Supreme Court grants Certiorari in Challenge of Inter Partes Review Proceedings

by Dennis Crouch

The Supreme Court has granted writ of certiorari in the pending Inter Partes Review challenge of Cuozzo Speed Tech v. Lee, Docket No. 15-446. 

Questions Presented:

  1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
  2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Nine briefs amici were filed at the petitions stage. I expect that number will double for the merits stage.

More from Patently-O on the case:

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The court also granted certiorari for a second time Kirtsaeng v. John Wiley. This time, the focus is on the award of attorney fees to the prevailing party in copyright cases.

Question Presented:

What constitutes the appropriate standard for awarding attorneys’ fees to a prevailing party under section 505 of the Copyright Act.

Section 505 (17 U.S.C. 505) states that: “the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”  However, there is a circuit split as to when it should be awarded. According to the petition:

The Ninth and Eleventh Circuits award attorneys’ fees when the prevailing party’s successful claim or defense advanced the purposes of the Copyright Act. The Fifth and Seventh Circuits employ a presumption in favor of attorneys’ fees for a prevailing party that the losing party must overcome. Other courts of appeals primarily employ the several “nonexclusive factors” this Court identified in dicta in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994). And the Second Circuit, as it did in this case, places “substantial weight” on whether the losing party’s claim or defense was “objectively unreasonable.” Matthew Bender & Co. v. W. Publ’g Co., 240 F.3d 116, 122 (2d Cir. 2001).

 As a reminder, in Kirtsaeng I, the Supreme Court ruled that copyright exhaustion (first sale doctrine) applies to international sales of the copyrighted work that were lawfully made abroad.  This rule is opposite to that in patent cases (Jazz Photo), but the issue is core to the pending en banc Lexmark case. A decision is expected any day in Lexmark.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

94 thoughts on “Supreme Court grants Certiorari in Challenge of Inter Partes Review Proceedings

  1. The fact the Court granted on Question 2 makes it almost a certainty that it grants cert in the pending Retirement Capital v US Bancorp case (101 issue) and the SAP v. Versata case.

        1. …the dangers of consolidating the powers of all of the three different branches of the government on display.

          It can be argued that the PTAB has effectively anointed itself Executive, Judicial and Legislative with its “interpretation” on the inclusion of 101 into the CBM.

        1. Petition of the Day: Does the Statute Allow Section 101 Challenges in CBM/PGR proceedings?
          December 5, 2015Dennis Crouch
          Retirement Capital Access Mgm’t Co. v. U.S. Bancorp and Michelle Lee, on petition for writ of certiorari 2015.

          The question presented here stems directly from the posts that Prof Hricik and I wrote back in 2012 and 2013.

          David Hricik, Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
          David Hricik, Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense
          Dennis Crouch, Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?
          RCAM presents the following question:

          The AIA limits the [PTAB’s] jurisdiction with respect to CBM review to challenges based on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b). Paragraph 2 provides that a party may seek to invalidate a patent or claim on any ground specified in part II of Title 35 as a condition for patentability.

          The questions presented arise from the Federal Circuit affirming, without comment, the Board’s holding that 35 U.S.C. § 101 is a ground specified in part II of Title 35 as a condition for patentability and therefore constitutes a proper basis for review in a CBM proceeding, and from the Federal Circuit affirming the Board’s application of § 101 to the patent claims at issue.

          They are:

          1. Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).

          2. Whether the Board errs when it invalidates issued patent claims posing no risk of pre-emption under the abstract idea exception to patent eligibility.

          1. 1. Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).

            I highly doubt the Supreme Court takes this. Why on earth would they? Subject matter eligiblity is certainly a “ground for patentability”. The authors are suggesting that Congress somehow intended a claim to a method of “Calculate a price using a non-obvious rule” to be immune from challenge under CBM? That’s absurd.

            2. Whether the Board errs when it invalidates issued patent claims posing no risk of pre-emption under the abstract idea exception to patent eligibility.

            This question is a joke. I don’t know about you “Learned Hand” (aka Dennis Crouch?) but I’ve never seen any indication that Hricick has much of a clue about the meaning or import of “pre-emption” in the subject matter eligibility context.

            1. but I’ve never seen any indication that Hricick has much of a clue about the meaning or import of “pre-emption” in the subject matter eligibility context.

