Oral arguments in Cuozzo v. Lee are set for April 25, 2016 addressing two particular questions:
- Whether the PTO may require that, during an inter partes review, the claims in a patent will be given the “broadest reasonable construction” consistent with the patent’s specification [as opposed to the standard construction for issued patents].
- Whether a party may seek to overturn the PTO’s final decision in an inter partes review based on an alleged error in the PTO’s threshold decision to institute the review, which Congress provided “shall be final and nonappealable,” 35 U.S.C. 314(d).
The briefs are available now on ScotusBlog.
The U.S. Government has also filed its responsive merits brief. The brief appears to be a joint effort of the Solicitor General (DOJ) and the USPTO and does a solid job of justifying its positions:
On BRI:
- Historical: The PTO has “long applied the broadest reasonable-construction standard in all agency proceedings in which patent claims may still be amended.”
- Statutory: Here, although claim amendments have allowed in only exceedingly rare cases, the IPR statute does suggest that amendments are possible. (Of course, once the motion to amend is denied, then claims cannot ‘still be amended.’
- Deference: The USPTO was given rulemaking authority in this area (AIA procedures) and the BRI standard is a exercise of that delegated authority. (It is unclear what happens if the court would find this ‘substantive’ rather than ‘procedural’ and what level of deference should apply in either case).
On Appeal of Decision to Institute:
- Statutory: “The statute bars all judicial review, not just interlocutory appeals, of the PTO’s decision whether to institute an inter partes review.” Rather, judicial review is limited to the Agency’s final decision on patentability.
- Policy: The no-review approach fits the AIA-Trial purpose of being “an efficient non-judicial alternative for testing the patentability of issued claims.”
The PTO is looking for a strong decision in this case to effectively shut-down the myriad challenges it is currently facing.
Note that the PTO brief simply ignores the following good argument previously made by Cuozzo re the un-admitted inconsistency in Fed. Cir. decisions re Cert Question 2 on the institution appeal barring statute. Could this lead to another potentially embarrassing question in the oral argument?:
“The Government correctly does not argue that there is any basis in the AIA’s text for permitting judicial review of the Board’s decisions to institute CBM proceedings, but not its decisions to institute IPR proceedings. As the Government acknowledges, the language of the relevant statutory provisions is “materially identical.” Br. 21.”
Shaw Indus. Grp. v. Automated Creel Sys. (Fed. Cir. Mar. 23, 2016) has this interesting statement of dicta: “Our court recently faced a similar challenge in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). We held that we lack jurisdiction to review “the Board’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.” Id. at 658 (citing 35 U.S.C. § 314(d)). We noted that a “narrow exception to the bar on judicial review exists for claims that the agency exceeded the scope of its delegated authority or violated a clear statutory mandate.” Id. (quoting Hanauer v. Reich, 82 F.3d 1304, 1307 (4th Cir. 1996)).”
Does not the last sentence above contradict the PTO brief position re Quozzo Question 2 that the interpretation of the IPR institution appeal barring statute would never allow any valid challenge?
Try less hard to conflate things Paul.
The lead into the quote you provide has this particular language:
“It argues that we have jurisdiction to review the decision because it is not challenging the Board’s institution decision but rather the Board’s interpretation of § 315(b).”
You are NOT focusing on the right question.
You are pointing (deliberately?) to the WRONG question. Referencing a 1996 case and then (basically) asking to what I refer to directly below at 17 of:
“Bottom line here is that the PTAB is acting in accord with what Congress wrote, people are asking the courts “hey, are they acting in accord with what Congress wrote?,” the courts are saying merely “Yup,” and no one is asking if WHAT Congress has done survives constitutional scrutiny.”
You have to ask the right questions.
Are you again suggesting that your constitutional level views are going to get raised in Cuozzo even if no one is arguing for it, to do so is legally disfavored, and there is no need to do sosince the issue can be decided by statutory interpretation?
Odd line of questions Paul.
Whether or not the right question is asked is of its own accord. Not sure what your “ to do so is legally disfavored”
even means though.
STILL waiting for your shot at a cogent legal argument on my points regarding if a portion of the AIA is found to be unconstitutional….
(or are you going to run away yet again – my Vegas friend is getting pretty peeved at you…._
Thank$ for running Paul.
🙂
Paul, people who know do not deal with patents on a regular basis think the PTO and Government position on Achates/Cuozzo is out to lunch.
