Achates References v. Apple (Fed. Cir. 2015)
At the conclusion of its Inter Partes Review Proceeding (IPR), the Administrative Patent Trial and Appeal Board (PTAB) concluded that several claims of Achates’ patents were invalid. U.S. Patents No. 5,982,889 (claims 1-4); and No. 6,173,403 (claims 1-12 and 17-19).
Institution Not Appealable: In the appeal, the Achates argued that the review should never have been instituted – because it was time-barred under § 315(b). That provision bars institution of an IPR if “the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Achates argument was that it had already sued other Quickbook for infringement more than 1-year before Apple’s petition and alleged that the other companies were either real-parties of interest or privies of Apple based upon an indemnification agreement between the parties. The PTAB rejected that argument and also rejected Achates request for discovery from Apple on the topic. In particular, the Board held that the Quickbook would not be seen as a privy or real-party-in-interest even if Quickbook had indemnified Apple for infringement liability. Of some interest, the Board reaffirmed its not-time-barred institution decision in its final written decision.
On appeal the Federal Circuit did not rule on the PTAB’s interpretation of privy and real-party-in-interest, but instead ruled that it had no jurisdiction to review the PTAB’s institution decisions:
We thus hold that 35 U.S.C. § 314(d) prohibits this court from reviewing the Board’s determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.
In reaching its conclusion, the court relied upon Cuozzo and distinguished Versata II.
We agree with Apple and the Patent and Trademark Office that Versata II is limited to the unique circumstances of CBMR and that, following Cuozzo, the Board’s determination to initiate the IPRs in this case is not subject to review by this court under 35 U.S.C. § 314(d).
First, the § 315(b) time bar does not impact the Board’s authority to invalidate a patent claim—it only bars particular petitioners from challenging the claim. The Board may still invalidate a claim challenged in a time-barred petition via a properly-filed petition from another petitioner. . . .
In addition, the time-bar here is not like the CBM classification addressed in Versata II. Versata II found that review of the CBM determination was proper because the determination was the “defining characteristic” of the Board’s “authority to invalidate” a patent in the specialized CBMR process. . . . Whether an IPR petition is filed one year after the petitioner is served with an infringement complaint or one year and a day is not such a characteristic because compliance with the time-bar does not itself give the Board the power to invalidate a patent.
Dismissed.
For those following along, the 4th Circuit just kicked Cooper to the CAFC.
Link if there is one.
Huh, no comment by the 4th Circuit? link to therecorder.com
The 4th Circuit appears to know where this is headed.
David, but the real question is where was the authority of the Fourth Circuit the transfer the case of the Federal Circuit when the Federal Circuit itself has recently ruled in the Madstad case that it had jurisdiction of the constitutional question in that case because that case raised substantial question of patent law they had a be resolved to determine the constitutional issue.
I don’t know what substantial issue a patent law has to be resolved to determine the constitutionality of IPRs. Do you?
I don’t know whether Cooper will raise this issue with the Federal Circuit, but under its own authority, it has no jurisdiction over this appeal.
Should read, exclusive jurisdiction.
Ned – your points are good ones, and, frankly, I don’t have an answer. This move caught me off guard.
In my view, the 4th Circuit is saying that this is SCOTUS bound, and the CAFC alone will have to answer for the mess it has created. I doubt it punts three weeks out unless CERT is a foregone conclusion.
The fact that the granting order was a one line opinion tends to support the notion that this was about atmospherics, as opposed to some sort of legitimate procedural deficiency.
David, but still, what is the Federal Circuit going to do? Overrule Madstad?
Congress lacks the ability the “channel” is unconstitutional delegation of Article III power. Beyond that, talk to Cooper.
Thanks to both of you for noting this [highly predicable] appeal court transfer. Here is the headline from Ned’s hotlink:
“Fourth Circuit Won’t Hear PTAB Challenge
Scott Graham
The Recorder October 2, 2015
The constitutional challenge was transferred Friday to the Federal Circuit, where it’s unlikely to find much support.”
Read more: link to therecorder.com
Still looks like there were no challenges by Achates, as Dave Boundy has astutely suggested, based on compliance with the APA, or other administrative law/procedure principles. May not have been possible for this appeal of the institution of the IPR, but patent attorney folk still need to remember that there is more to administrative law and procedure than just what’s in the AIA when it comes to challenging IPRs, including whether the PTAB has correctly followed those procedures in view of the APA and other relevant administrative law/procedure doctrines.
THANK YOU.
This website needs to host a CLE on admin law or something.
A suggestion of like that I have made several times now…
We have some common ground then, you and I
😉
I know. We agree on a lot of stuff if you haven’t realized. I just wish you were more open to discussion.
And less prone to insulting those who have different views.
I understand you are frustrated with the ‘perceived ignorance’ of others. But perhaps others just disagree. These others include the Supreme Court.
