70 thoughts on “Cuozzo and Kirtsaeng

  1. 9

    Imagine this:

    Based on BRI, the PTO institutes and decides that a claim is invalid. In court, the claim is upheld using court construction.

    Both are appealed to the Federal Circuit. That court affirms both constructions, and then affirms both “judgments.” But, because it affirmed the PTO, the claim is cancelled.

    Obviously, the PTO should never be allowed to use BRI to invalidate issued patents. At least, I hope it is obvious.

    1. 9.1

      Having not (yet) seen your Friday filing, this post here indicates to me that I will be disappointed with your efforts.

      You still appear to not understand exactly what happens at the point of initiation (the point that allows for the bundle of sticks that is the property right to be unbundled, with several sticks being taken, and for not just BRI, but the accompanying loss of the presumption of validity that drives the different constructions here.

      Ned, I have pointed out to you in direct and plain English that once your patent has been “initiated” and brought back into the Office, you no longer have the FULL power of your granted patent.

      The parallel battle of construction that you lay out here is necessarily an apples and oranges comparison.

      You want to cap off your point with “obviously,” when it is obvious that you have missed a critical factor here. You want to treat the patents in both fora as exactly the same, having the full compliment of the bundles of sticks in the property right, and you have no basis for doing so.

      I am disappointed that you have decided not to take the point that I put on the table of discussion.

      Even without seeing your filing, I am led to believe that you have not asked the right question.

      1. 9.1.1

        Anon, I think you will be pleased with the petition, really.

        Someone over at ScotusBlog said Cuozzo was going to be a landmark case. Well, if Cuozzo is that big, MCM Portfolio is going to be that times 10 as it will given the Supreme Court the opportunity to opine on a lot of basic constitutional law, from Article III, to Jury Trial rights, to the rights of property vs. public rights, etc.

        The problem we have realistically is that only 7 Justices will vote, and we need 4. It would seem if they take the case, we are going to win as we already have a majority.

        I have noticed that Hal Wegner has our case at number 9 on his list. I think that goes up once he reads our petition.

    2. 9.2

      Would it still be a problem if the timing allows the patentee to disclaim the scope of the claims that goes beyond the court construction? For example, if the patentee submits a claim amendment in the IPR that explicitly recites the court construction, what would be the problem if both appeals reach the Federal Circuit?

  2. 8

    My gut on this one is that non-review is not OK. Imagine some other scenarios in Admin law where the Congress could use this to really extend their powers. The decision to review your social security amount is unreviewable.

    1. 8.1


      It is not just the non-review ability that is key, but also what happens at the initiation point along with the lack of recompense for those sticks in the bundle of property rights that are taken.

      If it was merely a decision to review alone, then non-review ability would not be offensive in a legal sense.

  3. 7

    Mr. Beeney was on a roll.

    Mr. Beeney: “there are a number of anomalies that
    injure the patent system and injure patentees that stem
    directly from the use of inter partes review. Those
    include a claim meaning different things in the courts
    and before the Board. Those include different results
    in the courts and the Board as to whether a patentee’s
    property rights are taken away. And those include
    claims meaning one thing for patentability in the Board
    but a wholly different thing for infringement in the
    district courts.”

    That suggests that after prosecution, and despite amendments by the patentee, claim scope as determined by a court is still a long shot from claim scope as determined by the Examiner for allowance. I doubt it.

    Mr Beeney: “If there’s ambiguity
    in the claim language, then what is the meaning of that
    patent will be determined in light of the specification,
    the prosecution history, and other intrinsic evidence.
    In the rare case where there still may be
    ambiguity, then the Court may consider extrinsic
    evidence, dictionaries, other writings by the patentee,
    what somebody of ordinary skill in the art might
    determine a particular claim limitation to mean.”

    It’s like Nautilus never happened. We are still in the mode where claims can be ambiguous, but amenable to construction with much work from the court.

    Can Mr. Beeney get away with it?

