In re Aqua: Ambiguity in the Statute Means Deference to the PTO

In re Aqua (Fed. Cir. 2016)

In its newly filed brief in this pending en banc case, the USPTO sets forth the three statutory provisions of 35 U.S.C. § 316 that are related to amendment practice in an Inter Partes Review (IPR) proceedings: §§ 316(a)(9); (d)(1); and (e). [Aqua Products–PTO brief.] Taking them out of order: Section (d) allows for one motion to amend; Section (a)(9) gives the PTO broad regulatory authority to set the standards and procedures associated with the motion to amend; and finally Section (e) indicates that petitioner has the burden of proving unpatentability. The friction between these sections may not be inherent to the statute, but arose when the PTO created the rule that the patentee must prove patentability of any amended claim before the motion will be allowed. The patentee argues in Aqua that the PTO approach is contrary to § 316(e) while the PTO argues that its approach is allowed by the broad rule-making-authority granted by § 316(a)(9).

316(a) Regulations. —The Director shall prescribe regulations— (9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d).

316(d) Amendment of the Patent.— (1) In general.—During an [IPR], the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:(A) Cancel any challenged patent claim; (B) For each challenged claim, propose a reasonable number of substitute claims.

316(e) Evidentiary Standards.— In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

In its brief, the PTO explains that assigning burdens associated with the motion to amend is a “standard” expressly falling within its rulemaking authority and thus must be granted deference by the Federal Circuit on appeal. That portion of the argument appears clearly correct. The difficulty for the PTO comes into play in distinguishing Section 316(e) — its best and first argument is that the provision does not expressly discuss amendments: “For one thing, § 316(e) never mentions amended claims.” The PTO goes on to argue that 316(e)’s implicit focus is on burden’s associated with claims-at-issue and not proposed claims. “§ 316(e) speaks only to the petitioner’s burden of proving the unpatentability of existing claims; it does not specify who has the burden of proving the patentability of new, never-before-examined substitute claims.”

The brief also takes the interesting tack of walking through the amici filings and pointing out that none of them fully agree on the meaning of the supposedly unambiguous Section 316(e).  If the section is seen as ambiguous, then the PTO’s deference level kicks-in once again.

Any amicus brief supporting the USPTO petition will be due by November 2, 2016 with oral arguments set before the entire court on December 9, 2016.

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72 thoughts on “In re Aqua: Ambiguity in the Statute Means Deference to the PTO

  1. Any amicus brief supporting the USPTO petition will be due by November 2, 2016

    Curious (but 1azy) – were any filed?

    1. No. 16-76
      Title:
      J. Carl Cooper, Petitioner
      v.
      Square, Inc.
      Docketed: July 15, 2016
      Lower Ct: United States Court of Appeals for the Federal Circuit
      Case Nos.: (2015-1925, 2015-1942, 2015-1943)
      Decision Date: April 14, 2016

      ~~~Date~~~ ~~~~~~~Proceedings and Orders~~~~~~~~~~~~~~~~~~~~~
      Jul 13 2016 Petition for a writ of certiorari filed. (Response due August 15, 2016)
      Aug 12 2016 Waiver of right of respondent Square, Inc. to respond filed.
      Aug 24 2016 DISTRIBUTED for Conference of September 26, 2016.
      Sep 9 2016 Response Requested . (Due October 11, 2016)
      Sep 30 2016 Consent to the filing of amicus curiae briefs, in support of either party or of neither party, received from counsel for petitioner.
      Oct 11 2016 Brief amicus curiae of Raymond A. Mercado, PH.D. filed.
      Oct 11 2016 Brief of respondent Square, Inc. in opposition filed.
      Oct 19 2016 Reply of petitioner J. Carl Cooper filed.
      Oct 25 2016 DISTRIBUTED for Conference of November 10, 2016.

      1. Also, so between the post of this thread on October 28, and the provided notice date of November 2, exactly zero briefs of support were filed.

  2. The brief also takes the interesting tack of walking through the amici filings and pointing out that none of them fully agree on the meaning of the supposedly unambiguous Section 316(e).

