PTO vs the Courts

Automated Merchandising v. Michelle Lee raises yet another separation of powers issue between the courts and the patent office.  Originally AMS sued Crane for infringing its U.S. Patent Nos. 6,384,402, 6,794,634, 7,191,915, and 7,343,220.  In response, Crane filed (pre-AIA) inter partes reexamination requests against the patents.  Then the lawsuit settled and the court issued a consent decree (final judgment) dismissing the case with prejudice and stating that the parties stipulate that the patent claims are valid.  AMS took that decree to the USPTO who refused to terminate the reexamination because the final judgment was not a “decision” on the merits of validity.  In response, AMS filed suit in the Eastern District of Virginia alleging violations of the Administrative Procedures Act (APA).  Section 704 of the APA provides for review of agency actions:

Agency action made reviewable by statute and final agency action for which there is no other adequate remedy in a court are subject to judicial review.

However, the statute is clear that a non-final agency action is not reviewable.

According to the court’s judgment here the PTO’s refusal-to-terminate was an interlocutory order.  Even though the PTO originally identified it as “final,” that designation alone is insufficient to meet the final action requirement of the statute.  On remand, the inter partes review will continue and, if the patentee loses on the merits, may then have a chance to appeal the refusal-to-terminate.

This case adds further weight to the argument that we need a more comprehensive approach to the various pathways for enforcing and challenging patent rights.

= = = = =

In B&B, the Supreme Court held that decisions by the PTO can have preclusive effect when the same issue is raised in a parallel litigation. In dicta, the court also indicated that preclusion also operates in the opposite direction — federal court decisions also have preclusive impact on PTO decision making.  B&B is focused on the doctrine of issue preclusion that is also known as collateral estoppel.

Because issue preclusion requires that the issue be actually litigated, it does not apply to the AMS. However, the parallel doctrine of claim preclusion (res judicata) may indeed apply – that doctrine typically applies when a second dispute involves a a prior final judgment of a claim sharing a “common nucleus of operative fact” and (roughly) identical parties.

A complicating factor here is that – as to inter partes reexaminations – the Patent Act had a particular statute that could be seen as redefining the scope of issue and claim preclusion for patent cases.

Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit . . . , then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action . . . , and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office . . . .

35 U.S.C. 317(b).  The major question for this statute is whether it reflects an alteration of traditional rules of preclusion or instead offer an additional layer of preclusion when the traditional rules do not apply.


103 thoughts on “PTO vs the Courts

  1. 12

    Mobile Scanning Technologies LLC v. Motorola Solutions

    (CAFC; April 13 2015)

    Another junk patent deservedly bites the dust, obliterated in an inter partes re-examination.

    This was a Rule 36 judgment affirming the tanking of the junk patents, originally asserted against Motorola in East Texas where the patentee was represented by former federal judge T. John Ward.

    There’s a decent summary of the “merits” of the patent here: link to

    The best part is the summary of the arguments that were made by the patentee to keep their precious patent in court and out of the hands of the patent office:

    Turning first to the specification, the Board declined Patent Owner’s efforts to read a synchronization feature or a personal information manager into the definition of “PDA”, finding that the terms were not mentioned in the patent and Patent Owner pointed to no evidence in the prosecution history or other documentary evidence to limit the “PDA” claim term. Without citing evidence, Patent Owner stated that those skilled in the art would recognize that a “microcontroller” is a highly integrated system-on-a-chip and that the term “microcontroller” is not used interchangeably with the term “microprocessor” in the ‘880 patent. [<—ROTFLMAO!] However, the specification used both terms and the Board held that there was no distinction between them for the purposes of the claims of the ‘880 patent…

    In finding a likelihood of anticipation of claim 18 by one of the references, the Board relied on the Petitioner’s expert declaration as evidence that the components were necessary for a scanner to operate and were inherent in the reference’s disclosure of a bar code processor connected to a microprocessor.

    This inherency issue applies to the vast majority of junky computer-implemented information-processing methods and “devices (really just methods dressed up in article clothing) that the PTO has granted over the years. As for this…

    Patent Owner sought to dissuade the IPR trial by arguing that Petitioner’s sales of mobility products proved non-obviousness

    …the fact that this “we sold a bunch of stuff so the patent is non-obvious!” argument still has any legs is a key reason why the broken US patent system remains broken. It’s pure nonsense. Thankfully, nobody bought it this time.

    1. 12.1

      Keep it coming, MM! Nothing like a good old fashioned meltdown. Don’t forget EFF’s victory over Personal Audio’s (the podcasting co’s) patent as well at the PTAB.

      1. 12.1.1

        Thank you, Gary. I missed that welcome bit of news. Nobody could have predicted that Personal Audio’s patent was a pile of garbage. It’s just too bad that people less intelligent and insightful than the folks at EFF ended up giving this parasite Logan any money at all.

        link to

        The EFF relied on two key examples of earlier technology to beat the patent: one was CNN’s “Internet Newsroom,” which patent office judges found fulfilled the key claims of having “(1) episodes; (2) an updated compilation file; and (3) a ‘predetermined URL’ for the compilation file.”

        Personal Audio lawyers tried to save themselves from that one by arguing that the stories on CNN are “not different episodes,” because “the [CNN] news segments are neither a series nor are they a program.”

        Try to believe it. And therein lies the problem with soooooooo much of this information processing junk: reliance on abstract, non-technical “limitations” like the sooper dooper techno differences between “episodic content” and “segmental content”. I wouldn’t be suprised if there’s some equally worthless limitations elsewhere in Logan’s claims about “copyrighted content” or “comedy content”.

        It’s long past time to expunge the system of this functional, abstract nonsense so we can start fixing it in earnest.


          CBS lost at trial? How?

