Inter Partes Review: Comingling Adjudicative and Executive Roles within an Agency

By Dennis Crouch

In its challenge of the USPTO’s implementation of the Inter Partes Review system, Ethicon has now requested an en banc rehearing with the following simple question presented:

Does the Patent Act permit the Patent Trial and Appeal Board to make inter partes review institution decisions?

Outside reading:

The basic issue here involves the two step inter partes review proceeding that begins with a decision on whether to institute the review and then, once instituted, ends with a final determination by the Patent Trial and Appeal Board (the Board).  Under the statute, the USPTO Director (the Director) is tasked with making the initial determination before passing the baton to the Board to make the final determination of patentability.  However, the USPTO’s implementation rules changed the game by also giving the Board authority to make the institution decision.  The USPTO argues that the rules were a proper delegation of the Director’s authority, but Ethicon argues that the USPTO’s procedure is an improper comingling of executive and adjudicative functions.

In creating the IPR process, Congress intended to replace the prior administrative inter partes reexamination procedure with a new adjudicative procedure that would “take place in a court-like proceeding.” H.R. REP. NO. 112-98, pt. 1 (2011). Congress did not need to, and did not, change the institution procedure used in inter partes reexamination, where the Director—through her executive delegate (typically an examiner)—would decide whether to institute. Accordingly, the AIA expressly assigns the institution duty for IPRs to the Director, sets forth a necessary (but not sufficient) substantive threshold for the Director to institute, and identifies a variety of other discretionary criteria that the Director may use to deny institution—whether or not the substantive threshold has been met. As with inter partes reexamination institution decisions, the AIA specifies that the Director’s discretionary institution decisions are not appealable. 35 U.S.C. § 314(d).

The panel nevertheless upheld a PTO regulation commingling the institution and adjudication stages of IPRs by delegating the Director’s institution power to the PTAB. 37 C.F.R. § 42.4(a). That delegation lacks statutory authorization and upends longstanding principles, articulated in both Supreme Court precedent and the Administrative Procedure Act (APA), prohibiting the combination of executive and adjudicative functions below the level of the agency head. . . . [B]y delegating the institution function to the PTAB for the sake of efficiency, the Director has repudiated her statutory duty to exercise executive discretion—including the additional procedural and policy factors specified in the AIA. . . . Congress did not intend for PTAB panels to exercise this gatekeeping function, and as purely adjudicative bodies they are neither inclined nor equipped to apply executive discretion or systemic considerations in deciding whether to institute review. En banc review is warranted to ensure the fairness of the IPR system and its compliance with Congress’s bifurcated decision-making procedure.

In the original panel opinion, Judges Dyk and Taranto joined together to reject Ethicon’s argument – finding that the statute permitted delegation of the institution decision. Judge Newman wrote in dissent.  The difficulty for Ethicon is counting heads – I struggle to find seven votes out of the twelve Federal Circuit judges that would be needed for Ethicon to win.

Amicus support is due by March 14.  Supreme Court and appellate practitioner Pratik Shah filed the brief on behalf Ethicon.  Shah’s involvement strongly suggests to me that a Supreme Court petition will follow if this en banc attempt fails.

 

About Dennis Crouch

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

67 thoughts on “Inter Partes Review: Comingling Adjudicative and Executive Roles within an Agency

  1. Hauling hundreds of companies, big and small, into East Texas before a clueless jury so they can defend themselves against a junk patent asserted by a shell company hiding a bunch of grifters who couldn’t innovate themselves out of a paper bag: the American way! Promote the progress! Presumption of validity!

    Defending your junk patent in a proceeding instituted by the same agency who realizes it likely made a major mistake: an unconstitutional assault on liberty and the people who made the country great.

    That’s the anti-IPR shriekers in a nutshell. Of course, ridiculous mind-numbing hypocricy from patent maximalists is something that we gamewatchers have grown accustomed to hearing over the years.

    1. If the anti-IPR folks believe that their patents are so awesome and super valuable, why not just pay the petitioners to leave them alone?

