Supreme Court Affirms Cuozzo – Siding with Patent Office on BRI and No-Appeal

By Dennis Crouch

The Supreme Court has upheld the AIA provision barring challenges to the Patent Office’s decision to institute inter partes review. 35 U. S. C. §314(d).  In addition, Justice Breyer’s majority opinion approved of the Patent Office’s approach of applying the broadest reasonable construction (BRI) standard to interpret patent claims – finding it a “reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office.”

The Court was unanimous as to the BRI standard however, Justices Alito and Sotomayor dissented from the no-appeal ruling – they would have interpreted the statute as limiting interlocutory appeals but still allowing review of the decision to institute within the context of an appellate review of the PTO’s final decision on the merits.

Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ____ (2016).

No Appeal: The court began with the express language of the statute which expressly states that the decision of “whether to institute an inter partes review . . . shall be final and non-appealable.”  The provision is plain on its face and indicates congressional purpose of delegating authority to the Patent Office.  The dissenting opinion offered by Justice Alito offered to limit the statute as preventing only interlocutory appeals, but the majority rejected that interpretation as lacking textual support and being ‘unnecessary’ since the APA “already limits review to final agency decisions.”[1]  The Supreme Court also analogized the PTO’s initiation decision to that of a grand jury – which is likewise unreviewable. “The grand jury gets to say— without any review, oversight, or second-guessing— whether probable cause exists to think that a person committed a crime” (quoting Kaley v. United States, 571 U. S. ___ (2014)).

If you remember, Cuozzo did not present a Constitutional challenge to the AIA regime and the majority opinion offered a glimmer of limitation in that regard. Notably, the Court suggested that challenges to the decision to institute might be appealable if based upon a Constitutional issue or some other issue outside “well beyond” the post issuance review proceeding statutory provisions.

We conclude that the first provision, though it may not bar consideration of a constitutional question, for example, does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office’s decision to institute inter partes review.

The opinion here includes a number of nuances that will be interesting to tease-out, but the bottom line is that IPR remains a powerful tool for challenging patents.

Claim Construction during Inter Partes Review: Regarding the Broadest-Reasonable-Interpretation being applied to patent claims, the court was unanimous in siding with the USPTO.  The court began by noting that Congress granted rulemaking authority to the USPTO to create regulations governing inter partes review and that this authority empowered the USPTO to enact rules both substantive and procedural that are reasonable in light of the statutory text.  Since the statute was “not unambiguous” as to the appropriate claim construction standard, and therefore that the USPTO must be given leeway in determining its administrative approach.

Cuozzo had argued that IPR proceedings were like trials in many ways and therefore the claim construction should be parallel to that of trial proceedings.  The Supreme Court rejected that analogy – finding that IPR proceedings serve a purpose much broader than merely “helping resolve concrete patent-related disputes among parties.”

[I]nter partes review helps protect the public’s “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.” Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U. S. 806 (1945); see H. R. Rep., at 39–40 (Inter partes review is an “efficient system for challenging patents that should not have issued”).

In finding BRI reasonable, the court followed this public-interest pathway and found that BRI helps to provide stronger bounds on patent scope:

We conclude that the regulation represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office. For one thing, construing a patent claim according to its broadest reasonable construction helps to protect the public. A reasonable, yet unlawfully broad claim might discourage the use of the invention by a member of the public. Because an examiner’s (or reexaminer’s) use of the broadest reasonable construction standard increases the possibility that the examiner will find the claim too broad (and deny it), use of that standard encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims, and thereby helps prevent a patent from tying up too much knowledge, while helping members of the public draw useful information from the disclosed invention and better understand the lawful limits of the claim. See §112(a); Nautilus, Inc. v. Biosig Instruments, Inc., 572 U. S. ___ (2014).

Affirmed.

Most of the IPR-related petitions for writ of certiorari that are still pending are likely to fall-away at this point. However, the major caveats in the majority opinion (noted above) offer some light for both Cooper v. Lee and MCM v. HP since those petitions challeng the system on US Constitutional grounds.

USPTO Director Michelle Lee offered the following statement in reaction to the Cuozzo decision:

The USPTO appreciates the Supreme Court’s decision which will allow the Patent Trial and Appeal Board (PTAB) to maintain its vital mission of effectively and efficiently resolving patentability disputes while providing faster, less expensive alternatives to district court litigation.

Director Lee will likely step-down as the Obama Administration moves out.  A portion of her legacy will remain as the named respondent.

= = = = =

[1] 5 U. S. C. §704

 

About Dennis Crouch

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

286 thoughts on “Supreme Court Affirms Cuozzo – Siding with Patent Office on BRI and No-Appeal

  1. I’m not sure if this fact ever got mentioned by anyone below but it surely didn’t get mentioned by the usual whiners: Cuozzo’s patent was a complete pile of cr@p that he never deserved. It’s the kind of basement-level junk that doesn’t belong in any patent system, ever.

    He knew it. Everybody knew it. His two cr@ppy attorneys knew it. Probably Dennis Crouch knows it, too, but he’s too “kind” to say (watch out for those “perceptions”, Big D <– LOL).

    There's a great write-up of the history of the case here.

    link to arstechnica.com

    One major lesson for everyone: don't get in bed with b0ttom-feeding patent tr0lls and their junk. It isn't worth it.

    Prediction: this lesson will be ign0red lbecause the entitled b0ttom-feeders who whine about IPRs will do and say anything — literally anything — to turn the clock back to the days of State Street Bank. So let's grab another bucket of popcorn, sit back, and laugh some more as these privileged b 0z0s parade their greed and ign0rance down main street.

      1. Lulz – how fitting

        The parade of feelings far outweigh any notion of fact in his post. A mindless post to grab the top of the discussion board that adds absolutely zero to any discussion of patent law.

        1. The parade of feelings far outweigh any notion of fact in his post.

          Because “anon” and his cohorts really cares about “facts”!

          Sure they do. They’re very serious people!

          Let’s all grab some quail with Big GQ and watch that pendulum swing back, shall we?

          ROTFLMAO

          1. Do I really care…?

            Did I say that I care?

            You are the one that led in with “facts missed” (in case you forgot), and I was just pointing out that it seems like you care (far) less about any “facts,” and far MORE about you spewing your feelings.

            (and again, you cannot seem to help yourself with that Quinn 0bsession of yours… where did that come from?

  2. Do you guys/gals think they resolved the issue of whether or not it is Constitutional for a NONE institutional decision not to be appealable to a federal court?

    Consider that there are a class of petitions where the person does not have standing to file in court, so there are petitions that are refused and there is nothing that the petitioner can do.

    1. Consider that Obama could call up Lee (or maybe just Google would call up Lee) and say that no petition to invalidate a Google patent will be instituted. There would be nothing that a petitioner could do unless they had standing and then they would only be able to go to fed. dist. ct.

      Pretty harsh outcome. And we have all seen the type of stuff that Obama and Lee are capable of.

      1. It is even more harsh: look at the preclusion effects.

        And note as well: the law does not require any discussion as to why anything is instituted or not.

        Some like to crow about Rule 36 affirmances in other topics, while here, all that the politically appointed, non-Article III judges have to do is hold their thumb up or their thumb down at the very initiation point that changes the sum total characteristics (for those still uncomfortable with the notion of sticks in a bundle) of the granted property known as a patent.

        …and let’s not forget that the question to be asked is not to be asked of the Office, as they are merely ploying the power provided by Congress. The proper aim of the right question has to be whether Congress can avoid other Constitutional protections of property by their recent choices in the AIA.

        1. the law does not require any discussion as to why anything is instituted or not.

          “We have considered appellant’s other arguments and we are not persuaded.”

          Someone dig up Thomas Jefferson! It’s a Constitootional crisis! Doo process! Doo process! The Most Important People Ever must have their daily entitlements or a ten thousand word explanation! Or else!

          LOLOLOLOLOLOLOL

          1. (and in case you were just too eager to play out your ad hominem, the discussion here concerned BOTH sides – whether the item is instituted OR NOT.

            But you weren’t interested in anything but Tr011ing, were you?

            Yay ecosystem – Happy Decade of Decadence.

            What a schmuck.

          2. You are just showing us again you are not an attorney. Any attorney would be interested in the issue I presented. It is an interesting point.

            You just get on here and jeer anything that anyone says that isn’t in your “camp.”

            Malleus Maleficarum (MM)

  3. Less we forget one of the important take-aways here (as I predicted), this “NO APPEAL” at the initiation decision point makes what Congress did even more precarious as to its Constitutional infirmity of takings – at the point of initiation (and NOT to any subsequent decision on the merits).

    Maybe now Ned will engage in a very very simple exercise:

    Take the sum total of what your patent property has right after grant and compare that sum total to what your patent property has right after the initiation decision.

    That is the very simple first step that Ned refuses to take.

    How about it Ned – will you take that step now?

    Will you recognize what a political appointee is allowed to do by Congress that reduces what you have – and that reduction carries with it NO remuneration and has NO chance of appeal to an Article III court.

    (not sure why people do not want to recognize this reduction as the fitting use of the bundle of sticks analogy, but hey – there is no doubt that what you have has been changed by the initiation point decision, right?)

    1. Anon, the problem we have on this topic is that we have a fundamental disagreement as to what is a taking. Taking is of property. But property is a word we use to describe a type of legal right. A legal right is a right enforceable/protectable in court of law. A property legal right is the right of its owner to exclude others from trespasses. It is a right that is enforced in a court of law. If one does not have the right to go to court to exclude, one does not really have a legal right at all. Correspondingly, if the right is revocable other than by a court of law is it not a right in the first place.

      Thus, if the patent owner never had a right not to have his patent revoked except by a court of law the patent owner never had a legal right in the first place. Such a patent is not property.

      Now one might say that the PTAB only revokes patents according to law, and that is all that the Magna Carta demands; but the ultimate Guardian of liberty is not the executive, but the courts. They are that Guardian because they are in fact independent of the executive and of the legislative branches, and are guaranteed independence in multiple ways.

      But as I said, if a patent owner does not have a right to have his patent only revoked by a court of law, he does not have a legal right, but only a revocable privilege, and such is not protected by the taking clause in the first place.

      1. Sticks in a bundle Ned…(you are aiming for the bundle and not recognizing the sticks).

        Tell me – very simple and directly – do you have the same attributes of your property right after grant compared to right after an initiation decision?

        One step at a time, good sir, one step at a time.

        I notice that once again you have evaded the simple question and task I have placed in front of you.

        I would think that you would enjoy this intellectual exercise, and have to wonder why you resist taking even one step along this discussion path.

        1. …and you should understand that takings apply to situations that the entire bundle is not taken.

          You may “disagree” with that, but that is merely your mistake in understanding the legal doctrine – one I certainly hope you correct for yourself before you show up before the Supreme Court.

          1. If you do not recognize the concept from property law then you have no business whatsoever in this business.

            Aside from whatever you want to call it, you STILL have not engaged in the very simple and direct first step that I asked of you.

            Do you not know how to compare something and notice it’s attributes at two different dates based on where that something stands in legal proceedings?

            Or – as is apparent – do you have some other reason for not recognizing what is plainly there.

            I am curious as to what is your driver for not engaging this very simple exercise.

            1. “anon” f you do not recognize the concept from property law then you have no business whatsoever in this business.

              Translation: “I have no idea what I’m talking about but I sure do love to hear myself rant away. Besides, when I’m talking the voices in my fillings get a little quieter.”

              1. Total B$ from you Malcolm.

                Basic property law explains well enough the concept of the bundle of sticks.

                Ned wants to hang his hat on the fact that a patent right is a property right, but does not appear to even understand the basics of property law.

                And I see that you do not want to add any clarity whatsoever, but because the post is by anon – and is in accord with the law, but leads away from your own desired end state – you simply employ your usual mindless ad hominem.

                Happy Decade of Decadence.

                1. “anon” Basic property law explains well enough the concept of the bundle of sticks

                  And yet you apparently failed that class.

                  Ah, well. How’s the mail room treating you today? Any prior art that needs throwing away?

                2. Apparently not – maybe you want to try to say something meaningful instead of your empty ad hominem…?

                  Great job Prof.

  4. Please tell me I’m not the only one who thinks it is unlikely that SCOTUS would uphold two procedural aspects of IPR only to tank the entire IPR process after.

    1. Funny thing about that “present case or controversy” aspect of the US judicial system….

      Since the “tanking” cases have not even been before the Court yet, and all…

  5. Awesome decision.

    IPRs are one of the most important and successful aspects of the US patent system. They aren’t going anywhere.

    1. Your “feelings” of “awesomeness” aside, this decision as predictable as it was has NO bearing on “[t]hey aren’t going anywhere.”

      1. this decision as predictable as it was has NO bearing on “[t]hey aren’t going anywhere.”

        No bearing?

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        Thank goodness you can’t charge people for your awesome insights, “anon.”

        1. It is quite clear that other questions will be the driver of “going away,” and NOT the type of question in this case (no matter how the answer here would have come out).

          But hey, you woke up and realized that you had not spewed enough ad hominem, so why not here, right?

          1. the driver of “going away,”

            I’m pretty sure the “driver” left the parking lot and he took the keys with him. Sometimes the call of the egg salad sandwich is just too hard to resist, you know?

    2. MM and anon, two peas in a pod (even though substantively you’re antipodes).

      Yessiree, , it’s a great patent system that allows applicants to spend thousands and thousands of dollars and wait years to to have the USPTO tell them, “ok, you’ve got a patentable invention described and claimed in a patent application that passes muster under 112”, only to have the uspto tell them, often many years after that, “Oh, sorry about that, our examiners goofed, no patent for you, and no refund of your earlier-spent USPTO fees or attorney fees. Have a nice day.”

