No Appeal for Errors in Instituting IPR

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.


228 thoughts on “No Appeal for Errors in Instituting IPR


          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.


              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.

                1. Congress lacks the ability the “channel” is unconstitutional delegation of Article III power. Beyond that, talk to Cooper.

      1. 11.2.2

        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

  1. 10

    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.


          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.


                I understand you are frustrated with the ‘perceived ignorance’ of others. But perhaps others just disagree. These others include the Supreme Court.

                1. 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.

                2. 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.

                3. 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)

                4. 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.

                5. ^^^ 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….?


                1. 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?


              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.

                1. >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.

                2. 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

                3. Sorry continued.

                  Nothing is gonna change until the patent market corrects itself and filings drop dramatically.

                4. 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.

                1. 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).

                2. There are also tons of patentable claims that are incremental. Like you need to take 1000 of sam

                3. 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.

                4. equire rejecting nearly everything.

                  Stop filing
                  But you say you are not Reject Reject Reject…???


                “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.


                “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.

                1. 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.

    1. 10.2

      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?

      1. 10.2.1

        “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.”


        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.

      2. 10.2.2

        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..



              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.

  2. 9

    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.

    1. 9.1

      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.

      1. 9.1.1

        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.

    2. 9.2


      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.

      1. 9.3.1

        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.



              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.

                1. 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.

                2. If by “repair” you mean dismantling….

                  And if by “where does that leave you,” you mean with the correct interpretation of the orignial intent of having a patent system and promoting the welfare and creation of new property…

                  You will NOT win at this game, my friend.


                3. I seriously think that the law provides that patents ARE property and that the law provides that such property is presumed valid.

                  You might want to pay attention to what i ACTUALLY say, and what the law ACTUALLY is.

                4. “You seriously think that all of the patents out there now are ‘new property’?”

                  What has the SCOTUS said about this subject?

  3. 8

    MM: “ether “totally” separate or simply distinct the two statements are surely important.

    The first statement (by topce) is not important because it is not correct. His use of the word “only” is clear error. Respectfully, topce is using his “I slept at a Holiday Inn last night” version of legal training and wants a limited over-simplified “tweet” version that happens to line up with his desired ends.

    You cannot dismiss the means to those ends.

    Not in law.

    Further, look at twice stated “the limited time” re-definition. Clearly, other portions of the law (such as the term which defines what the limited time is meant by Congress are glibly set aside.

    Sorry topce, and with all due respect, you are only spewing g@r bage.

    1. 8.2

      You lurk around on every post calling out people who try to raise points.

      Yet you have never made your position on anything clear.

      Do you even have a position on these issues or are you just complaining?

      1. 8.2.1

        I do not “lurk” and I do not call out those who raise points.

        I read the points you (attempt) to make and discuss them. As often is the case with you, you fall short on legal understanding.

        That is not a “me” issue.
        That is a “you” issue.

        You really cannot expect (nor should you) to be able to simply say whatever comes to mind and not be suitably challenged on a law blog.

        That is not the definition of a dialogue.

        That is the definition of a monologue.

        Further, if no one challenges you, how are you ever going to even recognize how off base you are?

        As to having positions, and making them clear, well again you are simply wrong. If you knew law then you would know my positions.



          If your last sentence isn’t a sign of blind arrogance then I don’t know what is.

          So what is your position on 101 then? 101 appears to be your sticking point.

          If I am so ignorant I probably won’t understand it anyway, so you may as well make your point and have it fly over my head. When I (obviously) don’t understand what you are saying, your unbridled intelligence will be revealed to all.

          Let your light shine anon.


            asked and answered Topce.

            Let me make it simple: two aspects to 101
            a) statutory category
            b) right type of utility

            That’s pretty much it.

            101 was meant to be a wide open welcoming gate.

            My “sticking point” is NOT 101 itself. My “sticking point” is the shenanigans going around in making 101 a wax nose for legislating from the bench – and those who would push the bench to so legislate.

            There is NO blind arrogance on my end, son. Wake up.


              Ok so I think that view is right in theory. Except it renders 101 meaningless for all practical purposes.

              Just because a clever attorney calls something a “process” doesn’t mean it is a “process” as was understood when the Act was drafted.

              So how does one determine what inventions are non-statutory without the existing 101 framework?

              So you think abstract ideas fall into one of the four categories? Which one? What about laws of nature?


                If the courts are legislating from the bench, where is congress telling them not to?

                Right they agree with the courts.

                Anon stands alone.

                1. LOL – pure B$.

                  Just because a fractured and inobservant Congress does not correct the legislating from the bench does NOT mean that they reconginze and agree with that legislating.

                  Further, the amount of times that the Court has been corrected is numerous – over on the Hricik side of the blog this was discussed a while back.

                  Your “I slept at a Holiday Inn last night” is showing again.


                LOL – I love the signaling of retreat you tend to use by the insertion of the label “theory.”

                Are you even aware of that?

                In poker terms, it is a blazingingly obvious “tell.”


                So you think abstract ideas fall into one of the four categories?

                1) where have I EVER said such a thing?
                2) define “abstract”
                3) Put. Down. The. Shovel. – you are riding the Merry Go Round of that which you yourself complained about. Stop being hypocritical.

                1. where have I EVER said such a thing?

                  The point, “anon”, which you’ve just re-demonstrated for the ten thousandth time is that you never say anything except “the supreme court is bad!”.

                  Your understanding of subject matter eligibility is sub-kindergarten level. We all know that.

                2. you never say anything except

                  Absolutely false.

                  Repeating yourself for any number of times (be it ten thousand or more) won’t make that statement true.

                  My understanding of subject matter eligibility is far more advanced than yours.

                  If you want to call that level “sub-kindergarten” than your level might, just might, approach amoeba.


