Cuozzo Takes IPR Challenge to the Supreme Court

Cuozzo Speed Tech v. Lee (Supreme Court 2015)

Cuozzo lost its petition for en banc rehearing in a 6-5 split of Federal Circuit judges.  Now, the patentee has raised is challenge to the IPR process to the Supreme Court – asking two questions:

  1. Whether the [Federal Circuit] erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
  2. Whether the [Federal Circuit] erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Answers to these questions will fundamentally alter the inter partes review system. The petition does a good job of walking through the importance of the case and then separately explaining their legal argument.

I’m sure that we’ll cover this case more as the briefing moves forward – amici have 30 days to file.  Meanwhile, read the petition here: Cuozzo Speed Technologies LLC v Michelle K Lee Petition for a Writ of Certiorari

The Cuozzo petition was filed by a rising star in Supreme Court practice – Jeffrey Wall, who is partner at Sullivan & Cromwell.  Wall was a clerk for Justice Thomas and was an Assistant to the Solicitor General for five years. He also has the distinguishing mark of being my law school classmate (as well as Prof. Rantanen).

 

196 thoughts on “Cuozzo Takes IPR Challenge to the Supreme Court

  1. Ned I had a look at Wood v Brundage. What I’m thinking is:

    1. The Wood case seems to involve competition for a patent, between rival inventors. This is notoriously difficult to resolve. Perhaps that’s why Europe puts a time limit on ownership disputes, two years from issue.
    2. This theme of a time limit applies also to oppositions in Europe. Opposition is thought of as a continuation, inter partes, of the ex parte pre-issue patentability examination. Hence the time limit. Examination has to stop sometime, but the PTO is not omniscient and sometimes needs to know what the Opponent knows, before it can decide accurately on patentability. Mind you, the EPO might feel more free to look again at patentability immediately after issue, for it never did dispense grant certificates decorated with ribbons and seals.
    3. Recent changes in patent statutes are extending time limits for disputing validity at the Patent Office. But just as you don’t need a jury to decide issues during USPTO pre-issue examination, neither do you (in principle) for an EPO-style opposition carried out immediately after issue, despite the intervening inadvertent USPTO handing out of a fancy-looking be-ribboned document.

    …..is what I was thinking.

    1. You seem to make a lot of “fancy-looking be-ribboned documents” while all the while missing the aspect of property…

      In this sovereign, the people putting together the government were a bit more concerned with property and a bit less concerned with ribbons.

      Just saying.

    2. On Wood, the court said it was a validity challenge.

      On oppositions, no problemo pre-grant provided there is some term restoration. Why not do it the same way as trademark oppositions: publish for opposition, an opposer must file or request an extension to file within 30 days.

      After the patent issues, it is enforceable in theory, but not in fact. The opposition simply wastes term and become part & parcel of an egregious abuse of process. Pre-grant oppositions with strict time limits on notice to file (30 days), plus mandatory term restoration, should be the only way to go.

      1. Ned, up until 1978 UK allowed oppositions pre-issue. What happened? People opposed so as to delay issue till the end of the patent term. You couldn’t issue proceedings for infringement till the patent issued.

        So when the EPC was written in 1973, they put opposition to post-issue. From the day of issue patent owners could assert.

        And they did. And continue to do. Frequently. As from the day of issue. And they get injunctive relief. Promptly. And frequently.

        What’s wrong with that?

        Sitting here in Europe, one gets sick and tired with criticism of “the patent system”, such as in the learned pages of The Economist, because it fails to distinguish between problems with the patent system in the USA, and problems elsewhere in the world. Just because you have a problem in the USA does not mean that the problem is inherent, or suffered anywhere else in the world.

        1. Max, the obvious problems with pre-grant opposition in the US and a term based on filing date was the ability of the opposer(s) to block issuance of the patent at all based on delay. Obviously, there the solution to that could have been to require strict time limits, and to grant back term based on the delay.

          IPR trials, start to FWD take only 1yr.

          Now tell me an opposition could not be done in that amount of time — particularly if the examiner were removed and the opposition was a party on party trial with a decision by 3 experienced examiners who had nothing to do with he original examination?

          In Europe, you apparently do not have a concept that property rights can only be revoked by courts. That is why, I think, you have no problem with post-grant oppositions.

          1. Ned, the “property” idea is interesting. Here in Europe, the idea is that, if you need a patent urgently, in order to assert, you ought to be able to get it, straightaway, on request. See the EPO PACE program of expedited examination.

            And when you get your patent, you should be able to assert it straightaway and, in appropriate cases, get interlocutory injunctive relief from infringement. Pre-issue opposition frustrates this public policy imperative.

            But with post-issue opposition, a court can enjoin the infringer one day after issue, whether or not the infringer opposes. Of course, the judge, in contemplating whether to grant interlocutory injunctive relief, will give weight to preserving “the status quo” in the marketplace. So speed is of the essence, when petitioning for interlocutory relief.

            I think that the notion of “property” is not as compelling as the notion that those little guys who file on patentable inventions should be able, on request to the courts, to be given prompt and effective relief from infringement by Big Corp. Only an injunction will serve.

            1. Max, Perhaps if an “accused infringer” (served with allowed claims) files the opposition pre-grant, he would have to pay a RR to the applicant over the period of delay if he is found to infringe any claim in the confirmed patent. I would still require the whole procedure be done in one year.

              1. Ned as I say, when Big Corp is bent on putting the Little Guy out of business, only an injunction will do, to keep the little guy alive long enough to win through. Europe doesn’t do punitive damages or criminal proceedings for ordinary patent infringement cases.

                And anyway, since 1978, when the EPC came in, Europe has provided a RR as from the date of 18 month publication of the A document. Art 67 EPC I think it is. They did think of that one!

                The trick is to have courts experienced enough to decide accurately between the good patents that give the public something it never had before, and the bad ones that depriove the public of what it already had. We learned to express it like that from the words of a judge in the USA, if I’m not mistaken.

                1. The trick? How can courts decide which patents are good and which are bad when the courts are all but excluded from deciding validity?

                2. Max, I also see that you have resisted every suggestion to set time limits on oppositions, and to remove examiners — meaning, no amendment to the claims.

                  I have suggested this before I will say that again here that an IPR or an opposition is a very bad place to discuss amended claims that have not been examined in the 1st place by an examiner. What the applicant/patent owner should do if he wants amended claims is to file them in a reissue/continuation where, after complete examination, they too can be opposed. But the IPR/opposition should only be concerned with the patentability/validity of allowed/issued claims.

                3. Ned,

                  What about time limits (2 years on broadening reissues) and the requirement of a live family member in order to file a continuation?

                  While I “get” what you want to do with post grant review, your desired constraints have their own logistical difficulties.

                4. (and I would add the reminder that it has become somewhat common practice now to try to keep at least one family member “alive” for continuations, exactly per the limitations reflected in your post and the “anti-patent” atmosphere of judicial patent profanity – and that this “keep alive” practice is something that certain to-remain-unnamed-non-listed-non-prosecuting types have expressed as a “bad thing”)

              2. Ned,

                The R R avenue is not good enough – as I have already mentioned to you (and to which you already agreed).

