Selection process for assigning judges to expanded PTAB panels « 717 Madison Place
`
`Page 1 of 3
`
`717 Madison Place
`
`Oral Arguments and the Federal Circuit
`
`« In 1992, 75% of the BPAI judges objected to the manipulation of the composition of Board panels
`Nidec v. Zhongshan — Did the Federal Circuit possess jurisdiction? »
`Selection process for assigning judges to expanded PTAB
`panels
`
`In recent years, there have been at least two occasions during oral argument where the Federal Circuit
`has inquired of the USPTO if additional judges are selected for expanded panels so as to decide a
`matter in a certain way. In the first oral argument — Yissum Research Development Co. v. Sony
`Corp. — the USPTO was quite frank in acknowledging that the PTO can select judges for a
`reconfigured panel so as to achieve a decision opposite to that of the original panel: [Listen].
`
`PTO: 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?
`
`PTO: Yes, your Honor.
`
`Judge Taranto: And, you don’t see a problem with that?
`
`PTO: 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?
`
`PTO: 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.
`
`PTO: 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?
`
`PTO: That’s correct, your Honor. We believe that’s what Alappat holds.
`
`http://www.717madisonplace.com/?p=9143
`
`Voip-Pal Ex. 2087
`IPR2016-01198 and IPR2016-01201
`1/12/2018
`
`

`

`Selection process for assigning judges to expanded PTAB panels « 717 Madison Place
`
`Page 2 of 3
`
`In a subsequent oral argument — Nidec v. Zhongshan — the USPTO was a bit less direct with its
`answer when asked the question of whether judges are selected to rule a certain way: [Listen].
`
`Judge Reyna: What kind of uniformity or certainty do we have in that where the PTAB
`can look at a prior decision and say well we don’t like that, let’s jump back in there and
`change that?
`
`PTO: Well, ….
`
`Judge Wallach: How does the Director choose which judge to assign to expand the panel?
`
`PTO: Uh, that’s provided, your Honor, by our standard operating procedure. And, the
`Chief Judge actually makes that decision. And, the judges are selected based on their
`technical and legal competency. And, over the years, many many panels at the Board
`have been expanded. In fact if you looked at the thirty . . . .
`
`Judge Reyna: Are they selected on whether they’re going to rule in a certain way?
`
`PTO: Uh, well, people can be placed on the panel . . . for example, the Director can place
`him or herself on the panel, and certainly the Director knows how they’re going to rule.
`Nidec has not said and they say at their blue brief at page 43 that they don’t challenge the
`independence of these judges on this panel. Um, these judges were not selected and told
`to make a particular decision. If judges could be told to make a particular decision, there
`would be no need to expand a panel in the first place.
`
`You can listen to the entire oral argument of Yissum Research Development Co. v. Sony Corp here:
`[Listen].
`
`You can listen to the PTO’s presentation in Yissum here: [Listen].
`
`You can read the court’s Rule 36 judgment in Yissum here: [Link].
`
`You can listen to the entire oral argument of Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co. here: [Listen].
`
`You can listen to the PTO’s presentation in Nidec here. [Listen].
`
`An opinion in Nidec has not issued, yet. The outcome will depend, in part, on whether the CAFC
`satisfies itself that it has jurisdiction to rule on a decision of a stacked panel.
`
`__________________________________________________________________
`
`Update: August 27, 2017 and August 28, 2017
`
`A third occasion where the Federal Circuit noted the issue of panel-stacking was this past May in the
`en banc oral argument of WI-FI One v. Broadcom. During that oral argument, Judge Wallach noted
`that on the list of “shenanigans” — see the Supreme Court’s Cuozzo decision for more context on the
`“shenanigans” reference — was the Director appointing judges to come out the way that the Director
`wanted a case to be decided on re-hearing. [Listen].
`
`http://www.717madisonplace.com/?p=9143
`
`1/12/2018
`
`

`

`Selection process for assigning judges to expanded PTAB panels « 717 Madison Place
`
`Page 3 of 3
`
`Judge Wallach: No, no, no . . . according to the Government, it’s not individual panels
`—it’s the Director. Because, on the list of shenanigans, the Director, if the Director
`doesn’t like a decision, and someone seeks an expanded panel, can appoint judges who
`take a different position which is more in line with what the Director wants. So, in the
`long run, what you’re really saying is, it’s the Director who decides it, as opposed to this
`court.
`
`Later in the oral argument, Judge Wallach would ask the attorney for the opposing side similar
`questions [Listen]:
`
`Judge Wallach: The situation I described to your esteemed colleague where in effect the
`Director puts his or her thumb on the outcome . . . shenanigan or not? It’s within the
`written procedures.
`
`Attorney: So, your hypothetical is the Director stacks the Board?
`
`Judge Wallach: Yeah, more than a hypothetical, it happens all the time. It’s a request for
`reconsideration with a larger panel.
`
`Attorney: That’s within the Director’s authority. The make-up of the Board to review the
`petition is within the Director’s authority. Whether that rises to the level of shenanigans
`or not . . . .
`
`Judge Wallach: Aren’t there fundamental rule of law questions there . . . basic things like
`predictability and uniformity and transparency of judgments and neutrality of decision
`makers? And don’t we review that kind of thing?
`
`This entry was posted on Sunday, August 20th, 2017 at 4:41 pm and is filed under Uncategorized. You can follow any
`responses to this entry through the RSS 2.0 feed. Responses are currently closed, but you can trackback from your own
`site.
`
`One Response to “Selection process for assigning judges to expanded PTAB
`panels”
`
`1. ‘admissions of the director’s manipulation’ – American Inventors for Justice says:
`August 30, 2017 at 1:53 pm
`
`[…] of the director’s manipulation of Patent Trial and Appeal Board (PTAB) panel members
`[…]
`
`717 Madison Place is proudly powered by WordPress
`Entries (RSS) and Comments (RSS).
`
`http://www.717madisonplace.com/?p=9143
`
`1/12/2018
`
`