Celgard: Important Challenge to the Federal Circuit’s Pervasive No-Opinion Judgments

IMG_20170623_221253_112By Dennis Crouch

In re Celgard (Supreme Court 2017) [2017-6-19 Celgard Cert Petition]

In what looks like a well-postured case, Celgard LLC has asked the Supreme Court to consider several questions stemming from the Patent Trial & Appeal Board (PTAB) decision that the claims of the company’s U.S. Patent No. 6,432,586 are invalid as obvious.  The patent claims a particular microporous membrane separator that adds a ceramic layer to effectively limit the growth of lithium dendrites – the major cause of lithium battery failures and overheating.  The approach created by Celgard has been widely copied (and further adapted) in the industry.

In order to avoid royalty payments and supply agreements with Celgard, a host of competitors filed at least six inter partes review (IPR) petitions against the ‘586 patent.[1] Although the bulk of the challenges have been rejected or found without merit by the PTO, the PTAB ultimately agreed with one of the several grounds presented by LG and ruled claims 1-6 and 11 obvious over a combination of two Japanese published patent applications in a parts-and-pieces analysis.[2] As it does with most appeals from the PTO, the Federal Circuit affirmed the PTO judgment without opinion. The petition explains:

The [Federal Circuit] decision was labeled as a “Notice of Entry of Judgment Without Opinion” and stated that “[t]he judgment of the court in your case was entered today pursuant to Rule 36. This Court affirmed the judgment or decision that was appealed. None of the relief sought in the appeal was granted. No opinion accompanied the judgment.”

The Federal Circuit also denied Celgard’s subsequent petition for rehearing and rehearing en banc.

With this basic setup, Celgard has petitioned the Supreme Court for writ of certiorari – asking four questions.

First, following identically from the pending case of Oil States, petitioner asks:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

This question should at least serve as a place-holder pending outcome of Oil States.

The second question stems from my recent article on the Federal Circuit continued issuance of judgments without opinion in appeals of PTO decisions.  Petitioner asks:

Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?

In addition, petitioner argues that the Federal Circuit’s continued and pervasive use of Rule 36 judgments without opinion is a violation of the principles of justice and should be rebuked by the Supreme Court:

Whether the Federal Circuit’s pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?

Something that makes this a helpful case is the fact that Celgard also has a very strong argument on the substantive patent law merits (nonobviousness) and there are no serious troll or eligibility undertones.  In its final petition question, Celgard focuses on the obviousness question asking:

Whether the Patent Office’s consistent practice of failing to consider the claimed invention “as a whole” and failing to consider whether the combination of elements would lead to “anticipated success” in an obviousness determination conflicts with 35 U.S.C. § 103 and this Court’s precedent in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)?

The obviousness analysis by the PTO is what I see as a somewhat typical pieces-and-parts analysis – finding that most of the elements of the claims were taught by one of the prior art references and then finding another reference that taught the remaining limitations.  Of course, this approach of using the invention as a blueprint for framing the prior art has the problem of likely hindsight bias – and is particularly troublesome where the invention is not simply a combination elements but instead is a new structure. Here, for instance, the claim requires, inter alia, “a ceramic composite layer . . . adapted to at least block dendrite growth. . .”  One reference purported to teach a non-ceramic layer used to block dendrite growth (Tobishima) and the second taught a ceramic layer – albeit one that that would not block dendrite growth because of large open holes (Tojo).  The PTO determined that it would be appropriate to combine the two references in a way that form a ceramic layer that blocks dendrite growth. In response, the petition argues:

Given the different problems addressed by Tobishima and Tojo (and their respective, different solutions), a threshold question for obviousness should have been whether it would have been obvious to combine the references to achieve a two-layer separator that blocks dendrite growth. Had this question been considered, which would have considered the claimed invention as a whole, the Patent Office would have found that the combination would destroy the very purpose of the references and would result in a separator with “open holes” that cannot block dendrite growth. Instead of considering the claimed invention “as a whole” and its unique ability to block dendrite growth through a ceramic composite layer, the Patent Office instead looked to whether the references contained all the elements of the claims. This analysis is not proper.

