Power Grab?: USPTO Says No Appeal (CW v. WARF Part V)

By Dennis Crouch

Consumer Watchdog v. WARF, Reexam No. 95/000,154 (Fed. Cir. 2014)

Several years ago Consumer Watchdog (previously known as the Foundation for Taxpayer and Consumer Rights) filed an inter partes reexamination proceeding against a human-stem-cell patent owned by the Wisconsin quasi-government entity WARF. CW does not work with the technology, but filed the reexamination request as part of its public service mission.

In the reexamination, the USPTO confirmed that the patent was properly issued and CW subsequently asserted its statutory right to appeal. See 35 U.S.C. § 141.

Before delving into the appeal’s substance, the Federal Circuit halted progress on the case to particularly probe the question of whether the court has jurisdiction over the dispute – i.e., whether there exists a constitutionally sufficient “case or controversy” between the parties. At base, the question is whether any CW can claim the “injury in fact” that serves as a “hard floor of Article III jurisdiction.” See Summers v. Earth Island Institute, 555 U.S. 488, 497 (2009).

The Federal Circuit requested briefing from the parties as well as the USPTO and those have now been filed. Most importantly, the US Government (USPTO/DOJ joint brief) has sided with WARF with a conclusion that it would be unconstitutional for the Federal Circuit to fulfill the statutory promise (of a right to appeal) by hearing CWs appeal.

Potential Impact: Although the case is focused on CW as a non-profit, the potential outcome here is important for several reasons. Obviously, the ruling would disenfranchise public interest groups, not-for-profits, and industry organizations and instead provide full litigation rights primarily to parties with substantial likelihood of reaching collusive settlements that leaves would-be invalid patents intact. In an email to me, Dan Ravicher (CWs counsel) wrote:

Without a full and fair right to challenge patents at the PTO, including an equal right to appeal, the public interest community will have no avenue to rid the system of bogus patents, and we will be 100% reliant on commercial entities, which often do not have the same incentive to prove patents are invalid, as they, too, have bogus patents themselves.

Although somewhat hyperbolic, Ravicher’s comment raises real policy concerns.

At a more general level, the issue here represents an important shot in the battle for power and authority in the setting of patent law policy that is ongoing between the Patent Office and the Judiciary. The USPTO is newly emboldened with unreviewable authorities granted by the AIA; likely generous Chevron deference for those decisions that are reviewable; and has pushed for a statutory amendment that would eliminate the ability of a patent seeker to file a civil action to receive a patent. Adding to that list, this case appears to be headed in the direction of yet another non-appealable agency activity.

Mid-Level Injury: Although the US Government argues that CW lacks injury-in-fact, it also argues that the injury requirement in this situation is categorically less than what would be required for a declaratory judgment action in Federal Court. The US Government writes:

Organizations such as Consumer Watchdog, who cannot claim any concrete and particularized interest in the validity of the challenged patent, will normally lack standing to appeal. [H]owever, it does not necessarily follow that the same Article III inquiry that governs declaratory judgment relief in the district courts — under which judicial relief is normally available unless the declaratory plaintiff can show that the patentee has asserted infringement, threatened litigation, or otherwise affirmatively acted to impair the declaratory plaintiff’s freedom in the marketplace, see, e.g., Prasco LLC v. Medicis Pharmaceutical Corp., 537 F.3d 1329 (Fed. Cir. 2008) — will also govern appeals from PTO decisions in post-grant proceedings. . . .

Indeed, Congress enacted the AIA’s expanded procedures for post-grant patentability challenges partly in response to concerns that, under prior law, it was not reasonably possible for a company weighing whether to enter a particular market to test the validity of a potential competitor’s patent without first incurring the substantial costs and risks of developing a suitable — and potentially infringing — product.

. . . . Although such an interest would normally lack the immediacy required for declaratory judgment jurisdiction, the Supreme Court has explained that, in some circumstances, “[t]he person who has been accorded a procedural right to protect his concrete interests can assert that right without meeting all the normal standards for redressability and immediacy.” Lujan; Massachusetts v. EPA. Similarly, while a prospective interest in invalidating a competitor’s patent might normally implicate prudential considerations of fitness for judicial review, an explicit congressional authorization to appeal a particular category of legal determinations “eliminates any prudential standing limitations.” Raines. For these reasons, the Court could conclude in an appropriate case that the Article III inquiry governing direct appeals from the PTO differs from the inquiry that governs declaratory judgment actions in district court.