  4. 6

    Petition for rehearing en banc denied by the CAFC today in MERCK v. GNOSIS.

    The issue is the standard of review used by the CAFC when evaluating obviousness determinations by the Board. Both the concurrence and dissents (by Newman) are interesting.

    From the concurrence (O’Malley, Wallach, Stoll):

    I agree that application of the substantial evidence standard of review is seemingly inconsistent with the purpose and content of the AIA. This court is bound by binding Supreme Court precedent—D i ckinson v. Zurko, 527 U.S. 150 (1999)—and this court’s own—In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000)—to apply the substantial evidence standard of review to factual findings by the Board, however. Because Congress failed to expressly change the standard of review employed by this court in reviewing Board decisions when it created IPR proceedings via the AIA, we are not free to do so now. I, thus, concur in the denial of en banc rehearing in this case because there is nothing that could come of our en banc consideration of the question posed. I write separately, however, because I agree with the dissent to the extent it argues that a substantial evidence standard of review makes little sense in the context of an appeal from an IPR proceeding.

    But the question is one for Congress.

    I’m still wondering when everybody is going to face the music: there’s an incredible amount of junk out there thanks to a combination of CAFC and PTO incompetence. Making it more difficult to get rid of that junk is a really d u m b idea. So … what to do? Dennis asked his question a while back. It’s a great question.

    1. 6.1

      wondering when everybody is going to face the music: there’s an incredible amount of junk out…

      No matter how much you want to say “But the Ends,” you cannot “get there” through improper means.

      It is NOT a matter of “making it more difficult” – it is a matter of using proper means.

      This is not a new idea.

    2. 6.2

      MM, did you see the mention of

      “low quality, business method” patents in O’Malley’s concurrence?

      “By allowing post-grant review of patents, especially low quality, business method patents, the bill creates an inexpensive substitute for district court litigation and allows key issues to be addressed by experts in the field.”

      It is odd, but not when one considers that Kappos was in charge over at the PTO at the time, that IPRs did not allow review of “low quality, business method patents” for violation of 101. Seemed like a no-brainer.

  5. 5

    Ronald Mann’s write-up re the oral arguments at SCOTUSblog here:

    link to scotusblog.com

    Gotta say that his commentary on this case has struck me as extremely friendly to the patentees. I’m not sure where he’s getting his information from but statements like this — “Because the PTAB standard on inter partes review is so different from the standard that courts apply in infringement litigation – so much more likely to invalidate the patent” — are a bit odd given the complete lack of evidence for the statement.

    This is well: Patent holders, predictably, are upset at a system that has shifted the terms of engagements away from courts and into an agency that has shown itself so quick to retract patents.

    Has Ronald Mann actually looked at the patents that have been invalidated and tried to understand what what happened? Is he aware of all the junk that’s out there? It’s not like the PTO is invalidating patents willly-nilly. Most of the patents are junk (like Cuozzo’s) and most of the time the CAFC simply affirms the board when the patent owner even bothers to appeal.

    1. 5.1

      The difference in standard includes the loss of the property stick of Clear and Convincing.

      Maybe try not to be so anti-patent….

    2. 5.2

      From Malcolm’s link:

      The balance of the questioning suggested at once that the PTO has implemented what Congress wrote in a plausible way and that the resulting system is harebrained at best.

      (the focus should not be whether or not the PTAB is “exceeding their authority” but rather it should be on the harebraininess of it all at the hands of Congress.

      For a ship “too big to f@il,” the US AIA Titanic was built rather p00rly.

  6. 4

    Interestingly I don’t believe any of the justices challenged the attorney’s (implicit) assertion of standing, when he basically said that at a minimum he would’ve had a better shot at getting an opportunity to amend – if not for BRI. True or not, I don’t see the Supremes punting on the case over that issue.

    1. 4.1

      Ken, there really is no opportunity to amend. One can add new claims, but they cannot expand scope.

      Did you recall any discussion at all about intervening rights?

