The BPAI and the TTAB are Required to Set Forth Specific Findings of Fact and Conclusions of Law Adequate to Form a Basis for Appellate Review

Jan 1998The Journal of the Patent and Trademark Office Society, volume 80, January 1998, pages 5-10

The BPAI and the TTAB are Required to Set Forth Specific Findings of Fact and Conclusions of Law Adequate to Form a Basis for Appellate Review[1]

by Charles L. Gholz

I. Analysis

In Gechter v. Davidson, 116 F.3d 1454, 43 USPQ2d 1030 (Fed. Cir. 1997) (opinion delivered by Circuit Judge Michel for a panel that also consisted of Circuit Judges Lourie and Schall), the court held that:

the Board [of Patent Appeals and Interferences] is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review. In particular, we expect that the Board's anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings. Claim construction must also be explicit, at least as to any construction disputed by parties to the interference. . . .[2]

While the specific issue before the court was the adequacy of the BPAI's explanation of why it entered a judgment in an interference that both parties' claims were anticipated by a prior art reference,[3] there can be little doubt that the court meant its holding to be of general applicability.[4] In particular, I believe that the court's logic will inevitably compel the BPAI to set forth in its opinions specific findings of fact and conclusions of law on priority issues as well as on patentability issues. Moreover, there is no apparent reason why the court's logic would not apply to the TTAB as well as to the BPAI.

The court's opinion is surprisingly lengthy. However, it stated the core of its logic pithily enough:

Although we have said we review decisions, not opinions, King Instrument Corp. v. Otari Corp., 767 F.2d 853, 862, 226 USPQ 402, 408 (Fed. Cir. 1985), like a district court opinion, a Board opinion must contain sufficient findings and reasoning to permit meaningful appellate scrutiny.[5]

In addition, no doubt anticipating an anguished outcry from the PTO concerning the burden it was imposing on the overworked and underpaid administrative patent judges, the court said that:

Furthermore, we assume the Board's ability to set forth fact findings and conclusions of law at the level of specificity equal to that required by [Federal Rules of Civil Procedure] Rule 52(a). Many Board members, now known as "Administrative Patent Judges," are experienced former senior examiners. Due to their technical expertise as well as their opinion writing experience as administrative judges, they are more than capable of providing the adequate fact finding required by our cases reviewing the PTO Board, and also called for regarding other tribunals in Rule 52(a) and administrative law decisions. See 35 USC § 7(a) (1994) ("The examiners-in-chief shall be persons of competent legal knowledge. . . .").[6]

II. COMMENTS

I think that many of the administrative patent judges who handle interferences will now do what many district court judges have done for years: require the parties to submit proposed findings of fact and conclusions of law.[7] Moreover, since many of those administrative patent judges write at least some of their opinions on their own computers, they will no doubt require submission of the proposed findings of fact and conclusions of law on disks in a format with which they are comfortable, allowing them to edit the prevailing party's proposed findings of fact and conclusions of law to whatever extent they desire before attaching them to their opinions-assuming that they continue to write actual opinions.[8]

There are, of course, a number of different formats in which the administrative patent judges could require submission of proposed findings of fact and conclusions of law.[9] If the PTO takes no action to standardize the practice, it is likely that the administrative patent judges who handle interferences will each issue his or her own standardized order setting forth his or her own preferred standards. This will continue and exacerbate the present situation, in which the procedural practices differ from administrative patent judge to administrative patent judge more than the procedural practices differ from district court judge to district court judge (at least within a given district). I think that this would be unfortunate. Accordingly, I suggest that the chief administrative patent judge and the chief administrative trademark judge set up committees consisting of one or two of their judges and one or two members of the relevant bars to draft rules setting forth generally applicable requirements for the submission of proposed findings of fact and conclusions of law by the parties to inter partes matters pending before the two boards.

