Federal Circuit on PTAB Initiation Decisions: Still No Appeal …

Wi-Fi One v. Broadcom (Fed. Cir. 2016)

Wi-Fi One is the new owner of Ericcson’s U.S. Patent No. 6,772,215 that covers a method for encoding and sending packet-receipt error messages over the internet. In 2013, Broadcom brought this IPR challenge and the Board eventually found many of the claims anticipated.

On appeal here Wi-Fi challenges Broadcom’s standing to bring the IPR challenge under 35 U.S.C. § 315(b).  Section 315(b) indicates that an IPR proceeding may not be instituted if the petitioner (or its privy) had been served with an infringement complaint more than one year prior.

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 Broadcom had not been previously sued on the patent, Wi-Fi argues that its privies had been previously sued.  The PTAB rejected that argument – finding that Broadcom was not a “privy” of the prior litigants because Wi-Fi did not prove that Broadcom had power to control the prior district court litigation or that Broadcom would be bound by the outcome of that prior litigation. The Board also refused Wi-Fi’s request for further discovery on the matter.

On appeal, the Federal Circuit affirmed — holding that the question of proper institution is unreviewable based upon the statutory statement that “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d).  Although I have not quite found the line in the decision, is appears that the court also held that even the denial of discovery is unreviewable.

The Supreme Court extended the preclusion of judicial review to statutes related to the decision to institute; it did not limit the rule of preclusion to substantive patentability determinations made at the institution stage, as the facts of Cuozzo itself make clear.

Slip Opinion at 8.  The decision here essentially follows the Federal Circuit’s prior ruling in Achates.

The court also sided with the Board on Wi-Fi’s substantive argument – affirming the Board decision that the prior art anticipates.




114 thoughts on “Federal Circuit on PTAB Initiation Decisions: Still No Appeal …

  1. 8

    Greg’s curiosity wanes too quickly…

    Repeating your error over and over and over again is NOT addressing your error.

    Wanting to use “precedent” that is simply NOT precedent for the point that you want to make is NOT addressing your error.

    “Not caring” is NOT addressing your error.

    “Not agreeing” is NOT addrsssing your error.

    You have a plain and fundamental error in your logic when that logic would make the voice of Congress (whether or not that voice is established in the immediate case) YOUR logic simply does not – and cannot – carry into a nullity.

    Until you address this Greg, the ball remains in your court.

  2. 7

    Not sure that I follow the thinking of:

    appears that the court also held that even the denial of discovery is unreviewable.

    The denial (or not) of discovery is not a part of the initiation decision, is it?

    Is not the decision solely about the “legally separate” initiation decision and rather unattached to any further proceedings once the IPR has been initiated in the Office (sans some rather worthy sticks from the bundle of property rights of a granted patent)…?

  3. 6

    The most interesting thing that I have learned from this thread is that there is literally no basis for the grumbling one sees on the internet that the AIA is a package deal that must stand or fail altogether. As anon tells it, Sen Feinstein moved an amendment to add a severability clause to the senate version of the AIA and this motion was soundly defeated. From this story, anon infers an undeniable Congressional intent that all provisions of the AIA be inseverable each from the other.

    The problem with this story, as we have seen below, is that this vote never happened. However, anon’s version of the story is not the only one out there. I notice that Eric Guttag over on Gene Quinn’s blog tells a subtly different version of this story. According to Guttag, “[a] ‘severability clause’ was present in earlier drafts of the AIA, but was then removed from the final version.” Just as with anon’s Feinstein amendment story, this is also demonstrably untrue. Anyone who cares to can look in the Congressional record and see every version of the AIA that was ever pending before either the House or the Senate. There was never a severability clause in any draft of either the House or the Senate version, so Guttag is simply wrong when he says that “the lack of such a ‘severability clause’ in the AIA was not an oversight by Congress, but a deliberate omission to ensure passage of it.”

    The interesting question is how this rumor even got started in the first place. Having now looked into the actual Congressional record sources, I notice that the first AIA version introduced in the House included the following passage:

    For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art… This section does not apply to that part of an invention that… is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is ***severable*** from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.

    [emphasis added]

    This portion is not present in the first AIA draft introduced by Sen. Leahy in the Senate, and had to be added later in the process. The quoted portion did make it into the final law.

    In other words, the word “severable” is present in an early House draft, but not in the early Senate drafts. This word made it into the final law. Do you suppose that Guttag just read too hastily and did not notice the context of the “severable” found in HR1249 but not S23? He thought that this was a severability clause, and then when he saw that the final law did not include a severability clause, he concluded “well, the clause must have been taken out during the legislative process.” That is the best I can figure for how this rumor got started.

    One way or the other, however, it turns out that there is absolutely no basis to the rumor. In the unlikely event that the SCotUS finds any portion of the AIA to be unconstitutional, the question of severability will proceed according to the normal process where there is neither a severability clause nor a nonseverability clause.

    1. 6.1

      Brah, you’re trying to delve into the pits of ta rd that is EG’s and anon’s minds. Word to the wise: don’t do that.

      Still, I seem to remember some hubbub about severability around the time of passage so I don’t think it’s entirely unfounded. Still, if no such clause is in the final AIA then likely no court will read it in, even if it was congress’s attempt.

      1. 6.1.1

        You wouldn’t happen to remember where saw any of this “hubbub,” would you? On a particular blog or chat board?

      2. 6.1.2

        Actually, that is not true either. It is not necessary to have an express severability clause in a statute for a court to apply severability. Especially in a collection of various numerous unrelated statutory changes like the AIA.


          Ah Paul, late to the party, and missing out on the fundamental nature of the underlying specific law as to whether or not a court can later apply severability.

          The bottom line is that if Congress has spoken – one way or another – then a court is later constrained as to what it can or cannot do.

          No court can create an “interpretation” that flies in the face of the record of what Congress has contemplated.

          As explained to Greg, this is because the courts cannot make a nullity of what Congress does.

          If it “just does not matter” whether or not either a severability OR a non-severability clause has been offered and defeated, the important aspect that prevents Alaska and anything similar from being applicable is that you are no longer dealing with a “blank slate” of the wishes of Congress.