    Definitely interesting. Main Justice has been making Chevron deference arguments for decades and knows a few of the tricks. This is one of them.

  3. Sad news from the Bay Area:

    link to sfgate.com

    A prominent San Francisco attorney returning to his home in El Cerrito on Thursday evening was confronted by an assailant who shot him to death, police said.

    Officers responding to 911 calls just before 9 p.m. found James Gilliland Jr., 62, on his front porch on the 2600 block of Mira Vista Drive, in the hills east of Interstate 80. Paramedics pronounced him dead at the scene. … It was not known whether Gilliland was stalked or followed, whether he was the victim of a robbery, or whether the victim and gunman knew one another.

    Gilliland was a partner at Kilpatrick Townsend and Stockton LLP in San Francisco, where he headed litigation from 2013 to 2015. Specializing in patents, copyright and antitrust, he represented companies including Oracle, Sony, Williams-Sonoma and Levi Strauss and Co.

  4. A difference between examination practice at the USPTO and the EPO throws light on IPR practice with claim amendments.

    As we know, at the EPO, search and examn are different stations on the way to issue. This explains EPC Rule 137(5) which forbids entry to any claim amendment to subject matter not unitary with the subject matter already searched. The Examiner at the EPO is NOT going to engage reverse gear and go back upstream to the searching station.

    Otherwise at the USPTO, where the Examiner can do another search, if the claim amendment requires it.

    But IPR strikes me as more like the EPO than the USPTO. Who within the PTO is going to do the additional searching? Is this why the IPR Rules are so restrictive, on claim amendments?

    1. Great.

      You are noticing that different sovereigns have different patent laws (or at least noticing that the law’s result in different examinations).

      That said, you once again retreat to the “EPO glasses” type of mistake with “But IPR strikes me as more like the EPO than the USPTO.

      You cannot squeeze the US sovereign practice into the “what you are familiar with” EPO spectacles.

      1. I’m suggesting that the IPR Rules limit amendment because the IPR process affords no opportunity for the USPTO to research patentability of the subject matter of the claim as amended. That’s all.

        1. I think that your way of phrasing things leans (far) too much on the comparative aspect to the rule of law that you are familiar with.

          It simply is unhelpful to be always using that comparative mode.

          It is one thing to note that “the IPR process affords no opportunity for the USPTO to research patentability of the subject matter of the claim as amended.

          It is quite another to assert “But IPR strikes me as more like the EPO than the USPTO.

          I am not sure that you even see this distinction (even after it is repeatedly pointed out to you).

          1. That being said, As I have pointed out, there remains a very real problem with the law as written by Congress regarding IPRs and claim amendments*** that may be made after grant potentially becoming part of a granted patent that have not been examined fully by USPTO examiners.

            ***once again, and please take note Ned, that I am specifically referring to the NON-low hanging fruit and excluding the mere change in form of amendments that only make dependent claims into independent claim for.

  5. (b)Considerations.—

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

    Does the Director violate his authority if he “considers” but then goes ahead and employs a tactic (having non-examiners “grant” new claims) that plainly violate the integrity of the patent system?

    Let’s remember that Tafas remains good law.

  6. Bull.

    New claims are effectively dependent claims that share the same presumption of patentability as do the claims from which they depend. Forcing the patent owner to prove patentability of these claims, especially if the new claims only add limitations copied from dependent claims or from other claims that the examiner had previously indicated to as containing allowable subject matter, effectively changes the burden of proof of these previously allowed claims.

    But we all know that the PTO even now forces patent owners to prove patentability of claims for which trial has been instituted. This is just more of the same.

    I certainly would like to have everyone in the PTO who was a part of this fiasco (the AIA and the rules implementing IPRs) tarred and feathered before they were run out of town by a new sheriff. We sorely need a new sheriff pronto.

    1. Ned – I specifically took away that low hanging fruit.

      This must be like the fourth time that you have refused to engage on the actual issue presented.

      1. The irony is stultifying.

        Maybe (just maybe), if YOU maybe constrain yourself to posting about actual patent law, you wouldn’t be the single biggest hypocrite around?