      1. 4.1.1

        I don’t recall intervening rights being mentioned by anyone.

        Nobody got into the facts about Cuozzo’s proposed amendment; the standing problem was not addressed.

        I think it’s still entirely possible that the Court might punt this one and wait for some better actual facts instead of hypothetical ones. It’s definitely not too late for them to do that.

  7. 3

    I am disappointed that so much of the discussion was given to the BRI question (which arguably makes no difference in this case), and so little time was given to the § 314(d) question. I am encouraged, however, by Justice Sotomayor’s question to the PTO about Mach Mining. Here’s hoping for a little bit of chipping away at the present iron-clad prohibition on judicial review of administrative irregularities.

    1. 3.1

      Greg: iron-clad prohibition on judicial review of administrative irregularities.

      What in the world are you talking about?

      1. 3.1.1

        That’s not a serious question, is it?

        The whole point of this particular torpedo aim is that Congress wrote the law in such a direct manner as to state: NO appeal of the institution decision.


        And that includes any “irregularities” such as but not limited to comments that the institution decision is influenced by other art than which the petitioner provided, other reasons than that which the petitioner provided, or the petitioner either directly or by piggybacking on an earlier petition improperly adhering to time deadlines.

        All of these examples have been on the table…

        And all of these have received the same (properly limited) court responses: we are following what Congress stated.”

        The right question is STILL not being asked: Can Congress write a law that violates other protections of property?

    2. 3.2

      Greg, indeed, Gannon, for the PTO, was caught absolutely flatfooted when it was pointed out to him that the PTO had decided the very same issue before in In re Portola, but in favor of appealability from a final decision.

      Regarding Mandamus, Gannon argued that it was appropriate at the time of institution, not after a FWD. The PTO had argued that our Mandamus in MCM be denied because we could appeal.

      So, if the non appealabity bar exists, Mandamus would be appropriate it seems, but at the time the institution decision is made.

      1. 3.2.1

        The PTO’s view of when mandamus should be used shifts very conveniently according to whatever makes their case easier. They rather want to have their cake and eat it too, and that is not right.


          As do certain individual’s views on separation of powers (which apply equally to the interactions of each and every branch – including especially the judiciary) – which makes Ned the rather Quixotic choice of “champion,” but hey – he does have a live case there….


          Yes, the PTO’s Cuozzo brief barely grudgingly noted the mandamus option in a footnote.

  8. 2

    Hmm — MM appears to have failed reading comprehension 101. Are you reading the entire transcript? Court doesn’t seem to find the competing standards appropriate when IPR is a substitute for litigation. Roberts’ statements/questions don’t appear to bode well for BRI.

    1. 2.1

      Roberts’ statements/questions don’t appear to bode well for BRI.

      I read the whole transcript, including Roberts questions. I also read the answers and he didn’t seem terribly dissatisfied by them. I certainly didn’t detect any great animosity. What specific questions are you referring to?

      More importantly, the last time I checked there were eight members of the Supreme Court and all their votes count (there should be nine, but Republican obstructionists will immolate themselves before letting a “Kenyan” replace their favorite Supreme bigot with a 21st century jurist).

      1. 2.1.1

        My guess is they come up with a rule where 1) no review of institution is maintained- few questions about it and they know decisions are appealable later and 2) Roberts does not like BRI – he does not like parallel proceedings coming to different results. If BRI lives in IPR’s, look for some way to align district court and PTAB constructions depending on which one issues first etc.

        I sensed a lassitude from almost everyone with regards to patents. They seem tired of the whining, and it seems to me that Breyer is just out there now about the scourge of patent trolls and he is not getting much kickback from the usual suspects. In other words, none of them care enough to use political capital with each other when there are bigger fish to fry. I’d look for a consensus decision.



            How does Cuozzo “win” on the appealability issue?

            Is the law (direct and unambiguous as written by Congress) thrown out? rewritten?

