Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. It's been a busy couple of days in IP land so let's get right to it:

• The House IP Subcommittee is here to help on the PTAB Appointments Clause problem—though maybe for a price.

• The Supreme Court has taken up Google v. Oracle. Two scholars outline possible holdings that they'd find especially welcome.

• D.C.'s Arnall Golden Gregory brings aboard seven IP lawyers who focus on the FDA and other federal agencies.

As always, you can email me your own thoughts and follow me on Twitter.

Hank Johnson, chairman of the House Subcommittee on Courts, IP and the Internet

Fixing PTAB Appointments Will Be Easy, Right? Right?

The House Subcommittee on Courts, IP and the Internet met earlier today for a refreshingly sober and thoughtful look into the Federal Circuit's Arthrex decision and what Congress can do to fix the PTAB Appointments Clause problem that the court identified.

Three scholars and a former AIPLA president generally agreed that Congress could pretty easily solve the problem, and it wouldn't require making all 275 PTAB judges subject to Senate confirmation. Duke law professor and former PTO policy adviser Arti Rai said it could be as simple as adding a single sentence to the America Invents Act: "The director shall have a right of review" of PTAB decisions.

Others floated the idea of making the PTAB's chief judge be Senate confirmed and letting him or her review all final written decisions. Or have the Senate confirm both the chief judge and the commissioner of patents, and let them and the director review decisions, just as they do now as the PTAB's Precedential Opinion Panel. University of Virginia law professor John Duffy, Judiciary Chairman Jerrold Nadler, and Subcommittee Chairman Hank Johnson all suggested this would be preferable to the Federal Circuit fix of stripping the PTAB judges' civil service protections. "I find it inconsistent with the idea of creating an adjudicatory body to have judges who have no job security," Johnson said. "It goes against the idea of providing independent, impartial justice if a judge is thinking about his or her livelihood while also weighing the facts of a case."

OK, so this will be easy-peasy, right?

But nothing's ever easy when you say "patents" and "Congress" in the same sentence. There are some among the House (and surely the Senate IP Subcommittee), who have issues with the PTAB, to say the least. The present need to re-do hundreds of final written decisions—to say nothing of the possibility that the Supreme Court could go further and shut the whole thing down—provides a unique leverage point.

At least, that seemed to be some of the subtext behind a few members' and witnesses' comments.

"Beyond constitutional deficiencies, are there amendments to [the America Invents Act] that Congress should consider to ensure PTAB proceedings are fair to both parties?" the committee's ranking member, Martha Roby, asked.

Why yes, there are, George Washington University law professor John Whealan said. To begin with, there's the problem that IPRs haven't worked at all the way Congress envisioned. "To my knowledge, almost no one thought there would be 1,400 IPRs per year, that there would be 260 APJs, that so many claims would be invalidated, and that the estoppel provision would be so weak," Whealan said.

The simplest fix, he said, would be to raise the standard for proving invalidity to clear and convincing evidence, since IPRs have turned out to be more like a validity challenge than a reexamination. That would have the added benefit of making district court validity decisions binding on the PTAB.

Roby was looking for more than that. "Should companies be allowed to bring multiple challenges to the same patent, either directly or through follow-on attack by a surrogate like the organizations that exist to invalidate patents, and who clearly represent the interests of the companies who fund them?" (Skilled in the Art comment: It would have been easier just to say "Unified Patents.")

"When you have new laws, people figure out ways around them," Whealan said. "You should investigate how people are going around them, and investigate tighter estoppel."

However it decides to proceed, time is of the essence, Duffy emphasized. "It's fairly clear that the constitutional structure is under a cloud of doubt right now," said Duffy, who once spotted a different PTAB appointments problem that led to a congressional fix.

Bob Armitage, the former Eli Lilly GC and AIPLA chief, said the Federal Circuit could buy some time if it adopts en banc Judge Timothy Dyk's recent concurring opinion which would retroactively fix the appointments problem.

"One of the last things I do before I go to bed each night is hope that Judge Dyk is correct," Armitage said. "Because if we get an en banc ruling that he is correct, nothing bad happens until the Supreme Court does something different, and that gives you all time to have a permanent fix along the lines I think we've been discussing."

Even if Congress does give the PTO director the unilateral right to overturn PTAB decisions they don't like, there's still the possibility that that poses a due process problem.