Although not the primary focus of the obviousness argument, the secondary factors of nonobviousness are interesting here.  The PTO gave them no weight even though LG apparently copied the invention and then touted the safety benefits of the ceramic layer in its advertising.

As in the Cuozzo case, the original IPR petitioner has dropped out of the case after a settlement, but the PTO is defending its own judgment.

= = = = =

[1] See IPR2015-01511 (Ube Maxell); IPR2014-00679 (SK Innovation); IPR2014-00680 (SK Innovation); IPR2014-00692 (LG Chem); IPR2014-00524 (Mitsubishi Plastics); IPR2013-00637 (Sumimoto Chemical).  See also, Celgard, LLC v. LG Chem, Ltd. et al 3:14-cv-00043 (W.D.N.C.); Celgard, LLC v. SK Innovation Co., Ltd. 3:13-cv-00254 (W.D.N.C.); and Celgard, LLC v. Sumitomo Chemical Co., Ltd. 3:13-cv-00122 (W.D.N.C).

[2] References: Unexamined Japanese Patent Application No. H5-190208 (hereinafter, “Tobishima”) and unexamined Japanese Patent Application No. H11-80395 (hereinafter, “Tojo”).

= = = =

I’m writing this from the mountain village of Montefegatesi, shown in the picture above.  No internet here, but it will be posted soon.

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.

100 thoughts on “Celgard: Important Challenge to the Federal Circuit’s Pervasive No-Opinion Judgments

  1. The “parts-and-pieces” analysis is spot on. The PTAB institutes §103 grounds on parts-and-pieces, with a pronouncement of inherency as needed. Then they shift the burden to the patent owner at trial – to prove the negative. Hindsight is baked in. This is clear from the 83% invalidation rate, and the PTO’s repeated statements that there is no presumption of validity in PTAB proceedings. The PTAB has proven to be utterly incompetent to decide what is or is not an invention – devastatingly incompetent.

    1. The PTAB institutes §103 grounds on parts-and-pieces,

      Rights. That’s because there’s no other way to do it. If you’ve got a single reference that discloses all the limitations as set forth in the claim, that’s called “anticipation.”

      Remember, folks: the patent maximalists are pretty much always the least intelligent and lowest-functioning people in the room. Always.

      “Invention Rights” is just another data point proving this proposition. And there’s a lot of other data points. Just look around.

      Hindsight is baked in.

      Lookie! The blind squirrel found a nut! Yes, it’s true that the claims come first in the analysis, then you look back in time to see what the art taught. If looking back in time to see what elements were taught in the art is “hindsight”, then — indeed — hindsight is “baked in.”

      This is clear from the 83% invalidation rate

      LOL No, that’s not how it works. Nice try, though!

      1. Remember, folks: the patent maximalists are pretty much always the least intelligent and lowest-functioning people in the room. Always.

        Except of course for Malcolm.

        Yay Number One meme of Accuse Others….

    2. Two points here.

      1. What else can/should the examining authority do, other than to cite the “bits and pieces” and invite Applicant to explain why the claim does not embrace an obvious combination. That’s how it has been at the EPO since 1978 and nobody bats an eyelid. That might be, of course because the EPO uses a TSM regime to debate the obviousness issue fairly and transparently.

      2. Hindsight? Of course. As MM points out, that is unavoidable and inherent. What is forbidden is ex post facto analysis of the obviousness question. At the EPO, for example, it is forbidden that the “objective technical problem” be framed in such a way that it includes any element of the “solution” which the Inventor has brought forth in her/his patent application.

      Discuss!

      1. It is not an examination. That seems to be a prevalent misunderstanding which has destabilized our patent system.

        1. Not an “examination” you say. What is it then? Can you tell me what constitutes an “examination” and what does not?

        2. Your point is unclear, IR.

          It almost appears that you are saying that there is not supposed to be an examination; whereas I think (but could be wrong) that you are more closely aligned with MaxDrei with wanting to indicate that a “rule less” bits and pieces does not on its own constitute a proper examination (reflecting a condition of MaxDrei’s improperly included ex post facto as “not examination”).

