in the united states court of appeals - ipwatchdog, inc€¦ · sg gaming, inc. f/k/a bally gaming,...

Appeal Nos. 2020-1399, -1400

In the

United States Court of Appeals for the Federal Circuit

NEW VISION GAMING & DEVELOPMENT, INC.,

Appellant,

v.

SG GAMING, INC. f/k/a BALLY GAMING, INC.,

Appellee.

_____________________________________

Appeals from the United States Patent and Trademark Office,

Patent Trial and Appeal Board in Nos. CBM2018-00005 and CBM2018-00006.

OPPOSED MOTION FOR LEAVE TO FILE BRIEF OF AMICUS CURIAE

US INVENTOR, INC. OUT OF TIME IN SUPPORT OF

APPELLANT’S DUE PROCESS ARGUMENT

August 3, 2020

ROBERT P. GREENSPOON

FLACHSBART & GREENSPOON, LLC

333 NORTH Michigan Avenue

27th Floor

Chicago, Illinois 60601

(312) 551-9500

[email protected]

Counsel for Amicus Curiae

US Inventor, Inc.

COUNSEL PRESS ∙ (866) 703-9373

PRINTED ON RECYCLED PAPER

Case: 20-1399 Document: 45-1 Page: 1 Filed: 08/03/2020 (1 of 42)

1

Under Federal Rules of Appellate Procedure 27 and 29(a), US Inventor, Inc.

respectfully moves this Court for leave to file out of time the attached amicus brief in

support of Appellant’s due process arguments in the above-captioned matter. While

this motion and brief would technically be considered “out of time,” the Court’s July

27, 2020 Order (ECF#42) stayed all briefing from Appellee, in order to give the

United States an opportunity to consider whether to intervene.

MOVANT’S INTEREST

US Inventor, Inc. is a non-profit association of inventors devoted to protecting

the intellectual property of individuals and small companies. It represents its 13,000

inventor and small business members by promoting strong intellectual

property rights and a predictable U.S. patent system through education, advocacy

and reform. US Inventor was founded to support the innovation efforts of the

“little guy” inventors, to ensure that strong patent rights are available to support their

efforts and promote continued innovation.

US Inventor has an interest in this proceeding because its membership has

long believed that the Patent Trial and Appeal Board (“PTAB”) has not lived up to

its promise (and Congressional purpose) of being an unbiased and less costly

alternative to federal court validity litigation. US Inventor conducted statistical

research on PTAB trial outcomes that will assist the Court in addressing the merit of

Appellant’s due process arguments. US Inventor’s amicus brief reports those results.


2

REASON TO GRANT THIS MOTION

This Court historically and routinely has welcomed amicus curiae briefs “filed

by bar associations, trade or industry associations, government entities, and other

interested parties.” Phillips v. AWH Corp., 376 F.3d 1382, 1383-84 (Fed. Cir.

2004). US Inventor, Inc. is one such group, an association of American inventors,

with a particularly keen interest and stake in the outcome of this appeal. Inventors

and patentholders, such as and including those who belong to US Inventor, invest

millions of dollars in obtaining U.S. patents, and for better or worse, spend millions

of dollars in order to protect their businesses from larger corporations that take

calculated risks to infringe a small business owner’s intellectual property.

Specifically, because US Inventor is made up of solo inventors and small

business patent holders, it is sensitive to its constituents’ needs to enforce their patent

rights in tribunals that are unbiased. It is therefore useful for the Court to hear US

Inventor’s perspective on how the PTAB trial system gives rise not only to the

perception of bias, but that its APJ decision makers actually change how they

institute trials based on factors relating to their performance evaluations.

US Inventor also notes that it originated (and posted online for public

viewing) most of the appendix materials that Appellant cites to support its due

process argument. It was US Inventor’s FOIA request that led to the United States

making very recent revelations over key details about APJ performance reviews. The


3

Court and the parties would benefit from hearing US Inventor’s perspective on the

result of its own FOIA requests.

