PTO Brief – Looking for Supreme Support for its AIA Trial Regime

Oral arguments in Cuozzo v. Lee are set for April 25, 2016 addressing two particular questions:

  1. 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].
  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).

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:

  1. Historical: The PTO has “long applied the broadest reasonable-construction standard in all agency proceedings in which patent claims may still be amended.”
  2. 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.’
  3. 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:

  1. 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.
  2. 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.

 

About Dennis Crouch

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

175 thoughts on “PTO Brief – Looking for Supreme Support for its AIA Trial Regime

  1. 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.”

  2. 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?

    1. 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.

      1. 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?

        1. 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…._

    2. 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.

    3. 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.

      1. 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.

      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.

        1. Paul, do you think that it is at all objectionable that the IPR be instituted only on the claims and grounds alleged?

          1. Ned, if I said no, so what? Mere personal opinions on any subject like that from anyone on this blog are irrelevant and immaterial.

  3. 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.

    1. 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.

      1. 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.

  4. 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.

      1. 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?

          1. 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.

  5. 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.

  6. 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.

    1. 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.

      1. 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).

      2. There have been IPRs where the PTAB has refused the petition by finding the claim ambiguous. Not that many, I think.

    2. 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.

      1. 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?

        1. 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.”).

            1. 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.

              1. 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.

        2. 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.

          1. 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.

  7. 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.

    1. 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?]

    2. 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).

    3. 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.

  8. 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?

    1. 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?”

      1. 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?

        1. 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.

          1. 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.

  9. “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.

    1. “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.

      1. 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?

        1. That leads to another interesting question as to how well or effectively can the claims can be amended in a parallel or subsequent reissue?

        2. 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?

                1. 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.

                2. 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.

                3. 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.

          1. What utter C R P Malcolm / you cannot “deny in the first place” with a de facto claim of “not valid” because you do so without regard to ANY and all amendments.

            Did you think about your “reply” in the least before posting it?

            1. you cannot “deny in the first place” with a de facto claim of “not valid” because you do so without regard to ANY and all amendments

              Grown up patent attorneys understand that many specifications are filed without patentable subject matter in them. It’s usually not difficult to spot such specifications. I know this will be very very difficult for you to understand given that you’ve never seen a patent you couldn’t polish to your satisfaction.

              Have you looked at Cuozzo’s specification, by the way? It’s a pile of absolute jxnk. The term at issue in this case (“integrally attached”) doesn’t even appear in the specification as filed.

              1. There has never been an ipsis verbis requirement in US patent law.

                Why are you throwing a hissy fit like some “great commandment” has been broken?

                You attempt to portray yourself as “grown up” WHILE you are throwing a hissy fit….

                The usual Malcolm – happy Decade of Decadence.

  10. Lest we forget the s00per d00per awesome “techn0logy” (LOL) at issue in this case:

    0. A speed limit indicator comprising:

    a global positioning system receiver;

    a display controller connected to said global positioning system receiver, wherein said display controller adjusts a colored display in response to signals from said global positioning system receiver to continuously update the delineation of which speed readings are in violation of the speed limit at a vehicle’s present location; and

    a speedometer integrally attached to said colored display.

    Everybody got that? It’s a method of displaying a color (wowee zowee!) to indicate when a value has been reached. You know like “red means watch out!” and “green means it’s all cool”. That’s super deep techno stuff … if you’re a first grader, and you’re struggling in class.

    The values in this instance arrive at the display via a “GPS receiver” which was in the prior art when this ridiculous junk was filed but the PTO, of course, always loves to pretend it was born yesterday whenever anything remotely resembling a shiny comp00ter shows up in a claim. As everyone knows (except the born-yesterday PTO when it first decided to grant this jxnk) “GPS receivers” send location information which is suitable for any purpose that you can imagine using location information for. Yes, folks, that includes, e.g., figuring out where you are so you can know what laws apply to you. Like laws about whether you can carry a gun. Or whether you can smoke pot. Or whether you need to wear a helmet. Or whether you can drive 65 miles an hour. All pretty simple stuff and certainly not “patent-worthy technology” by any stretch of the imagination.

    Somehow the applicant believes it has a coherent argument that the term “integrally attached” has some magical meaning that makes its claim non-obvious. If you buy that, then I’ve got a bridge to sell you in New York.

    If the Supremes actually get around to hearing this case (it’s not too late for them to admit the shouldn’t have granted cert in the first place) they are going to have fun ripping the applicant a new one. And I’ll have fun listening.