          Or did you really mean that there is not supposed to be any type of examination?

        3. Examination is what happens before the patent is granted. The subject of this post is a PTAB trial, where the statute places the burden on the petitioner to prove unpatentability. That this blog is confused on this point is flabbergasting.

          1. Why do people process data with computers?

            Huge mystery.

            1. Malcolm,

              Your post has nothing to do with the conversation.

              Please try to stay on focus.

          2. Ah, IR, you are talking about “trial” versus “examination.”

            But do you really think that you have ALL the sticks in that bundle of property rights just after the legal point of the initiation decision?

            Have you not been paying attention to the taking that happens at that precise point?

          3. Well yes I do agree that the petitioner has the burden of establishing a plausible or prima facie “more likely than not” case of obviousness. What constitutes a prima facie case might vary though, from jurisdiction to jurisdiction.

            Once a plausible case is asserted, patent is expected to reply, right?

            And then somebody “examines” what the two sides have asserted, right?

          4. Yes, this is the unlawful approach used by the PTAB. Except they score inherency, motivation, and objective indicia all for the petitioner at institution. That is, if the parts-and-pieces are found they order a trial. This sets up the prima fascia / plausible case for unpatentability which the patent owner must overcome. Which he fails to do 83% of the time.

            Conflating examination with trial is a big problem.

            Imagine if in examination the applicant had one chance. The first office action decided ultimate patentability of the invention – forever.

            The threshold and burden of proof in a PTAB trial are low enough by statute. But even so they DO NOT put the burden to re-prove patentability on the patent owner. The petitioner must do more than present a prima fascia case for obviousness. Too bad for the integrtity of our patent system that the PTAB does not know/follow the law.

            1. Do me a favour, will you? Refrain from typing fascia when you mean facie. In a legal setting, it is somewhat distracting.

              But to the substance, I’m intrigued by your categorical statement that a petitioner “must” do “more” than put forth a prima facie case of obviousness.

              Is your statement worth anything “more” to me than just you airing your personal opinion? What would you say?

              1. In a legal setting, it is somewhat distracting.

                LOL – this is a blog forum, typos are FAR LESS a concern than getting legal concepts wrong (as you so often do, even if – as you claim – you are only throwing something against the wall to see what sticks).

                As to you being “intrigued,” I am “intrigued” by what point you are trying to make with your rather coy response.

                Are you setting yourself up as the judge with your notion of “to me” when you question the worth of statements made? Are you denigrating the statements by equating them solely with “personal opinions”? Are you aiming to NOT pay attention to the differences that IR (even in less-than-legal-formal manner) DOES make?

                Perhaps you could be less coy and more direct in your response, MaxDrei.

                Of course, that might mean that you actually stake our – and defend – a position with some sense of a “legal setting” that seems to guide your sensibilities (leastwise when it comes to others).

                1. OK then anon, as somebody who knows his facie from his fascia, you can answer my simple question, can’t you? In the USA, in contested legal proceedings, when does the burden of proof shift to the other side? Is a prima facie case enough to get the shift, or is something more needed?

                  And if you can’t, or won’t, tell me perhaps Ned will oblige.

                2. Please be more specific in your question, as there are multiple burdens (i.e., production, persuasion).

                  Then note that “answering your question” was not the focal point of my post, but rather it was pointing out that YOU were evading the points put to you.

              2. Max, the burden shifts when evidence is produced on all necessary elements of proof to the level required by the standard of proof.

            2. 35 U.S.C §316(e) Evidentiary Standards.—
              In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

              I reiterate the distinction between examination and trial. To get a patent, an applicant must overcome any prima faisha case put forth by the examiner. However, once he has a patent, the burden of proof remains 100% on the petitioner.

