Question and Answer with Teddy Gron and Lee Barrett
Oblon, Spivak is fortunate and honored to have two distinguished former Administrative Patent Judges (APJs) as integral parts of Oblon, Spivak’s Board of Patent Appeals and Interferences Practice Group.
Teddy Gron brings over 35 years of USPTO experience to Oblon, Spivak, including most recently serving as an APJ at the Board for 14 years, and prior as an Associate Solicitor in the Office of the Solicitor for 6 years, arguing more than 50 cases before the Federal Circuit. Lee Barrett brings 32 years of USPTO experience to Oblon, Spivak, the last 16 of which were as an APJ, and prior to that 8 years as an Associate Solicitor at the Office of the Solicitor. Between Teddy and Lee they have heard hundreds of appeals as APJs and argued over 110 cases before the Federal Circuit as Associate Solicitors.
We are fortunate to provide Teddy and Lee’s insights on practices in front of the Board of Appeals and Interferences, and to have their specific insights to the following questions.
Q1: What are the important steps to take during patent prosecution that can help your case on an appeal?
Teddy: The most important step in improving prosecution is to read all the evidence carefully. The specification and the prior art of record are not always adequately considered before appeal. With full knowledge of the respective disclosures, better claims can be drafted and better arguments can be presented supported by evidence of record.
Lee: The Board’s function is to decide disputed findings of fact and conclusions of law. It is appellant’s burden on appeal to show that the examiner erred, so it is important to identify specific issues during prosecution so they can be argued on appeal. Is it a factual issue about what a reference teaches or suggests or is it a legal issue, such as claim interpretation or obviousness?
One important goal during prosecution is to understand the examiner’s claim interpretation, which is usually not expressly pointed out. Has the examiner misinterpreted the claim or is the examiner really trying to say that the claim is so broad that it reads on the prior art in a way that applicant did not intend? Patentability often turns on a well-chosen word or phrase that the examiner fails to appreciate, and quoting the claim language can focus the examiner’s attention on that issue and at least sharpen the issues for appeal. Many factual issues really involve questions of claim interpretation. A personal interview with the examiner during prosecution can be very helpful in spotting those problems and even resolving them so no appeal is necessary.
Q2: From your time on the Board, what are the biggest mistakes you see attorneys make in their Appeal Briefs?
Teddy: The biggest mistakes in Appeal Briefs relate to claim interpretation. Attorneys do not understand the full scope and content of the invention claimed, have not read and/or completely understood the teaching in the supporting Specification, and have not read and/or completely understood the applied prior art teaching. This is no joke!
Lee: I recommend that anyone preparing an appeal read the paper, “Effective Appellate Advocacy in Ex Parte Appeals Before the Board of Patent Appeals and Interferences,” http://usptols.org/uploads/Ten_Common_Mistakes__5_.pdf. This paper describes the eight most common mistakes in the briefing requirements and ten most common mistakes in the arguments as identified by APJs.
The opening brief is the most important part of the appeal. Even when an Oral Hearing is planned, the Board makes its initial determination based on the briefs. The Board may properly refuse to consider new arguments raised in the Reply Brief if they could have been earlier presented and are not in response to new reasoning by the Examiner. Put your arguments in the main Brief. However, it is unlikely the Board will refuse to consider new reasoning by the examiner in the Answer, so consider a Reply Brief in this situation. Reply Briefs are most effective when they address new reasons in the Answer or reiterate one or two important points instead of just regurgitating the main Brief.
One of the biggest problems in many briefs involves unappreciated issues of claim interpretation. Examiners and applicants seldom make express claim interpretations, evidently thinking that the claim language is self‑evident, but this can lead to misunderstandings. In my experience, the claims are often susceptible to a broader reasonable interpretation than Appellant argues and the Board is very good at reading claims broadly. Therefore, it is a mistake to take claim interpretation for granted when writing an Appeal Brief.