For these reasons, proposed amicus US Inventor, Inc. respectfully asks this

Court to grant leave to file the accompanying brief in support of Appellant’s due

process argument.

While this motion and brief would technically be considered “out of time,”

the Court’s July 27, 2020 Order (ECF#42) stayed all briefing from Appellee, giving

the United States time to consider whether to intervene. Thus no party (nor the

United States if it should intervene) would be prejudiced by this filing. It is expected

that Appellee will receive at least a full 40-day briefing deadline for its principal brief

when and if merits briefing resumes in this case. See Fed. R. App. P. 29(a)(6) (“A

court may grant leave for later filing, specifying the time within which an opposing

party may answer.”). This motion is filed within seven (7) days of the Court’s Order.

By analogy to Supreme Court practice, a call for response there resets the deadline

for amicus briefs. S. Ct. Rule 37.2(a).


4

STATEMENT OF CONSENT OR OPPOSITION

Appellant New Vision Gaming consented, but Appellee SG Gaming, Inc.

declined to consent, to this motion.

Dated: August 3, 2020 Respectfully submitted,

/s/ Robert P. Greenspoon

Robert P. Greenspoon


333 N. Michigan Ave.

Chicago, IL 60601

(312) 551-9500

[email protected]



FORM 9. Certificate of Interest Form 9 (p. 1) July 2020

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

CERTIFICATE OF INTEREST

Case Number

Short Case Caption

Filing Party/Entity

Instructions: Complete each section of the form. In answering items 2 and 3, be specific as to which represented entities the answers apply; lack of specificity may result in non-compliance. Please enter only one item per box; attach additional pages as needed and check the relevant box. Counsel must immediately file an amended Certificate of Interest if information changes. Fed. Cir. R. 47.4(b).

I certify the following information and any attached sheets are accurate and complete to the best of my knowledge. Date: _________________ Signature: Name:

20-1399, -1400New Vision Gaming & Development, Inc. v. SG Gaming, Inc. f/k/a Bally Gaming, Inc.

US Inventor, Inc.


Robert P. Greenspoon08/03/2020



1. RepresentedEntities.

Fed. Cir. R. 47.4(a)(1).

2. Real Party inInterest.

Fed. Cir. R. 47.4(a)(2).

3. Parent Corporationsand Stockholders.

Fed. Cir. R. 47.4(a)(3).

Provide the full names of all entities represented by undersigned counsel in this case.

Provide the full names of all real parties in interest for the entities. Do not list the real parties if they are the same as the entities.

Provide the full names of all parent corporations for the entities and all publicly held companies that own 10% or more stock in the entities.

☐ None/Not Applicable ☐ None/Not Applicable ☐ None/Not Applicable

Additional pages attached

✔

US Inventor, Inc. US Inventor, Inc.



4. Legal Representatives. List all law firms, partners, and associates that (a)appeared for the entities in the originating court or agency or (b) are expected toappear in this court for the entities. Do not include those who have alreadyentered an appearance in this court. Fed. Cir. R. 47.4(a)(4).

None/Not Applicable Additional pages attached

5. Related Cases. Provide the case titles and numbers of any case known to bepending in this court or any other court or agency that will directly affect or bedirectly affected by this court’s decision in the pending appeal. Do not include theoriginating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.R. 47.5(b).


6. Organizational Victims and Bankruptcy Cases. Provide any informationrequired under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).


Robert P. Greenspoon Flachsbart & Greenspoon, LLC

✔

✔


FORM 19. Certificate of Compliance with Type-Volume Limitations Form 19 July 2020


CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATIONS

Case Number:

Short Case Caption:

Instructions: When computing a word, line, or page count, you may exclude any items listed as exempted under Fed. R. App. P. 5(c), Fed. R. App. P. 21(d), Fed. R. App. P. 27(d)(2), Fed. R. App. P. 32(f), or Fed. Cir. R. 32(b)(2).

