A trap for the unwary: Indemnity obligations may create privity for purposes of IPR

There’s a great post by Oblon here discussing Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014).  The PTAB did not hold that privity existed solely because of an indemnity obligation (and didn’t need to under the particular facts), but (a) it recognized that “in privity” must mean more than “real party in interest,” and (b) at least implies that an indemnity obligation might fit within the scope.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

15 thoughts on “A trap for the unwary: Indemnity obligations may create privity for purposes of IPR

  1. 1

    It appears that a different type of trap exists over at the main blog page, where once again pointing out that selective censorship is once again in play results in a total ban of posts.

    The truly heinous repeat offenders (particularly Malcolm Mooney) has a free pass, but anyone harshly (but justifiably and accurately) pointing out the gamesmanship is squelched.

    C’est La Vie

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        One of the side conversations related to “blogging quality” on the main blog centered around protection of the good Professor’s raw data afforded under the theory that he merely provides a forum and does not exercise undue editorial control (read that as shaping content).

        Now a smokescreen that was offered to that editorial control allowance was the removal of offensive material. I do not have – and have never have had – a problem with removal of offensive material; as long as such removal is done on an objective and consistent basis. I posted long ago that I was willing to post under ANY set of rules that applied to everyone – objectively and consistently.

        What appears to be clear is that some are ‘more equal’ than others and that certain viewpoints (read that as the anti-software patent kind) have a different (and much lower standard).

        What I find interesting – and worth a possible discussion on this segment of the blog – are the ethical considerations of such actions: both of the main perpetrator and of the content-specific, um, ‘help’ as it were.

        The poster generally known as Malcolm Mooney has made it abundantly clear that he does not feel constrained to act in an honest manner – that posting on a blog simply does not rise to the level of intellectual honesty required for an advocate in a courtroom.

        Without accepting the correctness of the position, for argument’s sake let’s allow that while Malcolm may be ‘technically’ correct; the result is that he fights that battle and loses the war. Generally speaking, we are advocates and as advocates we recognize rampant intellectual dishonesty and the taint of that dishonesty. Every single identifier of poor quality blogging can be associated with his rhetorical techniques.

        Nonetheless, there are ethical considerations that must be kept in mind for actions taken as advocates – no matter the forum. We know – or should know – that a legal forum does contribute to shaping legal thought, and that we who participate in the process of shaping legal thought are not free to engage in unethical behavior ‘just because we are posting on a blog.’

        This is not to say that we cannot have opinions, and this is not to say that those opinions cannot include that the law is wrong, or is being wrongly applied. Malcolm Mooney’s actions travel far past that line.

        He knows it.
        Everyone knows it.
        Everyone, including Prof. Crouch.

        Some even applaud his ‘style’ and seek to blame anyone who disagrees with that style by saying “well, he treats me fine,” or upvoting direct lies (for example, Malcolm denying he uses innuendo). Is it any surprise that all of those willing (and even eager) to ‘look the other way’ share anti-software and anti-business method patent ideologies? Not that such views – in and of themselves are forbidden, as I have long held that it is not the content of what Malcolm has to say that is necessarily offensive – it is mainly in how he says it (some things as naked expletives, personal attacks, or purposefully offensive religious phrases ARE offensive both in their content and presentation).

        Which brings me to the, um, ‘help.’

        Posted rules are posted for a reason. A rule that states that posts are to be of a personal nature has to be there for a reason. I believe that reason to be, at least in a small but critical part so that true conversations can happen. When shilling is going on, there is no desire for conversation to actually happen. It is abundantly clear that the rules concerning posting of a personal nature have been routinely violated – without repercussion. Thus my repeated notations of those who use the rhetorical tactic of the CRP-Run Away and Ignore Valid Counterpoints-And CRP again. Especially d@mming for certain individuals when a discussion brings out volunteered admissions that are then the subject of obfuscation and repeated direct lies. That’s an inherent danger about the use of lies – the additional lies that are told to cover up the first lies.

        But back to the ‘help.’ Even ‘soft’ judgment rules appear to be violated on a routine basis. When a post that is content neutral and merely – and accurately – describing the effect on a certain poster under a certain software and editorial control is lifted, the one-sided editorial control is itself highlighted, we start to move beyond the line of a mere appearance of favoritism. Interesting then, that the person with the most offensive posts removed is still the person with the greatest latitude for offensive posts remaining. Try as hard as I can, I cannot fathom what the objective standard is for posts to remain on the board, as posts of mine that make accurate and objective and on-point observations that contain direct quotes of the chief offender are removed, leaving behind the original offensive material. Thus my ‘Cuss-test’ posts.

        I could see and understand that my highlighting of the offensive posts might be removed – once they have served their purpose and the truly offensive posts are dealt with in some objective manner, but that is not what happens.

        Hey – don’t get me wrong. The blog belongs to Prof. Crouch and he has full control over what he decides to remove (and tellingly, what stays). Thus my “C’est La Vie” line. But that power does not come without strings – when one uses editorial control that cannot sustain a view of content-neutral shaping of the content of the forum, can one really expect that certain protections remain inviolate? That the perceptions of favoritism do not impugn the very integrity of the forum?

        Ethics is a wonderfully nuanced area – especially the ethics concerning law and those within its penumbra.