            [I]f Congress has spoken – one way or another – then a court is later constrained as to what it can or cannot do…

            Right. So here is common ground on which I believe that we can all agree. If Congress has spoken, then the Court is constrained to give effect to the will of Congress.

            So, the important question is has Congress spoken? If so, when, and what did It say?

            The argument, as I understand it, is that a severability clause was proposed, and Congress voted against it. I maintain that this does not constitute Congress “speaking” on the point. Congress “speaks” by enacting legislation. The US Code is a legally enforceable set of documents. The Congressional record is not. At most the record is potentially useful for the courts in construing a statute, but the legislative history is only ever suggestive, it is never actually determinative.

            Imagine, however, that the Court were to announce a new rule of statutory construction: “going forward, we are going to treat the legislative history as the single most important clue for statutory construction, and where Congress has voted against an amendment, we are never going to construe a statute as if it permits that which would have been permitted by the amendment, or as if the statute prohibits that which would have been prohibited by the amendment.” If if that rule were in effect (and it most certainly is not at present), it would matter a great deal, in that case, what was actually said in the rejected amendment. That is to say, you would really have to scrutinize the words of the rejected amendment to know the effect of that rejection on the construction of the statute actually enacted.

            Imagine, for example, two hypothetical amendments to the AIA, amendment (A) and amendment (B):

            (A) In the event that the first-t0-file provisions are found unconstitutional, the inter partes review provisions may stand separately. In the event that the inter partes review provisions are found unconstitutional, the first-to-file provisions may stand separately.

            (B) In the event that any provision of this act is found unconstitutional, all other parts may stand separately.

            Obviously, under the hypothetical rule of construction discussed above, the effect of rejecting these two amendments would each be very different from the other. If (A) were rejected, that really would not tell us anything about whether the unpatentability of tax avoidance strategies can stand in the event that first-to-file falls. If (B) were rejected, however, that would mean (under the hypothetical rule of construction above) that every last piece of the AIA is a package deal, and the whole thing stands or falls together. So, in order to discuss intelligently the effect of an amendment rejection (under the imaginary rule of construction), we would want to know exactly what the rejected amendment said.

            So, what did the rejected amendment to the AIA actually say? Well, it turns out that there was no rejected amendment. It never happened. This is all just an internet rumor, with no actual foundations in the Congressional record. That makes it rather difficult to assess the effects of this imaginary rejected amendment under the terms of the imaginary rule of statutory construction.

            But I will give you this, Anon: if your rule of statutory construction had any actual basis in any actual SCotUS holding (it doesn’t), and if your imaginary amendment had actually been voted and rejected by Congress (it wasn’t), well then you would have a really solid argument for what the AIA must stand or fall as a package deal.

            On the other hand, if “if”s and “but”s were candy and nuts, then every day would be Christmas.


              I maintain that this does not constitute Congress “speaking” on the point.

              This is clear logical error – as has been pointed out that this leads to direct nullities of the actions of Congress.

              Also, all of your professed “precedents” are NOT on point to this view of yours. Even the snippet that you supplied from the AIA supports my view and goes against your view.

              I am quite perplexed as to why you are so tight-fisted about a clearly bad logical point.


                [T]his leads to direct nullities of the actions of Congress.

                Fine. Who cares?

                Not all actions taken by Congress are legally enforceable. It is really important that the Courts not nullify the legally enforceable actions of Congress (that is, the statutes duly enacted by Congress within its prescribed powers under the Constitution). It is not at all important that the courts take care not to nullify actions of Congress that are not legally enforceable.

                Votes not to enact legislation do not create any legally enforceable effect. Therefore, it is not particularly problematic if a court should “nullify” these legal nullities.

                1. Fine. Who cares?

                  YOU should.

                  It wrecks your attempt to use Alaska or any of your other “precedents.”

                  Care more.
                  THINK more.

                2. I dare say that “think more” is sound advice for any of us. I promise to do more thinking.

                  You will pardon me, however, if I remain skeptical that any amount of additional thinking will make your rather imaginative story of the “AIA Titanic” any more plausible.

                  I expect that I would need to “DRINK more” rather than “THINK more” for such an outcome to arrive.

                3. Actually not Greg – for reasons already supplied to you.

                  (Mayhaps your refusal to reason is due to an early start on your alternative plan… 😉 )

                4. Let me call you out here as well Greg.

                  You state “Not all actions taken by Congress are legally enforceable. ” as if the converse were also true, and that the “point ” here belongs to you.

                  It does not.

                  Since NO ONE ever claimed that “ALL actions of Congress” was a critical point (and your statement does in fact allow for SOME actions taken by Congress [to be] legally enforceable).

                  This IS one of those times.

                  See link to patentlyo.com for an earlier reminder from me on this concept as has been applied in patent law.

    2. 6.2

      the SCotUS finds any portion of the AIA to be unconstitutional, the question of severability will proceed according to the normal process

      This portion may just be the first correct thing that you have said.

      I note though that your “logic” below (and your incorrect assessment of the legal cases you attempt to use) REMAIN wrong.

      You cannot have the Court turn either an offering of an amendment OR the voice of Congress in the defeat of an amendment into nullities.

      Or are you still holding to that “logic,” Greg?

    3. 6.3

      The desire to add an amendment will not be in a version of the AIA.

      That makes its intent no less real.

      As I said Greg, you keep on wanting something that is not needed.

      Your view which would make actions of Congress (the supplying of amendments and the votes on those amendments) into nullities suffers from simple flawed logic.

      A rejection of a condition IS a voice of Congress ON that condition.

      Elsewise, you make meaningless any such amendment and vote to decline that amendment.

      1. 6.3.1

        (and I was not talking about that Feinstein amendment – the one to reset First to Invent by eliminating First Inventor to File)


          Evidently, then, you were not talking about any Feinstein amendment. You see, the Congressional record is easily searchable. For example, here are the results of a search for all amendments that Sen. Feinstein either sponsored or co-sponsored in the 112th Congress. The AIA was then known as “S.23.” As you can easily see, Sen. Feinstein offered only one amendment to S.23, which is why that one is known as “the Feinstein amendment.” This is the amendment to do away with first-to-file. There are no other “Feinstein amendments” to the AIA.


            I will grant you that I may have the author of the proposed amendment incorrect.

            That however pails in comparison to the error of your logic that you remain firmly tight-fisted about.

