By Jason Rantanen
Saurabh Vishnubhakat (Texas A&M), Arti Rai (Duke) and Jay Kesan (Illinois) recently released a draft of their empirical study of Patent Trial and Appeal Board proceedings, Strategic Decision Making in Dual PTAB and District Court Proceedings. Their study takes a close look at the relationship between IPR and CBM proceedings and district court proceedings to assess the “substitution hypothesis”: the claim that post-grant review is “an efficient, accessible and accurate substitute for Article III litigation over patent validity.”
In addition to an array of descriptive statistics on post-grant proceedings at the PTO, the authors find that:
- “Although IPR petitions may challenge patent claims as to either novelty or nonobviousness, nonobviousness challenges predominate across all major technology areas.” (p. 18)
- During the period studied (September 16, 2011 to June 30, 2015), “a total of 14,218 patents were either challenged in an IPR or CBM petition, asserted in litigation, or both. A subset of 11,787 patents were involved in litigation alone; 324 patents were involved in a USPTO proceeding alone; and 2,107 patents were involved in both. Accordingly, about 15.2% of litigated patents are also being challenged in the PTAB, and about 86.7% of IPR- or CBM-challenged patents are also being litigated in the federal courts.” (p. 20) [edited on Feb. 12, 2016]
- Overall, most CBM and IPR petitions are filed by those with a direct self-interest flowing from infringement litigation. 78% of CBM petitioners, and 70% of IPR petitioners, “have previously been defendants in district court litigations involving the patents they later challenge in CBM [or IPR] review.” (p. 23) By this the authors simply mean that the petitioners showed up as defendants in an infringement proceeding on a given patent before filing for IPR or CBM review on that patent. They likely continued to be infringement defendants during the pendency of the IPR or CBM (the authors did not track that).
Vishnubhakat et. al’s third finding has two implications. First, a substantial number of CBM and IPR petitions are filed by parties who are not concurrently defendants in litigation involving those patents. The existence of this group merits further study. The authors suggest a range of motivations driving these petitions.
Second, notwithstanding that group, the vast majority of CBM and IPR petitions are filed by parties that are in all likelihood simultaneously litigating the patents in district court. Given the substantial amount of overlap, and the potential for strategic behavior by accused infringers, the authors suggest that the same claim construction standard should be applied by both forums–a point with implications for Cuozzo Speed Technologies v. Lee.
Read the article here: http://ssrn.com/abstract=2731002
“a total of 14,218 patents were either challenged in an IPR or CBM petition, asserted in litigation, or both. A subset of 13,557 patents were involved in litigation alone; 298 patents were involved in a USPTO proceeding alone; and 1,968 patents were involved in both.”
Last time I checked, 13557+298+1968=15823. Am I missing something here? Does “involved in litigation” include patents not “asserted in litigation” (e.g. DJ actions)? If so, then why are these referred to as a subset?
Subset applies to the 13577 (and maybe the 298). 1968 are in both sub categories. Reads pretty clear to me.
The numbers do not add up.
Each of the following are mutually exclusive subsets
Set (a) – Lit only
Set (b) – Office only
Set (c) – both.
There is no overlap possible for these defined subsets.
Somehow the total is not accounting for the differential of 1,065 which is the amount of the three mutually exclusive sets and the stated sum total.
Oops – that last paragraph should say the the 1,065 is the difference between the amounts of the mutually exclusive subsets and the stated sum total.
pffft you guys…. did you expect poly sci and English majors (and future patent litigation judges) to get the math right?
By the way… the ones that were involved in litigation alone were clearly not involved in a IPR or CBM petition… so…
Les,
I do expect an article that wants to use stats to get basic math right.
That’s really not all that much to expect.
Thanks. I didn’t notice that either on my first read through. I passed your comment along to the authors who have corrected the numbers.
The authors:
our findings suggest that the PTAB should, indeed, conduct its ex post review procedures under a claim construction standard that mirrors that of the federal courts.
What “findings” are the authors referring to? According to the paper, claims assserted in court are construed only 10% of the time. The authors present zero evidence that the “different standards” of claim construction are in fact leading to substantial differences in claim scope, or different outcomes in terms of patent validity.