The foregoing filing complies with the relevant type-volume limitation of the Federal Rules of Appellate Procedure and Federal Circuit Rules because it meets one of the following:

the filing has been prepared using a proportionally-spaced typefaceand includes __________ words.

the filing has been prepared using a monospaced typeface and includes__________ lines of text.

the filing contains __________ pages / __________ words / __________lines of text, which does not exceed the maximum authorized by thiscourt’s order (ECF No. __________).

Date: _________________ Signature:

Name:

20-1399, -1400

New Vision Gaming & Development, Inc. v. SG Gaming, Inc. f/k/a Bally Gaming, Inc.

✔

677

08/03/2020 Robert P. Greenspoon


Save for Filing


Appeal Nos. 2020-1399, -1400

In the

United States Court of Appeals for the Federal Circuit

NEW VISION GAMING & DEVELOPMENT, INC.,

Appellant,

v.

SG GAMING, INC. f/k/a BALLY GAMING, INC.,

Appellee.

_____________________________________

Appeals from the United States Patent and Trademark Office,

Patent Trial and Appeal Board in Nos. CBM2018-00005 and CBM2018-00006.

BRIEF OF AMICUS CURIAE US INVENTOR, INC.

IN SUPPORT OF APPELLANT’S DUE PROCESS ARGUMENT

August 3, 2020

ROBERT P. GREENSPOON


333 NORTH Michigan Avenue

27th Floor

Chicago, Illinois 60601

(312) 551-9500

[email protected]


US Inventor, Inc.

COUNSEL PRESS ∙ (866) 703-9373

PRINTED ON RECYCLED PAPER




CERTIFICATE OF INTEREST

Case Number

Short Case Caption

Filing Party/Entity

Instructions: Complete each section of the form. In answering items 2 and 3, be specific as to which represented entities the answers apply; lack of specificity may result in non-compliance. Please enter only one item per box; attach additional pages as needed and check the relevant box. Counsel must immediately file an amended Certificate of Interest if information changes. Fed. Cir. R. 47.4(b).

I certify the following information and any attached sheets are accurate and complete to the best of my knowledge. Date: _________________ Signature: Name:

20-1399, -1400New Vision Gaming & Development, Inc. v. SG Gaming, Inc. f/k/a Bally Gaming, Inc.

US Inventor, Inc.


Robert P. Greenspoon08/03/2020



1. RepresentedEntities.

Fed. Cir. R. 47.4(a)(1).

2. Real Party inInterest.

Fed. Cir. R. 47.4(a)(2).

3. Parent Corporationsand Stockholders.

Fed. Cir. R. 47.4(a)(3).

Provide the full names of all entities represented by undersigned counsel in this case.

Provide the full names of all real parties in interest for the entities. Do not list the real parties if they are the same as the entities.

Provide the full names of all parent corporations for the entities and all publicly held companies that own 10% or more stock in the entities.

☐ None/Not Applicable ☐ None/Not Applicable ☐ None/Not Applicable

Additional pages attached

✔

US Inventor, Inc. US Inventor, Inc.



4. Legal Representatives. List all law firms, partners, and associates that (a)appeared for the entities in the originating court or agency or (b) are expected toappear in this court for the entities. Do not include those who have alreadyentered an appearance in this court. Fed. Cir. R. 47.4(a)(4).


5. Related Cases. Provide the case titles and numbers of any case known to bepending in this court or any other court or agency that will directly affect or bedirectly affected by this court’s decision in the pending appeal. Do not include theoriginating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.R. 47.5(b).


6. Organizational Victims and Bankruptcy Cases. Provide any informationrequired under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).


Robert P. Greenspoon Flachsbart & Greenspoon, LLC

✔

✔


iv

TABLE OF CONTENTS

CERTIFICATE OF INTEREST ................................................................................. i

TABLE OF CONTENTS .......................................................................................... iv

TABLE OF AUTHORITIES ..................................................................................... v

STATEMENT OF AUTHORSHIP AND FUNDING ............................................. 1

IDENTITY AND INTEREST OF AMICUS ............................................................ 1

ARGUMENT .............................................................................................................. 2