    4. 6.4

      Thanks Greg. It is great to see some real substantive legal research reported in these comments.

      Of course this is all academic unless and until the Sup. Ct. actually strikes down any section of the AIA [a bi-partisan FEDERAL statute] as unconstitutional, something they rarely do. If that was being considered a serious likelihood there would logically have at least been some professional association or major trade association or respectable academics amicus briefing input on the two pending cert petitions on this subject.

      1. 6.4.2

        Paul, you do know that Professor Mossoff, the NYIPLA, and the IEEE all filed amicus briefs in support of certiorari. There were none filed in opposition. There were eight briefs in total filed in support of MCM Portfolio LLC v. Hewlett-Packard.

        I think you read way too much into silence from the likes of the ABA IP section, the AIPLA and the IPO. Surely the drug companies are not going to authorize the filing of a brief to the Supreme Court supporting the constitutionality of IPRs when they are spending their entire lobbying effort trying to exclude themselves from IPRs?


          Ned, meh, mere inconvenient facts to the head cheerleader of the IPR (minion of the efficient infringer).

    5. 6.5


      You have not proven that there was not vote.

      All that you have proven is that you have been unable to find the reference to, or record of, the vote.

      You do recognize the difference, right?

      Until then, your p00r logic remains front and center.

      As I have asked several times now, show one single court case that backs up your p00r “nullity” logic, or concede the point.

      1. 6.5.1

        You have not proven that there was not vote.

        All that you have proven is that you have been unable to find the reference to, or record of, the vote.

        You do recognize the difference, right?

        Yes. I recognize the difference, and I agree that I have not proven that there was not a vote.


          By the same token, I have not proven that Jimmy Hoffa is not buried in your backyard. Nor have I proven that there is not an invisible elephant living in your bedroom.

          The list of things that I have not proven is indeed long, especially when one considers all of the negative assertions that are unproven because they are unprovable.

          On the other hand, as I am not proponent of the “AIA Titanic” theory, it is not clear to me why it should fall to me to prove the non-existence of the vote. It seems more appropriate that it should fall to you to prove that the vote actually happened.


            Jimmy Hoffa is not germane to the discussion.

            A vote is.

            I hope you see the difference there.

            Again – as it is – the ball remains in your court (your “logic” that EVEN IF the vote was there, you would still want to have a nullity of that vote).

            Your move on that accord.


              Jimmy Hoffa is not germane to the discussion.

              A vote is.

              Too true. Perhaps, then, you might bestir yourself to adduce some evidence of this alleged vote. Until you do so, the rest of the discussion is just so much irrelevancy.


                Again – absolutely not – your “logic” is bad whether or not there has been a vote.

                And that is very relevant.

                The ball remains in your court.


                …and I just might “adduce some evidence” if you man up and admit your mistake.

                Otherwise, why should I bother? You “won’t care” that a vote did happen and somehow you will still insist on the wayward “logic” that the Court could on a whim “interpret” the law to be effectively something that Congress explicitly rejected.

                (I am amazed that you remain tight-fisted on such an obvious error of logic)

  4. 5

    Re: “Although I have not quite found the line in the decision, is appears that the court also held that even the denial of discovery is unreviewable.”

    I did not see anything in this decision about that either. But, even if this was an appeal of D.C. final decision instead of an IPR decision, would a D.C. trial discovery restriction or denial still be reviewable in the appeal? I don’t think so. In an IPR or other PTO trial would not an expanded discovery denial be petitionable at the time rather than appealable later?

  5. 4

    Not infrequently, Auto-correct delivers some gems. Ladies and gentlemen, I offer you anon’s:

    “Wah, so mean, wah, why is this viscous attack by 6 not edited out?”

    at 213221 below.

    It occurs to me what bad luck it is, if the Dennis-installed filter shuts out what one so painstakingly writes, only because the Auto-correct has cut in.

    Mind you, there is another possibility, that “viscous” is exactly what anon wanted to say. Who knows?

    1. 4.1

      LOL – or maybe it was just a typo…

      Do you know what Prof Crouch told someone who was too persnickety about typos…?

      But hey MaxDrei – focus on the form and not the content – per usual.

      1. 4.1.1

        Yeah I know. Viscous/vicious. Which lawyer knows and which one cares, about the difference in meaning?

        It’s just that Malapropisms (of which Dogberry and Mrs Malaprop are well-known exponents) are such a joy that when I see one, I want to share that joy with everybody.

        link to en.wikipedia.org

  6. 3

    Re some discussions below: J. Reyna filed a concurrence here, not a dissent. There is no way the 103 outcome here is going to change even IF the case is taken en banc. If you are waiting for an actual test case where the PTAB can actually be shown to HAVE actually instituted a clearly illegal IPR, one may be waiting a long time. If and when that ever happens, it could be decided on a statutory interpretation basis or with an APA suit. There is not a single judge on the Fed. Cir. or the Sup. Ct. that has ever yet suggested that any part of the AIA has any Constitutional issue.
    On the other hand, these claims of alleged time bars by privity with other defendants in earlier suits seem fairly common in IPRs. Expensive and burdensome D.C. style “fishing expedition” discovery is not allowed in IPRs. But why does not the Board at least allow the patent owner a standard set of interrogatories limited to that issue if there is a plausible connection between the parties?

    1. 3.1

      here is not a single judge on the Fed. Cir. or the Sup. Ct. that has ever yet suggested that any part of the AIA has any Constitutional issue.

      1) that is not true.


      2) they have not yet been asked directly.

    2. 3.2

      To answer the question in last part of the comment of 3.0, the entire point of opposing this IPR nonsense is that there aren’t, at present, sufficient checks in place to ensure a fair resolution of the issues. I hope people see the issues here… whether or not you are in favor of the end result.