    1. After the election is over, 6, all you need to do is prove that five million other people are engaged in that kind of criminal activity and voila! you might have enough votes.

      In the meantime, do whatever you can to keep as many students, poor people, working people and elderly people from voting as possible. That’s what Jesus wants, after all, and nobody knows more about Jesus than Mike Pence. You can tell that just by looking at him. Man, that guy is sincere.

      1. “After the election is over, 6, all you need to do is prove that five million other people are engaged in that kind of criminal activity and voila! you might have enough votes.”

        This is just one election, and I’m not that concerned with voter fraud in this particular election. The topic right now is systemic ease of voter fraud due to ludicrously lackadaisical voting laws (especially in some states and especially in vote-by-mail schemes). If this id iot lady had quit while she was ahead she would have been able to get away with quite a bit of it.

        That being said obviously wikileaks has shown recently that the DNC, their “affiliates” that meet with Obama, and Hillary herself are some of the most crooked people around, so sure, there will probably be some voter fraud going on in the presidential. You know, to “fight back” against the evIIIIIl “voter suppression” by whatever means necessary to “re-enfranchise” people.

        “In the meantime, do whatever you can to keep as many students, poor people, working people and elderly people from voting as possible. That’s what Jesus wants, after all, and nobody knows more about Jesus than Mike Pence. You can tell that just by looking at him. Man, that guy is sincere.”

        Don’t forget women while you’re throwing out your “victim” groups! They’re the victimisty ones around! At least democratic ones, eyeroll. And just as a reminder, “working people” as a block are voting for Trump this year brah.

      2. MM, the Democratic party has a very long history of voter fraud – from Chicago and the Daley machine, to Kansas City and the Pendergast machine (my Dad was part of that and gave me first-hand information), to the systematic suppression of the black vote in the South. Then we all know what happened in 1960 in Texas.

        I do not recall ever that Republican Party has ever been accused of systematic voter fraud or intimidation. But it is pandemic and it is endemic with the Democratic Party. That party, to me, is virtually a criminal enterprise and has been run for very long time by the insiders and for the insiders that their power and systematic corruption be maintained.

        The evidence of corruption of Hillary Clinton and her machine is not surprising to me, but more of the same. It is remarkable that we still have a democracy of some kind in view of the extensive corruption of the Democratic Party over the years. I tremble to think what will happen to America if that criminal enterprise maintains control of the reins of government.

        The press, which is supposed to speak truth to power, has systematically sided with the Democratic Party over the generations and worked hand in glove with that party to keep it in power. Today, more than ever, it is part of the corruption not part of solution to the corruption.

        Thank God for WikiLeaks exposing the extent of self-dealing and lying of the Clintons. That should been done a long ago by the American press.

        Crony capitalism. Pay for play. The whole system controlled by the Democratic party is corruption per se.

        That being said, the modern Democratic Party have provided us with great leaders. I am thinking here of both FDR and JFK. I do not include LBJ nor Bill Clinton. Obama’s legacy is yet to be determined because it appears that Obamacare is going to fail.

        1. I tremble to think what will happen to America if that criminal enterprise maintains control of the reins of government.

          You better get used to it, Ned.

          Also: grow up and stop watching cable TV. You sound like a fcking id i0t.

        2. “Today, more than ever, it is part of the corruption not part of solution to the corruption.”

          Indeed that’s the major problem in Merica today. Thankfully we have alternative media coming to the fore nowadays but still the big boys have a stranglehold on your generation and MM’s type of folk’s news. Everything MM and his bros hear on their TV tubes is filtered directly through the party lens (even the bad stuff).

          “Also: grow up and stop watching cable TV. You sound like a fcking id i0t.”

          Said the guy that blatantly watches cable TV. Also, Ned, you’re most def no idi ot on this front. MM only says that because he just doesn’t believe his lyin’ eyes (you know because RAYCISTS).

          1. Listen 6, I only know of one Republican administration that was corrupt. The Grant administration. But the Democratic Party has been playing electoral hardball since Jefferson. It is in their blood and in their playbook. Also, when they govern, such as in cities, corruption is their playbook.