I also note that the authors — consistent with past “analyses — present ZERO evidence that IPR proceedings present any kind of systematic unfairness to patentees (i.e., valid patents being erroneously invalidated by some biased “death panel”). That lack of evidence stands in stark contrast to the overwhelming evidence that the PTO for years has been granting reams of junk on behalf of coddled applicants, particularly those in the computer-implemented arts. It’s the transparent problems caused by this latter situation that IPRs were designed to address, of course.
You just don’t get yowntuebproteftooks of law are supposed to work, do you?
That anti-patent bias is simply overwhelming any shot at reasoning from you.
Here’s a modest proposal: patent pleadings should provide at least much detail with respect to claim construction and infringement contentions as IPR petitioners are required to provide with respect to claim construction and invalidity contentions.
Seems fair, doesn’t it?
That’s not a bad post Malcolm.
Of course, the question that immediately comes to mind is do you wish to eliminate the entire concept of notice pleadings, or are you just being selective (and if so, why) as to patent cases…
do you wish to eliminate the entire concept of notice pleadings
LOL
Meet the very serious people who love junk patents.
?
Why be an arse?
You do realize that your view does eliminate notice pleading, right?
Why is it difficult for you to accept that comment and delve into the impact in a meaningful way?
Why is your first response just more of the typical mindless ad hominem?
You do realize that your view does eliminate notice pleading, right?
My so-called “view” doesn’t eliminate anything, just as the author’s “view” that there is some systematic unfairness in the PTAB’s use of “BRI” to construe claims also doesn’t eliminate anything.
delve into the impact
The impact is that it will be that much more difficult for tr0lls to “monetize” junk patents by dragging hundreds of defendants into court in East Texas. Oh but wait! It also means that holders of valid patents might have to do a tad more work before they collect their millions (imagine having to interpret the claims of your own patent? wow!).
Boo hoo hoo hooo! Cry my another river.
Nice strawman – the author did not have the view that you are purporting and yes, your view DOES eliminate notice pleading.
You are genuinely incapable of having a conversation on the merits without ad hominem.
Happy Decade of Decadence.
Getting a junk patent from the PTO and hauling hundreds of businesses across the country into East Texas to the tune of hundreds of millions of dollars: American enterprise at its finest.
Asking the PTO to take a serious look at the validity of the patent, usually for the first time: unconstitutional “harassment”.
What a great country.
“usually for the first time: unconstitutional “harassment”.”
CLASSIC “ends justify the means” thinking there Malcolm.
You just cannot help yourself, can you?
Were the “means” used by the PTO, the CAFC, and patent tr0lls “justified” by the “ends” achieved, Mr. Big Thinker?
Reasonable people decided otherwise.
Deal with it, you p a thetic whining crybaby.
You are the one whining here Malcolm – AND h one having difficulty dealing with constitutional protections.
Try to be (inte11ectually) honest about that please.
Violating protections of the constitution – even for “worthwhile” ends is NEVER reasonable.
It really is that simple.
You are the one winning here Malcolm
Fixed for accuracy.
Thanks for playing.
LOL – that’s the “celebrate the broken scoreboard” view – and most certainly NOT fixed.
That was good for some lulz
Mr. Snyder- celebrating your desired ends without paying attention to the issue that the means in those very decisions ARE an issue is NO WAY to learn the terrain.
You would do well to recognize that your initial reaction of lulz is NOT a good thing.
“You are the one whining here Malcolm” transformed into
“You are the one winning here Malcolm
Fixed for accuracy.
Thanks for playing”.
is what’s known as “funny”. Things that are “funny” sometimes make Lulz.
Since you are a joyless pedant anon, you can only resort to your loop of tenuously connected ideas in response to a nicely delivered burn; if you lightened up, people might pay more attention to you, which is what you clearly desire.
In regards to (one of) your obsessive ideas about ends and means, it’s been pretty surely established that the ends are more important than the means (e.g. equity is the superior to law) since at least 1661.