          In my experience the person that says ” you are so wrong that I need not bother addressing you” is the one who is nearly always wrong.


            Great – did I actually say that I need not bother addressing you?

            It would help tremendously though if you had the slightest inkling of law such that you might recognize the validity of the legal answers given to you.


              Lol. Or you are just scared that your lack of any substantive point whatsoever will be revealed to all and you will lose whatever credibility you had left on here.


                1) now you are trying to ascribe feelings to a situation where such do not exist and have no reason to exist.
                2) I do NOT have a lack of substantive points – CLEARLY.
                3) your ramblings are wrecking your credibility – and in quite the opposite of your attempted effect, BOOSTING mine.


                1. your ramblings are wrecking your credibility – and in quite the opposite of your attempted effect, BOOSTING mine.


                  This “bounces-off-me-and-sticks-to-you” baloney might be the most entertaining of all “anon’s” pre-scripted insults. Too funny.


              Last time I checked you were wrong on every Supreme Court ruling since the beginning of time.

              Apparently you are smarter than all 9 justices.

              You are what is wrong with this blog. You turn every intelligent debate into an insult match.

              You are one of the main reasons intelligent people don’t want to comment here.


                You do realize the point here is that the Justices are in fact wrong on the law and are re-writing that law from the bench, right?

                As such, being in disagreement with the decision is decidedly NOT being wrong on the law.

                Wake up son – you are not even aware of the points here.


                and also as clearly as can be, if you are counting yourself as “the intelligent” you do not understand what that term means.

                Try to count how often you have been wrong on basic items of law and fact on this thread alone….

  4. 7

    topce: The Court has only ruled that an article III court must provide a patent holder a right to a jury trial.

    The Court has not addressed whether Patents can systematically be revoked by an article I agency.

    Totally separate issue

    Whether “totally” separate or simply distinct the two statements are surely important. Congress defines what “patent” means. If Congress decides that “patent” means a “right that is subject to review and revocation by the granting agency when certain fairness criteria are met”, then lo and behold! that’s what “patent” means. And that’s pretty much exactly what Congress did, as I recall.

    1. 7.1


      I was hoping to reply to David’s mention of Patlex and indirectly to Ned, but the replies ran out. Your comment seems appropriate as well, however.

      This may be of some interest. The reexamination statute in Patlex was enacted in 1980. The situation in 1965 is described below using excerpts. Newman did not cite this case

      From Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 US 172 (SCOTUS 1965):, section II:

      “We have concluded, first, that Walker’s action is not barred by the rule that only the United States may sue to cancel or annul a patent. It is true that there is no *176 statutory authority for a private annulment suit and the invocation of the equitable powers of the court might often subject a patentee ‘to innumerable vexatious suits to set aside his patent.’ Mowry, supra, at 441. But neither reason applies here. Walker counterclaimed under the Clayton Act, not the patent laws. …

      It would also promote the purposes so well expressed in Precision Instrument, supra, at 816:
      177: ‘A patent by its very nature is affected with a public interest. . . . [It] is an exception to the general rule against monopolies and to the right to access to a free and open market. The far-reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope.'”

      1. 7.1.1

        Troubled, you do know that even the government has no standing to sue to invalidate a patent except in the context of an antitrust action. United States v. Glaxo Group Ltd., 410 U.S. 52, 93 S. Ct. 861, 35 L. Ed. 2d 104 (1973). link to

        We know that Article III standing cannot be granted by statute. So how is it that the government, that has no standing to challenge the validity a patent outside the context of antitrust action, may nevertheless revoke it unilaterally?

        What a joke.

        ” The decisive point is that in neither the 1978 Act nor the 1984 Amendments did Congress “creat[e] a new cause of action, and remedies therefor, unknown to the common law,” because traditional rights and remedies were inadequate to cope with a manifest public problem. Atlas Roofing, 430 U. S., at 461. Rather, Congress simply reclassified a pre-existing, common-law cause of action that was not integrally related to the reformation of debtor-creditor relations[15] and that apparently did not suffer from any grave deficiencies. This purely taxonomic change cannot alter our Seventh Amendment analysis. Congress cannot eliminate a party’s Seventh Amendment right to a jury trial merely by relabeling the cause of action to which it attaches and placing exclusive jurisdiction in an administrative agency or a specialized court of equity.”
        Granfinanciera, SA v. Nordberg, 492 US 33 – Supreme Court 1989 at 61.



          No, I am not aware of much on this topic. Can you provide a link to your recent brief?

          However, I note from Glaxo: “We are asked to decide whether the Government may challenge the validity of patents involved in illegal restraints of trade, when the defendants do not rely upon the patents in defense of their conduct,” at page 53. The majority decided for the Government.

          In the Dissent: “But the sort of roving commission that the majority now authorizes … is, therefore, more properly the creature of statute than of judicial innovation,” at page 69.

          Is the dissent correct? Is the Constitutionality issue of IPRs the same as for the Reexamination Statue?


            MCM Portfolio LLC v. HP, No. 15-1091.

            Dennis may have posted our principle brief. I do not recall that he posted our reply, which is even better.


                Troubled, yes, of course you do. If you are a practicing attorney, you need such an account.

                1. Ned,

                  He is clearly not an attorney (practicing or otherwise).

                  Let me again post that an account is available to anyone and a de minimum use is not even charged.

                  You won’t be able to scour the decisions and read the cases before they break to the public at large, but you can access things like Ned’s items here.

                2. PatentBob,

                  As I mentioned, getting into PACER is as easy as signing up. And under a certain level, there is no fee.

                  It’s not hard to do.


            Regarding reexaminations they revoke patents just as much as IPRs, but until the AIA, they also provided for de novo review. Executive Benefits held that de novo review cured the constitutional defect of a “Stern” claim. B&B Hardware suggested the same with respect to decisions of the TTAB in oppositions.