            Note, in all of this, we are not talking about policies. They change. The Democratic Party had a fundamental change in policy when Teddy R left the Republican Party and his cousin FDR became president, bringing with his presidency progressive politics. That somewhat split the party. The party of the North was progressive. The South, antebellum (read, KKK). But the party held together, electing Kennedy and Carter because both swept the so-called, Solid South.

            But the hardball politics continued throughout. Obama is a progressive. But he took advantage of the machine politics of Chicago to get into power. Clinton is a moderate and her husband all but a conservative. Still they relied on cronyism their entire careers to advance their careers.

            What really bugs me, though, is that media actively is part and parcel with Democratic Party corruption. They do not investigate party corruption, and do not report it if it is revealed, even while viciously attacking any Republican for this or that based on mere allegation. Think of the reason Dan Rather was fired.

            1. is that media actively is part and parcel with Democratic Party corruption”

              LOL – but the Ends make it OK, Ned (big huge S sign being waved frantically)

              1. anon, I don’t get your point as I have no idea what “S” is about, except if you mean Sanders.

                Now, I do know that “W” is now being associated with the 2016 Cubs.

    2. You are arguing with a straw man here. Those of us who are skeptical of the value of picture ID laws are not saying that vote fraud never happens. Rather, we note that voter impersonation rarely happens.

      The first woman whose arrest was reported in that article would not have been stopped by a photo ID requirement. She was working for the elections authority and was changing ballots received by mail. Even if voters had to show a photo ID, she would still have been able to alter their ballots.

      How would a photo ID requirement ameliorate this?

      1. Greg those “against voter ID laws” are typically against a whole slew of measures republicans have been proposing over the last decade to draw to a close the era of wild wild west voting started mainly by democrats (though some republicans went along for the ride) to boost their numbers that has been made in some states through decades before that.

        Voter ID is for impersonation. Ending mail-in ballots in all but a select few instances (i.e. returning to the way they traditionally were and even how they got started at all) that need verification ends this lady’s ability to manipulate mail in votes willy nilly.

        Even so, the project veritas guy caught on camera stating openly they’ve been busing people in all matter of factly makes me less inclined to believe that busing doesn’t happen and that voter IDs shouldn’t as well.

        Not to mention the fact that voter IDs are a thing in many many countries all across the world all across their whole country (like india, very strict). Yet here the main battlecry against it is “but but but Muh RAYCI SM” which is literally the only thing preventing it from happening in most places. Funny how it’s RAYC IST here but not in india. And that’s setting aside the fact that democrats are treating minorities like children, thus being RAYC IST themselves, in stating that making them be a tiny bit responsible is just too much for them.

        Look bro, we hold tighter election standards for “affinity group” chairpeople at the PTO than we do for the president of the US (leader of free world?!?). There’s something strikingly odd about that setup.

        Not to mention republicans are now so paranoid about voter fraud thanks to the laxness that they’re literally committing voter fra ud themselves (see story about republican id iot girl voting 2x because literally she thought the first was going to be counted for Hillary, she’s caught and arrested yesterday). It’s a vicious cycle all thanks to la xness.

        1. republicans are now so paranoid about voter fraud thanks to the laxness that they’re literally committing voter fra ud themselves

          Okay, this is definitely the funniest thing I’m going to read all week and it’s only Monday.

        2. So, I am skeptical that the benefits of photo ID laws outweigh the downside, but I am entirely with you in thinking that vote fraud (in all of its forms) is a bad thing. I offer, therefore, two proposals:

          (1) Anyone voting absentee in any manner (mail in, drop off, show up in person at the elections office, etc) must stamp the ballot with his/her left thumb print. The number of absentee ballots as a fraction of all ballots cast is so slight that it should not be great hardship on the elections officers to scan these thumbprints in and then sort them through software to detect duplicates. People who are, for whatever reason, missing a left thumb would need to show up in person and register this anatomical oddity to be excused from the requirement.

          (2) Those voting in person must dip their left forefingers in indelible ink on election day, just as they did several years ago in Iraq.