          Thank you Judge Rich for your contributions to the patent system. You did a great job there. Great job.

          State Street Bank shall live in infamy. But it traces all the way back to In re Benson that was overruled, but which Rich did not consider to be overruled.

    2. 12.2

      The tide may have stopped rising, but it has not receded. Yesterday, in East Texas, another dozen+ major banks were hit. Who do you think pays for this? Like shoplifting and insurance fraud and every other kind of environmental loss, bad patents faithlessly granted and maliciously litigated just cost everyone else money in the end.

      I know, I know anon, this is just one random data point that proves nothing. Even though every day of the week I get a list of cases just like it….

      Behold the innovation!

      US 8,132,720

      1. A financial management system configured to transmit a set of transaction data, the financial management system comprising: a personal financial management application configured to store personal financial management application transaction data including purchase amount data, purchase date data, payee data, and card identification data, and a financial assistant comprising;

      a set of graphical user interface generation executable code configured to generate a graphical user interface at the conclusion of the online transaction, the graphical user interface comprising;

      a purchase amount field, a purchase date field, a payee field, a category field configured to accept user input, and an accept button, a set of graphical user interface population executable code that populates the purchase amount field, the purchase date field, the payee field, and the card identification field based on the received transaction data, and a set of personal financial management application transmission executable code that transmits the personal financial management application transaction data from the fields of the graphical user interface to the personal financial management application when the accept button is activated

      1. 12.2.2

        I know, I know anon, this is just one random data point that proves nothing. Even though every day of the week I get a list of cases just like it….

        Maybe you should look into avoiding the minutia Brier-rabbit thicket and making legal arguments…

  2. 11

    In re 55 Brake LL (CAFC; April 13, 2015)

    Another junk patent owned by a “patent licensing entity” bites the dust in inter partes exam. Good riddance.

    Claim 7 is representative of the invention and includes (1) a plurality of sensors for sensing driving conditions; (2) a management mechanism for applying the
    vehicle’s brakes; and (3) a controller connected to the sensors and the management mechanism that actuates the management mechanism when the sensors sense unsafe driving conditions and when the vehicle is not moving above a predetermined speed.

    This piece of junk (characterized as “the lifeblood” of this litigious company when it was accused of inequitable conduct before the PTO) was tanked as obvious or anticipated during an inter partes re-examination after the troll sued a bunch of . Yes, folks, it’s an automatic brake system that uses (wait for it) “sensors”! Nobody could have predicted that gathering information useful for determining when to put brakes on would be useful in an automatic braking system. What next? Maybe use a drone or a satellite or information gathered by a nearby vehicle or some database of traffic/weather information. Ah, so much “innovation”, so little time …

    This part of the system appears to actually work quite well at getting rid of the worst patents. Therefore, it must be ended because otherwise the wealthy, entitled owners of junk patents will be so very sad and we just can’t have that. After all, without all the money from these junky patents stuffing he wallets of these entitled “monetizers,” all the rest of us will end up like the Amish. How do we know that? Because the monetizers told us so! And they’re very serious people.

    1. 11.2

      May I ask, MM, why this could glorious patent could not have been removed by a court of law on summary judgment?

  3. 9

    More absurdity from the theatre of same:

    link to

    Eric Gould Bear, a prolific inventor and expert witness in software and hardware user interfaces, suggests considering the use of the term “statutory” in claims themselves. He explains, “I’ve often thought that there should be a way to build in flexibility. Just think of all the headaches we could have saved around non-transitory signals by claiming ‘statutory computer readable media.’”

    Yes, Eric Gould Bear is a very serious person. He even has three names!

    Never mind that this absurd “catch-all” claiming trick was floated here many, many years ago by yours truly — as a joke, of course — in response to the Dierhbots. Because the Diehrbots were soooooo sure that “claim dissection” was absolutely prohibited (because they said so!), the proposal was made to them: simply build validity and eligibility into the claim by expressly reciting that the claimed invention was non-obvious, enabled, and eliible! Voila! According to the beliefs of the Diehrbots, those “limitations” can’t be “ignored.”

    By the way, here’s the “expert” evaluation of Gould’s proposal: Whether such a practice would satisfy courts that sometimes seem all too willing to invalidate patent claims is unclear.

    Unclear? That’s funny. Of course Bear’s proposal is worthless and dead-on-arrival. There’s nothing “unclear” about that.

    1. 9.1

      That’s great.

      But what the H are you doing responding here to a conversation there?

      The absurdity is your abject obsession and inappropriate style of responses.

      Go there and engage Mr. Bear directly.

      1. 9.1.1

        engage Mr. Bear directly

        If Mr. Bear wants to share more of his super awesome patent prosecution tips, he’s welcome to comment here.

        Thanks for your concern.


              I tend to doubt that very much – Ge ne has never “outed” anyone. He has not even offered a “battle of transperancies.”

              He has, on the other hand, banned those who pervert the law or who pervert facts or who pervert what others post.

              Hmm, those are the very staples of Malcolm’s tactics here, and the very items of blight that have been allowed to run rampant, nine years and running, long before I started posting here.

              Go figure.


                He has, on the other hand, banned those who pervert the law or who pervert facts or who pervert what others post.

                If Eric Gould Bear isn’t perverting the law with his “statutory” limitation, then nobody is.

                You might be ignorant enough to lap up Gene’s b.s., “anon”, but the rest of us aren’t. Eric Gould Bear is a bottom-feeder who excels at the lowest form of innovation. And that’s why you love him.



                OT: but, I just wanted to say, I saw a recent post of yours on the other blog re: human population and it made me think. Even though we disagree re: 101, I bet we agree on a lot more than we disagree. I found your post very thoughtful.


