, and the justice is didn’t foresee the difficulties of implementing their remedy, then so be it. We want to be a resource for you guys. So join U.S. inventor, we’re going to continue to provide resources and help with advocates. There’s a lot of inventors and entrepreneurs and principals that are stuck in this — these situations. So reach out and join U.S. inventor and we’ll help you get those resources.
And just to quickly connect with me personally as well as another opportunity. Thank you all for this very insightful. I don’t feel like we solved it. And I guess that’s to be expected. But we will — we’ll do this again someday. Thanks for all of your time, everyone. Thanks for joining.
Scott Kief: Thank you very much to Josh and Bridget for convening us and organizing us and to Ron and Rob for providing such thoughtful ideas.
Ron Katznelson: Likewise.
Josh Malone: All right, next time.