          These proposed reforms would be much more effective than photo ID laws. One can purchase fake IDs for not-too-much money, so anyone committed enough to loading up busloads of people who move around (e.g.) Philadelphia to vote multiple times in an effort to throw Pennsylvania would regard the photo ID obstacle as just another budget item.

          In short, the two reforms proposed above would do far more to prevent double-voting and voter impersonation, but would not put any hardship on the poor and elderly who lack the requisite documentation necessary to obtain the sort of picture ID that (e.g.) Indiana requires. In other words, 99% of the upside (fraud prevention) with 0% of the downside (burdening the right to vote).

          It seems to me that we should all be able to agree on these reforms. The fact that I do not see a lot of state legislators pushing for these sorts of election reforms, however, tells me that preventing voter fraud is not actually all that high of a priority.

          1. preventing voter fraud is not actually all that high of a priority.

            Because the kind of stuff you’re talking about are pretty much non-existent crimes. Why? Because the penalties are high and most people realize even a minimal risk isn’t worth the effort because it doesn’t change squat.

            The problems with massive disenfranchisement due to onerous voting requirements and/or mismanagement of elections (e.g., making people stand in two hour long lines) and/or computer hacking outweigh the effects of any shenanigans pulled by these silly “I’m going to vote twice by filling out a ballot for my dead brother” b00bs.

            The only reason we’re even talking about this is because the Republican party depends on the disenfranchisement of voters. They wrote a script, they blow their dog whistles, and the usual water carriers are running with it. Who doesn’t know this in 2016?

            1. “Because the penalties are high and most people realize even a minimal risk isn’t worth the effort because it doesn’t change squat.”

              He said when Gore lost by what? A few hundred votes? Takes all of a few buses to FL to “set that matter straight”.

              Though you are right that I’ve heard they only call for it when it seems super close or super important and unpredictable.

            2. “massive disenfranchisement”

              You’re using the word “disenfranchisement” wrong. It means taking away the right to vote.

              And you can’t help but understand why someone who votes democratic religiously might not be taken too seriously either as it will definitely “hurt” their side.

              “The only reason we’re even talking about this is because the Republican party depends on the disenfranchisement of voters. ”

              And the Democratic party depends on enabling voter fraud (and possibly fraud itself, if they themselves are to be believed on tape)? I note again you’re using the word disenfranchisement wrong, no doubt due to the media throwing it around willy nilly.

              “They wrote a script, they blow their dog whistles, and the usual water carriers are running with it”

              That democratic vote counting lady is a “republican usual water carrier”? Lol, maybe tell her that while she’s in jail. Tell the project veritas guy that while he’s fired. They’ll be superzed to hear about it I’m sure.

            3. MM, the “Republican party depends on the disenfranchisement of voters.”

              MM, the Republican party? Aren’t we talking of the Democratic Party of Dixie?

              You seem to equate the two.

              Now, if I understand it, the parts of the South that had systematic voter exclusion continue to be on a suspect list. But that does not apply anywhere else in the country, such as in California or New York. Requiring an ID in Texas might be suspect, but not in California because the government has not historically been using such devices to exclude legitimate voters. I think that in California or New York that one would have to demonstrate that requiring a vote ID unreasonably burdened an identified class of voters and was not justified by its intent to prevent fraud in view of less restrictive means to prevent fraud.

              The issue is not entirely white and black, but grey, even in places like Texas.

          2. it should not be great hardship on the elections officers to scan these thumbprints in and then sort them through software to detect duplicates.

            LOLOLOLOLOL

            And then what? Trials?

            Maybe we should include a DNA sample with our ballots. Would that satisfy Republicans? Because they’re very serious people, you know. Very, very serious — especially when it comes to “voter fraud.”

          3. Couple of generic things Greg, first you have to remember that whatever proposals you make have to be done on a state by state basis (which makes uniformity and consistency a joke).

            “The number of absentee ballots as a fraction of all ballots cast is so slight that it should not be great hardship on the elections officers to scan these thumbprints in and then sort them through software to detect duplicates. ”

            Mmmm, the number in FL is getting rather large as a fraction iirc. Similar in Ohio (thanks ezmail vote).

            “must stamp the ballot with his/her left thumb print.”

