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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
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.
Case: 20-1399 Document: 45-1 Page: 2 Filed: 08/03/2020 (2 of 42)
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
Case: 20-1399 Document: 45-1 Page: 3 Filed: 08/03/2020 (3 of 42)
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).
Case: 20-1399 Document: 45-1 Page: 4 Filed: 08/03/2020 (4 of 42)
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
FLACHSBART & GREENSPOON, LLC
333 N. Michigan Ave.
Chicago, IL 60601
(312) 551-9500
Counsel for Amicus Curiae
Case: 20-1399 Document: 45-1 Page: 5 Filed: 08/03/2020 (5 of 42)
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. Greenspoon
Robert P. Greenspoon08/03/2020
Case: 20-1399 Document: 45-1 Page: 6 Filed: 08/03/2020 (6 of 42)
FORM 9. Certificate of Interest Form 9 (p. 2) July 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.
Case: 20-1399 Document: 45-1 Page: 7 Filed: 08/03/2020 (7 of 42)
FORM 9. Certificate of Interest Form 9 (p. 3) July 2020
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).
None/Not Applicable Additional pages attached
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).
None/Not Applicable Additional pages attached
Robert P. Greenspoon Flachsbart & Greenspoon, LLC
✔
✔
Case: 20-1399 Document: 45-1 Page: 8 Filed: 08/03/2020 (8 of 42)
FORM 19. Certificate of Compliance with Type-Volume Limitations Form 19 July 2020
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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
Robert P. Greenspoon
Save for Filing
Case: 20-1399 Document: 45-1 Page: 9 Filed: 08/03/2020 (9 of 42)
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
FLACHSBART & GREENSPOON, LLC
333 NORTH Michigan Avenue
27th Floor
Chicago, Illinois 60601
(312) 551-9500
Counsel for Amicus Curiae
US Inventor, Inc.
COUNSEL PRESS ∙ (866) 703-9373
PRINTED ON RECYCLED PAPER
Case: 20-1399 Document: 45-2 Page: 1 Filed: 08/03/2020 (10 of 42)
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. Greenspoon
Robert P. Greenspoon08/03/2020
Case: 20-1399 Document: 45-2 Page: 2 Filed: 08/03/2020 (11 of 42)
FORM 9. Certificate of Interest Form 9 (p. 2) July 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.
Case: 20-1399 Document: 45-2 Page: 3 Filed: 08/03/2020 (12 of 42)
FORM 9. Certificate of Interest Form 9 (p. 3) July 2020
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).
None/Not Applicable Additional pages attached
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).
None/Not Applicable Additional pages attached
Robert P. Greenspoon Flachsbart & Greenspoon, LLC
✔
✔
Case: 20-1399 Document: 45-2 Page: 4 Filed: 08/03/2020 (13 of 42)
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
Case: 20-1399 Document: 45-2 Page: 5 Filed: 08/03/2020 (14 of 42)
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
Case: 20-1399 Document: 45-2 Page: 6 Filed: 08/03/2020 (15 of 42)
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.
Case: 20-1399 Document: 45-2 Page: 7 Filed: 08/03/2020 (16 of 42)
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
Case: 20-1399 Document: 45-2 Page: 8 Filed: 08/03/2020 (17 of 42)
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
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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”).
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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.
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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.
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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.
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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,
Case: 20-1399 Document: 45-2 Page: 14 Filed: 08/03/2020 (23 of 42)
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
Case: 20-1399 Document: 45-2 Page: 15 Filed: 08/03/2020 (24 of 42)
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
Case: 20-1399 Document: 45-2 Page: 16 Filed: 08/03/2020 (25 of 42)
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)
Case: 20-1399 Document: 45-2 Page: 17 Filed: 08/03/2020 (26 of 42)
12
Dated: August 3, 2020 Respectfully submitted,
/s/ Robert P. Greenspoon
Robert P. Greenspoon
FLACHSBART & GREENSPOON, LLC
333 N. Michigan Ave.
Chicago, IL 60601
(312) 551-9500
Counsel for Amicus Curiae
Case: 20-1399 Document: 45-2 Page: 18 Filed: 08/03/2020 (27 of 42)
ADDENDUM
ADD-1
Case: 20-1399 Document: 45-2 Page: 19 Filed: 08/03/2020 (28 of 42)
TABLE OF CONTENTS TO ADDENDUM
September 2013 Lex Machina PTAB Trial Statistics ....................................... ADD-1
September 2014 Lex Machina PTAB Trial Statistics ....................................... ADD-2
September 2015 Lex Machina PTAB Trial Statistics ....................................... ADD-3
September 2016 Lex Machina PTAB Trial Statistics ....................................... ADD-4
September 2017 Lex Machina PTAB Trial Statistics ....................................... ADD-5
September 2018 Lex Machina PTAB Trial Statistics ....................................... ADD-6
October 2013 Lex Machina PTAB Trial Statistics ........................................... ADD-7
October 2014 Lex Machina PTAB Trial Statistics ........................................... ADD-8
October 2015 Lex Machina PTAB Trial Statistics ........................................... ADD-9
October 2016 Lex Machina PTAB Trial Statistics ......................................... ADD-10
October 2017 Lex Machina PTAB Trial Statistics ......................................... ADD-11
October 2018 Lex Machina PTAB Trial Statistics ......................................... ADD-12
Case: 20-1399 Document: 45-2 Page: 20 Filed: 08/03/2020 (29 of 42)
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%
Procedurally Dismissed 0
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
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ADD-2
Case: 20-1399 Document: 45-2 Page: 21 Filed: 08/03/2020 (30 of 42)
Patent Trial and Appeal Board
PTAB Trials
Showing 123 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2014-09-01 and 2014-09-30;
sorted by most recent document activity.
