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Joshua Landau @PatentJosh
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Alan Marco: high quality patent has to adhere to patentability standards and claim an appropriate scope.
(Turns out defining a high quality patent isn’t that hard after all.)
Marco: does allowing amendments post-grant create an incentive for applicants to care less about getting a valid patent up front?
Marco: continuations tend to be broader than new applications and more frequently litigated. (Solution: require continuations to be narrowing.)
APJ Boalick: PTAB is part of ensuring we have strong predictable reliable patent rights.
Boalick outlining the changes at PTAB (some of which are good - precedential opinions, revising the expanded panel procedure - and some of which are not.)
@ProfGReilly: we think of PTAB’s function as correcting @uspto output. But we can think of it as reflecting dynamic nature of patent quality. We can learn things over time (incl based on patentee actions) that make a patent look more or less valid.
More @ProfGReilly: scope can change over time, enforceability can change over time, and certainty - farther assertion travels from disclosed embodiments, the less certain it becomes.
. @ProfGReilly PTAB allows PTO to reconsider patent - would we have issued this patent originally if we knew how the patentee would use it?
. @ProfGReilly: often view PTAB in comparison to courts. We know it isn’t (or isn’t just) claim construction. So? 1) difficulty of amendments. Questionable. 2) Threshold screening - PTAB uses institution screen. 3) Expertise of the decision makers. 4) Adversarialness.
. @ProfGReilly and those points - expertise, adversarialness, screening - are considered positives in institutional design.
. @emptydoors PTAB represents a challenge in court-agency substitution. Courts aren’t a good tool for revoking poor quality patents so we make it easier via PTAB but doing so makes it easier to revoke any patent.
. @emptydoors Requires some departures from courts. Lenient standing. Technically trained administrative judges makes it more likely that science is taken into account. These don’t compromise value/validity.
. @emptydoors more questionable - departure from CCE (points to i4i, but i4i wasn’t approval of CCE but rather saying that Congress hasn’t selected something else - but Congress explicitly chose preponderance for PTAB, and could do so for courts if they so chose.)
. @emptydoors PTAB moving from infant process to more mature and courts giving it less scope to develop/taking a more critical view.
Next, @MelissaWasserma : two reforms. Lots of talk about patent quality but need evidence of how to tie policy to quality.
. @MelissaWasserma fortunately, lots of empirical research on how to do that in the past few years. Two reforms to focus on: change fee structure (Alan Marco: “as an economist don’t ban things, just price them.”)
I’ve written on Prof Wasserman’s fee proposal in the past - patentprogress.org/2018/02/05/dea… - current fee structure incentivizes grants in times of financial stress.
. @MelissaWasserma and change examiner time allocations. (Raise them.) And yeah, good evidence that this would also help. (Written about this too - patentprogress.org/2018/03/06/gra…).
There’s obviously a tension between cost of examination and need for increased validity - @marklemley paper on this - which @MelissaWasserma explains a new paper from her and Prof Frakes have examined with new empirical tools and concluded value to expanding time allocation.
. @emptydoors : most PTAB cases are litigation-adjunct, so we want to know what courts do. EdTex is unlikely to stay; NDCal is pretty willing to stay. Variability suggests degree of PTAB substitution for courts needs to be looked at. One problem was partial institution.
. @emptydoors partial institution made it harder for courts to know how useful the PTAB case would be. With partial institution, harder for courts to know whether to stay - without it, stay more useful. (APJ Boalick saying anecdotally DCT judges he’s spoken with agree.)
. @ProfGReilly really important not to ignore threshold screening when you look at PTAB output. Some people (to remain unnamed) refuse to do so.

(Me: and it makes their numbers misleading and useless. So of course the Chamber of Commerce uses those.)
. @MelissaWasserma PTAB isn’t civil litigation and we shouldn’t compare it there - we should compare to other agency adjudications. Formal APA adjudications. PTAB uses most (16/20) agency adjudication best practices and is addressing some of the concerns.
. @MelissaWasserma feedback loop between PTAB and examiners. No link right now - might be room to provide feedback to examiners from PTAB. @uspto has some pilot programs but more would be good.
Marco: much PTAB review is of pre-PTAB patents. We should look at how PTAB affects examination (in the same way SCOTUS decisions like Alice have affected applicant practices.)
Boalick: statutory time deadlines have had a real impact on board operations.
. @ProfGReilly one difference from pre-AIA reexam to IPR was rate of amendment but many of those might have been minor/non consequential. Question (e: as Thomas did in Cuozzo) whether patent owners would want to (or could) make amendments that would save their patents.
. @emptydoors IPR at outset were 100% pre-AIA patents, and 30% were pre-AIPA patents. Lots of patent decisions came down in that time. PTAB as system for correcting errors - but also deals with changes in law.
. @emptydoors important to distinguish between @uspto screwing up and @uspto getting it right but the law being wrong at the time.
. @ftc question on impactful SCOTUS decisions. @ProfGReilly: minimal impact from some, like Nautilus and Teva. Easy to blame on either SCOTUS or CAFC (me: which one depends on how you feel about the preexisting standard.) end result is basically status quo.
. @ProfGReilly but lots more to think about. Eg Teva - affects ex post certainty within litigation but was never going to fix ex ante predictability of claim scope. And wasn’t going to affect breadth.
. @ProfGReilly Nautilus has difficulties because tried to sever construction from definiteness and that’s hard. Construction gives meaning from context - without that, hard to actually do definiteness analysis.
. @uspto Commissioner Hirshfeld asked about fee setting authority/how PTO has used it. “To set fees where needed.”

