Dr. Thomas E. Sawyer
`3626 E. Little Cottonwood Lane
`
`Sandy, Utah 84092
`
`June 21,2017
`
`The Honorable David P. Ruschke
`
`Chief Judge for the Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Subject: Inter Partes Review
`Apple v Voip—Pal.com Inc
`Case IPR2016—01 198
`
`Patent 9,179,005 B2
`Case IPR2016-01201
`
`Patent 8,542,815 BZ
`
`Dear Judge Ruschke,
`
`It has recently come to my attention that the original three judges assigned to hear
`IPR2016—01198, Patent 9,179,005 B2 and IPR2016-01201, Patent 8,542,815 B2
`
`were removed from hearing these Inter Parres Reviews (IPR’s). My research
`suggests that replacement of an entire panel ofjudges is almost unheard of in past
`Patent and Trademark Appeals Board (PTAB) practice, since such a change is
`likely to have impacts on all concerned. Presumably, there is something that all
`three have done, or have failed to do that is of sufficient warrant that it was
`
`necessary to replace all three in the middle of an IPR.
`
`My understanding is that the principal actions that have been taken, to date by the
`removed panel ofjudges, are the institution of the two IPR’s and the refiisal to
`rehear the institution decisions. There may be things about the hearing that I don’t
`understand, but the statistics released by the PTAB and other suggest that there is
`an overwhelming likelihood that a patent that has an IPR instituted will have some
`or all of its claims found to be un-patentable. Lee and Simpson in an article called
`“How Kill Rates are Affecting Patents” conclude, “Once the PTAB institutes a
`petition, the odds are overwhelmingly in favor of the petitioner. Of the 404 final
`
`

`

`written decisions analyzed, 88 percent (356 of 404) resulted in at least one claim
`being invalidated. Importantly, this average remained steady between 2014 and
`2015, providing petitioners with a reasonably high level of confidence that an IPR
`can and will weaken 3 challenged patent.”
`https://www.law360.com/articles/699860/ptab—kill~rates-how-iprs-are—affecting-
`patent , accessed June 18, 2017
`
`The very high percentage of patents that are invalidated in the IPR system appears
`to be several times greater than the percentage of invalidation for a similar patent
`through the federal court system. In “IPR Statistics Revisited, Yep it’s 3 Killing
`Field” Samson Vermont does an “apples to apples” comparison of kill rate
`between sec.102 cases filed in the PTAB versus federal court and concluded that
`
`the federal courts for sec. 102 cases have an 18.7% kill rate, while the IPR kill rate
`
`for similar patents is 41.1%. https://www.patentattomey.com/ipr-statistics—
`revisited-yep-its-a-patent-killing-field/ accessed June 19, 2017
`
`If the problem, with the actions of the previous panel impacted the decision to
`institute the two IPR’s or reject a rehearing of those decisions, it seems clear that
`putting a new panel in place will not have the same effect as rehearing the
`institution decision, since all instituted cases move forward with the strong
`assumption that some or all of the claims are invalid. If the previous panel acted
`inappropriately, it seems clear that the only way to make the patent owner even
`partially “whole” is to allow the new panel to reconsider the institution decision. It
`is a partial solution, because the new panel comes to the case with knowledge of
`the previous panel’s decision and may be swayed to a decision that supports their
`colleagues.
`
`If the problem was not the action of the previous panel, but an implied or actual
`conflict of interest, by the judges (such as past employment, financial impact of a
`decision, close personal relationship or some other conflict) such a conflict should
`have been identified by the judges and/or the petitioner’s counsel:
`
`37 C FR 1 1.803(b) provides that practitioners commit an ethical violation for
`failing to report APJs who have violated the applicable “rules ofjudicial conduct.”
`§ 11.803 reads:
`
`“A practitioner who knows that a judge, hearing oflicer, administrative lawjudge,
`administrative patentjudge, or administrative trademarkjudge has committed a
`violation ofapplicable rules ofjudicial conduct that raises a substantial question
`as to the individual ’3 fitness for ofiice shall inform the appropriate authority. ”
`
`

`

`If a violation that involves judicial misconduct has occurred, the applicable
`sanctions are contained in CFR Title 37 > Chapter 1 > Subchapter - > Pin
`
`g > Subpart A > Section 42.12
`
`(b) Sanctions include entry of one or more of the following:
`
`(I) An order holding facts to have been established in the proceeding;
`
`(2) An order expunging or precluding a party from filing a paper;
`
`(3) An order precluding a party from presenting or contesting a particular issue;
`
`(4) An order precluding a party from requesting, obtaining, or opposing
`discovery;
`
`(5) An order excluding evidence;
`
`(6) An order providing for compensatory expenses, including attorney fees;
`
`(7) An order requiring terminal disclaimer of patent term; or
`
`(8) Judgment in the trial or dismissal of the petition
`
`Of the available sanctions for bias or misconduct on the part of the previous panel,
`it appears that only a judgment in the patent owner’s favor or a dismissal of the
`action would make the patent owner whole.
`
`I appreciate your difficult position, but as a former CEO of VoIP-Pal I am
`concerned that any bias, conflict or other problem with the previous panel may not
`be addressed in a way that the company is made whole.
`
`"
`
`"\"ZZ ‘t: "12%,.
`
`Dr. Thomas E. Sawyer
`3626 E. Little Cottonwood Lane
`
`Sandy, Utah 84092
`
`