      1. there is no real problem

        That much is true. The rest, of course, is just your usual self-serving hooey.

        In 2004 the PTO improperly granted a patent to Cuozzo, a magnificent glaring error which Cuozzo quickly scurried off to exploit.

        What were you whining about when that happened? Shall we take a guess? Probably LabCorp v. Metabolite Labs. Remember that one?

        Whether a method patent setting forth an indefinite, undescribed, and non-enabling step directing a party simply to “correlat[e]” test results can validly claim a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result

        Fun times. Nobody could have predicted how that one was going to turn out.

    1. The certified issues are not about any particular technology. So what is the point? Using Patently-O as your personal soapbox, maybe? There are better places for off-topic opinionating.

        1. I am sure he is old enough to know what a vinyl record is, and also what one can do when it has a nick or scratch. The broken record must be played, for some reason.

      1. The certified issues are not about any particular technology.

        But we all know that certain “technologies” are more susceptible to tanking than others, and we all know why.

        what is the point

        The point is that it never cease to amaze the depths to which patent maximalists will reach when their desperate schemes are threatened.

    2. Another simple one for me: The steps of the method result in information. The information is consumed by human beings. Ineligible as an abstract idea.

      The shopping mall map directory was laughed out of the CAFC recently. Cold comfort for the dozens of firms hemorrhaging lifeblood to fight this:

      US 6,233,518

      1. A method of providing an image-based traffic information in a region having at least one time-variant real entity, comprising the steps of:
      converting said time-variant real entity into a time-variant image vector entity;

      generating an attribute-designating statement of the time-variant image vector entity based on a traffic information so as to form a traffic state map;

      transmitting said traffic state map to a user device via a communication network; and

      displaying an image in accordance with the traffic state map on a screen of the user device.

      The Supreme Court has not done enough. Alice is a good policy start, but its flawed and random, and the same can be said of the whole IPR apparatus, which should not have been required.

      Just fix the law around information inventions and almost all of this junk goes away.

    3. 35 USC 103 “Patentability shall not be negated by the manner in which the invention was made.” An invention is an invention, it doesn’t have be groundbreaking.

  11. To respond to some question below, no, this Cuozzo Sup. Ct. case does not involve any arguments on either side that IPRs are unconstitutional, or are going to go away, or even whether IPRs are good or bad, nor does it have anything to do with 101 or any other issue than IPR procedures. Nor does it seem to provide much enlightenment [vs some allegations] on how much or how little difference there really is between proper BRI and Phillips claim interpretation, or even if switching from one to the other could really change the outcomes of many IPRs?
    The issue consuming most of the party briefs is the strong Cuozzo [and Cuozzo supporters] Cert Question 1 arguments that the PTO has unfairly combined BRI claim construction with a claim amendment opportunity so limited as to be almost unavailable.
    That complaint has been made loud and clear for some time, and a pending PTO rule change has been in the works for some time. A fair warning is that it would seem quite likely that the PTO may publishes a new rule and/or trial practice guide re IPR claim amendments well before the upcoming date of the oral argument in Cuozzo. Look for it. The PTO would naturally be hoping that this would “take some of the wind out of the sails”of the Cuozzo supporter arguments that claim amendments are effectively impossible in IPRs.
    If a PTO rule and practice change really does make timely IPR claim amendments easier then Cuozzo’s cert petition may have accomplished something for others, even if its own fact case was weak.

    1. PM arguments that claim amendments are effectively impossible in IPRs.

      What are these “arguments” anyway?

      What’s “effectively impossible” in most IPRs where the originally granted claims are highly suspect is not “an amendment of a claim” per se. Rather, what is “effectively impossible” is an amendment that (1) is supported by the specfication; (2) overcomes the teaching in the cited prior art references ; and (3) doesn’t shoot the existing prosecution history in the face. That failure is not the fault of the PTO or its rules but a failure of the applicant to describe an innovation worth patenting in the first place.

      Whatever “rules” are put in place to make it easier for applicants to amend have to be accompanied by rules making it easier for petitioners to cite additional art to address the amendments. The problem created by additional promiscuity with respect to amendments — and it’s a problem that the worst applicants out there are undoubtedly licking their lips waiting to exploit — is the creation of a game of whack-a-mole that would basically turn IPR proceedings into an endless public-assisted examination process.