              De novo review of non-advisory Article I determinations does not cure the Article III defect. De novo review applies to fact-finding only. Article I determinations of law must be advisory. Executive Benefits held precisely this.


                David, B&B Hardware suggested the availability of de novo review was sufficient. Of course, the Supreme Court has not directly addressed the issue.

                On Executive Benefits, here is what the court said it held,

                “We hold today that when, under Stern’s reasoning, the Constitution does not permit a bankruptcy court to enter final judgment on a bankruptcy-related claim, the relevant statute nevertheless permits a bankruptcy court to issue proposed findings of fact and conclusions of law to be reviewed de novo by the district court. Because the District Court in this case conducted the de novo review that petitioner demands, we affirm the judgment of the Court of Appeals upholding the District Court’s decision.”

                From Kappos v. Hyatt, the findings of fact of the PTO are subject to de novo review.

                Wellness v. Sharif held that one could knowingly and intentionally consent to have their case heard by a non-Article III judge Thus, I think that if a Board decision is adverse to the patent owner in a reexamination, he may choose not to have de novo review thus waiving his constitutional right.

                You do know that the Board decision is not a final judgment. The claims are not cancelled until the courts have ruled and no further appeals can be made. Thus the Board decision IS advisory if the patent owner chooses to pursue a de novo review.

                But de novo review for reexams was removed by the AIA.

                It never existed for IPRs.

                1. Ned – I’d argue that Executive Benefits is in fact more restrictive than the rule I articulated above.

                  The operative word in the Executive decision is “proposed.” This word modifies both findings of fact as well as questions of law. There is zero constitutional harm when an Article I administrator issues proposed findings of fact / law. The SCOTUS merely confirmed that such proposed findings are reviewed de novo. This is very restrictive; very ho-hum.

                  I wholly disagree with your conclusion that IPR is advisory. If that were the case, it would be the mainstay of the DOJ’s opposition and there wouldn’t be a case. Both you and eCharge would have been laughed out of court many months ago.

                  In this regard, I only have one question: what happens to a patent claim(s) canceled per IPR IF an appeal is NOT pursued? Does it remain valid and enforceable, or does it drop?

                2. We deal in hypotheticals here, the assumption that de novo review is available to the patent owner from an IPR like the trademark owner has a right to de novo review in B&B Hardware.

                  If the patent owner chooses de novo review, the Board’s decision’s is advisory at best, especially if there is a jury trial on disputed facts.

                  If the patent owner chooses to not appeal or to appeal to the Federal Circuit, he has consented to the PTAB’s statutory jurisdiction. This cures the constitutional violation per Wellness.

                3. I’m not aware of any authority establishing that, by declining an appeal, consent to Article I resolution of the “advisory” judgment is achieved. Granted, the consent aspect of this equation if brand new, but this seems extremely flimsy — how is this fair to the litigant forced into the Article I tribunal who is unable to pursue an appeal? The constitutional guarantees of three separate branches of government is lost.

                  Ned – if it is your client’s position that IPR is advisory, on what basis do you have a claim that an Article III infraction has occurred?

                4. David, we clearly did not consent.

                  Also, I am not sure that implied consent is sufficient. Wellness required knowing and intentional consent — and one does not get that if one is hailed into the IPR without consent in the first place.

                5. I’ll answer for you: IPR is not advisory. Neither is reexamination. Any administrative decision that effectuates a result is, by its very nature, non-advisory. You are playing with fire here.

      2. 7.1.2

        Troubled – what does that have to do with the separation of powers, and how does it comport with the SCOTUS’s vision for the public rights exception?

        Does a cause of action merely have to be “affected with the public interest” in order to qualify as a public right? Does any claim, affected with the public interest, thus become a de facto administrative claim susceptible to resolution wholly separate from the Article III courts? Arguably, don’t other causes of action (e.g., tortious interference) similarly affect the public interest? Do you think the SCOTUS would ratify this view of the PR exception?

        The question is not merely “can” the administrator participate; the accurate rendition of the question is whether the claim is administrative, and whether that administrative claim (as a necessary result) may be resolved conclusively by the administrator?

        Where a public right, “sharing” between Article I and Article III is purely a Congressional determination.

    2. 7.2

      MM, where does Congress have the power to grant anything but exclusive Rights?

      “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

      1. 7.2.1

        where does Congress have the power to grant anything but exclusive Rights?

        There’s no inherent contradiction between a “right” that is “exclusive” and a “right” that “comes with caveats and strings attached.”


          MM, Strings?

          No doubt. But I think the Supreme Court has been made it abundantly clear that Congress cannot withdraw from the courts patent validity or patent infringement, and that both have a 7th Amendment right to jury trial because both had that right at common law.

          Did you know the Supreme Court held that antitrust actions had a right to a jury trial?
          Involved is a right created by Congress under the commerce clause. Yet even here, validity (liability) must be tried in court and to a jury. Beacon Theatres, Inc. v. Westover, 359 U.S. 500, 79 S. Ct. 948, 3 L. Ed. 2d 988 (1959).

          Crowell v. Benson is the furthest the Supreme Court has ever gone when the liability of one to another was at issue. Here the findings of fact on the merits by the agency were “binding” on the district court who had to issue the order to make the award legally effective. (Jurisdictional facts were subject to a trial de novo.) But the right involved here (the liability of the employer for harm to the employee in interstate/foreign commerce) was a right completely unknown at common law. It was a new right created by congress.

          Patent rights are not something new. Copyright rights are not something new. Trademark rights are not something new, although Federal Protection was.

          Rights and remedies known at common law must remain in the courts. If they are legal, they also have a right to jury trial. Granfinaciera.