I was in Fed Soc. in law school. I am very concerned about administrative and judicial overreach. However I think the overreach occurs at the PTO.
The PTO has largely been immune from administrative challenges and had become captured by customers who only want ‘erroneous denials’ to be reviewed.
The PTAB is just the beginning. The next step is reorganization of the PTO.
I think the problem is that many are not going to like what happens when primaries and SPEs get deference for claim interpretation at the PTAB.
“only want ‘erroneous denials’ to be reviewed.”
As opposed to the shadow programs like SAWS and the just say no Reject-Reject-Reject era….?
I am not the one who is one-sided my friend….
(you seem NOT to see the posts I make that say that Accept-Accept-Accept is as bad as Rject-Reject-Reject)
the just say no Reject-Reject-Reject era…
So much worse than the “just say yes rubber stamp rubber stamp rubber stamp” era which followed.
But “anon”can show everyone tons of great evidence about all the worthy patents that were invalidated unfairly during his mythical “reject reject reject” era. LOL! Of course he can’t.
But he sure knows how to cry like a baby, doesn’t he? Just like his mentor and hero.
^^^ pretty funny as Malcolm is easily the one that cries the most here.
More of that lovely AccuseOthersOfWhatMalcolmDoes.
Well I am not reject reject reject.
I think we have way too many patents. The PTO needs to establish some sort of “fast track to allowance program” and then have the rest of it be reject reject.
You should be required to present claims as if they were in condition for allowance. If they office agrees they allow instantly. If not they reject.
I can identify allowable subject matter right off the bat. Many of my fellow examiners don’t have that skill.
The examining core should exist of only lawyers.
Mostly because obviousness is usually what allowances come down to. And the nonlawyer part of the examining core does not understand obviousness.
I also wish it was easier to allow things.
“And the nonlawyer part of the examining core does not understand obviousness.”
And you don’t seem to realize that the major problem in the exchange is not the examiners and their work….?
Hello?!
lol – oops – my mistake with the double negative.
It is still the attorneys. Most of the claims that come in are drafted like garbage. Need to require many more claim formalities.
“I also wish it was easier to allow things.”
So hang on, we have too many patents, but you wish it was easier to allow things? Lol wut?
As in allow the stuff that should be allowed
I would agree if the lawyers had advanced degrees or five+ years of industry experience in their field. There are many lawyers who are bad at their job because they don’t understand the tech. Just like there are many bad agents/attorneys, for the same reason. Sometimes I look at others OAs and replies by attnys and it’s like watching two children arguing over something they don’t understand without realizing they don’t understand it.
“Sometimes I look at others OAs and replies by attnys and it’s like watching two children arguing over something they don’t understand without realizing they don’t understand it.”
^That definitely happens.
Ehhh enough with the credential inflation.
People could do their jobs if the system allowed it.
Clients think they are owed a patent on everything. They need to stop filing so much so everyone can have more time to spend looking at each case.
Problem is everyone is rushed.
>Ehhh enough with the credential inflation.
But you want all examiners to be lawyers? Eh.
I’d rather have people who knew the tech and wrote bad obviousness statements than people who don’t know what they don’t know, but that’s my opinion, and you may be in a different art unit where this type of experience isn’t necessary.
Realistically, and this is in semiconductor devices (which is horribly organized, FYI), you practically have to have a few years of experience to understand the nuances of a single technology (on top of this, we’re expected to cover all types of semiconductor devices). Honestly, I think a strong theoretical and hands-on background is necessary for this area, so you don’t end up with first action allowances where the IDS has 102 art but the examiner can’t put 2 and 2 together (as a result, I don’t give CONs, CIPs and DIVs to people who do a bad job on the original. Sorry, complain to POPA more).
>Problem is everyone is rushed.
No joke, but how/when is this going to change? ‘Quality initiative’ hasn’t changed anything yet.
I think asking for PHDs is unreasonable. It is patent law. I have friends who left the PTO to get PHDs because they hated patent law.
I don’t think attorneys understand how little time us examiners get to look at cases. We all can learn the tech if we had more time.
You could have 10 PHDs and it wouldn’t help.
Nothing is gonna chan
Sorry continued.
Nothing is gonna change until the patent market corrects itself and filings drop dramatically.
semiconductor devices (which is horribly organized, FYI
Thank goodness it’s not an important industry.
90% of what I see is poorly drafted and has very little allowable subject matter.
This is true across the office from what I can gather.
Stop filing please. Tell your clients they don’t need the patents. It is breaking the system.
“I think we have way too many patents. The PTO needs to establish some sort of “fast track to allowance program” and then have the rest of it be reject reject.
You should be required to present claims as if they were in condition for allowance. ”
1) what you think is or is not “too many” is entirely irrelevant.