      Definitely the kind of system I would design if I were designing a patent system ab initio.

        1. “anon” Sounds like you and I are in the same pod

          And the blind squirrel finds a fellow n u t.

          You two are certainly in the same pod. If nothing else, you share a fondness for the false equivalence. LOL

      1. Let’s distinguish between the framework of the statute and the implementation. The framework set up out on the blue by the EPC in 1973 has ex parte examination to issue followed by post-issue inter partes IPR. They thought back then that it was a champion set up.

        So, with hindsight, did the EPC drafters get the ex parte/inter partes framework wrong in 1973? I don’t recall till now any serious and sustained assertion that they did.

        But what about the respective implementation, each side of the Atlantic? Is that where the problems lie? What are the most important differences, that render practice under the AIA so “great” and under the EPC less so?

        1. Wow – this discussion is NOT about the EPC.

          The world does not revolve around MaxDrei’s fervent desires and myopias.

          Different
          Sovereign

        2. Max, the opposition procedure in Europe is all but required if a patent is enforceable without regard to validity, which is the case in Germany.

          In the United States, every defendant has a right to contest validity in court.

          Also, I believe, in England and in most of the European countries, people who are accused of infringement have a right to go to court to seek to revoke the patent even before they are sued for infringement. We have a similar situation in the United States with that the declaratory judgments.

          Now most of Europe outside of England did not have the same struggle that England went through with an all-powerful executive. That struggle resulted in things like the Magna Carta that affirmed that a man’s property could not be taken except according to law – and that meant that he had a right to a day in court and to a trial by jury.

          “No free man shall be taken or imprisoned, or dispossessed or outlawed or exiled or in any way ruined, nor will we go or send against him except by the lawful judgement of his peers or by the law of the land. – See more at: link to historytoday.com

          That is what we are struggling for here today in the United States with IPRs.

          Now when one is considering the grant of a patent in the first place, we have a slightly different issue. I have no fundamental problem with the concept of oppositions provided that the patent owner is guaranteed a term of exclusivity after grant. But with postgrant oppositions, the opposition is taking place during the patent term, effectively postpones the patent grant and takes away from the patent owner his guaranteed period of exclusive rights.

          I also think that the opposition procedure must be highly controlled and regulated and fixed in time so that the patent applicant is not ruined by expense, and denied his patent simply because he could not afford the process.

        3. OT, but just heard that the UK is leaving the European Union.

          Maybe MaxDrei can provide some insight from a place with which he has some actual knowledge (instead of gumming up US patent discussions)…

          How about MaxDrei, any insight as to what this portends to the trans-Europe patent law scene?

          1. Neither the EPO nor the EPC is an EU institution. The EPC has 38 Member States, the EU 28. So the UK can continue as an EPC Member State even after it secedes from the EU.

            There is no EU patent yet. Perhaps there never will be now. Perhaps the UK is the first domino amongst many. Is BREXIT the EU’s Pearl Harbour? I don’t know. Ask Boris Johnson, England’s very own Donald, and its next Prime Minister.

            Scotland and Northern Ireland want to stay within the EU. So will there now be a break-up of the “United” Kingdom, and the building of a wall between England and Scotland, and another between Northern Ireland and the Republic of Ireland?

            1. Ask Boris Johnson, England’s very own Donald, and its next Prime Minister.

              This can only be good news for Donald Trump.

              LOLOLOLOLOLOLOLOLOLOL

              But “anon” will be writing in his vote for Bernie Sanders, thank goodness. Oddly enough, Bernie will be voting for Hillary.

              Nobody could have predicted that. Politics is teh hard.

              LOLOLOLOLOL

            2. Thanks MaxDrei, I was not quite clear on the relation between the various bodies or how those (separate) entities might interact with the attempts to create an EU patent. I figured that to be more your balleywick

            3. Max, I was struck by the fact that it was the industrial/working class part of England, led by the Labor party, that revolted. Do you have any insight as to why they were unhappy? Is there the same kind of unhappiness elsewhere in the EU?

              1. Ned the answer lies in the ages-old and unreformed English class system. This referendum was a part of a “Blue on Blue” Eton vs Eton domestic fight within the Conservative Party. PM Cameron veto-ed any personal attacks by “Remain” on Johnson, his old buddy from Bullingdon Club days at Oxford University. Johnson is out to replace Cameron, and so chose to lead the “Exit” side.

                Tories fiddling while the country burns.

      2. Mr. Atari man, Chief Justice Roberts seemed to agree with you that the whole concept of having two parallel procedures for testing the validity of a patent makes no sense. But also, the idea that the patent office may itself revoke the patent it granted when it changes his mind, is an idea whose time should not have come.

        1. But Ned, the PTO decision to revoke is appealable to the court isn’t it?

          What’s new? I had thought it utterly routine and unremarkable, that the PTO has first dibs on making a decision, but that an appeal to the court is available, to keep the PTO honest and strictly in line, under the law.

          1. …hence the importance to recognize the separate initiation decision point (regardless of ANY decision on the merits) and the taking that occurs at that point – and what the Court has held here with the notion of NO appeal of that separate decision.

          2. Max, but the appeals court only reviews for legal error. It is the PTAB that decides the facts, and whoever decides the facts, decides the case.

            Is it the practice in EPOland to have the appeals court re-decide the entire case? — Independently review the facts and decide who is right.

            I can see that might be possible if one does not have a right to a jury trial in the first place.

            1. Not sure why – most people payin any attention have already been alerted to the distinction and should know that the problem is not the decision on the merits – per se.

  6. Cuozzo adds that, as of June 30, 2015, only 5 out of 86 motions to amend have been granted. Brief for Petitioner 30; see Tr. of Oral Arg. 30 (noting that a sixth motion had been granted by the time of oral argument in this case). But these numbers may reflect the fact that no amendment could save the inventions at issue, i.e., that the patent should have never issued at all.

    Would that most applicants (and even more members of the office) understand this. To hear some examiners talk, there’s no such thing as a per se deficient specification.

    In my experience, there exist a statistically significant number of applications which could never issue regardless of what the prior art is. If one were to hold an applicant to their arguments (i.e. XYZ is non-obvious because the record does not indicate a teaching to that effect) the percentage jumps to maybe 25%. If one were to include the implied arguments that flow from an amendment it would go even higher.

    1. This is something that I have noticed, as a difference in mindset, between the USA and the rest of the world. Not saying one is better than the other, just that they are different.

      The US mindset seems to be that if I have paid all the costs of getting and asserting a patent, I’m entitled. Entitled to keep my patent, not see it taken from me and sluiced down the plughole by a mere public servant (a judge). It’s my property, and nobody ought to have the right to take it away from me.

      In consequence we see the attitude, that a court ought to construe a claim more narrowly than at the PTO, to avoid a finding that the claim is invalid. In the USA, the claim seems to be a nose of wax, deformable any way you like, to meet the exigencies of whatever forum you are appearing before, that day. Not so, elsewhere in the world.

      It goes back further. In prosecution of an application at the EPO, on instruction from a US law firm, there is always the expectation that adding enough further detail to the claim will always get the claim through to issue. Having paid such grotesquely high EPO fees, the attitude seems to be, I’m entitled to a grant.

      Well, no sir. At least, not outside the USA.

      1. Max, I totally agree that United States is alone in the world in viewing patents as property. We demand not only due process before they are revoked, but a heightened standard of proof. We further demand that we received just compensation before our patents are taken from us by government infringements or compulsory licensing.

        We do not have the same attitude about an entitlement to receive a patent. But once a patent has issued, we have the concept that we are able to rely on the validity of the patent in order to invest in businesses that depend upon that validity.

        But outside United States, patents are not viewed as property but as privileges – revocable privileges – as if they were rights taken from the public and granted to the one. But as we know, patents are for inventions, and inventions are not in the public domain and unless they are disclosed. The inventor bargains for exclusive rights in exchange for disclosure. That bargain is hardly respected anywhere in the world but in the United States.

        But as we see, the European point of view has been gaining ground in the United States. Hopefully, the U. S. Supreme Court takes the constitutional challenges and restores the American patent system to its foundational principles that patents are not privileges, but rather are property.

        1. In a sense, unpatented inventions are in the public domain. If you invent something and keep it a secret, I am can also independently invent the thing and practice it. If two people of similar skill are tasked at solving the same problem in their industry, there is a non-trivial chance that they will invent the same solution to solve it. No flash of genius required.

          If you patent an invention, it does not matter if I independently invent it with no actual knowledge of your patent.

          1. Flash of Genius is NEVER required.

            The system is set up such that “invention” alone only creates an inchoate right.

            To use an old “race” analogy, many are invited to the track event and “inventing” only gets you down on the track at the starting line – you still have to run the race, jumping over the hurdles and crossing the finish line in order to obtain the property right.

            (This analogy is not meant to cover the property of “choices in action” that may apply to the right to prosecute an application)

            1. …and it WILL matter very much if you do not put your separately invented invention into the public and someone else obtains a patent on that item – this was a known type of occurrence and was deliberately chosen to be a stick against those who either did not patent or otherwise share their “inventions and discoveries.”

              Someone later starting the race, but finishing first had property rights against ALL others – even those that did not bother going down to the starting line.

              This has been how the US patent system had always been.

              Unlike the copyright system which does allow for independent rights to be obtained, patent rights are only obtained to the exclusion of all others. Decide to keep your “stuff” secret? Sure, you are allowed to do that, but you had always run the risk that someone else later can run the race, finish, and obtain property rights that then could be brought to bear against you.

      2. All of what you mentioned is because that is how our system is setup. The non-obviousness standard is considerably easier to meet than the inventive step standard if you go about amending correctly. And yes, it is most definitely seen as an entitlement, because that is what it is, one big entitlement program. Everyone using it knows this, and expects it, but people don’t like to talk about it.

        1. It is NOT as you would like to imply with your “spin” if the word “entitled.”

          You are mixing contexts and trying to apply some type of “stigma” where none exists.

            1. Anon, like so many other folks, getting PCness backwards is hilarious. PCness is failing to call a spade a spade and instead self-censoring, using euphemisms, or calling it a heart/diamond/club etc. because it hurts someone’s fee fee’s that the spade is in fact a spade and for someone to say that. Here, failing to call an entitlement program an entitlement program is the politically correct thing to do because it obviously hurts someone’s (yours) feelings. Calling it an entitlement is literally anti-PC.

          1. ^ That is why they don’t like to talk about it, because they think that there is a stigma around “entitlements” and they don’t want a stigma attaching to patents.

            1. It is NOT that at all.

              The plain fact of the matter is that there IS a stigma associated with entitlements depending on the context.

              Context matters – and your “game” is to try to pretend that there is NO difference in context.

              1. Whether or not the reader attaches stigma is up to them bro, that isn’t “my game”. I myself attach somewhat of a stigma, because frankly I’m not a big believer in entitlements from the gov, even in return for a disclosure. But, that is the current setup and I will abide it. That being the case doesn’t mean that everyone who reads me will or should feel the same. They might think the entitlement model is wise.

                1. No 6, this is NOT a discussion of “whether or not any particular reader at the reader’s discretion attaches stigma.”

                  This is the reflection of the sociatal fact that there is a stigma to certain entitlement programs.

                  You are STILL trying to pretend that there is no contextual difference when there very much is one.

                2. Well yes, to “certain” entitlement programs, but not all. SS is a huge fav. So is medicare. And etc. down the line. There’s no reason for the educated reader on PO to think of patents as stigmatized because they are an entitlement program.

                  And of course there is a difference in context, and all readers should know that the separate entitlement programs are indeed separate.

                3. But it is clear that your intent is to impugn with the sense of “freeloader” – even as you note that for patents, there is a Quid Pro Quo.

                  Not sure if you really think that you f001 anyone with your “game.”

                4. I’ve never said that I intend to impugn the “freeloader” nature. If there’s anything I “seek to impugn” it is that I seek to impugn the “sure thing” (or “legally sure thing” anyway) nature of the entitlement program. Sure, there are a few freeloaders, probably more in this day and age, but that isn’t really what I seek to impugn.

                  To be sure, you and I both know that irl that isn’t how it plays out, as in it isn’t a “sure thing” because of the interference of the bureaucracy with the operation of the law, but that isn’t how it is supposed to operate. Further, if the office were to fully prostrate itself before the express command of the congress then it would be a “sure thing”, practically every time.

                  This whole time you’re upset that I’m supposedly impugning free loaders when really I’m impugning the system not operating as it is designed, and impugning the design of the system.

                  Here’s the thing anon, I’m capable of distinguishing between the system as it works out in real life, and in how it is supposed to theoretically work out. What I notice further is that I think it works out ok irl currently. Thus, I posit that if it ever did start working out as it was and is technically supposed to work then it would likely not be a good thing. And further I seek to draw attention to this hypothesized quandary.

                  Still further I note that the state of the system being an entitlement program in reality, but it not being recognized as such by those in the bureaucracy (and sometimes in the courts) (see Random guy in this very thread) creates a large dissonance between relevant parties in adjudications and prosecution. And I still further note that this dissonance causes problems. Huge problems. And I still further note that this dissonance not being explicitly pointed out by lawlyers in prosecution, routinely, hampers the system operating effectively in real life as an entitlement program.

                  All of those things are why I insist on calling it an entitlement program. Oh, and because all of these failings make my day to day just a bit harder.

                5. “I never said…”

                  You were not explicit about it – that does not mean that your “game” is not transparent.

                  Thus, I posit that if it ever did start working out as it was and is technically supposed to work then it would likely not be a good thing. And further I seek to draw attention to this hypothesized quandary.

