John Blomster: Welcome to 红桃视频, season two. We're kicking off the new academic year with the all new season and we hope everyone had a great summer. So, I'm John Blomster. And today we're speaking with Bill LaMarca, who is special counsel for IP litigation for the Office of the Solicitor at the US Patent and Trademark Office. Bill is a renowned expert on all things intellectual property touching on a wide span of issues, including specific copyright, patent and trademark questions to broader focuses of jurisdiction procedure, admin law and much more. In his role at the USPTO, he represents the organization in IP and other related federal court litigation. And he also advises the agency on domestic and international IP matters, including legislation, rulemaking and policies. We're here today to talk about the patent systems statutory framework and how it fits within, and in many ways is an important reflection of, American democracy. So, Bill, thanks for joining us really appreciate it.
William LaMarca: Pleasure to be here.
Blomster: First off, could you explain a little bit about your role and what you do at the USPTO?
LaMarca: Well, in the solicitor's office, we're a small group within the agency, and our job is basically to defend the agency in court cases. What happens is someone files a patent application or trademark application, they prosecute it through the agency, through examiners, etc, they go to their Board of Appeals within the agency, but then at some point, the agency is done. And when that happens, that's called final agency action. And at that point, the party that had that matter, the applicant, we would call them, they have a right to get judicial review, which means they can then sue us and go to court and get what happened in the agency reviewed. At that level, there's a lawyer that represents the agency in that process. And that's what I do, my job is to step in and represent the agency in those lawsuits. And most of them are at either the Court of Appeals for the Federal Circuit, or in a district court, if there's a district court proceeding, which could be scattered around the country.
Blomster: These days, the framework of the United States three branch system, it feels more top of mind than at any other time that I can remember from conversations around the makeup of the Supreme Court, polarization in Congress, the testing limits of executive power. And it's an interesting topic of conversation that you raised, that the patent system is really a model of the American democratic system, a clear example of balance of power at work. What do you mean by that?
LaMarca: Yeah, I guess, you know, on the first day of our class here at the school, we do a general lecture on the US system, because we have a lot of students in the class that are from are outside the US. So, they don't necessarily have a background there. As we all know, we have an executive branch, a legislative branch, judicial branch. Well, the patent office where I work, or the US Patent and Trademark Office, is part of the executive branch. So we're part of one branch of government. Of course, the judiciary is all the courts, there's the federal courts and the state courts. Predominantly, we鈥檙e involved in the federal courts, because when we implement an action, do something, or interpret a statute and apply that statute, ultimately, what we've done at the end of the game can be judicial review. And when that happens, the judicial branch steps in, evaluates what we've done, they ensure that what we've done is followed the law accordingly, within our authority. Who made the law? The legislative branch. So there's all three branches of government involved. They make the law, we the executive branch, implement and apply the law. And the judicial branch interprets and tells us whether or not we did it correctly when our actions are judicially reviewed. So that's kind of a generic example of how it works. I could put that into a concrete example if you'd like.
Blomster: Yeah, absolutely. Yeah, let's dive into something specific.
