Welcome to Skilled in the Art. I’m Law.com IP reporter Scott Graham. Today I ask why big companies that benefit from IPRs are so quick to bite the PTAB that feeds them. Plus some quick reactions to the pending retirement of patent reform advocate Darrell Issa. Email me your thoughts on these issues or others at email@example.com. Or find me on Twitter at @scottkgraham.
➤➤ Want to receive Skilled in the Art as an email? Here’s the sign-up.
Apple: IPRs Are the Best—Except When They’re Biased, Prejudiced and Violate Due Process
I begin today with a question: Why is Apple writing an amicus curiae brief for Oil States Energy Services?
Not literally, of course. I’m talking about Apple’s motion that accuses three PTAB judges of being seduced by improper ex parte contacts. To recap the allegations, the former CEO of IPR opponent Voip-Pal.Com wrote to PTAB Chief Judge David Ruschke, PTO acting director Joseph Matal and Commerce Secretary Wilbur Ross to complain about the fairness of the IPR process. The PTAB substituted three new APJs onto the panel, without disclosing the communications to Apple. Those new judges then analyzed the patent differently than the original judges, causing Apple to lose the IPR.
Apple now says the new judges were forced to operate “under the shadow of alleged bias,” and that “every additional letter from Voip-Pal fostered and nurtured that bias, compounding the error, the prejudice, and the due process violation.”
In other words, it’s precisely the kind of administrative-law-run-wild scenario that Oil States warns about in its pending constitutional challenge at the Supreme Court. True, Justices Kennedy and Alito sounded lukewarm about the challenge at oral argument last November. But now Apple, which arguably benefits more from IPRs than any other company in the world, is turning up the temperature.
Back in October, Apple did file an actual amicus curiae brief with the Supreme Court in Oil States. Here’s what it said then:
“The wisdom of Congress’s choice to vest review of patent examiners’ patentability determinations in a panel of administrative PTAB judges is borne out by the process’s tendency to produce well-reasoned and correct decisions. … PTAB judges, like their counterparts in administrative judicial positions in other agencies, must be qualified and specialized, and the process over which they preside is robust and designed to produce quality results in which the patent system can be confident.”
Supreme Court to Weigh Worldwide Patent Damages
The tech industry wants to discuss the apportionment of lost profits at the U.S. Supreme Court. It turns out they’re going to have to talk about worldwide damages for lost profits first.
The Supreme Court granted cert today in WesternGeco v. ION Geophysical, and as I write here, it’s going to open a can of worms that tech and other accused infringers are going to prefer was kept shut.
Silver lining for tech: Maybe this ups the chances of the high court granting cert in Mentor Graphics, the apportionment case, and tackling the two damages issues together.
The Federal Circuit and the Element of Surprise
Interesting Twitter discussion this week about the Federal Circuit’s policy of keeping judges’ identities under wraps till the morning of oral argument.
It’s remarkable how much variation there is among the circuits on this. Across town, the D.C. Circuit makes panel composition public 30 days ahead of argument. The Ninth Circuit gives five days’ notice. The Fourth and Seventh circuits take the same approach as CAFC: They keep you guessing until they bang the gavel.
I’ve seen some shrewd lawyers, even with only an hour to prepare, still manage to home in on precedents from the same Federal Circuit judges sitting on their panels. It’s a careful balancing act—if too heavy handed, the reaction from the bench is almost always negative. It’s almost always a mistake to say, “As your honor said in …” Better to say, “As the court said in …” even if you’re looking right at the judge who said it.
That’s my two cents anyway. If any of you have had a different experience I’d love to hear about it. Email me.
Patent Reform Leadership Retiring En Masse
Darrell Issa is retiring. As chairman of the House Judiciary’s subcommittee on courts, intellectual property and the internet, he has been one of Congress’ most vocal proponents of patent reform.
Suffice to say the patent owner community isn’t shedding a lot of tears.
“We are very happy Darrel Issa is leaving Congress,” U.S. Inventor Director Adrian Pelkus said in a statement emailed just hours after the congressman’s announcement. “This may mean an end to legislation damaging to inventors and startups.”
Former PTO Director Q. Todd Dickinson told IP Watchdog that Issa’s legacy is more nuanced. An inventor himself, Issa should be remembered for initiating the legislation that led to the judicial patent pilot program, says Dickinson, who’s now with Polsinelli. “Losing someone who knew the patent system personally will be a loss,” Dickinson told the blog.
Gene Quinn and Steve Brachmann speculate in the same article that subcommittee vice chairman Doug Collins of Georgia or ranking member Hank Johnson, also of Georgia, could be in line to succeed Issa, depending on which party controls the House. They perceive both as considerably more sympathetic to patent owner interests than Issa.
This reminds me a little of the Way Too Early 2018 college football pollscoming out this week. But it sure does seem that with Issa and Reps. Bob Goodlatte and Lamar Smith hanging up the cleats, we’ll need a new program to tell the patent reform players next year.
I’ll Have a Mistrial With That Appeal, Please
In case you missed it, the Federal Circuit carved out some of a $39.5 million judgment Finjan won against Blue Coat Systems in 2015. The decision caused U.S. District Judge Beth Labson Freeman to declare a mistrial in a new trial between the same parties involving one of the same patents. Freeman instead scheduled two new trials: one in February to hash out liability, and one in December to deal with damages stemming from both cases.
Enjoy the holiday weekend. I’ll be back Tuesday with Voip-Pal’s side of the ex parte saga, and a couple of nuggets from Federal Circuit arguments this last week.
Thanks for reading Skilled in the Art. You can check out all the new topic-area briefings by my Law.com colleagues here.