      1. 3.2.2

        Fine, someone please propose specific Rule or legislative changes for IPRs to improve them. I have yet to see any even proposed, and I would like to see something constructive actually considered. That is, to propose realistic alternatives to the the now constant unrealistic ranting over on the Quinn blog to just entirely eliminate IPRs, for which there is no Congressional support. Especially since IPRs have been effective in reducing egregious patent troll suits that gave that part of the AIA such strongly bi-partisan support for its passage to begin with. 85% of IPRs are by companies being sued for making and/or selling actual products.
        Furthermore, eliminating IPRs would require explaining to Congress why, if IPRs are so terribly and unfairly run, and so wrongly decided, they have such an extreme high Fed. Cir. affirmance rate, and almost all that are instituted and won are won with prior art the PTO had never considered in initially granting the subject claims? And why there have not been any successful mandamus or Administrate Procedural Act suits for their conduct or their decisions. And why the same attacks are not made against any of the other, prior-enacted, post-grant proceedings,* when the most significant difference is that those other post-grant proceedings have been too slow to get decided in time to provide defendants with an alternative to paying settlements to save litigation costs?

        *interferences, public use proceedings, ex parte reexaminations, and inter-partes reexaminations.


          You rather miss the point Paul that an alternative to an unconstitutional law is not required to find that law unconstitutional.


          And re-reading your post, I can only say that you have well over-glossed many issues, and have folded in nearly all the lovely “soundbytes” of the Kool-Aid crowd – everything from the virtual “ends justify the means” to the false attack based on “Tr011s.”

          Instead, maybe focus on the aspects of actual patent law – such things as there is no such requirement of “actually making and/or selling products.”

          Or better yet, maybe focus on exactly why IPRs are being held in such disdain – from a purely legal standpoint.

          Put your pom-poms down, OK?


          Paul, specific rule changes? What about placing the entire process under control of a federal judge where the institution decision is made by the court and the decision of the PTAB is treated only as advisory.

  7. 2

    Finally! – Judge Reyna concurrence disagrees with Achates and calls for en banc review. He states that the decision under 315(b) is a final decision, not a preliminary institution decision, that should be reviewable on appeal.

    Achates renders § 315(b) toothless. For example, if
    the Board simply chose to ignore a time bar issue altogether,
    there would be no avenue for appellate review. I
    do not believe that is what Congress intended. Rather, I
    believe § 314(d) was intended to ensure that institution
    decisions were truly preliminary, not to capture all statutory
    limitations on the inter partes review (“IPR”) process.
    Here, the statutory language explicitly allows review
    of the Board’s final decision,1 and in this case we are faced
    with an argument that the Board exceeded the scope of its
    statutory authority both in instituting the IPR and in
    issuing its final decision.
    It is clear that not every decision on whether there exists
    legal basis to commence an IPR is an unreviewable
    determination by the Director to institute as contemplated
    under § 314(d). For example, the Supreme Court has
    noted that § 314(d) may not bar consideration of a constitutional
    question, but that it “does bar judicial review of
    the kind of mine-run claim” of whether the grounds stated
    by the PTO in its institution decision matched the
    grounds in the original petition for IPR. Cuozzo Speed
    Techs., LLC v. Lee, 136 S. Ct. 2131, 2136 (2016). The
    Court noted that Congress did not intend for a final IPR
    decision to “be unwound under some minor statutory
    technicality related to its preliminary decision to institute
    inter partes review.” Id. at 2140.

    The time-bar question is not a “mine-run” claim, and
    it is not a mere technicality related only to a preliminary
    decision concerning the sufficiency of the grounds that are
    pleaded in the petition. See Cuozzo, 136 S. Ct. at 2136.
    Indeed, the time bar question is immaterial to the Board’s
    initial determination of whether there is a reasonable
    likelihood the petitioner would prevail on the merits.
    Rather, the time bar deprives the Board of jurisdiction to
    consider whether to institute a review after one year has
    expired from the date a petitioner, real party in interest,
    or privy of the petitioner is served with a complaint
    alleging infringement of the patent. 35 U.S.C. § 315(b).
    Compliance with the time bar is part of the statutory
    basis on which the final decision rests, despite the fact
    that the question is first evaluated at the outset of the
    proceeding and noticed as part of the institution decision.

    Cuozzo explicitly notes that its holding does not “enable
    the agency to act outside its statutory limits” and that
    such “shenanigans” are properly reviewable. 136 S. Ct. at
    2141–42. That admonition compels us to review allegations
    that the Board has ignored, or erred in the application
    of, the statutory time bar.

    1. 2.1

      Except Ned – that is just not what Congress wrote in the AIA.

      I “get” the concern, but the words of Congress are plain and simply are not up to the type of “interpretation” necessary to change them.

      The good ship USS AIA Titanic was built without bulkheads and built to be “too big to fail.”

      Like its namesake, it’s “all or nothing” – as per the explicit statements of Congress.

      1. 2.1.1

        The good ship Essence of Electronic Structure was built without bulkheads and built to be “too big to fail.”


        Too bad IPRs aren’t going anywhere.


          Your “fix” does nothing except reflect your feelings.

          On the other hand, I have presented solid points that have yet to be countered by anyone.

          More than just a little bit of difference there Malcolm.

      2. 2.1.2

        Two points:

        (1) Read Justice Alito’s dissent in Cuozzo and then explain to me how Congress’ words in §314 are more clear than the examples that Alito gives.

        (2) I would be interested to see the citation in the statutory text for the assertion that Congress has explicitly made the AIA an all or nothing deal. Just because they did not include a severability clause is not the same thing as saying that the whole statute stands or falls together. The Court has constructed rules for deciding whether a given statutory portion is or is not severable in the absense of a severability clause. The rule is not just “well, no severability clause, so we just throw out the whole thing from soup to nuts.”


          I would be very interested in your support for 2).

          I have asked like forever for someone (anyone) to make a cogent legal argument and to this date have had no takers.

          Can you provide me some more information?


            “[A] court should refrain from invalidating more of the statute than is necessary. . . . `[W]henever an act of Congress contains unobjectionable provisions separable from those found to be unconstitutional, it is the duty of this court to so declare, and to maintain the act in so far as it is valid.’ ” Regan v. Time, Inc., 468 U. S. 641, 652 (1984) (plurality opinion), quoting El Paso & Northeastern R. Co. v. Gutierrez, 215 U. S. 87, 96 (1909). The standard for determining the severability of an unconstitutional provision is well established: ” `Unless it is evident that the Legislature would not have enacted those provisions which are within its power, independently of that which is not, the invalid part may be dropped if what is left is fully operative as a law.’ “

            Alaska Airlines, Inc. v. Brock, 480 US 678, 684 (1987)

            In other words, even if the IPR provisions of the AIA were unconstitutional, it is not as if first-to-file necessarily goes out along with IPR. The Court has to decide whether the legislature would have enacted first-to-file even without the IPR provisions, where the presumption is that Congress would have done so, and the one challenging first-to-file has the burden to show that the legislature would not have enacted first-to-file without IPR.