            Mind you, I have not listened yet to the oral arguments or read the transcripts…


              Is the law (direct and unambiguous as written by Congress) thrown out? rewritten?</

              I think it is a mistake (as the PTO tried to argue today) to contend that § 314(d) is plain and unambiguous based on a reading of § 314 divorced from the broader context of the AIA as a whole. As the SCotUS just recently reminded us in King v. Burwell,

              [W]hen deciding whether… language is plain, we must read the words in their context and with a view to their place in the overall statutory scheme… Our duty, after all, is to construe statutes, not isolated provisions. [internal quotation marks and citations omitted]

              It makes no sense to imagine that Congress wrote in all sorts of limits to IPRs in § 315, but simultaneously made it such that the PTO is free to ignore all these limitations, secure in the knowledge that Achates has put the PTAB’s decision to ignore the § 315 limitations beyond the reach of judicial review. When the AIA is read as a whole, it becomes clear that The § 314(d) “unappealable” cannot be understood in its strong sense. It needs a more nuanced construction.


                Well Greg, the statute repeatedly says that institution decisions are made “under this chapter,” but denies appealability only for institution decisions made under “this section.”

                1. Ned,

                  What point are you trying to make?

                  I am not certain, but it sounds like you are reinforcing my view.

                2. Like anon, I am not quite clear what you mean to say here, Ned. Can you flesh it out a bit?

                3. “under this chapter” is everywhere in the IPR statute. The chapter is 311-319.

                  For example: 314(b): The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months….

                  316(a)(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter…

                  316(b)CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.

                  PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter.
                  (d) AMENDMENT OF THE PATENT.—
                  IN GENERAL.—During an inter partes review instituted under this chapter…

                  EVIDENTIARY STANDARDS.—In an inter partes review instituted under this chapter,

                  35 U.S.C. 317 Settlement.
                  IN GENERAL.—An inter partes review instituted under this chapter….

                  318 (a)
                  FINAL WRITTEN DECISION.—If an inter partes review is instituted and not dismissed under this chapter,

                4. Ned,

                  Criminy, the words are there – it is your point that is missing.

                  What are you trying to say about the difference between chapter and section?

                5. anon, Greg,

                  Institution decisions are made under the entire chapter. The ONLY decision not appealable is the decision made in 314 (under this SECTION). The only decision made in 314 is the decision made in 314(a) — whether at least one claim is reasonably likely to be unpatentable.

                  This whole 314(d) makes every decision involved in institution unappealable, including whether the PTAB exceeded its authority is a house of cards. There is no there, there.

                  From the beginning, the Federal Circuit, citing 314(d) have not been citing it correctly. They read out “section” or ignore it. They will not even discuss everyone’s arguments about “in this chapter.” Will not even discuss it.

                6. Ned,

                  Let me repeat this back to you so that I can be sure that I understand you.

                  The section/chapter distinction that you see is that the (section or chapter) limitation to 35 USC 314 for the actual institution decision itself (separate from any of the rest of the moving parts as may be outlined in different sections of the chapter on IPR) should be read as pertaining to the entire chapter instead of just section 314.

                  The fact of the matter being that section 314 is titled “Institution of inter partes review


                  part (d) – the part that is geared to the “no appeal” clause – states that the item under discussion

                  (decision “whether to”)

                  as found in section 314) point blank states

                  that the institution determination is final and nonappealable is somehow appealable because some other section may be talking about the institution decision or controls thereof….?



                  (d) is clearly stating that the section (and section alone – NOT the chapter) that controls the ability and/or constraints and/or lack thereof for the “to institute is:


                  It is pretty clear cut – pretty much under any normal and recognized statutory construction doctrine that part (d) of section 314 is the sum total of the legal challenge description of the institution determination.

                  There is a chapter detailing the bits and pieces.
                  There is ONLY ONE section that details the institution decision point.
                  The directive and control for appeal for that ONLY ONE section is itself short, “sweet,” clear, concise, and leads to only one inescapable conclusion.