      1. There is no reason a slightly easier IPR claim amendment practice has to turn into a delaying game of “whack-a-mole” if the one opportunity to amend claims must be within a reasonably short defined time period after the patent owner is served with petitioner’s cited art and claim charts. Before any trial starts.
        Besides, by now there should have been ample statistics that given intervening rights, fears that the claims may no longer be infringed as amended, and client decision making procrastination, that the number of TIMELY claim amendments EVEN ATTEMPTED in IPRs has been quite small compared to the total number of IPRs. If anyone has statistics to the contrary, why are they not cited in Cuozzo or amicux briefs?

        1. PM There is no reason a slightly easier IPR claim amendment practice has to turn into a delaying game of “whack-a-mole” if the one opportunity to amend claims must be within a reasonably short defined time period after the patent owner is served with petitioner’s cited art and claim charts.

          Again, if you are going to allow for promiscuity in amending claims, then petitioners need to be able to provide additional prior art in response to the amendment or the effectiveness of the IPR is severely compromised. The best way to keep the deadline in place and prevent applicants from playing games is to go at least as far as the method that has already been implemented: (1) require the applicant to provide verbatim written description support for the proposed amendment or meaningfully define any terms that are introduced, (2) explain why the amendment will overcome the teaching in the cited prior art, and then (3) if the amendment is permitted, allow the petitioner to present additional art directed to the amendment and an amended argument for invalidity which, if successful, ends the IPR in favor of the petitioner.

          the number of TIMELY claim amendments EVEN ATTEMPTED in IPRs has been quite small compared to the total number of IPRs.

          Like you, I’m not aware that this observation is disputed. The reason it’s not disputed is because the explanation for the observation is obvious and unhelpful to Cuozzo and Company’s “death panel” mythology.

          1. MM, re IPR claim amendment requirements, I believe that IPR practice already effectively requires: “(1) require the [patent owner] to provide verbatim written description support for the proposed amendment or meaningfully define any terms that are introduced, (2) explain why the amendment will overcome the teaching in the cited prior art.”
            I would assume that a timely Petitioner motion for: “(3) if the amendment is permitted, allow the petitioner to present additional art directed to the amendment” would be favorably considered? [It could provide grounds for a petitioner appeal of the final decision to the Fed. Cir. if not.] Again, “timely” should be pre-trial.

    2. From the minute the AIA was going to include a pseudo-trial, it was clear that years would be spent building that pseudo-trial framework. How did the AIA drafters not think that the IPR would eventually become as bloated as a bench trial? The rules of civil procedure are about fairness and justice. Just how “streamlined” can IPRs ever be without sacrificing fairness and justice? Is it at all possible that IPRs won’t eventually become just as complex and expensive as Interferences, or bench trials?

      1. At least two reasons. No uncontrolled discovery or motions allowed, and only 102 or 103 issues over only prior patents or publications allowed.

          1. As everyone knows, subject matter eligibility is already baked into multiple 103 “doctrines.”

            Formally introducing it into the IPR proceedings would, if anything, simplify the proceedings.

      2. H, the problem is that IPRs solve nothing unless the petitioner wins and the claims are cancelled. The petitioner can still raise grounds not instituted in litigation, mark my words.

        1. Ned, saying “IPRs solve nothing unless the petitioner wins and the claims are cancelled” is inconsistent with your usual claim that they almost always do win.
          If the petitioner does lose they are estopped from raising invalidity anywhere based on any patent or publication they could have reasonably found and cited.
          Since no defenses other that patent or publication prior art can even be raised in an IPR, of course other normal defenses can be raised in the patent suit. Furthermore, filing an IPR and losing is probably not going to impress any judge or jury.

          1. Paul, “If the petitioner does lose they are estopped from raising invalidity anywhere based on any patent or publication they could have reasonably found and cited.”

            I beg to differ.

            Clearly the statute was so intended. But when the PTO fails to institute on all challenged claims on all grounds, the petitioner is denied a full an fair opportunity to litigate. It would violate due process to estop a petitioner under such circumstances.

            I think the courts would view it that way.

            Thus IPRs will not prevent further litigation between the same parties on the same claims, just so long as different art is involved.

              1. Paul, let me clarify. When you said, “Claims an IPR refused to consider,” I took you to mean “grounds.”

                But I still would like the cite.

                1. Ned – I am not sure that I understand your reply of “but yes.”

                  Do you think that this makes your point at 8.2.2.1.1? If so, does this mean (you think) that Paul F. Morgan is off his rocker at post 8.2.2.1 (and his follow on post at 8.2.2.1.2 only makes his initial post ever more odd)…?