                All that does is prompt more of the same bad behavior from Big Corp, who would love nothing more than to make the patent right a “speed bump” and not a show stopper.

                To Big Corp, a R R is a green light to infringement.

                What’s the worst that could happen? IF they are caught, and IF the patent holder has enough cash to engage in an enforcement battle and IF the patent holder can withstand the wave after wave after wave of post grant reviews…. then Big Corp merely pays a “going rate” as if negotiated from day one….?

                Way too much upside for Big Corp to infringe and far too little downside NOT to infringe.

                The answer to all of this is the opposite path: make patent rights STRONGER. Making patent rights weaker only breeds more problems and more problems driven by Big Corp. who can – and desires to – fight “the game” on non-innovation, size and established entity factors.

                1. anon, I somewhat agree with your last three posts, but recall that in an IPR, claims cannot be broadened anyway — so a conventional reissue should suffice.

                  Given the brave new world of PGR’s, it would be foolish not to file that continuation/reissue divisional so that it might be pending when and/or if a PGR is declared. That is nothing more than common sense and not an abuse of any process.

                2. It would almost be malpractice not to have a continuation perpetually open, eh?

                  And yet, such a thing would be offered as scorn for g-g-grifters and such.

        2. How much of “the problem” really is a “problem?”

          What you have here – and what is reflected in The Economist – is a bunch of propaganda.

          About that “Tr011” problem, how is it that NO ONE has taken a concern that the propaganda piece by the Executive office, called out by Ron Katznelson, has not been rectified? It is now mid-October. The answer to Ron’s motion was due in the normal course in what, June? Overdue in July? Really late in August? AWOL in September? What is the apt description now? What is the “polite” description? “Delinquent?” “Tardy?”

          Sitting here in Europe, one gets sick and tired with criticism of “the patent system”,

          How do you think we here in the US feel?

          And yet forums, such as this “esteemed” one, are overrun with certain anti-patent viewpoints for whom it appear no “politeness” rules apply. No effort at constraining the runaway monologues, the sAme short scripts.

          The present example, MaxDrei – your own “convenient” overlooking of this sovereign’s view on property rights. Such are key to the discussion here, and yet, none of your posts reflect that important, neigh critical, element. Instead all you want to do is hand over your own pair of glasses and say “here, wear these, they help my eyesight.”

          1. Per Ron’s generous link on the “Patent Tr011s” thread, the 60 day window for response of the correction made per the request asked for by Ron elapsed on May 30, 2015.

            As of today, that is 136 days late than that first due date..

            Not within the first 60 days.
            Not within an additional 60 days.
            Not within a third 60 days.
            We are now within a fourth 60 days.

            The silence is deafening.

          2. You ask how do we feel in the USA, about the steady stream of criticism of patents, like in The Economist recently. I think you feel that it is ignorant criticism, criticism of patent systems the whole world over. I’m just pointing out that the criticism it makes fits with the USA but nowhere else.

            There are plenty of aspects of patent law in Europe that The Economist could criticise. Of course there are. Mostly on the enforcement side. But one has to understand it first, before one can credibly criticise.

            1. And I am pointing out that it – in fact – does NOT fit the US.

              The point of the matter is that the “criticism” is nothing but propaganda. Saying “it fits the US” is part of the problem.

              But one has to understand it first, before one can credibly criticise

              The irony of that statement is truly awesome.

              How little it is of that “understand it first” that is part and parcel of the sAme tired scripts so often trotted out here in the anti-patent rhetoric?

  2. Much like as with voting rights, that once established, the legislature is not free to do “whatever they want,” the plain fact of the matter here is that patents ARE property – personal property at that.

    1. the Court vitiated much of the core content of “private” rights as a concept and left resolution of the central issue to a balancing test. That is, “public” rights are, strictly speaking, those in which the cause of action inheres in or lies against the Federal Government in its sovereign capacity, the understanding since Murray’s Lessee. However, to accommodate Crowell v. Benson, Atlas Roofing, and similar cases, seemingly private causes of action between private parties will also be deemed “public” rights, when Congress, acting for a valid legislative purpose pursuant to its Article I powers, fashions a cause of action that is analogous to a common–law claim and so closely integrates it into a public regulatory scheme that it becomes a matter appropriate for agency resolution with limited involvement by the Article III judiciary.

      1. The last part, which is the subject of the government’s brief is pretty damning.
        Logical proof
        1)The majority of the patent power is vested in Congress
        2)congress has delineated the event to which patents are property in the 1952 act
        3)congress has the right to alter the extent of the property right so long as it is a public right
        4) public rights are those that are analogous to common law claims
        5)even if there is a common law claim a public right can still exist depending on the level of congressional involvement via a “balancing test”
        5) see 1) again
        6) patents are a public right.

        Your move

        1. T, it would be nice if you identified the case and brief you are quoting from.

          Regardless, I do not dispute much of what the government says there; but the brief never addresses the law. See below for more.

          4. is not an accurate summary of what a public right IS. Public rights are rights of the government acting as a sovereign — in exercising its traditional functions (taxation, customs, etc.) — pursuant to its delegated powers. While the government does not have to be a party, the essential action must be an action by the government as a sovereign. Private rights, like property, are excluded from the doctrine per Stern citing a number of prior cases.

          Moreover, it is the law is that if a cause of action was actually litigated in the courts of England at common law, it categorically is not a public right and must be tried in an Article III court.

          The government brief, on this issue, simply punts.

            1. T, I’m sorry, I still do not know what brief you are talking about or what Cornell is talking about. Can you provide some indication of what brief you are discussing and if you could, could you provide a link to the Cornell discussion you reference?

                1. Seems to have stopped in 1989. Does not discuss Stern v. Marshall.

                  Regarding regulatory schemes, think ITC and Hatch-Waxman — both commerce clause regualtory programs. Both involve the litigation of patent validity and infringement – the former in an agency, the latter in court. But I would contend that Hatch Waxman could be entirely transferred to an Article I agency.

          1. Is Stern v. Marshall the most recent precedent or is there a later case?

            I am becoming fascinated with this issue.

            I still think my initial opinion is correct.

            Stern v. Marshall dealt with the Bankruptcy Court dealing in tort claims.

            “Here Vickie’s claim is a state law action independent of the federal bankruptcy law and not necessarily resolvable by a ruling on the creditor’s proof of claim in bankruptcy. Northern Pipeline and our subsequent decision in Granfinanciera, 492 U.S. 33, 109 S.Ct. 2782, rejected the application of the “public rights” exception in such cases.”

            Stern v. Marshall 131 SCt. at 2611.

            1. Our decision in Thomas v. Union Carbide Agricultural Products Co., for example, involved a data-sharing arrangement between companies under a federal statute providing that disputes about compensation between the companies would be decided by binding arbitration. 473 U.S. 568, 571-575, 105 S.Ct. 3325, 87 L.Ed.2d 409 (1985).