            You kind of miss the point

            I think you’re missing the point. The only reason I even know about this “Eric Gold Bear” character is because of an online ad that was shoved into my face — presumably with his consent. The ad trumpeted his awesome patent knowledge. Evidently he’s some sort of expert on (trying not to laugh here) the “user interface” arts.

            Suffice to say, based on the absurd “strategery” I highlighted above, I don’t think “Eric Gold Bear” knows a decent patent from a hole in the ground. Of course, if I wanted to dig a bit further, I could simply find one of the “hundreds” of “innovations” that Bear has patented and take a look at the claims. What do you think I’d find?


                1. A method for controlling audio devices in a computer system, comprising the steps of:

                receiving an event comprising receiving an incoming telephone call;

                communicating the event to a configurable audio controller;

                determining a change in a setting of a plurality of audio devices from the event; and

                changing the setting of a plurality of audio devices as a result of the determination, including muting an audio output device before establishing the incoming telephone call on an active receiver.

                Quintessential junk of the sort that “anon” and his cohorts adore.

                1. Ever with the dissembling C R P, eh Malcolm?

                  It is known that I do not play your Brier Rabbit jump into the minutia games.

                  Perhaps instead, you can try to elevate your game and actually engage in a dialogue on the merits of law itself?

                  LOL – I will NOT be holding my breath waiting for you to give up your shallow tricks.

                2. try to elevate your game

                  I’m not playing a “game”.

                  It’s guys like you and your buddy “Bear” who are playing games.

                  I’m shining a spotlight on those games. And you don’t like it. And we all know why.


                  Get ready for more reform.

                3. The saddest part Malcolm is that we are both aware that you are in fact playing games, being as it is that you refuse to engage in an intellectually honest manner because your desired ends are just not supported in law and fact.

                  You would be far better off in your desire to accuse anyone of any level of any improper actions if you were to (indeed) elevate your game (and you should check out the urban dictionary for that term’s meaning).

                  As it is, you insist on having your own hands unclean.

  4. 8

    The big picture, from the pen of Judge Mayer in Markman,

    “But today’s action is of a piece with a broader bid afoot to essentially banish juries from patent cases altogether. If it succeeds juries will be relegated, in those few cases where they have any presence at all, to rubber stamps, their verdicts preordained by “legal” and “equitable” determinations that brook only one “reasonable” result. Indeed, this movement would vest authority over patent disputes in legislative courts, unconstrained by Article III and the Seventh Amendment. See In re Lockwood, 50 F.3d 966, 970 (Fed.Cir.1995) (opinion dissenting from order denying rehearing in banc) (“A constitutional jury right to determine validity of a patent does not attach to this public grant. Congress could place the issue of validity entirely in the hands of an Article I trial court with particular expertise if it chose to do so.”). Declaiming that the jury is a “black box” incapable of a “reasoned decision”, several judges of the court have already advised that they are aboard this campaign. Id., at 990. The quest to free patent litigation from the “unpredictability” of jury verdicts, and generalist judges, results from insular dogmatism inspired by unwarrantable elitism; it is unconstitutional.”

    1. 8.1

      It is ironic then Ned’s own obsession with the Power of the Royal Nine, as that is every bit as “declaiming the jury” as well as declaiming that branch of government allocated authority to write patent law.

      A lawyer’s fealty is to the Constitution Ned, and NOT to the singular highest body of the Judicial Branch.

      One must be willing to be able to see the flaws in that Judicial body.

      One must be able to tell the emperor that he is flapping in the breeze.

      1. 8.1.1

        Anon, gotta love this, “insular dogmatism inspired by unwarrantable elitism,” because it is so true.

        We have long remarked here on the insular nature of the Federal Circuit and its bar, particularly because of its close, hand-in-glove, relationship to the PTO. The decisions coming out of the Federal Circuit are almost incomprehensible at times because they depart so far from controlling Supreme Court authority in spirit, if not in letter. It is a wonder that the Supreme Court does not take a more active control in supervising this court.

        Congress really needs to take a closer look at the wisdom of an insular court.


          As you yourself have openly admitted, you have a bias for ONLY seeing in the CAFC what runs rampant at the Supreme Court level.

          The truly insular court – and the one doing the real damage – is not the one you are so eager to blame.

          Wake up son.

    2. 8.2

      Hey Ned, you recent posts on justice were brought to mind when I was watching some Game of Thrones lately and thought about looking up what the old school trial by combat was about.

      link to

      Seems like the best kind of justice. I think we should bring this back in the US for patent cases. Thoughts?


          I’m tots down. I feel like this new paradigm could potentially save millions in legal fees. Especially as the gamer generation grows into wealth.

      1. 8.2.2

        Amusing 6, in your typical court jester way.

        The best kind of Justice? Because in the best Germanic tradition, those most capable of violence are to be considered the most just?

        So enlightened.

        /off sardonic bemusement


          “Because in the best Germanic tradition, those most capable of violence are to be considered the most just?”

          Capacity for violence need not be the sole means of combat. As ned points out, we can just use gaming or other means. Though I support capacity for violence as well (especially if it saves millions and if the combatants are more or less equally physically positioned in martial terms). Or, if they wanted, people could toss in named champions to fight on their behalf.

          Look on the bright side, it would be yet another impetus for people to be physically fit!