      3. I completely agree HoPB. They (Congress and the courts) should have (and can still) reform the laws and the rules to allow the centuries old court system to do its work with justice for innocent accused infringers. The IPR regime is simply a weaker, parallel justice system that amounts to more special law for patents, which should be anathema to justice. It’s a symptom of the generalized failure to adjust to the information age.

        1. with justice for innocent accused infringers… generalized failure to adjust to the information age.

          Careful of what you wish for – the words of Congress are already necessarily open to on rushing innovation (like the Information Age), and yet you have throw-backs like Malcolm and Ned refusing to admit such.

        2. I think you are correct about the inability for the courts and the laws to adjust to and keep pace with the informational age. Heck, I can tell my Echo to turn on or off my lights, which I personally think is amazing. And that’s just one thing that’s happened recently. The courts and Congress are simply far behind the times and the current state of technology.

  12. As noted above, a significant issue is the jurisdictional question that the USPTO is looking to kill with strong language flowing from a SCOTUS decision — e.g., file IPR 2 years after service, DJ then file IPR, CAFC review of post-CBM proceedings, etc.

  13. Anybody who sat on their hands or worse in the aftermath of State Street and the hyperinflation of the patent bubble doesn’t deserve a spot at the grown-up table. That includes every one of the ign0rant stooges who cheered Prometheus on.

    IPRs aren’t going anywhere. The reason they aren’t going anywhere is that it’s the best way to clean up the huge mess the CAFC and the PTO made (with the exception of all the methods that might work even better but which would result in even louder whining).

    Now cue up the mewling from the paper “patriots” who see a Constitutional violation everytime some junk patent is tanked but who were happy to wave their pom-poms around when the CAFC and the PTO joined hands and lawlessly dumped a massive pile of pure s h x t on the American public.

    1. MM, but 101 is not an issue in IPRs. So, IPRs are not the best way to clean up the mess.

      Summary dismissals under 12(b)(6) are.

      1. Ned,

        I haven’t read all the briefs. Did no one make the constitutional argument that decisions whether an executive entity has jurisdiction always must be reviewable by an article III court?

        1. I had thought about submitting an amicus brief to point this out, but I figured SOMEONE would do it. I know you covered it in your case.

        2. JCD, Briefly read all of them. None mention the constitutional challenge. MCM is referenced a bit, on our mandamus and on the stay of our reissue.

          One brief by a patent owner suffering from PTAB abuse said this,

          “In raising its own grounds of unpatentability, the
          Board disregarded its role as a neutral arbiter and
          became an advocate…”

          There are many abused patent owners who feel the same way about the PTAB.

          One brief, Professor Dolin’s argued that a taking occurs:

          “A patentee discloses his invention to the public
          in exchange for a limited monopoly, as defined by
          the claims of the patent. To invalidate those claims
          using a different standard than one that considers
          the true meaning and scope of a claim would violate
          the bargain the patentee struck with the public.” In
          re Cuozzo, 793 F.3d at 1301. Not only would it violate
          that bargain, but using a different standard to
          invalidate claims, namely the broadest reasonable
          interpretation, constitutes a taking of private property
          without any compensation. Br. at 10.

          Perversely, an angry brief in favor of patent owners by the Licensing Exec. cites Granfinanceira like this:

          Concerning Article I courts such as the Patent
          Trial and Appeal Board, there can be but little
          question that constitutionally, Article I courts – in
          contrast with Article III courts – may adjudicate
          private patent validity disputes. This Court has
          stated that Congress may supplant a common-law
          cause of action with a statutory cause of action that
          inheres in the Government. Granfinanciera SA v.
          Nordberg, 492 U.S. 33, 53 (1989) (quoting Atlas
          Roofing v. Occupational Safety and Health Review
          Comm’n., 430 U.S. 442, 458 (1977). Acting for a valid
          legislative purpose pursuant to its constitutional
          powers under Article I, Congress may create a
          private right that is so closely integrated into a
          public regulatory scheme as to be a matter
          appropriate for agency resolution with limited
          involvement by the Article III judiciary. Id. A right to
          file for and pursue an IPR, PGR or CBM is a private
          and statutory right and cause of action. Reasonably
          interpreted, the action of Congress in creating these
          rights was for the valid legislative purpose of
          promoting progress in science and the useful arts by
          assuring that correct and only correct inventors gain
          patents and that all persons involved in patent
          challenges including inventors, patent owners, and
          other interested people have an efficient forum for
          resolution of the challenges. The IPR, PGR, and
          CBM rights are closely integrated into the larger
          patent scheme and the matters of comparison of
          patent claims to prior art for novelty and obviousness
          are central to the training, understanding, and work
          experiences of Patent Office personnel.