              The burden shifting approach used by the PTAB puts a cloud over the title of every patent. The PTAB/petitioner/infringer challenge: “just ’cause you have a patent doesn’t mean you really do – you still have to prove it.”

              1. Are you saying that there is NO SUCH THING as the procedural concept of prima facie (no matter how you choose to spell it 😉 ) in a proper AIA trial setting?

              2. I don’t know if there is a categorical rule. Burden shifting is not part of the statute. I think it has been improperly imported from examination and the PTAB is treating trials like an application that terminates with the first office action.

                1. You may (or may not) be on to something here.

                  I think that it comes down to what does it mean for the administrative agency to be a trial court.

                  Prior to the AIA, when the PTAB was a (nominally) different BPAI, “judges” were often (mis)characterized as “Super-Examiners.”

                  The AIA was supposed to change the BPAI into a true litigation/court/alternative to the Article III courts.

                  I am not sure that anyone at the Office really knew what that meant as far as removing any traces of “Super-Examiners” and ALL of the other procedural matters.

                  I am not certain, but this also may have blame directed to Congress. After all, Congress did not bother with details, and instead provided for an IMMENSE amount of discretion to the Office for the Office to set up all (most all?) of its own Rules of Conduct.

                  Under that discretion, I have to wonder if your view of “improperly imported” can hold much weight.

      2. ” What else can/should the examining authority do, other than to cite the “bits and pieces” and invite Applicant to explain why the claim does not embrace an obvious combination?”

        The Examining authority can/should make its best case for obviousness and invite the Applicant to explain why that case does not hold water.

        That’s how we roll on this side of the pond.

        1. You tell me, Les, that the authority asserts “all is obvious” (because all the bits and pieces are known, or whatever) and invites the applicant to respond. Fine. That’s exactly how it is done at the EPO. Sorry but as far as this much is concerned, I don’t yet see what is the difference, in substance, between the two jurisdictions.

          Unless it’s the respective caselaw.

          1. That was the opposite of what Les was trying to tell you, MaxDrei.

            Examiners do not get to merely state “it’s all obvious because it’s all out there in bits and pieces” and then have you prove non-obviousness.

            As to caselaw, I would suggest the Graham factors (but would hope that you are already aware of them)

          2. You have left out the bit where they explain WHY, beyond the mere existence of the bits, it would have been OBVIOUS to one of merely ordinary skill that combining the known potato peeler with the known apple corer would arrive at the improved mouse trap recited in claim 1.

            The mere existence of the separate components in the prior art is not enough to make the combination obvious. The components of the light bulb existed prior to their combination. The components of the warpable wing (lumber, cloth, rope, shives, pulleys) existed prior to their combination. That did not make the respective inventions obvious.

            The Office has to explain why one of merely ordinary skill would have been motivated to make the combination.

            1. Agree, except with the word “explain”. The Office has to come up with a plausible argument why it is all prima facie obvious. Or are you saying that more than that is needed?

              1. Well, as they are judge, jury and executioner, it is difficult to require the Office to do anything. But,for example, in KSR, SCOTUS said something more than a “merely conclusion” assertion is needed. If there is a distinction between plausible argument and “explain” wherein, as you imply, “plausible argument” is a lower standard, then, depending on the reviewer, “plausible argument” will probably suffice.

      3. Yeah Max, there is an actual difference between PSA or whatever they do at the EU and obviousness.

  2. “lithium dendrites”

    I do hate those things.

    1. I sense you are making fun.

      But, have you forgotten how important crystal shape is in Dilithium based power sources?

      Recall what happened when Scotty tried to get by with the “common stones” in the necklace of the Dohlman Elas.

      1. I was a bit perhaps, but I really do hate those things. I’d known about them for awhile and they mess up your battery in lithium batts.

  3. I’m writing this from the mountain village of Montefegatesi,

    Because you can’t keep the patent nerd away from his favorite subject.