I. THE “OCTOBER EFFECT” DEMONSTRATES THAT THE

COMPENSATION AND PERFORMANCE RATING SYSTEM

AFFECTS APJ DECISION MAKING ............................................................ 2

II. THREE OF THE FOUR APJ PERFORMANCE ELEMENTS ARE

SUSPICIOUSLY SUBJECTIVE ...................................................................... 7

CONCLUSION ......................................................................................................... 11


v

TABLE OF AUTHORITIES

Commonwealth Coatings Corp. v. Continental Casualty Co.,

393 U.S. 145 (1968) ......................................................................................... 10

Marshall v. Jerrico, Inc.,

446 U.S. 238 (1980) ........................................................................................... 7

Tumey v. Ohio,

273 U.S. 510 (1927) ........................................................................................... 8

Ward v. Village of Monroeville,

409 U.S. 57 (1972) ............................................................................................. 8


1

STATEMENT OF AUTHORSHIP AND FUNDING

Under Federal Rule of Appellate Procedure 29(a)(4)(E), Amicus US

Inventor, Inc. states that no party or its counsel authored this brief in whole or part;

no party or its counsel contributed money intended to fund preparing or submitting

the brief; and, no person other than Amicus, its members or counsel contributed

money intended to fund preparing or submitting this brief.

IDENTITY AND INTEREST OF AMICUS

US Inventor, Inc. is a non-profit association of inventors devoted to protecting

the intellectual property of individuals and small companies. It represents its 13,000

inventor and small business members by promoting strong intellectual

property rights and a predictable U.S. patent system through education, advocacy

and reform. US Inventor was founded to support the innovation efforts of the

“little guy” inventors, to ensure that strong patent rights are available to support their

efforts and promote continued innovation.

US Inventor has an interest in this proceeding because its membership has

long believed that the Patent Trial and Appeal Board (“PTAB”) has not lived up to

its promise (and Congressional purpose) of being an unbiased and less costly

alternative to federal court validity litigation. Appellant New Vision Gaming

consented, but Appellee SG Gaming, Inc. declined to consent, to the filing of this

brief, thus US Inventor’s motion for leave accompanies its filing.


2

ARGUMENT

Amicus US Inventor confirms Appellant’s argument that the PTAB trial

system violates due process. The PTAB is not neutral like it should be. First, data

proves that there is an “October Effect:” APJs change their judging standards at the

end and beginning of each performance evaluation period. Second, APJ

performance evaluations are, by design, subjective. A reasonable person would

question whether the PTAB invalidates patents so frequently because its constituent

APJs try to please their budget-minded bosses through revenue-enhancing decision

making.

I. THE “OCTOBER EFFECT” DEMONSTRATES THAT THE

COMPENSATION AND PERFORMANCE RATING SYSTEM

AFFECTS APJ DECISION MAKING

A relevant statistic of PTAB institution decisions varies by nearly a factor of

two, depending on whether institution is decided in September versus October. That

is, the last month of the evaluation year has APJs behaving differently from the first.

This statistic validates the contention in Appellant’s Principal Brief, that “[e]very

time an APJ decides to institute, that patent judge understands that his or her

production scores will likely improve,” such that when “an APJ votes to grant

institution, that APJ is voting to grant himself or herself work on that post-grant

proceeding over the next 12 months.” (Blue Br. 40). This statistic also confirms

Appellant’s argument that there is a “perceived temptation . . . to earn decisional

units or satisfy the APJ’s supervisor . . . [and] concerns over reduced employment


3

due to decreased PTAB revenues.” (Blue Br. 45-46). Unfortunately, bias is not just a

logical inference. It actually appears in PTAB decisional data.

With 97% confidence, the current performance rating system influences APJ

decisions at the institution stage. The character of institution decisions is remarkably

different in September, at the end of APJs’ evaluation period, compared with

October, at the beginning of the next. This “October Effect” is not random.

The Rating Period for APJs starts on October 1 of each year, and goes to the

next September 30 (i.e., the federal government’s fiscal year). E.g., Appx3818. APJ

performance ratings require that they earn at least 84 “decisional units” per year, and

that year ends September 30. Appx3818, Appx3823. Obviously, APJs issue

institution decisions throughout the year. This includes in September (the end of the

fiscal year when APJs have already earned most of their decisional units) and

October (the beginning, when the counter resets to zero).

