Chisum on IPR Initiation

Chisum-MuellerIn an email distribution regarding their upcoming Chisum Patent Academy, Don Chisum and Janice Mueller opine on the upcoming Supreme Court case of SAS v. Lee.

They write:

The Court will address, at least indirectly, the PTO’s rule 37 CFR § 42.108(a). The rule allows the Patent Trial and Appeal Board (PTAB) to institute inter partes review (IPR) on (and, implicitly, to adjudicate) only some of the claims of a patent challenged in a petition (and, also, only on some of multiple grounds of unpatentability). . . .

More likely than not, the Supreme Court will invalidate the practice that rule 108(a) makes possible as contrary to the governing statutes. 35 USC Section 318(a) requires that the PTAB “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.” If the PTAB must rule on all claims challenged in a petition in its final decision, it makes no sense to allow the PTAB (per Rule 108(a)) to “institute” review on fewer than all those claims. (NOTE: the statute on institution, 35 USC 314(a), sets a reasonable-likelihood-of-unpatentability “threshold” for “at least 1 of the claims challenged in the petition.” That can easily be read as contemplating that only one of the challenged claims must meet the threshold and that all challenged claims will be carried into a review upon institution, whether or not they met the threshold standard.)

Briefing in the case will go through the summer.

 

120 thoughts on “Chisum on IPR Initiation

  1. So, I think at the end of the day what is happening is the PTO has interpreted the statute to minimize their work while exposing patentees to repeated IPRs on the same claim because there is no estoppel unless a final written opinion is issued.

    Ned points out some ways to game the system if the SCOTUS forces the interpretation of all for any. But, it seems that the petitioner would have to pay the costs of the gaming.

    So, again, a lazy agency (USPTO) picks a interpretation of their statute to minimize their work while taking advantage of the public. What a surprise.

    1. NW,

      I think that the evolution of your views on this thread show that you are on the correct path.

      Further, I think that your posts reflect a result of you being willing to engage in a dialogue (and I would contrast that with certain sAme ones who are only interested in their monologues). Your “vacillation” here is not a “bad” thing.

      That being said, your comment below (repeated here for convenience), sounds plausible, but I struggle to make it “reach” and would compare it to the state of pre-AIA patent law.

      NW:
      Anon, the principle I refer to is this one: Amendment V: “nor shall any person be subject for the same offense to be twice put in jeopardy of life or limb.”

      There are parts of the Constitution that suggest that allowing IPRs for the same claim over and over is against the principles set out in the Constitution.

      What your refer to is “double jeopardy.”

      But you reference a Constitutional prohibition against double jeopardy for “life or limb.” Does that prohibition extend to personal property?

      While I have chastised Dave Boundy more than once for his errant view concerning the doctrine of “Void for Vagueness” (Mr. Boundy continues to think that the Void for Vagueness doctrine is limited ONLY to criminal law matters, and such is simply not so), I am not as certain as to whether the protection you mention extends from “life or limb” to property.

      And I will also grant you that it appears that you are discussing a notion of “quiet title” for a certain type of property, that the Constitutional directive and allocation of power does seem to align with that “quiet title” philosophy (since the Legislative Branch is given power to write statutory laws that secures)**….

      I think that a credible argument could be made that patents must be made to have “quiet title,” and that any addition by Congress that violates this particular “other Constitutional protection” may make that secondary addition by Congress infirm.

      “Unsecuring” is not a power in that Constitutional allocation of authority – and I am not convinced that “unsecuring” is something that necessarily attaches to the power of “securing.” This is not to say that Congress is prohibited from writing laws that “unsecure” (or perhaps go even further and engage in “takings”), but this is to say that any such Congressional laws must still accord and abide by protections inured through the other areas of the Constitution. An initial right created to be a property right, cannot simply be changed by Congress with no heed to those other Constitutional protections.

      But here is the pre-AIA comparison:

      Prior to AIA, patents did not have quiet title. Sure, the mechanism by which that title could be challenged was vastly different (and yes, this path still exists post-AIA as well), but I call on you to recognize that courts never decided validity cases with a quieting of:

      this patent is valid

      but instead would declare:

      this patent is not invalid (against a particular set of facts which may include a particular piece of prior art being used in a particular way).”

      Yes, there is estoppel – but only for a particular challenger, and perhaps some limited issue estoppel may be in play, and that may make enough of a difference, but I am not sure that I am convinced on that point (yet).

      .

      Lastly, returning to your comment of:
      So, again, a lazy agency (USPTO) picks a interpretation of their statute to minimize their work while taking advantage of the public.

      I would rejoin with a “Don’t play the blame game and single out the PTAB for this choice.”

      Instead, as I have mentioned, the correct entity to “blame” is Congress.

      Congress is the one that wrote the law (see my salvaged from the dialogue-retarding moderation purgatory at 9.2.1.3.1.1), and in short: 35 USC 316(a)(4) is dispositive on that point.

      .

      .

      ** The notion that patent law is meant to be “pro-patent” in the sense that the authority given to Congress in the Constitution is phrased in a positive manner (and not geared to any infringer right’s type of view) could and likely should be stressed. I am reminded of how certain people like to take the view that “equity” trumps [sic] law and that equity necessarily elevates the infringer’s rights position in any balancing by the judicial branch.

      Realizing that this is a bit of a tangent to the purpose of this thread, I would merely remark that the power given to the legislative branch and thus controlling the subsequent sharing of a portion of the power by the legislative branch to the judicial branch, as exemplified in 35 U.S. Code § 283 – and notably NOT in 35 U.S. Code § 101 – ALSO should be read in a pro-patentee mindset.