                  There is no “catchphrase” or “out” such as:

                  “Unless otherwise indicated”


                  “In accordance with other laws”


                  “Dependent on the other sections of this chapter”

                  or even

                  “Subject to the administrative procedures act”


                  It seems pretty decisive exactly what Congress wanted and stated.

                  (The question that you had better be asking the court is whether or not THIS ACTION by Congress stands up to Constitutional scrutiny. NOT whether or not the PTAB is overstepping its authority)



                I do not see how you are trying to make a point with “divorced from the broader context of the AIA as a whole.

                Giving the section of law under discussion its plain and direct meaning does not invoke ANY divorce from the the broader context.

                Quite the opposite in fact – to try and insert some other meaning into the direct and unambiguous words means that a different “context” must be entertained.

                BTW, I used the very same recent case of King to make MY point.

                1. I do not see how you are trying to make a point with “divorced from the broader context of the AIA as a whole.”

                  Fair enough, I will try to lay out my point more systematically.

                  We start with the passage in dispute (§ 314(d)), which says that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” I agree with you that this is fairly strong and straightforward language. If this were the whole text of the statute, there would be no doubt that Cuozzo got it right, and that the CAFC simply has no power to review institution decisions.

                  However, § 314 is not the whole statute. Just asit is never proper to construe a claim just by looking at the claim, without also consulting the written description and the file wrapper, so too it is never appropriate to construe a statutory clause by looking only at the clause itself (no matter how clear and unambiguous the clause itself may appear). One must always consult the rest of the statute in which the clause appears, and ask whether the plain sense reading of the clause in question would create problems for other clauses if the clause in question is given its most straightforward construction.

                  Here, it turns out that the straightforward reading of § 314(d) creates problems for § 315. Congress created limitations on IPRs in § 315 (one year time bar in paragraph b and estoppel in paragraph e). The idea of limitations implies that there should mechanisms to enforce those limitations. It seems strange to imagine that Congress expressed an intent that estoppel should prevent an IPR, and at the same time also intended that if the PTAB institutes an IPR in violation of § 315(e), that there is no mechanism by which to rectify that violation. In other words, to give § 314(d) the strong sense that Cuozzo (and more problematically, Achates) gives to this clause is to imagine a schizophrenic Congress working at cross purposes to itself.

                  O.k., so the straightforward reading of § 314(d) cannot work, because it conflict with the straightforward reading of § 315(b) & (e). Both clauses need to bend a little, so as not to conflict with each other. In other words, § 314(d) needs to be read as if it said: “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable (except for circumstances x, y, & z).” It is no separation of powers problem for the Article III courts to work out the content of x, y, and z in appropriate cases. That is what courts do in a common-law justice system.

                  My hope is that the SCotUS takes this opportunity to decide whether Cuozzo’s circumstance is or is not a worthy exception “x”. It is a really pity that they have already denied cert in Achates, because that is really the situation that needs clarification.

                2. But it can work – if you are looking at the separateness of institution versus any other decision on the merits.

                  As I said, it appears that you are trying to contort the one section into something other than the focus of that section.

                  To play on your analogy, you would be reading limitations into the claim.

                  Further, the King case makes the point that the courts cannot change what Congress has written because perhaps Congress has written (or decided) p00rly.

                  This has a direct impact on the necessary implication that this law – in particular and expressly – considered and rejected the notion of severability.

                  This also circles back to the necessity of asking the court the right question; as it is far easier for the court to answer the easy but wrong question and avoid the (inevitable) sinking of the good ship USS AIA Titanic.

                3. Ah, got it. You want to play a sort of Leninist “enhance the contradictions” strategy in the hope of destroying the whole AIA in one fell-swoop.

                  Fair enough. To each their own. I am not interested in that sort of gambit, and I am certainly not going to rework my whole hermeneutic of statutory construction just to accommodate the quixotic dreams of some of my more ambitious colleagues.