            Ned: I think the Supreme Court has been made it abundantly clear that Congress cannot withdraw from the courts patent validity

            Well, we all know what you think. 😉

            But, without getting into the details of your argument, I think it goes without saying that for most of the past 40 years of patent re-exams, hardly anyone believed that your proposition was “abundantly clear”. More like the opposite, right? Somehow a lot of patents were invalidated during re-exam without the owner (or anyone else) suspecting that the owner’s constitutional rights were being trampled upon.

    3. 7.3

      Congress defines what “patent” means

      1) somehow the notion that Congress said patents are property never seems to make it into the dialogue with you.

      2) the fact that it is legislating from the bench that you always seem to be pursuing in your windmill quests to rewrite what Congress has written stands in stark contrast to your post here. Ned himself provided a citation to Judge O’Malley warning against what you (and Ned, and even a certain number of academic types) want to do. Way back when Madison and the Federalist Papers warned of it too.

      Is there any more of a polite way to call you out for your typical B$…?

      1. 7.3.1

        Congress said patents are property

        There’s no inherent contradiction between a “property” right, on one hand, and a “right” that “comes with terms and conditions”.

        No contradiction whatsoever.


          Perhaps not, but there may be a decent case that at least those folks whose patents were issued prior to the existence of those caveats cannot then have such caveats added to their property after-the-fact.


            Ken: there may be a decent case that at least those folks whose patents were issued prior to the existence of those caveats cannot then have such caveats added to their property after-the-fact.

            Fair enough. I believe the government has argued, however, that because IPRs have just as many or more protections for the patentee baked into them as compared to the earlier proceedings, there’s no change in “caveats” introduced by IPRs.


          Great – now maybe you want to try your “hand” at “takings” law and when the “government” can “appropriately” take “under” the “constitution.”

          (whew, those quotation marks are wily critters, wanting to “pop” up all over the place)

    4. 7.4

      MM, regarding “If Congress decides that “patent” means a “right that is subject to review and revocation by the granting agency … lo and behold! that’s what “patent” means.”

      This argument would seem to apply to every right created by congress, every one, not so?

      If congress has plenary power over every right it creates, then, under Murray’s Lessee, congress may withdraw all litigation involving such rights entirely from the courts. Entirely.

      No validity trials in courts.

      No infringement trials in courts.

      Nada, zip, zilch.

      This logic applies to trademarks, to copyrights, to the new national trade secret law in the works.

      And yet, the Supreme Court has already ruled that for each of these rights, there is a right to jury trial, even for cancellation proceedings for patents.

      Further, the Supreme Court has held that if there is a right to jury trial, such cases must be tried in Article III courts.

      How do you square your thinking with the controlling law?

      1. 7.4.1

        Ned: he Supreme Court has already ruled that for each of these rights, there is a right to jury trial, even for cancellation proceedings for patents

        Round and round we go. The Supreme Court has ruled that when you assert certain rights in an Article III court (a choice made by the rights holder), you are entitled to a jury trial with respect to particular issues. The Supreme Court has never held that “granted patents can only be invalidated by a jury.”

        Registered trademarks can be cancelled by petitioning the USPTO. Does the PTO have to assemble a jury? Of course not.

      2. 7.4.2

        How do you square your thinking with the controlling law?

        He won’t
        He can’t
        Don’t hold your breath.

        He does not appear to even begin to recognize the separation of powers doctrine or the fundamental aspects of our government structure.

      1. 6.1.1

        What is “profound” is that your seemingly earnest view lasted all of one thread before you show the behavior that you yourself had complained about.


          Like what? You are calling me a hypocrite. Nice try. Nothing wrong with calling out others as long as you are willing to put your own views out there. ALL you do is attack. I at least try to put some sort of legal theory out there. I also admit when I am wrong.

          When was the last time you did that?

          Let me guess. You are never wrong and know better than everyone.


            as long as


            ALL I do is more than attack.

            You simply don’t like the fact that I attack so effectively – and persistently.

            Hey, it’s not my “fault” that the same l@me script is trotted out again and again and again. As I have pointed out, when dialogue is actually embraced and the counter points are recognized and integrated into the conversation, then – AND ONLY THEN will the conversation be able to move forward.

            As to “the last time I admitted I was wrong,” – easy answer – the last time I was actually wrong. Why would you want that to be any different?

            And yes, I have admitted such – twice recently with Ned, and once awhile back on some EP stuff with MaxDrei.

            On the other hand, I am MORE than perfectly willing to have my points proven wrong with law and fact. Funny though, you seem unwilling or unable to do THAT.

            What does that tell you my friend?

            Think about that deeply before you respond.

  5. 5

    IPRs aren’t going anywhere unless they are replaced with something equivalently successful (or better) at expunging the ridiculous junk that the PTO (with the help of the Federal Circuit) polluted the system with in the first place.

    Ned: startups, universities and Pharma no choice but to seek to abolish IPRs one way or the other

    LOL!! If “startups, universities and Pharma” want to improve the patent system, there’s plenty of choices to be made besides “abolishing IPRs” (which isn’t going to happen). Of course, those other choices require more thinking and creativity than endlessly obsessing over the size of some imaginary “bundles of sticks”. Most importantly, those other choices require asking the question: what kind of people do we want to benefit from the patent system and how to we keep those people in and the money grubbing grifters out? Nobody except the hardcore patent luvvers can deny there’s been a substantial proliferation of genuine l0wlifes who’ve had a field day abusing the system during the ultra n utty past couple of decades (remember? that’s why IPRs were created in the first place).

    1. 5.1


      1. We need to fix the PTO to focus on patent validity as job 1.

      2. The problem of trolls has been addressed by Octane Fitness.

      3. Patent litigation is expensive — Congress should focus on how to reduce that expense. One way, decide validity first, and make it immediately appealable. Courts can stay further proceedings if justice requires it.