Standard statistical methods can be used to test whether, in the aggregate,

APJs change how they judge institution based on when in the performance

evaluation calendar they institute a trial. We can test this hypothesis: after final

outcomes are known, we can go back to test the quality of institution decisions. If

institutions during some time periods tend to result in proportionally more final

decisions favorable to the patentee, and institutions during other time periods result

in proportionally more final decisions favorable to petitioners, and those time

periods correlate with APJs’ annual salary reviews, a reasonable person would

question whether the compensation cycle influences APJ likelihood to institute. The


4

relevant statistic, for a given time slice of institution decisions, is the ratio of

institutions that result in affirming at least some claims, versus institutions that result

in all claims cancelled or amended.

To give it a label, let’s coin that statistic the “Questionable Institution Ratio.”

For example, imagine a given month that had 20 decisions granting institution, where

5 (over the next 12 months) resulted in an adjudicated final decision that vindicated

the patentee, but 15 resulted in adjudicated invalidation or amendment of all claims.

The Questionable Institution Ratio for such a month would be 0.333 (5 divided by

15). That ratio should be relatively constant over time, with any variance caused by

randomness.

This is useful not because there is an optimal ratio (there is not), but rather

because it allows comparison of the judging behavior of the same decision makers in

consecutive periods.1

1 The Questionable Institution Ratio controls for everything except judging trends.

One assumes that when the month changes from September (end of year) to

October (beginning of year), the pool of APJs does not change. One also assumes

that, on average, filed petitions have equal merit whether they get decided for

institution in September versus October. And since the data point is a ratio, this

controls against any suggestion that any observed effect arises from a collective APJ

shift of absolute quantities of institution decisions from one month to the next (“end-

loading”), or from the next month to the previous one (“front-loading”).


5

Amicus gathered data to compare the Questionable Institution Ratio for the

month of September to the month of October for the six consecutive years for which

data are available, 2013-2018.2 The results are, in a word, shocking:

Year September

Institutions:

Some

patentee

success (all

claims

patentable

or mixed)

September

Institutions:

Petitioner

success (all

claims

unpatentable

or amended)

September

Ratio

October

Institutions:

Some

patentee

success (all

claims

patentable

or mixed)

October

Institutions:

Petitioner

success (all

claims

unpatentable

or amended)

October

Ratio

2013 2 15 0.133 5 10 0.500

2014 10 47 0.213 13 48 0.271

2015 13 35 0.371 24 34 0.706

2016 16 41 0.390 12 24 0.500

2017 9 22 0.409 19 34 0.559

2018 8 29 0.276 12 24 0.500

The result: in every observed year for which there are data, the Questionable

Institution Ratio is higher in October than in September—nearly twice as high

(0.506/0.299).

This means that, since the inception of PTAB trials, standards for institution

are systematically and significantly more favorable to petitioners in October than in

September. Relatively more Questionable Institutions happen in October. Relatively

2 The undersigned used Lex Machina to collect the raw data. Raw data printouts of

Lex Machina reports that confirm these numerical inputs are attached to this brief as

an Addendum.


6

more patentees have to deal with trials that should never have been instituted in the

first place.

This effect is statistically significant. A standard statistical confidence interval

test shows that, with 97% confidence, the higher Questionable Institution Ratio in

October is not caused by random chance.3 This is an irrefutable “October Effect.”

Statistics show that APJ judging changes (with 97% confidence) in correlation with

the annual reset of their decisional unit counter to zero.

What is the explanation for such a large and significant disparity between

September and October institution rates? Appellant’s due process challenge does

not depend on an actual explanation or showing of actual bias, just the “possible

temptation,” and erosion of the “feeling, so important to a popular government, that

justice has been done.” Marshall v. Jerrico, Inc., 446 U.S. 238, 242 (1980).