              That won’t cut it.

              (It does not deal with the situation of the AIA on which separability was explicitly rejected.

              You got anything else?


                (You cannot have the court render writings of law that Congress explicated rejected. With THIS law, Congress was explicit that no such type of “line item veto” was allowed.)

                1. …your “savings” only applies in the absence of Congress’s intention vis a vis separability.

                  You don’t have that with THIS law.


                Where in the text was severability explicitly rejected? I have asked that twice already. Do you care to point me to the code text on which this assertion is supposedly grounded?

                1. You keep on wanting something that is not needed Greg.

                  The Congrasional record is clear that the explicit amendment to add the separability clause was considered – and rejected by Congress.

                  You cannot have a Court “interpretation” that flies in the face against the direct expressed desire of Congress.

                  As I asked above: do you have a citation that actually addresses THIS situation? The ones you supplied are just not good enough.


            Anon said that there is no way to square the language of 314(d) with the idea that the CAFC can police violations of the 315 prohibitions. Justice Alito’s Cuozzo dissent listed all sorts of language that is as stronger or stronger than 314(d), in which the Court nonetheless held that judicial review is available. In other words, the only way that you can say that “Congress’ clear intent is for no review at all” is if you read Congress word’s independent of SCotUS interpretation of analogous language.

            But Congress is presumed to know how SCotUS interprets previous statutory language. If Congress wrote the words in a way that has previously been held to permit some judicial review, it follows that Congress intended some judicial review.

            The idea that the “clear language” cuts off all review is a deceptively over-simplified argument.


              Greg, there is no doubt in my mind nor anyone reading Cuozzo that Achates is plainly wrong.

              Judge Reyna openly says so, and has called for en banc review.


              Questions geared to what the PTAB can do – given what Congress has written – are simply not the right questions to be asking.

              The PTAB is only – and fully – complying with the law as written by Congress.

              The right question has to do with what Congress has done.

              Not sure if that is what you mean by “deceptively simple,” but it IS quite simple.

              And yes – it quite simply has an extremely impactful repercussion.

              Simple, impactful, and unavoidable.

              And one the Court (or court) will want to “volunteer” addressing, because there is only one logical and legal path. A rather painful one precisely because Congress gambled on the Chaebol effect.

      3. 2.1.3

        When you say “explicit,” that would imply that there is an inseverability clause in the AIA. I have not seen it. Care to cite the code section?


            Plainly put: you simply cannot have the Court “interpret” something that will have the exact same effect as what was explicitly rejected by Congress.


            Anon, there exists this statutory creature called a severability clause, and when Congress adds one to a law, that is an explicit expression of an intent to make provisions severable.

            Then there is this other statutory creature called an nonseverability clause, and when Congress adds that one to a law, it constitutes an explicit expression of a desire that provisions should not be severable.

            But when Congress neglects to include either a severability clause ir an inseverability clause, that is not an instance of Congress bring explicit one way or the other. That is an instance of Congress being silent on the issue of severability, and when Congress is silent, the Alaska Airlines rule kicks in.

            In other words, merely having a draft bill that includes a severability clsuse, but which does not get enscted into law is not the same thing as actually having included a nonseverability clause in the statute. If you really think that not voting for explicit severability is the same thing as voting for explicit nonseverability, you are setting yourself up for a rude disappointment.


              Greg – you are wrrong.

              The point here is that the rejection by Congress is every bit as good as adding a nonseverability clause.

              Bottom line still stands: the Court cannot write into the law an effective state that was considered and rejected by Congress.

              If Congress wanted this thing to be severalable, they would have voted to accept the amendment.

              They voted the opposite way.

              This IS an instance of Congress expressing an explicit desire.

              You want to slide a “not vote for” in but that was not what happened – there was a vote AGAINST.


                ..your view makes a nullity of BOTH the amendment (why bother with an amendment at all) AND the voice of Congress rejecting that amendment (Congress spoke, but you are having the judicial branch re-insert the amendment as if it passed).

                I really do hope you see how bad your logic here is Greg.

                The avenues of judicial savings require an indifference at the original Congressional level. You simply do not have that with THIS law.

                Please find me an actual case where the courts went against a clear and unmistakable vote by Congress and wrote in what was in a defeated amendment for a savings purpose.

                That is what you need to show.

                1. Communications Workers v. Beck, 487 U.S. 735, 758–59 (1988):

                  First and foremost, petitioners point to the fact that Congress expressly considered proposals regulating union finances but ultimately placed only a few limitations on the collection and use of dues and fees, and otherwise left unions free to arrange their financial affairs as they saw fit. In light of this history and the specific prohibitions Congress did enact, petitioners argue that there is no warrant for implying any further limitations on the amount of dues equivalents that unions may collect or the manner in which they may use them. As originally passed, § 7(b) of the House bill guaranteed union members… the so-called “bill of rights for union members,” H. R. Rep., at 31, Leg. Hist. 322,… but the Senate steadfastly resisted any further attempts to regulate internal union affairs…

                  Petitioners would have us infer from the demise of this “bill of rights” that Congress ” `rejected . . . general federal restrictions on either the dues equivalents that employees may be required to pay or the uses to which unions may put such dues-equivalents,’ ” and that aside from the prohibition on political expenditures Congress placed no limitations on union exactions other than the requirement that they be equal to uniform dues…

                  We believe petitioners’ reliance on this legislative compromise is misplaced… It simply does not follow from this that Congress left unions free to exact dues equivalents from nonmembers in any amount they please, no matter how unrelated those fees may be to collective-bargaining activities… [W]e think it far safer and far more appropriate to construe § 8(a)(3) in light of its legislative justification, i.e., ensuring that nonmembers who obtain the benefits of union representation can be made to pay for them, than by drawing inferences from Congress’ rejection of a proposal that did not address the rights of nonmembers at all.