      In other words, if you think your patent is worth $400 million dollars, then why not just pay me $40 million to leave it alone? Just give me the $40 million and I won’t teach the PTO how to flush your $400 million dollar patent down the toilet in less than ten paragraphs.

      Isn’t this what the Founders intended? Viva the “free market”!

      Nobody could have predicted the incredible whining that would follow when the s0ftie w0fties were downsized. Really surprising!

      Oh, yes, and “Google is the devil.” LOLOLOLOLOLOL

      1. Actually, Google is ev il. My theory is that whatever your motto is, the actuality is exactly the opposite. Since Google’s motto was “Don’t be ev il”, that means they are ev il. If you have a phone with the Android operating system, go online and find out where you’ve been for the time you’ve had that phone. Google had YEARS of data about where I was. I had no idea they took that data, nor did I know they kept it. Why does Google need to know where I was two years ago?

        Ever search using Google? If you have a Gmail account, they keep all of your searches, including searches on Youtube. If you have Gmail, even if you “delete” your emails, they don’t get deleted. They’re still there. (Don’t believe me? Just do some searches using keywords of email you know were deleted. They’ll pop up in the search results.)

        So, Google is ev il. But that’s not a big deal, because all OS manufacturers for phones (Apple, Microsoft) are equally ev il.

    2. How is this a junk patent? Please let us know. (This is a claim from a patent that’s actually germane to this topic.)

      1. A surgical stapling device comprising an end effector that comprises: a circular anvil having a staple forming surface; a plurality of staples facing the staple forming surface of the anvil, each staple comprising a main portion and two prongs, wherein the two prongs each comprise a first end and a second end, wherein the first ends are connected to opposite ends of the main portion, and wherein the two prongs extend non-parallelly from the main portion; and a staple driver assembly comprising a plurality of staple drivers, wherein each staple driver supports one of the plurality of staples and is configured such that, when the staple driver assembly is actuated, each staple driver drives the staple into the staple forming surface of the anvil, wherein a first quantity of the staples have a first pre-deformation height, measured from a lower surface of the main portion to the second end of the first prong, and a second quantity of the staples have a second pre-deformation height, measured from a lower surface of the main portion to the second end of the first prong, wherein the first height is less than the second height, such that when the staple driver assembly is actuated, the first quantity of staples have a different formed staple length than the second quantity of staples.

      US Patent 8317070

      1. How is this a junk patent?

        I never said this patent (which I’ve never seen before) was a junk patent, nor do I have any idea why you’d think that it was junk. That said, it might be junk. I’m no expert on the “stapler arts.”

        I can tell you this much after a two minute read-through of the claims and two minutes of Internet research:

        1) The term “surgical” is meaningless in this context and the relevant arts include at least every stapling device made since the beginning of time; that said, even surgical staples are over a century old so there’s a lot of art out there

        2) The following “limitation” is true of pretty much every stapler I can recall using: “a plurality of staples facing the staple forming surface of the anvil, each staple comprising a main portion and two prongs, wherein the two prongs each comprise a first end and a second end, wherein the first ends are connected to opposite ends of the main portion, and wherein the two prongs extend non-parallelly from the main portion”

        3) Even without being an expert in the stapling arts, I’ll bet a zillion bucks that staplers with “circular anvils” are in the prior art, and probably in the prior art before most of us were born

        4) “a staple driver assembly comprising a plurality of staple drivers” — surely also in the prior art. If one staple driver is good, then two is bound to be better for certain applications! A quintessentially obvious evolution.

        5) “wherein each staple driver supports one of the plurality of staples and is configured such that, when the staple driver assembly is actuated, each staple driver drives the staple into the staple forming surface of the anvil” — a bit clunky in the wording but this is just a description of how staplers work

        6) “a first quantity of the staples have a first pre-deformation height, measured from a lower surface of the main portion to the second end of the first prong, and a second quantity of the staples have a second pre-deformation height, measured from a lower surface of the main portion to the second end of the first prong, wherein the first height is less than the second height” — ah, so there is at least one staple in the device that’s different relative to the others (it has a different height)

        Lo and behold, when you put two different staples in a stapler, you can get two different “formed staple lengths”. Nobody could have predicted that! Except you didn’t have to predict it because people have known that pretty much since staplers have been around. You could likewise just have the two different staple drivers at different heights — oops, the specification even recognizes that alternative (that’s how obvious it is).