In the prior arguments, Dan Ravicher (for CW) raised an analogy to FOIA where the Supreme Court has allowed a seemingly noninterested third party to bring court challenges. The US Government brief argues that those cases as well as related fair housing cases are different and distinguishable because Congress created “substantive legal rights that entitle a party to receive concrete and individualized benefits — access to specific government records, for example, or freedom from racial discrimination in housing. A wrongful denial of those rights thus inflicts on the plaintiff a concrete and particularized injury-in-fact.”

In its responsive brief, CW argues that the statute creating the right of judicial review to requesters of agency action provides standing even if the requesters lack “statute-independent injury.” On that point, CW writes: “The government does not reference a single case in which a denied requester who cited a statute granting judicial review to such denied requesters needed to prove injury to show standing.” For its side, CW references FOIA cases as well as FEC and prior inter partes review cases that all fit this model.

Public interest groups such as PubPat, EFF, and others have shown their strength in the intellectual property law sphere and this is an important case from that regard. The importance is such that if the Federal Circuit sides against CW here to deny standing, I suspect that the Supreme Court will be ready to hear the case.

Briefs:

61 thoughts on “Power Grab?: USPTO Says No Appeal (CW v. WARF Part V)

  1. Interesting story about a troll with a junk patent trying to get EFF’s donor list. As if it makes any difference to the junkiness of his patent.

    link to arstechnica.com

    Given that there’s no question Internet broadcasting pre-dated Logan’s business, Ars asked if Liddle and his colleagues at Personal Audio felt that it was justifiable to keep pursuing small podcasters for royalty payments. “I’m not going to comment on that,” he said.

    What a tool. But very predictable.

    1. Ars Technica…

      Consider the source (sometimes it does in fact matter – hint: try to understand a little thing called bias).

  2. I’m a patent attorney. Without the “real injury” test, there’s a likelihood the courts will be inundated with such appeals by “friends of the consumer,” i.e., special interests footing the bill.

  3. I really, really do no like the US government’s position on the possibility of future harm justifying standing. If this position is adopted, small fry and startup patenting has met its Waterloo.

    Think, Big Corp. will now be in the position to challenge every small fry or startup patent emerging from the PTO, long before they make any money or are able to bring suit for infringement. Thus Big Corp can use its muscle to stamp out incipient competitors through the shear weight.

    The ONLY barrier we now enjoy to prevent that is standing. If Big Corp. cannot appeal, they will not file.

    The one-sided mendacity and shortsightedness of the US government positions is shocking. And these folks call themselves Democrats?

  4. On the power grab, I know PTO has taken the position that a decision by the PTO to institute an IPR in violation of 315(b) is not appealable at all, ever, based on 314(d)’s statement that decisions to institute are not appealable.

    They justify their position not only on the statutory language, but their interpretation, which is entitle to Chevron deference and because of 316(a)(2) that authorizes the Director to establish “standards” for sufficient grounds under 314(a).

    Yes, they want to be a law unto themselves.

    1. There are some very serious Constitutional issues with the structure of the patent agency when it comes to the separation of powers doctrine.

      Office: expanded power to make up its own rules, a quasi judicial function (Article I court) that redefines Article III precedents in interpreting those made up rules – and overriding those same Article III precedents if it so chooses, and then an effective removal of true judicial review, all under the executive branch defies why we have a separation of powers doctrine to begin with.

      Throw in the shenanigans of running the agency without an appropriately vetted top guy (the same top guy who has power over the newly augmented incestuous Article I court), and one has to wonder who exactly is pulling the strings in this Fourth Branch multi-billion dollar agency.

      1. Anon, you sum it up well. It does appear that the PTO is moving to monopolize “patentability.” They issue patents, they then decide the ultimate fate of a patent through reexamination regardless of court judgments. On appeal, their findings of fact are subject to substantial deference.