          Br. at 12-13.

          1. Ned – which brief is this?

            “Concerning Article I courts such as the Patent
            Trial and Appeal Board . . .”

            This passage is incorrect on multiple levels.

      2. 101 is not an issue in IPRs. So, IPRs are not the best way to clean up the mess.

        The best way to clean up the mess is make 101 issue an issue in IPRs, which is exactly where it belongs.

        And that’s what’s going to happen going forward.

        Wait and see.

        Summary dismissals under 12(b)(6)

        Nope. Sorry.

          1. 101 in IPRs going forward? On one legal grounds?

            On the grounds that the statute is amended to include 101.

            Alternatively, the PTO simply starts rigorously applying the old 101-based doctrines of ign0ring all the weightless abstract limitations that show up in the typical junk claim.

    2. Once again Malcolm attempts to pass off as his “legal argument” that the ends are desired, so who cares about the means.

      ANY attorney worth their salt would NOT advance such utter nonsense.

      1. Malcolm attempts to pass off as his “legal argument”

        My legal arguments already won and your arguments lost. That’s why you and your cohorts are flinging this hail mary at the Supreme Court.

        Equally importantly, as I’ve already told you, even if by some miracle you win anything here, you’re still going to lose the war. The system will never return to the complete n u tsanity that existed prior to Prometheus. That’s because the days when nobody is watching the money grubbing shenanigans of you and your patent abusing cohorts are over, and they’re over forever.

  14. Re:

    2. Policy: The no-review approach fits the AIA-Trial purpose of being “an efficient non-judicial alternative for testing the patentability of issued claims.”

    “Strength” in a non-judicial avenue – like a dictatorship – is a flaw, not a strength; a bug, not a feature.

    Even though Congress is the correct branch of the government to write the statutory law that is patent law, even that branch cannot do “whatever” it wants and must abide by other existing Constitutional protections.

    Stating that “this is what Congress wanted” just is not a winning argument when what Congress may have wanted is not permitted.

  15. Re Question 1: “to BRI or not to BRI, that is the question”

    The PTO Brief does a very thorough job in factually responding to or rebutting the various public policy and other arguments made by Cuozzo and its amicus supporters.
    However, in my view the PTO Brief does not adequately stress or summarize the most important LEGAL issue for Question 1. That should be: Does “Chevron deference” apply, or not, to the PTO BRI IPR regulation adoption? But this key issue does not even rate a mention as such in the PTO’s Table of Contents! There is one sentence on p.11 of the Brief citing the Sup. Ct. Chevron decision. Only on p.34 does this brief also cite the important follow-on Chevron deference case of United States v. Mead Corp., 533 U.S. 218, but only for one of the reasons it is applicable here. Hopefully some amicus brief author will have presented this key issue more clearly and cogently. It can be done in a single paragraph, as in the example below, for which the PTO Brief has already laid the groundwork:
    The controlling basic principle of federal administrative law applicable to this case is Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). It holds that federal agencies are generally entitled to deference from the federal courts when those agencies interpret statutes that they implement, unless Congress has clearly already resolved that interpretive issue. This is particular applicable where Congress has expressly delegated rulemaking implementation of the subject statute to the agency, as Congress expressly did here in 35 U.S.C. 316 (a) and (b) for Inter Partes Reviews. In particular, United States v. Mead Corp., 533 U.S. 218, 226–27 (2001) states: “We hold that administrative implementation of a particular statutory provision qualifies for Chevron deference when it appears that Congress delegated authority to the agency generally to make rules carrying the force of law, and that the agency interpretation claiming deference was promulgated in the exercise of that authority.” Mead Corp. and other opinions further note that the “consistency” of an agency interpretation is a factor to be considered when evaluating the agency interpretation persuasiveness. The PTO has consistently applied the BRI test in all of its proceedings for its entire modern history! Including interferences, which are, like IPRs, contested PTAB proceedings. As expressly authorized in 35 U.S.C. §135, issued patent claim validity is challengeable in interferences. Proposed claim amendments must meet strict motion requirements. Under BRI claim interpretation issued patent claims have been cancelled for invalidity over prior art in interferences for many years. [Merely as one example, Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997)]

      1. The PTO brief spells out that Congress by AIA statute delegated to the PTO broad special statutory rulemaking powers that the PTO did not have for what Dudas & Co. tried to pull off in Tafas.