Paul, you do know that the government, for a very long time, argued that challenges to institution decisions be denied because the “petitioner” had an adequate remedy – raise it on appeal from a final written decision.
There is nothing in the structure of the statute which would lend one to believe that Congress intended that appeals from a final written decision be limited in any way to whether the IPR or CBM or the like violated statutory authority in any way, or that the decision under 315(b), for example, was defective.
In Versata, the government actually admitted to changing their position. This is an omission that Congress position on this issue is not clear. But it has to be clear – almost beyond a reasonable doubt – before a court will construe a statute to deny in appeal of any issue, and the kind of decisions they cannot be appealed are typically entirely within the discretion of the agency.
It is a foregone conclusion what is going to happen here. The government is going to be reversed.
“It is a foregone conclusion what is going to happen here. The government is going to be reversed.”
Which portion of the government, Ned (hint: the answer is crucial – and needs to reflect the right question being asked).
And then, Ned, what are the ramifications? I will note that you too have not ventured as to those ramifications if one portion of the AIA is found to be unconstitutional.
Your silence (to reflect the thought of Paul) is oddly “legally disfavored” – whatever that means.
anon, question 2.
Ned, the specific issue for Cuozzo cert question 2 is whether or not the Fed. Cir. statutory interpretation decision below should be reversed.* Whether or not the PTO’s interpretation of that appeal-barring statute for IPR institutions has also been inconsistent or not could be partially relevant to a PTO “Chevron deference” defense, but the PTO does not even argue for “Chevron deference” for cert question 2.
*As I noted, Cuozzo has already argued that the Fed. Cir. itself has been inconsistent in interpreting the statute between IPRs and CBMs.
Paul, do you think that it is at all objectionable that the IPR be instituted only on the claims and grounds alleged?
Ned, if I said no, so what? Mere personal opinions on any subject like that from anyone on this blog are irrelevant and immaterial.
Paul – why do YOU bother posting at all then?
Methinks that you just take yourself WAY too seriously.
Waaayyyy down below in the Comment 2 section, Ned and 6 are having a discussion on “standing” which is ending up with 6 and Ned talking past each other.
It is perhaps worthwhile then, to post this comment here on top:
6 appears to use the term “standing” when he means something else.
He is talking about actions outside of the courts – therefor, it would be more appropriate to NOT even use the term “standing.”
Draw an analogy to organizing a parade or other use of a civic ground designed for such use. Normal citizens do not need “standing” in order to apply for a parade permit.
He appears to be saying that Congress has set up a challenge system that is totally separate from the right itself that is being challenged.
He appears to want to not even discuss the nature (hint: property) of the right that is a patent right.
That just does not matter to 6.
Instead, what he appears to be saying is that no matter what the nature of the patent is, Congress has set up a distinct thing separate from that item that is available much like a parade permit. ANYONE can apply for it, and ANYONE can fill out a petition and pay a fee asking that a patent be revoked.
To him, focusing ONLY on the asking for revocation side of the equation, he is not seeing any problems with the asking.
Note that the courts here are also “answering” a question about “the asking,” and as noted in other comments, NO MATTER WHAT ELSE, anyone – and everyone can still ask, even if the answer is “arbitrary” or “with discretion to say nothing except ‘no’, or any other response.
What 6 is not focusing on is that the entire system – beyond just the asking – DOES involve property rights. ANY government system that affects property rights must not violate other constitutional protections. SO even though 6 was to play an apparent semantic game and label “the asking” portion as something different than the right itself, the analysis does not – and cannot – stop there.
What 6 is avoiding – as is the courts because the courts are not being asked the right question is what else is happening in this system.
Bottom line here is that the PTAB is acting in accord with what Congress wrote, people are asking the courts “hey, are they acting in accord with what Congress wrote?,” the courts are saying merely “Yup,” and no one is asking if WHAT Congress has done survives constitutional scrutiny.
Keep in mind that this question point is NOT focused on any end result of what the PTAB may finally decide, but is very much instead more correctly focused on the (separate) institution point. That’s why I highlighted the hi-jinks of the Office and their re-phrased question to the court.
The mechanism set up by Congress (as 6 attests) appears to be a separate mechanism that absolutely requires no standing whatsoever.
Trying to make “an issue” of whether that mechanism needs standing is merely NOT asking the right question.