        There are holes in their armor, like the appeal to the district court. They are systematically moving to fill those holes.

        If one stands back and looks at the big picture, it does appear that the PTO is taking over complete control of patent “validity.”

        They have powerful allies in this effort. The movers and shakers have long considered patent validity the stuff of experts and not of the jury, and have been trying to remove validity from the courts for decades.

        But, even if experts would be better judges of validity than juries, the concentration of power in the executive has to give one pause.

        Perhaps it is time that we create an Art. III court to try validity, where it members are required to have the same qualifications as today’s APJs. We could then remove reexaminations all PGRs to this court. Back in the day, I believe this possibility being discussed. But for whatever reason, it was decided to concentrate patent validity in the executive branch.

        1. Ned,

          Place this quote:

          “The accumulation of all powers legislative, executive and judiciary in the same hands, whether of one, a few or many, and whether hereditary, self appointed, or elective, may justly be pronounced the very definition of tyranny.”

  5. I just checked the link provided to CW’s substantive arguments. One of the is that the patent is invalid under 101.

    This is a inter partes reexamination. The PTOs jurisdiction is based on prior art under 301 — patents and printed publications. I don’t know how a claim can be invalid under 101 over the prior art. Am I missing something here?

  6. I don’t really see this as a power grab…

    But in any event, I came to that same conclusion so I’m hard pressed to find fault with the court/PTO in thinking this may well be unconstitutional.

    1. 6, if they can decide an issue no one has a right to appeal at all, or if the reviewing court is bound by the PTO finding of facts (their rejected position on district court appeals), they the PTO becomes a lawless rouge where it has the power to do almost anything it wants because there is no effective review.

      1. The practical effect would be that certain PTO decisions affirming patentability would be unappealable because the third party requester lacked Article III standing. However, all the parties appear to admit that where the decision is adverse to the patentee, the patentee would have standing to appeal. So I don’t see this being as unfair as the situations where the PTO has argued the patentee cannot appeal (e.g., certain collateral issues surrounding the grant of a post-issuance proceeding).

      2. ” or if the reviewing court is bound by the PTO finding of facts (their rejected position on district court appeals)”

        That wasn’t their position at all on district court appeals. Their position was that there should be no new evidence allowed on which to base a new opinion. The DC would remain free to make different factual findings based on the same evidence before the office. Pay attention Nedo.

        But yes Ned I understand that if there is no right appeal the PTO becomes a “rouge”, or even a rogue. But that is only in the limited instance where the one side simply has no standing to appeal. I’m sorry but I just don’t see giving those folks one more bite at the apple than they already had (0 except for the new reviews to be implemented in AIA that I know of) outside the courts as being a bad thing. They simply don’t have enough of a stake in the issue to proceed further under our constitution, tough cookies.

        1. 6 states “That wasn’t their position at all

          (sigh) sorry 6, but you are wrong again and it was their position – you are thinking of something other than what Ned is talking about – a move to eliminate the appeal to Article III route altogether and not the introduction of later evidence thingie.

            1. I appreciate the citation anon, but that appears to be an article on a patent reform bill not what the PTO advocated for in a court case. There may be something buried in the article about such though that I don’t see off hand. If that reform effort is what Ned was talking about when he stated that was their “rejected position on district court appeals” then fine. Fine.

      3. And beside all that which I just noted, even if the PTO does go “rouge” it doesn’t mean that they’re making a power play. They may simply have been caught in a tough constitutional spot, which is what appears to have happened.

    2. 6 (blindly) states “I don’t really see this as a power grab…

      How pollyanna can you get 6?

      Surely you remember the Tafas debacle, right?

      1. Surely you know that this could just be their legitimate view of the constitutional issue, right? I’m surprised that you would disagree with their position anon. I would think you’d be all “omg the constitution!” and want to block such appeals as well.

  7. Obviously, the ruling would disenfranchise public interest groups, not-for-profits, and industry organizations and instead provide full litigation rights primarily to parties…

    Wasn’t exactly the same rationale put forth (and not accepted) when the false marking statute was eviscerated under the AIA?

    Goose, meet Gander.

