The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of issues arising from the differences between Article I agencies (and the courts created therein and governed by the Administrative Procedures Act; 5 U.S.C. § 554) and Article III courts.  Some of these stem from the nature of the two types of courts (with the Chief Justice of the U.S. Supreme Court noting these differences somewhat acerbically in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, to whit "we usually mean something different when we use the word 'judge"'), and some from legitimate differences between the goals of the two types of tribunals.  For example, while the Federal Circuit has been tasked (and cognizant of it) with providing doctrinal harmony in U.S. patent law (however much its success in this endeavor is appreciated), U.S. district courts are primarily concerned with disputes between parties and applying the law properly to these disputes.  Article I courts, and the PTAB in particular, have another legitimate goal:  providing consistent application of the law to applicants and, in the case of implementing the adversarial avenues the AIA created, developing a consistent body of procedural and substantive law.  To this end, for example, the PTAB has designated some (albeit few) cases precedential, thus providing notice to the public regarding how the Office can be expected to conduct the "trials" mandated by the statute.

How the PTAB and U.S. Patent and Trademark Office administration has attempted to provide this consistency has created controversy, however.  One manifestation of the PTAB's behavior has been noted by both the Federal Circuit and the Supreme Court:  the practice (again, infrequently) of expanding panels by adding USPTO officials (typically senior members of the PTAB "judiciary," inter alia the Chief Administrative Patent Judge) to cases deemed to be important in creating precedential consistency.  This happened most recently in Ericsson v. Regents of the University of Minnesota and LSI Logic v. Regents of the University of Minnesota, which some commentators have noted are strikingly similar.  One of these important issues before the PTAB is the effect of sovereign immunity on the Board's jurisdiction in deciding IPRs; the Federal Circuit has recently held that under some circumstances States (more typically, state universities deemed to be acting as "arms of the states") can invoke sovereign immunity to strip the PTAB of the authority to determine whether their patents are valid (see Covidien LP v. Univ. of Fla. Research Found., Inc., Case IPR2016-01274 (PTAB Jan. 25, 2017); NeoChord, Inc. v. Univ. of Md., Balt., Case IPR2016-00208 (PTAB May 23, 2017); and Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., Case IPR2016-01914 (PTAB July 13, 2017)).

The most controversial attempt to use sovereign immunity to avoid invalidation by IPR is assignment of patent rights to Native American tribes, which have the legal status of domestic sovereign nations.  Such a stratagem has been employed by Allergan to protect its Restasis^® product, wherein the company assigned its Orange Book-listed patents (U.S. Patent Nos. 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930, and 9,248,191) to the St. Regis Mohawk Tribe (see "Allergan Avails Itself of Sovereign Immunity").  The Tribe has asserted its sovereign immunity rights before the PTAB, which has yet to rule (see "Mohawk Nation Exercises Sovereign Immunity in Inter Partes Review").  And in an unprecedented procedural decision, the PTAB has delayed rendering its decision in favor of soliciting amicus curiae (or perhaps more properly, amicus collegiae) briefs from "any interested party" in advance of a hearing on the Tribe's motion to dismiss in favor of its sovereign immunity rights (to be discussed in a future post).

On January 2, the Tribe filed a request for oral hearing that included a "request for discovery into the identity and impartiality of the merits panel assigned to this case."  Citing 37 C.F.R. § 42.51, the Tribe contended that it is entitled to such discovery if it can show it to be "in the interests of justice."  That interest, according to the request, is "due process, the impartiality of the merits panel in this case, and whether political or third-party pressure has been asserted to reach an outcome inconsistent with the binding Supreme Court and Federal Circuit precedents," which under other circumstances might seem excessive.  But here the request cites portions of the Administrative Procedures Act (specifically, 5 U.S.C. § 554(d)) that others have alleged, and it seems reasonable to suspect, might be bruised if not violated by the enlarged panel practices employed by the PTAB, i.e., a prohibition on members of a PTAB panel from being "subject to the supervision or direction of an employee or agent engaged in the performance of investigative or prosecuting functions for an agency."  In addition, the request cites the prohibition on ex parte communications under 5 U.S.C. § 557 or, if such communications have occurred, that they be included in the public record.