Appellant’s principal brief showed the temptation; these statistics show the existence

of an actual effect: a skew in decisional outcomes. That skew is sufficient to show a

3 The undersigned performed statistical testing using Microsoft Excel formulas. This

application permitted calculation of the mean and standard deviation of each

month’s column for the Questionable Institution Ratio. The standard deviation then

became one of three inputs into a confidence interval calculation, along with N=6

and alpha (or p-value) set to 0.03. Respective ranges resulted from calculation of the

mean plus or minus this confidence interval. These ranges did not overlap when

alpha was set as low as 0.03. Hence there is 97% confidence that the observed

differences from September to October do not arise from random chance. It is

generally accepted that nonoverlapping ranges, even at only 95% confidence,

indicates statistical significance. Calculating 97% confidence shows even more

significance than that.


7

due process violation. While there is no need to attribute a reason for the skew, one

cannot rule out that APJs are more likely to grant less meritorious petitions at certain

times in the year to “stuff the pipeline” as a guarantee of future work. Regardless,

the mere existence of the effect, and its statistical clarity, are troubling.

The October Effect reveals the merit of Appellant’s due process argument. If

the PTAB system were truly just and free of perceptible bias, judging statistics at the

PTAB would not systematically and significantly change based on timing within a

performance evaluation year. If concern among APJs for refilling their decisional

unit pipeline is not the reason for this effect, the Patent Office should come forward

to explain what that reason is.

II. THREE OF THE FOUR APJ PERFORMANCE ELEMENTS ARE

SUSPICIOUSLY SUBJECTIVE

A second fact supports Appellant’s due process argument. The appendix

documents show that APJ salary “can be increased, up to five percent, depending on

the APJ’s numerical rating and final Performance Rating, Appx3881, which

necessarily turns on the APJ’s production of ‘decisional units.’” Appx3822-3824;

Blue Br. 21. Appellant has focused on the “Production” “performance element.”

Those same appendix APJ “Performance Appraisal Plans” and “Classification and

Performance Management Record” documents, e.g., Appx3814-3838 (APJ

performance evaluation forms for 2018) show that additional suspicious factors

should lead the Court to conclude that APJ decision making is perceptibly biased in

a way that violates due process.


8

Annual performance evaluations of APJs are highly subjective, and subject to

the eye of a beholder who happens to be a Leadership APJ with budget

responsibility. When there is a combination of one class of adjudication outcomes

more budget-friendly than another, subjective evaluation criteria over adjudicator

performance, and evaluation by superiors who simultaneously care about meeting

the budget, the system violates due process. Ward v. Village of Monroeville, 409

U.S. 57, 60 (1972); Tumey v. Ohio, 273 U.S. 510 (1927).

Only 35% of an APJ’s performance rating turns on Production. Three other

“performance elements” make up 65%. These are “Quality,” “Supporting the

Mission of the Board / Leadership” and “Internal/External Stakeholder

Interactions,” constituting, respectively, 35%, 10% and 20%. On their face, these

“performance elements” are subjective. The subjectivity becomes more apparent

when considering their official description.

The “Quality” performance element (35%) requires supervisory personnel to

evaluate whether written decisions “are logically presented, soundly reasoned, have

accurate analysis and are concise,” all with “[p]roper judicial tone.” Appx3819. They

also evaluate whether the APJ provides “sound and helpful input” during

deliberations. Id. They also evaluate whether APJ oral arguments are “conducted

skillfully with proper judicial tone.” Appx3820. An APJ is supposed to review draft

opinions of other panelists to offer “frank, accurate and timely feedback on the

quality of the decisions.” Id. An APJ should avoid “undue delay” when doing so,


9

and be “prompt and timely.” Id. All of these aspects of the “Quality” performance

element are subjective.