              This Court held that the scheme did not violate Article III, explaining that “[a]ny right to compensation … results from [the statute] and does not depend on or replace a right to such compensation under state law.” Id., at 584, 105 S.Ct. 3325.”

              1. The PTAB’s lack of a right to trial by jury results from Congress ensuring that they issue a VALID Patent and does not depend on or replace a right to a trial by jury for Patents that ARE valid and.

                1. Thomas is a dynamite example of the type of administrative claims that survive the public rights analysis — a legislative enactment mandating data sharing between pesticide companies.

                  Can you find an antecedent at law, equity, or admiralty?

                  Now compare with the claim of patent validity, and its many centuries of history at law or equity.

                  Are you starting to see the problem here?

                2. That is dicta that justifies a holding on a taking clause case.

                  It is an admission that patents were considered personal property—-in 1882.

                  so yea… there was something that happened in 1952 that may have changed that.

                3. T, if there is a right to a trial by jury, Granfinanciera holds that such are not public rights and must be litigated in Article III courts.

                  Thus the holding of the Supreme Court that actions to revoke a patent for invalidity had a right to a trial by jury is controlling law on whether a patent owner has a right to a trial by jury and a right to a trial in an Article III court under Granfinanciera/Stern.

                4. It is an admission that patents were considered personal property—-in 1882.

                  so yea… there was something that happened in 1952 that may have changed that.

                  Nothing in 1952 changed that portion of the law.

                  Please, please, please, have SOME backing for your “theories.”

                5. Topce,

                  Maintenance fee has nothing to do with “patent being a private property”

                  Think about yearly registration fee for Car, or yearly Property tax for your house etc. I can go on and on ..

                  As you know Car and House are not “Public Property” they are private property.

              2. T, Thomas is no different than Crowell v. Benson. It was a newly created right that had no analogous right in “state law” which appears to be a code word for actions litigated in the courts of England at common law.

                Whether this extends to statutory created state rights that are now exclusively federal because of preemption is an issue has not been addressed by the Supreme Court. But patents were known at common law and states issued patents in America prior to 1790.

              3. Anon I do.

                The subsequent amendments including the AIA, which you rally against, imply that congress intended patents to be a revokable lisence from the government.

                Evidence: nearly everything from maintenance fees to ex parte reexam to reissue.

                Nobody liked Patlex went it came out. And now because this proceeding “looks like” an article I adjudication, you want a do over.

                I am slowly catching on to the B$.

                1. You seek an “implication” while the words of Congress are explicit.

                  STOP trying to force the law to your desired ends and learn to understand what the law IS.

            2. T, There are two later cases that deal primarily with Stern claims and with whether one can voluntarily waive his Article III rights. See Executive Benefits I quoted before, and Wellness v. Sharif that the Supreme Court issued in June. You can get that opinion from the Supreme Court site.

            3. T, the Supreme Court addressed a statutorily created right in Granfinanciera v. Norberg, and held that it was not a public right because there was an analogous right litigated the courts of England at common law.

                1. The outcome here is far from clear. This was about whether submitting to adjudication precludes the right to an article III review.

                  Well of course not.

                2. Ok I am not sure how matters of equity in bankruptcy cases have relevance to patents.

                  However it appears to me based on te caselaw on “public rights” that a patent cannot be revoked without a trial by jury.

                3. The problem is the government can still argue that patents are invalid unless they can pass IPR. IPR is merely part of the examination process. I don’t know how you can get around that argument.

                4. The “examination process” ends with the initial grant.

                  Once the property leaves the Executive branch that very first time, (personal) property rights are established.

                  Once established,….

                5. anon the problem is the government can argue that the patent never leaves the executive and legislative branches.

                  A patent is property but more like a unilaterally revocable lisence.

                  Do you think maintenance fees are unconstitutional?

                6. Topce,

                  Maintenance fee has nothing to do with “patent being a private property”

                  Think about yearly registration fee for Car, or yearly Property tax for your house etc. I can go on and on ..

                  As you know Car and House are not “Public Property” they are private property.

      1. Maybe because Congress was explicit about this…

        (just a thought)

        Another thought – brush up on your statutory construction.

        1. Well again. Not really. Part of statutory construction is to look at the statute as a whole. Other parts of the 1952 act and subsequent amendments are inconsistent with that intent or may override it.

          One thorn you have to deal with is the fact that reissue and reexamination were passed by Congress.

          You can’t pick and choose the parts of title 35 that you like and ignore the parts you don’t like.

          1. You really need ot learn how to read and understand statutory law – including the time elements of changes to that law.

            Your statement of “You can’t pick and choose” is simply off point.

    1. Hotel Security is relevant to 101. The analysis in both Mayo and Alice is that announced in Hotel Security. Hotel Security was prevailing law on business methods until State Street Bank “overruled” it.

      1. Wrong on so many levels Ned.

        And you have been informed of this by Prof. Crouch and shown so by David Stein.

        It is unethical for you to continue your blatant L I E S in advocating on this social media forum.

            1. anon, we have to much history to bash each other. We agree on some things. Disagree on others. That is life. But we should treat each other with respect.

              1. Yes we should.

                Please begin to do so by stopping your monologues and properly consider the counter points presented for discussion.

                Take those discussions to their logical conclusions – no matter how inconvenient that will be for your dogmatic pursuits.

                1. Thanks Ned – if it is any comfort, I do recognize that often your posts here are NOT personal posts and that you feel constrained by your obligations to your clients.

                  HOWEVER, I would point out (again) that the original guidelines to posts on this blog dictated that ALL posts were to be of a personal nature.

                  I also grant that these ground rules have (for some unknown reason) been made very difficult to find.

                  Go figure.

  3. At 6111122 in this thread Ned writes:

    “The Supreme Court already held in ex parte Wood & Brundage that actions to revoke a patent for invalidity had a right to trial by jury.”

    and that lifted my eyebrows. Two questions:

    Ned, how can I read this case, please.

    Does that settle the issue, definitely. Is there any way around it?

      1. David, regarding “advisory action,” do you mean, and I think you mean, that a winning petitioner must still file a declaratory judgment action for invalidity to obtain a court order to cancel the claims? If there is pending litigation that was perhaps stayed, the stay could be lifted and the decision of the PTAB considered?

        I think this is actually required by Stern/Executive Benefits/Crowell v. Benson.

        1. Ned, again, correct, with the caveat being that the Dist. Ct. would retain discretion as to the weight given to the advisory opinion. My guess is that the advisory opinions would be largely rubber stamped. The prevailing example is the way the Dist. Cts. treat Article I ITC judgments, which lack collateral estoppel effect. If you lose before the ITC, it is very hard to then win in Article III Dist. Ct. Of course, this is not an absolute rule.

          After Wellness, a patentee could consent to the Article I PTAB’s jurisdiction. Why would a patentee do this? Congress could incentivize it. Cost-savings is a door that swings both ways, particularly if Congress harmonizes the administrative standards (BRI, preponderance, etc.) with the Article III rule.