LaMarca: You can take an example of a case. For example, Professor Edelman was lecturing this morning and talking about the Helsinn case. And that's a really good example, because that's a dispute between two private parties. We weren't even involved. Nevertheless, what that related to was when Congress changed the law, what they call the American Invents Act, in I think 2011, they made some amendments, some changes to the US patent system, the patent statute was altered. One of the things that they changed was in a provision called 35 US code 102. That's in there something called the statutory bar. And this is all patent talk. But the bottom line is they made a change to the statute, and they added some language in there to change the reading of the statute. Well, that language was comma or otherwise available to the public. That's what it was added. We the PTO interpreted that language a certain way. And we published a federal register notice saying we here at the executive branch at the patent office think this means something. We think when Congress changed this language in the statute, they changed the way the law should be applied. Nevertheless, there was all this old case law precedent out there that said, No, when you interpret this statutory bar provision, you interpret it this way. In other words, they talked about uses or sales. If you had a sale or offer for sale, that could be what they call barring activity. In other words, you could be barred from getting a patent, if greater than a year before you found your application, you actually use or sold your invention in like a physical embodiment, right? And for years, the law was even if that sale was secret. No one knew about it. But we sold it commercially. But no one else knew wasn't public. It still was a barring sale. And that's because the courts had interpreted it that way. Well, then the AIA comes along in 2012, and puts language into that provision that says, public use for sale or otherwise available to the public. The PTO interpreted that, well, it's got to be a public sale, it can't be a secret sale. So, we said we think the laws been changed. Well, two private parties got into a dispute that we weren't involved in about this provision. It percolated up to the Federal Circuit, we stepped in, the government, and filed an intervener鈥檚, an amicus brief, a friend of the court brief to express our opinion on what we thought the law was because we had already interpreted it in our agency materials. The Federal Circuit issued a decision and it went all the way to the Supreme Court. And the Supreme Court issued a decision and said no PTO, and it wasn't just us, but they said no, the old law, the old interpretation of a secret sale is still the way we're going to interpret it, even though Congress altered the language and that statute, we're going to interpret it this way. So now what happens to the PTO鈥檚 interpretation? It goes away. And we're going to follow what the Supreme Court says. So, there's an example where the courts were reviewing a change in the statute, and an agency had an interpretation that has now been overridden by what the courts say. And it's our obligation to follow the court's decision. So, that's kind of a practical example, how all three branches of government were sort of working. And ultimately, the check and balance for what we call the separation of power system actually worked.
Blomster: And you're talking about Helsinn Healthcare v. Teva Pharmaceuticals USA?
LaMarca: Correct.
Blomster: When Congress makes those kinds of changes and changes the law, how often is that happening? Is this a common adjustment that the patent office has to make in terms of these interpretation?
LaMarca: Yeah, it's been more common recently, like, I think the 1952 patent act was kind of the core patent act that codified many of the practices from years before. For a long time, the 1952 patent act was pretty much the patent law. And then in 1995, we had something called the GATT/TRIPS amendments鈥擥-A-T-T slash T-R-I-P, that stands for a treaty. And that led to other amendments to the statute that changed some key provisions in our statute. And I think what happened then was our patents would issue and 17 years from issue would be the term and now under the GATT/TRIPS amendments in 1995, it was 20 years from filing. Then again, in 1999, we had the American Inventors Protection Act, the AIPA. Another change altering aspects of the law, and then most recently, the 2011 AIA, American Invents Act. And that is pretty significant as well, we added new proceedings called the IPR proceedings at our Board of Appeals that didn't exist before those proceedings take place in parallel with parallel District Court litigation that occurs outside of the agency. So there's been a lot of changes, let's say in the last 15 to 20 years. And every time that happens, we at the agency have a lot of work to do. Because there's a lot of regulations, there's a lot of procedural changes, we have to adjust when Congress changes the system like that.
Blomster: And these questions over the interpretation, so that back and forth that litigation, that's part of the process.
LaMarca: Exactly. And for example, when the AIA came out, there's all these new statutory provisions that never existed before. And now what are we doing? We're applying them. We're making regulations, we're applying the new statutory provisions. And of course, people are challenging the way we're doing it, those things end up in court, we defend our position in the court then tells us whether or not we're reading the statute correctly, according to when they read it, or whether or not we should read it differently. In fact, just the constitutionality of some of these proceedings have been challenged, there's a case called Oil States. I don't have the cite for you. But it went all the way to the Supreme Court. And they just said, these IPR proceedings where you can take an issued patent, and you can challenge it within the PTO rather than going to District Court. They just allege that that was unconstitutional all out, because there's no right to a jury at the agency. But there is a right to a jury in a district court proceeding. And based on that, they're just saying you, you can't have an agency do this. Well, the Supreme Court agreed with us, agreed with what the statute said that, yes, Congress could make a law allowing a patent to be pulled back into the agency and be challenged. So, it's been clarified by the Supreme Court. So, there's been a lot of litigation revolving around all these new statutory changes. And
you've litigated more than 100 cases on on behalf of the US PTO about well,
Blomster: What's the most unique case that you've been involved or the most interesting?