  5. 7

    After reading the WaPo piece touting PTO and the wonders of inter parties re-examination, it struck me as amazing what PTO (and the politically connected class) has pulled off. One would not ordinarly think of the PTO gnomes as being a Machiavellian lot but consider what they have accomplished. (1) Doing a poor job in initial examination and QC. And somehow deflecting all accountability as to performance of this original core function. And then (2) demanding new jurisdiction (and massive agency staff expansion), even over the top of already never ending jurisdiction granted in ex parte reexamination (because apparently PTO can’t do that right either). And this is the ‘fix’ that allows (1) to be the permanent state. (3) Forcing first-to-file on everyone (actually a mutilated form of first-to-file) – because interference practice was ‘broken.’ (PTO can’t get that done right either, too complicated takes too long). (4) De facto jurisdiction over injunctions (inter parties and ex parte ‘substantial new question’ threshold is effectively a collateral attack on a Court. And furthermore the ‘SNQ’ has the uncanny timing as to often be just in time for briefing at the injunction or stay hearing. (5) No comity, full faith or credit, or administrative estopple, or res judicata, not even deference to facts that have been fully and finally litigated in court or the law-of-the-case or claim constructions. And (6) organizing the PTO administrative ‘court’ as a hostile star chamber where the PTO director and two appointees can sit in judgment (dispatch disfavored parties and preserve favorable parties – with this codified favor factory) only (7) ‘accountable’ under an extremely dubious standard of review – and then only on the record created by PTO and only to a court of appeals – not an original court of record (district court) and (8) claiming ‘executive privilege’ over internal and even ex parte communications, and (9) taking as ‘evidence’ declarations of outside ‘experts’ and its own technical expertise and affording no cross examination and no jury as a matter of right. In sum, a breathtaking triumph of the Administrative (and crony) state. These extreme measures, of course, must happen – because of all the ‘junk patents’ see (1) on the books. And, finally CAFC enjoys issuing prohibited advisory opinions (every case it decides now) – because they don’t have an issue with PTO collateral attacks because after all CAFC, for now, gets to review PTO – and CAFC can just decree the ‘right’ result. Coming soon to a future near you – all the other federal agencies making ‘me too’ arguments because PTO was able to do it.

    1. 7.1

      Yes, iwathere. You got it. But I’m not so sure that the PTO is part of this conspiracy. I know where it comes from.

      Check Judge Mayers review and post number eight above.

      By the politically connected class, with lots of money to lobby Congress, is THE problem. Whatever they want, they seem to get. And they have been favoring for a long time reexaminations, first to file, and the elimination of juries from patent cases. In fact, the ultimate goal is to remove validity entirely from the courts and impose the German system on us. Harmonization? Has anybody heard that word before? One would think that we are doing the bidding of Germany.

      1. 7.1.1

        Yes, i forgot that Markman quote. Let’s leave it at this : PTO might not be part of a formal conspiracy, but it is sure more than an unwitting dupe. There is no question, PTO is telling congress these agency actions are fine, and proposed legislation is within the agency competence. It not like PTO told congress that the AIA was a bad idea, and it should get its act together on its original mission. To me, it all falls under ‘public choice’ theory. It would be an odd ball agency indeed, for it to tell congress that it does not want to expand its staff, budgets, and jurisdiction. It’s just not in the nature of an adminitrative department. PTO could, if it wished, implement in re perne (apply administrative estopple like every other Art I court when dealing with Art III powers) in its next order.

        Having re-read what I wrote, it occurred to me that the necessity of (2) inter parte and ex parte reexamination to ‘fix’ the ‘broken patent system’ – which creates a massive expansion of agency staff, budgets and power, has (under public choice theory) created a perverse incentive to keep (1) original examination – broken!

      2. 7.1.2

        Contrast the statement here by Ned (“But I’m not so sure that the PTO is part of this conspiracy. I know where it comes from.“) with his recent brief on his live case accusing that very same office of the malfeasance of mischaracterizing both case law and his case in order to come to the conclusion that patents are either public rights or are private rights infected to such a degree as to merit public rights treatment.

      3. 7.1.3

        Ned the word you are looking for is “Gleichschaltung”, which means (roughly) nonconsensual coordination.

        I agree that the incentives are highly misaligned between the public and the patent office right now. When 100% of your revenue is received from your ‘customers’ by giving them a patent and then maintaining it, then more patents all the time is desirable regardless of the intrinsic situation, micro or macro. A useful reform may be that the patent office would refund all fees and costs paid to the patentee when an issued patent is later invalidated either by the courts or the office. As of now, there is no penalty to the office for any amount of misfeasance.

        Of course, doing away with software patents would also solve 90% of the problems in the patent system- a proposition so obvious that MM needs to repeat it every thread because its so firmly resisted in so many ways….


            mailing it in here anon? this is directly on-point to Ned’s comment @ 7.1, exactly not my choice of words.

            my legal view is the USPTO has no skin in the game, so it plays the game recklessly. hardly a radical concept…..


              mailing it in“…?

              To the contrary, good sir, it is you that appears to be “mailing it in.”

              Did you even bother visiting the link and seeing why I post that your choice of word is excessively poor? Do you even get that it is your “side” engaged in the tactics that your own choice of word exemplifies?

              Please good sir – do not be such a dullard.


          Not more patents – more applications and rejections (i.e., RCE fees). That’s the driver of increasing revenue.

  6. 6

    What authority does a Court of Appeals have to decide an issue not jurisdictional in nature that was not even raised below?

    The Federal Circuit cited no authority.

    Rather, the Federal Circuit cited authority on a different issue entirely: whether an issue raised below was “preserved” for appeal.

    I presume, but I do not know, that what the Federal Circuit did here was unprecedented in U. S. jurisprudence.

    As a matter of statutory and constitutional law, do courts of appeal have the power and the right to do this?

    1. 6.1

      It is the general rule, of course, that a federal appellate court does not consider an issue not passed upon below. In Hormel v. Helvering, 312 U. S. 552, 556 (1941), the Court explained that this is “essential in order that parties may have the opportunity to offer all the evidence they believe relevant to the issues . . . [and] in order that litigants may not be surprised on appeal by final decision there of issues upon which they have had no opportunity to introduce evidence.”