Before I was reincarnated as Abe Lincoln and the Wright Brothers, I was Lord Ellesmere. Bet you didn’t know that ?
Except it is not funny – and that is NOT because I am joyless.
It is because that such is a blight that refuses to be ite11ectually honest about the issues that are running rampant in patent law.
There is NO such “resort[ing] to loop of tenuously connected ideas” Mr. Snyder.
There is a huge difference between “lighten up” and the ad infinitum, ad nausem propaganda that Malcolm spews here.
One only has to look at yourself to see the adverse effects of the “Tell a 1ie often enough” gambit.
As to your attempt ot elevate equity above the law, you are clearly wrong in both the portrayal and what that attempted portrayal means.
Of course, this is entirely unsurprising, as you also refuse to recognize the terrain upon which you wish to do battle.
Equity simply does NOT mean that the Ends justify the Means.
Try better.
Your posts produce no yuks anon. You ain’t funny ha ha and you ain’t funny to laugh at either- just kind of sad.
As to your endless mangling of other’s words, I wrote that “the ends are more important than the means”, not that “the ends justify the means”, and of course there is a world of difference in the two phrases, esp as relates to the positions of law and equity.
Not to a deranged pedant, naturally.
C’mon, be funny, you can do it. You know that laughter is the sound of surprise right? Say something that makes sense; maybe we can all get another lulz today.
Let’s try again…
LOL – maybe you want to learn the terrain, Mr. Snyder.
Producing yuks is the job of a buff00n or a cl0wn.
Obfuscating issues is a blight – not a source of yuks.
You do realize that Malcolm is here only to push his agenda, right?
As to the change in wording that you want ot emphasize – that just does not help you. Just like your opinion piece, you want to “redefine” terms in law that have established meanings, and cannot figure out why it is that you are made fun of.
If you want to move the goalposts, then realize that my points are STILL very much on point.
And yourself engaging in meaningless ad hominem (“deranged pendant“) does NOT help your case. It only proves my point that you do NOT understand the terrain upon which you want to do battle.
I say plenty that makes sense – you just do not realize that because as I previously stated, you do not know the difference between signal and noise.
Malcolm is here only to push his agenda, right?
Whereas “anon” is here for the free coke and cheetos.
^^^ mindless ad hominem.
It is more than clear that I have asked for issues to be discussed in inte11ectually honest manners.
Great job Prof.
“Violating protections of the constitution – even for “worthwhile” ends is NEVER reasonable.”
Tell that to the congress that passed the income tax.
6,
As I have previously noted (and law school would teach you the same thing): this is not the first time that a law has been passed that has been later found to violate constitutional protections.
Do you at least understand that?
I guess the temptation to suggest a correlations where there is none is really hard, even when you admit that there is none! From the paper (page 21).
In addition, typically only 10% of patent lawsuits reach the stage at which they receive a claim construction ruling. This 10% figure is in line with our finding that 12.7% of litigated patents are being challenged in the PTAB. …That said, we do not imply that the same 10% of patent cases that reach claim construction in district court are also the same patents that are the subject of a challenge at the PTAB.
I’m pretty sure that the authors did imply, before they didn’t. Weird.
…segue to the strawman of “cause or correlation”…
Y
A
W
N
Looks like a huge number of patents get litigated in the courts and get subject to PTAB second-guessing.
That proves that the goal for enacting legislation for the PTAB reviews, to reduce costs and increase efficiency, has not been achieved.
MUCH of what was peddled with the AIA of “reducing costs and increasing efficiency” was NEVER achievable.
With the simple fact of the matter that many of the old laws remain on the books for previously granted patents, the necessity of having the double sets of laws automatically eliminates any sense of “reduced costs and increased efficiency.”
FURTHER, all of these changes increased the level of UNcertainty of any granted patent right for several reasons, including the ability to second guess post grant as well as the submarine of Prior User Rights that can only surface when a granted patent is attempted to be enforced in a court of law.
It is simply far too pollyanna to accept at face value the purported “goals” of the AIA.
That law cannot sink fast enough and good riddance to a horribly written piece of legislation.