It's not all that different from the PTAB's original mechanism for controlling decisions, which was by "stacking" panels with judges who agreed with the director's position. Chief Justice John Roberts and others brought that up during oral argument in Oil States v. Greene's Energy. "I think the chief justice was extremely frosty about whether this was constitutional or not," Duffy said. "That shows the awkwardness of the current system."

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Two short wish lists for Google v. Oracle

After two trials, two Federal Circuit decisions, and two solicitor general recommendations against granting cert, the Supreme Court decided Friday to weigh in on the titanic copyright struggle between Oracle and Google over Java APIs.

Up until now, the focus has been on whether the Federal Circuit correctly decided the issues of copyrightability and fair use. Now that they've granted cert, the justices will be painting on a blank canvas, bounded only by outdated copyright statutes and their own on-again, off-commitment to stare decisis.

So I reached out to two scholars who've been following the case for many years as to what three holdings they'd most like to see when the Supreme Court renders its decision in Google v. Oracle.

Here are three from Peter Menell, co-director of the Berkeley Center for Law & Technology and co-author of an amicus brief supporting Google at the cert stage earlier this year:

➤ Copyrightability: Based on the fundamental channeling principle enunciated in Baker v. Selden, 101 U.S. 99 (1879), as reflected in Section 102(b) of the Copyright Act, the functional requirements of APIs for computer systems and devices, like the internal workings of other machines, are outside of the scope of copyright protection even as non-functional aspects of the implementing code for APIs are protectable.

➤ Fair Use: Based on the resolution of the copyrightability issue in point 1, there is no need for the Supreme Court to address the fair use issue.

➤ Federal Circuit Jurisdiction Regarding Software Copyright Cases: The Supreme Court should call upon Congress to amend the Federal Circuit's jurisdiction to ensure that regional circuit law remains dominant for interpreting copyright law, as Congress intended in the Federal Courts Improvement Act (1982). See Peter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the Oracle v. Google Jurisdictional Mess, 31 Berkeley Tech. L.J. 1515 (2016). There are easy fixes for the jurisdictional mess, such as diverting the appeal of copyright issues in cases with a patent law question to the appropriate regional circuit court of appeals or, in cases where the patent and copyright issues are intertwined, enabling litigants to seek en banc review of copyright determinations in the appropriate regional circuit court of appeals.

Now here are three from Sandra Aistars, senior scholar and director of copyright research & policy at George Mason University's Center for the Protection of IP. Aistars led a collaborative effort at the school to file an amicus brief in support of Oracle on the second go-round at the Federal Circuit:

➤ First, code is copyrightable. The material that Google copied is code, and Congress decided that it is copyrightable. There is no special rule in the Copyright Act that says if you label code an "interface," it is not protectable.

➤ Second, popular works are particularly in need of copyright protection. Java should not become less protectable because developers were familiar with and liked creating programs for it. A popular book would not be treated that way, nor should a popular program.

➤ Third, using code for its same purpose is not fair use. Google admits that it used Oracle's code to perform the same functions in Android that it performed in Java. That is the epitome of an unfair use, and it shows why Google's copying was so harmful to the market for Java.

My thanks to Professor Aistars and Menell for a reminder of some of the principles at stake as the case rolls ahead.

IP Laterals—7 Join Arnall Golden Gregory

Arnall Golden Gregory has brought aboard a seven-lawyer IP group that focuses on FDA and other regulatory issues.

Six attorneys join from Porzio Bromberg & Newman, including former managing partner Kevin Bell. Robert Durkin, deputy director at the Food and Drug Administration's Office of Dietary Supplement Programs, rounds out the group.

Bell and partners Richard Oparil and Scott Chambers practiced together at Porzio for the last four years and for the 12 before that at Patton Boggs, now known as Squire Patton Boggs. They join Arnall Golden as partners. Durkin, Dell Chism, Caroline Maxwell and Carolina Wirth join as of counsel.

The group includes registered patent attorneys who will will assist clients with issues before the FDA, the Federal Trade Commission, U.S. Customs and Border Protection and other agencies. They have particular expertise in the dietary supplement industry, a hot area right now.

"The acquisition of this highly accomplished team was a unique opportunity for our firm," Jonathan Eady, Arnall Golden's managing partner, said in a written statement.

Bell said his group was drawn to Arnall Golden's depth in key areas in a tough regulatory environment. "We are also extremely honored to have Bob [Durkin] join us after 18 years of federal service," Bell added. "He complements our practice well, especially on regulatory enforcement issues, and knows the internal workings at FDA at a very crucial time for several industries."

That's all from Skilled in the Art this week. I'll see you all again on Friday.