  4. Dennis tells us this is a case where obviousness is front and centre, unencumbered with distracting issues such as NPE activity or eligibility. I can see why that makes it an attractive vehicle for asking the Supreme Court:

    “Whether the Federal Circuit’s pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?”

    But I have sympathy for the Federal Circuit, at least when the only Question is “Obvious Y/N”. I’m thinking of the attitude of the courts in England on just this issue. They reverse only when the first instance went wrong in principle. Why? Because obviousness is decided on the testimony of expert witnesses, cross-examined at great length about 6ft in front of the eyes and nose of the judge. This experience the Lords of Appeal have not had, rendering them ill-equipped to mess around with the findings of underpinning fact at first instance. I suspect the mindset of the judges at the Federal Circuit isn’t so very different from that of the judges at the court of appeal in London.

    But if it is, why can’t they say that’s why they are not interfering with the decision on obviousness at first instance?

    1. They could say so – and quite easily at that.

      A problem is that they are not doing so, and as pointed out, Congress wrote the law mandating them to do so.

    2. obviousness is a question of lawl, they review questions of lawl de novo (basically they do it all over again).

    3. Max, why are you assuming that the PTAB observes the cross-examination of expert witnesses? They do not.

      1. Why Ned? To prompt reflections on how best to do fact-finding in patent litigation. I know the PTAB doesn’t observe x-exam of expert witnesses. Would fact-finding be more powerfully forensic if the court of first instance were to do that? How much does fact-finding matter, when it comes to the administration of justice?

        1. Max, there is no substitute for witnessing cross. None. We all know that.

          If one is talking to an expert, and the expert is deciding the case, there may not be such a need for cross. The expert will know a valid argument from a phony. But generalists, and that is all PTAB people are, will never know based on their own expertise.

          1. Ned I’m a bit confused by your reference to “argument”. My experience with patent litigation in England is that fact not argument, namely the x-exam of the respective technical expert witnesses, in front of the nose of the single specialist patent judge, is decisive to the outcome.

            That judge has 20 years of experience as a patent barrister before elevation to the bench. Nobody pulls the wool over his (or her) eyes.

            Nevertheless, to decide the case, the judge still needs to know what the PHOSITA knew and did not know, back on the date of the claim. The main purpose of the x-exam is exactly that.

            Cases go to trial in England only when they are 50:50 cases and both sides are equally convinced they are going to win. That’s as it should be, right? Litigation to trial as last resort to end the dispute. All the more important then, that the x-exam of the respective party technical experts happens 6ft in front of the judge’s nose.

            1. Max, all there is argument by two lawyers — just like the the summation arguments in a trial. But there is no live testimony in IPRs.

  5. The government does not have standing to contest the validity of an issued patent in a court of law. The Supreme Court held this to be true in a number of cases.

    The inquiry as to case and controversy is jurisdictional and cannot be waived.

    1. The AIA made “standing” completely optional.

      I have pointed this out to you a number of times now Ned – each time you have failed to take notice or reply to the substance of the comment.

      1. Congress cannot confer standing by legislation. Case and controversy is not something that can be legislated into oblivion.

        1. Ned,

          I hear what you are saying, but (to play the devil’s advocate here), you don’t need “case or controversy” for administrative agency “judicial” proceedings.

          Are you being a bit circular by maintaining that the standing cannot be made completely optional because the mirror of standing (case and controversy) cannot be made to disappear?

          This does come back to whether or not a property right can also (somehow, in a way not yet cogently explained by the proponents of such) be a public right.

          If patents are deemed to be (the undefined) public rights (even if just a little bit pregnant), then the entirety of what a patent encompasses can disappear into administrative hearing land where the “validity” of AIA’s standing made completely optional AND “no need for case and controversy” go hand in hand.

          To rebut your statement though a little more directly, is it the same to say that “Congress cannot confer standing by legislation” when what Congress did was NOT “confer standing” but instead simply remove standing…?

          It’s not as if Congress acknowledged that standing was still a requirement and that they were magically bestowing standing on everyone. Instead what they did was create a mechanism outside of the Article III domain where case and controversy STILL are needed, and said – in this different domain – this is how property rights can be “taken back.”