      4. IPRs are conducted under the aegis of the Director who takes direction from the White House. There are a lot of politics that goes on in IPRs. Everyone knows this.

      5. IPRs have the following problems:

      — No standing.
      — No right of appeal for 315 bars.
      — No presumption of validity.
      — BRI.
      — A final decision being made by the same folks who decided to institute. Yeah, tell the 5 year old attempting to appeal mommy decision’s that his appeal is to mommy. Tell Brady that he has received due process when he must appeal a decision by the commissioner to the commissioner.

      Also, IPRs remove the right to have disputed facts decided by a jury or by an Article III judge who has a lifetime appointment and who is not looking over his shoulder at the White House or to the firms he must please in order to find his next job.

      1. 5.1.1

        I’m still waiting for some evidence that a substantial portion of the patents being tanked in IPRs should ever have been granted in the first place. Do you have any such evidence, Ned?

        If, in fact, it’s true that the use of IPRs — or any other procedure which forces the USPTO to consider eminently reasonable arguments that it seems incapable of making unless a third party is holding its hand — modestly raises the cost of patent enforcement across the board, that’s really not a great concern for 99.999% of the American public. And it shouldn’t be.

        What should be a concern is the abuse of a crippled system by a class of wealthy b0tt0m feeding patent attorneys to siphon money from everyone else into their own bloated pockets. What that class of patent attorneys seeks to do with the patent system has been transparent for many, many years. Anyone who takes them seriously about anything in 2015 — after they’ve been relentlessly peddling their “patent everything” nonsense for years — should have their head examined. These are the guys who still can’t come to terms with the facts and what was at stake in Prometheus v. Mayo! Good grief.

        Here’s the deal: you say that the first priority is “to fix the PTO to focus on patent validity as job 1”. At the same time, you don’t like IPRs even though IPRs force the PTO to focus on patent validity.

        So what are you proposed alternatives? Remember that you’re one of the relatively reasonable people out there. I can guarantee you that pretty much every alternative you propose is going to be hysterically objected to by the same “bundle of sticks” counters out there who go k00k00bananas over every other effort to put the train back on the tracks.

        How about this alternative: let’s get rid of the cancer in the system represented by patents on logical information processing (in both business and non-business contexts) and see what happens.

        Note that I’m not particularly worried about Sequenom’s “I-own-the-detection-of-the-natural-thing-I-detected” junky claim because even if they manage to resurrect it, the moment all of Sequenom’s “amici” and their fellow grifters try to pile onto that ship it’s going to sink like a bag of rocks.


          MM, the number of Rule 36 affirmances supports the notion that the notion that the PTAB is getting the merits correct based on BRI and a reduced burden. I have no idea whether these are junk or not.

          I would appreciate Congress issuing a statute that bars patents where the novel subject matter is a business or financial method, or where the claimed subject matter is primarily directed to a product of nature, a law of nature, or a principle in the abstract.

          But Armitage is running around, I hear, with some so-called reform designed to overrule Alice and Bilski. I haven’t seen his draft, but if anyone has it, I think we should see a copy here.


            Ned: the number of Rule 36 affirmances supports the notion that the notion that the PTAB is getting the merits correct based on BRI and a reduced burden. I have no idea whether these are junk or not.

            Well, I’ve been paying attention to what’s getting tanked and listening to the oral arguments to get a sense of the issues. It’s not about “the reduced burden” or BRI. Pretty much every claim getting tanked is either invalid or it’s really, really, really — as in “seriously?!” — invalid (or ineligible).


          ^^^ because “grifters” somehow routinely makes it past the “politeness” police….

          Gee, maybe a simple word that begins with “gl” and ends in “ub” promote the editor/thought police into frenetic action, but the usual B$ just keeps on flowing.

          Nine years and running.

          What do you see when you look in the mirror Prof. Crouch?

          Serious question.


              Your banter has become downright silly.

              Much like your attempted views of the law, you simply have no sense of balance in the comments. There are – and will be – some comments with legal argument and others that have a mix based on context.

              In the immediate context, the on point item has to do with the very evident lack of objective application of any “politeness factor.”

              There is a concept in law that you might want to be aware of: one does not come to the table of equity with unclean hands. The good professor “wants” an honor system, but fails to see how his own actions contribute to that want not being fulfilled.

  6. 4

    This “ultimate authority” distinction is just a bit cute. Clearly, the PTAB asserted jurisdiction, and the decision under 315(b) was final — not subsumed in the final decision on the merits like the correctness of a denial of summary judgment is subsumed in a final judgment.

    This potentially leave decisions by the Director regarding 315(b) beyond the review of the courts. (Mandamus still might be possible — the court has not ruled on that issue yet in a proper case.)

    Clearly, 315(b) is NOT discretionary which is a hallmark of non appealability of institution decisions. It is not procedural, because the statute commands that the IPR not instituted. The court says the Director is not denied ultimate authority to invalidate — someone else might file. But until someone else does file, it has no authority, no statutory jurisdiction to do so.

    This opinion seems more political than legal. The Feds are faced with a host of appeals from IPRs and they need some way to control their docket. Thus, I think, they would prefer to operate through mandamus to correct egregious mistakes by the Director.

    1. 4.1

      You can sue the Director in district court under administrative grounds still.

      I think the CAFC would deal with this case on the merits if they sued the Director under Chevron.

      1. 4.1.1

        T, the APA action is a form of appeal. I daresay that if Congress denied direct appeals of a decision, it implicitly denied an APA review in a district court.

        I think the Feds have already decided this issue anyway.