              As if Malcolm is one to judge….

  2. Given the fact that the BRI versus Philips distinction (assuming it even exists!) will not change the outcome for Cuozzo’s junky patent claims, it seems there’s a good chance the Supremes may punt at least that question as having been “improvidently granted”.

    Someone should point out the problem in an amici brief if nobody has done so already ….

    1. MM, perhaps someone will also point out that there is no one with standing opposing Cuozzo, so that the Supreme Court might simply vacate the decision of the Federal Circuit and remand back. Ned

      1. “Remand,” Ned, would indicate that there is still some “contest” down below.

        As you want to point out, there is no contest, thus to whom exactly are you wanting a “remand” to?

    2. “Given the fact that the BRI versus Philips distinction (assuming it even exists!) will not change the outcome…”

      Well if that’s true, wouldn’t it mean the Federal Circuit’s ruling on that aspect is merely dicta – and thus that court in effect has yet to rule on the matter?

      1. Ken, I do not understand how Cuozzo is harmed by the use of BRI. That never was made clear at any stage by anybody in this process. Rather I think they were complaining that the construction given the particular term at issue was too narrow.

        1. Ned, I’m not disagreeing with that – I’m just asking whether that would mean that technically the Federal Circuit’s “ruling” on that point is dicta.

      1. 6,

        Picking a single End from a binary decision is rather much the definition of “offering nothing that is stimulating or challenging.

        I would rather see you place your means to that end and share your legal acumen.

        If you dare.


        1. Picking a single End from a binary decision is rather much the definition of “offering nothing that is stimulating or challenging.”

          It’s “rather much” a whole lot more substantive than stating “I know how this will turn out.”

          But thanks for the laughs, “anon.”

          1. What is your point Malcolm?

            Does it have anything to do with what I am asking for? (Hint: no)

            Does what I am asking for help alleviate the “ends justify the means” blight? (Hint: yes)

            Thanks for playing though.

            1. “anon” What is your point Malcolm?

              The point is that you’re one of the most hypocritical human beings to ever walk the planet.

              Double LOLs for asking me to explain that to you.

              1. Nothing at all hypocritical in my post Malcolm.

                In fact, it is consistent with my posts that try to get to substantive matters from the likes of Malcolm, 6, and the rest of the Echoes.

                Your accusation otherwise is nothing more than the infamous AccuseOthersOfThatWhichMalcolmDoes.

                Go figure “folks.”

  3. Cuozzo question 1 is the most interesting. Since BRI was not required by the AIA statute for IPRs [unlike the IPR burden of proof] this does not require overturning any statute. If the Sup. Ct. required a Phillips claim interpretation in IPRs it would desirably remove a major complaint, even though most IPR experts seem to think it would have relatively little overall effect on IPR outcomes. To avoid an IPR’s prior art challenge it would requires patent owners to argue that their claims are narrower.
    However the facts in this case do not seem very favorable, and it is hard to see how that outcome could help the patent owner win? Did they not want a broader rather than narrower claim interpretation?

    Re Cuozzo question 2: “Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.” I would like to see the quotes from where the Fed. Cir. ever said “even if the Board exceeds its statutory authority” because it seems to me they said just the opposite?
    FACTUAL rebuttals of any of the above would appreciated.

    1. P.S. re the above, note that in Cuozzo question 2, as presented, there is no qualification on “judicially unreviewable” which makes it sound like the Board “exceeding its statutory authority” is never, ever, reviewable.
      If the Board were to somehow ever try to decide an IPR on the basis of 112, 101, public use, on sale, ambiguity, or any other basis than its limited statutory jurisdiction for 102 and 103 issues based solely on patents and publications, it would clearly be reversed by the Fed. Cir.

      1. P.P.S. Does not question 1 inherently raises a question of what to do about all of the large number of interferences, reexaminations, IPRs and CBMs already decided on BRI claim interpretation, and their affected patents?

          1. That certainly applies to constitutional and other issues some readers here think the Sup. Ct. is going to raise sua sponte in this case. But it does not apply to consideration of the consequences of deciding an issue that is pleaded.

            1. Paul, if the issue of BRI was not raised by the patent owner in a reexamination, CBM or IPR, I do not see how he or she can argue that the result of the reexamination, etc., should be overturned.