    Further, given the history of the Office (have people already forgotten the Reject-Reject-Reject era, Taffas and the tabled monstrosity of the Appeals Rules changes…), should we be giving the Office ANY non-appealable agency activity?

    1. Wasn’t exactly the same rationale put forth (and not accepted) when the false marking statute was eviscerated under the AIA?

      I don’t recall much discussion about disenfranchising “public interest groups”, “not for profits” or “industry organization groups.”

      I do recall much discussion about disenfranchising bottom-feeding attorneys, though.

      Happy to be corrected. In any event, the consequences of being denied judicial review in the instant situation are far more severe than those implicated by “false marking.”

      1. (sigh)

        Nice dust kicking – try again to read what I actually wrote – the rationale is the same.

        No one said the disenfranchees not the consequences were the same.

        Now put away your strawmen,

        1. the rationale is the same

          Uh … no it’s not. Overlapping? Possibly.

          But definitely not “the same.” But go ahead and pretend that when you said “the same” in your original comment that you really meant “not the same, but possibly overlapping to a certain degree.” Make my day.

          No one said the disenfranchees not the consequences were the same.,

          I’m glad nobody said that because it doesn’t make any sense. Then again, neither did your original comment.

    2. “should we be giving the Office ANY non-appealable agency activity?”

      I’m not really sure if it’s a question of “should”. If it’s unconstitutional to give them more in the context of allowing public interest groups at least one bite at the invalidity apple at the office, then that’s all they can have.

      1. 6 misses the mark with “at least one bite at the invalidity apple at the office“…

        …the attempted bite ‘at the office’ is not the issue with Article III standing.

        1. To be clear, I said “give them MORE” in this context. The MORE being an appeal. They get their one bite, and that’s fine. If it is unconstitutional to give them MORE. Then so be it.

          please kindly learn to read.

          1. To be clear, I said “give them MORE” in this context. The MORE being an appeal…. please kindly learn to read.

            LOL – Hey – I used your words of second bite AT THE OFFICE – even highlighting your words so that YOU can read your words.

            You do know that the Appeal bite – being the more – is not AT THE OFFICE, right?

            AOOTWYD does not work for Malcolm either. Not sure why you think it would work for you.

            1. How typical:

              6 tells me to learn how to read and when I show him his very words indicating that it is he that needs to learn how to read, the response is the infamous “WHATEVER.”

              LOL – you do realize that you build my credibility everytime you post such nonsense, right 6?

  8. Thanks for the excellent write-up, Dennis.

    The issues are interesting, to be sure. My sympathies lie with CW in this instance and they seem to have done a fine job presenting their case.

    The bottom line for me is that improvidently granted patents restrict everyone’s rights in a way that is indistinguishable from an improvident restriction on information (under the FOIA). The government agency is saying “some people can see/do this, but nobody else can” without sufficient justification. Standing for public interest groups seems reasonable under such circumstances, where the statute provides the right for judicial review of the agency’s determination. And as you pointed out, the courts seem to have accepted this reasoning already in the FOIA context, at least.

    It’s very interesting to these issues (information access and patent rights) converge in this way. It’s going to keep happening.

    1. MM, how did you like that trademark case the US relied on to state that one did not need standing to challenge a trademark registration. Someone who objected to OJ personally, found him to be immoral, filed to cancel his registrations. The majority, over a dissent by Newman, found standing in this character’s representation of the public’s sense of morality.

      Now, just imagine were that will get us where other protector’s of Gods ideas of morality are allowed to challenge the trademarks of people and organizations to whom they object.

    2. MM, another point, it seems that the folks behind this don’t like patents on stem cells because they could prohibit government sponsored research, specifically as authorized by the state of California.

      Their main beef seems 101 based. They don’t like these patent or any patents on stem cells or perhaps human stem cells.

      It would be interesting to see their 101 position to find out where they are coming from.

      But, if they cannot appeal due to lack of standing, can the state of California intervene?