        So, it seems like the patent is on a bit of shaky ground. And I haven’t even gotten close to looking at the best prior art.

        1. Shaky ground? My curiosity was aroused.

          In this Patent Family, J&J has been trying hard to get patents out of the EPO. So far it has got only one, EP-1964525, a patent with narrow claims directed to subject matter utterly different from in the US in discussion here.

          In the US, drawings start on page 16. Pages 2 through 15 list prior art docs but I counted only three docs marked with an asterisk! The 14 claims occupy less than 2 columns, totes, and most of that text is taken up by independent claims 1 and 8.

          So yes, it appears that the issued US claims are directed to an incremental step in a very crowded field (end-to-end anastomosis tools that go up your bum), a step that has not yet been found by the EPO fit to qualify for a patent.

          But if the subject matter claimed is new over all that art and also succeeds in reducing patient trauma well then, MM, I hesitate nevertheless to dismiss it as unfit for a patent.

          The extent of litigation in the medical devices field reveals how much folks are willing to pay, for marginally less trauma. Promote the Progress! Who wants a return to the days when surgery was performed by butchers and barbers?

          There remains the discrepancy between what the USPTO issued and what the EPO declined to issue. But hey, let’s be optimistic. The world’s getting ever-smaller, isn’t it.

          1. But hey, let’s be optimistic. The world’s getting ever-smaller, isn’t it.

            The thinly veiled desire to ig nore individual sovereign’s and any difference in those sovereign’s is one reason why care must be taken in any consideration of comments purporting to be analysis of claims from one sovereign to another.

            We do NOT have a “One-World-Order” no matter how such an “ease” of system would be.

            It cannot be merely assumed that such would be a “good thing,” so the call for “optimism” is over broad.

      2. Junk you say? I advertise on LinkedIn. LinkedIn was sued on the following rubbish yesterday. I will now have to pay more to keep LinkedIn afloat, or someone will, for utterly less than nothing.

        Note the high number on this one too. Obvious much? Or innovation that keeps the USA ahead in the world? IPR material?

        US 9,137,192

        1. A method for providing individual online presences for a each of a plurality of members of a group of members by an interface server computer comprising the steps of:
        maintaining by said interface server computer a database comprising information associated with each of said plurality of members at a database system connected to said interface server computer;

        allotting by said interface server computer individual URLS to each of said plurality of members by associating an individual URL with each individual member of said plurality of members in said database system;

        associating by said interface server computer an individual home page for each said individual member of said plurality of members with said individual URL allotted to said individual member in said database system, said individual home page comprising information from said database associated with said individual member;

        a first control for submitting a comment about said individual member; and

        a second control separate from said first control for sending a message other than said comment to said individual member;

        receiving by said interface server computer an online request for said individual URL from a requesting source;

        providing said individual home page by said interface server computer to said requesting source.

          1. Yes, it is. They are the defendant in this instance- live by the sword and all that. The system still has a huge problem when this stuff is still being issued. This is a 9 million # travesty.

  2. Hey, is this Dennis’s Patently-O blog where he chooses the topic, or is this MM-pontificates-on-whatever-case-she-feels-like-to-someone-else’s-audience???

    Does MM have something on the D-man to allow this?

    1. MM just likes to pontificate on his “all patents are bad, bad, bad and ruining the country” arguments. As soon as he can latch onto something that he thinks supports his position, he posts it, regardless of whatever the actual topic at hand is.

    2. Does MM have something on the D-man to allow this?

      It’s always a conspiracy with you guys.

      Keep the laughs coming.

      1. The perception is there.

        Calling it a “conspiracy” does nothing to change that perception.

        (Neither does closing your eyes, Prof. – happy Decade of Decadence)

        1. The perception is there.

          Oh noes! Somebody percepted something.

