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
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.
Malleus Maleficarum (MM)
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.
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
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?
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.
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.
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.
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
Did I say THAT part was a “Constituonal crises”…?
Pay attention son.
(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.
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)
…and it is not like that is something new either – Happy Decade of Decadence.
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?)
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.
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.
…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.
anon, sticks, bundles, what are you talking about? Truly.
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.
“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.”
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.
“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?
Apparently not – maybe you want to try to say something meaningful instead of your empty ad hominem…?
Great job Prof.
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.
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…
Awesome decision.
IPRs are one of the most important and successful aspects of the US patent system. They aren’t going anywhere.
Your “feelings” of “awesomeness” aside, this decision as predictable as it was has NO bearing on “[t]hey aren’t going anywhere.”
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.”
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?
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?
OTay pumpkin.
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.
Sounds like you and I are in the same pod…
😉
“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
Do you even know what that means?
(If so, you would not have used it here)
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?
Wow – this discussion is NOT about the EPC.
The world does not revolve around MaxDrei’s fervent desires and myopias.
Different
Sovereign
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.
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?
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?
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
Bernie’s a traitor and he always was. #bernieisnoberniebro
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
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?
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.
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.
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.
…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.
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.
the PTO decision to revoke is appealable to the court isn’t it?
Shhhhhh. You’re not supposed to mention that fact.
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.
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.
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.
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.
Ned,
Is that an Armitage artifact?
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.
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)
…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.
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.
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.
…your own “politically correct” “shaming” game on display…
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.
Except not – as I mentioned, you use the term out of context.
The context matters.
Using it “out of context” (whichever context you mean) does not equal “using it politically correctly”.
It certainly means that you are trying to use it to “shame”
^ 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.
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.