                  Not sure I get your drift there: it sounds like you think it a good thing that you (the royal you) are not doing your job properly.

                  Also – it is entirely unclear just what it is that “makes your day harder.” Handwaiving “these failings” is not cutting it

                6. Anon, you know I have gigantic balls. If I mean something then I will be explicit about it for you. If I decline, explicitly, to say something explicitly, then I do not mean that thing. I am not a woman, where they say “I’m not mad” and they’re tots mad, when I say I’m not mad, I’m literally not mad.

                  I do hereby honestly and explicitly note that it is not my intent to impugn the freeloader nature of the patent system by calling it an entitlement program. I will do that separately if I so desire to do so, just as I have before, and probably will in the future, separately.

                  “Not sure I get your drift there: it sounds like you think it a good thing that you (the royal you) are not doing your job properly.”

                  That’s one way of “saying” it. Though I wouldn’t go so far as to say it is a “good thing” that “we” aren’t doing the job laid forth by congress “properly” (with pinky finger held high). It isn’t so much “good” as it is “ok”, as in, the world gets along ok with the patent system “administered” as it is currently administered. I am saying however that if everyone all of a sudden did things perfectly that I find it to likely lead to an overall worse situation. This is for many reasons, first and foremost among them is that there might be significant public outcy (as there was with one-click/cat laser) that might then lead to significant over-correction. That being said, it is obviously better for the individual if the job is done “properly”.

                  “Also – it is entirely unclear just what it is that “makes your day harder.” Handwaiving “these failings” is not cutting it”

                  Interactions anon, interactions are generally what I’m discussing. Just as an ez example, applicant argues x y z is non-obvious in an amendment. I agree with them, under the lawl, generally because of some technicality in the law (because it is a gigantic entitlement program subject to many technicalities). I discuss it with another member of the bureaucrazy, but he disagrees with me because he has set half of the law aside including most technicalities (usually part of claim construction but sometimes part of 103 etc.) and has determined that it would be best if the “bureaucratic way” so to speak is implemented, where we just make a rejection. He did this, at base, not because he’s unaware of those technicalities, or hates them, but rather because he is not convinced that the patent system is an entitlement system that he and I are merely administering, and he feels that the office “bureaucratic way” is superior to implementing all 10001 technicalities in the law “up front”. So now I’m making a rejection, and spend the rest of the day scrounging around for art to address depending claims. It’s waste bro, and it makes my day to day harder, .25 counts for a full day of work instead of .75 counts for an hour or 3 of work.

                  Compare and contrast that to a situation where the law with all of its technicalities are all applied up front because the primary/spe is convinced that the whole shebang is an entitlement program. No rejection issues, no time is wasted addressing dependents that ultimately will never matter anyway (because they’ll usually just amend around whatever bs was in the rejection I had to send), counts are had, the next case is picked up, I take the weekend off.

                  And that’s just one sample situation. There are thousands more. Some of which involve interactions with applicants as well.

                7. “Anon, you know I have gigantic balls”…..

                  “I am not a woman, where they say “I’m not mad” and they’re tots mad, when I say I’m not mad, I’m literally not mad”

                  Hey 6, gender is not in the pants. Casual sexism is as unattractive as “entitlements”. I know lots of women with giant balls and lots of men who are sniveling factotums.

                  Darn amusing however to see the bleating when the fact that patents are exactly entitlements is pointed out, esp. after enduring millions of words supporting the idea that patentees are entitled to each and every one of their sticks.

                8. I see that you enjoy missing the context there Mr. Snyder – not a great way for you to learn the terrain of law (but not surprising coming from you).

                9. “Hey 6, gender is not in the pants”

                  Sex is.

                  “I know lots of women with giant balls and lots of men who are sniveling factotums.”

                  So?

                  “Darn amusing however to see the bleating when the fact that patents are exactly entitlements is pointed out, esp. after enduring millions of words supporting the idea that patentees are entitled to each and every one of their sticks.”

                  I know right?

      3. Max: In consequence we see the attitude, that a court ought to construe a claim more narrowly than at the PTO, to avoid a finding that the claim is invalid. In the USA, the claim seems to be a nose of wax, deformable any way you like, to meet the exigencies of whatever forum you are appearing before, that day. Not so, elsewhere in the world.

        This seems to be a reference to my earlier reply to you that you didn’t respond to there, so I guess I’ll address it here.

        It’s neither a question of entitlement nor property, but economic efficiency. Stable, valid patents are valuable, in the same way that stable, valid contracts are valuable. With that understanding, a court will attempt to construe ambiguous terms in a contract in ways that preserve the remainder of the contract and meet the intentions of the parties, if possible. Similarly, if there is resolvable ambiguity in a patent, a court should construe ambiguous claim limitations in ways that preserve the patent and properly represent what the inventor invented, if possible.

        For example, if a contract includes a phrase that could be reasonably read as either “X” or “X+Y”, and the former interpretation supports the discernable intent of the parties, then the phrase should be construed that way and the contract upheld, rather than simply throwing it out.
        Similarly, if a claim limitation could be read as either “X” or “X+Y” and the former interpretation appears, from the specification, to be what the inventor actually invented, then the limitation should be construed that way and the patent remain valid (albeit smaller in scope), rather than simply throwing it out.

        In both cases, we avoid the market uncertainty and loss of value that comes from punishing people due to unforeseeable differences in reasonable interpretations of word choices. But this has nothing to do with any sense of “entitlement” or that courts who refuse to engage in contract interpretation or claim construction are somehow “bootstrappier”.

        1. …unless of course you have the “patents are bad” blinders on to begin with…

          Gee, that doesn’t fit the certain sAme ones here, does it?

          😉

    2. Does an amendment “have to save?”

      Are you suggesting that amendments are being offered that do not save? That amendments are so overwhelmingly made that do not even meet the reason that amendments are being sought?

      Your view – in context – seems rather preposterous.

      (It is rather a different matter that an amendment, made over existing art of record, may succumb to the results of a new search with additional matter made of record – but that is clearly not the case when the ability to amend is denied)

      1. Are you suggesting that amendments are being offered that do not save? That amendments are so overwhelmingly made that do not even meet the reason that amendments are being sought?

        Yes. See, e.g., Cuozzo’s attempt at amending during the IPR that was denied.

        1. Sorry – you have not addressed the nuanced shift in that case, so your “example” is not pertinent.

          Also, that shift by attempting to increase the level of potentially applicable prior art is recognized as an exception to the usual practice.

          1. I’m sorry, what about the “nuanced shift” would you like me to address? Cuozzo attempted to enter an amendment that lacked written description support. That sounds like an “amendment offered that [does] not save [patentability],” no?

            Furthermore, the specific limitations to be added were that the speedometer and speed limit indication are both part of an LCD display. This was crucial for infringement, since that’s what Garmin did, but even if entered, also wouldn’t save patentability: both the Aumayer and Tegethoff references included LCD screens with combined speedometer and speed limit indications. In fact, both the Aumayer and Tegethoff references were determined to not anticipate the “integrally attached” limitation because Cuozzo had separated the speedometer and indicator. Had Cuozzo’s amendment been entered, the patent would be invalid under 102.

            So, for both of the above reasons, Cuozzo’s offered amendment did not and could not save the patent. I guess it’s not nearly as “rather preposterous” as you suggested. :)

            1. I was not aware of the “lacks written support” angle that you stress.

              Instead, the argument (that I was aware of) was just that it was somehow de facto improper because they wanted a reading that increased the size of the potential prior art universe.

              You are not following the analogy I laid out for you.

              Also – it STILL remains preposterous because (as I also pointed out) this “expansion tactic” is noted as an exception.

              You missed both points of my reply.

              Try again – this time be on point.

              1. I was not aware of the “lacks written support” angle that you stress.

                Instead, the argument (that I was aware of) was just that it was somehow de facto improper because they wanted a reading that increased the size of the potential prior art universe.

                Oh, happy to help, then. From Cuozzo’s IPR, page 47-48:
                “The Patent Owner has the burden to set forth written description support in the original disclosure for each added or amended claim 37 C.F.R. § 42.121(b)(1). Given the proper construction “integrally attached,” in the context of the original disclosure, Cuozzo has not shown that the original disclosure of the ‘074 Patent provides written description for this trifecta… Cuozzo has failed to set forth how proposed substitute claims 21-23 satisfy the written description requirement of 35 U.S.C. § 112, first paragraph.

                The IPR also noted that it would expand the claim scope, but the majority of the discussion there is the lack of written description.

                You are not following the analogy I laid out for you.

                Also – it STILL remains preposterous because (as I also pointed out) this “expansion tactic” is noted as an exception.

                Is it? Please feel free to quote from any other claim amendments that were offered in IPRs but rejected. If they also were attempts to enlarge the scope, then Cuozzo’s not really an exception, is it?

                You missed both points of my reply.

                Try again – this time be on point.

                I did indeed, which is why I asked “I’m sorry, what about the “nuanced shift” would you like me to address?” Frankly, I have no idea what your points are, and am attempting in good faith to address them as best as I can. If you could be a little clearer about what you’re asking, that would be greatly appreciated.
                However, if you’re going to pull a Mal and start just saying “try again” without ever attempting to explain your question or answer my questions to you, then I can move you out of the “good faith” category too.

                1. You are still not on point.

                  To be on point, start with the premise that I offered as the given, and respond to that premise.

                  So again, feel free to not change the point (even if it was an actual point in the case, as it was not a point that I provided, and do not ask me to catalogue all of the requested amendments to characterize them as broadening or not – I provided that this was an exception: how does this as an exception influence your “view”?

                2. You can never know anon’s “points” because they are only knowable to him or her, and in the sense that they have any meaning at tall, its to show that anon is the most informed, insightful observer of patents and also the most skillful advocate and rhetorician, and also that everyone is wrong, out of order, and venal in their thinking. However, like shadow boxing, engaging may help your own reflexes and more complete examination of your assumptions since a reality-check is inherently needed, although ultimately pointless in such engagement.

                3. That’s some serious projecting going on their Mr. Snyder.

                  Sounds like pure sour grapes though – and given your rather p00r fairing on discussions of law, it is easy to see how you have been overcome with your pettiness.

                  It is not pretty, but not altogether unexpected either.

                4. Martin, good observation there about anon.

                  But, at times, he does discuss things rather than just criticize. But his use style is just a bit annoying to most of us.

                5. Ned,

                  We all know what kind of “swagger” you enjoy.

                  (and that is not a good thing, for you)

                6. You can never know anon’s “points” because they are only knowable to him or her, and in the sense that they have any meaning at tall, its to show that anon is the most informed, insightful observer of patents and also the most skillful advocate and rhetorician, and also that everyone is wrong, out of order, and venal in their thinking. However, like shadow boxing, engaging may help your own reflexes and more complete examination of your assumptions since a reality-check is inherently needed, although ultimately pointless in such engagement.

                  Worthy of framing.

        2. It is important to note that claim amendments in IPRs are subject to statutory restraints and requirements that do not apply to amendments in normal prosecution. Like Cuozzo’s attempt to [illegally] file a broadened claim in its IPR – noted by both the Fed. Cir. and the Sup. Ct. Also, failing to meet the IPR requirement to show how the proposed amended IPR claim would better distinguish over the art of record.

          1. Thanks Paul – a further distinction that limits applicability of “repurposing” the IPR into some type of “advisory” item. The clear bottom line is that what was voted on by Congress simply was not an “advisory” action type of thing, and those wanting to have the judicial branch change it into something that it so clearly was not intended to be are very much engaged in the fashioning of legislation from the bench.

            (Although I think that you mis-speak with the parenthetical of “illegal” – see the analogy I discussed below, and reference above)

      2. Does an amendment “have to save?”

        For me, no. I get paid for an action no matter how much work it is, but my understanding is that’s not true for an IPR.

        Are you suggesting that amendments are being offered that do not save? That amendments are so overwhelmingly made that do not even meet the reason that amendments are being sought?

        That depends on what you mean by “save” I guess. 90%+ of the amendments are at least good attempts at what they are limitedly trying to do – overcome the 112 or 103, etc. But a significant proportion of those, if their attendant arguments are true, would preclude patentability.

        1. But a significant proportion of those, if their attendant arguments are true, would preclude patentability.

          But that is only according to your own wacked out views on “predictability” (and your views leading to an either or of Flash of Genius or unlearn able “oopsie”).

          In the real world, the situation is very much different.

          1. Nah, everywhere recognizes that the written description requirement exist.

            When Morse says “The prior art couldn’t print at a distance” and then Morse claims printing at a distance the thing that saves his claim is a disclosure how he achieves printing at a distance and a teaching to allow others to do the same. You take out that disclosure and teaching and he mind as well be claiming a wheel that spins straw into gold.

            You can’t get around a 103 rejection by inserting a feature that is undescribed and unenabled by your specification. It may technically overcome the 103, it may even overcome all possible 103s after a prior art search, but it can’t issue because its an admitted 112a issue.

            I once inherited a case where the prior examiner did not explicitly teach a processor. The applicant is free to argue that the record does not support a holding that a processor was previously known to the art and therefore the 103 rejection should be withdrawn, but that argument can never lead to patentability because even if I chose to not assert the millions of processor references I could simply assert a 112a because the record of the case does not support a holding that anyone was enabled to build a processor, or that applicant was in possession of one, because the specification failed to teach how to build a processor. The disconnect between the record of the case and what everyone knows to be the reality at the time of filing swings both ways.