The implementation of Gechter on the ex parte side of the boards will be more problematic. Of course, appellants can voluntarily submit proposed findings of fact and conclusions of law, and Chief Administrative Patent Judge Stoner stated at the IPO meeting[10] that the BPAI welcomes the submission of proposed findings of fact and conclusions of law. That welcoming of voluntarily submitted proposed findings of fact and conclusions of law may soon turn into requirements that appellants in ex parte matters before both boards submit proposed findings of fact and conclusions of law. However, I think that it is unreasonable to expect the PTO to require examiners to submit proposed findings of fact and conclusions of law.[11] For one thing, speaking from experience I can testify that it takes a lot of time and effort to craft good proposed findings of fact and conclusions of law, and many examiners already feel that they are overburdened by the requirement to produce conventional examiners' answers. Perhaps the best that can be required of the examiners is that they indicate (1) which of the appellant's proposed findings of fact and conclusions of law they agree with and, (2) for any of the appellant's proposed findings of fact and conclusions of law that they disagree with, why they disagree with it.[12]

Assuming that the parties to ex parte appeals to the two boards and inter partes matters before the two boards are to be required to submit proposed findings of fact and conclusions of law, the next question is whether they should be required to submit them on computer media. I submit that the answer is clearly yes. While not all of the judges of the Federal Circuit may be computer literate, the administrative patent judges are, by definition, techies.[13] Presumably the vast majority of the administrative patent judges are already computer literate, and those that currently are not computer literate are the kind of people that can learn to be computer literate. As for the administrative trademark judges, my partners who do trademark work inform me that most of the administrative trademark judges are already computer literate.

The Federal Circuit's recent dramatic decision to permit the filing of a hypertext brief in In re Berg, 43 USPQ2d 1703 (Fed. Cir. 1997) (non-precedential),[14] offers an additional possibility which I think should be explored. Thus, I suggest that the PTO should promulgate rules applicable to both ex parte and inter partes matters before both boards authorizing and encouraging the submission of hypertext briefs, proposed findings of fact, and proposed conclusions of law with links to the authorities and the portions of the record referred to in the text.[15]

In my estimation, submitting the briefs, the proposed findings of fact and conclusions of law, the cited authorities, and the relevant portions of the records on computer media (presumably CD-ROMS) would enormously facilitate the preparation of the opinions.[16] That is, the judge writing the opinion would be able to take as much (or as little) out of the briefs, the proposed findings of fact and conclusions of law, the cited authorities, and the record as he or she wanted to without having to re-enter that text. The savings in the judge's time would, obviously, be substantial-and the opportunity for errors in the re-entry process would be eliminated.[17]

I recognize that not all IP firms and IP departments have the capability of producing CD-ROM hypertext materials. However, I predict that, within a matter of a few years, the appropriate equipment will become as omnipresent in IP firms and IP departments as fax machines are today. Moreover, I am informed that, in the meantime, there are service providers in every big city that will cheerfully provide this service at quite a modest price.

III. CONCLUSION

The Federal Circuit may have meant Gechter as punishment for the PTO's persistence in repeatedly raising the issue that should now be decided in In re Zurko. Be that as it may, however, I think that both the bar and the PTO should take the opportunity to make lemonade out of the lemon. This is an opportunity to change the rules in a fashion that will ultimately benefit both the bar and the PTO. We should advantage of it.

Published in The Journal of the Patent and Trademark Office Society, volume 80, January 1998, pages 5-10.


Endnotes


[1].Copyright 1997 Charles L. Gholz; OBLON, SPIVAK, McCLELLAND, MAIER, & NEUSTADT, P.C.; Arlington, Virginia. This is a slightly revised version of a paper delivered to the Annual Meeting of the Intellectual Property Owners in Washington, D.C. on September 9, 1997.

[2].116 F.3d at 1460, 43 USPQ2d at 1035; footnote omitted.

[3].Since both parties appealed from the board's determination that their claims were anticipated by the reference, this apparently was a case like In re Van Geuns, 946 F.2d 845, 20 USPQ2d 1291 (Fed. Cir. 1991), not a case like Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed. Cir. 1990). That is, based on the logic in In re Van Geuns, it would seem that the party Gechter et al.'s appeal and the party Davidson et al.'s cross-appeal should have been handled as two separate ex parte appeals, each defended by the Solicitor, rather than as a single inter partes appeal. See generally, Gholz, A Critique of Recent Opinions of the Federal Circuit in Patent Interferences, 75 JPTOS 449, 457-63 (1993). However, the court did not mention In re Van Geuns in this opinion.