                  Well, look at that. Why, it would appear that the Court is more concerned with the actual words of the statutory text than they are with speculation as to what is conveyed—by negative inference—by words that did not make it into the statutory text.

                2. That is simply not on point to what I am asking you for Greg.

                  The AIA (and the point we are talking about) is binary – not a list which may or may not have more items on a list.


                  Please find what I asked of you or concede the point.

                3. Please find what I asked of you or concede the point.

                  Now that is rather rich. I have cited multiple cases for you to show that the law is as I say it is. You have cited nothing but your own say-so to show that the law is as you say it is. Somehow, your unsupported ipse dixit trumps my case citations?

                  I will happily concede that my case citations might not carry the day. The Court is always free to distinguish its own precedents. That said, they could not even “distinguish” your “precedents,” because you do not actually have any, or at least you have not cited them if you have.

                  In any event, it is not for me to concede the point or not. My say-so makes no difference. What matters is how the Court should approach the severability issue, when and if the Court ever deigns to take it up. At that point, what I say will make no difference. My only point is that if you really expect that stammering “but, but, but the Congress voted against a severability clause” will make a bit of difference to those nine Justices, then you are setting yourself up to be sorely disappointed. You (or rather the party addressing the point) will need something better than that.

                  A Congressional “no” vote* and $2.50 together will buy you a cup of coffee.

                  * If there really was such a vote. You still have not cited the Congressional record to back up this assertion.

                4. Your citations to multiple cases have been refuted.

                  They are inopposite to situation here with the AIA inwhich there is an expressed desire of Congress. You attempt to apply precedent where it just does not apply.

                  I have explained how what you want creates nullities BOTH of the placement of the amendment for vote and the subsequent vote.

                  AS for the Supreme Court and whether or not they “follow the law,” well, we BOTH know that they simply do as they please, eh?

                  But that is not really the issue now is it? OUR discussion (and why bother having it if we do not see this through to how the law SHOULD be) is about how to read the situation correctly.

                  To that end, you SHOULD either find a pertinent citation, one that does fit the way THIS law (the AIA) was passed, or you should concede the point.

                  (further, I gave you the name of he amendment – that suffices for a blog conversation – your desire to play coy does not change the fact that your position remains legal error)

                5. Your citations to multiple cases have been refuted.

                  This assertion is, perhaps, the crux of our disagreement. I can happily concede (indeed, I have already done so) that it is possible to distinguish the precedents that I have cited. To say that a court can distinguish a precedent, however, is not the same as to say that the court will distinguish the precedent.

                  Courts want to follow some precedent. If my side shows up and cites Alaska Airlines and Beck, and your side shows up and cites “I read somewhere on the internet…,” you are asking rather a lot to imagine that they will discard the only law actually in front of them and chart a totally new path.

                  Which brings us back to my very original question: what is the law that you believe compels the SCotUS, having once found IPRs unconstitutional, to throw out first-to-file at the same time?


                You want to slide a “not vote for” in but that was not what happened – there was a vote AGAINST.

                A few responses:

                (1) I am beginning to feel as if I am arguing with an urban legend here. Do you care to cite the relevant portions of the Congressional record? If you are going to lay such stress on an alleged rejection, it seems worthwhile to be clear an explicit about exactly what was rejected.

                (2) Even if I grant, ex hypothesi, your characterization of the Congressional action, I am not convinced that it gets you whither you want to go.

                So Congress was presented with an occasion to add a severability clause, and affirmatively chose not to add it. Fine. From this we can safely conclude that they did not wish to make all portions of the AIA each severable from the others.

                They also did not add a nonseverability clause. From this we can equally well infer that they did not wish to make the whole AIA an all-or-nothing deal.

                Evidently, what Congress wanted was to make the AIA subject to the Alaska Airlines default rule. We can infer this volition from the fact that Congress had every opportunity to add either a severability clause or a nonseverability clause, and yet they added neither.

                1. (and whether you are convinced or not is a YOU problem – as I noted, your view cannot stand in the face of plain logic)

                  And NO – you cannot infer what you want to infer from a lack of adding a nonseverability clause, because you would again be doubling down on your poor logic.

                  The rejection of the severability clause – in and of itself – is enough to remove the “default” position.

                  You keep on wanting a “default” position that just is not present with THIS law.

                  That “default” position was gone with the introduction and the rejection of severability.

                  And yes, the “default” position would also have been gone through a path not taken of an introduction of a specific “nonseverabilty” clause and the rejection by Congress thereof.

                  You simply have to remember that the “default” is only there for when Congress does not express its desire on this binary matter.

                  Congress DID express its desire.

                  There is no “default” position to be had with THIS law.

                2. You have not answered the actual point put to you Greg (and conveniently have not discussed how your “logic” would turn BOTH an amendment AND the vote on that amendment into nullities).

                  You furtively seek to kick dust up over the point of law that I have presented, pretend that your cites are meaningful when they are not, and engage in pure name calling instead of addressing the actual legal point put to you.

                  Why is that?

                  (I think we both know)

                3. You furtively seek to kick dust up over the point of law that I have presented…

                  You have presented a point of law? I must have missed it. Could you please point me to it? I have been waiting for you to cite some law.

                  Meanwhile, I cannot see that I have been “furtive” about anything. Indeed, I doubt it is even possible to “do[ something] in a quiet and secret way to avoid being noticed” on an blog comment forum. By necessity, everything that I have done has been out in the open.

                4. More effort from you on anything BUT the major point we are discussing – and how your “logic” with its nullities simply cannot be.

                  Any time you want to be on point Greg….

                5. So, I was curious enough about this whole “the Congress voted against severability” legend, that I decided to go look in the Congressional record. Volume 157, page H4491 reports the complete exchange on this subject, which was as follows:

                  Amendment No. 11 Offered by Mr. Watt

                  The Acting CHAIR. It is now in order to consider amendment No. 11 printed in part B of House Report 112-111.

                  Mr. WATT. Madam Chair, we were expecting Congresswoman Waters. I would ask unanimous consent that this amendment be delayed until we can determine whether she is still planning to offer it.

                  The Acting CHAIR. The Committee of the Whole is unable to reorder the amendments.

                  Mr. WATT. In that case, I offer the amendment as the designee of the gentlewoman from California.