          Your phrasing misrepresents what Congress did.

          I do not think that you can fully discuss the situation when you do not seem willing to accurately reflect what Congress did. I would rather see you admit openly that there is NO case and controversy requirement in what Congress created in the AIA, and then discuss why what Congress actually did do is proper or not – as a vehicle outside of Article III. It is just not that compelling to hear you exclaim an Article III requirement when reflecting on the AIA’s non Article III mechanism.

          1. Ugh!

            We are not talking here about a statutory proceeding in the PTO. We are talking about the government being in court challenging the validity of a patent. That is what they do when the petitioner drops out during the appeal.

            1. We are talking about the government being in court challenging the validity of a patent

              The validity was challenged by the petitioner as permitted by the adminstrative hearing. What’s being heard on appeal is the patentee’s objection to the PTO’s finding of invalidity within the context of the administrative proceeding.

              This is pretty straightforward.

              1. MM, even the petitioner defending the appeal by the patent owner must have standing. Everyone in court must be injured in some way – defending a legal interest they have in the outcome.

                The Supreme Court has already ruled that the government has no standing to challenge the validity of an issued patent in court because it is not injured.

                1. double salvage attempt….

                  Your comment is awaiting moderation.

                  June 27, 2017 at 8:59 pm

                  At the initiation point, you simply do not have ALL of that “granted patent” anymore, now do you Ned?

                  anon Your comment is awaiting moderation.

                  June 28, 2017 at 8:36 am

                  “The Supreme Court has already ruled that the government has no standing to challenge the validity of an issued patent in court because it is not injured.”

                  You still have the wrong starting point, Ned.

                  You need to recognize that the reason why the US is in court is not the direct reason that you want to talk about. The reason is the different reason of the path (created by the AIA) that is only IN court because the initiation decision point has placed your bundle of sticks back into the Executive administrative agency, and it is an action involving THAT Executive administrative agency that is percolating into the courts.

            2. salvage attempt….

              Your comment is awaiting moderation.

              June 27, 2017 at 4:22 pm

              I see my error – but it is only a partial error, and a difference without a distinction.

              I see your error as well. And your error is one that has distinction that does make a difference.

              You are talking about the “in court” follow up to the administrative action (and it is at the administrative action point that the other party has withdrawn.

              The government is “joined” as a party through the administrative action process. The “in court” thing that you are referencing is ONLY a continuation battle of the administrative action and is just NOT the same thing as a normal court case.

              The AIA mechanism simply is not “the same” as an original court case, even though that is how you want to see it.

    2. The petitioned may wish to cite United States v. Bell Telephone Co., 167 U. S. 224 (1897) and move to vacate the obviousness decision because the other side’s withdrawal mooted the case.

      1. Oddly, my comment pointing out that Ned’s view does not stand in the explicit actions and words of Congress has been removed.

        1. anon, there is a difference between statutory standing and case and controversy standing.

            1. (It might be better though to wait until my reply above clears the filter, as I address errors on both of our parts)

    3. This is obtuse. That’s not the question here with respect to standing. And you continually get this wrong.

      The statute gave LG Chem a right to challenge the patent. The PTO invalidated the patent. After that point, Celgard appealed the PTO’s invalidation. The appellee in a PTAB appeal is the USPTO. Celgard has standing because it seeks to undo the agency’s determination. Standing is about the plaintiff’s relationship with the defendant. There’s a clear injury-in-fact – a patent is invalidated. There’s causation – the PTO determination invalidated the patent. And there’s redressability – reversal would restore the patent in its entirety. That is what you need for standing.

      The question is not whether the PTO could file a DJ against the patent. The question is whether the patent owner has rights that can be restored by appealing against the government.