          Don’t worry, Dennis, I won’t release the pics of you coming out of Space Mountain with barf on your shirt.

          1. The perception is more an indictment of Prof. Crouch than you (directly) Malcolm – your comment is unnecessary (and not even funny).

            Wake up Prof.

        2. Indeed. Furthermore, there’s a perception that WalMarts in the southwest are being reconfigured to serve as prisons for when the US military invades Texas and imprisons free-thinking Americans. There is a perception that FEMA continues to prepare concentration camps for a broader invasion of the US by UN troops, Glenn Beck’s retractions notwithstanding.

          I join mine to the chorus of voices that want to know what you’re going to do about it, Professor C.! The pillars of liberty are at stake!

  3. Make that two steps backwards! Today’s precedential decision in ULTIMATEPOINTER, L.L.C. v. NINTENDO CO LTD (Fed. Cir. 2016) is probably the biggest pile of nonsensical hooey that the CAFC has pooted forth since DDR Holdings. Will the court ever stop coddling the least competent attorneys in the history of patent law? We can only hope … but it’s not happening today.

    First, there is a claim construction issue in which the undefined and undeniably broad term “handheld device” was narrowed by importation of terms from the specification — terms that the patentee used numerous times in the specification but somehow (surprise!) failed to include in the claims.

    Try to wrap your head around this “precedent”:

    We have cautioned against importing limitations from the specification into the claims when performing claim construction, Innogenetics, N.V. v. Abbott Labs., 512 F.3dn1363, 1370 (Fed. Cir. 2008) …. [The] argument that a court may only deviate from the ordinary meaning when there is an explicit definition or disclaimer does not apply because the ordinary meaning of “handheld device,” when read in the specific context of the specification of the ’729 patent, is limited to a direct-pointing device. See Trustees of Columbia Univ., 2016 WL 386068, at *3 (“The only meaning that matters in claim construction is the meaning in the context of the patent.”).

    In other words, the CAFC will write your claims for you if you happen to forget to include those key limitations that you left out when you “described your invention” in the specification. At least, the CAFC will likely be there for you if you’re in the super shiny “do it on a computer” arts — because super shiny! And so much incompetence. Someone just has to lend a helping hand.

    But wait! It gets even worse. Some of the asserted claims mix statutory classes and recite numerous steps of “generating data” (also known as “functional limitations”). As a result of confusion over whether infringement required only assembly or actual use, the district court found the claims indefinite. The CAFC’s case law on this issue is a classic example of “it’s indefinite when we say so”, with no objective criteria whatsoever for determining when mixed statutory classes leads to indefiniteness. So what’s left is a handful of fact patterns and the claims at issue are held up to the previous holdings and the CAFC decides “Hey, this is more like that case or this is more like that case” without any convincing explanation as to why the alleged “greater similarity” was found. Hence:

    The claims here are most similar to those at issue in MEC and HTC Corp. Like those claims, the “data generating” limitations only indicate that the associated structures have this capability (for example, the image sensor and processor in claim 1) and do not require that any data be actually generated by the user. See ’729 patent, col. 33 l. 65–col. 34 l. 8. Unlike the claims in IPXL and Katz, the claims do not recite functionality divorced from the cited structure. Therefore, the claims do not reflect an attempt to claim both an apparatus and a method, but instead claim an apparatus with particular capabilities.

    The problem here is that the functional language in the claims in IPXL (“the user uses the input means”) and Katz (““wherein said certain of said individual
    callers digitally enter data”) is not any more or less “divorced” from the “cited structure” than the functional language in MEC and HTC Corp (or the functional language in Ultimate Pointer’s claims at issue here). Why is that? It’s because the cited “structure” in each case is entirely generic.

    The CAFC asserts that Ultimate Pointers claims “do not require that any data be actually generated by the user”. LOL – really? Then why is the device limited to devices that are “handheld”? Whatever answer you come up with to that question could have been used just as reasonably to reach the same conclusion (“it’s a capability, not a step”) in IPXL or Katz.