            1. Of course, you realize that all of this “nicety” would have to be actually passed by Congress after the IPR – as passed by Congress – is ruled unconstitutional, with the concomitant destruction of the entire (because that’s how Congress explicitly wrote it) AIA, right?

    1. Max, if one only looks at Supreme Court precedent, the fact that actions to revoke patents for invalidity were actually litigated at common law should be enough. The fact that they had a right to a jury trial is icing on the cake. The fact that the US Supreme Court has also ruled that statutory actions to revoke a patent for invalidity had a right to jury adds a nice ribbon and a bow.

      So, if one only looks at controlling law, the answer to the constitutionality issue is clear.

      But the government insists that any right created by statute, that affects the public, nevertheless is a public right.

      If this proposition is correct, and I argued this point in our briefs and at oral argument, then all federally created rights are public rights. All. There would be no right to an Article III trial for any statutorily created right and no right to a jury trial.

      Why is this so? If a matter is a public right, there simply is no right to a trial in an Article III court or to a jury.

      To achieve this result, the Supreme Court would have to find overruled a wealth of contrary precedent, including Beacon Theaters (trademarks), Feltner (copyright), and Markman (patents), that have all determined there to be a right to a trial by jury in actions for damages.

      1. The common law right would be the jury trial right correct?

        Aren’t there certain instances (administrative ajudication for example) where there is no right to a trial by jury?

        1. T, under Murray’s Lessee->Stern v. Marshall, the “right” is the right to have one’s case heard in an Article III court. It is a “structure of government issue.” From Marbury, the question of validity of property is for the court.

          An Article I court acting without constitutional jurisdiction cannot issue a decision that has the force of a judgment. That actually was the holding of Stern — because the decision of the Article I tribunal in that case was without constitutional jurisdiction, its decision had no collateral estoppel effect.

    2. Ned has fired his torpedoes at the good ship AIA Titanic.

      What seems like the (rather large) elephant in the room is what happens to this particular law if his torpedoes find their mark.

      The court simply does not have the option to effectively rewrite statutory patent law (designated by the constitution for only the legislative branch to write) and reach a condition that that branch explicitly rejected (separability).

      Maybe an academic is willing to step up and put forth a cogent argument….

      1. nothing in practice. IPR would be an advisory then? So courts would probably give the decision deference under section 700 of the APA

        1. T, read Executive Benefits for more on a so-called Stern claim. Executive Benefits Ins. Agency v. Arkison, 134 S. Ct. 2165, 573 U.S., 189 L. Ed. 2d 83 (2014). link to scholar.google.com

          “In Stern v. Marshall, 564 U.S. ___, 131 S.Ct. 2594, 180 L.Ed.2d 475 (2011), this Court held that even though bankruptcy courts are statutorily authorized to enter final judgment on a class of bankruptcy-related claims, Article III of the Constitution prohibits bankruptcy courts from finally adjudicating certain of those claims. Stern did not, however, decide how bankruptcy or district courts should proceed when a “Stern claim” is identified. 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.”

          Also, note, the government does not have constitutional standing to participate in such Stern action. United States v. Glaxo Group Ltd., 410 U.S. 52, 93 S. Ct. 861, 35 L. Ed. 2d 104 (1973). Further, unless the petitioner has been accused of infringement, neither does the petitioner. CONS’R WATCHDOG v. ALUMNI RESEARCH FOUND’N, 753 F.3d 1258 (Fed. Cir. 2014).

  4. Just read the petition. I find it unpersuasive.

    1) there was a bill floating around that was going to amend the AIA to have IPR adopt Markman claim construction. This bill never passed committee. If this isn’t an implicit acceptance of BRI, I don’t know what is.
    2) the idea that the PTO has no authority in terms of substantive rule making is absurd. The statute states that the director has authority over procedural rule making. It doesn’t say the director lacks substantive authority. Substantive authority is implicitly afforded to every agency under the APA.
    3) even if they lack substantive rulemaking authority, the PTO can still conduct ajudication under the APA. ” Congressional silence” on the issue means that they were affording the PTO deference to determine proper claim construction.

    4) congress intended to make IPR an article I tribunal without article III standing requirements. Standing is much more lenient under the APA.

    5) the petition here makes up a false distinction between liberal and illiberal amending authority. At district court, there are NO amendments. So the fact that respondents can amend AT all, makes this an article I issue.
    6) amendments have NEVER been a matter of right during the appeal stage. They are entered at the examiner’s discretion. There should be no reason the board shouldn’t have the same discretion.

    7) the petition does not clearly argue that congress exceeded its authority in drafting the AIA. Congress has the right to establish the PTO and should therefore be allowed to create an ajudicative arm of the PTO.
    8) “final and nonappealable” is under “this section” convieniently, this is excluded from the arguments. “This section” does not include the APA. This is the only part that I think has legs. But the brief does not make arguments about the APA.

    1. Read the Tafas case – and then go back and re-review your admin law (you are – yet again – de@d wrong, as the authority does in fact vary, and varies per the charter for each agency).

        1. You are saying that Tafas holds that the PTO has no substantive rulemaking authority. Except that it was not an en banc decision at the Federal Circuit.

          Until the Supreme Court rules on it, it is still up for debate.

              1. What “seems to you” is so very often simply a bad interpretation on your part.

                You’ve come from no where and have bombarded the blog in the last week or so with a level of non-understanding that is rather staggering.

                1. Again, you conflate your legal philosophy with the law and when people disagree with you you say they don’t understand the law.

                  I understand every concept that you raise, I just don’t think they have any relevance.

                2. You yourself are making the mistakes you want to attribute to me.

                  Your base of expression, so geared to “feelings” and “philosophies” and unmoored as it is from the foundations of law are simply unpersuasive.

                  Anyone can have an opinion.

                  Having an informed opinion (and yes, informed by the history you so apparently disdain) is a feature and not a bug.

                3. I know the foundations of patent law. I just think they no longer apply to the modern world.

                  So my opinion comes from a rejection of tradition.

                4. They no longer apply..?

                  And who made that decision?

                  Was that decision grounded in law?

                  Was this “no longer” a mere dictate by some “philosophy,” or overthrow of the rule of law?

                  Your opinion is yours (and everyone has a right to one), but not everyone’s opinion merits weight in a legal discussion. And it is not my view that sets that weighting – clearly.

                5. You talk as if I seek to overthrow the “rule of law”

                  The “rule of law” does not exist. and never has.

                  Meditate on that one for a little.

                6. What kind of answer is that?

                  Of course the rule of law exists. That’s how we know when we are off course (like recently, with certain decisions).

                  Check yourself again and that oath you swore. If, as you now posit, there is no rule of law, what does your swearing to the Constitution even mean?

                  I am NOT the one that needs some rather serious reflection. That my friend would be you.

              1. Tafas was the subject.

                The Office is not in fact free to “try again.”

                You want me to stop telling you to re-read things, and yet you show no sign of reading (and understanding and integrating that understanding into your position).