Maybe Congress will instead aim for smaller, not “unsinkably connected” meaningful reforms (and include attempts to actually improve the quality of examination – where the focus should be IN TE FIRST PLACE).
“anon” good riddance to a horribly written piece of legislation.
It’s not going anywhere anytime soon, “anon.”
That’s because (1) the system is clogged with reams of junk and rotten people like you trying to “monetize” it; and (2) IPRs work.
Whatever does manage to be “undercut” by your miserable class of relentless entitled crybabies will be replaced by something that you’ll like even less. Take it to the bank.
Nice non sequitur Malcolm.
Whether or no the frailty of the AIA makes it go buh-bye has NOTHING to do with your feelings that the system is clogged.
TRY to understand the different issues here.
And what I actually wrote (as in, a new attempt by Congress to get things right)
(and your baseless ad hominem just does not help you either – but hey, it is a sign of cognitive dissonance, so at least you got that going for you)
“anon” Whether or no the frailty of the AIA makes it go buh-bye
It’s not going “buh bye”.
has NOTHING to do with your feelings
It’s not about my feelings, “anon.” Nice try, though.
LOL – the only thing you offer ARE your feelings Malcolm.
Would love to have you “prove me wrong” and have you actually engage the counter points put on the table for discussion – but it is your choice to not do that.
the only thing you offer ARE your feelings
LOLOLOLOLOLOL
I love a good laugh on Friday, “anon.”
^^^ such a meaningless post Malcolm.
Or should I say “Malcolm”….?
(how odd the use of parenthesis…)
“anon” it is your choice to not do that.
Meanwhile, back on planet Earth I (and others) routinely “engage” Boy Wonder’s “counter points”.
We all know what happens next: the insult wheel, a slurry of incomprehensible, randomly-capitalized catch phrases, and weird references to mythical “on point” — and always “devastating” — rebuttals that are somehow to difficult to present in plain English.
Keep the hits coming, “anon.”
“We all know what happens next”
Not really, so your characterization is (as usual) off.
As is the accusation of not being able to understand (your old hat Vinnie Barbarino meme)
You need a new script.
svg: Looks like a huge number of patents get litigated in the courts and get subject to PTAB second-guessing.
That proves that the goal for enacting legislation for the PTAB reviews, to reduce costs and increase efficiency, has not been achieved.
ROTFLMAO
Spin! Spin! Spin!
The junk patent lovers are truly a laugh riot.
From the authors:
According to Docket Navigator analytics, of the patent cases filed in the U.S. district courts during the time period that we studied, 70.2% were likely settled. Moreover, three-quarters of those likely settlements occurred within 9.9 months. This pattern of likely settlement may have been prompted, at least in part, by a defendant’s threat to file a challenge at the PTAB.
See how that works? When a junky patent is a lot easier to invalidate, it’s value diminishes substantially. In other words, the nuisance value decreases. That, of course, is what drives the junk patent lovers craaaaaazy.
And rest assured that the value of all the junk patents in the system is going to continue to go down — way down. Why? Because the present values are absurd.
You do realize that such devaluation is ACROSS THE BOARD, eh?
And yes, THAT is what the anti-patent crowd want.
“See how that works?”
What a putz.
“anon” You do realize that such devaluation is ACROSS THE BOARD
(1) I’m quite certain that computer implemented junk, biz method junk and “think about what this information means” junk is taking a far, far bigger hit than anything else in the system. And that’s exactly what’s supposed to be happening because that junk never belonged in the system in the first place.
(2) So what? You think the Constitution mandates that patents have some set value that doesn’t change? Grow up.
You truly are a ridiculous person.
Hey, there’s some obscenely rich guy in that building and he’s crying because he can’t buy a second yacht! Boo hoo hoo! His patents were “devalued”! Go polish his boots, “anon.” He’d appreciate that. And you’d find some purpose in life.
Once again, the mindless reciting from a script (that just does not fit).
In your haste to attack software patents, you (once again) neglect to notice that such is the form of innovation MOST accessible to the NOT “obscenely rich guy.”
Funny how you never seem to care about that huge hole in your “logic.”