          Not sure I agree with the theory as to how a suit in District Court can be an “appeal”

          But the EDVA dismissed the case and the CAFC had no jurisdiction over THAT appeal. You can’t sue the PTO anywhere else so I guess you are SOL.

  7. 3

    35 U.S. Code § 314
    (d) No Appeal.— The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

    What is the fuss about here? This is about the most straightforward a statute can be.

    1. 3.1

      But consider that institution decisions are made under “this chapter” not under “this section” per 314(b).


          T, IPRs are decisions of whether to institute under “this chapter” per 314(b). 314(d) is limited to decisions made under “this section.” There is a coherent argument that 314(d) applies only to 314(a) decisions.

          The government argued consistently, for a long time, that denials of 315(b) could be raised on appeal from a final decision. I assume they were reading the same statute that we are both reading. Yet they did not conclude that 314(d) applied to decisions made under a sections other than 314. In fact, they argued this very position in the MCM v. HP, mandamus — that we could raise the 315(b) issue on appeal.

          Thus, it is not abundantly as clear as you contend.


            “denials of 315(b) could be raised on appeal from a final decision.”

            Yes they can. If the respondent sues the agency in district court.


              The EDVA will dismiss it though and there is no jurisdiction elsewhere. So this is all in theory. Practically speaking you are SOL.

              But who cares? Since when is a petition at the PTO a matter of right?


                Like I said below, try a collateral attack at the ITC. It probably won’t work but it is worth a shot.

                At the end of the day Congress wanted a mechanism to revoke patent rights without getting the courts involved. Article I gives Congress authority to do this.

                1. All of this nonsense stems from the idea that a patent is a property right and cannot be revoked without due process.

                  This is of course not the case and has never been.

                2. “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

                  Congress has the right to secure for “limited times.” A “limited time” could be the time between the patent grant and the review

                3. t: ”

                  All of this nonsense stems from the idea that a patent is a property right and cannot be revoked without due process.

                  This is of course not the case and has never been.”

                  Obviously, you have not read the cases. I urge you to do so, starting with Marbury v. Madison, McCormick Harvesting, Murray’s Lessee, Crowell v. Benson, Northern Pipeline, Granfinanciera v. Norberg, and Stern v. Marshall.

                  There are a lot more. A lot. Due process is not the issue.

                4. Topce,

                  Are you aware that there is a highly similar provision in Article I regarding land patents? Are you aware that the argument you just made regarding Article I was made for decades – unsuccessfully – in support of the Article I administrator’s revocation of issued land patents?

                  Are you aware that there is at least one SCOTUS decision holding Article I land patent provision and the Article I IP patent provision are highly similar, and that the rights applicable to one are applicable to each?

                  Can you name the SCOTUS case that I’m referring to?
                  If so, can you distinguish it?

                  If not, I see another gentleman’s D- coming up.

                5. I read the briefing and came away wondering how “public rights” bear any relevance to IPR. McCormick was made irrelevant by the 1952 patent act.

                  The framing of the entire issue is wrong IMO. It isn’t a matter of not comprehending nuance or doing my homework. Ned you did a good job baiting the government to respond to the issue on your frame.

                  Solid lawyering. But I hope the Court is smart enough to not view this as a “public rights” case.

                6. Your hole is getting deeper.

                  McCormick was not rendered irrelevant by the ’52 Act. J. Newman in her 1980’s Patlex decision acknowledged the McCormick decision, and confirmed that it was still good law. She then held that – despite the express holding of McMCormick – patent validity was properly before the Article I examiner for reexamination given that the claim of patent validity was . . .

                  . . . get ready for it . . .

                  . . . A PUBLIC RIGHT! In order to explain this designation, she built in the mistake-based rationale, which was abandoned in her next case (Joy) addressing the issue, and which has not been adopted by the DOJ. Joy confirmed per J. Newman of the CAFC that the claim of patent validity is a public right.

                  You see, the only reason the PTAB exists today is because in 1985, J. Newman held that the claim of patent validity is a public right. The challengers now look to put that designation to the test before the CJ Robert’s Court.

                  The SCOTUS will protect the separation of powers.

                7. For those who enjoy the separation of powers, this is an excellent case study in the dangers of making small concessions.

                  Innocuous concession in order to preserve ex parte reexamination, a very low profile admin mechanism –> leads to creation of the Article I PTAB, the most powerful admin court ever created –> leads statements by the DOJ in briefing and during argument that the claim of patent validity may be removed from the judiciary altogether per the PR classification.

                  Slippery slope, folks.

                8. T, did you read our briefs, both, in MCM Portfolio v. HP, No. 15-1091? It is not clear from your post what briefs you read.

                9. David, the Justice Department’s position is that a patent is a public right.

                  As such, under Murray Lessee->Stern v. Marshall, all patent litigation may be withdrawn from the courts.

                  Since this nonsense, there is something very wrong with the government’s position.

                10. David, I am not so sure I volunteered. I simply defended my client to the best of my ability as a lawyer, and did not pull punches to favor the zeitgeist or other clients. I have no other explanation as to why no one has raised the constitutionality of reexaminations/inter partes review since Nies opined in Lockwood that Lockwood overruled Patlex.

                  We reached out to a constitutional lawyer at one point only to hear back that “everyone” likes IPRs, or some such. This confirms, in my view, that everyone involved in patent law on a day-to-day basis is compromised in some manner. If they go against the wishes of the bar, or big clientele, they will be blackballed.

                11. We as lawyers took an oath to support the Constitution. The hubris currently affecting the patent bar is discouraging.

                12. Ok this is really becoming laughable. I know Patlex. So what?

                  I love how I am against separation of powers because I am defending the article 1 patent power!!! Is it opposite day?

                  Again, you expect the Supreme Court to burn the whole system down? For what exactly? On the basis of a theoretical argument that patent validity is a matter of equity.