                Tell you what – I am perfectly willing to stop telling you to read the items when you show that you have read (and understood and integrated) the items I tell you to re-read.

                Deal?

                1. Why would estoppel apply to the PTO in a case that came before Zurko and was never appealed?

                  I understand your points. The legal concepts you raise are just irrelevant.

                2. Whoops Tafas did come after. Still doesn’t matter.

                  Supreme Court hasn’t addressed the issue.

                  Pto has been making “substantive rules” since Tafas. They just call them “guidance”

                  A questionfor you.

                  Does thr PTO’s guidance get skidmore deference? What about the MPEP?

                3. You ask about the MPEP and the document already tells you.

                  Please inform yourself to a minimum level before commenting (and ideally, before you set your philosophy).

                  This is not the first time you have ventured an opinion that shows total ig norance of the subject matter (e.g. patent term).

    2. T, were patents created under the commerce clause and were patents, patent infringement and patent revocation actions unknown at common law, then I would tend to agree with you on all points about congress’s power to create a patent validity litigation tribunal in the PTO.

      But the law is the law, T. Congress does not have the power you think it has. Do you have any idea why?

      1. The answer Ned wants: Because patents are a right based in equity that is pre-constitutional.

        The truth: Congress can do whatever the heck it wants unless the judiciary says otherwise. On every issue. That is called Seperation of Powers.

        1. If nobody is there to enforce the right “at equity” does the right still exist.

          There are no “natural property rights” either. Somebody comes you your house with a gun and you die and they take your property. Absent somebody with a bigger gun (i.e. the government), you have no inherent property rights.

          You and anon want to go back to fundamentals. So lets do it.

          “We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness. — That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed, — That whenever any Form of Government becomes destructive of these ends, it is the Right of the People to alter or to abolish it, and to institute new Government, laying its foundation on such principles and organizing its powers in such form, as to them shall seem most likely to effect their Safety and Happiness”

          The whole founding of the country is based on the idea that when systems don’t protect the rights of the governed, the governed can tear down the system. The patent system does not protect the rights of anyone but a select few. You and anon are among those few, which is why your views are skewed.

          Congress represents the will of the people. “The People” seem to want 101 “The People” want IPR. The judiciary is overreaching if they try to get in the way.

          1. Hmmm, now let me see, where does the “will of the people” factor into the SCOTUS case law governing the applicability of the public rights exception?

          2. T, just to clarify, a patent is a legal right.

            Equity seeks justice by balancing right and wrong and enforcing ethics and morals. It also grants remedies such as injunctions, specific enforcement of legal obligations like the obligation to execute a legal assignment of a patent, rescissions of contracts, correction of mistakes in legal documents.

            In England, equity cases were heard in Chancery. So were patent invalidity actions, but they were filed on the “law” side of Chancery. The remedy of revocation for invalidity was a legal action and had right to a jury trial.

            As such, under the 7th Amendment, such actions retain their right to a jury trial and must be tried in an Article III court.

              1. Let me ask you David,

                Did the DOJ not recognize that that there was more than one side to the Chancery, and that it was not true that being in the Chancery automatically made the item a public right…?

                Do you?

                (I am presuming – gasp – that Ned is correct in his point here)

                1. The DOJ by and large bypassed this point altogether. Whether at law or equity, the result is necessarily the same. At this stage, I must sound like a broken record.

                  As I have pointed out before, take a look at the prior public rights cases. What sort of administrative claims survive the High Court’s public rights scrutiny? Are they thing like the claim of patent validity, with considerable history at law or equity?

                  As both Cooper and MCM have pointed out in briefing, does the fact that the SCOTUS declined to mention the PR exception altogether when previously holding that the claim of patent validity (invention) must be exclusively resolved in the Article III courts seem significant?

                  To your question:

                  In my view, the DOJ relied heavily on the CAFC’s Joy decision, and more or less parroted the points made there. The case is short, and is a must read:

                  link to law.resource.org

                  J. Newman’s mistake-based rationale from Patlex has been all but abandoned (as presumably indefensible).

                  Realistically, *IF* the SCOTUS must save IPR — assuming that it grants cert and wishes to do so in an intellectually honest way — it will have update the rule of law governing the public rights exception. My guess is that J. O’Connor’s Schor would be instructive in this regard. After Stern, Executive Benefits, Horne, and B&B Hardware, this seems exceptionally unlikely, however.

                  C.J. Roberts has repeatedly stated that his Court will mark a return to predictable separation of powers principles.

                2. Thanks David.

                  I have little faith in anyone on the Court saying that they will restore separation of powers when that selfsame Court is violating that selfsame separation with their meddling in the legislature’s authorized role of writing patent law.

                  But as you said, anything is possible with cert grants, so we shall see.

                3. anon, the government seemed to think in its brief that if it proved that an IPR was like an action in equity that it could win, it simply failed to understand that did not solve its problem under Stern, etc.. So, even if an action to revoke a patent were deemed to be equitable, it was still litigated at common law and that is all that is required for such an action to be categorically excluded from the public rights doctrine under Murray’s Lesee that held that the public rights doctrine it there recognized did not extent to matters actually litigated in the courts of law, equity or Admiralty at common law. These must still be litigated in Article III courts.

                4. David, your post is why I thought necessary to demonstrate that an action revoke a patent for invalidity actually existed at common law — to squarely find a place in the Murray’s Lessee exception. It may not be enough that McCormick Harvesting failed to mention the public rights doctrine.

                5. Ned,

                  I’m rooting for you on this one.

                  I’m just waiting to see how long people can avoid the elephant if you win.

                6. Ned – your “October 8, 2015 at 7:48 pm ” post is the best post in this thread. Keep preaching the good word.

                  Consider the logical consequence of the DOJ’s position – any claim with antecedent at equity (as opposed to law) may be removed from the Article III courts altogether. Such a holding would represent a staggering curtailment of the judiciary’s power.

                  Patently-O – America’s leading Article III source. Apologies to Pr. Crouch; in time, this will pass, one way or another.

                7. David,

                  Your seemingly off-hand remark of “Patently-O – America’s leading Article III source.” may be more on target than you realize.

                  Both Prof. Crouch and Ned Heller have actively voiced (albeit the Prof.’s “active” is far less “active” than Ned’s) a view that judicial law making through the mechanism of common law is the best way for law to develop into a superior legal system.

                  There is one MAJOR problem standing in the way.

                  Our constitution does NOT allocate common law writing power to the judiciary when it comes to the purely statutory law that is patent law.

                  This power is allocated ONLY to one particular branch of the government: the legislature.

                  Yes, that branch can (and in certain instances, has) shared that authority. I have remarked on such sharing, and pointed out when the Congress has done so.

                  Critically, Congress not only has not done so in the realm of 101/102/103/112, but in the Act of 1952 explicitly removed the power of the judiciary (previously shared) to set the definition of “invention” by the judiciary through the mechanism of common law development.