      By the way, that sharing by Congress reads (emphasis added):

      The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

      I would then also add – since so many are far too eager to forget – that the main principle of equity is to make the aggrieved as whole as possible, and that reasonableness MUST take into account the very nature of the patent right itself (exclusivity, as in exclude others).

      1. Those are great comments Anon.

        I would point out, though, that the double jeopardy before the AIA was coming from different “people.” (I still find it repugnant to say that a corporation is a person.)

        Here, the problem is that a single person can continue to harass you for the same claim over and over again. They should get their one bite at the apple and it should be done.

        1. All repugnancy aside…

          (and I can tell you that I too have a distaste for the raw power given to the juristic entity known as “the person of a business” – don’t get me started on the corruption endemic to Citizens United),

          …it really does not matter whether the “double jeopardy” was coming from real people or juristic ones.

          Let’s not get distracted with the source of the attack on the property right.

          Also, let’s not get distracted with the “should’s” of your feelings as to “one bite and done.”
          – I “already get” your feelings, and would rather focus on the “Iwhy” of that “should,” rather than on the feelings that a lack of that “should” might produce.

          The “why” that I am still struggling with is your premise (perhaps unstated) that the function of “double jeopardy” should extend from “life or limb” to the property that is a granted patent.

          As I indicated, I can see a “legal-logic” present in the Constitutional allocation of power, and that allocation calling for laws that “secure.”

          I also see that “securing” and “UN-securing” may be attempted to be linked together – and would caution against ANY type of de facto assumption that such linkage is legally proper (and certainly, would warn that any exercise of the two have very real and very different constraints).

          I also see that once a right is legislatively created, that other Constitutional protections may very well inure, and that future acts of Congress need to be judged as to their propriety against the full gamut of Constitutional limitations.

          I have reflected that even though Congress is indeed the proper branch (and truly the ONLY proper branch**) of the government capable of writing the statutory law that is patent law, even Congress cannot do “whatever” they want to do, as if those other protections of the Constitution did not exist.

          ** as I have also shared, other branches of the government may on occasion enjoy shared authority from on branch to another – but even such sharing must follow relatively strict guidelines to not violate separation of powers checks and balances that exist in our Sovereign.

          .

          ALL of that being said, to me, what I would like to see is some cogent position that the notion of “quiet title” MUST BE part of the grant of a patent.

          .

          To further add to the dialogue here (and this might pique the interest of Greg), the importance of the level of the presumption of validity can be seen to fold into the discussion. It is no small accident – and no mere unimportant fact that the level of Clear and Convincing is – and remains – an important (even critical) stick in the bundle of property rights that a granted patent contains (if you have any doubts – just ask i4I 😉 ).

          That being what it is, even that critical level is NOT a de facto COMPLETE “quieting” of title.

          To me, this indicates that the “double jeopardy” aspect of “life or limb” may not carry to property.

          Also, remember that the government is NOT forbidden from taking property.

          But before one runs too quickly in the opposite direction, even my concerns have their built in limits.

          Which is why I put so much emphasis on takings law, and the fact that while takings ARE permitted, any such takings ARE constrained and must satisfy important parameters.

          Parameters that appear NOT to be met with what Congress has done with the system of takings built into the IPR laws of the AIA (and again – it is critical to make sure that the emphasis is on Congress, and NOT the PTAB).

          Exploring the “why” then, may help tie ALL of these different threads together.

  2. I have vacillated on this, but I think it makes sense to say any is all the claims challenged so that the petitioner has estoppel for all those claims. Otherwise, the petitioner can keep filing IPRs and the patentee would have to keep responding or roll the dice.

    It makes most sense to say all the claims in the IPR so there is estoppel and you don’t get people filing IPRs over and over again on the same claims hoping to get it instituted.

    Plus, the plain meaning of the statute is all.

    1. No question this is a tough issue of statutory construction, but as to “otherwise, the petitioner can keep filing IPRs and the patentee would have to keep responding or roll the dice” the PTAB does not allow that either.

      1. Is that true? What are the rules for estoppel at the PTO and district court?

        If they don’t institute, can you file another IPR on the same claims?

        If they institute on claims 1 and 10, and they filed for claims 1-20, can they file another IPR for claims 2-9 and 11-20?

        If the PTAB has to provide a final written decision on all claims (1-20 in the example above) does that change the estoppel at the PTO or district court?

      2. Paul, If a petition is denied, the petitioner gets to refile until a petition is accepted, gradually correcting past mistakes or bringing in new art.

        In court, the plaintiff gets a limited number of chances to fix the complaint or he is out on his ear, with res judicata preventing a further attempt.

        The PTAB is not like this, I think.

        1. Another presentation of “alternative facts” about how IPRs operate? Repeating the same myth that the PTAB accepts endless numbers of IPR petitions, even with new art, by the same petitioner?
          These kinds of arguments actually weaken anti-IPR movement credibility.
          I suspect the source of this myth is patent owners that had sued numerous different companies on the same patent, and then seemed shocked to find that those different companies are entitled to file their own respective IPR petitions.

          1. So what is the statutory basis of denying a petition because the petitioner challenged a claim before that was not instituted?

            And, the second part is what about federal courts?

            My working on IPRs is pretty limited.

            1. Another example: “Where previous IPR was filed by same party and subsequent IPR corrects defects in previous IPR, PTAB used its discretion to deny institution. Informative Decision: Unilver v. P&G, IPR2014-00506, Paper No. 17 at page 8 (Decision Denying Institution) – ‘Based on the information presented, we are persuaded that the instant Petition uses our prior Decision on Institution to bolster challenges that were advanced,
              unsuccessfully, in the 505 Petition.’ “

              1. Paul, come on. So it is discretionary and all the petitioner has to do is use different art and adjust the arguments and it sounds like they are fine.