      “Certainly there are circumstances in which a federal appellate court is justified in resolving an issue not passed on below, as where the proper resolution is beyond any doubt, see Turner v. City of Memphis, 369 U. S. 350 (1962), or where “injustice might otherwise result.” Hormel v. Helvering, 312 U. S., at 557.[8] Suffice it to say that this is not such a case. The issue resolved by the Court of Appeals has never been passed upon in any decision of this Court. This being so, injustice was more likely to be caused than avoided by deciding the issue without petitioner’s having had an opportunity to be heard.

      Singleton v. Wulff, 428 US 106, 120 (1976)

      Just a historical note, in a case I was involved in personally, the Federal Circuit reversed a lower court judgment that we had spent over five years litigating and millions and millions of dollars of attorneys fees on an issue that was litigated and decided in the first year of the case and which was not appealed. Not only this, but neither party raised the issue on appeal, nor briefed it. The issue was raised sua sponte, and decided adversely to us.

      Moreover, the issue is not simply one of law, because it was based upon testimony and findings of fact. Essentially, the Federal Circuit substituted its own opinions for findings of fact, found new facts for the first time on appeal, and decide the case adversely to us without the opportunity to be heard.



            Would you be willing to share the case, Ned?

            As I have often found, your “presentation” sometimes is profoundly flawed, and I just don’t take your conclusory word for too much coin.

            Note that I am not saying that you are incorrect in this instance, but I am saying that I do not – I cannot – take your mere word at face value.


              An, sir anon, just how would you know from the Federal Circuit opinion the case history?


                Are you saying that the tools available to ANY lawyer are not adequate, given the case name, to understand the law?

                My, what hubris you reveal, to think that only your personal experience can reveal the legal truth.

                A hubris that is unwarranted, given how wrong you have been in legal discussions here (and how often you choose to disappear when those discussions turn against your desired ends).

                If you are afraid of sharing the case because your characterization can be shown to be in error, I would recommend that you instead simply recant your characterization. That would be the nobler thing to do instead of casting dispersions that you are unwilling to provide support for.

                1. Anon, just let me say that your opinions about whether I am wrong on legal issues and the holding of cases is part of your psychosis.

                2. Your ad hominem attack says more about you than you realize.

                  Share the case Ned – or are you too afraid?

  7. 5

    The AIA repealed the version of 317(b) at issue in Automated Merchandising and now mandates termination of inter partes review proceedings if a joint request is filed before the PTO decides the merits. 35 U.S.C. 317(a) (2011).

    PTO refusal to terminate under either current 317(a) or old 317(b) should be ground for mandamus rather than 704 review. In Automated Merchandising, the CAFC explicitly stated that its ruling was not based on old 317(b) and was limited to 704. In any event, old 317(b) appears to have codified “traditional” claim preclusion to petitioners and their privies in inter partes reexamination proceedings.

    1. 5.1

      PTO refusal to terminate under either current 317(a) or old 317(b) should be ground for mandamus rather than 704 review.

      How can it be mandamus when 317(a) on its face makes the termination of the proceeding optional when no petitioners remain?

    2. 5.2


      You should re-read the statute you cite. Termination is only mandatory with respect To the petitioner. For the entire proceeding, the PTO may terminate, or may proceed with no petitioner. Look at the last sentence of the provision.

      There was a big change here between the old IPXs and the new IPRs.

  8. 4

    Strange decision given the fact that the PTO has terminated tons of IPX cases based on consent judgments (albeit, with the magic language of the statute explicitly stated). Patentee should have cited to those terminations.

    1. 4.1

      Joe, stranger still fact that the government was able to raise an issue not jurisdictional in nature on appeal for the first time and win the case.

      Does anybody really care about due process?

  9. 3

    Ned: The parties settle, but the PTO will not settle. What is this going to do? It is going to force the parties to continue the district court litigation until the patent owner wins a validity judgment on the merits.

    Nobody is forcing the patentee to keep pressing forward with a lawsuit based on a patent that should never have issued. That’s the patentee’s choice.

    Have you looked at the patents in this case? The public has a great interest in expunging the junk from the system. The PTO is perfectly suited for this task. There is no good reason that other unnamed competitors or would-be competitors should have their rights adversely affected by “stipulations” between the two named parties who were in the suit and who, for whatever reason, have chosen to put down their gloves.

    What if the inter partes re-exam is 90% finished and clearly all that remains is for the PTO to issue its final office action? The parties can agree to pull the plug and walk away at that moment? Doesn’t seem right.

    1. 3.1

      The public has a great interest in expunging the junk from the system.

      Because patents are public rights. Or something.

      And that “great interest” is more than enough for Article I courts to take private property (see 35 USC 261).

      But don’t take my word for it. Take the word of Congress or even Prof. Mossof. See link to

      1. 3.1.1

        anon, thanks for that link to

        This is just one more example of the Federal Circuit ignoring the Supreme Court.

        And where have I seen this before?

        “It is well-established that a patent is constitutionally protected
        property and “is as much entitled to protection as any other property.”
        Cammeyer v. Newton, 94 U.S. (4 Otto) 225, 234-35 (1876); see also
        James v. Campbell, 104 U.S. 356, 357-58 (1881); Crozier v. Fried, Krupp
        Aktiengesellschaft, 224 U.S. 290, 306 (1912).”

        From Cammeyer we find this:

        “Private property, the Constitution provides, shall not be taken for public use without just compensation; and it is clear that that provision is as applicable to the government as to individuals, except in cases of extreme necessity in time of war and of immediate and impending public danger.”

        From Campbell we have this:

        “That the government of the United States when it grants letters-patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser, we have no doubt.”