The basis asserted in the request for these apprehensions include the interest members of Congress have shown (in both Houses) regarding assertion of sovereign immunity before the PTAB in IPR procedures, and the possibility that the panel "has been" expanded to include supervisory or administrative USPTO personnel, including by name Chief Judge David Ruschke.  The Chief Judge is a source of potential suspicion regarding his impartiality due to his "prior public comments on the issue of sovereign immunity and this case."  (It may be recalled that the ACLU voiced similar concerns in a different context over the impartiality of then-Chief Judge Rader in AMP v. Myriad Genetics; see "Appellees Move for Recusal of Chief Judge Rader in AMP v. USPTO Appeal").  The request also asserts that "[t]he USPTO, and its executive leadership, has a direct pecuniary interest in the outcome of this case because the Patent Owner's motion could have a non-trivial impact on the fees collected by PTAB for IPRs" and that "[t]here is also a strong possibility of interested parties (both political and private) that may be seeking to influence the outcome of this case."

The request contains a detailed and specific list of all information the Tribe wishes to obtain in discovery:

• The makeup of the merits panel in these proceedings,
• The date each APJ was added to the panel in these proceedings,
• How the makeup of our merits panel was decided,
• Who determined the makeup of our merits panel,
• When that decision was made,
• The disclosure of all ex parte communications concerning our case, the Allergan/Tribe transactions, or sovereign immunity with any member of our merits panel, both before and after they were added to our merits panel,
• All communications members of our merits panel have had with Congress or the Executive Branch concerning our case or sovereign immunity,
• Communications our merits panel members have had with anyone concerning sovereign immunity or this proceeding prior to their addition to the panel,
• The assignment of Tina H. Hulse, Christopher Paulraj, Sheridan Snedden, David Ruschke, Scott Boalick, Jacqueline Bonilla, and Scott Weidenfeller to other IPR proceedings involving the Petitioners,
• The dates David Rushcke, Scott Boalick, Jacqueline Bonilla, and Scott Wedenfeller were added to the panels of IPR2017-01068 and IPR2017-01186,
• Ex parte communications with the merits panel in IPR2017-01068 and IPR2017-01186 concerning sovereign immunity or those proceedings,
• Communications David Ruschke, Scott Boalick, Jacqueline Bonilla, and Scott Weidenfeller had prior to joining the merits panel in IPR2017-01068 and IPR2017-01186 concerning sovereign immunity or that proceeding,
• Any communications concerning the opinions filed in IPR2017-01068 and IPR2017-01186, including the concurrence,
• Communications between Jacqueline Harlow and Jennifer Bisk concerning sovereign immunity or the motions to dismiss based on sovereign immunity in IPR2017-01068 and IPR2017-01186,
• Any policy determinations made by the USPTO or PTAB concerning sovereign immunity,
• The methodology used to determine the annual bonuses (or other merits based compensation) for each member of our merits panel,
• The annual reviews of all members of our merits panel, including the identification of the person who performs the review, the criteria used for the review, and the outcome of the review, and
• Materials related to any PTAB projections or predictions for IPR fees in 2018, including any potential for reductions in fee income if sovereign immunity were respected by PTAB or upheld on appeal.

The chimerical nature of IPR and other adversarial review procedures established by the AIA, which are sometimes characterized as being in the nature of a trial and other times (when the characterization suits) are analogized to any other administrative procedure, coupled with the disclosure seemingly by accident during oral argument (in Yissum Research Development Co. v. Sony Corp.) that the USPTO administration can and has intervened to alter or expand panels has raised these concerns regarding whether the PTAB is observing the procedural niceties that ensure due process will be satisfied.  Discovery before the PTAB, as opposed to in district court is not governed by the Federal Rules of Civil Procedure and is much more restricted in scope.  It would, in this instance, seem prudent for the Board to disclose at least some of the information the Tribe seeks, if only to reduce the likelihood of facing an even more skeptical Court when this case (as it surely will absent Congressional action) makes its way to the Supreme Court.