LaMarca: I guess I was involved in those NTP patents, NTP Blackberry litigation. How did we get involved? Those were private lawsuits where NTP was the patent owner. They had a group of patents. Those patents cover, according to them, covered the BlackBerry device, which now we all have iPhones, but you remember, there used to be a time when everybody had a Blackberry, and everyone in the government had a Blackberry. And that concept of having an email from a handheld device that could go wirelessly and then make it back to your desktop computer, that was written down in these NTP patents in claims. So, then those people of course, sued. The people that own the Blackberry, there was a lawsuit so the the patent owners sued the people that were, in their view, practicing the invention, and that was a private lawsuit. Government wasn't involved. But what did the defendant do? The defendant said, 鈥淲ait a minute, those patents aren't valid.鈥 What else did they do? They came to the PTO. This is before IPR. They requested reexamination, which you could do as far back as the 1980s. And what they did was they asked to have those patents reexamined within the PTO. And of course, we reexamined them. And many of the claims we said should have never issued because we looked at new evidence that we didn't have before. And our examiner's made rejection. So now we had rejected claims. And we had a district court lawsuit with a fight over those patents, right? So, the district court was getting impatient, waiting and waiting and waiting for the PTO to reexamine all these patents. And because of their impatience, they basically got very close to issuing an injunction. And the case settled, the private party settled the dispute. Meanwhile, we hadn't finished the job at the PTO on the reexams. And later, many of these claims were rejected, right? Not all of them,but a lot of them. And what the lesson was from all of that was if the PTO takes such a long time to relook at these patents, district courts aren't going to wait. So, one of the things that ultimately happened was the AIA was we need something faster and more quick, more efficient, and they created IPRs, inter parties review. And the inter parties review has to be conducted within a single year, according to the statute, with some exceptions. But in a sense, what they want is they want the agency to look at the patent a second look quicker. So, the district court can wait and then not issue what we would call an inconsistent decision. So, inconsistency in results between the district court tribunals and the agency tribunal on whether or not the patent is valid, was a real problem. And the creation of the AIA was intended to help alleviate that. So, I don't know if that's a good example of 鈥
Blomster: No, making a governmental process faster.
LaMarca: Yeah.
Blomster: You gotta be on it. That's, that's amazing.
LaMarca: That isn鈥檛 easy to do.
Blomster: No exactly.
LaMarca: In our board, you know, we've got all these cases that have to be adjudicated through our board. And, you know, we've got I think, 250 or 260, administrative patent judges handling these proceedings, and they are under pressure to make sure they conduct these proceedings within this one year deadline. Now, I think there's some room for like an extra six months or something, but you've got to have reasons for that. Essentially they got to do it in a year.
Blomster: Gotta be on it.
LaMarca: The benefit of that is now if there's a parallel lawsuit in a district court, which we're not involved in, what is the defendant in the plaintiff over there say? The defendant says, 鈥淗ey, I've got this IPR over at the PTO, Your Honor. And by the way, they have a statutory obligation to finish it in a year. So please stay this proceeding in district court and wait for the PTO to finish their job, because if they kill one or two of the claims and clean up this patent, we can then come back to district court with what we feel is a simpler lawsuit. We don't have to litigate claims that they've already said should never have issued.鈥 So the idea is to streamline and to make more efficient, that district court litigation which will reduce costs, improve the accuracy of the results and actually improve the patent system. That's the idea. And I think, in general, it does that. But you know, nothing's perfect, and things are refined as we go, you know, they keep getting refined. In fact, I think there's people in Congress still trying to refine things, you know.
Blomster: Absolutely.
LaMarca: Yeah.
Blomster: To say the least.
Bill LaMarca is special counsel for IP litigation for the Office of the Solicitor at the US Patent and Trademark Office. He's here with us at UW law as he does every year to share insights over the week as part of the annual CASRIP Summer Institute, which is a more than week long dive into all things intellectual property. You can learn more about his work and that of the Office of the Solicitor including amicus briefs, SCOTUS decisions and more over at the USPTO site which we鈥檒l link to in the show notes.
Bill. Thank you so much. This was so much fun.
LaMarca: It was a pleasure.