                  We don’t even need to go down the “public rights” rabbit hole. Justice Newman (bless her heart) never need to, and neither did you.

                  At the end of the day, the patent power lies within congress and you have a massive burden to overcome to argue that Congress doesn’t have the right to do what ever the heck it wants when it comes to patents.

                  If you are correct, every single reexamination, post grant, reissue proceeding that has gone on for 30 plus years will be overruled overnight.

                  This benefits absolutely nobody. Why is this argument nothing more than purely academic?

                  All many of you on here want to do is appeal to ‘higher authority’ in the form of super old case law and quotes from the framers.

                  Common sense and Judicial restraint will prevail here.

                13. Stop conflating ‘the constitution’ with ‘your interpretation of the constitution’ as well.

                  The constitution says almost nothing about pretty much every issue. All you are doing is cherry picking Court cases that support your point and calling those cases ‘the Constitution.’

                  The ACTUAL constitution grants congress the patent power and federal courts limited power to decide certain disputes. On its face, that’s all it comes down to. The former outweighs the latter.

                14. “You see, the only reason the PTAB exists today is because in 1985, J. Newman held that the claim of patent validity is a public right. ”

                  That’s funny. It’s the ONLY reason? No the reason the PTAB exists is because Congress created it.

                15. ” I have no other explanation as to why no one has raised the constitutionality of reexaminations/inter partes review since Nies opined in Lockwood that Lockwood overruled Patlex.”

                  Because everyone likes these proceedings and nobody cares. The role of the judiciary is to resolve disputes and nobody is really disputing this except you. The constitutional lawyer told you this!! Is he/she violating the oath also?

                16. It’s an academic discussion (and you can’t keep up) because “pragmatism” can be used to legitimize the delegation of power to any Article I tribunal. You just made that point for me – without a rule of law, the safeguard is an illusion.

                  Then notion that prior Article I decisions would be overruled is nonsense, and unsupported by the PR case law. The SCOTUS has previously held that Article III infractions are discretionarily retroactive.

                  Needless to say, I’m sure that this issue is on the SCOTUS radar, and it likely already knows whether it wants to grant cert.

                17. “pragmatism” can be used to legitimize the delegation of power to any Article I tribunal.

                  As long as it is within Congressional power so what? You aren’t entitled to have only article III courts? Congress is given substantial power over the courts in the Constitution.

                  That is why Congress only has certain enumerated powers. It can only decide cases in a select few areas. Patents is one.

                18. You just don’t like pragmatism because it doesn’t form a coherent ideology. There is nothing inherently wrong with that. It just causes uncertainty.

                  Most people can’t handle uncertainty. I don’t handle it well myself. But the law will never be “clear and certain.”

                19. We are ships passing in the night, my friend.

                  By all means, recruit a client for an amicus brief when the SCOTUS grants cert. You can test your arguments re pragmatism there.


                I have read the first three and fail to see how they are applicable to the IP clause under article I.

                These cases have little to do with each other, let alone patent law.

                1. T,

                  1. The validity of property rights is a matter exclusively for the courts.

                  2. Actions that existed at common law may not be removed from the courts.

                  A patent is property.

                  Actions to revoke patents existed at common law and had a right to jury trial.

                2. Actions historically at equity cannot be removed from Article III jurisdiction per the PR exception. Sir Lemley didn’t put this together before sitting down to write his jury trial piece.

                  Or perhaps he did, and wrote it anyway, thereby keeping his Google overlords happy, while simultaneously supporting the separation of powers.

                3. That sounds plausible to me.

                  It is an interesting argument.

                  But one still needs to accept the premise that patents are property.

                  The IP clause and the writings of Jefferson superseded that view IMO. Going down this road also opens up a huge “can of worms” about whether there is a “Federal Common Law” of Patents.

                4. Erie seems most applicable upon reflection. I don’t see the Court carving out Patents as another exception to the rule that there is “no federal common law”

                  Seems like a massive judicial encroachment on the article I patent power.

                5. For example, Alexander Hamilton emphasized in The Federalist Papers that the New York Constitution made the common law subject “to such alterations and provisions as the legislature shall from time to time make concerning the same.”

                  Thus, even when a federal court has authority to make common law, that law is subject to alteration by Congress.

                  So Congress decided that patents are not a matter of equity to be dealt with by the courts. That should pretty much settle the issue I would think.

                6. The Court has only ruled that an article III court must provide a patent holder a right to a jury trial.

                  The Court has not addressed whether Patents can systematically be revoked by an article I agency.

                  Totally separate issues

                7. How is my argument the “creative” one? I am saying that the Court shouldn’t encroach on Congress’s article I powers.

                  To say that patents are a matter of equity and not purely statutory is the “creative” argument.

                8. It seems like you are conflating the equitable right to a jury trial with some sort of equitable right to a patent as property.

                9. Creative in the sense that you aren’t even in the ballpark. The issue is highly nuanced, you haven’t done your basic homework.

                  Start with these two:

                  link to

                  link to

                  There are many more.

                  The relevant question is whether the CLAIM OF PATENT VALIDITY was historically resolved at law or equity? If the answer to this question is yes, then the claim cannot be a public right. Read the PR cases, see how this question is typically resolved by the Court. You might be surprised by the type of claims that are able to survive the High Court’s public rights scrutiny. Generally speaking, they aren’t a thing like the claim of patent validity – a claim with many centuries of history at law or equity.

                  Ned’s briefing before the CAFC explains the issues.

                  eCharge’s briefing before the 4th Cir. also explains the issues.

                  The DOJ’s briefs explain the USPTO’s view of the issues.

                  In order to understand the public rights exception, you have to read cases. Many of them.