Trial Flow
Petitioner Win 55 45% Patent Owner Win 54 44% Partial 6 5%
All %s out of 123 Petitioned trials
Petition Institution Decision Final Decision
Petition 123 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 2621%
Instituted 97 79%
Open Post-Institution 0
Joined To Other Trial 8 7%
Procedurally Dismissed 4 3%
Settled 20 16%
Patent Owner Disclaimed 8 7%
All Claims Upheld 4 3%
Mixed Claim Findings 6 5%
All Claims Unpatentable 47 38%
All Claims Amended 0
123 PTAB trials Page 1 of 9
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ADD-3
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Patent Trial and Appeal Board
PTAB Trials
Showing 117 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2015-09-01 and 2015-09-30;
sorted by most recent document activity.
Trial Flow
Petitioner Win 47 40% Patent Owner Win 56 48% Partial 5 4%
All %s out of 117 Petitioned trials
Petition Institution Decision Final Decision
Petition 117 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 3126%
Instituted 86 74%
Open Post-Institution 0
Joined To Other Trial 9 8%
Procedurally Dismissed 0
Settled 17 15%
Patent Owner Disclaimed 12 10%
All Claims Upheld 8 7%
Mixed Claim Findings 5 4%
All Claims Unpatentable 35 30%
All Claims Amended 0
117 PTAB trials Page 1 of 16
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ADD-4
Case: 20-1399 Document: 45-2 Page: 23 Filed: 08/03/2020 (32 of 42)
Patent Trial and Appeal Board
PTAB Trials
Showing 123 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2016-09-01 and 2016-09-30;
sorted by most recent document activity.
Trial Flow
Petitioner Win 47 38% Patent Owner Win 67 54% Partial 2 2%
All %s out of 123 Petitioned trials
Petition Institution Decision Final Decision
Petition 123 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 3528%
Instituted 88 72%
Open Post-Institution 0
Joined To Other Trial 7 6%
Procedurally Dismissed 0
Settled 18 15%
Patent Owner Disclaimed 6 5%
All Claims Upheld 14 11%
Mixed Claim Findings 2 2%
All Claims Unpatentable 41 33%
All Claims Amended 0
123 PTAB trials Page 1 of 15
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ADD-5
Case: 20-1399 Document: 45-2 Page: 24 Filed: 08/03/2020 (33 of 42)
Patent Trial and Appeal Board
PTAB Trials
Showing 109 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2017-09-01 and 2017-09-30;
sorted by most recent document activity.
Trial Flow
Petitioner Win 24 22% Patent Owner Win 69 63% Partial 5 5%
All %s out of 109 Petitioned trials
Petition Institution Decision Final Decision
Petition 109 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 3431%
Instituted 75 69%Open Post-Institution 0
Joined To Other Trial 11 10%
Procedurally Dismissed 0
Settled 31 28%
Patent Owner Disclaimed 2 2%
All Claims Upheld 4 4%
Mixed Claim Findings 5 5%
All Claims Unpatentable 22 20%
All Claims Amended 0
109 PTAB trials Page 1 of 14
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ADD-6
Case: 20-1399 Document: 45-2 Page: 25 Filed: 08/03/2020 (34 of 42)
Patent Trial and Appeal Board
PTAB Trials
Showing 85 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2018-09-01 and 2018-09-30;
sorted by most recent document activity.
Trial Flow
Petitioner Win 31 36% Patent Owner Win 45 53% Partial 3 4%
All %s out of 85 Petitioned trials
Petition Institution Decision Final Decision
Petition 85 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 2125%
Instituted 64 75%
Open Post-Institution 0
Joined To Other Trial 6 7%
Procedurally Dismissed 4 5%
Settled 15 18%
Patent Owner Disclaimed 2 2%
All Claims Upheld 5 6%
Mixed Claim Findings 3 4%
All Claims Unpatentable 26 31%
All Claims Amended 3 4%
85 PTAB trials Page 1 of 11
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ADD-7
Case: 20-1399 Document: 45-2 Page: 26 Filed: 08/03/2020 (35 of 42)
Patent Trial and Appeal Board
PTAB Trials
Showing 25 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2013-10-01 and 2013-10-31;
sorted by most recent document activity.