        We have started some interesting discussions on the ethics of those involved in law at multiple levels of involvement. In particular, those involved at both a practice and academic level. Personally, I do NOT believe in the adage of “those who cannot do, teach.” I do believe that more – not less – ethical responsibility falls to those that not only teach, but teach and advocate for legal change. In this regard, law professors are like neither normal professors nor normal lawyers. In this regard, to me a higher standard should be expected. Such a particular profession with particular power to shape the legal landscape should be placed on a higher pedestal, with higher esteem, but is sadly, by and large with only a small handful of exceptions, brought low, at least in my humble opinion.


          I don’t know anon. The way I look at it is that Dennis used not to delete my posts. Now he does regularly and it appears to me that mine are often less offensive than MM’s and 6’s that are not deleted. I have noticed that my posts that may incite MM are often deleted. I see this as DC’s prerogative. I assume the playing field is not flat. My sense is that DC is very much in the camp of the anti-patent crowd for information processing.

          So, at the end of the day, I just recognize that many good posts are deleted and it just makes it so I don’t feel much loyalty to the blog. I do wonder about some bloggers that claim that perfectly clean posts are deleted for policy reasons. The fellow that keep posting on analyzing claims as a whole comes to mind. After years on this blog, I am more and more suspicious that many of the bloggers are paid bloggers and that DC may be MM.


            I doubt that Prof. Crouch is Malcolm Mooney.

            That being said, there is an unmistakable perception that a relationship exists of some sort and that special latitude has been granted.

            I noted that in the pre-Disqus software days, there was exactly one person who could post a hyperlink to a post within a thread – normally something that requires access to the actual website workings that any normal person would not have.


              If MM is not DC, then he is likely someone from his former law firm that still supports this website.

              You know anon, in this whole 101 battle, the thing to stick to is that the positions advocated by you are objective measures where the law can be applied. The positions advocated by the anti-patent crowd are subjective and are not applications of the law, but of a judicial exception. Tarantula is a terrible judge. I’ve read two of his opinions and found two very obvious mischaracterizations on his part.


          As to your ethical questions, I have come to the conclusion that we have reached a post-ethical world. It appears to me that people want to hire people that will do what they want them to do and not ethical people. People simply must know how to stay out of trouble for their behavior and adopt whatever policies their master wants.

          The fall of Rome…



            Today I had posted several famous quotes from the despised Joseph Goebbels.

            The quotes themselves were directly on point in describing the behavior of Malcolm Mooney.

            They were not anti-semitic, nor offensive in any objective way (obtained from well respected historical blog sites) and merely captured the twisted ethics of one of the 20th century’s second tier leaders, but an avowed manipulator of public perception.

            They captured perfectly the sense of propaganda that Malcolm habitually engages in.

            Sadly, while Malcolm’s behavior remains unchecked, my posts were censored and removed.

            One can only conclude that Prof. Crouch condones the propaganda machinations, as such selective editing is surely content specific and geared to advance a certain belief system. I can see no other reason for such selective treatment.


              Sounds consistent with the type of posts of mine that get deleted. I notice that posts that attack MM are often deleted. Sometimes I think Prof. Crouch does it just because MM throws such a tantrum and spews forth 10’s of posts when he is characterized.

              What astonishes me (and maybe Goebbels was astonished too) is that the average person doesn’t seem to notice what MM does. And, some embrace his attacks on me. Really odd.

              But, come one, let’s face it. The US has turned into these nasty fights with no ethics. Even this blog which pretends to be interested in ethics takes no real actions. The reality is that little of what is published in law journals is scholarship.


              I do not think that Goebbels would be astonished by what Malcolm attempts to do.

              Rather, he would likely be disappointed.

              Malcolm does attempt to follow the propaganda style, but he does so poorly because he is simply outclassed on the knowledge of the law and facts of the art field. He bumbles and stumbles over basic first principles and his 1ies are too easily exposed. He relies far too heavily on ad hominem and far too obvious duplicity. It is just too easy to refute what he posts. He is undisciplined and let’s his self-loathing color his content too much. Malcolm attempts to make up in quantity what he lacks in quality. All that that achieves is just more quantity of Malcolm looking bad.


              I will share another post with you NWPA, a reply to a post by Malcolm (supported by the equally vile 6) that is so vile that I would not post that offending message itself in respect to Prof. Hricik.

              My reply:

              Much as Malcolm jumped to 6’s defense when 6 was busted with an inappropriate use of the “N” word, here, 6 jumps to Malcolm’s defense at a truly offensive post.

              Malcolm, my older brother, who died of AIDS, was gay and was more a man than you will ever be.

              I would label you slime of the lowest order, but that would be an insult to slime of the lowest order.

              You – of all people – would smear me with an anti-gay innuendo through the visibility of Disqus when under that system I requested that my level be at the lowest security level and that all of my posts be easily obtainable, while you purposefully chose the highest security level so that your posts were explicitly not so available. When I (repeatedly) asked you why you choose such secrecy (while hypocritically demanding more data of others), you refused to answer the question with a direct and honest answer.

              Your lack of class here with the libel of me rivals, if not exceeds, the disgusting behavior of yours when you joined in on the making fun of Eric Guttag when his father passed away.

              Not only a new low for you – but by association, a new low for this blog and for the blog moderator. ‘Congratulations’ as I did not believe that the bar could be lowered further.

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