In recent years, the Board has moved towards being a true appeals tribunal which performs a limited review of the examiner’s rejection based on appellant’s arguments, and gotten away from performing another layer of examination. Appellants and examiners should not expect the Board to make their arguments for them. Appellants should not expect attorney arguments to substitute for expert declarations where they are appropriate. Over the last few years, the Board has more and more stated that arguments not made are waived. The Board is rightly reluctant to reverse when it finds a claim feature is missing from the reference or the reference does not work the way the examiner says it does, if an argument has not been made. It is assumed that appellant knows that such a feature is well known or would have been obvious or may not want patentability to be based on this feature. My advice is if a feature is important, make the argument.
Q3: How important in your view is an Oral Hearing in the outcome of the Appeal?
Teddy: An attorney may lose the appeal at Oral Hearing if he/she is not adequately prepared to answer all questions relating to the pertinent technology and the applicable law. Oral argument may be useful to further explain a position and pinpoint the facts in support of a position, particularly that may not have been adequately or clearly briefed. Well written briefs are more important than attempts to salvage one’s case at Oral Hearing. Although oral argument may not likely convince the Board to reverse, a close case can easily be lost by poor answers to unanticipated questions.
Lee: In most cases, a well written Brief is all the Board needs to understand the facts and issues and decide the Appeal. It is always best to persuade the Board in the Briefs rather than try to get them to change their mind at an Oral Hearing. Oral Hearings usually reinforce the APJs inclination from reading the briefs. If an Oral Hearing is not handled properly, the Oral Hearing can sometimes have unexpected disadvantages, because it gives the Board an opportunity to ask questions about other weaknesses or issues in the case, such as claim interpretation.
That said, Oral Hearings can be effective in cases where the technology and/or the prior art references are complex, where there are issues of claim interpretation or arguments that might be unappreciated, and where there are unsettled legal issues, such as statutory subject matter under section 101. In those cases, it can be productive to have a dialog between the attorney and the Board. Clearly, it helps to have someone experienced do the argument.
The Board panel of three APJs assigned to the appeal has a conference before the Oral Hearing to discuss the case. Maybe five to ten percent of the time my inclination to affirm in my case or another APJ’s case based on the briefs resulted in a reversal based on the Oral Hearing. I seldom changed my mind to affirm where I was initially inclined to reverse. So, an Oral Hearing can be persuasive. However, an Oral Hearing is not going to save a poorly prepared case.
Q4: What is the biggest mistake you see attorneys make in their oral argument?
Teddy: The biggest mistake at oral argument is a lack of preparation, most especially unfamiliarity with the evidence of record (the specification, the prior art, and all the claims) and the applicable law. Next, attorneys often attempt to avoid rather than attack the PTO’s best evidence and strongest arguments in support of unpatentability.
Lee: A common mistake is evading an APJ’s question or not listening to the question. The Board’s questions are intended to probe weaknesses in the arguments and resolve any doubts they may have. Failing to answer the questions makes it seem that the attorney is evading the question because there is no good answer. The attorney should be aware of the weaknesses in the case before the Oral Hearing and be prepared to answer the inevitable, skeptical questions. A moot court is an excellent way to test out the answers.
Another common mistake is coming unprepared. The Board will expect the attorney to be familiar with the whole record, even if he or she did not write the Brief, and to have read the references in their entirety. Again, a moot court is the best way to prepare for Oral Hearing.
Still another common mistake is trying to raise a new argument that was not presented in the Briefs. The Board’s decisions are based on the written record and the Oral Hearing is not the time to present arguments the examiner has never seen or had a chance to respond to. In preparing for Oral Hearing, it helps to identify and mark where an argument was made in the briefs in case the Board asks. The Board is certain to ask whether any papers offered at the Oral Hearing were seen by the examiner and, if they were not, they will not be considered. The importance of a good solid opening brief cannot be overemphasized.
Q5: The Board had recently proposed a new format for an Appeal Brief. What is your take on whether that new format will ultimately be implemented and how it will affect the Appeals process.
Teddy: The new format proposed in December 2008 will not be implemented as presented because it requires the appellant to fully and fairly present the cases both for and against patentability. The PTO has always had the initial burden to explain and establish the factual basis for its rejections. Always remember that applicants are entitled to a patent based on objective enablement unless the contrary is shown. Nevertheless, attorneys should be mindful that a Board of inexperienced APJs needs all the help it can get to make the right decisions. In the long run, the applicant benefits from the correct result and a valid patent.
