Guest Post: Administrative Law Matters Even More following Cuozzo Speed Technologies v. Lee

By David Boundy

David Boundy of Cambridge Technology Law LLC, a patent law firm in Cambridge, Massachusetts, practices at the intersection of patent and administrative law, and consults with other firms on PTAB trials and appeals. In 2007–09, David led the teams that successfully urged the Office of Management and Budget to quash the USPTO’s continuations, claims, information disclosure statements, and appeal regulations under the Paperwork Reduction Act.

This paper is a short version of an article in the current issue of ABA Landslide, vol. 9, no. 3, electronic edition.  It’s a follow up to my earlier paper on the Cuozzo case, which ran in Patently-O in February 2015.

Cuozzo Speed Technologies v. Lee[1] illustrates an important lesson for the patent bar: federal courts are far more familiar with administrative law than with patent law. Almost every federal court hears several times as many administrative law cases as patent cases. Even the Federal Circuit sees at least as many administrative law issues (involving various federal employees and contracts) as patent law issues. We patent lawyers need better administrative law issue spotting skills, and when a case presents them, we must argue on administrative law grounds with administrative law expertise. Basic principles of good advocacy urge us to argue our cases on the courts’ choice of turf.

Cuozzo is a prime illustration.  In Cuozzo, the Supreme Court narrowly decided that the PTO’s decision to institute an inter partes review (IPR) against Cuozzo’s patent was unreviewable.  Notably, the Court’s reasoning clarifies that many decisions to institute are judicially reviewable, so long as the issues are cloaked in administrative law terms rather than patent law terms. Cuozzo’s loss stems from Cuozzo’s briefing that failed to mention a dead-on administrative law statute, and that was all but silent on the Supreme Court’s administrative law precedent. Cuozzo creates many future opportunities for informed administrative law advocacy.

The AIA, Its Preclusion Statutes, and Cuozzo’s Path to the Supreme Court

The 2011 America Invents Act (AIA) created new patent reviews within the United States Patent and Trademark Office (USPTO): inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM). Congress included preclusion statutes that limit judicial review of USPTO decisions to institute such reviews.

The preclusion statutes for IPR and PGR decisions to institute, 35 U.S.C. § 314(d) and § 324(e) respectively, are essentially similar: “The determination by the Director whether to institute [a review] under this section shall be final and nonappealable.” Compared to other preclusion statutes (discussed in the full Landslide paper), this is decidedly on the weak end of the spectrum of preclusion statutes.

In February 2015, the Federal Circuit gave its first deep consideration to these statutes in In re Cuozzo Speed Technologies LLC.[2] The IPR petition against Cuozzo’s patent had applied reference A to claim 10, and references A, B, and C to claim 17 (which depended from claim 10). However, the Patent Trial and Appeal Board (PTAB) instituted on references A, B, and C against claim 10. The PTAB cited no statute or regulation, only its own naked claim of “discretion” to mix and match among the grounds in the petition.

The IPR ended in cancellation of claim 10, on references A, B, and C.

Cuozzo appealed the final decision to the Federal Circuit, and challenged the decision to institute. The Federal Circuit held that § 314(d) precluded all review of all issues embedded in a decision to institute: “On its face, the provision is not directed to precluding review only before a final decision. It is written to exclude all review of the decision whether to institute review.”[3]

In June 2016, the Supreme Court issued its further decision.  Where all decisions leave open issues, Cuozzo introduces several internal contradictions.  Let’s look at the background administrative law case law, and how Cuozzo fits—or misfits.

APA § 706: Government-Wide Grounds of Judicial Review

The Administrative Procedure Act (APA), in 5 U.S.C. § 706(2), confines judicial review of agency action to a specific list of errors—a court may set aside agency actions that are:

(A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law;  …
(C) in excess of statutory jurisdiction, authority, or limitations, or short of statutory right;
(D) without observance of procedure required by law; …

Section 706(2) is famously deferential to agencies, but it doesn’t insulate agencies totally. Courts set aside agency decisions that fail standards of “reasoned decisionmaking” by failing to explain an important point, giving an irrelevant explanation, omitting consideration of important factors or basing a decision on impermissible factors, deciding without evidence, deciding on legal error, acting beyond jurisdictional authority, and the like.