  4. HARMONIC, INC. v. AVID TECHNOLOGY, INC. (Fed Cir 2016)

    In which the petitioner comes up short and the patentee benefits from the CAFC’s lack of jurisdiction over “the Director’s” institution decision. Chalk it up.

    1. Heckler v. Chaney, 470 U.S. 821, 105 S. Ct. 1649, 84 L. Ed. 2d 714 (1985).

      Denial of discretionary institution decisions are never appealable.

  5. As per CAFC tradition, for every baby step forward, they have to take another step back. In today’s BLUE CALYPSO, LLC, v. GROUPON, INC., the CAFC endorses the fabrication of claim terms (“endorsement tag”; “token”) during prosecution, where those terms appear nowhere in the specification as filed.

    Money quote: The amendments to which Groupon [the IPR petitioner] points … consisted of much more than inserting the words “endorsement tag” and “token”; these words were inserted as part of an extensive re-write of all the claims in the application

    Note that the text of the “extensive re-write” also appears nowhere in the specifiation as filed. Bizarrely, the CAFC found that the “extensive re-write” cut against Groupon’s written description arguments.

    The CAFC makes another equally weird argument that appears to be some kind of waiver argument, followed by a cite that I can not make sense of. Here’s the passage:

    Groupon agreed to a construction of these terms, and the Board effectively acknowledged that the written description is met under that construction. Groupon cannot now dispute a claim construction to which it previously agreed. See Abbott
    Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1352 (Fed. Cir. 2003).

    I can find nothing in Abbott Labs that supports the CAFC’s reasoning, nor would I expect that reasoning to have survived Nautilis (which the CAFC failed to cite).

    Case penned by Judge Chen, who appears increasingly prone to create some of the CAFC’s biggest messes …

    1. MM, you say Chen cited a case that does not support his proposition? Well I can tell you of another case where Dyk cited case that was 100% the opposite of what he cited it for.

      The point here is that unless you take the time to read these cases, one would never know that one was reading an opinion written by someone who was overturning or not following extablished law without ever saying that that was what he was doing.

      BMC Resources comes to mind where Rader simply made up the idea that method claims require the that every step be performed by the same person for there to be infringement.

      1. This happens all the time.

        The Supreme Court in Alice cited to the concurrence in Alice for the en banc decision (717 F.3d, at 1286 (Lourie, J., concurring) for “The method claims do not, for example, purport to improve the functioning of the computer itself.” The concurrence cites to Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 865, 868-69 97 USPQ2d 1274] (Fed. Cir. 2010). If you apply the Alice rules to the claims in Research Corp., those claims should be invalid.

        How does one interpret this? Did the SC know that applying their own rules to a case they cited actually would make the case come out to be the opposite decision?

        1. PB: The Supreme Court in Alice cited to the concurrence in Alice for the en banc decision (717 F.3d, at 1286 (Lourie, J., concurring) for “The method claims do not, for example, purport to improve the functioning of the computer itself.”

          So?

          The concurrence cites to Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 865, 868-69 97 USPQ2d 1274] (Fed. Cir. 2010).

          So what?

          If you apply the Alice rules to the claims in Research Corp., those claims should be invalid.

          So what?

          How does one interpret this?

          The Supreme Court agreed with Lourie that the claims in Alice don’t purport to improve the functioning of a computer.

          That’s how you interpret it.

  6. 1. As a threshold issue, what if the Director decided to enforce ‘administrative estoppel’, a form of case barring collateral estoppel, to harmonize the IPR and the trial courts and square the IPR statute with the 7th Amendment? This power, per the statute, is un-reviewable executive discretion.

    2. If delegated, would the Board have that same un-reviewable power? Could the Board enforce ‘administrative estoppel’ to the same un-reviewable extent as the Director? Or would CAFC, say no the Board needs to use judicial power – the doctrine of res judicata or comity in order to square IPR ‘trials’ and trial court trials?

    This strikes me as an improper mixing of prosecutor discretion – and the power to adjudicate. One is a question of political account, i.e., the executive department’s prosecutor staff/discretion and the other being the judicial department – where and when should comity, res judicata, etc. be the rule of law.