                  The Acting CHAIR. The Clerk will designate the amendment.

                  The text of the amendment is as follows:

                  Page 139, insert the following after line 12 and redesignate succeeding sections (and conform the table of contents) accordingly:

                  SEC. 29. SEVERABILITY.

                  If any provision of this Act or amendment made by this Act, or the application of a provision or amendment to any person or circumstance, is held to be unconstitutional, the remainder of this Act and amendments made by this Act, and the application of the provisions and amendment to any person or circumstance, shall not be affected by the holding.

                  The Acting CHAIR. Pursuant to House Resolution 316, the gentleman from North Carolina (Mr. Watt) and a Member opposed each will control 5 minutes.

                  The Chair recognizes the gentleman from North Carolina.

                  Mr. WATT. Madam Chair, I yield myself such time as I may consume solely to say that this is a straightforward amendment that provides that if one part of the bill is determined to be unconstitutional, it can be severable from the rest of the bill and it doesn’t bring the rest of the provisions down. That’s a standard policy to put in most legislation.

                  With that, I reserve the balance of my time.

                  Mr. SMITH of Texas. Madam Chair, I rise to claim the time in opposition, although I support the amendment.

                  The Acting CHAIR. Without objection, the gentleman is recognized for 5 minutes.

                  There was no objection.

                  Mr. SMITH of Texas. I thank the gentleman for offering the amendment, and I urge my colleagues to support it. I yield back the balance of my time.

                  Mr. WATT. Madam Chair, I have just been advised that we were mistaken in the desire of Ms. Waters to offer the amendment. She didn’t want me to offer it in her stead, and that’s why she didn’t show up. I would just ask unanimous consent to withdraw the amendment, unless the chairman has an objection.

                  The Acting CHAIR. Without objection, the amendment is withdrawn.

                  There was no objection.

                  Did you see the part in there where the Congress voted against the severability clause? No? Yeah, that’s because it never happened.

                  So, anon, your whole argument was predicated on the idea that Congress was offered the chance to include a severability clause and they voted against it. Does your conclusion change now that you see that this supposed vote never happened?

                6. Sorry – but you did not look enough. The vote did happen – just not at the time in which you took the above snippet.

                  Keep looking Greg.

                  It is really humorous how much effort you are expending in being wrong on this point.

                  And we both know why you are expending the effort, eh? We both know what must follow if you concede this point, eh?

                7. I think it of ultimate irony here Greg, that you continue to fail to see that my point is the valid one.

                  Even your quote here supports my view and refutes your own.

                  Or did you not bother to read what was being said in your hurry to think that this section meant that no actual vote had occurred?

                  Read again the content of what you supplied. Compare that with what I have been telling you. Then – if only for argument’s sake – say that a later vote did occur for a similar provision introduced by Ms. Feinstein.

                  For argument’s sake, would you then concede what I have been trying to tell you?

                8. No, I think that I have already made clear that a vote against a severability clause is not the same thing as a vote in favor of a nonseverability clause. In other words, I would not concede your view of the law.

                  The SCotUS does not construe or give effect to legislative history. They give effect to statutes. Sometimes, the make use of legislative history to construe statutes, but legislative history is never binding authority. It is only persuasive authority.

                  The statute that the SCotUS is being called upon to construe (in the hypothetical case we are discussing) does not contain a clause making all provisions of the AIA nonseverable. Therefore, as I have been saying over and over, the Court is going to revert to its ordinary (i.e., Alaska Airlines) rules for deciding whether a given provision of the AIA is severable from the rest.

                  At that point, your side is free to point to the legislative history as evidence for a Congressional intent that the AIA stand or fall as a package deal. At that point, it will not be enough to say “your honors, I read on Gene Quinn’s blog that Sen Feinstein tried to introduce a severability clause and the Congress voted against it.” You actually have to cite chapter in verse from the Congressional record to make them believe that this vote actually happened.

                  Which going to be rather difficult, because it turns out that the vote did not happen. Therefore, you will forgive me if I do not see how the court is going to conclude that Congress intended nonseverability. You need actual evidence for this assertion, and to date there is none.

                9. Look again Greg at the very thing you supplied first thing today.

                  You are (quite simply) wrong, and your “logic” creates nullities of both amendments and votes on amendments.

                  Quite clearly, your view just cannot stand.

                10. Your Alaska quite does not fit – for reasons already explained.

                  You need something else Greg.

                  Why are you having difficulty finding the example in which your “preferred” “neutral state” is not there and instead the intent of Congress has been made manifest?

                  I don’t think that you are looking for the right thing.

                11. Even your quote here supports my view

                  Huh? What are you talking about?

                  Your theory depends on the idea that Congress voted to reject the amendment. There was no vote.

                  Rep Watt proposed a severability clause amendment (on behalf of Rep Waters). Then Rep Smith said that this was a good idea. Then Rep Watt learned that Rep Waters had changed her mind about proposing the severability clause (why? who knows? the record is silent), so Watt withdrew it before a vote could even be scheduled.

                  There was no vote.

                  No vote = no expression of Congress.

                  How does your “AIA Titanic” theory even work without an expression of Congressional preference?

                12. You are correct that my position does require a vote.

                  But my logic is correct – whereas your logic remains deeply flawed.

                  I don’t have the bandwidth at the moment to find that vote for you, but rest assured, my logic is intact, while yours, well, just how many drinks did you have already?

                13. I think we have already established that we do not agree about the effect of a vote if one had happened. Pleasebracket that, however, because it really has nothing to do with my immediately previous question.

                  You said that the exchange between Watt and Smith supported your “AIA Titanic” theory. But your theory requires a vote of Congress, and the exchange between Watt and Smith did not include a vote.

                  So, in what sense does that exchange “support” the AIA Titanic theory? Could you please unpack the reasoning by which you conclude that the Watt/Smith exchange supports your theory?

                14. I think we have already established that we do not agree about the effect of a vote if one had happened. Please bracket that, however, because it really has nothing to do with my immediately previous question.

                  It has everything to do with you being wrong logically and trying to use precedent that simply does not fit the situation as was set for our discussion.

                  Secondly, you draw a false conclusion about something that I have NOT said – I did not say that “conclude that the Watt/Smith exchange supports your theory

                  What I DID say was that the infirmity created by the USS AIA Titanic condition leads to the “any one hole below the waterline sinks the entire ship.”