APA § 704: Preliminary Decisions Are Reviewable with Final Agency Action

Procedural lapses usually find review under 5 U.S.C. § 704: “A preliminary, procedural, or intermediate agency action or ruling not directly reviewable is subject to review on the review of the final agency action.” Thus, if an agency’s final decision is infected by error earlier in the process, the final decision can be attacked on the basis of that underlying error.

Supreme Court’s Presumption of Judicial Review

Since the days of Chief Justice John Marshall, the Supreme Court has relied on a strong presumption that judicial review is available for executive branch action.[4] Agency decisions are presumed to be reviewable, and preclusion statutes are construed narrowly. Even within the scope of preclusion, an agency decision that reflects “brazen disregard” of procedure, or “abuse,” or that has sufficiently grave consequences, often can be reviewed.  Likewise, the Court has always held agencies to scrupulous observance of their own procedures. The presumption of review has always been extraordinarily high for procedure, and the “holes” in preclusion statutes for procedure and “abuse” have always been quite large. Cuozzo is an extraordinary outlier. Among the principles established in Supreme Court precedent:

  • Courts accept judicial review of underlying issues in agency decisions, even if the final decisions are unreviewable, especially where procedural fairness is at stake.[5]
  • Preclusion statutes are read narrowly—they preclude only what they say they preclude, and no more. Even where a statute precludes review of an end result decision, underlying issues are not precluded unless the preclusion statute speaks expressly to those underlying issues.  “[R]eview is available to determine whether there has been a substantial departure from important procedural rights, a misconstruction of the governing legislation, or some like error going to the heart of the administrative determination.”[6]
  • Courts read statutes closely to split issues finely, and will review issues (especially underlying issues) that differ by a hair’s breadth from precluded issues. When a statute precludes benefit amounts for individual claimants, “challenges to the validity of the Secretary’s instructions and regulations[] are cognizable in courts of law.”[7]
  • When an agency statute, regulation, or guidance promises the public that an agency or agency employee “must” or “will,” the agency must follow those procedures “scrupulously.” Review of agency decisions under § 706(2)(D), “without observance of procedure required by law,” is “strict” and “without deference.”[8]

Review under § 704/§ 706 is a persistent substrate. To preclude review, especially of underlying issues, Congress must speak expressly.

Cuozzo’s Brief, the Majority Opinion, and the End Result: Cuozzo’s Specific Institution Is Nonreviewable

The Cuozzo majority opinion follows the basic contour of 50 years of precedent: preclusion statutes are to be read narrowly. However, on the facts, Cuozzo lost—the Court characterized Cuozzo’s complaint to be a “mine-run claim,” “an ordinary dispute about the application of certain relevant patent statutes,” and “little more than a challenge to the Patent Office’s conclusion, under § 314(a), that the ‘information presented in the petition’ warranted review.”[9] That is, the Supreme Court understood the case to be a good faith difference of opinion in application of validly promulgated law, not a case of an agency tribunal exercising naked “discretion” against a party, making up new rules on the fly with no grounding in any text, and asserting those new rules in a context with no opportunity for rejoinder. Because the Court was not informed of the procedural basis for the case, the Cuozzo opinion stands in striking contrast with the Court’s precedent that requires agencies’ “scrupulous” observance of procedure, and strict “no deference” judicial review for procedural issues.

The Supreme Court majority opinion embeds a number of internal contradictions that leave a great deal of unclear ground. The majority’s holding, if applied to the facts—at least the procedural facts as we patent lawyers understand them—leads to the opposite result.