              On the other hand, conducting an IPR in excess of authority is jurisdictional, and that can be raised at any time. It is an issue that cannot be waived.

              1. Ned,

                For the sake of argument, would you say it is “improper” to

                1) initiate an IPR on any given set of art, and

                2) then – sua sponte – for the board,
                2a) once the item is back within the Office,
                2b) having been stripped of certain property rights,

                3) to treat the granted patent NOT as a granted patent, but as a mere application (for which other different art by the PTAB is a bit more common?

                  1. Thanks.

                    Do you see the “flaw” in your assumption that you have a “granted patent” in play after initiation?

                    You no longer have such.

                    It is at the point of initiation that those certain sticks in the bundle of property rights that a granted patent provides that are indeed removed.

                    And they are removed regardless of the end result of the rest of the IPR process on the merits.

                    So then, once removed, you – as here – do not get to presume that other sticks in the bundle of property rights protect you.

                    I do have to wonder why you keep on ig noring this point, as this is the critical point as to any subsequent treatment of the item in the IPR process. It is a critical point because it is at this point (again, separate from any following decision on the merits) that a taking – without recompense of any kind and by Congress’s design without ability to appeal – occurs that is a violation of other constitutional protections.

                    Aim that torpedo better, my friend.

                  2. Anon, you know well my position – that the government has no authority to re-examined issued patents and revoke them on its own authority. Ditto IPR trials.

                  3. Ned,

                    Yes, I know your position.

                    But that is NOT what the point under discussion here is about.

                    Once again, you deflect from the point presented.


                    Why are you so adverse to venture into discussions centered on the taking at the time of initiation?

                    Here – as I plainly put to you – that taking changes the calculus that you want to “use” for an item that no longer has the “rights” (property or otherwise) of a granted patent.

                    You cannot turn a blind eye to this. At initiation (regardless of any decision on the merits) you have lost sticks from the bundle. Lost them to an executive agency and lost them without remuneration of any kind and lost them with no chance at an Article III review (and for arguments sake – these are lost too for perfectly initiated IPRs, so EVEN IF the PTAB had a flub in any one instance, the law – as written by Congress – is constitutionally flawed.

                    It is not a matter that there can never be a taking (eminent domain, and what not). But what cannot happen is a taking without remuneration and without capability of review.

      2. Paul, the statute requires the petition to

        “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim….”

        35 USC 312(a)(3).

          1. Ned, all the prior art references relied upon by the Board in its decisions on the subject claims WERE presented in the IPR petition here. As the Fed. Cir. decision notes, the Board simply used one of those same cited references as part of rejections of a couple more of the subject claims than the petition had originally proposed them against. This is not a case in which either the petitioner or the Board cited some new prior art during an IPR that the patent owner was not already on full notice of, from the petition itself.

              1. Ned,

                If such an admission, why then the phrasing of the question presented in the form of a mere possibility (which form induces the inappropriate invitation for an advisory opinion, something that both Paul Morgan and I quickly see)?

    2. Re Cuozzo question 1, has anyone presented any argument for, or reason why, the requested changing from a BRI claim interpretation to a D.C. [Phillips] claim interpretation would allow the reversal of, or even help the reversal of, the Fed. Cir. approved 103 decision that Cuozzo is allegedly “appealing” from here? Cuozzo seeks claim broadening, which could only make their 103 rejections worse rather than providing any distinction over the prior art.
      Furthermore, as noted in a footnote in the Fed. Cir. decision, there was a settlement agreement between Cuozzo and the IPR petitioner Garmin even before the Fed. Cir. decision. The PTO Solicitor had to step in to defend the IPR decision.
      Thus, how is this NOT an improper attempt to obtain a mere advisory opinion from the Sup. Ct.?
      I do not understand how legal experts supporting this cert petition with amicus briefs can simply ignore that vital jurisdictional question as to Cuozzo Cert Question 1?
      As noted above, I do not care either way whether the IPR should use a Phillips or BRI claim interpretation test, because I do not think it would makes any significant difference to most IPR outcomes [given the very extensive prior art searchs for PRs and the prior art and claims being read by APJ patent attorneys]. But I find the apparent ignoring of a”case or controversy” requirement for this cert even by academics puzzling?
      Does anyone care to explain?