                4. Lol – no need to change your whole system of statutory construction.

                  As I said in my analogy, you are trying to hard to save something that Congress explicitly wrote the way that they wrote it (reading limitations into the claim).

                  The one that was “too ambitious” was not I, but Congress in trying to build a “Too-Big-To-Fail” ocean liner without bulkheads.

                  As to “Quixotic,” maybe you want to take a shot at something that no one (yet) has been able to do: explain how the direct and express rejection of severability by Congress can make the AIA into anything but a “Sink or Swim” one piece of law.

                  Would be interested in your considered view of that (no snark).

                5. Just noticed your reference to “that’s what they do in a common law system”…

                  Which draws (of course) the limitation that patent law is expressly not common law.

                  You have to remember that as a primary factor in your “statutory construction” paradigm.

      2. 2.1.2

        MM – You can’t be serious. You don’t “detect any great animosity”? See just a few statements from Roberts, below. I don’t know what “terribly dissatisfied” means. Is it a different standard than “great animosity”? 🙂

        “So why ­­ why should we be so wedded to the way they do business in the PTO with respect to the broadest possible construction when the point is not to replicate PTO procedures. It’s supposed to take the place of district court procedures.”

        “it’s a very extraordinary animal in legal culture to have two different proceedings addressing the same question that lead to different results”

        “seems to me that that’s a bizarre way to conduct legal ­­ — decide a legal question.”

        “And this is under a statute designed to make the patent system more reasonable and more expeditious in reaching judgments?”


          Roberts was definitely focused on the possibility of “different outcomes”. It’s a good point on which to focus if you are challenging the PTO!

          But the fact that every once in a while the PTO and a district court will reach different outcomes doesn’t mean that BRI (whatever it’s supposed to mean) is the wrong procedure to use in the IPR context (and the PTO explained that patentees are perfectly free to inform them of any and all evidence in the spec, prosecutio history, etc that contradicts the PTO’s claim construction).

          The PTO and district courts are going to reach different consructions even if they use the same standard. The bottom line is that patentees are free to appeal those outcomes, regardless of the venue which performs the construction.


            That’s some pretty serious backpedaling there Malcolm.

            Why just not change it to the non-BRI position and be done with it?

            If “there is no difference” folks are “correct,” then they have nothing to cry foul about at all.


              Why just not change it to the non-BRI position and be done with it?


              Why change anything if it’s not broke?

              “Ordinary meaning” is a joke, by the way, when the terms used in the claim are the furthest thing from “ordinary” because the applicant is reading limitations into the terms based on some argument about the prior art that the applicant cited. There’s nothing “ordinary” about that.


                So, in other words, there IS a difference….

                Always easy to identify shenanigans by putting the context into something even remotely “pro-patent” to see the anti-patent bias come screaming out.

                1. there IS a difference….

                  Sometimes there might be. Most of the time there won’t be. And most of the time there is a difference it’s the kind of difference that improves the functioning of the system as a whole. That leaves some tiny number of instances where there’s some unfairness being unintentionally brought to bear upon The Most Important People Ever. And that’s why there are appeals built into the process.

                  Congress knew it was creating a different proceeding. Heck, Congress could have just said “We need a bunch of district courts dedicated to patents.” But Congress recognized the problem was bigger than that. It’s a matter of the benefits outweighing whatever harms are perceived.

                  I’m not going to deny that the Supreme Court isn’t prone (or even designed) to respond to the sound of weeping when that weeping is broadcast through a platinum-plated bullhorn. But I don’t think I’ve ever seen a group of bigger crybabies than the patent maximalists. It’s pretty fun to watch.

                2. …and once again, your version of built in appeals just do not cover the taking that occurs at the initiation point.

                  You (again) attempt to gloss over this critical distinction and the fact that other possible Constitruional protections do not suffice.

                  Having “almost enough” protections just does not cut it.

                  You should know this because I have pointed it out to you again and again and again and…

                3. The trite “a matter of the benefits outweighing whatever harms are perceived.” is nothing more than Malcolm’s “the ends justify the means”

                  Our law is meant to be different – and you should know that.