  9. I hate to be cynical, but I am not particularly bothered if the outcome here is that guys like Dan Ravicher are deterred from bringing post-grant challenges. Having litigated in several patent cases in which a third party public interest organization like PubPat files a post-grant review, their petition is almost viewed as unwelcome by the industry. The filing of the petition may give the public interest organization a very brief press spike (they plaster press releases all over the place), to drive fundraising efforts, but that’s about it. The petition is, then, largely forgotten. The PTO, in the meantime, digs into the petition and finds it lacking and ultimately confirms the claims. That’s exactly what happened here. The result is a stronger patent that’s harder to challenge by people who are actually threatened by it and who, frankly, have the incentive and resources to challenge it properly.

    There are exceptions to this problem, organizations that have legitimate interests in ridding bad patents and will put in the time and effort to see it through. But those organizations are few and far between. Most are simply concerned about fund-raising efforts, and they file weak and unsupported petitions solely to support that effort.

    1. The PTO, in the meantime, digs into the petition and finds it lacking and ultimately confirms the claims. That’s exactly what happened here. The result is a stronger patent

      Is there any data showing that patents coming out of re-exam are “stronger” and “harder” to tank by people who are “actually threatened” by the patents? I’m not aware of any such data. I am aware of plenty of re-examined patents that were tanked.

      There are exceptions to this problem, organizations that have legitimate interests in ridding bad patents and will put in the time and effort to see it through. But those organizations are few and far between.

      Is there any data on whether the number of such organizations is growing or shrinking?

      Most are simply concerned about fund-raising efforts, and they file weak and unsupported petitions solely to support that effort.

      Filing weak and unsupported petitions (sometimes known as “patent applications”) for the purpose of fund-raising is a tried and true tactic for many for-profit businesses. The huge and critical difference between the non-profits and the for-profits is that a substantial portion of the for-profits are PAEs filing weak applications and re-exams in the hopes that they can extract massive amounts of money from productive companies, including small businesses.

      1. Why does every discussion in these Comments devolve into a debate between patent owners and accused infringers? No one is saying that bad patents are good thing. They are not – they are a horrible drain on productive companies, especially start-up companies.

        The bigger question is whether these non-profit “public interest” organizations are really providing a public benefit to people concerned about these patents. People who litigate patent cases involving these patents overwhelmingly view these “public interest” petitions as ultimately hurting the industry they claim they’re trying to protect.

        1. People who litigate patent cases involving these patents overwhelmingly view these “public interest” petitions as ultimately hurting the industry they claim they’re trying to protect.

          Do you have a poll you’d like to share with us? I don’t recall seeing one asking for the views of “people who litigate patent cases” (what does that phrase mean exactly? what percent of public opinion is fairly represented by such people?)

          Also, as far as I can tell, most public interest groups aren’t particularly interested in protecting “the industry” that led to the patent dispute but rather in protecting the public from forseeable negative outcomes related to the granting (or not) of the type of patent at issue. The “industry” of course is perfectly capable of protecting itself, to the extent there really is an “industry” worth protecting. For example, does anyone really believe that the “shoving an ad in your face” industry or the “you can look at those specific parts of your genome after you pay us” industry needs stronger patents in order to thrive? I know some “people who litigate patents” who believe that but hardly anyone else does. Go figure.

          No one is saying that bad patents are good thing. They are not – they are a horrible drain on productive companies, especially start-up companies.

          Glad you agree. Let’s all work together to minimize the number of bad patents being granted and fashion the law in such a way that they are virtually impossible to enforce.

          1. Do you have a poll you’d like to share with us?
            When somebody who appears to have personal knowledge of a particular situation states something, here you come …trotting out your “do you any data showing this?” or “do you have polling data confirm this opinion?” However, you are more than comfortable making baseless assertion after baseless assertion after baseless assertion. Did I mention that you are famous for making baseless assertions? Some things (and people) never change.

            It doesn’t take a genius to realize that most people commenting on bad patents (e.g., public watchdog groups) have a very poor foundation with regard to the law, the technology, and what the patents actually cover. As such, if I’m a patent owner and I’m going to face a reexam, I want those type of guys to bring it … not a REALLY motivated party who is within the industry and has a better understanding of patent law.

            When I read Lode_Runner’s post, it made perfect sense to me and was based upon common sense … and as we all know, the application of “common sense” is more than enough in patent law.