    1. iwasthere, our framers put the judicial power in a separate branch of the government to protect the liberty and property of the people against the arbitrary and the influence decision. People argue that one can get due process when the government is both prosecutor and the judge, but I think this is never possible, even theoretically. The more we know about IPRs, the more we know that the decisions are biased against the patent owner. The PTAB has all but held that after institution, the patent owner has the burden to prove patentability.

      I have the same problem with the court of claims deciding patent cases against the government. These folks work for the government, after all, and they cannot even be considered to be impartial. Patent cases go on for decades in the courts of claims, telling us a lot about the games the government plays with patent owners to deny them compensation for government use.

      1. Ned: The more we know about IPRs, the more we know that the decisions are biased against the patent owner.

        Oh, you so you finally found some evidence of this?

        Please share it with everyone. I assume it won’t take long.

        1. MM, OK. What do you say when the PTAB’s final decision says you lose patent owner because you did not prove it was not within the skill in the art to reconstruct a reference into what is claimed?

  7. You know….the Examiner that initially Ordered reexamination was also the one that did all of the fact finding and issued the final action. But, its totally unfair when a panel of judges is asked to do the same. LOL. Also, where are all of these CAFC reversals of these mean, biased PTAB judges???

    I wonder how much money Ethicon is wasting on this silliness. In the words of Colonel Trautman….”it’s over Johnny, it’s over.”

    1. John, the Feds are effectively bound by the facts as found by the PTAB. They really can only review for errors of law. Errors of law are not going to happen very often.

      Such administrative deference was never intended for a trial court. Never.

      Just one more example of how the entire patent system is thrown out of whack by IPRs.

      1. Re: “the PTAB .. really can only review for errors of law.”

        Ned, you know perfectly well that is NOT what the APA [or the Sup. Ct. in Zurko] says about agency fact-findings, and that PTAB fact-findings have been reversed many times by the Fed. Cir. The AIA is not going to be killed by hyperbole. It is not running in a primary election.

        1. Paul, “effectively.” The substantial evidence rule does not allow the Feds to review whether the fact findings of the PTAB are in error, only whether they are supported by substantial evidence. As a result, the only review the Feds have is for errors of law.

          There is a reason for so many Rule 36 affirmances.

          1. Ned, you again allege that “the only review the Feds have is for errors of law” when you know that hundreds of PTAB decisions on application rejections have been overruled for insufficient factual evidence support, and those PTAB ex parte appeal decisions have the exact same APA – Zurko appeal requirements as PTAB IPR decisions.
            PTAB fact-finding decisions in IPRs are usually better supported and thus less likely to be reversed because IPR factual disputes are not one-sided [ex parte] and APJ patent attorneys prepare the fact-finding decisions, not just a single time-constrained ordinary examiner. But they can be reversed, and have been.

    2. “Fair” and “silly” miss the point of procedural soundness.

      This is more of an admin law (and separation of powers) issue than one having anything to do with any sense of “fair.”

      The means to even “fair” ends really do matter.

    3. Examiner was a first level fact finder and decision maker – with a right to appeal to the Board (at time, now PTAB, said board subject to review by federal court).

      Of importance is the fact that the Board reviews the internal agency action. They are the point of review outside the agency (because they exercise the agencies authority).

  8. Couldn’t the Director merely issue a statement saying that anytime the Board wishes to initiate an IPR that the Director implicitly consents? Let’s not forget that the decision to institute is not even appealable (not yet). What would be the practical value of having the Director do it herself other than to intentionally slow down the system? I am all for dutifully executing the rule of law, but to what end?

    1. Might not even slow the system down much, she might just have people prepare a little blurb about each case and sign them all en masse every friday or whatever.

  9. One reason this continued appeal is not very appealing [pun intended] is the finding that no unfairness or due process violation was involved. Not even an argument that the end result here would have been different with different PTO employees making the IPR initiation decision than the APJs deciding the IPR. Nor is that separation normally required for other litigation. Nor is it cost or time efficient. Leaving an unappealing hyper-technical statutory interpretation argument. For patent claims that are difficult to see how they could be enforceable after the strong Fed. Cir. panel endorsement of the PTAB 103 decision in this case? They would get the same IPR result again even if this appeal somehow successfully forced re-institution of the IPR. What is the client benefit for this attempt?