            Where do they get the equipment for that? Why not just make mail voting super rare and with heavy verification, like you think it already is? (I”ll tell you why not, because Dems throw a RAYCIST throwing fit).

            “These proposed reforms would be much more effective than photo ID laws. ”

            So you say. But I’m sure the republicans are willing to hear you out. Note that MM below most certainly isn’t (because RAYCISTS).

            “One can purchase fake IDs for not-too-much money, ”

            I’m not 100% sure but you also cannot buy heavy duty “indelible” ink remover solvent for not-too-much money? I would think a mild acid would take the first few layers of skin if you had to get downright srs about it.

            Also, “the elderly” aren’t what are standing in the way of any of these reforms. Only RAYCISTS. I.e. “the race card”. If “the unpapered elderly” (like 1% of the elderly population isn’t overburdened with paper?) need an exemption that bad I’m quite sure the republicans could work something out.

            Though look I understand it can be a pain to get an ID. It sure is a pain to get a driver’s license in VA nowadays that’s for sure. But the ID part is somewhat a separate issue, one I’d love for Dems to champion, if they’d like to (but you know, it’s easier to scream RAYCIST).

  7. I am genuinely curious as to Ned’s views on this brief.

    (or if he has found somewhere else in the AIA that talks about what level of appeal applies to the institution decision)

    1. anon, plainly inconsistent with the statute. Dependent claims are entitled to the same presumption of validity as their parent claims. Even thought the statute reduces the burden of proof, it still places the burden on the proponent of invalidity.

  8. There is NO transfer of the formerly granted patent back to the examination portion of the Office.

    This is the issue you want to take the Supreme Court? The location of the examination of claim seeker’s amended claim is sooper d00per important here? Let’s take a guess at what happens when the PTAB examines the claim seeker’s argument for patentability, permits the amendment, then sends it to the “examination portion” … where the amendment is denied. Will there by the usual habitual crying that is indistinguishable from the crying we’re seeing now? Yup. But, sure, let’s pretend otherwise.

    your actions quite clearly speak louder (and so much better) than your actual words.

    Dude, your existence is important for just one reason: we need to document the dying breaths of the patent maximalist dinosaurs as they struggle to wrap their walnuts around their permanently changing world. Plus: the entertainment value.

  9. DC: the PTO created the rule that the patentee must prove patentability of any amended claim before the motion will be allowed

    I’m happy to be informed otherwise, but new claim seekers in IPR proceedings aren’t being asked to “prove patentability”. They are only being asked to explain why the amendment being presented is patentable over the art cited in the IPR.

    Also, it’s worth remembering, I think, that putting this kind of burden (and then some!) on those seeking new claims is hardly without precedent. The PTO’s accelerated exam paradigm requires the applicant to present far more evidence (e.g., that a search was performed, what terms were used, what databases were used, the results of searches, in addition to legal analysis showing that 102, 103 and 112 have been satisfied) that what’s being asked of the new claim seekers in IPR proceedings.

    99% of the crying about the oh-so-unfair burdens preseneted to patentee’s in IPRs is really just crying about the increased difficulty presented to those who hoped to monetize a dubious patent. This was all predicted, by the way. The folks crying the hardest, of course, predicted that nobody would want to obtain a patent anymore if we had IPRs. Funny stuff.

    1. Without actual examination by the entity – by law – charged with examination, how can any new claim*** be allowed into the state of a granted patent?

      ***this comment removes the low hanging fruit of previously examined dependent claims merely being amended to be in independent claim form.

      Note that this overriding issue has yet to be acknowledged, let alone discussed, by the usual crowd….

      I wonder why 😉

      1. Without actual examination by the entity – by law – charged with examination, how can any new claim*** be allowed into the state of a granted patent?

        As usual, we can only guess as to what you mean by “actual” examination.

        But in both the accelerated exam situation and the IPR situation, the claim seeker’s submissions are not simply rubber stamped by the PTO. The submissions are examined.

        Note that this overriding issue has yet to be acknowledged, let alone discussed

        In your dreams, “anon.” Nobody really cares what you think about anything, by the way.