2) your fast track allow or “reject reject reject” is a flat out contradiction to your post of “I am not reject reject reject.” If you cannot grasp why, there is no way that any one would be able to explain it to you.
3) given the factual matter that even with a truck full of prior art references supplied by an applicant, there is no humanly possible way for an applicant to guess what (on point, or more likely off-point) prior art reference will be used by an examiner, your “wish” here of “in condition for allowance” is simply not possible (let alone realistic). You have to come back to this reality.
Applicants should be required to present claims in condition for allowance. If they can’t, they should tell their client to not file.
If you are concerned about what reference the examiner is going to use than you are probably trying to patent something that already exists.
I get three situations as an examiner
1) overbroad claims with patentable subject matter buried in the spec. Applicant refuses to add and files like 5 RCEs
2) same as 1 but no patentable subject matter in the spec.
3) claims allowable on their face with minor fixes.
1) should be cracked down on. 2) should be eliminated 3) should be encouraged.
This would require rejecting nearly everything.
T, I hear you. I share your opinion of the quality of most patent applications filed today by the modern practitioner. I also share your opinion that they are vastly overaggressive in terms of the scope of claims they think they are entitled to, because they think they can claim results. They been taught to do this when they learned how to draft claims and the Federal Circuit has never enforced the law regarding functional claims until just recently, where the it now seems to find every functional claim to be governed by 112(f).
There are also tons of patentable claims that are incremental. Like you need to take 1000 of sam
Whoops writing on my phone. Continued.
Samsung’s patents to make a workable device.
The substantive law is what needs a major overhaul.
We need to go back to 1960’s levels of patents.
I can hear the objections already but the truth is that….
Well just look for yourself.
link to m.motherjones.com
Data from CBO.
“equire rejecting nearly everything.
Stop filing ”
But you say you are not Reject Reject Reject…???
Also in your 3) you may have revealed your own incompetence.
Problem is really too many FILINGS
“anon” 1) what you think is or is not “too many” is entirely irrelevant
Thats because only “anon” and his patent luvvin’ cohorts — The Most Important People Ever — get to decide what is too much. It says so write in the Constitution, right after the part about how it’s a Xian country created for the benefit of white people.
…white people…?
Really? This flies…?
“anon” : there is no humanly possible way for an applicant to guess what … prior art reference will be used by an examiner
LOL. No doubt that’s true when the applicant does everything except dissolve his brain in sulfuric acid to avoid understanding anything about the world prior to his awesome “innovation.”
Funny stuff.
You do know (because your comments are on the thread) that Prof Crouch had a thread showing that it was examiners ig noring what applicants supplied, right?
Your denigration is entirely misplaced, and merely displays the animus against your supposed clients.
Once again, get into a profession in which you can believe in the work product.
E.G., really?
The whole point of Achates appeal was that they were unfairly denied discovery in connection with their belief that there was some connection between the petitioner in this case and its codefendants in court who had been in court for more than a year. Wouldn’t this have been better raised in a mandamus asserting the APA rights at the time it occurred?
“The whole point of Achates appeal was that they were unfairly denied discovery in connection with their belief that there was some connection between the petitioner in this case and its codefendants in court who had been in court for more than a year.”
Ned,
Being “unfairly denied discovery” is most definitely an issue of compliance of with the APA as being “arbitrary, an abuse of discretion, and not in accordance with law.” Again, as patent attorneys we must still recognize that administrative law/procedure applicable to IPRs goes beyond what is provided in the AIA.
E.G., but the real question is how to raise the issue since one cannot raise even procedural issues regarding an institution decision from a an appeal of a final decision.
So the point I am raising here is not whether one may have some complaint under the APA regarding abuse in the process of deciding the 315(b) issue, but how does one raise it since one cannot raise any issue, any, regarding an institution decision in an appeal from a final written decision.
Ned, first, note that this is a request for evidence in a limited scope administrative proceeding on a peripheral issue that has nothing to do with with the function of the IPR to decide if the subject claims are unpatentable over the submitted patents or publications.
Secondly, what evidence did the patent owner present in its motion in support of “their belief that there was some connection between the petitioner in this case and its co-defendants in court who had been in court for more than a year.”? Did they take discovery on that in their pending D.C. litigation? If this was mere speculative conjecture on their part, then denial of expanded discovery for that peripheral issue is hardly surprising.
Thirdly, did they present to the PTAB a proposed specific, limited, interrogatory or deposition, or a broad, undefined, request for a discovery “fishing expedition?”
Paul, I think your questions to me seems more directed to whether their appeal had merit in terms of whether they had a right to discovery based upon some evidence. What I took from the decision in this case is that regardless of the merits of the alleged abuse of process, there is no avenue of appeal of that abuse from a final written decision if the abuse took place involving any issue surrounding the institution decision.
So the question I am struggling with here is if there is abuse of process which is specifically illegal under the APA regarding any issue surrounding an institution decision, how does one raise that to the Federal Circuit?