    1. Paul, when one is complaining to the courts about being denied a right to a jury trial, is it your position that he also has to show that had he had a jury, he would not have been convicted?

      1. Yes, because the right to a trial by jury is exactly the same as a patent owner’s right to have the PTO director sign off on the initiation of a statutorily authorized and defined reexamination process.

      1. Yes, because issues like constitutional standing are exactly the same as a question about whether an agency regulation reflects a proper interpretation of a statute that assigns the responsibility to make IPR initiations.

        1. Your desire to be overly glib misses the point, DanH.

          The descriptor “hyper-technical” is being used in untoward dismissive manner.

          Whether or not “exactly the same” simply is a smokescreen. It very much matters whether the means to even a desired ends are copasetic.

          You may not like how that makes you feel, but that is just not material.

        2. Dan, thank you for your appropriately sarcastic response to three above completely irrelevant non-analogous analogy arguments. As I had explained, there is NO possible Constitutional issue in THIS en banc appeal attempt. [I’m still waiting to see even a client economic rationale.] But that never seems to discourage folks on this blog who want to try to turn every patent case [or traffic ticket?] into an alleged constitutional issue.

          1. appropriately sarcastic

            LOL. – got that Prof.? When one side merely feels a certain way, then the sarcasm is appropriate.

            Never mind that same side is simply being glib and missing the point.

            Good luck with any type of “ecosystem” health when that type of view pervades the comments.

            1. You might want to reconsider (although I know you won’t) exactly who is missing the point. In this petition, exactly nobody is arguing that the issue at hand is a constitutional issue, e.g., like the right to a jury or like constitutional standing. The petitioner is making an argument about the proper interpretation of the statute, and in particular is arguing that the Director has been granted discretion, but not the particular discretion that has been exercised here. It’s perfectly OK (although a little odd) to be sorely offended by the use of the term “hyper-technical,” but it’s silly to suggest that the foundations of our legal system (“there goes the right to a jury!” and “what about standing?”) are under assault here.

              1. It just doesn’t need to be a “constitutional issue” in order for the “hyper-technical” to be off.

                Funny here, you with your eyes clenched tight telling someone else to open their eyes.

              2. DanH: It’s perfectly OK (although a little odd) to be sorely offended by the use of the term “hyper-technical,”

                It wasn’t the term itself, Dan, that was offensive. It was the “untoward” way in which you used the term.

                LOL

  10. Does Ethicon have a position regarding to whom the Director could properly “delegate” authority to? e.g., could the Director simply create an “IPR Insitution Decision Panel” and hire/assign responsible individuals to that panel?

    It doesn’t seem possible that Congress intended for a single person with a full plate of other duties to have sole responsibility for the IPR institution decision.

    The difficulty for Ethicon is counting heads – I struggle to find seven votes out of the twelve Federal Circuit judges that would be needed for Ethicon to win.

    In part that’s because the cat is out of the bag and everyone in the system can see how much junk is out there and how much more easily that junk can be tanked when the excessive costs of litigation and cluelessness (in the form of ill-equipped judges and juries) are taken out of the equation.

    Whoever kneecaps the IPR regime at this point might as well grab their pompoms and paint “I love patent tr0lls and their junk patents!” across their chest because that’s how the change will be perceived by pretty much everyone (and rightfully so), except for the patent tr0lls.

    Spangenberg’s and Bass’s transparent attempt to buy their way into the “debate” by targeting big pharma with IPRs is just further evidence that IPRs hit where it hurts. You gotta love it when the ultra rich throw their little temper tantrums. But else are they going to do? Grifters gotta grift, after all.