          1. MM, of course. That helps explain why the Feds held against the Cuozzo despite the fact that the PTAB did not follow the law in instituting the IPR on grounds not alleged in the petition, but on the PTAB’s own theory of invalidity.

            1. of course” clearly does not fly as it is more than apparent that the Ends do not justify the Means.

              help explain” clearly does not sit well with you in other posts Ned – why then the over politeness with Malcolm?

              (that’s rhetorical)

        1. So Ned are you suggesting that since you think the PTO does not have standing that there should be an ex parte proceeding at the Sup. Ct.? That would be entertaining to propose.

          [BTW, the PTO standing in at the Fed. Cir. for the party that dropped out to defend the Board’s decision has happened quite a few times over the years in interferences.]

          But to more seriously getting back to what we are talking about here, it is Cuozzo’s question 1, and the strange facts in this case that no decision on THAT issue, either way, could affect the invalidity of the Cuozzo patent! Hence no actual case or controversy on THAT issue. Just an attempt at getting an advisory opinion. A VALID Sup. Ct. challenge of BRI needs a case where changing from BRI to Phillips claim construction COULD actually change the case outcome in favor of the appellant.

          1. Paul, at least according to the Federal Circuit decision, Cuozzo did not ask for a construction that was narrower, rather they asked for construction that was broader. I think you are right that Cuozzo is not harmed by broadest reasonable interpretation.

            I am not quite certain how the government can stand in the shoes of a petitioner who does not have standing have standing for that reason.

            Regarding interferences, before patent issues, the government has jurisdiction over whether to grant the patent in the first place. Thus it has standing to defend an interference decision adverse to a patent applicant.

            Regarding an issued patent though, the Supreme Court has held several times that the government does not have standing to challenge the validity of an issued patent. See e.g., United States v. American Bell Telephone Co., 167 U.S. 224, 17 S. Ct. 809, 42 L. Ed. 144 (1897).

            1. before patent issues, the government has jurisdiction over whether to grant the patent in the first place. Thus it has standing to defend an interference decision adverse to a patent applicant.

              See my ‘for argument’s sake’ post above.

              The point (seemingly being avoided) is that AT initiation, the patent is no longer in a “granted” state, but has had certain sticks in the bundle of property rights stripped out. This is regardless of ANY decision on the merits.

              I keep on pointing this out, and you keep on being glib about this Ned….

              Maybe you should pay better attention.

                1. I do have to chuckle at your asking me to read >I>Marbury as I will remind you that it was I that pointed this out to you on this blog prior to your making that an important aspect of your very own case.

                  You are welcome.


            2. You’re asking the wrong question with respect to “the PTO’s standing.” The question of standing is about the plaintiff: has the plaintiff suffered an injury in fact, was the injury in fact caused by the defendant’s conduct, and is the injury in fact redressable by the remedy sought. The question with the defendant is often about the second and third prongs, not the first. In this case, the injury in fact is the invalidation of Cuozzo’s patent. The injury in fact was caused by the PTO’s conduct because the PTAB was the body which invalidated it. And it is redressable because the CAFC/SCOTUS can reverse the PTO’s decision or order the PTO to reconsider.

              This isn’t like the Consumer Watchdog v WARF case where the petitioner lacked standing to challenge the patents at the Federal Circuit because it had not suffered any injury-in-fact from the existence of the patents. The reality is that any patent owner whose patent is invalidated during a PTO proceeding will have standing, and it’s not even a close case. Thus, there’s a weird dichotomy where you can file an IPR without standing and if you win, you’d be able to defend the decision (along with the PTO), but if you file an IPR without Article III standing and lose, you’d have no ability to attack the PTO’s decision

              1. Guest, what is your view when the petitioner has settled out and the government itself has no standing? It is typical, I believe, to vacate the decisions of adverse to the remaining party, not so?

                1. Once again Ne d- you have a flaw in understanding what happens at the initiation point.

                  Once that point is reached, the petitioner who started it all is no longer the only party involved (besides the former “patent-now something else” holder).

                  At the initiation point, the patent is no mas. What you have is now an action fully back in the executive agency domain. Your loss of sticks from the bundle of property rights that I have mentioned (presumption of validity, no BRI), are in fact NOT the only sticks removed.

                  Think about it. Why stop at removing just those first few sticks that I mentioned? Once you have taken (in a constitutionally flawed manner), what is stop more taking?