The right question takes a step back and looks at the entire system – and sees that the mechanism created by Congress (regardless of standing or not) just does not survive scrutiny that the Constitution provides for the protection of property.
As I have noted, even being the right branch (the legislative branch) to write the statutory laws that are patent laws is not enough.
Ned – I really wish you would grasp this, as you personally are in a position to cut away the muck and ask the Court in a direct and forceful manner. No one else in this “ecosystem” has that luxury. Please do not trip yourself up in the weeds.
anon, a long but very coherent post. Thanks.
I think we need to keep this simple so that people really understand the issue.
People need standing in order to file a DJ action to invalidate a patent.
Now can congress by statute abrogate this requirement by saying that people do not have standing to file a DJ action to invalidate a patent? Of course not, as it is a constitutional requirement.
So how is that congress can do the same thing by specifying that the judges to be non Article III judges?
The constitution is not a plaything. But the backers of IPRs treat it as such, and the Federal Circuit is either clueless or in the tank.
Ned – why do you insert the “file a DJ action”…?
You have tripped and attempted to take this back into the courts**.
6’s position does not go there.
At all.
Congress just did not create a “DJ action” at the executive agency.
The post grant reviews are NOT “DJ actions.”
What you need to focus on is NOT the “DJ action,” or even its “equivalent.”
What you need to focus on is taking a step back and looking at just how that “equivalent” – AND the entire process for which that “equivalent” is a part of – violates what Congress can do – (and here, critically) AT the point of initiation, because it is at that separate point (separate from ANY decision on the merits) that the constitutional protections for property are broken. And it is those protections that Congress simply may not break even as it is the proper branch of the government to write the statutory law that is patent law.
**hey, I “get” why you feel comfortable trying to take this back into the courts – or making what Congress did somehow an “equivalent” to a court action – but you do not even have to go there. It is your wanting to go there that 6 is not following. The thing is, you don’t have to even mess with trying to prove <I.that “equivalence,” because ALL that you really need to do is ask the right question.
The right question is not is the PTAB doing what Congress allows it to do.
The right question is CAN Congress allow the PTAB to do what Congress wants it to do (in light of protections for property rights AT the point where those sticks in the bundle of property rights are taken with NO court review or recompense of any kind – and I have to emphasize that this taking is AT the initiation point, absolutely separate from ANY final decision on the merits.
One of the amicus briefs filed on or before March 30 in support of the Respondent [the PTO, substituting for Garman] was “BRIEF OF DELL, [joined by] ACUSHNET, ALLIANCE OF AUTOMOBILE MANUFACTURERS, APPLIED MATERIALS, ASUSTEK, BJ’S WHOLESALE CLUB, CANON, CCIA, CISCO SYSTEMS, CTIA, DEMANDWARE, DROPBOX, EBAY, FAIRCHILD SEMICONDUCTOR, GLOBAL AUTOMAKERS, GOOGLE, HPE, HTC, INTEL, THE INTERNET ASSOCIATION, JCPENNEY, L BRANDS, LIMELIGHT NETWORKS, LINKEDIN, MICRON, NATIONAL RETAIL FEDERATION NETFLIX, NEWEGG, PEGASYSTEMS, QVC, RACKSPACE, RED HAT, RICOH, SAMSUNG, SAP, SAS, SEAGATE, SYMMETRY, TOYOTA, VARIAN, VIZIO, AND XEROX
If I counted right that is 41 companies.
Seagate?
Well, of course. But it amazing how much my thinking has changed since I left.
Could your change in thinking possibly be influenced by the fact that when you were an in-house patent attorney you were rewarded by saving stockholder money from litigation costs, and when you went into private practice you were rewarded for collecting stockholder money with litigation billings?
Paul, no doubt.
Would it not be that “litigation costs” are not an end in and of themselves, Ned?
One can not spend on lititgation costs and cost the company money – NOT protecting the client/stockholders – and end up costing those self same entities MORE than what would have been spent in litigation, just as one can spend on litigation costs and EARN the company just enrichment that would have been forsaken without litigation – (the so-called “internal view” is not always the best view for the client/stockholders).
Beware the kool-aid that “litigation” must be “bad,” that “enforcing ones rights” must be “bad.”
This is NOT to say that ALL litigation is good and that all costs spent in litigation is money well spent. Clenching one’s eyes tight in either regard is not a wise course of action. But please, most attorneys I know act diligently and ethically attempting to achieve the best returns for the client/stockholders.