In our own mandamus regarding 315(b), the argument that I think persuaded the Federal Circuit not to accept our petition was the argument of the government that all procedural issues could be raised in an appeal from a final decision, and that the Federal Circuit could not decide the mandamus because there was an alternative path. But now that path is foreclosed. This would seem to suggest that the only available recourse for raising abuse of process in an institution decision is by mandamus – but the Federal Circuit has already ruled that mandamus petition’s are barred by 314(d) in the consideration of institution decisions until there is a final written decision, where presumably they could be raised on appeal. Get that?
The whole edifice being erected by the patent office and the Federal Circuit trying to prevent judicial review of patent office rulings on collateral issues like 315(b) or of discovery abuses surrounding the institution decision is something to behold.
Ned, there is clearly an indication in the Fed. Cir. cases on this statutory-limited subject of INITIATING IPRs, that the Fed. Cir. WOULD entertain [perhaps under an expedited APA suit as well as mandamus?] an actual, clear, PTAB violation of the AIA IPR statute [which apparently has not occurred as yet]. That is, NOT an issue involving a factual dispute or a PTO statutory interpretation that is not clearly unreasonable in the view of the Fed. Cir..
Paul,
The problem is NOT a violation by the PTAB of the AIA IPR statute, but instead is very much the AIA IPR statute itself.
This is very clear, and it is rather surprising (not) that you are attempting to kick up dust on what the issue is.
So then, there is NO “PTO statutory interpretation” even needing to be unreasonable for there to be a fundamental problem.
I have laid in a BIG bet in Vegas that you will (yet again) NOT address in any substantive legal manner what that fundamental problem is.
Dennis, your headline misleads, as it suggests there are no appeals from an institution decision. As Judge Dyk and others have so carefully articulated, there will at least be both mandamus and challenges to the rulemaking itself, just under different standards of review and in different procedural postures. I have always thought your important contributions to educating the patent bar are generally balanced, thorough, and fair, regardless of whether I agree with you. But this headline risks looping you in with the quick-to-superlative-headline crew that has been distorting and oversimplifying PTAB practice to the uninitiated. That type of misinformation (or perhaps, “loose” information) is what fuels wasted time and paper as we bring everyone around to the actual picture of what’s going on. Which is to say, be careful how you draft these headlines. Oversimplification can lead to a lot of unnecessary panic and bad policy where the PTAB is concerned.
Thanks Jonathan. I appreciate that my post does not go into all of the nuances available to challenge A decision by the Review Board. However, a mandamus action is quite different from an appeal. And, it is hard to see how a headline that is essentially quotes the statute is misleading.
For one, there is no review of the facts even for substantial evidence.
Contrast the constitutional requirement imposed by Crowell v. Benson that jurisdictional facts must be reviewable de novo — or else the statute is unconstitutional if Congress made its intention to deny that review clear.
Jon
A thanks for clearing that up from a real life friend. You may be able to guess who I am by my rhetorical tone. Perhaps not.
Anyway, I personally regard you as an expert on PTAB matters.
I am one of the unitiated you speak of and I raised an eyebrow when I heard that petition institute decisions are not AT ALL appealable.
If Director Lee denies a petition arbitrarily, Is this reviewable by any means? I have been led to believe that “no” is the answer to this question by several “chicken little” types and this makes no sense to me.
FYI
link to unifiedpatents.com
Your point?
You don’t think I know where Jon works?
He is also one of the most knowledgeable and reasonable attorneys I have ever met.
You are so clever with your “veiled” accusations of bias. By clever, I mean predictable.
The point is that “Jonathan Stroud” is a mouth piece for Google. Unified Patent is backed by Google , if you did not know that.
Anything “Jonathan Stroud” says has too be taken with a BIG grain of salt , because of who he represent.
He is one of those folks who want Lee at USPTO to grab as much power as she can and HELP Google steal AS Much as She can.
“Jonathan Stroud” is just asking Dennis to NOT Put the Obvious Power grab By Lee/PTAB/Google in the “Headline”
Because it is NOT good for Google anti-patent PR machine.
I wrote above
‘You are so clever with your “veiled” accusations of bias. By clever, I mean predictable.’
Captain obvious with the old tired conspiracy theory.
Yea I get it. Everyone who disagrees with you is bought and paid for. Except everyone who disagrees with you is right and you are not.
Sorry.
Do you have any facts to back up the existence this evil Google plot end all patents forever?
Wanna talk about tower 7 while we’re at it. Fire doesn’t melt steel you know?
There need not be any “sinister conspiracy” to see what is plainly there.
The patent system has been under attack from BOTH the left and the right.
The shiny hats go to those that seek to deny the obvious.
If by attack you mean. Under repair. And the left and right both agree. Where does that leave you? On the losing side of every argument. That’s where.