      1. Ned, someday, I hope, you are going to finally realize IPRs are not going away judicially or legislatively, and that you will also learn the difference between realistic legal analysis of what is going on rather than blind hope that it is all just going away.

        1. Paul,

          You are simply not one to speak of this “realistic legal analysi” the way that you refuse to give one concerning the “all or nothing” nature of the AIA.

          It comes across more than a little hollow for you to chastise Ned.

          1. Anon, I assume you are referring to your unsupported theory that IF a single section of a large body of legislation [which is a collection of numerous independent or even unrelated legal changes] is held unconstitutional, then that entire legislation [the AIA in this case] must be held unconstitutional because it did not have an express “savings” clause. You can read the following or some other newer law review article on the subject and tell me where your theory is supported if you want to:
            link to repository.law.umich.edu
            Meanwhile since no part of the AIA has been held unconstitutional, or is likely to, I see no need to engage in any discussion of your theory until it happens. It is certainly not relevant to Cuozzo.

            1. Your link is not working Paul.

              And neither is your conclusory statements and UNwillingness to actually address the points that I put on the table because “you see no need” (hint: unclench your eyes)

              I have already laid out my “theory,” in plenty detail for you to discuss and you are free to actually engage with those points.

              Clearly, your attempted spin here is false, as the AIA was NO mere “collection of numerous independent or even unrelated legal changes]” and Congress did affirmatively consider – AND REJECT – a separability amendment for this very “collection.”

              Another payday from the Vegas bookie that you would not engage on the topic.

              The table IS set for you and your not wanting to discuss the issue with all of your feeble protests makes it perfectly obvious that you are merely running away.

              Again.

  16. Re Question 2, the PTO brief does indeed takes an extensive “hardball” statutory interpretation position that 35 U.S.C. 314(d) provides total denial of any right to ever challenge on appeal any institution of any IPR on any ground. Only grudgingly noting only in two footnotes that the Fed. Cir. decision below may leave open the possibility of a mandamus challenge in some cases. There is no mention of, or distinguishing of, the two Fed Cir. decisions allowing initiation challenge arguments to be made in the appeal of final CBM decisions, even thought this same statute applies.
    There is no concession to Cuozzo’s argument that this statute is really intended to preclude interlocutory appeals of IPR institution decisions. The interesting PTO counter-argument to that is that such an interpretation would make this statute superfluous because existing administrative law already precludes interlocutory appeals of agency decisions to institute or not institute administrative cases.
    The PTO brief also argues that, in any case, Cuozzo has failed to show any error in the institution of his IPR. Because it is not contested as to one claim, and the two added claims were so dependently related to that claim that the same prior art had to apply to them.
    P.S. I was surprised the PTO did not even argue Chevron deference for their interpretation of this statute.
    P.S. Listen in the Cuozzo oral argument for the answer if a Sup. Ct. Justice asks if even a clearly illegally instituted IPR is forever exempt from any judicial review?

    1. Paul, you may have been around when the movers and shakers were discussing the language for the new inter partes review. You a call any discussion as to why they wanted to put into the statute that the institution decision “under this section” be both final and nonappealable?

      What if a petitioner files an otherwise worthy petition but is denied a trial because the PTO holds that the petitioner is barred by estoppel. However the petitioner believes that the PTO is made a legal error in that determination. Why should they not be able to appeal it?

      I suppose one could say that the PTO want to be immune to such appeals and that is why they put the the not appealability into the statute in the first place

      1. Ned, I don’t understand your hypothetical, and I have no inside knowledge of why the the IPR institution-never-appealable was written the way it was, or why the difference from the prior versions for reexaminations. But if you read my last sentence in 3 above on Cuozzo cert Question 2 you can guess that I am not taking bets on the PTO easily winning on their interpretation of this statute.

        1. Paul, Unless I missed something, IBM seems to be the only amicus supporting BRI. Did you see any other?

          One brief did argue that BRI was a TAKING without due process.

          1. Ned, sorry but my answer your question has been stuck in “moderation” for two days, so here it is basically again:
            Amicus briefs in support of the Respondent [the PTO standing in for Garman] were not due until today, March 30. By now you should be able to see several of them in Scotusblog. At least one such amicus brief is joined by a number of major companies. But it still does not contain several of the points which the PTO brief should have that I have noted in detail above. And it ignores the standing issue.