                  THAT logic still stands.

                  My logic remains correct, and your logic – which you never seem to get around and actually address – remains simply wrong.

                  Unless of course, you have done as I have asked and found a situation in which your logic (the nullity case) has actually been followed by the courts.

                  And we both know why you have not produced such a case, eh?

                15. Sept 21 @ 5:47 am:

                  I did not say that… the Watt/Smith exchange supports [my] theory”

                  Sept 19 @ 6:35 am:

                  I think it of ultimate irony here Greg, that… [e]ven your quote here supports my view and refutes your own… [D]id you not bother to read what was being said in your hurry to think that this section meant that no actual vote had occurred?

                16. [Y]ou [are] wrong logically and trying to use precedent that simply does not fit the situation as was set for our discussion… My logic remains correct, and your logic – which you never seem to get around and actually address – remains simply wrong.

                  I cannot imagine what you mean by “never seem to get around and actually address.” I have been doing nothing but addressing the so-called faults in my logic. I gather that you do not find my responses persuasive. That is fair enough, of course. I do not find your arguments persuasive either. I have rather lost interest in that aspect of the discussion, because it seems merely to be going round in circles at this point. If you are not convinced by the case law that I have cited, well I have already agreed with you that it can be distinguished from the factual predicates that would be necessary to support the “AIA Titanic” theory. I am unconvinced that the Court would distinguish these precedents, but they certainly can, so I really have no rebuttal to your argument that they can be distinguished, and you do not appear to want to engage with the question of why they should be distinguished.

                  To my mind, however, what has become clear through the course of this discussion is that all talk of precedents and “logic” is rather beside the point. This is not a statutory construction blog. It is a patent blog. The only reason why the statutory construction arguments are relevant here is because they supposedly might affect the future applicability of the AIA. However, the only way that they can affect the AIA is if there was actually a vote on severability.

                  In other words, the actual existence of this alleged vote is a condition precedent to any of the rest of the discussion being meaningful in the first place. Therefore, rather than treat the question of whether this vote did or did not occur as a second order question—to be considered only after the hermeneutics of Congressional intent are first resolved—it seems to me that this is the first order of business to resolve.

                  Did the vote take place? So far, I have conclusively disproven every alleged piece of evidence for the existence of the vote. It is true that I have not proven that the vote did not take place, in the same way that I cannot prove that there is not an invisible and remarkably agile elephant living in your bedroom.

                  But, of course, we do not traditionally allocate the burden of proof to the part asserting non-existence. Rather, it falls to the party asserting existence to provide the proof. That is to say, I do not have prove that the vote did not take place. You, as the party alleging the existence of the vote, have to prove that it did take place.

                  Until we establish that there was such a vote, the rest of the discussion about canons of statutory construction is just so much irrelevancy.

                17. Repeating your error over and over and over again is NOT addressing your error.

                  Wanting to use “precedent” that is simply NOT precedent for the point that you want to make is NOT addressing your error.

                  “Not caring” is NOT addressing your error.

                  “Not agreeing” is NOT addrsssing your error.

                  You have a plain and fundamental error in your logic when that logic would make the voice of Congress (whether or not that voice is established d in the immediate case – YOUR logic simply does not – and cannot – carry) into a nullity.

                  Until you address this Greg, the ball remains in your court.

                18. This is one of those threads that should be imortalized in a side-page as a warning sign to all the blog’s newcomers.

                19. A warning of exactly what, Ben?

                  Perhaps you are having a difficult time following the logic here, but that does not mean that anyone interested in the law would likewise have that difficulty.

                  Greg’s assertion that the Court could ignore an explicit voice of Congress is a rather important legal point.

                  If you don’t like the fact that I am pressing Greg for a clear legally supported view on this, you don’t have follow along.

                  But let’s leave out the asinine comments that only show your lack of legal prowess, ok?


          Welcome to anon. There was an exchange awhile ago where it turned out that his argument that ‘congress explicitly authorized terms sounding in function’ (not refering to 112 6th) was in reference to the lack of explicit comment.


            I see that “editing” is getting active again – and the vapid comments are allowed to remain, while the accurate assessment is edited out.

            Hey, if you don’t like to see the word “vapid,” do something about the false and vapid statement itself.

            You have a clear case here Prof. of a two-bit examiner who has had his poor feelings hurt and is tr011ing every post I make in the (vain) hope of finding some flaw that he can criticize.

            What kind of “ecosystem” is that?

            Especially when he misses time and time again and ends up simply making CRP up?


              Wah, so mean, wah, why is this viscous attack by 6 not edited out?


              (you really don’t get the “objectively and evenly applied” aspect of real rules, do you 6?)


                “Wah, so mean, wah, why is this viscous attack by 6 not edited out?”

                A. Because it isn’t an “attack” at all, it’s a factual finding backed by a mountain of evidence.

                B. Because auto-filter doesn’t filter ta rd. Ta rd.

                1. Your opinion is not fact.

                  I was not talking about any “auto-filtering” in regards to the objective and even application of “rules.”

                  Do you want to swing and miss again?

    2. 2.2

      From the concurrence: The Court noted that Congress did not intend for a final IPR decision to “be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review.” Id. at 2140.

      The patentee’s behavior here sure the heck would seem to fall under this passage.

      The junk patent is gone. Good riddance.

    3. 2.3

      I’m with you, Ned. Good to see that Reyna is on board for en banc review. I have reason to believe that Linn is also, but he has taken senior status, so he is not guaranteed a vote on en banc reconsideration. It would depend on the case. Still, I am hopeful for en banc reconsideration of the Achates mistake.

    4. 2.4

      Reyna would have been far better off separating his argument and attacking the “final decision” aspect while not addressing the initiation decision point (since HE was not asked the right question about that initiation decision point – hint, the Constitutional one).

      The language that Congress used for the initiation decision is far too simple to admit of any other interpretation than “you cannot appeal.”

      But as I have explicated, this is the very flaw that should be the IPR’s undoing – as even Congress must respect the other Constitutional protections concerning property.

      Making the non-appeal status stronger only makes the IPR process more infirm.

      But you have to ask the right question.

Comments are closed.