                  I have chided Ned on numerous occasions to watch the movie “The Paper Chase (the 1973 version) and pay attention to the sage advice given by Prof. Kingsfield at the hour and six minute mark. While a work of fiction – that sage advice seems to be purposefully avoided here by those who should know better.

                  Ned even volunteered an article written by Judge O’Malley concerning the dangers of legislating from the bench – and an admonition from the plethora of advocates – attorneys and academia – that so actively engage in that danger in today’s desire to reach certain “philosophical” ends no matter what the means.

                  Far too many people seem perfectly fine with a total lack of scrutiny on means in the pursuit of ends. As attorneys intimately involved with shaping the law, we should be especially aware of this danger, and NOT diametrically opposed to the seemingly knowingly abdication of this basic idea that the means really do matter.

                8. Well, anon, let me second you on one point. I do not like Bilski at all — determining the claims there as ineligible based on an “exception.” To me, that is judicial legislation.

                  The claims were either statutory or non statutory. That was the question they had to decide, but there avoided.

                  Hopefully, the court recognizes its error. Myriad squarely held that the so-called exceptions were a guide to statutory construction. As such, the Holding in Bilski could be reinterpreted in the same way.

        2. T, “congress can do whatever it wants….” unless stopped by the judiciary.

          Somewhat true. But, sad in a way, wouldn’t you agree? — given that the whole point of Article I was to grant congress enumerated powers beyond which they should not tread?

  5. Grant cert on II but not I perhaps.

    I. Is fairly well established by congressional intent. Especially considering the fact that there was an amendment to make IPR into a markman style cc that didn’t get passed committee

    However there needs to be some circumstance where the director’s decision can be reviewed. The APA is probably the appropriate means for doing so. I think if cert were granted the supremes would hold that an arbitrary and capricious standard would apply to Director Lee. Collateral challenge under the APA would probably be the means for doing so.

      1. The petition quotes chapter and verse — by statute the petition must provide the evidence and argument for every claim. To institute on different grounds mocks the statute. It exceeds the statutory grant of authority.

        1. The statute very clearly says no appeal. There is no question of statutory interpretation here. What else is there?

          On what basis can Article III court saunter into the realm of the Article I courts and instruct them on how to manage their administrative claims per the express dictates of the statute?

          1. In a prior thread re this issue, Pr. Crouch wrote:

            “The fuss stems from administrative law and the Constitution that give folks a right to go to court when their rights are being violated”

            On this point, he is patently wrong. There is no constitutional right to a day in an Article III court where dealing with an administrative claim (i.e., a public right). It’s a legislative claim per the public rights classification, and there it may stay should Congress decide as such. The point is foundational. Murray’s Lesse, 59 U.S. 272.

            1. David, slowly, the patent attorneys are learning a little con law by paying attention to our conversations.

              Yes, public rights and a right to a day in court are mutually exclusive according to Murray’s Lessee. Congress can place the decisions involving public rights beyond jurisdiction of the courts so that the only decision a court has to make is whether the particular matter is a public right or not.

              If a matter is not a public right, but a private right like a property right, congress cannot withdraw from the courts either the validity or the infringement of such a right to the extent that such actions existed at common law. But newly created rights, not known at common law — they might be public rights.

              Now consider Hatch-Waxman. To me, this seems to be a public right — a newly minted right created under the commerce clause. I think congress could have placed decisions here entirely within an administrative agency if it wanted to — just like it did with the ITC. Infringement, validity — all decided by ALJs. No problemo, except perhaps, with collateral estoppel. That is why ITC rulings on validity and infringement have no collateral estoppel effect.

              1. Ned, you are absolutely correct – with the key question being whether the claim of patent validity is in fact a public right. At least for now, it is per the CAFC.

                1. Ned – I am very aware of the arguments. The point I am trying to make, however, is that current, controlling judicial authority establishes that the claim of patent validity is a public right. You, me, and everyone else can rail against it all day long – doesn’t change the fact that the decisions are binding.

                  Do you believe that this issue is on the SCOTUS radar?

                2. “Controlling judicial authority”

                  Patlex is not consistent with controlling judicial authority. The SC ruled in Markman that patent infringement actions have a right to a jury trial. As such, patents cannot be public rights.

                3. Right, but the relevant question is whether the claim of patent validity is a public right. As for now, Patlex and Joy establish the rule.

                4. The presumption of validity – that which you are challenging in your action – is one of the sticks of property rights in the bundle that is the patent property.

                1. Anon is trying to trick you into admitting that the portion of the patent act that says for the purposes of assignment patents are to be treated as property means that patents are property for all purposes.

                2. All I will say is this: per the classification of the claim of patent validity as a public right, it may be resolved conclusively by the administrator. The Legislative branch thus retains the discretion to remove the claim from the Article III courts altogether. This likely sounds controversial; it is, however, axiomatic.

                3. Topce,

                  Another botched job from you and your lack of ability to understand statutory law:

                  Subject to the provisions of this title, patents shall have the attributes of personal property.

                  Title – not section.

                  One of the aspects of that property then has to do with assignments. Assignments is NOT the sole purpose of the statement by Congress explicitly setting forth that patents are personal property.

                  I am very much struck with the thought that you got through law school by being a sycophant to your professors and have no real deep abiding understanding of the law. You have your “feelings” and “philosophies” that drive and filter your knowledge of the law, as opposed to the opposite of first garnering an understanding of the law, and then developing a philosophy based on that understanding.

                  Wake up son.

              1. Anon’s English isn’t the best here but he’s asking how something that was expressly given the characteristic of “property” by congress being deemed a public right. At least I think this is what he’s asking, especially since he’s asked it again and again.

                Problem is that anon, and Ned, are barking up the wrong tree, in the wrong forest, so to speak. Instead of the forest of infringement actions against potentially infringing parties (where all the decisions about jury trials and everything still apply and where patent validity is a “sideshow” so to speak), the congress has created a new forest that solely involves the issue of patent validity, and made the right to challenge it a public right.

                Ned and anon of course think that the patent right itself being property makes the jury trial protections that they enjoy in infringement proceedings extend to all determinations of validity. Not necessarily. And especially not necessarily when there is a brand spankin new congressionally created administrative review route. Frankly I think congress wins here.

                1. 6, have you read Marbury, McCormick Harvesting, Murray’s Lessee, Crowell v. Benson, Granfinancieara v. Norberg, Mowry v. Whitney and ex parte Wood & Bundage?

                2. “Ned and anon of course think that the patent right itself being property makes the jury trial protections that they enjoy in infringement proceedings extend to all determinations of validity”

                  I agree, and this was the point of Lemley’s article on the subject. However, the jury trial analysis is not the public rights analysis. The public rights analysis looks to see whether the claim of patent validity had historical antecedent either at law OR equity. Stern v Marshall (2011). It’s unclear why Ned keeps missing this point. Thus, under either scenario, the claim of patent validity cannot be a public right. At least with respect to the black letter law element of this, this is the checkmate aspect of the question that has the DOJ really scrambling.