            I would imagine that case happens a lot in IPRs – the patentee tries to amend to get around the prior art yet keep the defendant infringing, but you don’t need to perform a search to see if the amended scope would be defeated by a 103, it is sufficient to say “the record doesn’t support prior knowledge of the feature and the specification fails to add to that to surpass 112a.” The only way you would force a 103 search is if the patentee coupled his amendment with evidence (as arguments of counsel are insufficient where record evidence is necessary) that the art knew enough to enable the feature without undue experimentation, yet not enough to render the feature obvious, yet enough to say that the full scope of the amended claim was in the applicants possession based upon what was disclosed. That’s an awfully fine line to walk. It makes a lot of sense that such a small percentage of amendments would be sufficient for entry on a “it must fix everything” standard.

            1. Nah, everywhere recognizes that the written description requirement exist.

              Yes it exists – but your wacked out views are just not in line with that existence.

              the thing that saves his claim is a disclosure how he achieves printing at a distance and a teaching to allow others to do the same.

              So by “written description” you mean enablement, then. You are aware that enablement is NOT an engineering level thing, right?

              You can’t get around a 103 rejection by inserting a feature that is undescribed and unenabled by your specification. It may technically overcome the 103, it may even overcome all possible 103s after a prior art search, but it can’t issue because its an admitted 112a issue.

              Your hypo is flawed because you cannot insert anything that does not have support in the application as filed (you have a “no new matter” issue). You are just trying too hard to set up a strawman

              I once inherited a case where the prior examiner did not explicitly teach a processor.

              prior…

              …i>examiner…? – I think this more a Freudian slip than a typo.

              The applicant is free to argue

              strawman alert

              the record of the case does not support a holding that anyone was enabled to build a processor, or that applicant was in possession of one

              ah, so you mean more than enablement – possession too. OK – except you seem to be slipping into an odd “record of the case” mantra

              The disconnect between the record of the case and what everyone knows to be the reality at the time of filing swings both ways.

              That’s a pretty strawman – but it just does not “swing” the way that you think in that everything is either a 103 or a 112 in your “view” of what you want to call “predictable arts.”

              I would imagine that case happens a lot in IPRs

              You do know 112 is not in IPR’s, right?

              – the patentee tries to amend to get around the prior art yet keep the defendant infringing, but you don’t need to perform a search to see if the amended scope would be defeated by a 103, it is sufficient to say “the record doesn’t support prior knowledge of the feature and the specification fails to add to that to surpass 112a.”

              Again, You do know 112 is not in IPR’s, right?
              You also have that “no new matter” thing

              That’s an awfully fine line to walk.

              Not nearly as fine as your tendencies would have it – that was the point of my short and sweet post above. Pay attention, son.

              It makes a lot of sense that such a small percentage of amendments would be sufficient for entry on a “it must fix everything” standard.

              ? You have ASSumed your own conclusion there. A proper amendment – one built to overcome what the amendment is for – should NOT be some “small percent” – quite in fact, it should be a very large percent. After all, that is what amendments are for: to overcome the reason given for the thing being amended not ‘working.’

    3. “In my experience, there exist a statistically significant number of applications which could never issue regardless of what the prior art is.”

      Not in most arts where every application is doted on by a small contingent of lawlyers (and thus was sufficiently described) and every application is different from the prior art in a thousand ways and is 100% eligible. Of course biz methods and software etc. will have a huge number of plain ol ineligible subject matter, and occasionally someone will be submitting for something not enabled, or forgot to sufficiently describe what they’re going to be after. The the “significance” of that number is tiny, historically speaking.

      The reason why isn’t something mysterious, it’s because the lawl we have now is setup exactly to make this happen. It’s a gigantic entitlement program.

      “In my experience, there exist a statistically significant number of applications which could never issue regardless of what the prior art is. If one were to hold an applicant to their arguments (i.e. XYZ is non-obvious because the record does not indicate a teaching to that effect) the percentage jumps to maybe 25%. If one were to include the implied arguments that flow from an amendment it would go even higher.”

      Lulz wut? “Holding” them to arguments about their subject matter being non-obvious somehow will tank the entire patent? I’m sorry, what statute is that under?

      1. “Holding” them to arguments about their subject matter being non-obvious somehow will tank the entire patent? I’m sorry, what statute is that under?

        You can’t simply say “X is non-obvious” you have to either say there’s no combination rationale or that the prior art doesn’t evidence knowledge of some feature. Arguing that the art didn’t know of some feature when your spec doesn’t teach how to perform the feature is a good way to admit yourself into a 112a rejection.

        1. “You can’t simply say “X is non-obvious” you have to either say there’s no combination rationale or that the prior art doesn’t evidence knowledge of some feature”

          Sure they can. They have the right to free speech here in Merica bro, and that extends to writing as well. The gov cannot curtail that right. Of course there are various reasons why “x is not obvious”, but you can simply say just that if you wish and request reconsideration. Just because we might or might not hold their response non-responsive doesn’t mean they can’t simply do it. Further, something may very well be non-obvious even if there is a motivation, and even if the prior art evidences knowledge of the feature and there is a reasonable expectation for success, examples aren’t too hard to find. Nowadays we have to consider common sense, and common sense can weigh just as heavily in favor of non-obviousness as it can in favor of obviousness. Obviousness is it “being in the middle of the road”, not “being on the side of the road” or “off in the woods somewhere where an examiner might be able to find a piece or two and piece it together”. And we also have to consider whether it is even remotely possible that the two references, viewed one after another, would plausibly suggest the combination to one of ordinary skill at all. Sometimes it just wouldn’t even with the other technicalities in place, for various reasons (usually facts). Never the less, many office personnel have somehow had their instruction distorted into thinking differently, which I attribute to a bad internal culture.

          “Arguing that the art didn’t know of some feature when your spec doesn’t teach how to perform the feature is a good way to admit yourself into a 112a rejection.”

          Where did you get this from? “The art” not “knowing” (showing) of a feature has bumpkiss to do with whether they merely mentioned the feature (WD support) in the spec and whether one of skill in the art could make the feature (as in given a million dollars and engineering staff etc.).

          I don’t even know of anyone who argues that the art “didn’t know” of some feature. They always say z art didn’t SHOW (or disclose) feature x. Saying “does not show” doesn’t mean or equal “does not know”. We certainly can’t be confusing those two things.

          1. >>“The art” not “knowing” (showing) of a feature has bumpkiss to do with whether they merely mentioned the feature (WD support) in the spec

            The mere mentioning of a result in a specification may be insufficient written description support for that result. When an applicant doesn’t disclose how they achieved a result and also says that the result is non-obvious, it may suggest a question regarding their actual possession of the result. Like everything else in the game, it massively depends on the specifics.

              1. >>“may” < yeah it "may" in like .1% of applications.

                I'm not sure which "may" you're referring to. In my experience at my end of the software arts, ~25% of applications contain essentially no description of how the results are obtained (other than by a so configured processor, of course). Maybe a fifth of those don't seem to have possession. But I think these sorts of numbers would be rather art specific.

                1. “~25% of applications contain essentially no description of how the results are obtained ”

                  Spoiler alert, it’s by pushing beep boops into a beep boop machine. Aka authorship of a new word document.

                2. pushing beep boops into a beep boop machine.

                  Did you come up with that yourself, 6?

                  Because I might have to … borrow it. 😉

          2. Sure they can. They have the right to free speech here in Merica bro, and that extends to writing as well. The gov cannot curtail that right. Of course there are various reasons why “x is not obvious”, but you can simply say just that if you wish and request reconsideration…Just because we might or might not hold their response non-responsive doesn’t mean they can’t simply do it.

            Why do you waste space with this? How about I counter with “The office demands responses in writing so it doesn’t help to ‘say’ anything”? You and I both know that a response that merely states that something is non-obvious is a mere allegation of patentability.

            Nowadays we have to consider common sense, and common sense can weigh just as heavily in favor of non-obviousness as it can in favor of obviousness.

            That’s pretty much wrong. Secondary considerations absent invention will not make patentability. If the art has an enablement and a motivation to make a combination the only thing that saves a claim is unexpected results. The fact that the art may have other motivations that lead it in a different direction just means that other inventions are also obvious. There’s no requirement that the claimed solution be the best solution or the most prominent solution, it just needed to be recognized as a solution. Being off in the words somewhere is sufficient because the question isn’t what a person would do, it’s a question of what the hypothetical person of skill that knows everything could do. You don’t get “obscurity points” towards non-obviousness, because the hypothetical person knows of the obscurity.

            If the art knows of a penny at the bottom of a cave in the middle of a forest while they are comfortably sitting in the vault of a bank in the middle of civilization, it is obvious to ignore the bank money and travel to get the penny if there is a motivation to acquire money and the art was enabled to make the trip. If the art knows that swimming around naked in the arctic will lead to hypothermia and death, swimming around naked in the arctic is an obvious act because using a known technique for a predictable result is obvious. The fact that both examples cut against “common sense” is irrelevant. When swimming around in the arctic doesn’t kill you but instead acts as a fountain of youth, then you have a non-obvious invention. When the art didn’t know of the penny or couldn’t travel to it and you rectify that, then you have a non-obvious invention.

            Never the less, many office personnel have somehow had their instruction distorted into thinking differently, which I attribute to a bad internal culture.

            Not really, you work in a field where the rationale for non-obviousness is usually unexpected results, so your misunderstanding of obviousness is understandable. You’re clearly defining obviousness with a lay definition as to what a given human being would do to solve a problem, but the legal definition as to what a PHOSITA would find obvious is significantly different. You’re confusing “off in the woods” with “totally unaware of its existence” which are two wildly different things from a legal standpoint. Unexpected results is a gradation argument (which is why you’re not wrong to talk about center of the road versus off in the woods *for you*) but unexpected results is rarely applicable to mechanical, electrical or software inventions. If, prior to the filing, 999 of 1000 people of skill would choose Option A, and 1 would choose Option B, Option B is obvious.

            Where did you get this from? “The art” not “knowing” (showing) of a feature has bumpkiss to do with whether they merely mentioned the feature (WD support) in the spec and whether one of skill in the art could make the feature (as in given a million dollars and engineering staff etc.).

            The fact that you think “merely mentioning” something gives you WD support shows you misunderstand 112a. When I say “I have a machine that spins straw into gold” that is not *just* an enablement problem, but a written description one as well, and it is one regardless of whether evidence could be produced to show that one of skill could build a machine that spins straw into gold *in some fashion* without undue experimentation. If I was the first to make a bow, and I disclose it and say “A bow allows you to shoot projectiles” I still can’t claim “a machine that shoots projectiles” because I don’t possess that scope.

            I don’t even know of anyone who argues that the art “didn’t know” of some feature. They always say z art didn’t SHOW (or disclose) feature x.

            That’s the same thing. If you argue that none of the references show or disclose feature X, then the record as a whole (absent an admission by the applicant) requires the conclusion that the art didn’t know how to achieve feature X. You don’t need a reference saying “Gee we can’t do X and we’d really like to” in order to make a 112a rejection. If the Applicant claims a pencil and none of the references disclose a pencil, an enablement rejection on the pencil is proper, because arguments are based upon what the record is and not what people subjectively know reality to be outside of the record. If he wants to overcome your enablement rejection then he can put in evidence to show that the art could make a pencil.

            What you can’t do is get the public in a situation where its issuing a claim on something that doesn’t yet exist, and that *can* be the case if you examine 103 and 112 disconnected from each other, as you’re clearly doing. 112a doesn’t turn on the applicant giving his word that his specification is true and you trying to prove him wrong, 112a turns on whether the subject matter of the claim in light of the specification and the state of the art as shown by the record is fully enabled and possessed by the applicant. When an applicant argues the references (and thus the record) don’t show something it shrinks what the known state of the art is and makes the 112 standard harder to meet. When the prior art record fails to evidence that something can be done and the specification discusses it in only the most perfunctory manner, the most likely result is that a 112a is proper.

            1. I was going to reply, and wrote quite a bit, but I figuratively just “can’t even”. So much of that is so bizarre in the extreme I almost think you’re making it up just to have a laugh. I understand generally how you’re saying you’d like the patent system to be set up, but that is like a thousand miles away from how it actually is set up, according to the three branches o gubmit.

              1. So what does possession mean to you, 6? If an applicant merely mentioned a universal molecular assembler before claiming a universal molecular assembler, would you feel that they’ve satisfied the written description requirement?

                1. Brosef, possession means to me the same thing it means to the courts which you can look up at some length. See Ariad Pharm for an ez ref. You guys keep using outlandish examples to try to “prove” some odd ball “point” about 112 a. Yes, maybe in some outlandish case, which happens like 100 times a year out of the 400 thou apps we get at the office, you could say that they didn’t have full possession of the claimed invention even if they made mention of it. This also happens in chemical cases somewhat more often. For all other arts it isn’t likely to happen more than twice or so in a given career of a given examiner. For all the rest of the cases, mentioning it will generally be enough.

                  Further, your outlandish examples are akin to a perpetual motion machine that is going to fail enablement anyway so the possession question is, for those examples, practically moot.

                  I’m not even sure why you guys think this is a subject worth discussing.

                2. Ariad specifically says that merely mentioning isn’t always enough to satisfy written description. What you’ve said so far has at least partially contradicted Ariad, so it’s good to hear that you’re back in agree with the courts.

                  >>This also happens in chemical cases somewhat more often. For all other arts it isn’t likely to happen more than twice or so in a given career of a given examiner.

                  What brings your to this conclusion? If it’s personal experience, what variety of TCs have you examined in?

                  To me it seems like this lack-of-possession-despite-ipsis-verbis-support phenomena is due to result based disclosures and functional claims. The Ariad panel indicated that its an issue with broad functional claims (‘The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus.’). And these aren’t circumstances specific to the chemical arts.

                  >>I’m not even sure why you guys think this is a subject worth discussing.