            1. if I’m a patent owner and I’m going to face a reexam, I want those type of guys to bring it … not a REALLY motivated party who is within the industry and has a better understanding of patent law.

              Yes, but Lode_Runner’s assertion is basically that “if I’m a patent owner and I’m going to face a reexam from a REALLY motivated party etc., I want those type of guys to bring their own reexam first.” That’s not the same thing at all.

              Obviously if you only have to face one reexam, you’d rather it be brought by people who have no real stake in the patent and no axe to grind against you, and only filed it to have it filed. But that’s as irrelevant as it is obvious.

            2. most people commenting on bad patents (e.g., public watchdog groups) have a very poor foundation with regard to the law, the technology, and what the patents actually cover

              That’s your opinion and you have nothing to back that claim up. Such groups file well-reasoned amici briefs all the time.

              Do you want to talk about Prometheus v. Mayo perhaps? That was a hugely important case, as you’ll remember. I recall a lot of “expert” patent litigators speaking about it and it was quite clear to me that it was those litigators who didn’t understand “the law, the technology, or what the patents actually covered.” And that included people who were told exactly what the technology was and what the patents actually covered and why their understanding of “the law” was incoherent and contradictory.

              When I read Lode_Runner’s post, it made perfect sense to me

              It didn’t make sense to me and I explained why: there is no evidence that a patent that “survives” a poorly supported re-exam is “stronger”, or “harder” to tank, than any other patent. Are you aware of any such evidence? If so, please share it.

            3. I don’t think that the complaint of inadequate foundation in the law applies to Ravicher’s groups — especially following his success in the Myriad case.
              Don’t impute the qualities of one attorney to all attorneys.

              Also, Myriad was less about the law and more about SCOTUS engaging in policy-making. There is a difference between arguing that “genes patents are bad because this means that some company can patent you” versus understanding the technology, combing through prior art, and articulating a decent reason to reject a claim under 35 USC 102/103.

            4. Such groups file well-reasoned amici briefs all the time.
              MM — any group that files any brief that reduces the effectiveness of patents will be consider “well-reasoned” by you. We get that you are anti-patent. However, just because somebody else is anti-patent doesn’t mean it is well-reasoned.

              Do you want to talk about Prometheus v. Mayo perhaps? That was a hugely important case, as you’ll remember.
              If you think so. To me, it was an uninteresting case with poorly written claims that has little to do with my practice.

              there is no evidence that a patent that “survives” a poorly supported re-exam is “stronger”
              Any patent that survives reexamination is stronger … period. The patent gains a presumption of validity against any cited art and the patent owner has an opportunity to add additional claims. Psychologically, it also takes the wind out of the sails of anybody else who wants to challenge the patent. As a matter of human nature (although not necessarily based upon fact), they are going to have less faith in the reexamination process if the patent goes through unscathed, which means they’ll be less likely to employ the reexamination process.

            5. What results are you expecting?
              Nothing from MM. However, sometimes his posts lead me to points that I wanted to make anyway so he is just a tool (both meanings apply here).

              However, I don’t like to make a habit of it.

            6. Prof Crouch states “applies to Ravicher’s groups — especially following his success in the Myriad case.

              LOL – Myriad? well it looks like yet another somebody out there understood this lad’s ‘English as a second language’ posts and how I predicted not only the outcome of the case but the exact rationale used by the Court.

              And PG, you should realize that 101 is supposed to be different than 102/103 and the warehouse of nature concept is NOT a prior art concept. Many of the old posts comments have been restored – you should read through some of the exchanges between me and Malcolm on the topic. You can skip the 30,000 plus post-decision words of mewling QQ from RQ/HD with perfect confidence of zero chance of missing anything of substantive value.

            7. Professor Crouch writes:
              >I don’t think that the complaint of inadequate foundation in >the law applies to Ravicher’s groups — especially following
              >his success in the Myriad case.

              To be clear, my comment wasn’t about adequate foundation in the law, nor was it directed at PubPat specifically. In a reexamination or other form of post-grant prior art challenge before the PTO, the real key is finding the right prior art and explaining it correctly. The law is a given in these proceedings; the challenge is understanding how the patent is being asserted in industry, picking the best art and mapping it correctly in your reexam request.