        1. Well “are examined” is certainly true in regards to the voluntary (and you do know why it has to be voluntary, right? Hint: Tafas), but you clearly misspeak in regards to IPRs. There is NO transfer of the formerly granted patent back to the examination portion of the Office.

          Maybe you just did not know that…

          As for the “in your dreams” comment, a most odd statement coming from you, in which your actions quite clearly speak louder (and so much better) than your actual words.

          1. “anon” There is NO transfer of the formerly granted patent back to the examination portion of the Office.

            This is the issue you want to take the Supreme Court? The location of the examination of claim seeker’s amended claim is sooper d00per important here? Let’s take a guess at what happens when the PTAB examines the claim seeker’s argument for patentability, permits the amendment, then sends it to the “examination portion” … where the amendment is denied. Will there by the usual habitual crying that is indistinguishable from the crying we’re seeing now? Yup. But, sure, let’s pretend otherwise.

            your actions quite clearly speak louder (and so much better) than your actual words.

            Dude, your existence is important for just one reason: we need to document the dying breaths of the patent maximalist dinosaurs as they struggle to wrap their walnuts around their permanently changing world. Plus: the entertainment value.

      2. Anon’s first sentence is the key issue in this en banc decision. The PTO simply cannot validly issue unexamined claims. Can anyone realistically think the Sup. Ct. would support that? Does the PTAB even have initial examination authority?
        Furthermore, re Ned’s straw man argument, there is no evidence that among the relatively small number of actually proposed claim amendments in IPRs [actually, substitutions] are there any significant number that are mere additions of prior dependent claim language. For good reasons. If that dependent claim had been asserted as infringed why would it not normally and logically already be in the IPR petition claim challenges? IPRs are not logically asserted against only a portion of the claims they are being sued on, leaving others unchallenged. Nor are IPRs normally asserted against claims that the petitioner or its customers are not even threatened by.

        1. To put it another way, would a mere attempted substitution of a patent’s dependent claim for its parent claim in an IPR be an effective cancellation of the parent claim in the IPR by the patent owner, hence no need for the IPR to proceed further if the Board did not want to? Has that ever happened?

          1. Not even to mention Ned’s clearly false assumption that all IPRs are instituted on prior art already fully considered in the original application, rather than much better prior art found in much more thorough IPR petitioner searches, so that a presumption that all original dependent claims are still valid should continue into an IPR even if those claims are being re-presented into the IPR by the patent owner!

            1. Absolutely, Paul.

              Alas, the problem with IPRs and their rather incomplete Congressional construction continue to surface.

              It simply is neither the place of the petitioner nor the patent holder to truly examine these new claims – or as you add here, previous claims against possibly previously considered art.

              As Malcolm offers a “miss” with his attempt at examination “being done by others outside of the office” with the accelerated exam situation**, it should be clear that actual examination of any (new) claim must be performed – by examiners.

              **The accelerated exam situation – as I pointed out, a volunteer effort to help the examiner on the part of the applicant – still requires the examiner to fully examine the application, and it is still the examiner’s approval that earns the grant of the claims.

              It is no wonder at all that he clenches tight his eyes to how the Tafas case intersects with his provided example.

              Malcolm “runs away” from the plain facts of his own examples.

        2. Even as much as we disagree Paul, you are not clenching your eyes tight like Ned and Malcolm.

          Watch now as Malcolm labels you one of my “cohorts.”

          1. Anon, almost all of my comments are simple factual statements of present realities that one has to learn to deal with whether one likes them or not. The disagreement is with misleading readers with the propagation of false prophecies of magic dust constitutional fantasies.

        3. Paul, given that the new claims in an IPR must narrow and must be supported in the specification – and the patent owner must demonstrate this – they are “examined” to the extent required to deem them effectively dependent claims with the same presumption they are valid over the prior art as their parent claims because they necessarily include all the elements of a parent independent claim that is entitled to presumption of validity plus some additional elements that are supported in the specification.

          Now, as we all know, dependent claims are examined in the initial prosecution to the same extent as they are examined in IPRs. They are examined for support, but are allowed over the prior art if their parent claims are allowed. We all know this.