                So, come on. The petitioner can keep banging on the same claim over and over again. That violates our principles of a judicial system. You shouldn’t be able to repeated sue a person for the same issues. You get your shot to invalidate the claim and if you lose, then that should be it from you.

              2. Based on your own post, the art and arguments must substantially be the same for the PTAB to deny. But that does not prevent the petitioner from trying again, forcing the patent owner to again respond at great expense.

                1. But that does not prevent the petitioner from trying again

                  Not to be obtuse, Ned, but so what?

                  As I have mentioned elsewhere, all of these “bugs” were noted prior to passage of the AIA (I know that I personally shared them with my representatives), and it was Congress that decided on the policy view that these types of “multiple bites” and even “multiple bites by parties that alsolack standing were deliberately included in the law of the AIA.

                2. PTAB denies follow-on petitions all the time under 325(d). I suggest folks in this thread do some PTAB case research on Westlaw.

                3. anonymous, but they do allow one to keep trying. There are reports that one petitioner succeeded on the 8th try.

                  The issue is not estoppel, but failure to advance substantially new art and arguments.

                  The issue should be estoppel. But it is not, and folks like you are trying to fool everyone with half truths.

          2. Example from a major law firm IPR site: “..a petitioner cannot avoid redundancy issues merely by filing multiple petitions in order to present multiple challenges to the same claims. Under 35 U.S.C. § 325(d), the PTAB may ‘reject the petition or request because the same or substantially the same prior art or arguments previously were presented” in another post-grant proceeding.’ ” [Citing an exemplary IPR decision]

            1. Another example: “Previous IPR filed by same party: Factors PTAB will consider from Nvidia v. Samsung, IPR2016-
              00134, Paper No. 9 at page 7 (Decision Denying Institution)”

          3. Paul, you cite no evidence to the contrary here. However, it has been reported by other over a Gene’s site, with party names, that this has occurred.

            Now, tell me, Paul, just why would the PTAB not review a new petition by the same petitioner if they present new art and arguments, or fix prior errors. This was and still is a common practice with reexaminations. They lose one, they file another with different art. The abuses are legendary.

            1. Let us not forget that filing an IPR is not cheap–the pre-institution fees are, I think $9000, and the legal fees per petition can run between $30K and 100K.

              Also, another thing to note is that most IPRs are filed by parties who have been sued. That party has a one year period to supposedly file these multiple-serial IPRs. Given the 3 month time between petition and an institution decision, it seems highly unlikely to me that such a party would be able to file one petition, get the institution decision, find all new art, and file again within the requisite time period.

              Sure, there may be marginal cases, but the exception does not prove the rule.

              1. Spock,

                I do not think the “it’s not cheap” view adds anything meaningful here.

                Making procedures “expensive” only makes the entire system into a type of Sport of Kings, which is in favor of the Infringer’s Rights group (competition on established basis, such as having an existing war chest to play games – takes away from competing on innovation itself).

                The “it’s expensive” game simply does not effect all players equally.

                1. Well, it’s expensive for the petitioner, is the point I’m making. So if the point of these serial petitions is harassment, or whatever, it seems like the expense would dissuade a party from using IPRs in this manner.

                2. Well, it’s expensive for the petitioner, is the point I’m making

                  And as I pointed out, that “point” is just not all that meaningful.

                  Competition based on “it’s expensive” favors those who are already established (the infringers’ rights group).

                  I do “get” the point that you are trying to make, but I am telling you that that point does not add anything meaningful here.

    2. Plus, the plain meaning of the statute is all.

      No. Quite the opposite.

      Shall I break out my dictionary and (again) point out the context of discretion?

            1. Thanks.

              Salvaged this one from the “moderation jail”:

              in reply to you at post 9.

              Your comment is awaiting moderation.
              May 26, 2017 at 7:59 am

              The larger question being missed here is one of discretion.

              35 USC 316(a)(4) is dispositive on that point:

              (4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;

              Whatever of the several available dictionary meanings of the word “any,” that any of us 😉 come up with, the meaning as used by the Office falls to the discretion of the Office.

              And THAT is how Congress wrote this section of law in the AIA.

    3. Night, the estoppel provisions only apply to final decisions. Thus, until final decision, any petitioner can keep filing petitions, and they do if they are denied.

      Further, except for costs and to minimize estoppel, a petition could file petitions challenging only 1 claim and file other petitions to challenge additional claims. Each petition might have a different trial and different estoppel effects.

      But the PTAB has full discretion to consolidate multiple proceedings into one. Thus the only reason a petitioner might want to break it down to claim by claim is to deal with the page limit issue.

      1. OK. Thanks Ned. So, it is a big deal to patentees to get this any to mean all so they don’t have to keep responding to challenges to the same claim that wasn’t instituted again and again. No one hundred bites at the apple.

        The whole IPR thing totally breaks every principle of US jurisprudence in almost everyway.

        1. The whole IPR thing totally breaks every principle of US jurisprudence in almost everyway.

          jurisprudence: noun
          the theory or philosophy of law.
          a legal system.
          “American jurisprudence”

          Other than the feeling of “utter disgust,” what do you mean, Night Writer?

          Which principles are broken?
          And perhaps more importantly, which branch of the government has broken those principles?

          1. Anon, the principle I refer to is this one: Amendment V: “nor shall any person be subject for the same offense to be twice put in jeopardy of life or limb.”

            There are parts of the Constitution that suggest that allowing IPRs for the same claim over and over is against the principles set out in the Constitution.

