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.
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.
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)…?
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:
[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.
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.
You wouldn’t happen to remember where saw any of this “hubbub,” would you? On a particular blog or chat board?
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.
“Fine. Who cares?”
YOU should.
It wrecks your attempt to use Alaska or any of your other “precedents.”
Care more.
THINK more.
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.
Actually not Greg – for reasons already supplied to you.
(Mayhaps your refusal to reason is due to an early start on your alternative plan… 😉 )
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.
“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?
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.
(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.
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.
Lol – are you dissing Ned…?
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).
Greg,
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.
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.
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)
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?
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?
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.
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
You find joy in some rather odd places.
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?
“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.
and
2) they have not yet been asked directly.
No cite.
Ned asked directly.
Ned did not ask the right question.
Since you are aware of Ned asking A question, no cite is necessary.
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.
Far, far far too much “the Ends justify the Means” going on…
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.
That would be an interesting change for the Legislative Branch to consider…
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.
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.
The good ship Essence of Electronic Structure was built without bulkheads and built to be “too big to fail.”
Fixed.
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.
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?
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.)
…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?
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.
Greg, please clarify what you mean regarding point 1.
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.
Your argument falters Greg because you haven’t paid attention to how THIS law passed.
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.
People STILL are not asking the right questions, Ned….
His argument is faulty, fractured, and not very compelling.
I agree, Ned. Achates was just plain wrong.
Achates is as it is because of the question asked of that court.
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.
…will NOT want to volunteer…