Written by: McKenzie Thomsen
Consistency is one of the founding principles of the United States’ system of law. The rule of law requires “law be applied equally, without unjustifiable differentiation.”[1] The Patent and Trademark Office [PTO] and Patent Trial and Appeals Board [PTAB] use guidelines and precedent as standards for granting and reviewing validity of patents. The guidelines however, should be under some scrutiny for their inconsistent application. This inconsistency has heightened in the past few months.
Most recently, on Tuesday October 9, 2018, SSL Services LLC [SSL] asked the Supreme Court to review section 325(d) of the Patent Act, the Multiple Proceedings rule.[2] The Multiple Proceedings Rule states that the PTAB “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[3]
SSL’s patent for a system establishing virtual private networks previously survived nine validity challenges, but lost the tenth challenge brought by Cisco Systems, Inc. [Cisco]. Cisco challenged the patent’s validity using references that were used in previous re-examinations. SSL argued that under the Multiple Proceedings rule, the challenge should be rejected because the prior art references were used in previous validity challenges. However, the court allowed the challenge using these references reasoning that Cisco was not part of the previous examinations and Cisco was challenging claims that were previously unchallenged. Upset with the outcome, SSL petitioned for writ of certiorari stating, “The board’s multifactor standard for applying section 325(d) has resulted in no workable standard at all, thus producing inconsistent outcomes.”[4]
The Multiple Proceedings rule is applied discretionarily and thus easily applied inconsistently as SSL argues happened in its lawsuit. Further, on September 24, 2018, the Federal Circuit found against inventor, Hyatt, and upheld the section of the Manual of Patent Examining Procedure [MPEP] that allows the patent office to reopen prosecution after an appeal and reject claims.[5] Hyatt filed an appeal to the PTAB when the PTO decided to reopen prosecution. It was rejected, and Hyatt filed suit against the PTO asking for the repeal of said section of MPEP, stating “An examiner’s decision not to reopen prosecution is another condition that must be satisfied before an appeal reaches the board. These conditions on the PTAB reaching the merits of an appeal do not conflict with the requirement that the PTAB reviews rejections.”[6]
When a patent is reopened the appeal ends and the case returns to the patent examiner and the prosecution phase. The rate at which prosecutions are reopened varies and is “highly dependent on individual examiners.”[7] The ability to reopen prosecutions indefinitely can wear down an inventor, especially considering that getting a patent costs tens of thousands of dollars and so being drawn back into prosecution can be a worst-case scenario for many inventors and even end the pursuit of getting a patent.
Again, the application of the law of patent’s is inconsistent because it is too discretionary.
These are but two examples of allegations against the PTO and PTAB alleging inconsistent application of patent law. Unless the patent law system can justify the inconsistent application of its law, these cases show that the system is in danger of not being in line with the longstanding public policy of consistency that shields citizens from an unfair system of law.
[1] Steyn, Karen, Consistency – A Principle of Public Law?, Judicial Review (May 1, 2015), https://doi.org/10.1080/10854681.1997.11426924.
[2] Bultman, Matthew, Justices Urged to Mull Repeat Patent Challenges Under AIA, Law360 (Oct. 10, 2018), https://www.law360.com/ip/articles/1090719/justices-urged-to-mull-repeat-patent-challenges-under- aia?nl_pk=d73da8e3-976b-4657-afe0- 0dd35cb81961&utm_source=newsletter&utm_medium=email&utm_campaign=ip.
[3] 35 USC § 325(d) (2012).
[4] Bultman, supra note 2.
[5] Bultman, Matthew, Fed. Circ. Preserves Rule Inventors Say Can Be A Burder, Law360 (Oct. 5, 2018),
https://www.law360.com/articles/1089917/fed-circ-preserves-rule-inventors-say-can-be-a-burden?nl_pk=d73da8e3- 976b-4657-afe0-0dd35cb81961&utm_source=newsletter&utm_medium=email&utm_campaign=special.
[6] Id.
[7] Id.