                2. The government, as respondent/appellee, does not need the same standing that the petitioner/appellant needs. If the government lost and tried to appeal, it may well not have standing (unless a law were invalidated). But that’s not the case. Standing is about whether there is adequate injury to the plaintiff/petitioner/appellant, about whether that injury was caused by the defendant/respondent/appellee, and about whether the court can redress that injury. If the plaintiff has standing, then the defendant assuredly has standing to prevent the remedy.

                  Standing law creates the Consumer Watchdog v. WARF paradox. There are cases where only one party has standing to appeal due to circumstances. If the IPR petitioner were to settle out and the government lost on appeal, that’s a different question.

                  1. Ned,

                    You are (once again) forgetting that upon initiation, the government IS a party.

                    You have in your mind that after initiation, all that you have is a patent outside of the government apparatchik.

                    That is just not so.

                    And this is why you must acknowledge (and possibly incorporate – if not too late) the recognition of the taking that occurs AT initiation.

                    That is a point of a critical (unconstitutional) flaw in the AIA.

                    Aim your torpedoes well my friend.

                  2. Ned,

                    Your reply – on its face – is not valid.

                    As you have it, the government can never be involved in any lawsuit.

                    We both know that that idea is DOA.

                  3. …and note that your (repeat) evasion of the actual point of my post does not go by unnoticed.

                    Why do you evade this point?

    1. Number 2 is a tricky question and skirts the “administrative law / Article III review” with its proviso of supposing in a first instance that the PTAB exceeded its statutory authority.

      Since the PTAB did not do so here, the Court will not provide an advisory opinion that the direct question calls for.

      At the least, a proper functioning Supreme Court would not venture such an advisory opinion. This Court, though, well, we have to see.

        1. Ned,

          I agree with you on both points, and so did the dissenters, at least Newman. All that 314(d) does is prevent interlocutory review of the initial grant of the IPR proceeding to go forward; that makes sense. But to say, as the majority says, that 314(d) can deny review of whether the final determination in the IPR complied with the AIA statute, as well as with IPR rules promulgated by the USPTO would render “due process” under the 5th Amendment a nullity.

        2. S I G H,

          You have now jumped back to the PTAB….

          Can I have you be a little more explicit here as to what exactly the PTAB did in instituting the IPR – actually did here (note, that I am NOT alluding to any “hypothetical-advisory opinion type of search) – that was against what Congress wrote?

      1. It will be interesting to see if we get any SC “dicta” here alluding to potential constitutional issues with IBR overall.

      2. Agreed. Where did the PTAB clearly “exceed its statutory authority” in instituting this IPR against this patent owner? Just as with the BRI challenge in this case, is this not an improper request for an advisory opinion? I am surprised the Sup. Ct. did not yet notice this?

  4. The second question is rather important for those pending cases where the PTAB has plainly gone beyond the parties arguments and evidence to obviate patents.

    1. There is a saying that even an agency must follow its own rules. It would be absurd if they did not have to follow the law.

      But if there is no court review? That is carte blanche to ignore both rule and law.

      The Federal Circuit holding simply cannot be right.

      1. I agree that it has to be reviewable about whether to institute or not. If not, then the board could just not institute anything.

        1. The words of Congress are very clear on the matter:

          Not reviewable.

          Alas, if those words fall (why indeed Margaret, that so-called “mootness” things is popping up again)…

          1. On the matter of AIA severability, this case would seem to serve as a test for that in future cases as well. That is, if the Supreme Court here overturns this one part of IPR (i.e. its nonreviewability) without striking down the whole AIA, then surely they’d take the same approach later (e.g. if they were to adopt Ned’s view of IPR).

            1. Ken,

              Do you perhaps a cogent legal theory as to how the Court could effectively write and insert into the AIA something that Congress expressly considered and rejected?

              It would be a “neat trick,” but the separation of powers constitutional limitation does seem to be exactly the type of the thing that Ned so recently noted in one of his quotes…

              link to

              1. anon, I agree with you but I still suspect the courts will rationalize their way to severability. I’m *not* saying it’s right, but it’s what I think will happen.

                1. Thanks Ken.

                  I am looking for that very selfsame “rationalization.”

                  To date, no one has been able to provide any such rationalization that survives even a minimum level of legal scrutiny.