                  For me it’s because if you didn’t disclose enough to show possession, you can’t possibly have taught the public the invention you’re claiming.

                3. Brosef you seem to be new, I tire of this old subject. All of this that you’re talking about is old and very well known. Look around on your own a bit. You’ll find plenty on WD.

                4. Not to intrude on the examiner bashing other examiners love fest – and shockingly, agreeing with 6 here, but there is quite the load of errant versions of law evident with plenty of that Reject-Reject-Reject training showing through.

                  6: Nowadays we have to consider common sense, and common sense can weigh just as heavily in favor of non-obviousness as it can in favor of obviousness.

                  That’s pretty much wrong.

                  Well, if you have a Reject-Reject-Reject mentality…

                  Secondary considerations absent invention will not make patentability.

                  Thank you Captain Obvious – and you want to chide 6….?

                  There’s no requirement that the claimed solution be the best solution or the most prominent solution, it just needed to be recognized as a solution.

                  Fully agree – but here is the kicker – 6 is actually correct in that this goes both ways
                  Also – mere recognition is not enough (that’s a 102 concept) – the recognition must be by PHOSITA – and that is NOT just anybody stumbling across the item, or the item merely existing.

                  Being off in the words somewhere is sufficient because

                  huh? come again…
                  Are you doing that 103 is like 102 thing here?

                  the question isn’t what a person would do, it’s a question of what the hypothetical person of skill that knows everything could do.

                  You over reach again – 103 is NOT a 102 for “everything” and you do not get to merely assume that everything out there is everything known by PHOSITA

                  You don’t get “obscurity points” towards non-obviousness, because the hypothetical person knows of the obscurity.

                  and importantly, you do not get negative” KNOW EVERYTHING points either – only knows that which within the “ordinary person” constraints part of PHOSITA

                  The fact that both examples cut against “common sense” is irrelevant

                  Just wrong – you do not get to only use the case law when it helps you reject.

                  . When swimming around in the arctic doesn’t kill you but instead acts as a fountain of youth, then you have a non-obvious invention.

                  LOL _ because of the result….? With the same act that you just thought obvious? You are spending too much time setting up your strawmen

                  6: Never the less, many office personnel have somehow had their instruction distorted into thinking differently, which I attribute to a bad internal culture.

                  LOL – 6 perhaps being unaware of it, has nailed the Reject-Reject-Reject culture – the very culture that prompted an incoming Director to state: Quality does not equal Reject. Now I know that the anti-patent “Folks” love to deny or obfuscate that truth, but well, eppur si muove.

                  Not really, you work in a field where the rationale for non-obviousness is usually unexpected results, so your misunderstanding of obviousness is understandable. You’re clearly defining obviousness with a lay definition as to what a given human being would do to solve a problem, but the legal definition as to what a PHOSITA would find obvious is significantly different. You’re confusing “off in the woods” with “totally unaware of its existence” which are two wildly different things from a legal standpoint. Unexpected results is a gradation argument (which is why you’re not wrong to talk about center of the road versus off in the woods *for you*) but unexpected results is rarely applicable to mechanical, electrical or software inventions. If, prior to the filing, 999 of 1000 people of skill would choose Option A, and 1 would choose Option B, Option B is obvious.

                  Absolutely and 100% wrong – you have conflated the mere existence – a 102 concept with some notion that PHOSITA would take anything existing to DO anything. Like I said – your wacked out notions are just not what the law is

                  and that *can* be the case if you examine 103 and 112 disconnected from each other,

                  Your inventing a new meaning to each of these SEPARATE sections of law – and you are missing both in so doing. Just like I admonished you the other day when you conflated your 101 and 112 (showing lack of understanding either), you here now do the same with 103 and 112. And let’s throw in 102 – even though you have not talked at length on it: you appear to want to treat 103 like a mere multi-reference 102; that is, if it “exists” that it can and will be combined. That is just not how 103 works.

                  and the state of the art as shown by the record

                  strawman alert

                  it shrinks what the known state of the art is

                  Nope – it shows that the reference you picked is insufficient. That’s it. – You really need to cabin your hyper-conflation tendencies

                  and makes the 112 standard harder to meet. When the prior art record fails to evidence

                  that “prior art record” is NOT from the applicant – another sign that you are being too eager to insert your straw.

                  that something can be done and the specification discusses it in only the most perfunctory manner, the most likely result is that a 112a is proper.

                  Except not – your affliction of some odd razor thin 112/103 “safe zone” is exactly what I captured previously in that your thinking leads to the odd (and explicitly rejected by Congress) realm of inventions for only either Flash of Genius or Oopsie-I-stumbled-onto-something inventions. That is just not how the law is.

                5. What’s funny is I had literally thought to myself: Should I just tag anon in here to do some grunt work in this response?

                  But I wasn’t sure I wanted to subject Random to anon.

                  Guess he jumped in anyway.

                6. maybe in some outlandish case, which happens like 100 times a year out of the 400 thou apps we get at the office, you could say that they didn’t have full possession of the claimed invention even if they made mention of it.

                  I think it happens a lot more often than that in the so-called software arts where the specification talks of “better this” and “better that” but the applicant doesn’t even come close to disclosing a single example of code that, e.g., makes an everyday representative example of an actual computer work better in any meaningful sense (and by “everyday representative example of an actual computer” I mean the sorts of computers that will be targeted for infringement down the road).

                7. Yes MM, but our overlords have decided that those things aren’t necessary for entry into our entitlement program.

    4. RG: there exist a statistically significant number of applications which could never issue regardless of what the prior art is.

      If the laws are followed, that number is probably close to 50%.

      1. Adding the reason why, per 6: Of course biz methods and software etc. will have a huge number of plain ol ineligible subject matter, and occasionally someone will be submitting for something not enabled, or forgot to sufficiently describe what they’re going to be after.

        It’s not just “plain ol ineligible subject matter” in those types of cases but also, very frequently, plain old obviousness.

        1. It’s not just “plain ol ineligible subject matter” in those types of cases but also, very frequently, plain old obviousness.

          Not that you ever have any interest in making a 103 rejection when a prior art-free “I know obvious when I see it” 101 rejection will do, right? 😉

        2. “It’s not just “plain ol ineligible subject matter” in those types of cases but also, very frequently, plain old obviousness.”

          I can’t really speak to that because like 99.9%+ of the cases I have are so different from the actual structure or steps in the prior art that it’s basically impossible to reject them forever (or otherwise known as “rejecting the actual invention instead of just the claims”) if they’re willing to take narrower claims and amend so.

  7. (But why) would SCOTUS even bother with Cuozzo . . . if they were going to (correctly) rule (MCM / Cooper) that IPRs (and CBMRs) were unconstitutional; which would presumably then moot Cuozzo?

    1. Cooper / MCM wouldn’t moot Cuozzo – it would render IPR’s advisory. As to the standard to be applied, that is clearly up to the PTAB.

      The advisory order would then require enforcement from the Article III District Court.

      De novo review would apply.

      In all likelihood, the advisory IPR orders would become more helpful to the Article III judges if the standards were harmonized.

    2. Well Cooper notably asked the Supreme Court to make IPRs “advisory” or something along those lines. If that happens, then IPRs will still exist. (Whether or not that’s the right approach is a separate matter, but courts do whatever they want anyway.)

      In fact, that could leave patentees with a nice extra bite at the apple – that is, they could say to a district court “oh, the IPR that went against us shouldn’t carry much weight because it was BRI plus just preponderance…”

        1. When non-attorneys cannot even bother to understand basic civics and the separation of powers, ANY discussion based on proper legal understanding is going to seem like “Spewing incoherent babble, but it is quite the opposite.

          The Court cannot redraft the legislation of the AIA to remake what Congress did into some type of “advisory” mechanism.

          While that indeed was the suggestion in Cooper’s brief, that suggestion is stillborn.

          1. Incorrect.

            The Court can construe the statutory grant narrowly of adjudicatory power narrowly in order to avoid a conflict with constitutionality, or it can hold the statute unconstitutional and stay execution of judgment, providing Congress with 1-2 years to revise the statute before the Court’s order goes into effect.

            Read the public rights case law. You aren’t merely wrong – you are very wrong.

    3. Sorry, but if they’re ruled unconstitutional (which they are), we’re most assuredly not going to be left with agency “advisories” to waive around in others faces.

      Parties aren’t going to continue paying $100,000’s for PTO “advisories.”

      Ain’t. Gonna. Happen.

      An advisory isn’t going to trump (why o why do I hate that word so these days?) constitutionally-protected private property rights.

      1. Could the Court actually change the statute so that an advisory action is issued? I think that IPR is unconstitutional as well but I don’t know if the Court has the power to rewrite the statute . Have they done that before is other cases or do they normally just hold the statute invalid and then let congress deal with it? Thanks

        1. There is no such power as a “Judicial Line Item ‘Veto’.”

          Such is clearly outside the domain of the judicial branch – especially with this particular piece of legislation.

          (Further, and I really shouldn’t have to remind anyone, the difference between common law items and statutory law items is most definitely in play)

        2. Why would the Court have to “change” the statute at all?

          Right now, §318(a) says that “the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).”

          If the final written decision concludes that one or more claim(s) is/are unpatentable, then §318(b) provides that “the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.”

          In other words, the outcome required by the statute is a certificate of correction.

          Even if the SCotUS were to hold that one’s property rights cannot be revoked except by an Art. III court, that would not preclude the operation of the statute. The PTO could still issue its certificates of correction in conformity with the statute.

          However, instead of those certificates having immediate legal effect, the certificate would simply be treated as evidence that the defendant in an infringement suit could assert as part of an affirmative defense of invalidity.

          In other words, there is no reason why the SCotUS has to throw out the whole statute if it finds that there is a separation-of-powers or VII amendment problem. They can always give the AIA text a narrower statutory construction that reads the §318(b) certificate as advisory rather than legally enforceable.

          1. Except for the taking at the initiation point…

            And then, except for the fact that Congress did NOT set this up as merely advisory / it is fully meant to be a replacement (alternative) to the courts.

            If you still have to go to the courts to achieve something, the legislation is obviously not being “interpreted” in accord with why the legislation was passed.

            1. Except for the taking at the initiation point…

              What “taking at the initiation point”? If the certificate is held to be merely advisory, not binding, then how do you maintain your contention that anything whatever is “taken” by the PTAB?

              Congress did NOT set this up as merely advisory / it is fully meant to be a replacement (alternative) to the courts.

              Sure, and that is how I would prefer to see the AIA interpreted. However, that is not how Justice Breyer sees it. As he remarked during the Cuozzo oral arguments, he sees IPR as a sort of “Groundhog Day” for the patent system, where the PTAB is meant to reconsider patentability over and over until it “gets is right” (in Justice Breyer’s mind, “gets it right” somehow always means “decide that it is not patentable”).

              I am not saying that I want the SCotUS to reach an outcome where IPRs are merely advisory. I am just saying that it is theoretically possible for them to do so. It is not totally beyond grammar or syntax to read the AIA text in such a way as to reach that outcome.

              If you still have to go to the courts to achieve something, the legislation is obviously not being “interpreted” in accord with why the legislation was passed.

              Agreed. That said, neither the CAFC nor the SCotUS seems particularly inclined to do as Judge Newman has been doing and ask “why did Congress create this system in the first place? What did Congress hope to achieve and how can we best implement the act to achieve that desired outcome?”.

              I would be delighted if the courts were to begin considering the will of Congress when interpreting the AIA, but there is scant evidence so far that such considerations get much play at either the CAFC or the SCotUS level.

              1. Greg – the fallacy with what you suggest is then that EVERY law is “not” real and can be “deemed” “advisory” for the courts to “decide.”

                Your view simply swallows too much.

                1. Nonsense. If Congress writes “the commission shall pay $200 to everyone individual found to have suffered X…” then the commission really has to pay $200. It is no longer consistent with the statute to have the commission issue a certificate that you can take to court and show as evidence in your fight for $200.

                  By contrast, it is entirely consistent with the statutory text that the certificate merely be advisory. I agree with you that this not how Congress intended it to work, but the Court can reach such an outcome without doing violence to the text.

                2. No one is talking about the statutory text being advisory. The statutory text is, indeed, controlling.

                  The statutory text prescribes a certificate of correction. The statutory text does not say that this certificate must be binding, nor does it say that the certificate is not binding. The statutory text is amenable to either interpretation (although I agree that the reading of the statute that regards the certificate as binding is the better reading).

                  Therefore, if the SCotUS wishes to duck the issue, the SCotUS can say that the certificate is non-binding. This is not at all the same thing as saying that the statute is non-binding.

                3. Greg, the effect of the certificate is to cancel claims from the patent. Those patent claims cannot thereafter be enforced.

                  Since there is no right to appeal to a district court, there can be no further district court action where the decision of the PTAB is treated as advisory.

                  Regarding abeyance: constitutional rights are involved. This is not a case where benefits are involved. There is real harm being caused citizens by a delay.

                4. Ned, the effect right now of the certificate is that cancelled claims cannot be enforced. That is not actually in the statute, however. The statute nowhere says “and such canceled claims may no longer be enforced.”

                  My point is that, because the statute does not say—in so many words—that the claims canceled in the certificate of correction are unenforceable, the SCotUS could (I do not say “should,” merely “could) read the statute in such a way that the certificate is merely evidence of invalidity, rather than determinative on its face of invalidity. In that case, the D. Ct. would consider the certificate as part of a defendant’s affirmative defense.

                5. Greg, with all due respect, the claims are cancelled from the patent. They are not there legally. That is the end of the story.