    1. From Dennis, quoting the petition:

      Congress did not need to, and did not, change the institution procedure used in inter partes reexamination, where the Director—through her executive delegate (typically an examiner)—would decide whether to institute. Accordingly, the AIA expressly assigns the institution duty for IPRs to the Director, sets forth a necessary (but not sufficient) substantive threshold for the Director to institute, and identifies a variety of other discretionary criteria that the Director may use to deny institution—whether or not the substantive threshold has been met. As with inter partes reexamination institution decisions, the AIA specifies that the Director’s discretionary institution decisions are not appealable. 35 U.S.C. § 314(d).

      Yeah – there position is that Congress did not change inter partes reexamination institution procedure for inter partes review procedure, i.e., Congress gave Director discretion to institute in inter partes reexam (same with IPR). Since USPTO interpreted the statute against the statute – it is not a valid rulemaking (delegation).

      Presumably, the allowable delegation is to an examiner (or, even the PTAB, but not members of the board that would decide the IPR). Really, the challenge is that it is required that the person deciding the adjudicatory proceeding is not the same as the person deciding to bring the action (except where, by statute, the head of the agency (or commission) is also the person that decides to bring the action, e.g., FTC).

      As Dennis noted, those sorts of challenges are usually uphill (especially with the composition of this court of appeals).

      1. sorry by bold text didnt show up within the blockquote for some reason:

        Congress did not need to, and did not, change the institution procedure used in inter partes reexamination, where the Director—through her executive delegate (typically an examiner)—would decide whether to institute. Accordingly, the AIA expressly assigns the institution duty for IPRs to the Director, sets forth a necessary (but not sufficient) substantive threshold for the Director to institute, and identifies a variety of other discretionary criteria that the Director may use to deny institution—whether or not the substantive threshold has been met. As with inter partes reexamination institution decisions, the AIA specifies that the Director’s discretionary institution decisions are not appealable. 35 U.S.C. § 314(d).

      2. Presumably, the allowable delegation is to an examiner (or, even the PTAB, but not members of the board that would decide the IPR).

        I’m curious – why is it “presumable” that it would be OK to delegate it to the PTAB, so long as it’s not to the members on the IPR panel?

        1. I’m curious – why is it “presumable” that it would be OK to delegate it to the PTAB

          Because members of the PTAB (those not involved in the IPR) could do the job just as well (or better) than the Director acting on her own. There’s no threat to anyone’s expectations about the quality of the performance.

          1. I’m trying to understand the argument that the fact that Congress did not change the IPR initiation procedure suggests that some PTAB members would be OK but others not. The argument drop by seems to be articulating doesn’t appear to be a policy argument, or an argument about fairness.

            1. Sorry – a mixture of responses.

              Ethicon argues that Director must decide (or delegate to Examiner). This is a statutory authority argument – specific to USPTO.

              I was arguing that under APA and admin law in general the director would be fine to delegate to examiner and probably even fine to delegate to IPR panel that won’t decide the final decision.

              To a certain extent it is a fairness question (that is what the APA and admin constitutional rules derive their basis from).

  11. Dennis, I think this petition is well grounded. However, it will force the Feds to reconsider Achates, a decision that extended the 314(d) appeal bar to 315(b). They did so by reading out from 314(d) “this section,” a limitation that was intended to specifically refer to the discretionary decision under 314(a).

    By statute, institution decisions are made “under this chapter.” See, 314(b) and 316(d)(1). The Federal Circuit has consistently ignored and not even addressed the statutory language when holding decisions made under other portions of the chapter other than section 314 are not appealable even from a final decision. To accede at this time to this petition would be to undermine a their jurisprudence in this area.

    1. Ned,

      Without commenting on the strength of the underlying matter, Ned, is your view here akin to the adage of:

      “Two wrongs do make a right.”…?

      1. Anon, either the Federal Circuit is in bed with the PTO and giving them everything they want in terms of statutory construction, or the Federal Circuit is doing everything he can to limited its docket by limiting the appeals from IPRs to final decisions on the merits, where they can dispose most of them through rule 36 affirmance’s.

        Anyway I see it that the Federal Circuit is bending over backwards to ignore the statutory language and the intent of congress in order to craft something they can deal with. They are really legislating from the bench here.

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