Lee: The new format does not appear to be that much different from the present format and I believe it will ultimately be adopted. The proposed 2009 rules, 74 Fed. Reg. 67987 (Dec. 22, 2009), are much less burdensome than the previous 2008 proposed rules, because they do not have page limits, jurisdictional statements, table of contents, table of authorities, format, and statement of facts requirements. Certain information is required for the Board to efficiently do its job, such as a notice of the real party in interest so Board members can identify conflicts of interests and putting separately argued claims under separate headings to identify what claims are argued. I always found the Summary of the Claimed Subject Matter to be one of the most helpful parts of the Brief. However, I think it is a mistake to impose the same formal and technical requirements on a Brief to the Board as a brief to the Federal Circuit. A simple format that provides all the necessary information for the Board to efficiently decide the appeal will streamline the appeal process for both applicants and examiners.
Q6: Do you see any other trends on the horizon in the Appeals process?
Teddy: Until the PTO realizes that backlogs should not be reduced by increasing the number of inexperienced APJs and setting unjustifiable production requirements for their work, the quality of decisions by the Board will not improve. Experience takes time. The best decisions are well supported by evidence and law. It takes time to fully consider both and author a clear and correct opinion.
Lee: The Board has a tremendous backlog of cases and it is unlikely this will be cleared up for several years. The number of appeals is based on many factors, such as the number of examiners, the experience level of the examiners, and new case law, so it is difficult to predict whether the number of appeals will increase or decrease.
I know the Board is experimenting with different ways to shorten opinions with a view towards deciding more cases. I am not sure how successful this will be. The Federal Circuit has its Federal Circuit Rule 36 for judgment of affirmance without opinion, but this is not possible for the Board since the Federal Circuit requires that the Board’s opinion affirming a rejection to be supported by substantial evidence, which requires express fact finding and analysis. In my experience on the Board, it was seldom possible to affirm for the reasons given by the examiner without some additional explanation or clarification. In my opinion, it would be possible for the Board to create a model short form opinion reversing the rejections for the reasons stated by appellant.
Q7: Very few cases are appealed from the Board to the Federal Circuit. Do you see that trend changing in the future? And, if so, how should applicants prepare for such an appeal?
Teddy: Few decisions of the Board are appealed to the Federal Circuit. However, the Court would argue that those few are a few too many. An appeal to the Federal Circuit is expensive. It is much less expensive to file a continuation, amend the claims, present new evidence, and make new arguments in the PTO. Moreover, few attorneys have the expertise and experience to take an appeal to the Federal Circuit and convince the Court that the Board erred in a conclusion of law or clearly erred in a finding of fact. There will be more appeals under 35 U.S.C. § 141 because more important and financially lucrative inventions are in the air. Attorneys with substantial appellate experience are few and far between.
Lee: I do not see that trend changing. Appeals to the Federal Circuit are expensive and can easily add six months to the appeals process. Moreover, a reversal by the Federal Circuit does not necessarily mean the application will be allowed, because all decisions are in the nature of a remand and the USPTO is always free to reopen prosecution. Mostly, I think applicants want a quick decision by a fair and impartial Board, so they can decide how to proceed.
However, in cases where a Federal Circuit appeal may be necessary, it is critical that the appeal to the Board was done properly for a couple of reasons. First, the Board does not give any deference to factual findings by examiners, but factual findings by the Board are reviewed by the Federal Circuit for substantial evidence. This means it is harder to attack a factual finding at the Federal Circuit and the best chance of winning on a question of fact is at the Board. Second, the Board may consider arguments not made in the briefs to be waived, but the Federal Circuit will definitely consider arguments not made to the Board to be waived. Thus, it is critical that any arguments or evidence applicant may want to rely on in a Federal Circuit appeal should be argued to the Board. Third, the Federal Circuit is not going to consider every argument on every claim presented to the Board and page limits on the Brief are going to make it impossible in any case. Thus, it is important to prioritize issues at the Board in anticipation of an appeal to create a good record in the Board opinion. What I am saying is that preparation for an appeal to the Federal Circuit begins in the briefs to the Board and even before that in the arguments to the examiner.