                  I think that exploring what “might be” said before the Court acts would do well to exhibit to the Court that such gamesmanship-scrivining would not pass muster by the legal community.

                  Instead, we have ardent apologists wishing to say “b-b-b-but that’s moot” and giving me winning bets with my Vega bookie that no one is willing to actually put forth a legal position concerning the separability issue.

          2. The statute does not say “not reviewable.” It says “final and nonappealable.” While it may be that “reviewable” and “appealable” mean the same thing, there also may be room to argue that by “nonappealable” Congress meant an appeal to the CAFC under 35 USC 141, but Congress left open the possibility of “review” for ultra vires actions by means of an APA action.

            I know this is not what the cases have decided, but there might still be arguments people could raise before the Supreme Court.

            1. Re Cuozzo question 2 [more accurately presented] it is attacking the statutory prohibition of an INTERLOCUTORY appeal of a PTAB decision to proceed, or not, with an IPR, at the time of that decision.
              Compare this to D.C. litigation. How often is an immediate interlocutory appeal available for a D.C. decision to proceed with litigation after a complaint is filed [even a suit for a declaratory judgement of patent invalidity] even if the complaint is arguably improper, baseless or invalid? How often is even a mandamus action at that point in time successful, even though there is not a statutory appeal prohibition like that for IPRs?

              1. Paul, I beg to differ. Cuozzo is attacking a decision that was not based on the grounds and evidence stated in a petition. They are not saying the reasoning or the evidence of the PTAB was wrong. It is just that the PTAB had no statutory authority to institute on their own grounds.

                1. another “tact” to the point above…

                  Is it only the grounds brought forth that may have already been used to “justify” initiation that are available to the PTAB, or, once having used the given set of art to initiate, is the once-former-but-now-less-than-a-granted-patent “application” susceptible to the type of “super-examination” that the once named Super Examiners of the now-named PTAB able to come up with other grounds?

                  If the original art simply “opens the door,” is anything else that might scoot through that door “fair game?”

      2. Ned,

        It is NOT a “Federal Circuit is wrong again” thing.

        Not at all.

        The law you are referring to IS being followed (and that’s the problem: the law itself is “bad”)

        That law explicitly states that the decision (under the sole view of director (and his assigns*) may institute (or may not) and that decision (which does in fact effect a taking off certain sticks in the bundle of the granted property right – a taking without recompense and without review) is – by law – not available for court review.

        I am $till wondering why the separability amendment was rejected….

    2. That second question, bearing as it does on a potential conflict of what may or may not be completely set out of reach of the courts (and impinging on the administrative law), appears to be another (different) torpedo aimed at the good ship USS AIA Titanic.

      Hmmm, I remember seeing a law article headline over the break about the Supremes (at least Justice Roberts) chastising Congress on that very subject…

      Maybe Roberts has some “un-constructive personal hos-tilities having no influence whatsoever“…. 😉

        1. Ned,

          Please make up your mind.

          At you move the goalposts from the Federal Circuit to the PTAB, and here it appears that you want to move them back to the Federal Circuit.

          The law (as written by Congress) is the same for both judging bodies. When you stop moving the goalposts, read that law, and then read my comments.


    3. Has the PTAB cited any prior art not cited by the petitioner in any identified IPR? [That is NOT the case here.]

      Or has the PTAB been applying the KSR requirement of attributing common sense to the POSITA in the 103 test?

      1. Paul, When the statute requires the grounds and art be stated against each claim, that statute must be followed. The Feds said a proper petition could have been filed. So, file it — and let the patent owner respond to what is in the petition.

    4. UH Grad: The second question is rather important for those pending cases where the PTAB has plainly gone beyond the parties arguments and evidence to obviate patents.

      Care to provide some specific examples of these awesome patents that were “obviated” by the bad ol’ PTO?

      We all know that the PTO habitually ignores the law (and common sense) and grants reams of junk patents. But why should that concern anybody? Somebody gets sued with one of those thousands of junk patents they can always spend $100K to have the PTO review it. Bygones.

      1. Once again, Malcolm you attempt to kick up dust with some sort of “whatever- they deserve it” C R P and you are not paying attention to the means of getting to ANY Ends.

        Note that this is NOT defending any particular patent claims – and no defense is even necessary as the point is NOT defense at all.

        Pay attention son.

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