          Hank, one certainly got the impression that Roberts was unhappy with the whole concept of two different proceedings, PTO and D.C., with [occasionally] different results. But first came explanations of the two short time limits for IPRs, and D.C. stays. Then towards the end of oral argument it was finally pointed out to Roberts that this proceedural duality is not new to IPRs, that it has been going on for many years unchallenged in reexaminations. [With far more time overlap]. [Also, of course with BRI, as are interferences.]


            The Supreme Court has never tested the constitutionality of reexaminations. There is an assumption among many that just because the Federal Circuit in Patlex held that patent rights are public rights that they are. If the Supreme Court holds that patents rights are property and not public rights, consistent with their case law for 200 years, reexaminations are in trouble unless Congress restores de novo review.



            You omit a critical facet of the early actions – and also want to whitewash the separate institution decision point.

            This of course is not surprising as you have never actually been up front and addressed the points put on the table concerning the actual points.

            BIG you are on being a coward, and calling names, and “waiting,” but an actual discussion of the points presented…. has never happened from you.

    1. 1.1

      It seems likely that BRI is going to remain. The “no chance to make amendments” bal0ney fell flat on its face, as it should.

      The bigger news that will come from a reading of the transcript, I’d say, is that there is zero chance the Supreme’s are going to find IPR’s unconstitutional.

      But most of us knew that already.


          Half the argument was about the interplay between the courts and the USPTO.

          So what?

          Yes, there’s “interplay.”

          Is “interplay” between the USPTO and courts unconstitutional? No, its not.

          Do the Supremes understand that? Yes, they do.

      1. 1.1.2

        Hmmm…not a fan of IPR, but alas my reading of the transcript suggests MM may be right…I’ll cling to hope a bit longer though. Hoping Ned has one hell of a cert petition!

      2. 1.1.3

        Assuming you are right, MM, that BRI remains, that makes it that much more important to those of us who oppose BRI that Cooper/MCM win on constitutionality. That way, we can force Congress back to the drawing board where we will be a lot more careful in drafting any replacement legislation.


          I read the MCMcert petition and the government’s answer, and I have to say that I just am not seeing the argument for unconstitutionality. Both precedent and common sense support the IPR system. I have not yet read the eCharge petition, however, so maybe all the good arguments are in there.


                Not all Patently-O readers matter for this particular point.

                YOU – on the other hand – should have been paying attention to our dialogues all along and YOU should know “exactly what [I] have in mind.”

      3. 1.1.4

        Was that even a question?

        Breyer was making fun of the invention directly with the hot dog stand crack.


          Breyer is convinced the PTO has been issuing patents in the “billions” that should not have been issued. I assume these include a large number of business method patents. But if not limited to that, but simply to patents to that are not novel over the prior art, how in the world does anyone explain such a poor performance by the PTO?

          Seriously, Congress needs to investigate the systematic malfeasance of the PTO aided and abetted by the Federal Circuit. I would argue, that but for the creation of the Federal Circuit, the bar to patentability would not have been set so low that the Cuozzo “invention” would ever had issued. Breyer seems somewhat put off that he has to decide serious issues of statutory interpretation in support of such an “invention.”


            how in the world does anyone explain such a poor performance by the PTO?

            1) Agency capture
            2) Help from the CAFC

            I assume these include a large number of business method patents. But if not limited to that,

            It’s definitely not limited to that. Breyer knows about all the Mayo grbage, too.


            I would argue, that but for the creation of the Federal Circuit,

            You would be wrong.


            There was some thirty years or so without the Federal Circuit and NO SIGN of the supposed benefit that you think would exist.


            Breyer seems somewhat put off that he has to decide serious issues of statutory interpretation in support of such an “invention.”

            Yes Ned, we all know you long for the day prior to 1952 in which the Court was characterized as “the only valid patent is one that has not yet appeared before us

            So much for your “grasp of history”….

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