        From Crozier,

        “…the well established and indeed elementary requirements in favor of property rights essential to be afforded in order to justify the taking by government of private property for public use.”


          Mossoff, Adam, Patents as Constitutional Private Property: The Historical Protection of Patents Under the Takings Clause. Boston University Law Review, Vol. 87, p. 689, 2007; Michigan State University Legal Studies Research Paper No. 04-02 . Available at SSRN: link to


          Those cases are discussing valid patents, not junk patents.

          There really is a difference. The fact that the PTO and applicants are habitually blind to the difference is irrelevant.

          You should know this better than anybody, Ned. Not five years ago most of the patent bar and pretty much the entirety of the PTO was willfully blind to applicant’s attempts to protect ineligible subject matter by appending that ineligible subject matter to descriptions of old technology.

          We have a broken system. This is is how it gets fixed. There’s another much easier way to fix it, of course, but the software patent lovers aren’t going to go for that.

          Rich entitled people always want their cake and they want to eat it, too. After all, it’s their “right.” But they’re very serious people. Deep thinkers. Always neck deep in “the Constitution” which was, after all, written with their interests above everyone else’s. Right?

      2. 3.1.2

        “The public has a great interest in expunging the junk from the system.”

        Because patents are public rights. Or something.

        No, the public interest is paramount because the rights of every member of the public is affected every time a junk patent is granted. Junk patents include both obvious patents and patents that protect ineligible subject matter. In short, a junk patent takes what belongs out of the public domain and puts it into private hands where it does not belong.

        Of course, greedy entitled people like you could care less. But we knew that already.

        Keep digging your hole, “anon.” Maybe someday it’ll be big enough for you and Gene to fit inside comfortably. Then we’ll bury you. Unlike your hero Judge Rich, however, I don’t think people will spend much time discussing your “legacy.”

        But do keep it up. If nothing else, the laughs are worth it.

    2. 3.2

      MM, the law is for all patents, good and bad.

      The defendant wants to quit. The patent owner cannot get out of the PTO if he settles, even with a consent judgment with prejudice. The Patent owner must press on, forcing the defendant to litigate against his will, until the court renders a decision on the merits. Then what?

      Then does the PTO argue hat the defendant didn’t put up enough of a fight so that it can ignore the court judgment?

      This, MM, is a farce.

      1. 3.2.1

        The defendant wants to quit. The patent owner cannot get out of the PTO if he settles, even with a consent judgment with prejudice. The Patent owner must press on, forcing the defendant to litigate against his will

        Or, if the patent looks ready to be invalidated, the PTO can just take over where the inter partes exam left off.


      2. 3.2.2

        I’m not too familiar with the IPR procedure, but the defendant has already done all he has to do, right? He submits art and argument at the beginning and has no further play in the process right, the PTO just runs with what has been given to them?

        I agree it’s rather pointless to have a decision that may be appealed and to which defendant will not contest. Can the PTO intervene to defend its own judgment? Could we have a situation where the appeal would be patentee v. PTO? If so, I see no issue at all, because the precedent must have established that the PTO has its own standing to make sure it performs its duty properly. If not, I don’t have a particular problem with the holding only because it will most assuredly be fixed by the settlement agreement.

        The problem with this case is not the rights of the patentee, he was always subject to IPR. The problem is with compulsion of a defendant to not continue an action he doesn’t want.

        And, have you considered the constitution the multiple Supreme Court cases that hold that only a court can revoke a patent?

        Again, not something I know as I commonly don’t deal with this part of IP, but this doesn’t sound right to me. Patents are property and property is subject to procedural safeguards lest there be a taking. But like many rights, just because due process is often vindicated in article III courts, I’m not sure that it need always be so vindicated, right? Due process is not always judicial process. What case should I look at on this issue?


          RG: The problem is with compulsion of a defendant to not continue an action he doesn’t want.

          What exactly is the “defendant” being forced to do? i.e., what happens to the “defendant” if the “defendant” who brought the IPR chooses to do nothing?

          If the answer is “nothing happens” then I don’t see any “compulsion”.


            What exactly is the “defendant” being forced to do? i.e., what happens to the “defendant” if the “defendant” who brought the IPR chooses to do nothing?

            Well if there is an appeal he may be forced to make precedent that is detrimental to him in other areas. You’re always free to avoid court by summarily agreeing with your opponent (i.e. remove the case or controversy). If the PTO could keep the controversy alive against the defendant’s wish there could be estoppel or precedent issues that arise.


          Random, it is not an issue of due process. It is a matter of the very structure of government itself. Marbury v Madison->McCormick Harvesting.

          Courts exist for a reason, and congress simply does not have the power to withdraw from the courts cases and controversies involving the validity of statutorily conferred property rights. If they had that right, they congress could totally withdraw all cases and controversies from the courts, effectively ending the courts system.

          This is of fundamental importance.


            Marbury concerned the validity of property rights. They are for the courts.

            Infringement-> for the courts.


              Courts exist for a reason, and congress simply does not have the power to withdraw from the courts cases and controversies involving the validity of statutorily conferred property rights…Marbury concerned the validity of property rights. They are for the courts.

              I definitely agree with the first comma there, because there is a disjunct between the first and second parts of that sentence. Congress absolutely has the power to withdraw from article III courts subject matter jurisdiction. That is their check on the judiciary. Generally, so long as there is due process – notice and a hearing – the only check on Congress’ withdrawal power is when there is a constitutional right to a jury. When the Constitution is not offended either under due process or the jury right, the process need not be judicial (i.e. article III) in nature.

              Marbury is rather a bad citation for you, because Marbury didn’t get to vindicate his property right in that case. Now it’s true that in that case the reason was because Congress could not constitutionally grant the jurisdiction it purported to, but the same would have occurred if Congress had withdrawn the SMJ in favor of some other tribunal. I wonder how many of the cases you’re thinking about are cases where Congress withdrew the court and gave no due process (a clear constitutional violation) versus Congress purporting to allow a different means of vindicating the right.