              And public interest groups, frankly, often lack both the incentive and the expertise to do this properly. PubPat has not had a particularly good record here, if you wish to take that as an example. His group has filed eight or reexams since about 2004. His own website shows, the reexams are accompanied by a press release ballyhooing the filing of the request, and another press release touting a first Office Action rejection, but then mysteriously, there is no subsequent coverage. That’s because, if you look at the PAIR records, you will find out that the reexam ultimately failed. The reexam certificate issues, invariably confirming claims, often with slight amendments that aren’t going to help anyone avoid infringement. And to make matters worse, the patent owner almost always uses the reexam as an opportunity to narrow the claims with a bunch of new dependent claims that everyone now infringes, but will be even harder to invalidate following the reexam. This is what happened with PubPat’s challenge against the Microsoft FAT patent, for example, and its challenge against the EpicRealm dynamic website patent. I think the only reexam that PubPat actually “won” was against Columbia, when it simply decided the challenged patent just wasn’t that important and publicly said it wouldn’t assert it.

              The Myriad case wasn’t a reexam, though, but a suit brought by Ravicher and the ACLU about a pure legal issue. I think groups like PubPat are fine for doing that, because it doesn’t really require expertise and they are a lot harder to screw up since the case will be so closely watched by various constituents.

            8. Don’t impute the qualities of one attorney to all attorneys.

              Also, Myriad was less about the law and more about SCOTUS engaging in policy-making.

              LOL. See how it works, Dennis?

            9. the patent owner almost always uses the reexam as an opportunity to narrow the claims with a bunch of new dependent claims that everyone now infringes, but will be even harder to invalidate following the reexam.

              You have no evidence for this “harder to invalidate” assertion. Either the patent is junk and you can invalidate it by making the necessary reasonable arguments that PubPat or whoever failed to make, or it isn’t junk and you can’t invalidate it.

              If you thought it was junk before and so you refused to take a license but only because the claims weren’t amended in some “trivial” fashion then that remains your problem, not PubPat’s problem.

            10. MM — any group that files any brief that reduces the effectiveness of patents will be consider “well-reasoned” by you.

              Absolutely not true. In fact, you can read my extensive criticism of the ACLU’s briefing in the Myriad case right here in this blog.

              Anything other nonsense you wish to dish out? Something about my mom, maybe?

              You see, Mr. “Guru”: I’m not afraid to talk about what makes a junky patent junky. But you are. And we all know why.

            11. PG: Psychologically, it also takes the wind out of the sails of anybody else who wants to challenge the patent. As a matter of human nature (although not necessarily based upon fact), they are going to have less faith in the reexamination process

              Huh. I’ve had a few clients that were “faith-based” but mostly they prefer advice based on fact. One such fact is whether the “re-examation process” was crxppy, i.e., whether the lawyers trying to tank the patent were skilled enough to present a compelling case that the Examiner could not resist agreeing with, or whether those lawyers were the middling sort of lawyers that couldn’t make a creative and convincing argument if their life depended on it.

            12. Malcolm misdirects with “you can read my extensive criticism of the ACLU’s briefing in the Myriad case right here in this blog.

              LOL – the Myriad case? That one is clearly distinguishable – just ask Robert, or Francis, or Vivaka M, or….

              After all, your 30,000 plus mewling words of QQ post decision were made even though you have recently admitted not understanding the law in this area.

              You should re-read my posts explaining all of this to you.

            13. Wow – Malcolm’s CRP is being shoveled deep here.

              I’m not afraid to talk about what

              LOL – then why are you running away and hiding from First Principles?

              middling sort of lawyers that couldn’t make a creative and convincing argument

              Sounds like ABL -funny you don’t draw the parallel when it actually is on point, but you are more than eager to post CRP about what they did do – when they did not do it.

  10. While “case and controversy” is considered an Art. III issue, we should know that the challenge to patent validity is essentially an Art. III matter because patents are property rights and patent validity was tried in the courts of England prior to 1789. It should be noted, that in English scire facies actions, standing was not required. But we have a constitution.

    Standing should also apply to petitions.

Comments are closed.