                  Your wish that claims that do not exist might still be enforced is, let us say, out there. The public is entitled to rely on the patent as it exists. If the claims are not in the patent, they are not liable infringement, period.

                  Now tell me Greg, just what are one’s legal duties with respect to a claim that no longer exists?

                6. Greg,

                  How does your
                  In that case, the D. Ct. would consider the certificate as part of a defendant’s affirmative defense.

                  get around this other part:

                  35 U.S.C. 315 Relation to other proceedings or actions.
                  (e) ESTOPPEL.—
                  (2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

                  Do you re-write (but not re-write) that section as well?

              2. Returning to this point:

                What “taking at the initiation point”? If the certificate is held to be merely advisory, not binding, then how do you maintain your contention that anything whatever is “taken” by the PTAB?

                I have explained in detail the answer to that question.

                You do have to understand that the taking occurs at the initiation decision point and is quite separate from ANY decision on the merits. Since your reply here merely seeks to change the nature of the separate decision on the merits (in a legally substantial manner – but still separate from the point of taking), the discussion on that portion is not material to the taking occurs at the initiation point.

                The Supreme Court on holding that there is NO review of that initiation decision point really does place the entire IPR vehicle (and yes, with the fact that Congress considered – and rejected – separability), even the entire AIA into a more positive position of being Constitutionally infirm.

                The Court does not have the power to “save” something that cannot be saved.

                1. How do[] you[]… get around… 35 U.S.C. 315[(e)]

                  I am gratified to see that the thrust of the conversation has returned to the statutory text. That is a salutary turn for the discussion to take.

                  Now, let us consider the statutory text.

                  “The petitioner in an inter partes review… may not…” (emphasis added).

                  The first thing to notice here is that the 315(e) estoppel provisions apply only to the IPR petitioner. In other words, if X sues A and B, and A petitions for IPR, B is not the least bit estopped from raising in court invalidity defenses that A raised or could have raised in A’s IPR (assuming, for present purposes, that A & B are not in privity with each other).

                  Now, returning to A, remember that X has sued A, so there is already a D. Ct. case proceeding. A petitions for IPR and the D. Ct. stays the case pending the outcome. Imagine A convinces the PTAB that the claims are unpatentable. Do the estoppel provisions mean that X has prevailed in the PTAB but is now forbidden to bring this to the D. Ct.’s attention in the suit against A? No. I suppose one could read the statutory text that way, but no one does, and I dare say that the SCotUS is not about to insist that we all start reading the estoppel provisions that way.

                  In other words, once again, there is no statutory text that stands in the way of the advisory-certificate reading of the statute. I am—as I have been at pains to stress—not saying that this is the best reading of the text, but rather simply that it is a reading of the text that the SCotUS can use if it wants.

                2. So…..

                  You want the fruit of the poisoned tree…

                  But that is CLEARLY not the intent of the Congress, now is it? Such a reading what eviscerate the concept of estoppel. Maybe you have the recent case of Oopsie police searches on your mind…

                  And you have altered the provision with your “A” use. The way the law is written reinforces the notion that the result is NOT “advisory” because of the result in the Inter Partes IS binding. You change the one and now claim that it would be silly to take the estoppel effect at what it says.

                  Sorry – that silliness traces back to the change to “advisory.”

                3. The plain reading of what you are trying to do would defeat the very notion that Congress introduced these changes as alternatives to court action.

                  Your reading would actually necessitate MORE court actions.

                  You (the royal you) do NOT get to do that. Within the last term, the Supreme Court came out with a case that held that such cannot be done (unfortunately, I do not have that bookmarked – but I did post that case in a past discussion on this blog concerning this very topic).

        3. Mike – see above. The Court can construe the statutory grant of power narrowly in order to avoid unconstitutionality. In terms of public rights challenges, it has repeatedly done so in the past.

          Anon has not read the cases. In all likelihood, he cannot identify the PR cases.

          1. Anon has a pet scheme in mind where the SCotUS declares IPRs unconstitutional and then, because there is no severance clause in the AIA, the whole AIA falls with it and we revert back to the pre-AIA title 35. If the SCotUS merely gave the IPR statutes a narrower reading to preserve constitutionality, then his pet scheme would not work.

            The extreme reluctance to concede the point about the viability of a narrower, saving construction to sections 314–328 appears to e a function motivated reasoning. I.e., “I do not like this outcome, therefore it cannot be true.”

              1. Flannery O’Connor once wrote to a friend that “[t]he Freudian Technique can be applied to anything at all with equally ridiculous results.”

                I think that the same can be said of the commonplace assertion that certain blog commenters are “getting paid” to write what they write.

                It does not require pecuniary remuneration or even bad faith to nurture pet theories. I dare say we all have our own hobbyhorse to ride, and anon’s are no worse than anyone else’s around here.

                1. Maybe instead of the mere label, you want to take one of your precious cases and present a case here..?

                  After all, I have been asking for some cogent legal theory for quite some time, and no one has been able to present one (don’t forget to take into account the fact that Congress itself labels the patent as a personal property right).

                  Who knows, you may sway may off my “hobby horse.”

                  Or you may actually engage in a real legal discussion instead of your hand waving and name calling.

                2. Several have been presented within this thread alone.

                  Your willful blindness does not constitute advocacy.

                3. FOR EXAMPLE:

                  What is your counter-point to the Court’s ability to issue a one year stay on execution of its judgment finding a statute(s) unconstitutional?

                  Within that 1 year period, Congress then may revise the statute per the Court’s order.

                  This has worked before, and there is no reason why it wouldn’t work again.

                  Would Congress abjectly refuse? Would it push the AIA off a cliff just to make a point? You live in fantasy land.

                4. Your immediate “for instance” supports MY view in that it requires Congress to act and change the offending law.

                  That’s a point for me.

                  Do you want to try again? Maybe this one with one of those cases I just didn’t read?

      2. Parties aren’t going to continue paying $100,000’s for PTO “advisories.”

        I expect that this is correct. In a world where the SCotUS preserves IPR constitutionality by declaring PTAB decisions to be merely advisory, the appetite for filing IPRs would go way down. Not all the way to zero, but much, much less than what we are seeing now.

        Ironically, if the SCotUS had thrown out BRI in IPRs, then the PTAB’s determination would be binding via issue preclusion. Because a different claim construction prevails in district courts than in the PTAB, however, there is presently a good, solid basis for a patentee to argue that issue preclusion does not apply when a PTAB decision is carried over into district court. In other words, it might have been more dangerous to patentees if the SCotUS had agreed with Cuozzo and insisted on Philips’ constructions in IPRs.

        1. The differences you mention here make it MORE difficult for the “advisory” nature to be meritous in a court of law to be enforced.

          You are simply trying too hard to preserve (but not change) what Congress wrote into law.

          I wonder if you are being paid…

          😉

          1. Correct, the fact that BRI is used in the PTAB while Philips is used in the D. Ct. makes it more difficult to apply the PTAB findings in Art. III litigation.

            Your first sentence in 11.3.2.1 is grammatically unparseable, so I am partially just guessing at what you are trying to say, but I think that we are in agreement on this point.

            1. Not just “apply in litigation” but the purpose of your “advisory only” notice has no merit to be enforced by the court because it is no longer in the venue designed for it.

              You are just trying too hard to fit a square peg in a round hole.

              “Advisory” is stillborn.

              1. the purpose of your “advisory only” notice has no merit to be enforced by the court

                By definition, the “purpose” of an “advisory” document is to advise, not to “be enforced.”

                Once again, in the schema I am imagining (but not advocating), the PTAB decision of invalidity is evidence of unpatentability that the challenger could offer to the trier of fact. It is not a self-enforcing determination in this schema.

                1. Your schema does not work because what you want to use “to advise” is just not the same as what is necessary in the forum that you want to use that “just advise” piece of work.

                  You are legislating a very complicated – and essentially unworkable schema just because you do not want to accept the possibility that the AIA – as written – is Constitutionally infirm.

                  (And no, I am not responding to a schema of my own making)

                2. [N]o, I am not responding to a schema of my own making.

                  Yes, you are. This is rather evident in the very first line of your response in which you speak of “what [I]want to use…” As I have already explained, multiple times, none of this “advisory” schema is what I want. I regard such an arrangement as very much inferior to IPRs as we presently have them. I am merely laying out a way that the SCotUS could read the statute. It is not the way that I want, and the fact that you still have not caught on to this fact tells me how little effort you are putting into reading this exchange.

                  For the seventh or eighth time now, read the statutory text. The statutory text does not say anything that is inconsistent with the advisory-certificates reading that I have discussed above. If you think that the statutory text is inconsistent, perhaps you might actually cite chapter and verse.

                  Where in the statute is the language that precludes the advisory-certificates reading?

                3. The “want” is merely for ease of conversation – now you are being pedantic on top of simply being in error.

                  Your “the Court could read” is simply too massive of a repurposing.

                  Your admonition of “read the statutory text” misses the forest for the trees. There just is no possibility for the Court doing “what you suggest” (not what you want).

                  What you want though, is to somehow pretend that what you are suggesting is something that somehow fits into the judicial branch “interpretation” power (or some other unnamed power) that is simply far too radical a change than what was presented to the Congress when they discussed and voted for the AIA.

                4. Your admonition of “read the statutory text” misses the forest for the trees.

                  Translation: “I cannot actually cite a line of statutory text that is inconsistent with the advisory-certificates reading, but wild horses will not drag such an acknowledgment out of my mouth…”

                  There just is no possibility for the Court doing “what you suggest”…

                  Fair enough. I agree with you on that much. I simply do not think that IPRs as we have them really are constitutionally infirm, so I do not think that the Court will ever trouble itself to employ the narrow reading that I was discussing elsewhere. I expect that they will refuse to take either the MCM or the Cooper cases.

                  If the SCotUS does take either case, however, I confidently anticipate that they will sustain the constitutionality of IPRs, albeit perhaps on other grounds than those employed by the CAFC. I do not agree with Ned’s ultimate conclusion (unconstitutional), but he has certainly convinced me that the CAFC’s reasoning (public rights) was incorrect.

                5. Greg,

                  You ask:
                  Where in the statute is the language that precludes the advisory-certificates reading?

                  Maybe here:

                  35 U.S.C. 315 Relation to other proceedings or actions.
                  (e) ESTOPPEL.—
                  (2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

                  Since you only want the certificate to be “advisory” but you are precluded from actually using that “advisory” certificate, you know, in a court of law, what do you really gain with that nicety? (you cannot use it as evidence in your defense – unless of course, you “magically” rewrite even more of the law….

              2. In other words, you are not responding to the schema that I am proposing. You are responding to a different schema of your own contrivance.

        2. Greg, I think there is zero chance that the SC would “deem” PTAB IPR decisions non binding or that the certificate of cancellation of the claims would have no effect.

          The claims stand cancelled. Yet the patent owner sued someone for infringement, someone who is not the petitioner? Just how can a claim that has been cancelled from the patent be infringed? It is a legal impossibility.

          1. Absolutely Ned, Greg is just not understanding what happens at the initiation decision point when that bundle of property rights called a patent is dragged back into the Office – even before any decision on the merits once back in the Office.

            He wants to pretend that that bundle does not change from at grant to right after the initiation point, to even (now) after a decision on the merits – and with NO voice of Congress, wants to pretend that nothing happens to that bundle of sticks until someone fights enforcement and uses the (no legal change?) IPR process as a mere mechanism to submit evidence of an advisory nature.

            Have you ever seen such willful blindness to the level of changes impacting the statutory law that is patent law?

  8. The key point is that not one justice supported the attack on the PTO use of BRI in IPRs , or supported interlocutory challenges to IPR institution decisions.
    As predicted by some of us, but widely ignored, and not really even argued by the PTO, the PTO rulemaking deference required by the Chevron Doctrine [especially U.S. v. Mead] was a major factor on cert question 1, the BRI challenge. [J. Thomas wrote a concurrence to mount a lone attack on the entire Chevron Doctrine.] The two justices partially dissenting did so only re the “no appeal of IPR institution decisions” IPR statute [the second cert question]. The majority opinion does pose some potential exceptions for that statute, for final IPR decisions, for IPRs established without due process, or in violation of statutory jurisdiction, giving as an example an IPR initiated on 112 issues, and noting the AIA statute.

    1. (It appears that you are glorifying the asking of the wrong question – some of us noted that the statute as written by Congress was clear and that chasing what the Office was doing was not asking the right question – with the very easy to prognosticate results that we see in this decision – while very much still leaving the decidedly more impactful answers waiting for someone to ask the right questions)

    2. Paul, the discussion by Thomas raises an interesting point, does it not? Both the majority and Thomas agree that the statute expressly authorizes the PTO to provide for” regulations… establishing a governing inter partes review under this chapter.” Thus they apparently had the expressed power to provide for broadest reasonable interpretation regardless that the “regulation” was substantive in nature. Thomas agrees with this; and as a result, he disagrees that the court had to rely on Chevron which require some ambiguity in the statute. There was none here.

      He thought, and I tend to agree with this, that the real review that the Supreme Court was conducting of the BRI rule was whether the rulemaking by the patent office was reasonable and not arbitrary and capricious etc.

      1. Re: “.. Chevron, which require some ambiguity in the statute. There was none here.”

        ? The IPR statute itself said nothing at all about BRI or any other claim interpretation test for IPRs.
        P.S. The fact that the PTO had used BRI nearly forever for all other PTO proceedings, including all inter party validity trials in interferences and inter partes reexaminations, is a major factor in the applicability of the Chevron Doctrine.

        1. I believe that what Ned means is this:

          The directive to have the Office run this as they see fit removes the point of invocation of the Chevron doctrine, which only comes into play when the legislation is itself unclear.