              But again, this is just general talk, and I assume you have a better case for me – what case says that patents have to be cancelled via article III courts as opposed other forms of due process? It wouldn’t shock me to know it exists, I just don’t know what it is.


                Marbury->McCormick Harvesting.

                Also see, Stern v. Marshall.

                It is simply not a matter of due process. Art. III grants only the courts the authority to hear cases and controversy. Congress has no power to give the Executive that authority. Congress cannot, as a constitutional matter, withdraw matters traditionally heard in the courts of England from Art. III courts.


              OK, Ned the PTAB treats findings of invalidity of issued patents as simply revoking the licensing they gave you to go to the Federal courthouse. Not that that’s proper, but that’s essentially what they’re doing. If they find validity, fine, you pass go, and can now go try to make good on rights granted by patent issue.

              “Takings” traditionally have been addressed as using the right for government purposes, and not as simply the withdrawal of your license to go to the courthouse. At least, that seems the way the PTO looks at this process using APJs to rip your patent right to shreds….


                Blindman, I agree that the Takings Clause requires just compensation when property is taken for government purposes and it really doesn’t apply to IPRs or to inter partes reexaminations.

                Regarding the “revocable franchise” that you consider patents to be, consider Marbury. We can go to other cases if you need to do that. But there the Supreme Court held that when the government issues a right for a fixed period of time, it is the property of the recipient, and only the courts may adjudicate its validity, not the executive.

                The problem is constitutional in nature. It involves the exclusive charter given to the courts under our Constitution to resolve cases and controversies. The Supreme Court has many times ruled that this extends to all cases the controversies that were heard in the courts of England, the law courts, equity and Admiralty, at the time of the Constitution. These kinds of cases cannot be withdrawn from the courts and adjudicated elsewhere.

                The validity of a patent, and whether to revoke it if invalid, is for the courts only and not for the executive as a matter of constitutional requirement because such actions were known in the courts of England prior to 1789.

                1. Forgive my ignorance on US constitutional law; but doesn’t the grant of a patent confirm in the owner only as much property as granted?

                  As the US government is not obligated to grant patents, only authorized to do so, can the grant not be subject to whatever conditions they choose, however unreasonable or arbitrary, so long as the ‘inventor’ and ‘limited time’ requirements are met? ex. patents only to be valid for 3 months, renewable sequentially for up to 20 years conditional on PTO reexamination and re approval? If this is so, can the current post grant challenges not be considered as conditions limiting the grant?

                  (I can see retro activity being a concern when introducing a system to already granted patents, and potential taking arguments there should it impact your particular patent, but for new applications going forward, your applying for a grant that you know is subject to the post grant procedure once approved yes?).

                2. I read Marshall, and it seems like the rules simply don’t apply when the court is not acting as a general court but is applying specific knowledge to specific facts, i.e. the expertise of the office appears to negate the precedent right?

                3. Random, the whole point of Marbury is that after the executive has issued a right pursuant to a statute that amounts to property, and all agree that that is what a patent in fact is, only a court may revoke that right for being invalidity granted.

                  McCormick Harvesting affirmed that only a court may revoke a patent for invalidity. No if’s, and’s, or but’s.

                  What happens before grant is a different story altogether.

                  Constitutional rights are not abrogated because congress wants to move validity litigation to the PTO. That is another lesson from Marbury — an act that violates the constitution may be declared invalid by the courts.


            And to me, it is a wonder they do not cover basic constitutional law in law schools today — especially the line of cases stemming from Marbury, and from Murray’s Lessee on the public rights doctrine. The Supreme Court has been very active in the last decades in defining public rights, including the recent cases of Stern v. Marshall and Executive Benefits.

            I wonder why schools are ignoring property rights and the right to access to the court system? Yeah, that right, Random. There is a reason they are ignoring these cases.

            I had a recent law school grad (Santa Clara) working for me, and I had to explain everything to him in small bites for him to even understand what I was talking about. And this person was a lawyer? He didn’t even understand the basics.


            Hayburn’s Case. And it is the structure of the government that protects our rights.


              Iwasthere, strictly speaking, Hayburn’s case was an un-reversed circuit court decision.

              The first case on the structure a government heard by the Supreme Court that I know of is Marbury v. Madison. There, of course, the Supreme Court held that when the executive issues a right having a term for years, that its validity must be decided by the courts and not by the executive.

              That case was followed consistently when the executive try to revoke patents that were allegedly issued by mistake. The specific case of re-examinations was considered by the Supreme Court in McCormick Harvesting, where the Supreme Court held that the PTO did not have the authority to conduct reexaminations against the will of the patent owner on the principle that only the courts had the constitutional power to decide validity and whether to revoke a patent – even for mistake. If the government believe there is a mistake in issuing a patent, it had a remedy – provided had standing – and that was to sue in court.


                Is it your view then Ned that scire facias (which admittedly no longer exists in the law as written by Congress), is not proper in and of itself?

                What if today’s Congress were to revive this action?

                1. Anon, I don’t see any problem about providing a statutory cause of action to review validity in isolation of other issues provided there is standing. In other words, a counterclaim for infringement would not be compulsory and if brought would properly be stayed pending a resolution of validity.

                2. I don’t think that that answers my question.

                  Was not the original scire facias an action separate from the stand of that you want here in your “answer?”


          Can the PTO intervene to defend its own judgment?

          Definitely. That is what happened in the recent In re Cuozzo Speed Tech. That case started out as an inter partes review, but the patent challenger dropped out before the final judgment, so when it went to appeal before the CAFC the Solicitor General took the side of the patent challenger to defend the PTO’s determination.