  17. All good arguments from the USPTO, assuming that patent validity remains a public right.

    If a private right, all of this falls.

    1. Absolutely – which is why Cooper v. Lee is so critical (and/or MCM).

      Anyone know when we the Supremes could be expected to make a decision on the cert petition?

    2. “Patent validity” isn’t a “right” at all.

      What is a public right is now the right to file an IPR to challenge validity.

      1. OK, but if “patents” or “patent rights” are private rights, then there could not also be a public right to challenge those – hence the Federal Circuit’s current position that essentially patents are public rights.

        1. “then there could not also be a public right to challenge those”

          Sure there can. If you think otherwise you’re not understanding what the difference between a public right and a private right is. It isn’t anything magical. The “private right” that is “patent rights” is the right to exclude someone from making, selling, using or bring an action in court, and is available only to the inventor that filed or who he assigns/sells it to (hence it is private). The “public right” that is the right to challenge a patent’s validity in an IPR is available to anyone in the public (hence it is public). That’s the difference.

    3. anony, the holding of the Federal Ciircuit is that “patent rights are public rights.”

      I will grant you that they also held that patent validity was a “regulatory function.”

        1. A, with IPRs, it the validity of the patent at issue, the remedy is a certificate cancelling claims?

          But “rights” are the rights of one that are protected by legal actions at law. Public rights are the rights and privileges of the sovereign acting in its sovereign capacity that are not challengeable even in a court of law except perhaps for constitutionality.

          Inventions are not public rights. If so how? If the government grants a patent that protects an alleged invention that is not an invention, it is potentially a dispute between the government and the patent holder. This dispute cannot be fairly handled by the government itself. That is why even it should be handled in court.

          But the Supremes have several times held that the government has no standing to challenge validity in court. So how in the world does it get the right to revoke a patent on petition of a third party.

          It is ruse, a mockery of the law.

          1. “But the Supremes have several times held that the government has no standing to challenge validity in court. So how in the world does it get the right to revoke a patent on petition of a third party.”

            Standing in court is quite different than the statutory command from congress to perform IPRs.

            1. That is why, 6, the “right question” deals with the viability of that very same “statutory command.”

              You do realize that not everything that Congress commands passes muster, right?

            2. 6, and the reason for not having standing is that the PTO does not have the constitutional right to revoke a patent.

              One cannot confer constitutional standing by statute. It requires a real case and controversy.

              1. “6, and the reason for not having standing is that the PTO does not have the constitutional right to revoke a patent.”

                The reason who, specificially, doesn’t have standing, where specifically (in what court room?), is because the PTO doesn’t have the “constitutional right” to revoke a patent? I’m confused about what you’re even talking about. You guys seem to confuse the requirement for standing in a courtroom with a requirement for standing everywhere. Courtrooms are special in that they require standing, other places do not.

                Article 3 doesn’t say specifically that the congress can take back one of these exclusive rights, but they’ve been doing that since forever through the statutes that cause invalidity. I’m pretty sure the congress has the authority to pass laws that affect the validity of an issued patent and whether it is revoked, whatever the mechanism.

                “One cannot confer constitutional standing by statute”

                “Constitutional standing”? What are you talking about? Or are you talking about standing, in a court room, that will pass constitutional muster? That’s a separate issue brosefus.

                1. 6, One cannot confer constitutional standing by statute”

                  <i.“Constitutional standing”? What are you talking about?

                  Case and controversy, 6. That is constitutional. Statutes cannot override the constitution.

                  The Constitution says that one cannot be twice tried for the same crime. A statute cannot override this, not even if the crime were relabeled by the statute, and not even if Congress “assigned” the adjudication of the crime to the PTO where the Direct executed the criminal upon conviction by the PTAB.

                2. 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.

  18. “Historical: The PTO has “long applied the broadest reasonable-construction standard in all agency proceedings in which patent claims may still be amended.”

    This is stated as if to say — If the applicant disagrees with the “BRI” the applicant can simply amend to read away from the “BRI”.

    But, this overlooks the consequences of any amendment that go beyond the amendment itself, such as the sacrifice of “equivalents thereof” that the Courts pronouncements have created. According to this pronouncement the same claim language is given different interpretation in court based on whether it is original claim language or was arrived at through amendment. My recollection is that the sacrifice of equivalents applies to all portions of the claim, not just the amended portion.

    So, the applicant cannot really “just amend” to get around a ridiculous BRI….