Most of these contradictions in the majority opinion, and perhaps the final result itself, are invited error. Cuozzo’s brief treats the case as a patent law case, arguing page after page of Title 35 U.S.C. and Federal Circuit patent law cases.[10] Cuozzo’s opening brief cites Supreme Court “preclusion of review” cases only as a cursory afterthought—a single string cite, with no discussion of analogies to precedential cases. The brief compounds the error by citing a 1946 case that had been overruled by the Supreme Court in 2013.  The table of authorities in Cuozzo’s opening brief has only a single cite to Title 5 U.S.C., and only one more in the reply brief.

But reviewability is an administrative law issue, and that’s where the Court decided it.

Even though Cuozzo’s briefs are all but irrelevant to the administrative law bases on which the Court decided the case, the reasoning comes so close to going Cuozzo’s way. Cuozzo demonstrates the importance of identifying the turf where a court is likely to decide an issue, and arguing it there.  And that may well be administrative law, rather than patent law.

Cuozzo’s “Long Paragraph”

The heart of the majority opinion is a long paragraph toward the end of section II, beginning “Nonetheless.” The majority explains that most issues arising under patent law are precluded, but that issues arising under other bodies of law are not. Review remains available for constitutional questions, and most importantly, for issues slotted into one of the pigeonholes of APA § 706.  The latter half of the “long paragraph” reads as follows:

[W]e do not categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under § 112” in inter partes review. Such “shenanigans” may be properly reviewable in the context of § 319 and under the Administrative Procedure Act, which enables reviewing courts to “set aside agency action” that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.”[11]

The latter half of the long paragraph, especially the last sentence, opens a wide barn door. The Cuozzo majority’s long paragraph indicates that the full reach of § 706 applies to underlying issues in decisions to institute.  Cuozzo tells us that issues that are losers when presented in patent law vocabulary become winners when wrapped in administrative law vocabulary.

Cuozzo Could Have Argued an Administrative Law Jurisdictional Issue

Cuozzo’s brief doesn’t squarely present the issue of the PTAB’s transgression of its own jurisdictional boundaries. Section 312(a) reads, “A petition . . . may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based . . . .” Section 314(a) reads, “The Director may not authorize [institution of an IPR] unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail . . . .” These are plainly jurisdictional statutes, confining jurisdiction to the grounds in the petition. The APA, in § 706(2)(C), provides that a court shall set aside agency action “in excess of statutory jurisdiction.” Yet, Cuozzo’s brief argues only breaches of the AIA, not the administrative law jurisdictional issues that—the majority tells us—would be reviewable under administrative law principles.

The Supreme Court has been quite strict in enforcing agencies’ jurisdictional boundaries, no matter (in the Cuozzo majority’s words) how compelling “one important congressional objective” might be.[12]

Cuozzo’s brief fleetingly nibbles at the edges of the issue, and even cites one of the important cases in this line (for a different proposition), but never squarely frames the challenge as “in excess of [the agency’s] jurisdiction”—neither brief mentions § 706 at all.  And thus Cuozzo lost the issue.

The latter half of Cuozzo’s “long paragraph” places jurisdictional issues within the scope of judicial review, so long as they are framed in an § 706(2)(C) administrative law context, not a patent law context.  Subject matter jurisdiction is central to a court’s duty to prevent agencies from “act[ing] outside . . . statutory limits,” or in the language of § 706, “in excess of statutory jurisdiction.”

Had the issue been presented squarely as a challenge to PTAB action beyond its jurisdiction, with the patent law issues argued as underlying support for APA § 706(2)(C) “in excess of jurisdiction” grounds, Cuozzo likely would have obtained a favorable result, and the Court majority would not have been left grasping at inconsistent straws to reach its decision.