                10. I have no idea what you are referring to but I am willing to make the following guesses.
                  1) the cases you refer to are pre-1952
                  2) the land patent case relied on the historical nature of physical property as a matter of equity.
                  3) the mention of IP in that case was dicta that is largely irrelevant today.


                Also, the Supreme Court directly held that the government has no authority to revoke an issued patent — McCormick Harvesting. The case relied on authority that goes directly back to Marbury v. Madison.

                See our briefs in MCM Portfolio v. HP, No. 15-1091.

                1. The government’s brief, which I am rereading is very persuasive.

                  It underscores my initial point that Congress has the patent power. To declare patent rights to be a ‘private right’ would be a judicial overreach.

                  You are going way back to old cases and chasing ghosts. No wonder I haven’t heard of these cases. They are of no practical value whatsoever.

                  Also literally every case goes back to Marbury.

      1. 3.2.1

        Yea they can still sue on administrative grounds in district court though.

        Nothing in the statute prohibits it. Appealable means that it is not directly appealable to CAFC.

        Final refers to “final agency action” which is ripe for District court review.

        They didn’t sue the agency. They tried to lump in their Chevron question with an appeal on the merits, which is not proper procedure.


          Versata II was wrongly decided and dismissive of congressional intent.

          This is another simple issue that the CAFC made way too complicated.


            And even if Versata II was correctly decided, it does not prevent District Court review per se. It just means that the district court judgement would be final.


              And of course EDVA dismissed the case in Versata II for lack of jurisdiction. So practically speaking there is no recourse unless you can get jurisdiction elsewhere (The ITC?).

              But congress probably intended for there to be no recourse on PGR IPR or CPM petition decisions anyway.


                If you want to argue that ALL of the post grant proceedings are unconstitutional, that is a different matter.

                But given the Article I power of Congress, I don’t see how that is the case.

                Congress pretty much gets to decide who gets patents and who doesn’t. You can argue due process all day but patents are not an entitlement under the Constitution, they are a discretionary power of Congress.

                1. “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

                  Congress has the right to secure for “limited times.” A “limited time” could be the time between the patent grant and the review

                2. You do know what Congress actually said about the term, right?

                  Sort of like, you do realize that Congress explicitly stated that patents are property, right?

                  What is really sad here is that the likes of Malcolm applaud your inanity because you align with him.

                  Basics, my son – learn them BEFORE you establish your philosophical position.


          T, the APA is not an alternative.

          You might want to read Crowell v. Benson, recently cited in B&B Hardware by Thomas and Scalia for this proposition:

          “Administrative preclusion thus threatens to “sap the judicial power as it exists under the Federal Constitution, and to establish a government of a bureaucratic character alien to our own system, wherever fundamental rights depend . . . upon the facts, and finality as to facts becomes in effect finality in law.” Crowell, 285 U. S., at 57.”

          And this:

          In the early 20th century, the Court began to move toward substantial-evidence review of administrative determinations involving mixed questions of law and fact, ICC v. Union Pacific R. Co., 222 U. S. 541, 546-548 (1912), but reserved the authority to review de novo any so-called “jurisdictional facts.” Crowell v. Benson, 285 U. S. 22, 62-63 (1932).

          But the court observed in Crowell that a denial of appeal where the court could independently determine jurisdictional facts was unconstitutional under Article III.


            Yea I was wrong about the APA stuff on a few levels. I defer to your knowledge on the theoretical level even though it seems “out of left field” me. On the practical level I was definitely wrong. I addressed this somewhere in this mess of comments.

  8. 2

    Advisory opinions (someone else may make the item into a then(/b> present case or controversy) that remove sticks from the bundle of property rights by an Article I court without review – this is wrong on so many levels

    1. 2.1

      IPRs are not advisory. If converted into advisory opinions, then the constitutional violation will be cured.

      1. 2.1.1

        You missed the nuance of my post.

        The court is fabricating some future condition for an action now – that is how the sense of advisory is being used here – you impute a different sense, one of advising a properly sanctioned court on a still current and live case or controversy. You are not addressing the point I put on the table for discussion.


          I don’t know what you’re talking about. I find your writing very difficult to follow. You do not write like a lawyer.


          This is not nuance. Nor is it a particularly insightful point.

          Do you pretend the APA or any agency at all exists?

          So any agency ajudication is a “mere advisory” action?

          Please elaborate on your brilliant point.

  9. 1

    I wonder how the supreme court feels about the Federal Circuit reading review of executive action determining its own jurisdiction of the executive to act out of the article III’s wheel house? [this is more personal jurisdiction than subject matter jurisdiction [Versata II and Cuozzo]]

    Even if not wrong as jurisdiction: The distinction offered by the majority (someone else could bring this case) ignores the decision by congress – if this subset was served with a complaint and failed to file an IPR, then “An inter partes review may not be instituted.” 35 usc 315(b).

    1. 1.1

      But this is NOT such a clear or undisputed violation of a statute by the PTAB [which could give the Fed. Cir. jurisdiction under the APA or otherwise.] Rather this was as factual dispute over whether or not the petitioner was a “privy” of the petitioner, conducted in the absence of any definition of the relatively ambiguous term “privy” in that statute, thus providing considerable latitude for the PTO, the applicable agency, to interpret “privy.”

      1. 1.1.1

        Correction: I meant, of course: “…whether or not the IPR petitioner was a privy of any defendant sued more than a year before the petition was filed…”

      2. 1.1.2

        Paul, agreed on the factual predicate. That might have precluded mandamus, but I do not think that Achates even requested mandamus.

      3. 1.1.3

        Paul, this is one more reason that IPRs cannot be “rescued” by fixes. Congress will never consider excluding some but not other patents from IPRs. That leaves startups, universities and Pharma no choice but to seek to abolish IPRs one way or the other to the benefit of the patent system.

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