(and yes, the constitution DOES care and provide protections for the item called property – maybe you should try to understand that before showing yourself to be an arse)
“You do realize that such devaluation is ACROSS THE BOARD, eh?”
I’m not sure that statement can be backed by substantial evidence anon. Some patents have more “actual value” than “nuisance value”. I know such patents are few and far between in the software “art”. But out in the real world there are other arts, and they have more of those such patents.
6,
That is not a point that needs “back[ing] by substantial evidence.”
That point is a procedural point and affects all patents across the board.
Sure, some patents are more robust and the effect can be shrugged off. But that is not the point at hand.
To soon to tell. That cannot be determined by the comparison of patent suits filed to the number of IPRs requested [in the surprisingly small % of those suits in which IPRs were timely requested]. It needs a calculation of the number of patent suits dismissed or settled cheaply due to final IPR claim rejection decisions. There are ample grumbles alleging that, but I have not seen any statistics?
Yes, new patent suit filings were up in 2015 rather that down, but how much of that was due to the fear of old FRCP Form 18 complaints now being rejected as insufficient?
I was thinkin’ the same thin. Ahmen sister.
Given the history of reexaminations and how they have already damaged the patent system, see Mercado below, it is odd that anyone was fooled by the pablum of the dark side. The continue to spout this c*ap even though it was and is demonstratively false.
Congress was fooled in ’80. It was told that reexaminations would be used by patent owners to strengthen their patents. Instead, patent owners were tied up in reexaminations until their patent term was exhausted, they went bankrupt or somehow the patent office itself called a halt to patentee harrassment.
IPRs were intended to address the delay problem of reexaminations. But they have ended up not as a one time shot against the patent, but as another form of harassment. I counted about 6 0r 7 IPRs against every patent that VirnetX patent was asserting against Apple. That is harrassment no matter how you look at it.
Raymond A. Mercado, 12 Colum. Sci. & Tech. L. Rev. 92 (2011) (Published March 10, 2011) link to stlr.org:
“The reexamination statute was enacted to provide a mechanism for correcting PTO errors in patent issuance and for thereby restoring confidence in overall patent validity.62 However, Congress emphatically did not intend for the reexamination process to introduce new opportunities for harassment, recognizing that its “broad purpose must be balanced against the potential for abuse, whereby unwarranted reexaminations can harass the patentee and waste the patent life.”63 Yet gamesmanship of the reexamination process has, in the view of some, become more the rule than the exception. Reportedly it has become “standard procedure” that a defendant in patent litigation “take an aggressive stance by saying it plans to request a re-exam on that patent-in-suit or even all” of the plaintiff’s patents.64 The threat of reexamination is then used as leverage in licensing negotiations,65 intimidating patent-holders into settling out of court for lower amounts than those to which the value of their patents might entitle them.
Third-party requesters are savvy about the consequences of reexamination on the enforceability of patents, and they know that the threat of filing reexamination is often effective. As the Executive Director of the Public Patent Foundation (a non-profit organization that files reexaminations against patents it deems questionable) has explained, a patent in reexamination is “like a lame duck president . . . [h]e’s technically president, but does Congress really need to negotiate with him to get things passed?”67
One practitioner has noted that a reexamination proceeding “puts [the patent’s scope] in uncertain terms . . . [and consequently] a patent holder has to wait to assert claims and that harms enforceability.” In conferring “lame-duck status” to a patent, reexamination can essentially render the patent right void in the eyes of all those wishing to make use of the invention without compensating the patent owner.
68 Reexaminations can thus be extremely damaging to patent holders even when instigated by third parties acting within the letter of the law.”
As to the small percentage of petitioners who are not among “the vast majority of CBM and IPR petitions are filed by parties that are in all likelihood simultaneously litigating the patents in district court” [i.e., entirely caused by patent owners suing for infringement, because IPRs are barred by prior D.J. suits]. That small percentage includes petitioners directly threatened with infringement suits if they do not take an expensive license, or indirectly but strongly threatened or impacted by suits filed against related companies or customers or other defendants with similar product features on the same patent. There is no evidence of filings of expensive IPR proceedings by anyone not already so threatened, and it is mandatory for CBMs.