Several more omissions from Cuozzo’s brief, and internal contradictions in the majority opinion, are discussed in the full Landslide paper.  The full paper shows that Cuozzo lost a very winnable case because the opening brief argued patent law principles to the near exclusion of administrative law principles. The patent bar is left with a resultant set of internal contradictions in the Cuozzo decison, with all the problems and opportunities they create.  And the Federal Circuit is left with a difficult task of reconciling Cuozzo’s reasoning against its end result.

Conclusion

The full paper gives a number of other examples of questions that come out differently depending on whether they’re argued as patent law issues or administrative law issues. There are many differences between the powers of an Article III court and of an agency tribunal, differences between appellate review of an Article III court vs. judicial review of an agency, differences in the arguments that an appellant and appellee can raise, and differences in limits on raising new issues on appeal. Unfortunately, Cuozzo’s brief did not exploit those differences or cite the applicable administrative law.

The key take-away is that almost every PTAB proceeding and appeal presents a “target rich environment” of administrative law issues. Teams that include administrative law expertise will successfully exploit many opportunities that are invisible to teams without that expertise.

Because of internal tensions in the Cuozzo decision, many issues remain to be decided by the Federal Circuit, and will be decided differently depending on how well parties match their argument turf to courts’ choice of decision turf.

Endnotes

[1]. Cuozzo Speed Techs. v. Lee (Cuozzo III), 136 S. Ct. 2131 (2016).

[2]In re Cuozzo Speed Techs. LLC (Cuozzo I), 778 F.3d 1271 (Fed. Cir. 2015), reissued without change to the reviewability discussionCuozzo II, 793 F.3d 1268 (Fed. Cir. 2015).

[3]Cuozzo I, 778 F.3d at 1276.

[4]. 5 U.S.C. § 702 (“A person suffering legal wrong because of agency action, or adversely affected or aggrieved by agency action within the meaning of a relevant statute, is entitled to judicial review thereof.”); Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402 (1971).

[5]Service v. Dulles, 354 U.S. 363 (1957); Vitarelli v. Seaton, 359 U.S. 535 (1959).

[6]Lindahl v. Office of Personnel Management,470 U.S. 768, 791 (1985) (internal quotation marks omitted).

[7]Bowen v. Michigan Academy of Family Physicians, 476 U.S. 667, 680 (1986).

[8]Reuters Ltd. v. FCC, 781 F.2d 946, 950–51 (D.C. Cir. 1986); see also Berkovitz v. United States, 486 U.S. 531, 544 (1988) (“The agency has no discretion to deviate from [its procedural regulations].”).

[9]Cuozzo III, 136 S. Ct. 2131, 2136, 2139, 2142 (2016).

[10]See Brief for the Petitioner, Cuozzo III (No. 15-446), 2016 WL 737452 at xiv, 52-53, 54 (Feb. 22, 20142016); Reply Brief for the Petitioner at iii, Cuozzo III, 2016 WL 1554733 (Apr. 15, 2016).

[11]Cuozzo III at 2141–42 (majority opinion).

[12]FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 125 (2000)

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

39 thoughts on “Guest Post: Administrative Law Matters Even More following Cuozzo Speed Technologies v. Lee

  1. The day that the entirety of the PTO (i.e., including the logic/sellingstuff “art” units) actually begins to function like a reality-based agency is the day that the whining from the patent maximalists will increase one thousand fold beyond anything that we’ve heard before.

  2. I wonder if s00per serious David Boundy would be willing to defend the merits of Cuozzo’s incredibly junky claim.

    Cuozzo’s loss stems from Cuozzo’s briefing

    Cuozzo’s loss stems from Cuozzo’s incredibly junky claim. Cuozzo was destined to lose one way or the other.

    More importantly, had the USPTO been doing its job correctly instead of systematically bending over backwards to service non-“innovators” like Cuozzo, then we could all have been saved a great deal of time and money.

    But let’s not focus on the PTOs endless efforts to satisfy its “stakeholders.” Let’s focus on ways to make it as difficult as possible for the public to the force the USPTO to fix its systematic errors and incompetence, especially when it comes to the “do it on a computer” arts where the PTO’s incompetence is most extreme and transparent. Because otherwise nobody will be motivated to communicate information using color, or something.