[4].For one thing, the court indicated in a footnote that, "While not directly presented here, obviousness determinations, when appropriate, similarly must rest on fact findings, adequately explained, for each of the relevant obviousness factors in the Supreme Court's decision in Graham, 383 U.S. at 17-18, 148 USPQ at 467, and its progeny in this court, see, e.g., Loctite, 781 F.2d at 872, 228 USPQ at 97." 116 F.3d at 1460 n.3, 43 USPQ2d at 1035 n.3. For another, the court indicated that it expected its ruling to apply to ex parte appeals as well as to inter partes cases, saying that "Claim construction must also be explicit, at least as to any construction disputed by parties to the interference (or an applicant or patentee in an ex parts proceeding). 116 F.3d at 1460, 43 USPQ2d at 1035; emphasis supplied.

[5].116 F.3d at 1458, 43 USPQ2d at 1033.

[6].116 F.3d at 1459, 43 USPQ2d at 1034.

[7].37 CFR 1.656(g) authorizes (but does not require) interferents to "file an original and four copies of concise proposed findings of fact and conclusions of law." 37 CFR 1.656(g) reads in its entirety as follows:

Any party, separate from its opening brief, but filed concurrently therewith, may file an original and four copies of concise proposed findings of fact and conclusions of law. Any proposed findings of fact shall be in numbered paragraphs and shall be supported by specific references to the record. Any proposed conclusions of law shall be in numbered paragraphs and shall be supported by citation of cases, statutes, or other authority. Any opponent, separate from its opening or reply brief, but filed concurrently therewith, may file a paper accepting or objecting to any proposed findings of fact or conclusions of law; when objecting, a reason must be given. The Board may adopt the proposed findings of fact and conclusions of law in whole or in part.

[8].Some of the administrative patent judges may decide to use findings of fact and conclusions of law instead of (rather than in addition to) conventional opinions.

[9].The method of submission could also vary from judge to judge-i.e., floppy disk, CD-ROM, or modem-to-modem. (Some examiners are already accepting electronic, modem-to-modem transmissions-which, of course, they receive, evaluate, and act on long before the snail mail file copy arrives.)

[10].See footnote 1, supra.

[11].That is, while examiners are, in effect, the appellees in ex parte appeals, they are also the tribunal being appealed from, and they are not represented by counsel. Accordingly, it is probably inappropriate to subject the examiners to the same requirements as private parties.

[12].Cf. 37 CFR 1.656(g), which provides that, if a junior party files proposed findings of fact and conclusions of law with its opening brief, the senior party "separate from its opening . . . brief, but filed concurrently therewith, may file a paper accepting or objecting to any proposed findings of fact or conclusions of law [submitted by the junior party]; when objecting, a reason must be given."

[13].See 35 USC 7(a): "The examiners-in-chief shall be persons of competent . . . scientific ability. . ."

[14].In the interest of complete candor, I note that I represent the appellants in that case.

[15].The Federal Circuit does not permit submission of the entire record in the ordinary case Federal Circuit Rule 30(a)(2) provides in relevant part that "Parts of the record authorized by Rule 30(a)(4) of the Federal Rules, of Appellate Procedure may not be included in the appendix unless they are actually referenced in the briefs." See generally Dunner et al., Court of Appeals for the Federal Circuit: Practice and Procedure § 3.06, "Content of the Record and the Appendix."

[16].Some of the administrative patent judges already require interferents to submit copies of their briefs on floppy disks, so that they can use portions of the parties' arguments, quotations from the record and authorities, etc., in their opinions without having to re-enter them. However, having the relevant portions of the entire record and the cited opinions on a CD-ROM would greatly enhance their current capability.

[17].Of course, counsel would then be responsible for any errors in the CD-ROMS. Hopefully, there would be very few errors in the CD-ROMS, since counsel would presumably have a great incentive to "get them right." Moreover, even if an occasional error slipped through, at least we would no longer be able to blame the errors on the administrative patent judges, as we do now!