The statistics here are also of interest as showing that IPRs or CBMs are only being filed for a relatively small percentage of the total number of patent lawsuits being filed. Further evidence that they are not lightly undertaken, and/or selectively undertaken only against patents with strong 102 or 103 invalidity grounds. Also, that even a substantial percentage of those IPR petitions that are being selectively filed are being refused institution for insufficiency.
“There is no evidence of filings of expensive IPR proceedings by anyone not already so threatened, and it is mandatory for CBMs.”
Except for the fact that this statement is not true (think Pharma and shorting the stock of the patent holder), your “cheerleading” is once again quite obnoxious and transparent Paul.
Do you realize that you are actually doing yourself a disfavor with such posts?
you are actually doing yourself a disfavor with such posts?
Says the abject l 0ser with zero credibility and a whole lot of psych 0path associated with his sorry nym.
Keep the laughs coming, “anon.”
“Says the abject l 0ser with zero credibility and a whole lot of psych 0path associated with his sorry nym.”
LOL – yet another classic Malcolm AccuseOthersOfThatWhichMalcolmDoes.
Try something new Malcolm – something NOT on your short script of baseless ad hominem. Maybe (gasp) actually address the substance of the points put on the table for discussion.
Yes, there was one? troll petitioned IPR against a drug patent in which the IPR was allowed to proceed. Can you point to others?
One is enough to burst your accusation of none, Paul.
burst your accusation
*pop*
Behold the devastation!
You want to pay attention to the actual statements Malcolm, and not just show what an arse you are?
Prof – clearly Malcolm’s 0bsession is getting the better of him – is this really the type of “ecosystem” you were hoping for?
What wasn’t the recent Synopsys decision covered here?
SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION
link to cafc.uscourts.gov
Newman’s dissent is truly a tour-de-force.
Just one part of her dissent:
Precedent does not require this extended application
of Achates. In Versata Dev. Group, Inc. v. SAP Am., Inc.,
793 F.3d 1306 (Fed. Cir. 2015), the court held that when
information at the threshold phase is material to the
PTAB final decision, this court on appeal is not precluded
from reviewing such information. The court stated:
Congress explained the anomalous nature of a bar
to judicial review of final agency action: “Very
rarely do statutes withhold judicial review. It has
never been the policy of Congress to prevent the
administration of its own statutes from being judicially
confined to the scope of authority granted
or to the objectives specified. Its policy could not
be otherwise, for in such a case statutes would in
effect be blank checks drawn to the credit of some
administrative officer or board.”
Id. at 1319 (quoting S. Rep. No. 79-752, at 26 (1945)). As
stated in Social Security Board v. Nierotko:
Administrative determinations must have a basis
in law and must be within the granted authority
. . . . An agency may not finally decide the limits
of its statutory power. That is a judicial
function.
327 U.S. 358, 369 (1946). These principles are a foundation
of the Administrative Procedure Act.
On this appeal, a ruling that the court insulates from
review relates to the one-year bar. The America Invents
Act requires that a petition must be filed within one year
after the start of any district court litigation on the same
patent:
35 U.S.C. §315(b) PATENT OWNER’S ACTION.—An
inter partes review may not be instituted if the
petition requesting the proceeding is filed more
than 1 year after the date on which the petitioner,
real party in interest, or privy of the petitioner is
served with a complaint alleging infringement of
the patent. . . .
Although this issue is presented on this appeal, the panel
majority refuses to consider it because it was decided at
the “institution” phase. The question is whether a predecessor
to Synopsys, in litigation with Mentor Graphics
more than a year earlier, raised the one-year bar. The
PTAB held that there was no bar. PTAB Op. 14–17. The
court today holds that “the PTO’s decisions concerning the
§315(b) time bar, including determinations of the real
party in interest and rulings on discovery related to such
determinations, are non-appealable,” even after the
PTAB’s final written decision. Maj. Op. at 24.
