Numerous commentators have discussed the ethical obligations, or lack thereof, of PTAB judges. A recent PTAB decision in a Petition filed by Google related to reCAPTCHA technology (when you have to pick the street lights or whatnot from a group of images to access PAIR) addresses the issue directly. Case IPR2022-00112 Patent 8,621,578.

Claim 1 at issue is reproduced below:

1. A method for generating a completely automated test to tell computers and humans apart comprising:
generating a matrix of non-overlapping randomly selected images in response to an access request of a user, the dynamic graphical arrangement comprising one randomly selected image from a selected image category chosen for an image recognition task and at least one image not from the selected image category, wherein each image is associated with a unique randomly generated access code, wherein the image recognition task comprises an instruction to select one image corresponding to the selected image category from the matrix of non-overlapping randomly selected images;
presenting the dynamic graphical arrangement of randomly selected images to the user and communicating the image recognition task to the user;
receiving an input from the user access device at a server system, the input comprising the unique randomly generated access code associated with the one image from the selected category;
the server system comparing the input from the user access device to an authenticating reference code to confirm the user is a human and not a computer; and
wherein the matrix comprises at least one image known to belong to the selected image category, at least one image known to not belong to the selected image category and at least one image suspected to belong to the selected image category and wherein the user is still granted access to the website when the input from the user access device comprises selection of the at least one image known to belong to the selected image category and selection or omission of the at least one image suspected to belong to the selected image category.

The patent owner argued that the PTAB was obligated to recuse itself from the case (every single PTAB judge) because the USPTO was an infringer and thus had a stake in the outcome. Ultimately, the PTAB did dismiss the IPR, but made some interesting findings along the way that are likely not to the patent owner’s liking.

As part of the patent owner’s bias allegations, they provided a claim chart showing how the USPTO infringed the claim. Normally, the PTAB does not address issues of infringement, but rather only validity. But here, the so-called “case within a case” is brought up through the bias issue, and so the PTAB found that the USPTO’s system, conveniently, could not infringe the claims (citations omitted):

… we find Patent Owner’s claim chart insufficient on its face to demonstrate infringement. Claim 1 of the ’578 patent recites “an image recognition task” that “comprises an instruction to select one image corresponding to the selected image category.” Petitioner provides evidence that Patent Owner has been offering licenses to the ’578 patent for as low as $8,500, but the rules provide that the magnitude of the financial interest is not a relevant consideration. However, the screenshot presented in the claim chart corresponding to that limitation shows a reCAPTCHA v2 widget in which the instruction is to “Select all images with taxis.” (emphasis added). Patent Owner does not even attempt to explain how the claimed instruction to select “one” image corresponding to the selected image category might be met by a system that instructs the user to select “all” images in a category.

Thus, the PTAB took the approach that “selecting one” means “selecting only one” to find that there can be no infringement. This no doubt is highly beneficial to Google in their infringement case.

But back to the issue of bias and what rules apply to PTAB judges. The PTAB explained what rules do NOT apply to PTAB judges, and what rules DO apply as follows:

Neither 28 U.S.C. § 455(a) nor Canon 2 of the Model Code of Judicial Conduct is applicable to judges of the Patent Trial and Appeal Board. … Instead, Administrative Patent Judges are governed by the Standards of Ethical Conduct for Employees of the Executive Branch (the “Executive Branch Ethical Standards”), codified at 5 C.F.R. § 2635.

This distinction appears critical to the analysis, as the general standards of ethical conduct of an executive branch employee are vastly different from those required of federal judges. From there, the PTAB illustrated why they found there to be no problems under the CFR rules (addressing the particular issues of financial interest, or that a reasonable person with knowledge of the relevant facts would question impartiality).

In the end, the PTAB dismissed the petition because the prior art was deficient (on the same issue related to selecting “one” image), as the prior art shows selection of more than one image.