                  Of course, and as others have pointed out, perhaps pragmatism will factor if the SCOTUS sits to review the question.

                3. David, I do not and did not “miss the point.” I argued it in our briefs and specifically made the argument at oral argument.

                  Per Granfinanciera, the Jury Trial analysis and the Article III analysis is the same to the extent that one looks to see whether the right was litigated at common law: law, equity or admiralty. The only difference is that a right to a jury trial attaches if the action was legal. Thus if an action has a right to jury trial, necessarily, it must be tried in an Article III court.

                  Lemley clearly establishes that both patent infringement and validity (cancellation) action were litigated at common law and both had right to a jury trial. This means they necessarily must be tried in Article III courts and cannot be public rights.

                  But Lemley is late to the table. The Supreme Court already held in ex parte Wood & Brundage that actions to revoke a patent for invalidity had a right to trial by jury. That seals the deal on Article III as well.

                  Lemley does not address the public rights doctrine at all and seems to have no appreciation that the issues of which he is speaking have a wealth of recent Supreme Court case he appears to know nothing about.

              1. Right, per the public rights classification, Congress can still invite the judiciary’s participation. It can also, of course, rescind that invitation.

                If a private right, then an Article I administrator cannot issue a binding determination on questions of law. With respect to questions of law, the determinations must be “proposed” or “advisory.”

                With respect to IPR, the disparity in relevant standards (BRI, preponderance, etc.) would go to the weight of the advisory opinion in the Article III courts. I imagine that different Dist. Ct. judges would approach this differently.

                Congress could also incentivize litigants to consent to the PTAB’s Article I jurisdiction (discounts!)

                1. Congress could do lots of things.

                  But even Congress cannot wantonly violate property rights.

                  That is axiomatic.

          2. David, the Supremes dealt with this in the Leedom v. Kyne, 358 U.S. 184, 79 S.Ct. 180, 3 L.Ed.2d 210 (1958). When congress denies an appeal of a decision, that decision still must be within the statutory grant of authority. The courts may still review on appeal whether the exercise of authority was within that statutory grant.

            1. I see two levels here Ned, but the more important one being the constitutionality of the statute to begin with.

              Perhaps here each and every “i” was not dotted, nor every “t” crossed, and perhaps this initiation fails on that accord, but such is hardly the stuff that the Supremes will bother with.

              On the other hand, your torpedoes already having been launched at the good ship AIA Titanic may make the more pressing “C” issue already determined, and this case a mere “remand in view of Ned” one liner.

          3. David,

            Under the APA for “being arbitrary, capricious, abuse of discretion, or not in accordance with law.” If the PTAB doesn’t follow the procedures it proscribes or violates those in the AIA, that’s a violation of the APA. And the APA provisions are not excepted by the AIA, therefore the APA provisions apply.

            1. Right, but is there a critical question of statutory interpretation here that the SCOTUS needs to weigh in on? Perhaps I’m overlooking it, but I’m not seeing it.

              From the SCOTUS’s likely perspective, Cuozzo had his day in court. Next case.

              1. You are not seeing the property aspect – and in particular for the taking of certain sticks in the bundle of property rights at the initiation, with said initiation without review and without recompense, you have an unlawful taking.

            2. EG, what “rule” did the PTAB violate in Cuozzo.

              I see a clear violation, however, of this statutory requirement:

              35 U.S.C. 312 Petitions.
              (a)
              REQUIREMENTS OF PETITION.—A petition filed under section 311 may be considered only if—

              (3)
              the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including—

              and

              35 U.S.C. 314 Institution of inter partes review.
              (a)
              THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

              Now, I think instituting an IPR with respect to a claim on grounds not in the petition is not authorized. The requirements of 311 would be made illusory if the PTAB could simply ignore the petition and go after any claim on any grounds it chose, and have that IPR supported on the theory advanced by the Feds in Cuozzo that a petition with that grounds “could have been filed.”

              1. Ned,

                By “rule,” I was thinker more generically to include both statute (law) and regulations. What you bring up is a clear violation of the statute, and would be deemed “not in accordance with law” per the APA.

                What the 314(d) prevents per its express language are appeals of IPRs initiated by “following the rules” but where there might be a disagreement as to whether or not the IPR should have been initiated in the specific case. Contrary to what the Federal Circuit majority en banc suggest, it does not screen from appeal failure of the PTAB to follow the statutes or its own rules in initiating the IPR, something the APA proscribes, and which the AIA has not specifically excepted

                In reviewing the petition by Cuozzo Speed for cert, what I find surprising is that there is no mention that I can see of the failure of PTAB to comply with the APA in initiating this IPR. That’s something that David Boundy has brought up earlier. And given the failure you noted of the PTAB to comply with the express language of the AIA statute, that’s a serious violation not only of due process under the 5th Amendment but also the provisions of the APA that the IPR be initiated “in accordance with law.”

    1. If as you indicate [and I do not disagree] that “..[T]he APA is probably the appropriate means” to contest an alleged agency statutory violation, then is not a key question for cert on question II whether or not the cert petitioner has appropriately fully availed itself of an APA proceeding below?

  6. Paul has convinced me that the BRI issue is somewhat academic here without a showing of specific harm to the patent owner.

    On the other hand, the Director clearly exceeded his statutory authority in authorizing the IPR in the first place. Cert. granted on this issue.

    1. Ned – the petitioner is not asking the relevant questions. The questions should be:

      (1) May an administrative claim (i.e., public right) be resolved per the terms established by the Legislative branch?

      (2) May the legislative branch set the terms for the commencement of administrative review of the administrative claim (i.e., public right)?

      The incontrovertible answers: yes, yes – and, in fact, no judicial review is required at any stage per no 2.

      This petition is a byproduct of patent attorneys not understanding administrative law, and/or the willful blindness of the IPR boosters. The SCOTUS will deny this without a second thought.

      1. David, you might want to review Leedom v. Kyne, 358 U.S. 184, 79 S.Ct. 180, 3 L.Ed.2d 210 (1958).

        Congress may deny review of decisions made within a statutory grant of authority (within its power). It may not deny review of decisions made ultra vires.

        The petitioners did not raise the constitutional issue about congress’s power to create IPRs in the first place.

        1. The “judicially unreviewable” aspect of the statute is clear as day. It’s an administrative claim operating an administrative court — if the Article I judges are exceeded their authority per the statute at the granting stage, then this is an administrative issue for the Legislative branch to address, not the judiciary.

          Cuozzo is barking up the wrong tree. Talk to Congress.

              1. In other words, in Cuozzo’s particular case, the question is this: did the ALJ exceed her statutory authority? The question is NOT whether the statute in question may be interpreted to allow for interlocutory review. To put it bluntly, the SCOTUS will not care. This was for the CAFC.

                1. Ugh!

                  David, but the Federal Circuit ruled as a categorical matter. Their decision makes flagrant violation of the law immune from judicial review.