It is unlikely that such issues material to statutory
compliance–issues of privity, standing, and jurisdiction–
were intended to be excluded from appellate review. Such
a departure from the judicial obligation cannot be presumed.
See Crowell v. Benson, 285 U.S. 22, 54-55 (1932):
A different question is presented where the determinations
of fact are fundamental or ‘jurisdictional,’
in the sense that their existence is a
condition precedent to the operation of the statutory
scheme. These fundamental requirements
are . . . indispensable to the application of
the statute . . . because the Congress has so provided
explicitly.
The Court in Crowell notes that: “In relation to administrative
agencies, the question in a given case is whether it
falls within the scope of the authority validly conferred.”
Id. at 54 n.17.
Whether or not the one-year bar here is deemed jurisdictional,
it is an essential part of the AIA structure. The
correctness of its treatment is subject to the traditional
judicial review of agency determinations; the question is
not insulated from appeal simply because it was decided
at the start of the post-grant proceeding. The Court
guides in Bowen v. Michigan Academy of Family Physicians
that preclusion of judicial review is viewed strictly:
We begin with the strong presumption that Congress
intends judicial review of administrative action.
From the beginning “our cases [have
established] that judicial review of a final agency
action by an aggrieved person will not be cut off
unless there is persuasive reason to believe that
such was the purpose of Congress.” Abbott Laboratories
v. Gardner, 387 U.S. 136, 140 (1967).
476 U.S. 667, 670 (1986) (alteration in original). The appellate
court must ensure that an agency’s action is not “so
extreme as to amount to an abdication of its statutory
responsibilities.” Heckler v. Chaney, 470 U.S. 821, 833 n.4
(1985). When an agency “exercise[s] its power in some
manner. The action at least can be reviewed to determine
whether the agency exceeded its statutory powers.” Id. at
832.
In sum, “Congress rarely intends to prevent courts
from enforcing its directives to federal agencies;” there is
“a strong presumption favoring judicial review of administrative
action.” Mach Mining, LLC v. EEOC, 135 S. Ct.
1645, 1651 (2015) (quoting Bowen, 476 U.S. at 670). My
colleagues’ position that no ruling during institution can
receive appellate review, even when material to the final
decision, cannot be correct.
Ned, you left out “AS USUAL, Newman’s dissent was tour de force.” She absolutely nailed it in this dissent: by giving the PTAB a free pass, the CAFC has allowed the AIA to be undermined. And the rest of them still don’t get it.
88 years old and still kicking her colleagues’ butts.
Ned, given that the PTAB members are judges, you know, like at the EPO Board of Appeal members are judges and given that at the EPO they do deliver a TRIPS-compliant “judicial review”, why doesn’t the PTAB qualify as a “judicial review”?
Max, we have three branches, the executive, the legislative and the judicial. The judiciary is in charge of interpreting the law. In Marbury v. Madison, decided in 1803, the Supreme Court held that the courts where the final arbiter of the law and the courts could declare an act of the legislature inconsistent with the Constitution to be void as unconstitutional.
Were Congress able to create a court system outside of the judiciary that could decide its own jurisdiction without judicial review, this would essentially be in violation of Marbury v. Madison, placing Congress above the courts.
Thus the PTAB, being an part of the executive and not part of the judiciary, is not a part of the judicial branch of the government and therefore is not a court of law under the U.S. Constitution. It is an administrative court only. It can decide cases involving administrative issues as opposed to Cases in Law and Equity, which is a clause in the Constitution that gives the judicial power to the Supreme Court and such other courts that Congress might create. But there is a catch with respect to these other courts, their judges have to have lifetime appointments, and their salaries cannot be reduced. The judges of the PTAB are not Article III judges.
Now as to Cases in Law and Equity, what that means is the kind of cases heard in the common law and Chancery courts of England at the time of the Constitution, 1789.
As you might know, the issue of whether Congress had the power to take cases and controversies regarding the validity of patents out of the court system and into the patent office has now been petitioned to the Supreme Court. The argument is that patent validity trials were actually tried in the courts of England at common law and therefore are the kinds of cases that cannot be transferred by Congress to administrative courts.