          This is the same throughout the entire world. For example, it is my understanding that in Europe, examination is conducted on the independent claims alone on the theory that the dependent claims are allowable if the independent claim from which they depend is allowable. After all, dependent claims only narrow a parent claim.

          So this chant from you and from anon is misleading at best. And, I think, you know it.

          1. “Supported in the specification” and “more narrow in scope” does not necessarily mean either “dependent” or “examined,” Ned.

            Your first statement in defense is simply legal error.

            1. You have to remember as well, that you are “borrowing” some type of “being allowed” from independent claims that may themselves be NOT valid.

              Once you lose that “borrowed authority,” why would you blindly expect a “more narrow” – but in fact NOT examined claim, first introduced in an IPR proceeding (explicitly removing that low hanging fruit you like to depend on), to BE valid with NO examination by the examiners of the USPTO?

          2. Ned, if the parent claim petitioned against for the IPR WAS valid over the newly cited prior art in the IPR petition there would be no reason for the PTAB to initiate the IPR, and no need or good reason for a patent owner to substitute a dependent claim for the challenged parent claim [and thus effectively concede invalidity for that parent claim.] There is no carry-over presumption of validity for any claim being put into a declared IPR if the claim does not escape the IPR unscathed. If no one ever puts the dependent patent claim into the IPR can one argue that the presumption of validity of that dependent is [techncially anyway] intact even if the parent claim is killed.

            1. Often those dependent claims are along a spectrum – if (as we have both pointed out) one “loses” the independent claim (and that was “just as examined as any dependent claim”), that simply throws ALL claims into the “unknown.”

              Congress simply did not construct the IPR statute carefully enough.

            2. Ned, I think you are assuming that since PTO examiners do not normally do any additional 103 examination of dependent claims that depend from allowable parent claims in pending applications, that this informal examining corps practice makes dependent claims special or exempt vis a vis normal claims, and that this carries over into patent litigation, or into an IPR. It doesn’t.

            3. Paul, in a normal case, almost all dependent claims are rejected but are allowed with the allowance of the parent claim. If there are dependent claims that are indicated to contain allowable subject matter, these claims are, in the usual case, amended into the parent so that the combined claims issue, with broader claims pursued in a continuation, if at all.

              Thus, in the normal case, none of the dependent claims have been confirmed to contain allowable subject matter independent of the parent claim.

              So, what is to be done about these dependent claims when a parent claim is held invalid in court or in an IPR? Are these claims, which we all agree are not fully examined, still not entitled to a presumption of validity? You say no. But the statue says yes.

              Post verdict of invalidity, Courts are not thereafter free to summarily hold invalid all dependent claims regardless that the applicant did not separately argue their validity and the examiner did not specifically agree that they contained patentable subject matter.

              Neither is the Commissioner so entitled (if he or she sought reexamination). The Commissioner still has the burden of proof of invalidity, albeit, by a preponderance of evidence.

              Just as with ex parte examination, the applicant is entitled to the claims until they are proven to be upatentable. In IPRs, it is natural that the petition either prove unpatentability, or that they be allowed if the petitioner defaults.

              1. Are these claims, which we all agree are not fully examined, still not entitled to a presumption of validity? You say no. But the statue says yes.

                Ned, not if the parent claim falls in the IPR.

                You seem to be overlooking that fact.

                1. Anon, every patent claim is assumed to be valid by statute. One cannot invalidate dependent claims simply by invalidating apparent in court.

                  In ex parte prosecution, the patent office must prove the unpatentability – otherwise the applicant is entitled to have the claim issued.

                  An IPR, if the petitioner does not object to the proposed new claims, they should simply be allowed. They would be in no different condition then dependent claim in most patents that are allowed because the parent claims were found to be allowable.

                2. Ned – you forgot what happens to that presumption when the Executive Office makes the institution decision.

                  I have pointed this out to you repeatedly.

                3. if the petitioner does not object to the proposed new claims, they should simply be allowed.

                  It is NOT up to the petitioner to take on the role of the USPTO examiner. Neither is it up to the former granted patent holder. Shall I remind you yet again that Tafas remains good law?

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