    1. I have no opinion on Cuozzo’s claims.

      Justice Robert Jackson offered this response to your approach to the law:

      Procedural fairness, if not all that originally was meant by due process of law, is at least what it most uncompromisingly requires. Procedural due process is more elemental and less flexible than substantive due process. It yields less to the times, varies less with conditions, and defers much less to legislative judgment. …
      If it be conceded that in some way [that the agency could take the action it did], does it matter what the procedure is? Only the untaught layman or the charlatan lawyer can answer that procedures matter not. Procedural fairness and regularity are of the indispensable essence of liberty. … Let it not be overlooked that due process of law is not for the sole benefit of an accused. It is the best insurance for the Government itself against those blunders which leave lasting stains on a system of justice but which are bound to occur on ex parte consideration.

      Procedural fairness is the only way we know of to get to correct substantive results.

      1. David,

        Malcolm is the literal Queen of “the Ends justify the Means.”

        Your paean to due process does not – and will not – matter to such as he.

      2. David, due process also requires that when one’s life, liberty or property are at stake that one at least have his case heard and decided by an unbiased judge, if not a jury.

        England forced the Kings to sign the Magna Carta to ensure this basic right. We revolted in part because King George did not allow us independent judges.

        The USPTO, a creature of the Department of Commerce, is not the place to take private disputes over property rights because the administrative state does not provide the most basic of all aspects of due process.

  3. For all the hypocritical wealthy rightwing whiners, Billionaire Betty just successfully bought the right to flush public education down the t0 ilet and siphon taxpayer dollars directly to her fraudster crony friends.

    Thank you, deep thinkers! Because nothing says “innovation” quite like a scientifically illiterate and science-hostile education system.

    Of course, given that the maximalists would prefer that patenting becomes less and less about science and more about owning information content and rule-avoidance schemes, then this development makes a tiny bit more sense. But just a tiny bit.

  4. There is something troubling about this approach. It seems to yield ground to the depropertization agenda. Patent law is not like tax law. At least not yet. When patents are valid or invalid based on loopholes and technicalities in the CFR, then we are playing an entirely new game. At that point, there is no longer any quid pro quo nor justice at stake. 99% of the players don’t know/believe that is the game. They still think getting a patent means they own exclusive right to their invention. The patent bar should be fighting tooth and nail to preserve this historical property right. It is not yet a matter of making lemonade out of lemons. At least for the reason that the patent bar is not warning applicants up front that patents are lemons – i.e., that they are not presumed valid, are typically not enforceable, and cost several million dollars. Cuozzo and others are right to challenge the lawfulness of the PTAB and its decisions, and there are signs that the courts are beginning to respond. While I appreciate the able advice in this post, I urge a continued high regard and respect for the patent law, at least until it’s officially dead.

    1. The system is slowly being fixed after greedy bottom feeders like you tried to Destroy it.

      There’s no “going back” to the n u t sanity of yesteryear so just get used to it. Or invent something worth patenting. Hundreds of thousands of other people are doing that, in case you haven’t noticed.

      1. Hundreds of thousands of other people are doing that, in case you haven’t noticed.

        You whine constantly about that too.

        Or invent something worth patenting.

        Says the guy who wants to remove protection from the lowest cost form of innovation…

        Either you want patents only for the rich, or you are dissembling about the reasons that you feel software patents are somehow not “worth patenting”…

        Either way, your hubris and your feelings are noted.

        1. the lowest cost form of innovation…

          Please, please, please keep running with this excuse for patenting logic. It’s very a powerful argument!

          LOL

    2. IR —

      I think we’re aligned. The only protection that either inventors or competitors have is the rule of law — patent laws that are applied uniformly, predictably. Both sides can get along fine with any stable, predictable system that achieves correct results (“correct” in the sense of “reaching the result set by the statute” as opposed to “correct aligned with my personal view of what should and should not be patentable”).