One more thing not in the PTO Cuozzo brief: Nike, Inc. v. Adidas AG, Case No. 14-1719 (Fed. Cir., Feb. 11, 2016) remanding back to the Board a denial of claim amendment in an IPR. Of course this can be argued both ways: (1) that the PTAB has been too restrictive of claim amendments [even though they say they have already changed their practice since] and/or (2) that patent owners denied a claim amendment in an IPR clearly have a judicial relief opportunity.
Why (2), Paul…?
Here is something else I was surprised to not find in the PTO [Respondents] brief:
Although the PTO brief cites Nautilus v. BioSig (Supreme Court 2014), it does not ever explain why that recent [post-Phillips] decision might be relevant to Question 1 in this case.
Nautilus is arguably relevant to the limited rationale expressed in Phillips for choosing between several different plausible interpretations of an ambiguous claim element to pick the one that helps saves the validity of the claim during litigation [as providing the distinction from BRI claim construction]. After Nautilus, might the more appropriate decision be to reject such a claim for ambiguity instead? If so, has Nautilus effectively narrowed an already Phillips narrowed difference between BRI and claim interpretation during litigation?
Comments welcome.
Paul, you raise a great point. If the claims are indefinite, just how can one conduct an IPR where the issues are limited to patentability of claims over prior art where one does not even know what is claimed?
As even a beginning examiner knows, one cannot properly conduct prior art searches for indefinite claims. So how can one properly conduct an IPR?
In court, if a claim is indefinite, the court will hold the claims invalid on those grounds during summary judgment. The issue of validity of the claims over prior art will not be presented to the jury and the case will be over — at least as to those claims.
What to do? There is no easy and glib answer.
There are PLENTY of “easy AND glib” answers…
It is much more difficult to obtain easy and NOT glib answers….
But that involved unclenching one’s eyes and being willing to ask the right questions (even if the implications are H U G E).
There have been IPRs where the PTAB has refused the petition by finding the claim ambiguous. Not that many, I think.
I agree, I don’t find a good argument that Nautilus has not narrowed the difference between the BRI and the contextual interpretation of Phillips.
The only difference that I think remains between BRI and contextual interpretation is that the BRI only takes into account explicit disclaimers -when the applicant acts as his own lexicographer- whereas disclaimers can be implicit under the contextual interpretation of Phillips.
That’s an interesting argument I don’t recall hearing before. My recollection was that Phillips supports disclaimers that are cleas, and that the actual subject claim language interpretation in the Decision in Phillips was broad, rather than narrow as was being argued. Can you provide some examples?
If “implicit disclaimer” includes the impact of narrowing claim amendments or remarks made during application prosecution to distinguish prior art, should that be different under BRI?
From Phillips
Assigning such a limited role [of serving as a check on the dictionary definition of a claim term] to the specification, and in particular requiring that any definition of claim language in the specification be express, is inconsistent with our rulings that the specification is “the single best guide to the meaning of a disputed term,” and that the specification “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.” Vitronics, 90 F.3d at 1582; Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (“Even when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.”) (citations omitted); Novartis Pharms. Corp. v. Abbott Labs., 375 F.3d 1328, 1334-35 (Fed. Cir. 2004) (same); Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (“[A] claim term may be clearly redefined without an explicit statement of redefinition.”).
PiKa, that part of Phillips is also followed by the PTAB for BRI.
I disagree with you. From in re Morris (BRI)
The problem in this case is that the appellants failed to make their intended meaning explicitly clear. Even though the appellants implore us to interpret the claims in light of the specification, the specification fails to set forth the definition sought by the appellants. Nowhere in the technical description of the invention does the application use or define the phrase “integrally formed.” The phrase briefly appears in the “Summary of the Invention” and again in a description of the “advantages of the present invention.” In neither case is a drawing referenced or a precise definition given.
PiKa, there was also the problem that “integrally formed” had a known meaning that included the prior art.
Take “screw.” Known meaning. The spec shows a Philips-head screw. One cannot claim that “screw” is limited to a Philips head screw in order to avoid the prior art.
Now instead take Widget. No known meaning. Widget in the spec is a Philips-head screw. I think one can say that Widget mean the Philips-head screw.