The “Supporting the Mission of the Board / Leadership” performance

element (10%) requires supervisory personnel to evaluate whether an APJ “[s]ets a

professional example for others to emulate.” Appx3826. They must evaluate

whether APJs “seek constructive solutions . . . to achieve higher levels of

performance.” Id. Supervisory personnel must also evaluate whether an APJ

“[i]nspires and empowers other internal stakeholders by example and by

encouragement to think positively.” Appx3827. All of these aspects of the

“Supporting the Mission of the Board / Leadership” performance standard are

subjective. As indicated by Appellant (Blue Br. 44-46), APJs are expressly rewarded

for a “support management” approach to judging.

The “Internal/External Stakeholder Interactions” performance element (20%)

requires supervisory personnel to evaluate whether APJs address inquiries

“courteously.” Appx3831. APJs are judged whether their stakeholder interactions

are “highly professional and appropriate to the nature of the Judge’s position, and to

preserve the dignity of the Board.” Appx3832. Decisions need to be processed and

forwarded “promptly.” Id. All of these aspects of the “Internal/External Stakeholder

Interactions” performance element are subjective.

This intrinsic subjectivity raises concerns that amplify those Appellant raised

within its due process arguments. As Appellant ably describes, the same Leadership

APJs who make line APJ performance evaluations simultaneously have budget


10

responsibilities. A typical APJ who enters a performance evaluation with a track

record of pro-patentee decision making is taking a grave risk. A record of pro-

patentee decisions threatens the popularity of PTAB trials among its paying

customers: petitioners / accused infringers. Pro-patentee decision making, beyond

the norm, would stand out to budget-minded Leadership APJs as a threat to annual

receipts. This, in combination with the rank subjectivity of performance evaluation

criteria, and their admitted emphasis on supporting the mission of the Board and its

Leadership, incentivizes APJs in only one direction—please the bosses.

In substance, this means a typical APJ will have an incentive to steer his or her

decisions in a petitioner-friendly direction. The effect may be subtle and

subconscious, but even a small effect violates due process. Commonwealth Coatings

Corp. v. Continental Casualty Co., 393 U.S. 145, 148 (1968) (in reviewing the

Tumey line of cases, noting that even small temptations violate due process). A

reasonable APJ would know that avoiding a negative job evaluation and boosting

bonus chances depends on discrete scores, subjectively bestowed by Leadership

APJs charged with guaranteeing agency funding. In turn, reasonable stakeholders in

the process (such as patentees dragged into PTAB trials involuntarily) would

question whether budget needs drive adjudicative outcomes in a systematically unfair

way. That very uncertainty is sufficient to violate due process, even without

attribution of actual bias to any individual.

In short, a combination of four factors dooms due process review of PTAB

trials: (a) APJ performance criteria are subjective, (b) those evaluating that


11

performance bear budget responsibility, (c) the performance evaluation scores

determine win or loss of significant financial rewards by those same APJs, and (d)

one class of adjudication outcomes (i.e., invalidating claims) is more budget-friendly

than another (i.e., upholding claims). Under camouflage of subjective notions of

“quality,” “support” and “courtesy,” “professionalism” and “dignity,” an evaluator

may bestow or withhold whatever number of performance scoring points makes the

difference between an APJ bonus or no APJ bonus. Any adjudication system with

those four factors will be systematically biased in favor of invalidation of patents.

That is anathema to a judicial process that our Constitution guarantees to be free of

bias, or even the perception of bias.

CONCLUSION

The PTAB trial system violates due process. Data proves that there is an

“October Effect:” APJs change their judging standards at the end and beginning of

each performance evaluation period. In addition, APJ performance evaluations are

subjective. A reasonable person would question whether APJs try to please their

budget-minded bosses through revenue-enhancing decision making that incentivizes

invalidating patents.

(SIGNATURE BLOCK ON FOLLOWING PAGE)


12

Dated: August 3, 2020 Respectfully submitted,

/s/ Robert P. Greenspoon



333 N. Michigan Ave.

Chicago, IL 60601

(312) 551-9500

[email protected]



ADDENDUM

ADD-1


TABLE OF CONTENTS TO ADDENDUM

September 2013 Lex Machina PTAB Trial Statistics ....................................... ADD-1






October 2013 Lex Machina PTAB Trial Statistics ........................................... ADD-7



October 2016 Lex Machina PTAB Trial Statistics ......................................... ADD-10




Patent Trial and Appeal Board

PTAB Trials

Showing 31 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2013-09-01 and 2013-09-30;

sorted by most recent document activity.