    2. Ned

      I am not surprised you lost at the CAFC, with Prost running the show there is nothing the PTAB cannot do under her watch. When I argued my case(s) to her, she made no distinction between: 1) the PTAB taking an otherwise proper appeal on a rejection and issuing a new grounds of rejection (which they can do); 2) the PTAB re-writing the appealled rejection, and then ruling on that. To her 35 USC 6 is superfluous and the Board can rule not only on “adverse decisions of examiners” but any decision it wants to invent from the underlying record.

      1. JNG, I represent MCM Portfolio LLC, not Cuozzo or Achates. Our case is still pending, and we were to only one’s that I know of that also filed a mandamus petition regarding an institution decision that was “deferred” to the appeal from the final decision. Prost seemed very interested in this point at oral argument.

        The government did not argue that the Court should not consider the mandamus. It argued only that we could not appeal.

  7. The cases cited in the petition, particularly Leedom v. Kyne, appear to hold that decisions within a statutory grant of authority may be barred from appeal by Congress, nevertheless, judicial review always exists to review whether the agency exceeded its jurisdiction.

    “But even when the statutory language bars judicial review, courts have recognized that an implicit and narrow exception to the bar on judicial review exists for claims that the agency exceeded the scope of its delegated authority or violated a clear statutory mandate. See, e.g., Staacke v. United States Secretary of Labor, 841 F.2d 278, 281 (9th Cir.1988). This exception was first recognized in Leedom v. Kyne, 358 U.S. 184, 79 S.Ct. 180, 3 L.Ed.2d 210 (1958).”

    Hanauer v. Reich, 82 F. 3d 1304 – Court of Appeals, 4th Circuit 1996, cited by Hughes in his dissent in Versata.

    The statute in question requires that the petition state the evidence and arguments with respect to each claim. Despite the lack of such with two claims, the IPR was authorized because such a petition “could have been filed and if filed would have been granted given that the same evidence cited against a dependent claim could have been cited against its parent.”

    This is an admission that the IPR was authorized in excess of the statutory grant of authority to the Director.

  8. It will be interesting to see their Brief support for just “plain and ordinary meaning” claim interpretation, because that is not consistent with the claim interpretations variously required in Fed. Cir. decisions for D.C.’s or In re Philips [en banc]. As a minimum, they require looking for specification claim term definitions or limitations and prosecution disclaimers. Also, for what technical words in a claim meant to a POSITIA as of the filing date, which may well NOT be the “ordinary” meaning of the word. [Even a BRI claim analysis should be doing that, per the Fed. Cir. decisions on the “R” [for “reasonable” requirement in BRI. ] That is, a true “plain and ordinary meaning” claim interpretation might in some cases be BROADER than a BRI. That is inconsistent with the usual objection to BRI, which is the allegation that BRI makes it so much harder to distinguish prior art in an IPR that it changes the IPR outcome, even though there is remarkably little exemplary support for that view.

    Furthermore, to avoid this cert petition being a mere request for an academic advisory opinion, the cert petitioner and amicus supporters need to demonstrate how a difference in valid, case law supported, claim interpretation theory would actually change the outcome of this case. I did not even see that even asserted in this cert petition!! [Let me know if you find it.]

    1. Bark, Bark, Bark.

      BRI is not the only problem with IPRs not providing a level playing field. The statute expressly requires proof only by a preponderance of evidence.

      Fixing BRI will not fix other fundamental problems with IPRs.

      Nevertheless, if the court holds that BRI may not be used for issued patents, the, Paul, all reexaminations heretofore are illegal.

    2. Paul, on the merits of your post, you might be right that the petitioner has not shown how the construction in this case would have been outcome determinative.

    1. David,

      I would be curious as to your views of the migration path from where we are at now to this “promised land” of IPR as merely advisory.

      Surely you do not think that the judiciary has the power to so substantively change the words of Congress to fix this in that particular way, do you?

      On a related matter, perhaps you have a cogent path around the “Too-big-to-fail” gambit of the AIA built without bulkheads. With this particular law, the judiciary cannot write into the law a savings clause that was explicitly rejected. You never did share your (supposed) case that is on point to this rather particular setting.

      1. If SCOTUS denies the petitions for cert undoubtedly forthcoming from MCM or Cooper, this issue is DOA. See, however, Horne.

        IF cert is granted, then the SCOTUS to sit to consider whether the CAFC properly designated the claim of patent validity as a public right.

        If the claim is reclassified as a private right by the SCOTUS, then the IPR and reexam statutes will be violative of the separation of powers.

        The SCOTUS will have a number of options available to it. For example, it can merely order the PTAB, etc. to refrain from exercising the unconstitutional delegation of Article III power. The statute thus remains, and the PTABs power is curtailed. Conversely, it can toll the execution of its judgment, giving the Legislative branch time to cure the Article III infraction.

        Finally, these cases exist, and they are not hard to find – I assure you. Don’t think we have forgotten about your gentleman’s D.

        1. David, Reissues are proper because the whole procedure is voluntary – and in the end, the applicant does not have to surrender his patent.

          At best, to be constitutional, all parties must voluntarily agree to the procedure and the ultimate decision must only be advisory to a court.

          I think you and I agree on this.

          1. Ned – I agree 100%. I believe Wellness (2015) ratified the litigant’s consent as a means for curing the Article III infraction. It was a controversial decision, as previous decisions had established that the separation of powers represent procedural safeguards that the individual litigants cannot be expected to protect.

            1. P.S. reissue per McCormick remains constitutional because that administrative mechanism does not re-open the question of the issued patent’s validity. Instead, it allows the patentee to correct non-substantive mistakes — hence J. Newman’s Patlex many, many years later. This was the holding; the consent did not come into play until 2015!

        2. I saw that the 4th circuit kicked its IPR-constitutionality case over to the Federal Circuit, whose panel will presumably be bound by whatever the panel in Ned’s case decides.

          In any event, now that all authority for this issue is consolidated at the Federal Circuit (thus no circuit-split possibility…), I wouldn’t see any reason for the Supreme Court to ever weigh in unless they disagree with what the Federal Circuit does – which of course we won’t know until after the (likely) request for en banc review by the losing party.

        3. Don’t think we have forgotten about your gentleman’s D.

          You are trying to slough off your proof of your point and I won’t let you – that’s not a “D” for me.

          You still need to make your case.

          You have not done so yet. I am graciously giving you another shot.

          1. It’s your credibility at stake, not mine.

            As soon as this Article III issue is resolved, I’m long gone.

            Now, find me my cases, sport.

            1. It’s your credibility at stake, not mine.

              Absolutely false – you are still trying to slough off the point that you need to back up.

              It very much is your credibility.

        4. to refrain from exercising the unconstitutional delegation of Article III power. The statute thus remains, and the PTABs power is curtailed.

          That does not work like that. The statute – AS A WHOLE – falls.

          And again, you use the word “toll,” but that does not mean what you seem to want to imply it means. The “bad” law falls – and it falls completely. You cannot limit the “tolling” with the AIA as you think you can.

          Sure, the Legislature can act – in fact, the Legislature must act. But your version of that is simply off.

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