      1. Contrast this with an ITC determination. In the ITC, the agency is explicitly named as the appellee/respondent, because it’s the one against whom relief is sought. For the same reason, in an ex parte reexam appeal, the PTO was the appellee/respondent. The practice of having the PTO not named as a party in a PTAB appeal is out of the ordinary, and is wrong. (There’s a different question about whether the Petitioner is a properly named appellee – in many cases, as they cannot redress the injury, they should be an intervenor rather than the appellee)

        1. Guest, in the ITC, the government is the party and does have standing to appeal or to participate in an appeal by another.

          In an appeal for the PTAB in an initial examination, the government again is party. A court of law can order the director to issue a patent if it believes the PTAB has erred in denying a patent.

          But in a reexamination, were the validity of an issued patent is at issue, the government is not harmed by invalid patent and cannot raise, in a court of law, an issue (validity of the patent) that is an injury common to the entire people. That is the point of the Supreme Court in 1897 American Bell case.

          The distinction is that the patent has issued. It is now the property of the patent owner. The only people who are harmed by the existence of that patent are people who have an adequate remedy in court.

          The whole reexamination system is unconstitutional. The Supreme Court has already ruled that the be the case in McCormick Harvesting. The fact that the Federal Circuit refused to follow the Supreme Court and allow the travesty of reexaminations and IPRs to go on for such an extended period of time is something to behold.

          1. Have not finished reading this, but there is not much out there related to defendant-based standing questions:

            link to ir.lawnet.fordham.edu

            Further, Ned, you have yet to (properly) acknowledge:

            35 U.S. Code § 315 (a)(3): Treatment of counterclaim.—
            A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.

            and

            35 U.S. Code § 317(a): …If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).

            and

            35 U.S. Code § 319 – Appeal: …Any party to the inter partes review shall have the right to be a party to the appeal.

            Clearly, 317 provides the “ITC-like” party status to the Office alone; 319 extends that to the Office (alone) as a defendant in an Article III court (for appeal), and 315 appears to moot the validity challenge as a civil action even requiring Article III standing.

            Ned,

            Instead of jumping to your conclusion and misrepresenting exactly what the AIA does, please address these points of the AIA.

            1. Anon, for discussing is any further, answer one simple question. Have you read U. S. v. American Bell Telephone (1897)?

              If you have, then you know that the statutory procedural rules will not change the standing issue one iota.

              1. That is certainly not an answer.

                Stop evading and address the sections of the AIA that I have presented.

                Please.

            2. ITC — it is the government itself that exercises in rem jurisdiction over imports. It can deny entry upon finding, with proof, that an American industry is actually harmed.

              See, United States v. Glaxo Group Ltd., 410 US 52 – Supreme Court 1973 for this:

              “…United States v. United States Gypsum Co., 333 U. S. 364 (1948), referred to Bell Telephone as holding that the United States was “without standing to bring a suit in equity to cancel a patent on the ground of invalidity,” id., at 387, but went on to declare that, to vindicate the public interest in enjoining violations of the Sherman Act, the United States is entitled to attack the validity of patents relied upon to justify anticompetitive conduct otherwise violative of the law. ”

              Thus, if actual harm is the subject of the lawsuit and the existence of a patent is alleged justification, the government may then challenge the validity of the patent.

              1. and the existence of a patent is alleged justification

                Not sure that is a proper characterization.

                I think a better one is: “patent misuse.”

      2. Mr. Guest, do you agree or disagree that the Supreme Court held inUnited States v. American Bell Telephone Co., 167 U.S. 224, 17 S. Ct. 809, 42 L. Ed. 144 (1897) that the government had no standing in a court of law to challenge the validity of an issued patent?

        Secondly, LG has no statutory right to challenge anything. All it had a right to do is file a petition.

        If LG went up on appeal to the Federal Circuit, it itself would have to have case and controversy standing. The Federal Circuit has already addressed this issue in held that organizations that challenge patents on the public interest have no standing and therefore cannot appeal to the courts.

        The government is no different situation than LG. What is the government’s injury? To be in the court of law where validity is at issue, the government has no standing unless you want to overrule the Supreme Court.