    3. 3.3

      MM, about the millions of bad patents issued by the PTO in the wake of State Street Bank (refused to follow Hotel Security) and In re Donaldson (overturned CCPA cases that refused to allow claims functional at the point of novelty), we have a problem, but it is short term, hopefully — that is, if the Federal Circuit begins to understand its role in this disaster.

      The problems with these patents is not prior art per se. They are invalid as being issued in violation of section 101, and section 112. The re-examination statutes are not directed to address these issues.

      I would favor Congress passing legislation that set up special court procedures to address these patents. Thus if a defendant raised 101 as a defense, or that the patent was functional at the point of novelty, that these issues would have to be resolved first, even if they required a trial by jury on disputed facts, with an interlocutory appeal available, before any other issue could be litigated.

      1. 3.3.1

        And yet again you point to the wrong entity, and it is you that fails to understand and appreciate the full scope of the Act of 1952, Ned.

        You want your version of the ends, but you are unwilling to recognize the actual state of law and the FACT that that state does NOT support your version.

        If you want a different law, at least be intellectually honest in noting that what you want IS different.


          Anon, Hotel Security was generally followed in the courts including the C.C.P.A. long prior to the ’52 Act. I see nothing in the ’52 Act that was intended to overturn that case – and indeed, its progeny, the printed matter doctrine, is still followed in the Federal Circuit.

          Congress reacted in shock when State Street Bank came down and the Supreme Court failed to take certiorari. That is why the past the prior user defense for business methods – to contain the damage.

          So jump up and down all you want about the ’52 Act. Your version of history reads like Alice in Wonderland.


            Except that you are wrong (again) Ned.

            Even Prof. Crouch has scolded you on your improper elevation of the circuit case.

            Even David had patiently ripped apart your “version” and pet theory.

            Even YOU have refused to discuss the simple Set Theory I used to explain Set B printed matter and Set C printed matter and the FACT that not all printed matter is the same, and that there are well recognized exceptions to the judicial doctrine of printed matter that accord FULLY with the law as written by Congress.

            Even Federico sides with me regarding the changes of 35 USC 112 and the use of functional terms in claim language.

            No Ned, it is your version that simply cannot square with history.

  10. 2


    What did you have in mind, Dennis?

    And, have you considered the constitution the multiple Supreme Court cases that hold that only a court can revoke a patent?

    The PTO Amok framework is going to end.

  11. 1

    If the patentee loses on the merits any further action is cold comfort.

    You cannot un-ring a bell.

    1. 1.1

      Anon, there is a pattern here that chills the bones, and this case is just one example. The parties settle, but the PTO will not settle. What is this going to do? It is going to force the parties to continue the district court litigation until the patent owner wins a validity judgment on the merits. This cannot be right. Hopefully, the Federal Circuit will wake up and finally determine that their administration of the PTO/Court relationship has failed.


          anon, the Federal Circuit flatly ignores Supreme Court cases directly on point. How is this acceptable?


            You are in the weeds again Ned.

            Here, you denigrate and show NO case for ignoring the Supreme Court “directly on point.”

            You mantra – as threadbare as it was – has worn thin. It does not seem to matter to you what the topic of the thread actually is, you attack without provocation and without establishing any argument. Where on this topic is the Supreme Court case that is being flatly ignored?


              In re Benson was overruled in Gottschalk v. Benson — yet the CCPA/Federal Circuit continued to follow the cases it relied on that were also overruled. What kind of thinking is this?

              McCormick Harvesting held that only a court can revoke a patent. Patlex ignored that holding.

              The Federal Circuit exhibits a pattern of defiance of the law.


                STILL in the weeds Ned.

                Your incorrectness surrounding the dicta of the Supreme Court and how Judge Rich saw through that and correctly tossed that which was not controlling law does NOT support your contentions here.

                Further, I asked for the particular Supreme Court case that is affected by the topic of this thread, and how the CAFC has flatly ignored the holding of that particular case.

                More ranting from you simply is NOT an appropriate answer.

                Glibly stating that your version “is” the law simply does not cut it given how off your version so often is.

                1. You are aware, iwasthere, that I have provided examples of proper wording used by Congress within 35 USC for the sharing of authority (and that the sections of 101/102/103/112 expressly LACK those proper words), right?

                  Quite in fact, I have shared the congressional record of 103 which indicates that Congress acted in 1952 to REMOVE a prior allocated authority to the courts to set the meaning of the word “invention” by common law power.

                  It is this revocation of authority that is central to understanding why the Court’s desperate grasp of power that violates the separation of powers doctrine is so very powerful here.

                  Hayburn’s case augments MY position – not Ned’s.

                  (ps, you do recognize the difference between the legislature requiring something of the judicial branch, and the legislature offering authority to another branch, right?)

    2. 1.2

      If the patentee loses on the merits any further action is cold comfort.

      You cannot un-ring a bell.

      Not sure what “bells” have to do with anything. The patentee can certainly appeal the PTO’s invalidity finding.

      1. 1.2.1

        Yea, great. Appeal the PTO invalidity finding, based on a standard of proof that is tougher against the patentee, when there was no opportunity to amend claims – when at the same time, the patentee has won a declaration of validity at the district court based on a tougher clear and convincing standard. When these trains collide, it is a massive costly wreck for the patentee.


          Blindman, somehow the big purpose for reexaminations has been lost to history. They were supposed to provide a low-cost “alternative” to litigating validity. They were not supposed to provide double jeopardy. There were not supposed to add to litigation costs. They were not supposed to provide a collateral attack on court judgments.

          But the PTO in combination with Federal Circuit has lost sight of the congressional purpose. Clearly.

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