Paul, I think Phillips is more about whether the term “baffle” should be given its ordinary, well understood, meaning or should be given a more limited meaning that would be limited to the specific embodiments disclosed, which were limited to embodiments that all disclosed oblique-angled baffles. There were apparently many examples in the specification and in the claims that indicated that the applicant was using the term “baffle” in its ordinary sense and not in any specific way limited to the examples disclosed.
Yes Ned, but the point is that a normal patent owner in a normal IPR [unlike Cuozzo] would be complaining that BRI is too broad and that a Phillips claim interpretation would be narrower and avoid the cited prior art without needing a claim amendment to introduce spec limitations. Yet as you note, the actual decision in the Phillips case was a broad claim interpretation.
As has been noted numerous times in other threads, there is a lurking mythology out there that the PTO can whimsically institute an IPR with no possibility of review of that decision. As noted very recently by Judge Reyna in Shaw Industries however, the PTO is bound by the Constitution and the Administrative Procedures Act and its actions are always subject to challenge on those grounds (see here: link to patentlyo.com).
The problem for Cuozzo and other deserving recipients of invalidation in the IPR context is that you can’t effectively resuscitate a patent that has been righteously slaughtered just because the axe was stolen. There might be a better case to be made down the road by a patentee whose patent survived an “illegal” IPR institution decision unscathed. Perhaps the government could be sued for the expenses incurred in defense of a frivolously granted IPR proceeding…?
An “illegal” IPR institution that results in an invalidated patent could be analogized to an unlawful traffic stop whereupon the police officer discovers a stolen Picasso on the drivers seat. Nobody believes that the driver is entitled to “reclaim” the stolen Picasso, even if the driver remains unconvicted of the theft because the evidence is withheld. And that’s true even if the stolen Picasso was acquired at a police department fundraiser. The major difference between an invalid patent and a Picasso, of course, is that the invalidated patent isn’t worth the paper it’s printed on.
Thanks for the reminder of a possible suit under the Administrative Procedures Act for an illegally instituted IPR if that ever occurs. That is not mentioned in the PTO Cuozzo brief.*
*[Not surprisingly, since that could be extra work for the Solicitors office, and I do not know if they could collect attorney fee sanctions for frivolous such suits?]
Your analogy isn’t a good one. First, the Picasso was illegally in the driver’s possession. That’s not the case with patents, which are assumed to be valid. Furthermore, anything that’s related to the illegal stop could be thrown out. Thus, the actual “stop” (the IPR) should never have occurred and any illegality that stems from that stop could be dismissed (including the subsequent — illegal — IPR).
There is no presumption of validity in IPR. 35 U.S.C. 316(e)
… hence the takings aspect at the Initiation Point….
True abut the statute Mike, and the procedures effectively require the patent owner to prove validity after institution.
MM, agree on the constitution. Constitutional defects are always reviewable.
Regarding the APA, see Heckler v. Chaney. If Congress makes a decision statutorily unreviewable, it cannot be reviewed under the APA.
As noted in one of the briefs, I think the AIPLA’s, the Feds are not even willing to entertain Mandamus. The brief cited about five examples of mandamus petitions, all denied, some without even a comment. MCM twice petitioned for mandamus regarding 315(b). Once right after institution. A second in the briefing to the Federal Circuit after Cuozzo came down.
As it stands, the PTO can and will do what it wants even to the extent it denies due process. Achates is the prime example here. The Feds will not intervene.
Almost everyone who has reviewed this situation believes what is going on here to be unprecedented. At some point, the Supreme Court is going to put its foot down.
Very few briefs focused on the big issue here — intervening rights. Some did, thank god.
There is a bigger issue than intervening rights Ned….
I always love how the questions presented can get so torqued.
The question presented, to which the Office brief is supposed to be written in answer to, is:
“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.”
INSTEAD, the Office wanted to answer this question:
“2. Whether a party may seek to overturn the PTO’s
final decision in an inter partes review based on an
alleged error in the PTO’s threshold decision to institute
the review, which Congress provided “shall be
final and nonappealable,” 35 U.S.C. 314(d).”
Note the obfuscation between “final decision” and the separate institution point.
The Office is purposefully NOT asking the right question.
Anyone want to speak for the Office (even in an imaginary manner) and respond to the actual question supplied by Cuozzo?
Anyone want to offer any “realistic legal analysis” that SHOULD HAVE BEEN supplied by the Office?
Paul F. Morgan – care to take a stab at it?
The Office does not get to re-write the cert question.
…apparently they do not agree with you.