            1. I’m very confused here. The Double Jeopardy clause only applies in criminal proceedings, not to civil or administrative proceedings. See, e.g. Hudson v. United States, 522 U.S. 93 (1997). So how, exactly, is allowing multiple IPR petitions a constitutional problem?

        2. And, despite Paul’s contentions to the contrary, they keep filing until trial is instituted. Over at Gene’s site there was a report that trial was instituted on the eighth attempt.

          Also, the PTAB originally encouraged petitioners to file multiple IPRs because of the page limit problem.

          1. Ned, et al, please do not confuse filing IPRs against DIFFERENT claims of a patent with a large number of claims [because of the IPR page number limitations] with the cited PTAB decisional restrictions on filing plural IPRs against the SAME claims, which was the subject here.
            As to allegations here of a constitutional problem, if there was one, and if plural IPR petitions against the same claims were as common as alleged,* surely someone would have legally argued it already [after several years and thousands of IPR petitions], like all the other allegations of IPR unconstitutionality.

            *In spite of the IPR one year from suit time bar and its reduction waiting for an IPR declaration petition on the first IPR.

  3. The larger question being missed here is one of discretion.

    35 USC 316(a)(4) is dispositive on that point:

    (4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;

    Whatever of the several available dictionary meanings of the word “any,” that any of us 😉 come up with, the meaning as used by the Office falls to the discretion of the Office.

    And THAT is how Congress wrote this section of law in the AIA.

  4. If this is right then you would have to put only one claim in each patent, while filing numerous continuing applications. Otherwise, your presumptively valid broad claim(s) could unnecessarily bring down the rest of the patent under the BRI/prep ev stds. (And petitions would only be against claim 1.)

    1. It doesn’t bring down the other claims. All this says is that you have to “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”

      They can invalidate one claim and hold the rest to be not invalid.

    2. Frank, not all claims are automatically challenged. The statutes speak only to those claims of the patent that ARE challenged in the petition.

      1. That makes sense. So I revise my comment to petitioners would challenge all of the claims.
        8.1 doesnt make sense.

        1. Except 8.2 says the same thing that 8.1 says. 8.2 just said it in simpler terms. Geez, the reading comprehension of some of these readers is abysmal.

    3. “numerous continuing applications” with claims to the same [under 103] invention will get them rejected or later invalidated for obviousness type double patenting.

  5. Chiz: If the PTAB must rule on all claims challenged in a petition in its final decision, it makes no sense to allow the PTAB (per Rule 108(a)) to “institute” review on fewer than all those claims

    First of all, that’s a big “if”.

    35 USC Section 318(a) requires that the PTAB “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”

    The most reasonable way to interpret the statute is that “any patent claim challenged by the petitioner” refers only to the challenged claims which the PTO deemed reasonably likely to be defeated and decided to institute proceedings for. The PTO certainly does not have to issue a “final decision” on non-instituted claims if the PTO denies the entirety of the petition, in spite of the fact that those claims were undeniably “challenged by the petitioner.”

    Yes, it’s true that there has to be at least one claim falling within the category (i.e., “reasonably likely to be defeated) in order to institute any proceedings. But in the case where just one claim out of 100 falls within the category, it’s silly for the PTO to have to issue a “final decision” on all the other 99 claims.

    I do think that if the PTO decides to institute on some but not all claims presented in a petition, then the PTO should be required to explain why they are choosing not to institute on the remainder.

    1. The most reasonable way to interpret the statute is that “any patent claim challenged by the petitioner

      refers only to

      …the PTO [AND] decided to institute proceedings for.

      That is only wishful thinking and clearly changes the very meaning of the word “challenged.”

      There simply is no cogent legal support to change the meaning of the term in that manner.

      This falls outside of the bounds of “interpretation” and full-on into the realm of re-writing.

      Like it or not, the courts cannot re-write the muck of the AIA.

      1. That is only wishful thinking and clearly changes the very meaning of the word “challenged.”

        No it doesn’t. The word ‘challenged’ still means ‘challenged.’

        There simply is no cogent legal support to change the meaning of the term in that manner.

        Nobody’s changing the meaning of anything. The statute is being construed so that it makes sense and serves its purpose. Construing a statute so that it makes sense has plenty of “cogent legal support.”

        Seriously, you are the last person on earth who should be opining on statutory interpretation. Shall I remind everyone why? It’ll take a paragraph or two to get through the list but I’m happy to do it.

        1. No it doesn’t

          Except for the fact that it does, you might be onto something.

          No wait.

          You are not.

          “Construing” a statute by changing the meaning of a word – or adding additional language not present to change the meaning of the words that are present is NOT called construing (or interpreting).

          Its called re-writing.

          Seriously, you are the last person on earth who should be opining on statutory interpretation. Shall I remind everyone why?”

          LOL – sure, why don’t you use a broken scoreboard example of 1 US 1 (singular/plural) that YOU could never seem to understand in earlier “conversations” but then want to turn around and poke fun at some other poster who mirrored your own views on singular versus plural.

          That wont’ be at differently duplicitous than your normal self.

  6. OT but amusing factoid about bizarrely violent scr-wb@ll Greg Gianforte (Republican): Gianforte and his wife founded RightNow Technologies, a customer relationship management software company in 1997

    LOL

    Here’s the junk patents: link to patents.justia.com

    Every one is ineligible junk.

    Chalk up another great team member for the patent maximalists! An unhinged entitled authoritarian jurkwahd who habitually files junk claims. Totally shocking, right?

    Wrong.

    LOL

    1. Various investors and attorneys often persuade companies to file frivolous patent applications. It’s not a reflection of the company, but of the legal environment it finds itself in. The CAFC has a long history of enforcing clearly invalid patents and one way to defend yourself is to have a pile of equally invalid patents that your competitors might be intimidated by.

      Of course, that doesn’t work against trolls. That’s the most salutary benefit of trolldom: It invalidates the illusion of mutually assured destruction.

      Anyway, Google’s patent portfolio is mostly a stinky pile of the most ineligible and variously invalid junk you’ve ever sorted through. But nobody thinks that means Google isn’t innovative. It just means they have to survive under a system that holds their work in contempt.

      None of this is to excuse politicians that assault people with their hands. The whole point of being a Republican is that you harm people with your laws and keep your hands immaculately clean.

      1. The whole point of being a Republican is that you harm people with your laws and keep your hands immaculately clean.

        Owen, you may have lost some personal credibility with that.

      1. Meet Ned Heller. Ned Heller can’t distinguish between destroying property to express opposition to a genocidal movement or opposition to the dehumanization of 50% of the human race, on one hand, versus a congressman suddenly throttling a reporter because the reporter asked a tough question.

        But he’s a very serious person! A real deep thinker. Ned also wets his pants a little bit every time he sees a Koran in an airport. Scary!

        1. Because the swagger of destroying property** is so “grown up” and all….

          (is this where that [shrug] goes…?)

          **worth noting here is that only now are you limiting your violence with bats and bricks to violence to property. But hey, that was just a minor oversight earlier, right?

          1. Because the swagger of destroying property** is so “grown up” and all….

            Five words: Boston Tea Party. So infantile!

            worth noting here is that only now are you limiting your violence with bats and bricks to violence to property

            Is it illegal to open carry a baseball bat or a brick for self defense? I suppose it depends on the color of your skin.

            In any event, the important thing is that you and Ned are totally not defending this deplorable Montana congressman. LOL I mean, who can blame him? Some leftist said a naughty word the other day so everybody is really on edge.

            Ah, the glibertarian snowflakes. They’re very serious people! Smell the freedom.

            1. “Five words: Boston Tea Party. So infantile!”

              It actually kinda was if you read about it. The King gave the company a monopoly but made sure that tea was available for cheaper than it had previously been, even with a new tiny tax imposed thereon (a tax which the colonial gov. didn’t get to give their 2 cents about). The King thought everyone would be happy with the new cheaper tea (even including tax). Nobody was even planning a whole lot of competition on tea anyway. But they got all hot around the collar because their legislature didn’t get to give their 2 cents (even though they likely would have approved the tax anyway).

              “Is it illegal to open carry a baseball bat or a brick for self defense? I suppose it depends on the color of your skin.”

              You clearly indicated you intended violence toward whitey. Not only whitey’s property.

              But I’m glad you’re walking back your rhetoric, as a lefty that’s somewhat rare. Usually lefties just double down before shouting RAYCYSMS!

              1. I do notice that he only too happily wraps himself up in a “flag-waiving” meme (while as we both noted that he has “ walking back your rhetoric, as a lefty that’s somewhat rare.” with the “You clearly indicated you intended violence toward whitey. Not only whitey’s property.

                Malcolm very much is the Trump of these boards.

        2. MM, just because I disapprove of political violence from you does not mean that I approve it from others. The disapproval is there regardless of what political views are being expressed.

          Trust me, I have had long arguments with supporters of Palestinians who have sought to justify the slaughtering of innocents in furtherance of the cause of the Palestinians and provided that the victims were Jewish.

          Nothing can justify political violence, MM, regardless of the cause.

          The only exception are state actors and for just causes.

        3. “Ned Heller can’t distinguish between destroying property to express opposition to a genocidal movement or opposition to the dehumanization of 50% of the human race, on one hand, versus a congressman suddenly throttling a reporter because the reporter asked a tough question.”

          Lol, the mind of a lefty.

          Btw, your numbers are off if you’re thinking it’s all whitey “dehumanizing” all non-whites. Whitey is now like 15% of the world’s pop. They were 25% when you were young.

  7. Pretty clear that this “any” is referring to the selected claims of the patent in the “inter partes review.”

    This is pretty clear. Whatever is in your IPR is what “any” refers to. This makes sense. It goes to civil procedure. A complaint if filed. You can chose not to institute it, but if you do institute it you must address all the issues raised in the complaint.

    This is good. This makes sense. This stops fishing expeditions and forces the PTO to be disciplined.

    This should be interpreted to mean if you institute a IPR, then you have to address ALL (ANY) issue raised. This is consistent with civil procedure.

    1. By the way, the seminars they give are great. You can go and sit down with Don Chisum and Janice Mueller and only like 10 other people and hash out patent law. Well worth the price of admission.

    2. A complaint if filed. You can chose not to institute it, but if you do institute it you must address all the issues raised in the complaint.

      In a court proceeding, the judge doesn’t have to address issues that are voluntarily taken off the table by the parties during the course of the proceedings. That also makes sense.

      1. Sure, MM, parties can waive issues. But that has nothing to do with this case where the PTO is deciding which issues to decide.

        1. Clearly the analogy to a compliant does not work here.

          The key: who has the discretion.

          In the complaint, you lack the discretion that is present in the IPR.

          That alone works against your viewpoint, NW.

          That is not to say that I do not “get” what you are saying and why you are saying it, but you are not addressing the issue front and center.

          The dialogue here is not “defend the position that you want taken.” The dialogue here is “what makes sense given the obviously p00r drafting of the AIA.”

          To that end, the view of “any” must be “all” – while indeed having merits that you can recognize – does not fit contextually with the level of discretion that Congress is providing to the PTAB in the entire section of IPR.

          Can you place the desired Ends to the side for a moment and address the context here as some type of cogent means to get to the Ends that you want to get to?

          The “any” must mean “all” lack of discretion sticks out like a sore thumb.

          1. “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”

            The fact that they have discretion whether to institute the IPR does not mean they have the discretion to piecemeal the IPR. I think the plain meaning is very clear and I think that any referring to every claim challenged in the IPR is consistent with civil procedure. Your discretion ends when you decide their is some merit in the IPR. At that point you have to address all their issues. The discretion is like a SJ. After you take it, then answer all the questions with estoppel applying. Otherwise you can get endless IPR filings for the same claims over and over again which the patent owner would have to respond to or roll the dice.

            1. You are again assuming the conclusion on the point of whether or not “any” must equal “all.”

              I heard you the first time.

              What I am not hearing though is how such a non-discretionary “take” fits in with the rest of the very discretionary IPR section of law.

              Like I said: I “get” both what you want and why you want it. Those are the Ends.

              I am not seeing the Means in the context of this law.

      2. Nor does the Court have to address any issues dismissed pursuant to 12(b)(6) or the like. The “institution” phase is kind of like the 12(b)(6) phase of a trial (although the standards are obviously different). Only the meritorious arguments move on into the proceeding, and only those meritorious arguments need be addressed in the final decision.

        1. Good comeback Spock. Kind of made me think maybe you are right.

          I guess for practicality what the PTO is doing is probably better.

        2. Indeed well stated / picks up the aspect of discretion and who has that discretion (the courts decide on the 12(b)(6) motion), as well as “any” NOT must mean “all.”

    3. Assuming that the PTAB continues it practice of explaining why it is not instituting with respect to some claims, those claims are effectively found to be not unpatentable. It would be foolhardy for the Patent Owner to address those claims in its Response. If those claims are not addressed in the Response, the Petitioner would be unable to address them in its Reply. Thus, those claims would have the same status in the Final Written Decision as they had at institution–no reasonable likelihood that the Petitioner would prevail.

  8. 35 USC Section 318(a) is about what should be in a final IPR decision after the rest of the IPR is concluded. Thus, can it not be argued that “any patent claim challenged by the petitioner” is logically applying to those patent claims being challenged by the petitioner IN the IPR proceeding? Otherwise, should not this statute have been written as: “any patent claim challenged by the petitioner in its petition” This interpretation makes further sense in not requiring a final decision on claims which are disclaimed by the patent owner by settlements, claim substitutions, or otherwise. after an IPR petition is filed and thus “not challenged by the petitioner” during the IPR.
    Has this argument already been made? What would be the rebuttal?

    1. Something that I agree with Paul about (in an IPR section of the law, no less)….

      What Paul discusses here are yet further attributes of discretion.

      Discretion leads away from the view that “any” must equal “all.”

      1. No – “all” is still the best reading of “any” here. The debate is around which claims that “all” applies to: those petitioned or those instituted.

        By your logic, PTO could institute against 5 claims all on reasonable grounds and only write a decision for 1 claim. That is not a sensible outcome.

        1. Sensibility may very well be limited by the words that Congress chose.

          Step one is to determine the meaning of “any” in context.

          It either means “all” or it does not mean “all” (and one does not get to parse through and apply the meaning only in selective outcomes of that chosen meaning; further, choosing that meaning – as I have indicated several times now – goes hand in hand with the larger notion here of whether or not Congress was providing discretion to the USPTO or not).

          Those are your two choices.

          Notably, you do not have a choice of “a subset of all challenged that were later instituted.”

          That would require a rewriting of the actual statute.

          Sure, that might be a “best desired outcome,” but that is just not how Congress wrote the law.

      1. I do not think that such is entirely correct, Ned.

        Is not the Petitioner active in the trial (post initiation decision point)…?

        1. Huh? Anon, you have something to learn about IPRs.

          You have petition, then you have trial. The trial does not allow any fresh petitions or fresh evidence except upon showing that the evidence was not available, etc.

  9. The entire text of 318(a) reads

    “IF an inter partes review IS INSTITUTED and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).”

    Doesn’t it stand to reason that 318(a) is irrelevant to the question of whether the Director can partially institute? The text presumes it has been instituted already.

    314(a) should be more relevant.

    “The Director MAY NOT AUTHORIZE an inter partes review to be instituted UNLESS the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”

    The “may not unless language” suggests to me that it would be a reasonable interpretation of 314(a) under Chevron to partially institute. If the Director is prohibited from instituting unless there is a reasonable likelihood of success with respect to at least one claim, then what happens when there are multiple claims raised and only one has a reasonable likelihood of success?

    Should the Director be forced to institute IPR on all of the claims even though only one has a reasonable likelihood? That seems like a massive and unnecessary waste of the PTAB’s resources.

    The USPTO’s position not only seems reasonable under Chevron, but it is more reasonable than the alternative, which would be to only permit IPRs where EVERY SINGLE CLAIM has a reasonable likelihood of success.

    Respondents could completely destroy IPRs by attacking the weakest ground raised, thereby preventing institution. They could then rely on estoppel to make the patent essentially incontestable in court. Which is what I am sure many of you on here are hoping for.

    1. Well said, Quasar. But the other alternative isn’t to only institute if every grounds for challenge is likely to succeed. It’s to fully institute the entire petition if any grounds have a reasonable likelihood of success, and then force USPTO and the parties to respond to every dreck argument that was insufficient in the first place. So much for keeping IPRs lean and focused.

      1. “But the other alternative isn’t to only institute if every grounds for challenge is likely to succeed. It’s to fully institute the entire petition if any grounds have a reasonable likelihood of success, and then force USPTO and the parties to respond to every dreck argument that was insufficient in the first place”

        This is part of the reason why I think SCOTUS is going to reverse the CAFC on 318. 318 seems clear that once IPR is instituted that the PTAB must issue a decision on every contested claim.

        If the director can’t partially institute, then it seems like the statute requires the PTAB to deal with all the dreck arguments absent party stipulations. This seems counter to what Congress had in mind.

        The language in 318 leaves far less room for a “partial opinion” than 314 does for a “partial institution”

    2. Well Quasar 18, I find it interesting that two people can read the same text and form exactly the opposite conclusions. There must be some ambiguity.

      Think back to reexaminations, which is the platform upon which this edifice is built. All the Office had to do is find that there was a substantial new question of patentability raised with respect to at least one claim. The Director could then order a reexamination – and all claims could be re-examined. However the Director generally limit the claims for reexamination purposes to only those claims where the petition examiner believed that the petition had established sufficient grounds.

      The same procedure should inform the institution of IPRs. All that was required to institute was the finding that at least one claim met the criteria. Thereafter, all challenged claims could be subject to actual trial. Could – not must – could. As a practical matter, and in order to limit the work of all during trial, the institution decision limited the number claims for trial purposes to those that in the opinion of the institution panel actually raised substantial questions.

      The statutory scheme only requires one claim to be found sufficient to meet the statutory criteria in order for the trial to be instituted; and, like reexaminations, trial is conducted on all challenged claims, not all claims in the patent.

      Viewed in this light, the wording of the final decision statute makes a lot of sense. If trial is instituted, a final decision must address all challenged claims. Thus, the idea of limiting trial to only those claims the patent office wants to pick and choose seems to be where the train was driven off the tracks. The obvious intent was to have the initial review of the petition look to find if there were any claims that met the criteria, and to institute if there was at least one claim that met the criteria.

      1. “Well Quasar 18, I find it interesting that two people can read the same text and form exactly the opposite conclusions. There must be some ambiguity.”

        Ned, this is part of my point. There IS ambiguity in both interpretations. Under Chevron, tie goes to the PTO.

      2. And Ned, I agree with you analogy to reexams.

        That is the reason why I think the director should be allowed to partially institute.

        The other point nobody has raised is that if full institution is allowed, the Board is going to get a lot of failed motions to amend, which is what a lot of people were complaining about at one point.

        For ex. If there are 20 claims, say one independent and 19 dependent and only claims 7, 11, and 13, make a contribution over the prior art, why should the director be forced to subject the panel to frivolous motions to amend based on claims, 2-6, 9-10, 12 and 14-20?

  10. More likely than not…after cert was accepted.

    I love a guy that sticks his neck out.

    1. Exactly. The SCotUS rarely takes cert to the CAFC to affirm. The mere fact that they took cert makes it much more likely than not that the CAFC will be reversed at the end of this experience.

      1. I am not so sure. They could affirm with different reasoning and focus on 314 rather than 318.

        318 is a red herring and has nothing to do with the question of whether the Director can partially institute.

        The CAFC took the bait and found that 318 imposed no requirement to address all the claims before the board. It seems based on Chisum’s comments that is was an erroneous basis for the holding.

        Who knows what SCOTUS will do but I predict that they will hold that 1) the director CAN partially institute under 314 however once this occurs 2) the board must address all instituted claims under 318.

        1. In light of below comment. I am flip-flopping.

          I think that 318 requires a decision wrt at least once claim challenged by the petitioner and that 314 permits partial institution.

          The introductory clause of 318 prohibits reading 318 into 314 which is the main error of the CAFC. This last point has always been my central point which I stand by.

            1. Read my comment at 3 I am not writing it again.

              The short of it is that 314 governs the Institution of IPR not 318. 318 is prefaced with IF IPR is instituted…

              1. 316 covers ALL IPR activity – not merely post initiation.

                For example, 35 USC 316(a)(2):
                setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a);

          1. by the by, the introductory clause “If an inter partes review is instituted and not dismissed under this chapter,

            is rather p00r writing and amounts merely to the banal proposition that no report is necessary for reviews that are not instituted.

            (note: “reviews” – rather than “challenges, or even claims” …. 😉 )

            This STILL does not impact the dictionary definition of the word “any.”

            1. Sure. But the issue before the Court is whether the director can partially institute IPR, not whether the director has to address all the claims in the opinion after IPR is instituted.

              This is what I am referring to.

  11. There is a bit of circular “assume the conclusion” here in Mr. Chisum’s statement.

    If the PTAB must rule on all claims

    That’s the crux.

    The only way to get there is to assume that “any” must equal “all.”

    I tend to doubt that a reading of the word “any” mandates such a view in the first instance.

    1. “Any,” I think clearly means any of the claims of the patent that are challenged. So, yes, here, any means all of the claims that were challenged.

      1. His point is if I challenge claims 1-10, and PTAB issues an opinion on claim 3, then they can certainly be said to have “issued a decision with respect to any of the claims,” since claim 3 is “any of” the set of 1-10.

        1. JTTGF

          Let’s explore your scenario some more. Say the patent contains claims 1-20, claims 1 and 10 being independent. Petitioner challenged all claims 1-20. But, IPR instituted on only claims 10-20. Decision only references independent claim 10 as invalid.

          1-does “any” mean they only have to issue an opinion on a representative claim to support the invalidity position, i.e., claim 10?
          1-does “any” mean “all” claims under which the IPR was instituted, i.e., claims 10-20? Thereby addressing in the opinion why dependent claims 11-20 do not overcome any invalidity arguments.
          2-does “any” mean “[all] patent claim challenged by the petitioner” i.e., claims 1-20 (because petitioner challenged the claims). Addressing claims 1-9 and explaining why they were not the subject of the IPR and claims 10-20 addressing why each of claims 10-20 are invalid?

          Thoughts?

      2. Not so, NW, as you are still assuming the point to be proven.

        Still circular and still a type of thinking that removes discretion.

        If no discretion was desired, the use of “all” directly instead of “any” would have been appropriate.

        This also conflates what it means to challenge and what it means to institute.

        By “any” must be “all,” the Insitutition decision is rendered into a straight purely binary decision point.

        If instituted, then the “any” MUST be the “all.”

        If not instituted, then the “any” becomes a “none.”

        That may very well be the (finishing) writing that the court adds to the p00r writing of Congress, but does such heavy handed lack of discretion make sense given the larger picture that you are taking a granted property right, taking away certain sticks in the bundle of rights of that granted property right, and giving the matter as a whole to the discretion of the Executive branch administrative agency?

        The larger gestalt speaks to discretion – not the absence of discretion.

        1. There really isn’t any ambiguity. The any refers to any issue in the IPR not any issue that the PTO decides.

          By the way, how is it on fees? I don’t remember. But, I think you get a refund for fees.

          1. I am not sure that I am following you here…

            You want the the PTAB to include in its mandatory report those things that it has NOT decided….?

      3. Close. It’s any of the claims that are instituted. Otherwise you’re ignoring the precedent clause in the statute.

        1. Hmm, no.

          Your way is adding words to the statute that are not there.

          Challenged remains challenged.
          Challenged is not dropped to a subset of “challenged and discretely chosen to be initiated.

          1. You’re selectively reading the statute. There are two phrases used here:

            Section 314 (institution) says that the Director may institute when there exists a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims *challenged in the petition*.”

            Section 318 (Final Decision) says that the Board issues a FWD “with respect to the patentability of any patent claim *challenged by the petitioner* and any new claim added under section 316(d).”

            So yes, it is a very reasonable reading of these two provisions to cover two different sets of claims. When Congress wanted to say “challenged in the petition” it said so. “Challenged by the petition” after IPR is instituted means something different–i.e. those claims challenged by the petitioner after institution during the trial phase (which is different than the institution phase).

            1. Which IS the meaning of “any” when you do not use the version of “any” must mean “all.”

              Spock – you have proven my point.

            2. Reading this thread, I actually realized that there is no reason the PTAB couldn’t insitute a broader IPR than is encompassed by the initial petition.

              For example. Petitioner challenges claims 1-10 out of 20 claims, and board says hey, now that we looked, we think claim 15 is unpatentable also.

              The petitioner agrees and then challenges claim 15. The board then has to address it in the final decision.

              The reason why I think this would be permissible is twofold.

              First the difference between the language a) “challenged in the petition” and b) “challenged by the petitioner” opens up the possibility that the number of a) and the number of b) need not be equal.

              This decision is about whether a) can be less than b), but there is no reason a couldn’t be more than b)

              The second reason goes back to Ned’s above comments about how inter partes reexam was a model for the design of IPRs. In reexam, reasonable likelihood of success wrt one claim give the director discretion to review the whole patent. I see no reason that’s IPRs changed that.

              I know some of you don’t like IPRs but SCOTUS didn’t take this case to go against the intent of congress and gut them. They took the case to clarify the law that Congress passed.

              1. They took the case to clarify the law that Congress passed.

                …and that is exactly why I have pressed many (including Ned) to make sure that they are asking the right questions.

                Questions geared to PTAB (and given the huge amount of discretion that the Congress gave PTAB), are just not the right questions.

            3. I think the word “shall” in the statute changes the meaning of “any.”

              I also think Congress did some shoddy drafting which makes the issue tough.

              “Shall” is not very permissive language, but “any” is. Putting them together is weird and ambiguous. If I told you that you shall choose any iced cream from the shop, I think you would ask me wtf I meant by that.

              Does that mean you HAVE to have iced cream? Does that mean you HAVE to have at least one flavor? Or does that mean you have to have all the flavors.

              All the readings are clunky but I think the second is most reasonable. You have to have AN iced cream, but you don’t have to have ALL of them.

              1. I do not see how the word “shall” affects the word “any.”

                Shall IS indeed a directive – and that directive is to the report – NOT to what is in the report per se.

                Putting them together is weird and ambiguous.

                Absolutely – which has been my point all along. SO what is one to do? Well, since “any” is not a legal term of art, a standard dictionary can be referenced. Also, one looks at the meanings therein and notes that the Congress designated level of discretion colors which choice is more apt than other choices.

                It is beyond clear that Congress provided EXTENSIVE discretion with IPRs.

                The “don’t have to have” language itself provides “discretion.”

    2. I agree that there is a lot of ambiguity in the text of the statues that says “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”

      Reading the word “any” in this context make sense as “all” or “at least one.” Gorsuch is a real stickler for textual interpretation, so that should be interesting.

      1. OSitA,

        I agree – and my (limited) rooting around in the textual (and contextual) aspects leads me to the discretionary/mandatory viewpoint.

        Point blank on that is that Congress provided immense discretion to the PTAB throughout the IPR section (35 USC 316).

        I do get that the word “any” itself can legitimately be said to mean somewhat contradictory directives from Congress. I also do get that either (main) meaning does have its merits, as well as its trouble points. And in a nod to Greg and PB above, granting cert may indicate a propensity of “sm@ckd0wn” (fire-hosing simians in the cage is such hard work 😉 ); but at the same token, granting cert here may merely be the Court seeing an opportunity to write large on the slate that Congress so generously provided in their p1$$p00r writing of the AIA. The Court may even amplify and extend the CAFC in this instance.

Comments are closed.