What We All Got Wrong in PTAB’s Sovereign Immunity Decision

Judge, for Yourself


Tom Hochstatter - Managing Editor, IPWire by: Tom Hochstatter | December 22, 2017


We saw much (justified) fervor over the PTAB’s Sovereign Immunity-centered decision this week in Ericsson v University of Minnesota all over the collective IP press and blogosphere – here, here, here, here, here, and here.

All of us, by and large, satisfactorily recounted the basic, yet precedential facts surrounding Judge Ruschke and his expanded panel’s unanimous decision. A PTAB tribunal’s collective and emphatic “no” to a long history of a state’s enjoyment of sovereign immunity.

Our Chief Administrative Patent Judge David Ruschke decided to expand the panel due to the “exceptional nature” of the issues presented in the Ericsson case. On the surface, all seemed copacetic.

Let’s see – an expanded panel at the PTAB why does that sound so familiar?

That’s right, Michele Lee. How about a quick 2017 review of the PTAB, their panels and their former boss Michele Lee. She was caught by her own people in Federal court testimony confirming panel stacking – not once, but twice.

“In recent years, there have been at least two occasions during oral argument where the Federal Circuit has inquired of the USPTO if additional judges are selected for expanded panels so as to decide a matter in a certain way.”


“Michelle Lee wants it known that she is not a PTAB panel stacker. During a recent December event in Silicon Valley, the former USPTO director said she played no role personally in adding extra judges to Patent Trial and Appeal Board panels. “I was never in a position to, nor did I ever, stack any panel,” she flatly declared to White & Case partner Bijal Vakil.”

– reported by Scott Graham, law.com, 12/20/2017

So the former “CEO” of the USPTO denies panel stacking and ducks responsibility. No improprieties here…notice her use of the word “personally”. Touché Michele – when you’re called before a congressional hearing…I’m not a lawyer but enjoy the plausible deniability.

But now back to our judge – panel concerns tabled we’ll just move on.

Less than a month ago our Chief Judge of the PTAB attended another Silicon Valley conference run by Unified Patents. Unified Patents’ sole purpose, and very existence which only came about post AIA, is to files IPRs. Their members pay them to do NOTHING but file IPRs.

Additionally, and as part of their strong-arm tactics, Unified Patents will “do you a courtesy” and call your company and request to settle your pending/outstanding case with them for no fee or payment because Unified Patents “never pays” for patent property rights.

So while they purport to advocate for improving patent quality they resort to what amounts to corporate extortion as their sole tactic to you avoiding a full PTAB IPR proceeding. The irony of the self-proclaimed bad patent quality/anti-patent troll, is trolling legitimate patent holders to give up, and license their rightful property rights for free is beyond rich!

So why shouldn’t the Chief Judge of the PTAB join them for a fireside chat now and again? Aren’t judges supposed to be impartial and their decisions viewed as being beyond reproach? We weren’t the only ones with deep concerns about his attending this event.

Our judge has inherent and direct financial motivations conflict to throw out sovereign immunity and keep the likes of a Unified Patents afloat. Why? Continued case volume (and their subsequent fees) and therefore a justified existence – all in the name of improving patent quality. Congress, SCOTUS, Director Iancu are you getting this?

And then a final twist conflict by Judge Ruschke in the Ericsson v University of Minnesota case. According to the USPTO website the judge completed his undergraduate degree in chemistry at, wait for it – the University of Minnesota.

“Dr. Ruschke received his JD from Georgetown University Law Center, and holds a PhD in organometallic chemistry from the Massachusetts Institute of Technology and a BS in chemistry from the University of Minnesota.”

So I’m left wondering did the judge have a particular beef with his undergraduate alma mater and now has his chance to extract some toll all while shielding it behind his hand picked panel? I don’t know because his decision is NOT “beyond reproach”.

We are supposed to rest well believing that judges and their decisions are, assumed initially as, beyond reproach – yet we are all left questioning, investigating and dissecting every single PTAB decision now – especially these with such consequence. For a “judge”, Ruschke lacks a serious amount of ethical and professional “judgment”.

In the words of an esteemed colleague – summarizing Judge Ruschke and this accumulation of dubiousness and doubt – in his best legalese – “it’s total bullshit”. Judging for myself – I affirm.


[Full disclosure: Dominion Harbor is regularly attacked by Unified Patents to invalidate our client’s patents. We will and do vigorously defend each and every one of them because all of our patent holders deserve fair value for their inventions and respect for their legal property rights.]

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