The question presented is a tautology: “If the Board exceeds its statutory authority in instituting an IPR proceeding” without review is meaningless if they have unlimited authority in instituting an IPR proceeding without review.
The question phrased in a sensical way would be: “Can the board exceed its statutory authority in instituting an IPR proceeding?”
Of course some APJ might possibly exceed the PTAB statutory authority in instituting an IPR [even though no one has yet proven to the Fed. Cir. that that has ever happened so far.]
The question is when and how can that be challenged. There is no dispute that interlocutory appeal is prohibited. What is in dispute is can it be challenged only by mandamus, or never, or can it be raised in the appeal from the final decision of the PTAB?
Paul, Of course some APJ might possibly exceed the PTAB statutory authority in instituting an IPR [even though no one has yet proven to the Fed. Cir. that that has ever happened so far.]
Paul, with all due respect, when the Federal Circuit will not even hear an appeal regarding an institution decision, it is a tad bit off the mark to make the statement you just made.
Ned,
That is because Paul insists on being “easy AND glib”…
Good point Ned, I should have noted that even though the statute preventing institution decisions has controlled, none of those Fed. Cir. cases have suggested that the appellant would have had a good argument for illegal institution on the facts. Likewise in the two CRU appeals where the Fed. Cir. has allowed challenges to the institution even though they have the same institution challenge preclusion statute.
Where has there been an allowed challenge to an initiation decision?
Like I said, in two CRU Fed. Cir. appeals.
Cute Paul – which two, please.
“Of course, once the motion to amend is denied, then claims cannot ‘still be amended.”
Interesting point. Sometimes things are so obvious no one notices them.
“Of course, once the motion to amend is denied, then claims cannot ‘still be amended.”
Interesting point.
What in the world is so “interesting” about that point?
Consider:
“Once the motion to permit all discovery is denied, then discovery can not “still be permitted”
“Once the motion to amend the complaint is denied, then amendments to the complaint can not “still be permitted”.
Are those points also “interesting” points? They seem more like b0ring answers to questions that answer themselves.
But discovery no longer being permitted, or amendments to the complaint no longer being permitted, do not change the standards of proof or analysis in subsequent proceedings. What makes the claim amendment question interesting is that the USPTO seems to be asserting that if claims can still be amended, the claims should be interpreted differently than if they cannot still be amended.
So where in the life of a patent should they be applying this difference? After all, once permission to amend the claims is denied in a post grant proceeding, there is no difference between PTO review and judicial review in whether claims can be amended. In that case, why is it appropriate to apply different claim constructions?
That leads to another interesting question as to how well or effectively can the claims can be amended in a parallel or subsequent reissue?
Mike once permission to amend the claims is denied in a post grant proceeding, there is no difference between PTO review and judicial review in whether claims can be amended. In that case, why is it appropriate to apply different claim constructions?
You seem to be forgetting the reason that claim amendments are denied in the first place: because the proposed amendments — to the extent they are supportable by the specification — don’t make any difference with respect to the validity analysis.
If the prior art reference discloses vests with four buttons and vests with five buttons and another reference teaches that “button number may be varied as deemed appropriate”, it doesn’t matter if the term “vests” is construed to include “vests with any number of buttons or zero buttons” (according to BRI) or “vests with eight buttons” (according to some convoluted prosecution history argument made by the applicant who cites Phillips in support).
Note also that if it turns out that the PTO was wrong about the construction that the applicant has all the usual remedies for that wrong. So what’s the problem?
MM, the reason amendments are denied is that the patent owner must prove patentability.
Ned,
Why do you think the courts use the phrase “not invalid” as opposed to “valid”…?
anon, because infringer has the burden of proof of invalidity.
No Ned – that is NOT it.
While it is true that the accused infringer has the burden to sustain a defense of invalidity, the court could very well state that since a patent is presumed valid, and the accused infringer has not changed that, that the presumption of validity remains intact.
But they instead use a double negative.
There is a more subtle – but no less critical – reason why this language is used – and it has nothing to do with the burden being on the accused infringer.
Right, because the decision of “not invalid” in one case against one party is not controlling against any other defendant in another case – they may come up with a much better defense.
Exactly Paul – the nuance (of course) is that one cannot “prove” that something “is valid,” but can only shown that something retains the presumption.
The subtlety is that asking a patent holder to “prove” something that is not strictly “provable” is a f001’s errand.
The sloppy drafting of the AIA again on display.