        1. I agree. LG has to have A3 standing if it lost in the court below. As would the government, if the PTAB upheld the validity and the agency sought to appeal (a situation that’s nonsensical, but let’s suspend disbelief). That is simply not the question being raised here. The government is the proper appellee or the proper respondent here because the requested relief affects the relationship between the appellant/petitioner/patent owner and the defendant. And a court of law can redress the injury-in-fact by remanding or reversing the agency determination. The question is never about the defendant/appellee/respondent’s standing.

          The statutory right at the PTAB allows the agency to act (as raised in Oil States, there’s question about if they actually have that authority. But assume for the sake of argument that’s correct). Once the agency acts, parties adversely affected can appeal if they have standing. In the appeal, a patent owner whose patent is invalidated has standing because the agency’s action is the cause of the injury of the patent being invalidated, and the court can redress the injury of the patent being invalidated by reversing or remanding. This is a remarkably simple Fed Courts question that would be a snoozer in class. (The more interesting Fed Courts question is the petitioner who doesn’t face threats of lawsuit that are sufficient under MedImmune; does the statutory right to appeal?). If you went to a law school Fed Courts class, they would explain to you that you are simply twisting the law of standing to make an asinine argument.

          1. Look, Guest, the patent owner can appeal. But if the petitioner drops out, there is no one left on the other side. The Government is not adverse to the patent owner (even though most patent owners would not agree with that statement). The government is not injured in any way.

            The government can at times be a proper party to defend the government’s position on its rules, its interpretation of the statutes, or the constitutionality of anything. But, it is simply not adverse to the patent owner on the validity of his patent.

            Assume for the sake of argument the Federal Circuit would reverse the decision of invalidity by the PTAB and would order a new trial. On remand, there would be no one left adverse to the patent owner to conduct that trial, unless the patent office claims it is entitled to be both prosecutor and judge, or judge and jury, or some combination of the two. The lack of due process is plain for all to see.

            So we get the situation on appeal with the other party, the petitioner has dropped out. There is no adverse party. This happens sometimes in court cases where public interest groups want to intervene and carry on an appeal where the party that has standing has settled. There are numbers of cases that say that public interest groups at times do not have standing to the extent that they are only asserting the rights of the public at large.

            The government is in the same position relative to the patent. It is not injured itself by the presence of the patent. It’s only interests is the same as that of the general public in that it has an interest that patents be valid.

            It is present case, since the adverse party has dropped out of the case, the case is mooted. The decision of invalidity should be vacated.

            1. The government is adverse because it is the government who made the adverse agency determination. By statute, it was given the power to do so. What you are arguing is a matter of separation of powers. But if the IPR statute properly and constitutionally gives the agency the power to perform an action, then they are absolutely a proper adverse party to defend their own agency’s determination. To be clear, a vacatur/remand rather than full reversal would likely result in restoration of the patent because there would be no patent owner requesting the cancellation, but you are again conflating two different points.

              It is a well-established principle of administrative law that where an agency acts, they are a proper appellee or respondent in a challenge to whether they exercised their power lawfully.

              It is less certain as to what level of discretion the PTO has under 317(a) following a remand where the petitioner has dropped out, and as to the level of judicial review of the exercise of that discretion. But even in the event that the PTO invalidates a patent where no petitioner remains, the government still is the proper appellee/respondent in a case challenging the exercise of its power.

              Standing is and has always been about the plaintiff, appellant, or petitioner. It’s about what is their injury, whether the defendant caused that injury, and whether the relief sought redresses their injury. It is entirely irrelevant that the government does not have standing in a court of law to file a DJ to invalidate a patent, because that is not the question that is asked in these cases. The question is, when the government has found a patent invalid, can a court redress that injury on appeal by the patent owner. And the answer is certainly yes. It’s not even a remotely close case.

              1. Guest,

                What do you think of the academic paper I linked to that challenges the view that standing is a “Plaintiff Only” concern?

                1. That article talks about the unique case of an intervenor-defendant, not a named defendant. