Strategic Decision Making in Dual PTAB and District Court Proceedings

By Jason Rantanen

Saurabh Vishnubhakat (Texas A&M), Arti Rai (Duke) and Jay Kesan (Illinois) recently released a draft of their empirical study of Patent Trial and Appeal Board proceedings, Strategic Decision Making in Dual PTAB and District Court Proceedings.  Their study takes a close look at the relationship between IPR and CBM proceedings and district court proceedings to assess the “substitution hypothesis”: the claim that post-grant review is “an efficient, accessible and accurate substitute for Article III litigation over patent validity.”

In addition to an array of descriptive statistics on post-grant proceedings at the PTO, the authors find that:

  • “Although IPR petitions may challenge patent claims as to either novelty or nonobviousness, nonobviousness challenges predominate across all major technology areas.” (p. 18)
  • During the period studied (September 16, 2011 to June 30, 2015), “a total of 14,218 patents were either challenged in an IPR or CBM petition, asserted in litigation, or both. A subset of 11,787 patents were involved in litigation alone; 324 patents were involved in a USPTO proceeding alone; and 2,107 patents were involved in both. Accordingly, about 15.2% of litigated patents are also being challenged in the PTAB, and about 86.7% of IPR- or CBM-challenged patents are also being litigated in the federal courts.” (p. 20) [edited on Feb. 12, 2016]
  • Overall, most CBM and IPR petitions are filed by those with a direct self-interest flowing from infringement litigation.  78% of CBM petitioners, and 70% of IPR petitioners, “have previously been defendants in district court litigations involving the patents they later challenge in CBM [or IPR] review.” (p. 23)  By this the authors simply mean that the petitioners showed up as defendants in an infringement proceeding on a given patent before filing for IPR or CBM review on that patent.  They likely continued to be infringement defendants during the pendency of the IPR or CBM (the authors did not track that).

Vishnubhakat et. al’s third finding has two implications.  First, a substantial number of CBM and IPR petitions are filed by parties who are not concurrently defendants in litigation involving those patents.  The existence of this group merits further study. The authors suggest a range of motivations driving these petitions.

Second, notwithstanding that group, the vast majority of CBM and IPR petitions are filed by parties that are in all likelihood simultaneously litigating the patents in district court.  Given the substantial amount of overlap, and the potential for strategic behavior by accused infringers, the authors suggest that the same claim construction standard should be applied by both forums–a point with implications for Cuozzo Speed Technologies v. Lee.

Read the article here:


116 thoughts on “Strategic Decision Making in Dual PTAB and District Court Proceedings

  1. 10

    “a total of 14,218 patents were either challenged in an IPR or CBM petition, asserted in litigation, or both. A subset of 13,557 patents were involved in litigation alone; 298 patents were involved in a USPTO proceeding alone; and 1,968 patents were involved in both.”

    Last time I checked, 13557+298+1968=15823. Am I missing something here? Does “involved in litigation” include patents not “asserted in litigation” (e.g. DJ actions)? If so, then why are these referred to as a subset?

      1. 10.1.1

        The numbers do not add up.

        Each of the following are mutually exclusive subsets
        Set (a) – Lit only
        Set (b) – Office only
        Set (c) – both.

        There is no overlap possible for these defined subsets.

        Somehow the total is not accounting for the differential of 1,065 which is the amount of the three mutually exclusive sets and the stated sum total.


          Oops – that last paragraph should say the the 1,065 is the difference between the amounts of the mutually exclusive subsets and the stated sum total.


            pffft you guys…. did you expect poly sci and English majors (and future patent litigation judges) to get the math right?


            By the way… the ones that were involved in litigation alone were clearly not involved in a IPR or CBM petition… so…



              I do expect an article that wants to use stats to get basic math right.

              That’s really not all that much to expect.

    1. 10.2

      Thanks. I didn’t notice that either on my first read through. I passed your comment along to the authors who have corrected the numbers.

  2. 9

    The authors:

    our findings suggest that the PTAB should, indeed, conduct its ex post review procedures under a claim construction standard that mirrors that of the federal courts.

    What “findings” are the authors referring to? According to the paper, claims assserted in court are construed only 10% of the time. The authors present zero evidence that the “different standards” of claim construction are in fact leading to substantial differences in claim scope, or different outcomes in terms of patent validity.

    I also note that the authors — consistent with past “analyses — present ZERO evidence that IPR proceedings present any kind of systematic unfairness to patentees (i.e., valid patents being erroneously invalidated by some biased “death panel”). That lack of evidence stands in stark contrast to the overwhelming evidence that the PTO for years has been granting reams of junk on behalf of coddled applicants, particularly those in the computer-implemented arts. It’s the transparent problems caused by this latter situation that IPRs were designed to address, of course.

    1. 9.1

      You just don’t get yowntuebproteftooks of law are supposed to work, do you?

      That anti-patent bias is simply overwhelming any shot at reasoning from you.

      1. 9.1.1

        Here’s a modest proposal: patent pleadings should provide at least much detail with respect to claim construction and infringement contentions as IPR petitioners are required to provide with respect to claim construction and invalidity contentions.

        Seems fair, doesn’t it?


          That’s not a bad post Malcolm.

          Of course, the question that immediately comes to mind is do you wish to eliminate the entire concept of notice pleadings, or are you just being selective (and if so, why) as to patent cases…


            do you wish to eliminate the entire concept of notice pleadings


            Meet the very serious people who love junk patents.



              Why be an arse?

              You do realize that your view does eliminate notice pleading, right?

              Why is it difficult for you to accept that comment and delve into the impact in a meaningful way?

              Why is your first response just more of the typical mindless ad hominem?


                You do realize that your view does eliminate notice pleading, right?

                My so-called “view” doesn’t eliminate anything, just as the author’s “view” that there is some systematic unfairness in the PTAB’s use of “BRI” to construe claims also doesn’t eliminate anything.

                delve into the impact

                The impact is that it will be that much more difficult for tr0lls to “monetize” junk patents by dragging hundreds of defendants into court in East Texas. Oh but wait! It also means that holders of valid patents might have to do a tad more work before they collect their millions (imagine having to interpret the claims of your own patent? wow!).

                Boo hoo hoo hooo! Cry my another river.

                1. Nice strawman – the author did not have the view that you are purporting and yes, your view DOES eliminate notice pleading.

                  You are genuinely incapable of having a conversation on the merits without ad hominem.

                  Happy Decade of Decadence.

  3. 8

    Getting a junk patent from the PTO and hauling hundreds of businesses across the country into East Texas to the tune of hundreds of millions of dollars: American enterprise at its finest.

    Asking the PTO to take a serious look at the validity of the patent, usually for the first time: unconstitutional “harassment”.

    What a great country.

    1. 8.1

      usually for the first time: unconstitutional “harassment”.

      CLASSIC “ends justify the means” thinking there Malcolm.

      You just cannot help yourself, can you?

      1. 8.1.1

        Were the “means” used by the PTO, the CAFC, and patent tr0lls “justified” by the “ends” achieved, Mr. Big Thinker?

        Reasonable people decided otherwise.

        Deal with it, you p a thetic whining crybaby.


          You are the one whining here Malcolm – AND h one having difficulty dealing with constitutional protections.

          Try to be (inte11ectually) honest about that please.

          Violating protections of the constitution – even for “worthwhile” ends is NEVER reasonable.

          It really is that simple.


                Mr. Snyder- celebrating your desired ends without paying attention to the issue that the means in those very decisions ARE an issue is NO WAY to learn the terrain.

                You would do well to recognize that your initial reaction of lulz is NOT a good thing.

                1. “You are the one whining here Malcolm” transformed into

                  “You are the one winning here Malcolm

                  Fixed for accuracy.

                  Thanks for playing”.

                  is what’s known as “funny”. Things that are “funny” sometimes make Lulz.

                  Since you are a joyless pedant anon, you can only resort to your loop of tenuously connected ideas in response to a nicely delivered burn; if you lightened up, people might pay more attention to you, which is what you clearly desire.

                  In regards to (one of) your obsessive ideas about ends and means, it’s been pretty surely established that the ends are more important than the means (e.g. equity is the superior to law) since at least 1661.

                  Before I was reincarnated as Abe Lincoln and the Wright Brothers, I was Lord Ellesmere. Bet you didn’t know that ?

                2. Except it is not funny – and that is NOT because I am joyless.

                  It is because that such is a blight that refuses to be ite11ectually honest about the issues that are running rampant in patent law.

                  There is NO such “resort[ing] to loop of tenuously connected ideas” Mr. Snyder.

                  There is a huge difference between “lighten up” and the ad infinitum, ad nausem propaganda that Malcolm spews here.

                  One only has to look at yourself to see the adverse effects of the “Tell a 1ie often enough” gambit.

                  As to your attempt ot elevate equity above the law, you are clearly wrong in both the portrayal and what that attempted portrayal means.

                  Of course, this is entirely unsurprising, as you also refuse to recognize the terrain upon which you wish to do battle.

                  Equity simply does NOT mean that the Ends justify the Means.

                  Try better.

                3. Your posts produce no yuks anon. You ain’t funny ha ha and you ain’t funny to laugh at either- just kind of sad.

                  As to your endless mangling of other’s words, I wrote that “the ends are more important than the means”, not that “the ends justify the means”, and of course there is a world of difference in the two phrases, esp as relates to the positions of law and equity.

                  Not to a deranged pedant, naturally.

                  C’mon, be funny, you can do it. You know that laughter is the sound of surprise right? Say something that makes sense; maybe we can all get another lulz today.

                4. Let’s try again…

                  LOL – maybe you want to learn the terrain, Mr. Snyder.

                  Producing yuks is the job of a buff00n or a cl0wn.

                  Obfuscating issues is a blight – not a source of yuks.

                  You do realize that Malcolm is here only to push his agenda, right?

                  As to the change in wording that you want ot emphasize – that just does not help you. Just like your opinion piece, you want to “redefine” terms in law that have established meanings, and cannot figure out why it is that you are made fun of.

                  If you want to move the goalposts, then realize that my points are STILL very much on point.

                  And yourself engaging in meaningless ad hominem (“deranged pendant“) does NOT help your case. It only proves my point that you do NOT understand the terrain upon which you want to do battle.

                  I say plenty that makes sense – you just do not realize that because as I previously stated, you do not know the difference between signal and noise.

                5. ^^^ mindless ad hominem.

                  It is more than clear that I have asked for issues to be discussed in inte11ectually honest manners.

                  Great job Prof.


            “Violating protections of the constitution – even for “worthwhile” ends is NEVER reasonable.”

            Tell that to the congress that passed the income tax.



              As I have previously noted (and law school would teach you the same thing): this is not the first time that a law has been passed that has been later found to violate constitutional protections.

              Do you at least understand that?

  4. 7

    I guess the temptation to suggest a correlations where there is none is really hard, even when you admit that there is none! From the paper (page 21).

    In addition, typically only 10% of patent lawsuits reach the stage at which they receive a claim construction ruling. This 10% figure is in line with our finding that 12.7% of litigated patents are being challenged in the PTAB. …That said, we do not imply that the same 10% of patent cases that reach claim construction in district court are also the same patents that are the subject of a challenge at the PTAB.

    I’m pretty sure that the authors did imply, before they didn’t. Weird.

  5. 6

    Looks like a huge number of patents get litigated in the courts and get subject to PTAB second-guessing.

    That proves that the goal for enacting legislation for the PTAB reviews, to reduce costs and increase efficiency, has not been achieved.

    1. 6.1

      MUCH of what was peddled with the AIA of “reducing costs and increasing efficiency” was NEVER achievable.

      With the simple fact of the matter that many of the old laws remain on the books for previously granted patents, the necessity of having the double sets of laws automatically eliminates any sense of “reduced costs and increased efficiency.”

      FURTHER, all of these changes increased the level of UNcertainty of any granted patent right for several reasons, including the ability to second guess post grant as well as the submarine of Prior User Rights that can only surface when a granted patent is attempted to be enforced in a court of law.

      It is simply far too pollyanna to accept at face value the purported “goals” of the AIA.

      That law cannot sink fast enough and good riddance to a horribly written piece of legislation.

      Maybe Congress will instead aim for smaller, not “unsinkably connected” meaningful reforms (and include attempts to actually improve the quality of examination – where the focus should be IN TE FIRST PLACE).

      1. 6.1.1

        “anon” good riddance to a horribly written piece of legislation.

        It’s not going anywhere anytime soon, “anon.”

        That’s because (1) the system is clogged with reams of junk and rotten people like you trying to “monetize” it; and (2) IPRs work.

        Whatever does manage to be “undercut” by your miserable class of relentless entitled crybabies will be replaced by something that you’ll like even less. Take it to the bank.


          Nice non sequitur Malcolm.

          Whether or no the frailty of the AIA makes it go buh-bye has NOTHING to do with your feelings that the system is clogged.

          TRY to understand the different issues here.

          And what I actually wrote (as in, a new attempt by Congress to get things right)

          (and your baseless ad hominem just does not help you either – but hey, it is a sign of cognitive dissonance, so at least you got that going for you)


            “anon” Whether or no the frailty of the AIA makes it go buh-bye

            It’s not going “buh bye”.

            has NOTHING to do with your feelings

            It’s not about my feelings, “anon.” Nice try, though.


              LOL – the only thing you offer ARE your feelings Malcolm.

              Would love to have you “prove me wrong” and have you actually engage the counter points put on the table for discussion – but it is your choice to not do that.


                “anon” it is your choice to not do that.

                Meanwhile, back on planet Earth I (and others) routinely “engage” Boy Wonder’s “counter points”.

                We all know what happens next: the insult wheel, a slurry of incomprehensible, randomly-capitalized catch phrases, and weird references to mythical “on point” — and always “devastating” — rebuttals that are somehow to difficult to present in plain English.

                Keep the hits coming, “anon.”

                1. We all know what happens next

                  Not really, so your characterization is (as usual) off.

                  As is the accusation of not being able to understand (your old hat Vinnie Barbarino meme)

                  You need a new script.

    2. 6.2

      svg: Looks like a huge number of patents get litigated in the courts and get subject to PTAB second-guessing.

      That proves that the goal for enacting legislation for the PTAB reviews, to reduce costs and increase efficiency, has not been achieved.


      Spin! Spin! Spin!

      The junk patent lovers are truly a laugh riot.

      1. 6.2.1

        From the authors:

        According to Docket Navigator analytics, of the patent cases filed in the U.S. district courts during the time period that we studied, 70.2% were likely settled. Moreover, three-quarters of those likely settlements occurred within 9.9 months. This pattern of likely settlement may have been prompted, at least in part, by a defendant’s threat to file a challenge at the PTAB.

        See how that works? When a junky patent is a lot easier to invalidate, it’s value diminishes substantially. In other words, the nuisance value decreases. That, of course, is what drives the junk patent lovers craaaaaazy.

        And rest assured that the value of all the junk patents in the system is going to continue to go down — way down. Why? Because the present values are absurd.


          You do realize that such devaluation is ACROSS THE BOARD, eh?

          And yes, THAT is what the anti-patent crowd want.

          See how that works?”

          What a putz.


            “anon” You do realize that such devaluation is ACROSS THE BOARD

            (1) I’m quite certain that computer implemented junk, biz method junk and “think about what this information means” junk is taking a far, far bigger hit than anything else in the system. And that’s exactly what’s supposed to be happening because that junk never belonged in the system in the first place.

            (2) So what? You think the Constitution mandates that patents have some set value that doesn’t change? Grow up.

            You truly are a ridiculous person.

            Hey, there’s some obscenely rich guy in that building and he’s crying because he can’t buy a second yacht! Boo hoo hoo! His patents were “devalued”! Go polish his boots, “anon.” He’d appreciate that. And you’d find some purpose in life.


              Once again, the mindless reciting from a script (that just does not fit).

              In your haste to attack software patents, you (once again) neglect to notice that such is the form of innovation MOST accessible to the NOT “obscenely rich guy.”

              Funny how you never seem to care about that huge hole in your “logic.”

              (and yes, the constitution DOES care and provide protections for the item called property – maybe you should try to understand that before showing yourself to be an arse)


            “You do realize that such devaluation is ACROSS THE BOARD, eh?”

            I’m not sure that statement can be backed by substantial evidence anon. Some patents have more “actual value” than “nuisance value”. I know such patents are few and far between in the software “art”. But out in the real world there are other arts, and they have more of those such patents.



              That is not a point that needs “back[ing] by substantial evidence.”

              That point is a procedural point and affects all patents across the board.

              Sure, some patents are more robust and the effect can be shrugged off. But that is not the point at hand.

    3. 6.3

      To soon to tell. That cannot be determined by the comparison of patent suits filed to the number of IPRs requested [in the surprisingly small % of those suits in which IPRs were timely requested]. It needs a calculation of the number of patent suits dismissed or settled cheaply due to final IPR claim rejection decisions. There are ample grumbles alleging that, but I have not seen any statistics?
      Yes, new patent suit filings were up in 2015 rather that down, but how much of that was due to the fear of old FRCP Form 18 complaints now being rejected as insufficient?

    4. 6.5

      Given the history of reexaminations and how they have already damaged the patent system, see Mercado below, it is odd that anyone was fooled by the pablum of the dark side. The continue to spout this c*ap even though it was and is demonstratively false.

      Congress was fooled in ’80. It was told that reexaminations would be used by patent owners to strengthen their patents. Instead, patent owners were tied up in reexaminations until their patent term was exhausted, they went bankrupt or somehow the patent office itself called a halt to patentee harrassment.

      IPRs were intended to address the delay problem of reexaminations. But they have ended up not as a one time shot against the patent, but as another form of harassment. I counted about 6 0r 7 IPRs against every patent that VirnetX patent was asserting against Apple. That is harrassment no matter how you look at it.

      Raymond A. Mercado, 12 Colum. Sci. & Tech. L. Rev. 92 (2011) (Published March 10, 2011) link to

      “The reexamination statute was enacted to provide a mechanism for correcting PTO errors in patent issuance and for thereby restoring confidence in overall patent validity.62 However, Congress emphatically did not intend for the reexamination process to introduce new opportunities for harassment, recognizing that its “broad purpose must be balanced against the potential for abuse, whereby unwarranted reexaminations can harass the patentee and waste the patent life.”63 Yet gamesmanship of the reexamination process has, in the view of some, become more the rule than the exception. Reportedly it has become “standard procedure” that a defendant in patent litigation “take an aggressive stance by saying it plans to request a re-exam on that patent-in-suit or even all” of the plaintiff’s patents.64 The threat of reexamination is then used as leverage in licensing negotiations,65 intimidating patent-holders into settling out of court for lower amounts than those to which the value of their patents might entitle them.
      Third-party requesters are savvy about the consequences of reexamination on the enforceability of patents, and they know that the threat of filing reexamination is often effective. As the Executive Director of the Public Patent Foundation (a non-profit organization that files reexaminations against patents it deems questionable) has explained, a patent in reexamination is “like a lame duck president . . . [h]e’s technically president, but does Congress really need to negotiate with him to get things passed?”67
      One practitioner has noted that a reexamination proceeding “puts [the patent’s scope] in uncertain terms . . . [and consequently] a patent holder has to wait to assert claims and that harms enforceability.” In conferring “lame-duck status” to a patent, reexamination can essentially render the patent right void in the eyes of all those wishing to make use of the invention without compensating the patent owner.
      68 Reexaminations can thus be extremely damaging to patent holders even when instigated by third parties acting within the letter of the law.”

  6. 5

    As to the small percentage of petitioners who are not among “the vast majority of CBM and IPR petitions are filed by parties that are in all likelihood simultaneously litigating the patents in district court” [i.e., entirely caused by patent owners suing for infringement, because IPRs are barred by prior D.J. suits]. That small percentage includes petitioners directly threatened with infringement suits if they do not take an expensive license, or indirectly but strongly threatened or impacted by suits filed against related companies or customers or other defendants with similar product features on the same patent. There is no evidence of filings of expensive IPR proceedings by anyone not already so threatened, and it is mandatory for CBMs.
    The statistics here are also of interest as showing that IPRs or CBMs are only being filed for a relatively small percentage of the total number of patent lawsuits being filed. Further evidence that they are not lightly undertaken, and/or selectively undertaken only against patents with strong 102 or 103 invalidity grounds. Also, that even a substantial percentage of those IPR petitions that are being selectively filed are being refused institution for insufficiency.

    1. 5.1

      There is no evidence of filings of expensive IPR proceedings by anyone not already so threatened, and it is mandatory for CBMs.

      Except for the fact that this statement is not true (think Pharma and shorting the stock of the patent holder), your “cheerleading” is once again quite obnoxious and transparent Paul.

      Do you realize that you are actually doing yourself a disfavor with such posts?

      1. 5.1.1

        you are actually doing yourself a disfavor with such posts?

        Says the abject l 0ser with zero credibility and a whole lot of psych 0path associated with his sorry nym.

        Keep the laughs coming, “anon.”


          Says the abject l 0ser with zero credibility and a whole lot of psych 0path associated with his sorry nym.

          LOL – yet another classic Malcolm AccuseOthersOfThatWhichMalcolmDoes.

          Try something new Malcolm – something NOT on your short script of baseless ad hominem. Maybe (gasp) actually address the substance of the points put on the table for discussion.

      2. 5.1.2

        Yes, there was one? troll petitioned IPR against a drug patent in which the IPR was allowed to proceed. Can you point to others?


              You want to pay attention to the actual statements Malcolm, and not just show what an arse you are?

              Prof – clearly Malcolm’s 0bsession is getting the better of him – is this really the type of “ecosystem” you were hoping for?

    1. 4.1

      link to

      Newman’s dissent is truly a tour-de-force.

      Just one part of her dissent:

      Precedent does not require this extended application
      of Achates. In Versata Dev. Group, Inc. v. SAP Am., Inc.,
      793 F.3d 1306 (Fed. Cir. 2015), the court held that when
      information at the threshold phase is material to the
      PTAB final decision, this court on appeal is not precluded
      from reviewing such information. The court stated:
      Congress explained the anomalous nature of a bar
      to judicial review of final agency action: “Very
      rarely do statutes withhold judicial review. It has
      never been the policy of Congress to prevent the
      administration of its own statutes from being judicially
      confined to the scope of authority granted
      or to the objectives specified. Its policy could not
      be otherwise, for in such a case statutes would in
      effect be blank checks drawn to the credit of some
      administrative officer or board.”
      Id. at 1319 (quoting S. Rep. No. 79-752, at 26 (1945)). As
      stated in Social Security Board v. Nierotko:
      Administrative determinations must have a basis
      in law and must be within the granted authority

      . . . . An agency may not finally decide the limits
      of its statutory power. That is a judicial

      327 U.S. 358, 369 (1946). These principles are a foundation
      of the Administrative Procedure Act.
      On this appeal, a ruling that the court insulates from
      review relates to the one-year bar. The America Invents
      Act requires that a petition must be filed within one year
      after the start of any district court litigation on the same

      35 U.S.C. §315(b) PATENT OWNER’S ACTION.—An
      inter partes review may not be instituted 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. . . .

      Although this issue is presented on this appeal, the panel
      majority refuses to consider it because it was decided at
      the “institution” phase. The question is whether a predecessor
      to Synopsys, in litigation with Mentor Graphics
      more than a year earlier, raised the one-year bar. The
      PTAB held that there was no bar. PTAB Op. 14–17. The
      court today holds that “the PTO’s decisions concerning the
      §315(b) time bar, including determinations of the real
      party in interest and rulings on discovery related to such
      determinations, are non-appealable,” even after the
      PTAB’s final written decision. Maj. Op. at 24.
      It is unlikely that such issues material to statutory
      compliance–issues of privity, standing, and jurisdiction–
      were intended to be excluded from appellate review. Such
      a departure from the judicial obligation cannot be presumed.
      See Crowell v. Benson, 285 U.S. 22, 54-55 (1932):

      A different question is presented where the determinations
      of fact are fundamental or ‘jurisdictional,’
      in the sense that their existence is a
      condition precedent to the operation of the statutory
      scheme. These fundamental requirements
      are . . . indispensable to the application of
      the statute . . . because the Congress has so provided

      The Court in Crowell notes that: “In relation to administrative
      agencies, the question in a given case is whether it
      falls within the scope of the authority validly conferred.”
      Id. at 54 n.17.

      Whether or not the one-year bar here is deemed jurisdictional,
      it is an essential part of the AIA structure. The
      correctness of its treatment is subject to the traditional
      judicial review of agency determinations; the question is
      not insulated from appeal simply because it was decided
      at the start of the post-grant proceeding. The Court
      guides in Bowen v. Michigan Academy of Family Physicians
      that preclusion of judicial review is viewed strictly:
      We begin with the strong presumption that Congress
      intends judicial review of administrative action.
      From the beginning “our cases [have
      established] that judicial review of a final agency
      action by an aggrieved person will not be cut off
      unless there is persuasive reason to believe that
      such was the purpose of Congress.” Abbott Laboratories
      v. Gardner, 387 U.S. 136, 140 (1967).
      476 U.S. 667, 670 (1986) (alteration in original). The appellate
      court must ensure that an agency’s action is not “so
      extreme as to amount to an abdication of its statutory
      responsibilities.” Heckler v. Chaney, 470 U.S. 821, 833 n.4
      (1985). When an agency “exercise[s] its power in some
      manner. The action at least can be reviewed to determine
      whether the agency exceeded its statutory powers.” Id. at

      In sum, “Congress rarely intends to prevent courts
      from enforcing its directives to federal agencies;” there is
      “a strong presumption favoring judicial review of administrative
      action.” Mach Mining, LLC v. EEOC, 135 S. Ct.
      1645, 1651 (2015) (quoting Bowen, 476 U.S. at 670). My
      colleagues’ position that no ruling during institution can
      receive appellate review, even when material to the final
      decision, cannot be correct.

      1. 4.1.1

        Ned, you left out “AS USUAL, Newman’s dissent was tour de force.” She absolutely nailed it in this dissent: by giving the PTAB a free pass, the CAFC has allowed the AIA to be undermined. And the rest of them still don’t get it.

        88 years old and still kicking her colleagues’ butts.

      2. 4.1.2

        Ned, given that the PTAB members are judges, you know, like at the EPO Board of Appeal members are judges and given that at the EPO they do deliver a TRIPS-compliant “judicial review”, why doesn’t the PTAB qualify as a “judicial review”?


          Max, we have three branches, the executive, the legislative and the judicial. The judiciary is in charge of interpreting the law. In Marbury v. Madison, decided in 1803, the Supreme Court held that the courts where the final arbiter of the law and the courts could declare an act of the legislature inconsistent with the Constitution to be void as unconstitutional.

          Were Congress able to create a court system outside of the judiciary that could decide its own jurisdiction without judicial review, this would essentially be in violation of Marbury v. Madison, placing Congress above the courts.

          Thus the PTAB, being an part of the executive and not part of the judiciary, is not a part of the judicial branch of the government and therefore is not a court of law under the U.S. Constitution. It is an administrative court only. It can decide cases involving administrative issues as opposed to Cases in Law and Equity, which is a clause in the Constitution that gives the judicial power to the Supreme Court and such other courts that Congress might create. But there is a catch with respect to these other courts, their judges have to have lifetime appointments, and their salaries cannot be reduced. The judges of the PTAB are not Article III judges.

          Now as to Cases in Law and Equity, what that means is the kind of cases heard in the common law and Chancery courts of England at the time of the Constitution, 1789.

          As you might know, the issue of whether Congress had the power to take cases and controversies regarding the validity of patents out of the court system and into the patent office has now been petitioned to the Supreme Court. The argument is that patent validity trials were actually tried in the courts of England at common law and therefore are the kinds of cases that cannot be transferred by Congress to administrative courts.


            On the constitutionality of the PTAB, the question really is why is it important that the judges of that court not be Article III judges?



              I do not understand your point here.

              Leastwise, the way that you have framed your question. Important that the PTAB judges NOT be Article III judges?

              The plain fact of the matter – and completely unchanged by the passage of the AIA – is that the PTAB (or its predecessor) have never been Article III judges.

              There is no “choice” here, for that supposed “choice” to be “important.”


                anon, the PTAB is really separate from the administrative functions of examination. If one simply carves out the possibility of amendment, the PGR is fully judicial in nature. The judges could be Article III judges, and that would solve 99% of the problems here. If they got out from the political branch and could set their own rules, you would see a lot more fairness for the patent owner. Ned

                1. Thank Ned.

                  I hope that you realize that it would take an act of congress to change the “judicial” portion of the executive agency into an actual member of the judicial branch.

                  Certainly not something that the courts could simply do by fiat.

                  And I hope that you realize that until that happens, that you MUST accept the PTAB as an executive agency apparatus.

                  So, in other words, your “is really separate” is REALLY not.

                  What “could be” matters NOT AT ALL in the current debate – and certainly does not help the frailty of the AIA.

                  It might< be something worthwhile contacting your congressman about.

                  But then again, Congress already has acted to create an actual Article III court to be the deciding word on things of the patent law variety – oh yeah, you routinely abuse that notion.

                  Hmmm – sorry Ned, I just don’t see where you land on this topic, without appearing seriously hypocritical.


              Also David, I still do not understand Cooper’s remedy. How can the decision of the PTAB be advisory if the result of the trial is that the claims are cancelled from the patent pursuant to 318(b). Is it Cooper’s request that the Supreme Court simply invalidate 318(b)? What about the fact that the patent owner is forced into the PTO against his will? In Stern, all parties consented to the jurisdiction of the Bankruptcy Court. Subsequent case upheld Stern claims because of this consent.


            Thanks Ned. You say that patent validity is something in law and equity because it was in England in 1789. I’m curious. Did England have anything like “administrative judges” doing judicial reviews in 1789? Or was it that appeals to a judicial instance, in administrative law, in England in 1789, went to the courts of law or equity because that was all there was, back then, in England.

            In other words, the English courts of law or equity would have handled patent validity disputes back in 1789 not because patent validity is law or equity but because that was all there was. If there was no such thing as an administrative law judge in England in 1789, how can you allow them at all, in the USA?


              MaxDrei – you also have to fold in how the executive branch and the role of agency’s within that branch tie into the scheme of things in OUR sovereign.

              We’ve been over this before….


              Max, actually judge Dyk asked this question at oral argument. The proponents of IPRs could not say there was. But there was in fact nothing of the kind in England prior to 1789.

              To get a patent in merry old England, one had to go through many hoops, and many bureaucrats, and many fees. But nobody reviewed the patent from the point of view of whether or not it was valid over the prior art. That was a judicial function entirely. There were no claims and there was no examination.

              Examination first started after the US patent act of 1836 which introduced claims and required examination. Prior to that time, getting a patent in the United States was somewhat like getting a patent in England: just getting one’s patent specification endorsed by certain bureaucrats on the payment of a fee.


                Ned, this “judicial function” provided by the court in England prior to 1789. I guess it is the one that the UK Parliament has delegated these days to the Boards of Appeal of the EPO. Presumably the current debate in the USA is, inter alia, whether the Congress has power to delegate this particular “judicial function” to the PTAB.

                1. this particular


                  Not even close, MaxDrei. Our constitution delegates “that particular” power.

                  At least try to have the faintest idea how our sovereign is set up.

                2. Max, the UK really has no constitution so the the courts cannot strike legislation as void. Coke was of two minds on that point, first that the courts are the ultimate authority on the law; second that it was Parliament.

                  In the US, it is the Courts, but only to the extent that Congress cannot exceed it authority, but otherwise it is Congress.

                  So we have patent validity being tried in the PTAB. Is that constitutional? The answer has to be whether the constitution provides that Cases involving patent validity were Cases tried in the courts of Law or Equity in England.

                  They were.

                3. It’s kind of you Ned, to spend your time answering my simple questions. The Constitution gives The Congress the power to set up a system of patents. An essential part of any patent system is a mechanism to revoke bad patents, patents that the administrative authority set up by Congress, had it known better, would not have granted in the first place. So Congress duly provides one. Because it must. And the one if provides has an administrative first instance then a judicial appeal instance. The notion that, in so doing, it is acting outside the Constitution strikes me as a bit of a stretch.

                  Indulge me Ned. Tell me again, why it isn’t.

                4. MaxDrei,

                  The Constitution also (and predominately) sets up the different branches of government and the separation of powers doctrine.

                  What you are still missing in your desire to reach a certain end state is that Congress – in setting up whatever system of “would not be granted in the first place” type of post-grant power cannot violate the constitutional separation of powers, nor can they violate OTHER protections in place as regards property rights (takings and due process protections for property).

                  It really does matter what means are employed in order to get to any desired ends – even ends that are on their face worthwhile and desired ends.

                  The problem here is NOT that the government is involved in a takings (such is possible under our sovereign’s eminent domain doctrine).

                  The problem is that the takings involved with how Congress set up the “would not be granted in the first place” type of post-grant power does involve – at the initiation point – Congress (the legislative branch) giving solely to the Office (the executive branch) the power to take property rights (sticks in the bundle of the right of property that IS a granted patent) without ANY remuneration or ability to challenge that specific and separate initiation decision in a proper Article III court (the judicial branch).

                  It is extremely critical to note here that ANY further step and decision on the merits (in order to reach or not to reach that very notion of “would not be granted in the first place“) is indeed separate from the unconstitutional takings that occurs at the separate initiation step.

                  Note that this is NOT the first time that Congress has acted and passed a law that violates constitutional protections.

                  Note that the proper response – and in fact the duty of the judicial branch – is to rule that such a law passed by Congress cannot stand because of its violation of Constitutional protections.

                  The Constitutional violation occurs prior to the determination that a patent has – or has NOT – been “granted [properly] in the first place.”

                  If you really do have a mind open to understanding you will drink this in and NOT refuse the well waters provided (just because you may not like the person leading you to the well).

                  Of course, it is entirely your choice to open your eyes and understand – or not.

                5. Max: “The Constitution gives The Congress the power to set up a system of patents.”

                  That is not the power granted to Congress.

                6. I see better now, why it is so important to debate whether a patent is “property” in the sense of being subject to the “taking” notion. just because one can assign a patent doesn’t make the patent grant subject to the taking clause. Or does it?

                  Not everything that has a monetary value is “property”. For example, the English National Health Service tries to put a value on surgery that depends on the age and health of the person requiring surgery, in order to use finite medical resources most efficiently and humanely. So, does that make human lives the “property” of NHS England?

                7. That is not the power granted to Congress.


                  MaxDrei, do not listen to Ned.

                  Ned, how is that not an accurate statement of the delegation of authority to the specific branch of the US government for setting up the patent system?

                  You do realize that the Congress could have NOT set up a patent system, right?

                  You do realize that this compounds your error as to the possibility of a “gold star” system in addition to (or even in place of) the patent system, right?

                8. just because one can assign a patent doesn’t make the patent grant subject to the taking clause. Or does it?

                  It does.

                  This is sort of like the right to vote: once established and given, it has the constitutional protections inured to it.

                  Not everything that has a monetary value is “property”.

                  A non sequitur (and your “example” is even worse) – the patent right IS property.

                  This stems from more than just the explicit words of Congress – see also the (historical) award winning article on the start of the patent system in the US (as previously provided and provided over at PatentDocs).

                9. Well, let me clarify MaxDrei: the “just because you can assign” is NOT the precursor to the patent being property.

                  The patent being property is WHY you can assign.

                10. anon, you do realize that the founders were trying to set up a patent system like that of England’s at the national level? I have quoted you Federalist 43.

                11. Ned,

                  Your immediate post here is a non sequitur to the topics under discussion.

                  Please make your reply on point. Do not wave around some gen eral statement that does not support your other assertions, nor addresses the specific items that I have posted.

                12. Max, to reiterate, I dispute your premises. The Constitution here authorizes the grant of patents — exclusive rights. These are the property of their owners. Under the US system, they cannot be revoked by the government.


          why doesn’t the PTAB qualify as a “judicial review”?

          MaxDrei, amusing that you have asked this very question previously (more than once), and yet appear to be unable to learn when the question is answered.

          What are you actually attempting to gain by repeatedly asking this question?

      3. 4.1.3

        Re: the Abbott Labs citation. How is it not a persuasive reason that congress did not intend judicial review when the law explicitly states, no judicial review?

        All the other precedent-heckler, Crowell, etc. says the same thing–that is is rare (not impermissible) for congress to limit judicial review.

        Also, Newman makes a straw man argument when stating that the majority held that any issue decided at the institution stage is not appealable. The statute states that decisions re WHETHER TO INSTITUE are not appealable. Here, the dispute centered around whether to institute certain claims.

        I understand Newman’s concerns but they are not relevant to the case at hand.


          The separateness of the decision to initiate has long been noted Ryan.

          As has the purposeful construction by Congress that this “judicial act” by the executive agency is simply NOT reviewable by an Article III court.

          There are quite a few attempts – and by more than just those commenting on this blog – to fabricate some type of authority for this “not reviewable but “really can be reviewed” to happen.

          Such attempts are doomed to F A I L. The words of Congress are simply clear and direct.

          Now when that is finally recognized and accepted, one can then apply just a little critical thinking and readily see that the decision to institute includes a taking of property rights (certain sticks in the bundle of the property right that is a granted patent, notably the presumption of C&C).

          This taking by the government (by the “judicial” part of a strictly executive branch agency) is done with NO remuneration and NO chance of review.

          This, my friends, is a F A T A L flaw.

          It is beyond clear that this is exactly what was intended by Congress, so there is NO chance that any (Article III) court can re-write what Congress has written in any type of subtle “interpretation” effort.

          And once that that is recognized, understood, acknowledged, and integrated into the conversation, THEN we can take the next step and consider that this particular law was expressly created to be an all or nothing law – a grand ship Too Big To Sink, but built without any interior dividing bulkheads to protect it <I.from sinking if even the smallest part of the law were to F A I L.

          (and yes, I have another bet with my Vegas bookie friend that there will be NO cogent legal rebuttal to this line of thought explored on this thread – man, am I raking in the bucks! 😉 )


            “anon” NO chance of review.

            Wrong. You can always appeal to the CAFC.

            Do you realize you are actually doing yourself a disfavor with such posts? <—– LOLOLOLOLOLOL


          Ryan, she is arguing that Achates was wrongly decided, I think. Clearly she would have been a vote in Achates favor had they gone en banc.

      4. 4.1.4


        Your comment here of “. . . . An agency may not finally decide the limits of its statutory power. That is a judicial function.” is pertinent on another current thread concerning a different matter being discussed between Random and AAA JJ and DanH.

        just fyi.


            not that much of a riddle – see Random’s comments in his conversation with you and AAA JJ. Random is saying exactly what Ned here is saying cannot be done.



            I do have to chuckle as much as you seem to “like riddles,” you seem to NOT like what is perpetually fronted to me in my attempts to have a inte11ectually honest discussions on the merits.

            From the very thread that I reference, just today you had this to say to Random:

            I’ve said nothing of the sort, and you’ve repeatedly mischaracterized my positions throughout this thread, so I’m pretty much done with you. Have a great weekend.

            And that’s from just one attempt of yours at a conversation.


            And yet with attempts not with just some ones, but with the sAme ones, such mischaracterization is the default of these very prolific posters here (hint: Malcolm).


              Maybe Mr. Snyder would advice you to “lighten up” and take a joke regarding your view on being mischaracterized…

              After all, this single time sets you off, and is nothing in comparison to dealing with those whose modus operandi is based on what you are getting so discouraged about.


                Maybe Mr. Snyder would advice you to “lighten up” and take a joke regarding your view on being mischaracterized…

                I have no idea what that means.

                1. I have no idea what that means

                  It is very simple, DanH:

                  The frustration you feel as regards to Random in the conversation that invoked the quote that I provided is similar to the frustration (but at a MUCH lower level) that I have with Malcolm. Mr. Snyder would criticize me for that frustration and side with Malcolm.

                  If we were to have Mr. Snyder comment on your interaction with Random, he would then – to parallel his post to me – accuse you of not being able to take a joke, would want you to “lighten up,” and to accuse you of being a “joyless pedant.”


              I do have to chuckle as much as you seem to “like riddles,” you seem to NOT like what is perpetually fronted to me in my attempts to have a inte11ectually honest discussions on the merits.

              I have no idea what that means.

      5. 4.1.5

        Ned: Newman’s dissent is truly a tour-de-force.

        The last time that phrase was tossed around here it was Hal Wegner praising Promega v. Lifetech.

        How’d that work out?


          More than “pretty sure” that that was NOT the last time that phrase was tossed around here.

          Check your <i.vaunted “notes” (unless of course, those “notes” are only the echochamber kind)


          Malcolm, I think she is trying to convince some of her colleagues to take these issues en bank, especially the issue of the review of 315(b). That is very much like the issue in Cuozzo that is now on appeal to the Supreme Court. It is surprising to me that the Federal Circuit is not backed off but continues to double down on its decision not to review from a final decision errors that occurred during the institution decision.

          The only thing that Congress intended not to have reviewed is the discretionary decision of the director under 314(a) that places the issue of patentability and reasonable likelihood in its hands. That decision cannot be effectively reviewed anyway under the administrative procedures act because agency decisions that are discretionary are not reviewable. 314(d) was completely unnecessary. Further it obviously only refers to the decision under 314(a).

          Prediction: Mentor Graphics will take this case en banc and Achates will be reversed.

  7. 3

    Just a point, the patent involved in MCM Portfolio LLC was involved in two ITC proceedings prior, one involving HP, both terminated without finding the patent invalid, one with an exclusion order, the other not because infringement had not been proved.

  8. 2

    Dennis, I am a little surprised by the statement that 78% of CBM petitioners… “have previously been defendants in district court litigations involving the patents they later challenge in CBM” as standing requirements to file a CBM requires that the petititioner “or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” Are that many “privy” parties really filing CBM’s?

    1. 2.1

      US subsidiary (or contrariwise the parent company) files CBM, while the other is subject to litigation?

      Good catch, though.

  9. 1

    First, a substantial number of CBM and IPR petitions are filed by parties who are not concurrently defendants in litigation involving those patents.

    Hmmm, does the “T” word apply here?


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