      In our legal system, the way we get there is process. Like a quality-driven manufacturing company, our legal system designs procedural guidelines that ensure that decision-makers look at the relevant evidence, obtain arguments from both sides, and employ “reasoned decisionmaking” to make decisions.

      The administrative law has two parts. In the first part (chapter 5 of the APA), Congress delegates authority to agencies, and sets the rules by which agencies are supposed to operate. Other agencies, which don’t have the Patent Office’s compensation structure, handle their responsibilities better, and have management structures in place to make sure that process is followed.

      The problem at the Patent Office is that everything is NOT driven by quality processes. Everything at the PTO is driven by production counts. Corner-cutting. Maximum counts per unit of time. Supervisors are measured on the same production metrics as first-level examiners and APJs, and thus have no incentive to enforce procedures, only (in the words of Greg Vidovich, a TC Director) “I’m not going to require my examiners to do that.” When pay gets balanced against process, at the PTO “pay” wins all too often. Chapter 5 of the APA? I’ve asked senior officials of the Patent Office to follow it and enforce it, and the Patent Office insists that Chapter 5 doesn’t apply. How do they get there? Misquoting language, ignoring inconvenient precedent, redefining my issue into something else, citing the MPEP as if it had legal force against applicants, etc.

      To simplify to one word, “cheating.” Both at the level of initial action, and at the level of supervisory enforcement.

      As the article points out, in Cuozzo, the PTAB rewrote the challenger’s petition to create a new ground, and then cancelled the patent claims based on a ground made up by the PTAB, never raised by the petitioner. That’s cheating.

      The second half of the APA, Chapter 7, specifies the grounds on which an aggrieved party can challenge agency sloppiness and cheating. Those rules are pretty specific. They’re designed to work for agencies that normally follow process, with the assumption that the agency’s default mode is reasonable. But they apply even to agencies whose pervasive mode is cheating.

      My paper is directed to educating lawyers on the rules for challenging Patent Office action.

      That legal predictability is, I believe, the core of a “historical property right.”

      1. Extremely well put, David.

        However, your last line (“That legal predictability is, I believe, the core of a “historical property right.”) leaves me puzzled as to your meaning – especially as the nature of the patent right as property has so recently been under increased assault.

    3. Yes, inventors should be warned that if they need to get a really thorough prior art search before filing an application if they plan on suing someone these days.

    4. The playing field was tilted by the AIA. Then the PTO wrote unfair rules. Then the PTO broke the unfair rules. The entire system is a scam.

    5. For example:
      Tilted Playing Field: unlimited petitions on same prior art
      Unfair Rules: BRI, no SNQ
      Broken Rules: sua sponte new grounds

      1. …and yet, IR, with no more actual knowledge of your particular circumstances (or who you actually are), Malcolm is only too quick to label you as a “greedy bottom feeder.”

        How dare you take it upon yourself to want such a thing as strong and dependable patents.

    6. IR – very perceptive post, and agree re Boundy. For an admin law expert, it is odd that he has not chimed in on the public rights issue (as far as I am aware).

      1. I agree anony,

        There be some serious wrinkles there that having David’s insights (one way or the other) would be rather beneficial.

        1. Ned – ty for the clarification.

          Consider my observation / criticism retracted. I vaguely recall the IEEE brief, it was a good one. Nice work David.

          Ned, by the way, Oil States should receive its conference date by the end of next week. It will be interesting to watch how all of this pans out timing-wise with Gorsuch now pending.

  5. goo.gl/Eu3X2x

    9,401,941.

    Suggesting information … where the information relates to song lyrics! Whoopee! S00per techn0!

    [P]atents like this one reflect the near total failure by the Patent Office to police obviousness in software and Internet patents. Any website will involve multiple design decisions. It requires choices regarding user accounts, passwords, encryption, cookies, software languages, advertising, user interface/user experience, database structure, APIs, server architecture, etc. Given the number of choices, major websites usually reflect a unique combination of those decisions.