Trial Flow

Petitioner Win 18 58% Patent Owner Win 7 23% Partial 2 6%

All %s out of 31 Petitioned trials

Petition Institution Decision Final Decision

Petition 31 100%

Open Pre-Institution 0

Procedurally Dismissed 0

Settled 0

Patent Owner Disclaimed 0

Denied Institution 13%

Instituted 30 97%

Open Post-Institution 0

Joined To Other Trial 4 13%


Settled 6 19%

Patent Owner Disclaimed 3 10%

All Claims Upheld 0

Mixed Claim Findings 2 6%

All Claims Unpatentable 14 45%

All Claims Amended 1 3%

31 PTAB trials Page 1 of 4

https://law.lexmachina.com/court/ptab/cases/?filing_date-from=2011-12-01&filing_date-to=2020-07-28&institution_decision_date-

ADD-2



PTAB Trials



Trial Flow




Petition 123 100%



Settled 0



Instituted 97 79%



Procedurally Dismissed 4 3%

Settled 20 16%


All Claims Upheld 4 3%



All Claims Amended 0



ADD-3



PTAB Trials



Trial Flow




Petition 117 100%



Settled 0



Instituted 86 74%




Settled 17 15%








ADD-4



PTAB Trials



Trial Flow




Petition 123 100%



Settled 0



Instituted 88 72%




Settled 18 15%








ADD-5



PTAB Trials



Trial Flow




Petition 109 100%



Settled 0



Instituted 75 69%Open Post-Institution 0



Settled 31 28%








ADD-6



PTAB Trials



Trial Flow




Petition 85 100%



Settled 0



Instituted 64 75%




Settled 15 18%





All Claims Amended 3 4%



ADD-7



PTAB Trials



Trial Flow




Petition 25 100%



Settled 0



Instituted 22 88%


Joined To Other Trial 0


Settled 6 24%








ADD-8



PTAB Trials



Trial Flow




Petition 137 100%



Settled 0



Instituted 129 94%




Settled 19 14%








ADD-9



PTAB Trials



Trial Flow




Petition 114 100%



Settled 0



Instituted 93 82%




Settled 20 18%








ADD-10



PTAB Trials



Trial Flow




Petition 81 100%



Settled 0



Instituted 67 83%




Settled 10 12%








ADD-11



PTAB Trials



Trial Flow




Petition 147 100%



Settled 0



Instituted 84 57%Open Post-Institution 0



Settled 12 8%








ADD-12



PTAB Trials



Trial Flow




Petition 97 100%



Settled 0



Instituted 69 71%




Settled 19 20%








ADD-13


FORM 19. Certificate of Compliance with Type-Volume Limitations Form 19 July 2020


CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATIONS

Case Number:

Short Case Caption:

Instructions: When computing a word, line, or page count, you may exclude any items listed as exempted under Fed. R. App. P. 5(c), Fed. R. App. P. 21(d), Fed. R. App. P. 27(d)(2), Fed. R. App. P. 32(f), or Fed. Cir. R. 32(b)(2).

The foregoing filing complies with the relevant type-volume limitation of the Federal Rules of Appellate Procedure and Federal Circuit Rules because it meets one of the following:

the filing has been prepared using a proportionally-spaced typefaceand includes __________ words.

the filing has been prepared using a monospaced typeface and includes__________ lines of text.

the filing contains __________ pages / __________ words / __________lines of text, which does not exceed the maximum authorized by thiscourt’s order (ECF No. __________).

Date: _________________ Signature:

Name:

20-1399, -1400

New Vision Gaming & Development, Inc. v. SG Gaming, Inc. f/k/a Bally Gaming, Inc.

✔

2,583

08/03/2020 Robert P. Greenspoon


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in the united states court of appeals - ipwatchdog, inc€¦ · sg gaming, inc. f/k/a bally gaming,...

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