Trial Flow
Petitioner Win 11 44% Patent Owner Win 12 48% Partial 2 8%
All %s out of 25 Petitioned trials
Petition Institution Decision Final Decision
Petition 25 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 312%
Instituted 22 88%
Open Post-Institution 0
Joined To Other Trial 0
Procedurally Dismissed 0
Settled 6 24%
Patent Owner Disclaimed 1 4%
All Claims Upheld 3 12%
Mixed Claim Findings 2 8%
All Claims Unpatentable 10 40%
All Claims Amended 0
25 PTAB trials Page 1 of 3
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ADD-8
Case: 20-1399 Document: 45-2 Page: 27 Filed: 08/03/2020 (36 of 42)
Patent Trial and Appeal Board
PTAB Trials
Showing 137 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2014-10-01 and 2014-10-31;
sorted by most recent document activity.
Trial Flow
Petitioner Win 54 39% Patent Owner Win 34 25% Partial 6 4%
All %s out of 137 Petitioned trials
Petition Institution Decision Final Decision
Petition 137 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 86%
Instituted 129 94%
Open Post-Institution 0
Joined To Other Trial 43 31%
Procedurally Dismissed 0
Settled 19 14%
Patent Owner Disclaimed 6 4%
All Claims Upheld 7 5%
Mixed Claim Findings 6 4%
All Claims Unpatentable 48 35%
All Claims Amended 0
137 PTAB trials Page 1 of 19
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ADD-9
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Patent Trial and Appeal Board
PTAB Trials
Showing 114 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2015-10-01 and 2015-10-31;
sorted by most recent document activity.
Trial Flow
Petitioner Win 40 35% Patent Owner Win 56 49% Partial 9 8%
All %s out of 114 Petitioned trials
Petition Institution Decision Final Decision
Petition 114 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 2118%
Instituted 93 82%
Open Post-Institution 0
Joined To Other Trial 9 8%
Procedurally Dismissed 0
Settled 20 18%
Patent Owner Disclaimed 6 5%
All Claims Upheld 15 13%
Mixed Claim Findings 9 8%
All Claims Unpatentable 34 30%
All Claims Amended 0
114 PTAB trials Page 1 of 16
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ADD-10
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Patent Trial and Appeal Board
PTAB Trials
Showing 81 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2016-10-01 and 2016-10-31;
sorted by most recent document activity.
Trial Flow
Petitioner Win 25 31% Patent Owner Win 36 44% Partial 3 4%
All %s out of 81 Petitioned trials
Petition Institution Decision Final Decision
Petition 81 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 1417%
Instituted 67 83%
Open Post-Institution 0
Joined To Other Trial 17 21%
Procedurally Dismissed 3 4%
Settled 10 12%
Patent Owner Disclaimed 1 1%
All Claims Upheld 9 11%
Mixed Claim Findings 3 4%
All Claims Unpatentable 24 30%
All Claims Amended 0
81 PTAB trials Page 1 of 14
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ADD-11
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Patent Trial and Appeal Board
PTAB Trials
Showing 147 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2017-10-01 and 2017-10-31;
sorted by most recent document activity.
Trial Flow
Petitioner Win 41 28% Patent Owner Win 84 57% Partial 10 7%
All %s out of 147 Petitioned trials
Petition Institution Decision Final Decision
Petition 147 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 6343%
Instituted 84 57%Open Post-Institution 0
Joined To Other Trial 12 8%
Procedurally Dismissed 0
Settled 12 8%
Patent Owner Disclaimed 7 5%
All Claims Upheld 9 6%
Mixed Claim Findings 10 7%
All Claims Unpatentable 34 23%
All Claims Amended 0
147 PTAB trials Page 1 of 18
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ADD-12
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Patent Trial and Appeal Board
PTAB Trials
Showing 97 PTAB trials; filed between 2011-12-01 and 2020-07-28; with an institution decision between 2018-10-01 and 2018-10-31;
sorted by most recent document activity.
Trial Flow
Petitioner Win 28 29% Patent Owner Win 54 56% Partial 6 6%
All %s out of 97 Petitioned trials
Petition Institution Decision Final Decision
Petition 97 100%
Open Pre-Institution 0
Procedurally Dismissed 0
Settled 0
Patent Owner Disclaimed 0
Denied Institution 2829%
Instituted 69 71%
Open Post-Institution 0
Joined To Other Trial 9 9%
Procedurally Dismissed 1 1%
Settled 19 20%
Patent Owner Disclaimed 4 4%
All Claims Upheld 6 6%
Mixed Claim Findings 6 6%
All Claims Unpatentable 24 25%
All Claims Amended 0
97 PTAB trials Page 1 of 12
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ADD-13
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FORM 19. Certificate of Compliance with Type-Volume Limitations Form 19 July 2020
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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
Robert P. Greenspoon
Save for Filing
Case: 20-1399 Document: 45-2 Page: 33 Filed: 08/03/2020 (42 of 42)