    But giving someone a patent merely for having a unique combination of features is absurd. The patent system is supposed to reward innovation that we wouldn’t have without the incentive of a patent. It should not reward routine web development with a 20 year monopoly.

    Leaving aside obviousness, the ’941 Patent should also have been rejected under Alice v. CLS Bank. Routine web development decisions should be considered “generic” computer processes that are insufficient to elevate an abstract idea to patent eligibility. A patent application like this one, with rote recitations of basic computer functions and a bunch of boxes and lines in a flow chart, should at least draw a searching analysis under Alice. Yet the Patent Office never even raised Alice and subject matter eligibility during prosecution.

    We have submitted multiple rounds of comments … to the Patent Office asking it to be more diligent in applying Alice.

    Has David Boundy ever taken a position under the APA that wasn’t consistent with patent maximalism? Just a question for the historians out there …

    Because the PTO’s errors — both the systematic errors and the careless individual errors — are almost always in the applicant’s favor, especially if the applicant is a logic instruction writing “engineer.”

      1. Have you represented the EFF or any other group monitoring the systematic failure of the PTO to bring its examination of “do it on a computer” claims up to speed and in accord with the law?

        Because that failure has been ongoing and transparent for quite some time.

        1. “Because that failure has been ongoing and transparent for quite some time.”

          MM you keep citing some kind of a huge failure but the fact is that in the literal time it takes you to write a comment about this alleged huge failure the PTO has issued several rejections doing exactly what you’re alleging they’re not doing.

          1. Of course the PTO is rejecting some patent claims. Some patent claims are so obviously cr@ppy that a twelve year old could properly reject them.

            But not all of them are like that. And the PTO lets reams of “do it on a computer” junk slide through, every day, all the time. Someone somewhere decides that some scrivening du jour is magical and voila! the floodgates open and the internal firm memos get circulated around the globe: “LOOK LOOK THIS THE HOT LANGUAGE THAT WORKS!”

            And then the CAFC tries to stick its head even harder up its behind than the PTO. That’s how we end up with alternate histories where nobody ever imagined that computers could be used to keep track of what items in a list are not being viewed, as opposed to keeping track of what items are being viewed. Or the idea that “distributed networking” is some amazing non-obvious technological solution to lack of bandwidth for a data processing project.

            It’s a farce.

            Bottom line again: these PTO errors are almost always in the applicant’s favor. The whole point of the relentless PTO-bashers is to make the PTO incapable of doing its job. That benefits the bashers directly. Sure, everyone else has to pay. The bashers don’t care. They’re already wealthy.

            1. “And the PTO lets reams of “do it on a computer” junk slide through, every day, all the time. ”

              Brosef this may come as somewhat of a superze for you, being a patent lawlyer and all, but we’re literally commanded by statute to do that. This is an entitlement program. It isn’t really an “error” if there is no art upon the record.

  6. Prediction: the patent maximalists will cheer for the corrective use of the APA right up until the point when someone uses the statute to correct the PTO’s incredibly transparent pro-applicant bias (especially when it comes to the “do it on a computer” “arts”).

    Most PTO errors are in the applicants favor. Every practitioner knows it but only some practitioners will admit it.

    1. That would be interesting if people start using it to have agency actions that are pro-applicant reviewed. Not sure if the AIA provides for that, but it might, at least somewhat. Esp in IPR’s.

    2. “Most PTO errors are in the applicants favor. Every practitioner knows it but only some practitioners will admit it.”

      Totally agree…..almost. They are not errors, it’s on purpose. You don’t get patent maintenance fees from abandoned applications.

      1. As I have always stated, rubber stamping of either kind – be it Reject Reject Reject OR Accept Accept Accept is not acceptable.

        Examiners – do your Fn jobs.

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