          Since the legislation was NOT unclear – no implication of the doctrine.

  9. This is interest:

    “Nevertheless, in light of §314(d)’s own text and the
    presumption favoring review, we emphasize that our
    interpretation applies where the grounds for attacking the
    decision to institute inter partes review consist of questions
    that are closely tied to the application and interpretation
    of statutes related to the Patent Office’s decision to
    initiate inter partes review. See §314(d) (barring appeals
    of “determinations . . . to initiate an inter partes review
    under this section” (emphasis added)). This means that we
    need not, and do not, decide the precise effect of §314(d) on
    appeals that implicate constitutional questions, that depend
    on other less closely related statutes, or that present
    other questions of interpretation that reach, in terms of
    scope and impact, well beyond “this section.””

    What does this mean regarding the USPTO’s institution outside the bounds of 35 USC 315? Do “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” include the more generalist law of timely petitions under 35 USC 315 or does it include those + 102 & 103?

    I think the general idea is correct – don’t review the basic institution decision with regard to 102 & 103 etc. I would be interested to see how the CAFC handles the distinction offered by the Supreme Court with regard to 35 USC 315 issues.

    1. Property – already established as such – have other Constitutional protections outside of the patent statutes.

      Much like a right to vote (nowhere guaranteed in the Constitution, mind you), once created, may not be “mistreated” by any subsequent law.

      Even Congress – the proper branch designated under the Constitution to write the statutory law that is patent law – cannot violate other aspects of Constitutional aspects of property (for example, the taking of certain sticks in the bundle of property rights with NO remuneration and NO chance of Article III review).

    2. The dissent suggested that the decision of the majority was broad enough to include decisions made under 315(a) and (b). But apparently, the majority did not think that because it emphasized “this section” and statutes that related to the decisions made in section 314. Obviously section 315 is not section 314; and further decisions made in section 315 are collateral to and independent of 314. Moreover, while the decision under 314 is discretionary, based upon the judgment of the Director, the decision under 315 is not discretionary but mandatory upon the findings of fact involved, basically that the petition is barred.

      1. The dissent suggested that the decision of the majority was broad enough to include decisions made under 315(a) and (b). But apparently, the majority did not think that because it emphasized “this section” and statutes that related to the decisions made in section 314. Obviously section 315 is not section 314…

        I think that is correct, but unfortunately Cuozzo was not the correct procedural vehicle to make that distinction. In Cuozzo, the aspect of the institution being challenged really was “is this more-likely-than-not unpatentable.” That is exactly the sort of thing that §314(d) was intended to prevent being second-guessed, so the Court was quite right to shoot Cuozzo down on this point.

        On the other hand, Achates v. Apple cited Cuozzo for the proposition that §314(d) prevents the CAFC from reviewing even the §315(a) bars to institution. In other words, existing CAFC precedent says that §315(a) considerations are just as far beyond review as the sort of “purely” §314(d) considerations at stake in Cuozzo. Achates petitioned for cert, but the SCotUS has already denied the Achates petition, so there is now no chance for the SCotUS to clarify this ambiguity in its Cuozzo opinion by resolving the related question of Achates.

        So, what is the status of Achates after the SCotUS’ Cuozzo decision? Does the SCotUS opinion mean that the CAFC should reconsider its strong stance in Achates, or does the fact that the SCotUS has not explicitly over-ruled Achates—and has, in fact, refused explicitly to revisit Achates—mean that the bar on review of §315(a) factors still stands?

        Justice Breyer said that “we… do not[] decide the precise effect of §314(d) on appeals that… depend on other less closely related statutes,” (emphasis added). §315 after all, is arguably “closely related” to §314, so maybe the Court is signalling that everything just said about §314(d) applies with equal force to §315(a).

        As is so often the case, they really could have been more clear.

          1. I definitely agree that the issue is “alive.” Unfortunately, it is “alive” in the sense that the SCotUS has just invited various parties to pour millions of dollars into litigating whether X is or is not “less closely related” to the §314(d) inquiry. They could (and should) have offered a little more guidance on that point.

            You are certainly correct, however, that even if Achates petition is not the vehicle to resolve this question, that we will not lack for other cases to present the same question.

  10. The plot thickens.

    If Cooper & MCM go belly up, the nation’s patent system will change in a very significant way.

    1. Correction: the nation’s patent system has already changed in a very significant way.

      These two cases are merely opportunities to recognize (and correct) these changes.

      There is nothing that says these are the only such chances to ask the right questions (thankfully).

      1. You think this is change? Watch what happens if/when the Court affirms the CAFC’s holding that the validity of an issued patent for intellectual property is a matter of “public rights.”

        1. Oh, that would be a change as well, but that does not mean that changes have already occurred (and from multiple branches of the government).

        2. Anony – this was my point below to ‘anon’. SCOTUS has only 2 alternatives in my view if they don’t want to completely destroy IP in the USA (in regards to Cooper/MCM).

          1. They ignore the cert and punt it…no ‘additional’ damage done and we carry on with this mess Congress created, but its not enough of a mess for people to start pointing fingers as to why IP in the USA no longer has protections. At this stage, the troll narrative still holds some sway and people continue to ignore fact.

          2. However, should SCOTUS accept Cooper/MCM and rule that patents are no longer a private right but rather are a public right, which is their only way out should they take on those cases, well we know what happens then.

          3. Now I am not a lawyer so happy to hear from those who are, but should SCOTUS take on those cases and not side with Cooper/MCM, well I for one am going to start up a company that copies everything google and apple have made and sell it for 1/2 the price – oh that’s right China is just waiting with their factories on stand by for that!

          :)

          1. Fred – the CAFC recently affirmed Patlex, and confirmed that the matter of patent validity is a “public right.”

            If the Court denies certiorari in Cooper / MCM, then that matter is settled.

            Either the claim is private right or a public right. There is no third option. When the dust settles, this matter will be resolved.

            Section III of this amicus brief explains what is at stake:

            link to patentlyo.com

            1. Anony,

              I wasn’t suggesting that there was a ‘third option’.

              Clearly, a patent is either a public or private right. While the CAFC may call a patent a public right, we all know the CAFC seems to have alot of ‘issues’ – and in the end who matter is not the CAFC but SCOTUS’s view on that issue.

              Thank you for that case, I will look it up, I am curious if those on the other side of that case will be petitioning SCOTUS on that issue (public vs private) or already have.

                1. Fred, I think you might want to read our petition to the Supreme Court for more on the history of this issue. Search here for MCM Portfolio LLC v. Hewlett-Packard.

            2. There is a third option. That the demarcation between public and private rights is not the driving force of article III. The Court should examine whether the district court maintains review of the board proceedings and whether the patent owner consents to the boards jurisdiction. Most Artile III cases turn on those two factors. If IPR is constitutional then I can’t imagine any scenario where a federally created cause of action must be tried to a district court. Congress could merely assert that all congressionally created agencies that invoke and and apply federal law must only be adjusted by admin judges. Article III would be a dead letter.

                1. Courts don’t grant talismanic significance to whether a right is public or private under Article III. All that matters is whether invalidity is a matter that “is the subject of a suit at the common law, or in equity, or admiralty and which therefore has traditionally been tried in Article III courts.” Without a question invalidity was traditionally tried by Article III courts.

                2. The law, equity, admiralty limitation is the test that the Court applies to determine whether a particular cause of action is a public right or a private right. You identified the test to determine the label, not the other way around.

                  And yes, once identified as either public or private per the above, the courts will in fact “grant talismanic significance to whether a right is public or private.”

              1. “That the demarcation between public and private rights is not the driving force of article III. ”

                Mike, it is all about who decides the facts, not about whether the decision or judgment might be reviewed for legal error. Thus, judicial review must include the right to try the facts de novo. Additionally, since historically validity was a matter tried to a jury, there must be a right to a jury trial.

                1. “That the demarcation between public and private rights is not the driving force of article III. ”

                  Mike – read Murray’s Lessee, 59 U.S. 272 (1856). The public right or private right question determines whether a particular claim belongs to the Article III courts. If a public right, it belongs to Congress. The judiciary’s participation is optional.

            1. Anon,

              I think my comment was somewhat confusing. I wasn’t suggesting that SCOTUS would determine that patents are a public right if they took on the case, what was intended was this:

              If they take the case, they have (at least in my rudimentary legal view) a binary decision

              A. Patents are a public right and by implication, the invalidation of patents via the IPR process is not a ‘taking’ and therefore, not in violation of the constitution

              B. Patents are indeed a private right (as defined in the constitution), and by implication, the invalidation of patents via the IPR process is a ‘taking’ and thus is a violation of the constitution.

              Punting allows them to avoid the earthquake that will result from either of these decisions. Again, I am not a lawyer so perhaps there are nuanced ways to get around this elephant but from my reads of the petitions it doesn’t appear as such. Happy to hear otherwise.

              Sorry if I my post was confusing as it was written rather quickly.

  11. 8 blind mice
    8 blind mice
    See how they palaver
    See how they pontificate
    They tell the world that they know patents best
    Paying no heed to their own cluelessness
    Or how they make messes where none should exist
    8 blind mice

        1. The term of art is “scrivining.”

          As in: the Hypocritical Supreme Court Justices do a lousy job of scrivining their own statutory patent law.

            1. LOL right back at you – yes, it is.

              It is only poetic symmetry that the Court just bl0ws at it – worse than the bar that they would seem to belittle.

            1. Atari man – it is a perfectly fine word.

              Scriveners are going to scriven.

              (talk about someone needing to lighten up – you would have been a killjoy in Shakespeare’s day)

                1. LOL – you are basing your position on typos….?

                  And you want to deny the ability to coin new words…? (not mine, mind you – the art which has adopted the term, as surely you recognize that I am not the one that came up with that term, but am merely using it with poetic effect by noting that those who DID come up with the term are doing what they claim others to be doing)

                  But that you want to “police” this use…
                  Shakespeare surely spins in his sleep.

                2. Oh, wait – you’re THAT anon?! The one on my list of “greatest English writers”, right next to John Donne, Milton, and The Bard himself?! OMG!!!!!

                  I’m soooo sorry. I thought you’re just some patent attorney posting anonymous comments on a patent blog, and that *I’d* started this whole thread by posting some verse of my own making. I’m soooo sorry to have insulted one of the true giants of English literature.

                3. Of course I am that anon – but that does not mean that you should play the doosh with your attempt at big words and wanting to constrain the discussion here.

                  Your apology is not accepted – just because you finally realize who I am does not mean that your behavior was kosher for any ol’ “anon.”

            2. At “cromulent” I laughed out loud. Thank you Atari.

              Could now our resident self-appointed chief of police anon perhaps consider a change of name to something more in character, like Dogberry?

  12. Dennis, question for you….(I am not a lawyer so bear with me)…

    1. The fact that SCOTUS mentioned that Cuozzo didn’t address any constitutional issues -> Can SCOTUS not bring those up on their own? Ie, in a number of the amicus briefs, similar arguments to MCM/Cooper were raised.

    2. Given SCOTUS did not address the constitutionality of taking private property via the PTAB, could one argue that by tacitly approving the PTAB process, they are implying that the PTAB death squads killing of patents are technically not a ‘taking’, or am I reaching here and does SCOTUS simply address only the questions posed?

    3. Given Roberts previous commentary in Cuozzo orals (seemingly siding with patent holders but now concurring with the majority), the commentary reaching back to the the constitution in Halo, do you think this bodes well for MCM/Cooper, or in your view is the Cuozzo decision foreshadowing that SCOTUS is too scared to address material issues when it comes to patents and is simply punting? These two opinions seem somewhat at odds in terms of strengthening patent holder rights.

    4. What do you make of Ms. Lee stepping down when Obama leaves office? Odd timing?

    Curious your views, thanks in advance

    1. 1. The fact that SCOTUS mentioned that Cuozzo didn’t address any constitutional issues -> Can SCOTUS not bring those up on their own? Ie, in a number of the amicus briefs, similar arguments to MCM/Cooper were raised.

      Other than standing (i.e. whether the court even has the authority to hear a case), generally courts do not raise constitutional issues on their own. It is up to a party to raise those issues.

      2. Given SCOTUS did not address the constitutionality of taking private property via the PTAB, could one argue that by tacitly approving the PTAB process, they are implying that the PTAB death squads killing of patents are technically not a ‘taking’, or am I reaching here and does SCOTUS simply address only the questions posed?

      I don’t think anything can be assumed, for the reason given in response above.

      do you think this bodes well for MCM/Cooper, or in your view is the Cuozzo decision foreshadowing that SCOTUS is too scared to address material issues when it comes to patents and is simply punting?

      The court indicated it could review constitutional questions re IPR institution. That bodes well for at least the reviewability of MCM’s argument. I don’t think much can be read into this decision otherwise. The Court usually decides narrowly, if possible. That doesn’t mean it is scared of addressing constitutional issues (see, e.g., Citizen’s United).

      4. What do you make of Ms. Lee stepping down when Obama leaves office? Odd timing?

      Director Lee is a political appointee. It is customary for political appointees to step down when the President that appointed them leaves office. This is not odd at all.

    2. Fred. Thanks for the comments.

      The usual practice of the Supreme Court is to focus on the questions presented by the case. Sometimes the Court strays from that approach, but not here. I don’t see the holding as addressing the constitutional questions and so those are still ‘live.’ I have not come to any conclusion on how this case impacts the likelihood of grant for MCM/Cooper except that they still have a chance. Unlikely that the Supreme Court is ‘scared’ to address patent issues here – pretty tame stuff for the Supreme Court.