    1. You’ll get no sympathy from me for losing the win dfall “equivalents” but losing other things are somewhat more sympathe tic. I do feel almost like the issue of claim validity, where it depends on some tiny prac tically insigni ficant claim drafting issue, especially where the issue only arises under BR I, should be solely an issue between the gov and the paten tee. And thus steps should be taken to preserve the situation outside of the interaction between the gov and the paten tee.

    2. I think the sacrifice is to the amended portion, and the other (non-amended) portions of the claim get their full equivalents.

      1. You are correct. The estoppel is limited to “the claim element” that was amended. So, one better use a lot of indentation so there are more claim elements….

        1. Except DoE itself (during infringement analysis) is applied “element by element,” so the fewer elements the better there…that’s a tradeoff, I suppose.

          1. Good points Les and Ken. Personally, for many cases, I’ve given up on trying to lessen the effects of estoppel. If you’ve ever tried to prosecute claims written overseas, they tend to be extremely broad (think one-line method or even no lines and a bunch of “wherein” clauses with no actions), and I have no hope of lessening estoppel.

          2. I’m not sure I follow your thinking Ken. Can ya gimme a fer instance where one big element would be better than say three smaller elements in a DoE analysis?

            1. Well I suppose I’d have to think of a specific good example, but in principle it’s the difference between having to win one argument versus multiple arguments (especially since the burden is on the patentee to show DoE).

              With only one element, I just have to argue that essentially the claim “as a whole” is substantially the same. With multiple elements, I need to argue (successfully) that EACH of those elements is substantially the same as a purported counterpart element of the allegedly infringing item. It seems easier to convince a jury (especially) that a claim “overall” is substantially the same as something else, vs. having it broken down piecemeal which gives the defense more room to poke holes.

              But you’re quite correct regarding the creation of estoppel also being element by element. So perhaps multiple, parallel independent claims could be a way to try to have one’s cake and eat it too?

              1. I guess my thinking is if the infringing device is over all equivalent, then a long laundry list of equivalent sub-elements shows the egregiousness of the infringement and hammers the point home. Maybe your point is with a long list its easier to find an element that is arguably not equivalent…

                Shrug, I guess it depends on the facts.

                In that case, I says ya makes your indents and ya takes your chances.

    3. Sincere newbie question:

      Why is the doctrine of equivalents only applied to infringement? Why aren’t equivalents considered for novelty and obviousness?

      1. Equivalents are applied, though not specifically called that. Under 103/obviousness, an Examiner will find something similar (an equivalent), and say why it would have been obvious to achieve the claimed invention starting at the prior art.

        That is the theory. In practice, your experiences with examiners may vary.

      2. Alexander, you might want to read in re Alappat where means-plus-function “equivalents” was deemed to include, even for patentability purposes, a programmed general purpose digital computer programmed to perform the functions of the hardware claimed by the various means-plus-function claim elements.

    4. Les, with issued patent, amendments cause loss of rights, real damage.

      This is not a joke. It is patently harmful to patent owners. It is nothing but a sick joke and has been since the ’80s when reexaminations first began.

        1. Les, I opposed the AIA. I thought we could fix the problem of interferences simply by giving the patent to the first to file, which is almost always the case anyway because normally the senior party wins.

          Instead, the movers and shakers sought to rewrite the law. Why? It did not make any sense because it came out pretty much the same way anyway as my proposal above. The first-to-file normally gets the patent. However, virtually everything but 101 in the statute is new and has to be interpreted; and this is going to cause chaos for the next 50 years.

          It is clear that movers and shakers really did not like 131 declarations. They also want to expand of the the scope of prior art to include patent applications filed in countries other than the United States. They wanted to expand public use prior art to public uses everywhere. Why they wanted to do this to Americans has never been adequately explained because it hurts us. This is the same kind of mentality that a certain presidental candidate say is so typical of the DC establishment. They really do not care about America.

          We did not even get harmonization out of this. There is so much in US law today that simply has no counterpart outside United States – such as the inclusion of patents and applications as of their effective filing dates in prior art for 103 purposes. Moreover what is all that nonsense about excluding from the prior art commonly owned subject matter. That is fricken bizarre.

          1. My own non-public (e,f,and g) invention should not be usable against me in my new improvement thereof invention Ned.

            Its the secret prior art that is fricken bizarre.

    5. “Intervening rights” applies to the amended patent claims, which is an even stronger disincentive to amend issued patent claims.
      [But, that also applies to patent claims amended by reissue.]

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