Double Standards

No one likes double standards, especially when those in power blatantly apply them.

The USPTO's Patent Trial and Appeal Board judges make the case that parties should put forth their best arguments in the initial filings.  This avoids the potential gamesmanship of purposely holding back arguments, watching how the decision maker responds, and then re-tooling the arguments and evidence accordingly. In LG Electronics, Inc. v. ATI Technologies (IPR2015-01620, challenging US 7,095,945), LG attempted to remedy deficiencies for some of the challenged claims in their first petition by filing a second petition for review, and then moving for joinder (as without joinder, the second petition was time-barred). The PTAB explained that giving LG a second bite at the apple would encourage holding back arguments and create extra filings and delay:

“A decision to institute review on some claims should not act as an entry ticket, and a how-to guide . . . to challenge those claims which [the petitioner] unsuccessfully challenged in the first petition.” ZTE Corp. et al. v. ContentGaurd Holdings, Inc., Case IPR2013-00454, slip op. at. 5–6 (PTAB Sept. 25, 2013) (Paper 12). The Board is concerned about encouraging, unnecessarily, the filing of petitions that are partially inadequate. Id. By “[p]ermitting second chances” the Board needs to “be mindful not only of this proceeding, but of ‘every proceeding’” when exercising its discretion, for such cases will inevitably “tie[] up the Board’s limited resources.” See Samsung Elecs., et al. v. Rembrandt Wireless Tech., LP, Case IPR2015-00555, slip op. at 8 (PTAB June 19, 2015) (Paper 20) (exercising discretion under 35 U.S.C. § 325(d) to deny institution and finding motion for joinder moot).

If only this logic was applied by the USPTO officials policing actions of Examiners. Consider re-opening prosecution after the PTAB reverses an Examiner. The Examiner reviews the PTAB decision noting the deficiency upon which the decision was based and then simply forms a new rejection addressing this deficiency (e.g., by adding a new reference). This is precisely the same approach LG hoped to follow. While re-opening prosecution after reversal requires approval of the Technology Center director, MPEP § 121.04 does not set forth any threshold standard that must be met. In contrast, the panel in the LG case noted that LG presented "no argument or evidence that" the newly cited references were not known or available at the filing of the first petition.  This burden is in the context of other PTAB practices of discouraging multiple sets of "redundant" arguments, where no such limit is applied to Examiners at all.

As another example, consider petitions against restriction requirements. There are numerous examples where an improper petition is recognized by the reviewing authority, only for the reviewing authority to communicate ex parte directly with the Examiner as to how to remedy the restriction (discussed in a previous post). Or sometimes, the reviewing authority remedies the Examiner's deficiency directly. Consider the example from US 13/307,532.  

While it may be true that there is a difference between petitioners at the PTAB and examination before an Examiner, this does not change the fact that the same general policy arguments apply. One could argue that the policy considerations are actually more applicable to the Examiner situation since we should be less concerned with a private party opting to waste their own time in filing extra petitions before the PTAB as compared to Examiner's causing wasted effort on the part of both the Office and private parties with no control over the situation.