      Regarding Director Lee. Although she has tremendous patent law experience, she is an executive branch political appointee of the sitting President. The tradition in posts like these (including PTO director) is to step-down with the president unless asked to remain by the transition-team of the new president. In addition, Lee has been with the Office since 2012, which is a long time for someone coming out of industry. Can you imagine the frustrations! Odds are now that Clinton will be elected – if so, that raises the potential that Dir. Lee would stay-on, but I see it as unlikely.

        1. in pieces…

          I think that you (severely) underestimate the “tameness” of a Constitutional issue with anything associated with the AIA, given the express history of this particular act (Congress having considered and expressly rejecting separability).

            1. Unless of course, you (or someone or anyone) has a cogent legal basis for somehow getting around what Congress explicitly did with this particular law…)

              1. As to the Clinton/Trump (choice between two rather unappetizing choices), I have not seen anything that indicates that Clinton would beat Trump (not that I have been looking for that, mind you).

              2. Anon,

                SCOTUS is in a tough bind on MCM/Cooper. I think those with legal experience can see this.

                While, SCOTUS, as you know doesn’t have to accept every case and could simply punt it, very plausible, it is hard to see how if they accept it, they would not side with those 2 parties.

                Now if you are suggesting SCOTUS is up to something nefarious, is not an independent arbiter, here to ensure that that constitution is followed, why don’t you say that?

                Or alternatively, rather than spewing incoherent babble provide why they would reject it on legal grounds?

                Many thanks

                1. Why would they reject what?

                  You are in too much of a hurry to label something you apparently cannot be bothered to understand to formulate your question clearly.

  13. One must wonder whether the outcome on the appealability issue would have been different if petitioner’s counsel had focused on that issue during oral argument. He spent very little time discussing the appealability issue, and I think it left the impression that it just wasn’t important or, worse, that it was a losing argument.

    1. He did not ask the right question.

      Something this to have implored Ned to make sure that he does differently.

    2. It is not just Cuozzo’s counsel who treated the appealability issue as secondary. It was presented second in the petition, and all of the media coverage of this case focused on the BRI vs Philips issue, with the appellate review issue getting barely a mention. Meanwhile, when the decision was handed down, Law360 blasted out the headline “High Court Refuses To Change PTAB Claim Construction Test.”

      I was amused, therefore, when I opened the opinion and saw that the Court had dealt with the appealability issue first. At least they realized what is more important in this case, even if the parties, lawyers, reporters, and other assorted riff-raff could not.

  14. Well, I only got this half right. I was surprised they are going to leave the non-institution of an IPR as non-appealable. I really thought they would have a Constitutional problem with non-appeal non-institution despite the statute and APA.

    Our interpretation of the “No Appeal” provision here has the same effect. Congress has told the Patent Office to determine whether inter partes review should proceed, and it has made the agency’s decision “final” and “nonappealable.” §314(d).Our conclusion that courts may not revisit this initial determination gives effect to this statutory command.Moreover, Lindahl’s conclusion was consistent with prior

    1. Still maybe I was right…

      This means that we need not, and do not, decide the precise effect of §314(d) onappeals that implicate constitutional questions, that depend on other less closely related statutes, or that presentother questions of interpretation that reach, in terms of scope and impact, well beyond “this section.” Cf. Johnson
      v. Robison, 415 U. S. 361, 367 (1974) (statute precluding review of “any question of law or fact under any law administered by the Veterans’ Administration” does not barreview of constitutional challenges (emphasis deleted and internal quotation marks omitted));

      1. One problem is would one ever know if it was “arbitrary and capricious” if you can’t appeal it to a district court–and I mean only the non-institution particularly for those that don’t have standing to challenge the validity of the patent in dist. ct. Seems like the wrong result.

        be properly reviewable in the context of §319 and under the Administrative Procedure Act, which enables reviewing courts to “set aside agency action” that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.” Compare post, at 13, with 5 U. S. C. §§706(2)(A)–(D).

    2. So, actually reading this it may be that I was right. That the justices may decide that review is proper for non-institution, but not for institution. That is right.

      So, maybe I was right on both accounts. The BRI was a gimme.

        1. Well, it does appear that they said they didn’t reach of the issue if non-appealable was OK when it wasn’t instituted.

          1. Well, it does appear that they said they didn’t reach of the issue if non-appealable was OK when it wasn’t instituted.

            I’m not sure where you see that. I see what you quoted, which is:
            “Congress has told the Patent Office to determine whether inter partes review should proceed, and it has made the agency’s decision “final” and “nonappealable.” §314(d).Our conclusion that courts may not revisit this initial determination gives effect to this statutory command.”

            That seems pretty straightforward, and doesn’t distinguish between go or no-go determinations by the PTO. Are there potential constitutionality issues that arise from non-institution decisions that aren’t present in institution decisions? I would think that it would be more likely to be the other way around, since an institution decision has a (potentially negative) impact on an actual rights-holder, while a non-institution decision affects someone with much less direct interests. (Not that I’m aware of constitutionality issues either way.)

            1. Read what I quoted in 4.1. They only decided for institution and not non-institution. The quotes bring up Constitutional issues.

              Hey, DanH, I made a prediction. I was right on the BRI. I wasn’t wrong on the second issue because they didn’t address my prediction. At least I have the courage to predict the results of these cases.

              1. You misread this Night. The “initiation decision” includes the decision to institute as well as the decision NOT to institute.

                They only make one decision, not two.

                1. I don’t think so anon. Maybe. I am in such a hurry this week. But, it seemed to me that they only addressed arguments for the case of an instituted IPR and not a non-instituted IPR.

      1. (After all, the review is NOT a review on the decision on the merits, but is only a review on the institution decision.

        As I said long ago, the right question has to be asked (and that right question deals NOT with the Office following what Congress stated, but with what Congress stated in the first place – and that dealing with the SEPARATE institution decision and the takings that occur immediately at that point in time.

        All that you have here is an easy answer to the wrong question asked.

        (I certainly hope Ned Heller is paying attention, as this plays out exactly as I indicated)

          1. Yes, yes, anon. I understand all that.

            You do? Impressive.
            I didn’t understand a word of it, but I’m glad to see that this is all playing out according to anon’s plan.

  15. Argh. A run-on sentence, followed by a sentence fragment. No wonder generalist judges hate patent lawyers. “Most of the additional post-issuance review challenges that have petitioned for writ of certiorari are likely to fall-away at this point, however, the major caveats in the majority opinion offer some light for both Cooper v. Lee and MCM v. HP. Both of which have challenged the system on US Constitutional grounds.”

  16. Who wrote the AIA? Why does the AIA ape the EPC, in making unappealable a post-issue decision by a PTO Board of Appeal to revoke a duly issued patent? Was Big Corp so enamoured of the opposition process at the EPO that it lobbied Congress for something bigger and better at the USPTO?

    I think a properly functioning patent system should encourage clear drafting. I doubt that applying two different claim construction regimes to the same issued claim is the best way to do it. But perhaps it is. On that point, I’m open to persuasion.

      1. Fred, I thought it was Bob Armitage who wrote the AIA. Bob was central to harmonization since the early ’90s. First-to-file was his baby.

        As to IPRs, they were probably intended only as a fix to inter partes re-examinations that still had an examiner and were taking forever and ever and ever. The intent was to remove the examiner and speed the process up.

        Moreover, inter partes re-examination did not have the popularity that the patent office expected, perhaps because of the “interference” of the examiner and because of the opportunity to amend was unlimited. Petitioners might find themselves invalidating the broader claims, only to find themselves infringing amended but narrower claims. The principal objective for IPRs was to eliminate the examiner and to eliminate, as best as, possible the opportunity to amend.

          1. Anon, as you know, Bio and Pharma were both concerned about IPRs prior to the AIA, were assured by Mr. Armitage that everything would be okay. Obviously, Bob was working to maintain a coalition many of whom saw IPRs is vitally necessary, especially to address the so-called troll problem. Bio and Pharma were never afflicted by a troll problem, but their patents were of critical importance and the reduction of the standard of proof for IPRs always concerned them. But the support of Bio and Pharma were necessary to pass the AIA, which critically moved the American patent system to a first-to-file system.

            I understand the balancing act that Armitage had to do in order to maintain his coalition. Since passage of the AIA, it is my understanding that Bob has worked very hard to fix IPRs in one way or another. I am not sure that he would not support the constitutional challenges now that Cuozzo has been decided adversely to patent owners.

                1. Sorry Ned – it won’t make it through.

                  The two cent version: Your treatment of Armitage is not what it should be.

                2. anon, I am of two minds on first to file. I think first to invent is better for inventors. I also believe that harmonization of patent laws will be beneficial so that we might eventually dramatically reduce the costs of obtaining a “world patent.”

                  Big international business also wants uniform world markets. Thus the patent rights for a particular invention should ideally be substantially uniform worldwide.

                3. Patent law is – and remains – a sovereign-centric concept. Treaties for comity should not be confused with some sense of trans-nationalism.

                  You have drunk the kool-aid of Big Corp with the “ease” of a “one-world” patent – and you may not even be aware of it.

                  You seem to have this syndrome: link to youtube.com

                4. Anon, harmonization is not necessarily Kool-Aid. Consider the United States of America. We have patents that cover the entire United States even though we are composed of 50 different states. Now look at the world, composed of 150 states (perhaps more if you count them all). Would it not it be better to have a patent to cover the entire 150 states than have a patent that only covered one state?

                5. Better for whom?

                  I just don’t buy that whole one world order CR@P.

                  Soveriegn nations are STILL sovereign, and there is NO “world constitution.”

                  No Ned – it is the transnational that is not be holding to ANY sovereign that benefits most from that “One World Order.”

                  Wake up.

    1. Max, I’d say the distinction is a necessary result of the fact that the patent owner has an opportunity to amend during an IPR to narrow the claim away from broad interpretations that are reasonable, albeit not intended.

      However, since they cannot amend during litigation, holding them to the same broad standard would unreasonably punish patent owners for simply having a different, also reasonable, understanding of a term. Instead, the court may preserve the validity of the patent by construing terms narrowly, potentially resulting in noninfringement* but saving the patent as a consolation. This provides a bit of increased certainty in the economic value of the issued patent, which is generally a good thing.

      So, the IPR, like examination generally, can try to get the claims right; while litigation, lacking the opportunity to amend, can try to get the outcome right.

      *not that that’s all that bad of an outcome – if the accused product only infringes the patent on a claim construction that’s broader than what was ever intended by the inventor, then the patent owner is not really entitled to such wide scope.

        1. Yes, anon, that’s why I said “the patent owner has an opportunity to amend during an IPR.” It’s in the first sentence – maybe you thought that was me quoting Max, and skimmed over it?

          1. No – I was making a distinction that “opportunity” is perhaps not the right word. You can ask for the opportunity, but that does not mean that you may actually HAVE the opportunity (you may flat out be denied).

            UNLESS amendment is of right you really do not have an analogous situation with the pre-grant conditions.

            1. Ah, gotcha.
              Eh. Most of the attempts at amending during IPRs have been denied, but as the SCOTUS notes, that may be because the proposed amendments were futile. Here, Cuozzo was trying to enlarge the scope of the claims, not narrow them. I think my point still stands above – that there is an opportunity to narrow the claims to disclaim the broadest-possible-but-unintended interpretation, preserving validity of the patent (should the art be inadequate in that regard); while no such opportunity exists during litigation.

              1. I think that your point expressly does NOT stand – based on the underlying legal positions (regardless of any “actual examples” – the law has to cover all situations; not just the convenient ones).

                Further, there was some discussion on the possible gambit of what a widening amendment (if allowed) could do – and it was NOT a “de facto” loss for the patent holder.

                To wit***: exacting limited claim merely covers swamp land which is located inland of prime beachfront property. The amendment moves to widen the ground covered to include both swamp AND prime estate; which sets up a second amendment to eliminate the claim to swamp and only have a remaining claim to prime estate.

                Without the ability to “widen” first, the patent holder cannot even attempt the gambit of obtaining a different focus.

                ***and only as a colorful analogy

                1. Although quite a colorful analogy, I fail to see what that has to do with my point regarding why there might be a lower hurdle in litigation where amendments are unavailable. You’ve instead mainly focused on whether amendments are always available vs. mostly available, but those are both at the opposite end of the spectrum from not available.

                  Even within your analogy, yes, claim scope could be shifted via multiple amendments… So? Isn’t that again a justification for using BRI vs. plain meaning: the greater flexibility allowed to the drafter, the higher the standard of exactness that they should be held to?

                2. Maybe as a prosecutor I see that as less of a hurdle. I mean, why even try for a futile amendment that will never get entered (other than just to run up the bills on your client).
                  No, given as a premise that any amendment I wrote would certainly be advancing prosecution and would accordingly be entered, then the “of right” is negligible, and the fact that there is no possibility, no matter how slight, of entering an amendment during litigation seems to be a much bigger deal.

                3. And now you miss the subtlety of the larger move in order to obtain the more beneficial move.

                  Which of course STILL has you missing the point of a the impact of an amendment of right.

                  You slip too easily back into a specific example of “gee, an amendment here like that does not seem valuable” when that is just not the point of the matter.

                  I “get” the no amendment during litigation – but that is just not the issue. You are accepting the mere potential of an amendment for an immediate and real sacrifice. That’s like saying the mere thought of a mirage is good enough for your travels across the desert (and litigation is no desert, because you have given up nothing for the lack of the mirage).

    2. “Why does the AIA ape the EPC, in making unappealable a post-issue decision by a PTO Board of Appeal to revoke a duly issued patent?”

      A decision to revoke is appealable outside the patent office (to Federal Circuit).

      It is the decision to institute the IPR (perhaps analogous to the admissibility determination at the O.D.) that this SC case said was not appealable.

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