But haven’t changed the *structure* of the fees, just amount - unresponsive to @MelissaWasserma empirical work showing that structure matters.
. @uspto Hirshfeld: surcharge on non-docx filing (which is good!) and slightly moving fees from back end to front. Intent of PTO is to keep upfront costs low to encourage filing.

Me: PTO costs aren’t the major driver of cost to applicant so a PTO fee shift isn’t a big deal.
Hirshfeld skeptical of the empirical work, saying he’s never seen an instruction to an examiner to increase grants.

Me: examiners aren’t dumb and know the kinds of pressures the agency faces and can modify behavior without explicit instructions. And agency can modify procedure.
Marco: using fee setting prospectively to address behaviors can be hard because of lag times, but important. Purpose of patent system is to create progress in useful arts - if changing fee structure helps do so, do it.
. @MelissaWasserma important to keep in mind both applicant and *agency* incentives.
Closings; Hirshfeld: role of PTO is to make sure issued patents have clear scope and will withstand validity challenges.
Marco: focus on examiner incentives. Easy to see productivity, hard to see quality. Need to incentivize quality, not just quantity. Hard, but important.
Marco: incentivize A+ patents, not just pass/fail patents.

(My personal phrasing would be A+ patents, not just patents of minimum competence.)
. @ProfGReilly cafc split on claim construction: start from specification and develop claims contextually, or start from an abstract ideal of the claim and go from there. This drives much uncertainty in construction.
. @emptydoors moment of institutional maturity at PTAB. Embracing that, continue to provide the kind of data that allows rigorous examination of agency practice and continue to bring in external experts to the agency.
. @MelissaWasserma moving forward with quality, using empirical guidance (via intentional and natural experiment) is laudable. And commend USPTO for releasing so much data to allow this kind of scholarship.
Q to Hirshfeld: #ai in examination? Right now, nothing, but working on it. Examiner wrote a tool to take highlighted text and go into databases for her to rank results. Search term synonymization tool. Ongoing efforts.
That’s a wrap on panel number 1!
Panel 2: @colleen_chien Shawn Miller, John Golden, David Schwartz, and Neel Sukhatme (trends in litigation)
Miller (and Josh Rosefelt and Rebecca Weires, student RAs): to look at how legal changes impact system, thesis is that the patent owner matters. NPE impacts definitely different than operating companies.
Weires: reviewed impact of AIA joinder rule on lawsuit filings. Did they change number of lawsuits?
Weires: practicing entitylitigation essentially stable through AIA. NPE activity increased post-AIA (joinder rule splitting multi defendant suits) and we’d expect that the effect would be limited to NPEs.
Weires: looking at defendant-lawsuit pairs provides better view. Even in this, there’s an upswing in NPE activist leading into AIA but now a decline after.
Weires: disaggregate economicntrends by looking at PAE as share of all patent litigation - increase was happening, but post-AIA that levels off.
Rosenfelt: PTAB availability impacts. Number of lawsuits? PAE over operating company impact? ANDA impacts? Expect reduction in PAE litigation.
Rosenfelt: post-AIA, decrease in lawsuits, especially post-Alice. But post-Alice, PAE PTAB petitions held steady while PAE lawsuits dropped.
R: vast majority of PTAB challenges (~70%) high tech. Med is around 15%, and 15% other.
R: PTAB likely dampened PAE suits. No overrepresentation of ANDA patents.
Miller: impact of TC Heartland on where, how many, and PAE disparate impact.
Miller: filings relatively stable post-TC Heartland. Minor uptick in operating company litigation (but could just be normal variance.)
Miller: big change in where lawsuits are filed. -68% in EDTex; +72% in DDel. +113% in NDCal. Most cases went to those two, with a scattering elsewhere.
Miller: might be some number of plaintiffs who aren’t filing because they can’t file in EDTex, but could just be due to other changes in patent system.
Miller: PE litigation relatively stable both amount and venue post-TC; PAE litigation dropped and moved venues.
Miller: some evidence of shift to neighboring districts by PAEs (Eg EDTex to WDTex).
@colleen_chien (and work of her students whose names I didn’t catch - please tag yourselves if you happen to see this!) on quantity to quality shift.
. @colleen_chien AI/ML techniques used in this project. Looked at impacts on applications and lawsuits based on 2014-2016 period (PTAB, Octane, Alice, Teva, Williamson, form pleading change.)
. @colleen_chien difference in difference approach - controls used incl pure software vs chemistry, and high assertion vs non high assertions, and PAE vs operating companies.
. @colleen_chien complaints: did people start putting in claim charts and specific product details? Applications: total words? Unique words in claim 1?
. @colleen_chien: has there been a flight from quantity?

Answer: reduced number of repeated (10+ assertion) patent campaigns, fixed for low assertion.
. @colleen_chien PAE vs individual or university NPE vs opcos. All NPEs have seen downturn, somewhat less so for non-PAE NPEs, not seen in operating companies.
. @colleen_chien after abolition of form 18, complaints get significantly longer and more likely to include claim charts (though from ~1% to only ~15%.)
. @colleen_chien but, uh, not in EDTex. Increased at first and then decreased in EDTex but not elsewhere.

Reason why is unclear though my guess Is because plaintiffs in EDTex realized they wouldn’t get dismissed for failure to state a claim if they didn’t include a chart.
. @colleen_chien applications: post Alice, new applications are narrowing in software and getting longer - as I’ve said, applicants are learning to draft to meet Alice standards.
She says (and I agree) that that narrowing/increase in description is a good thing.
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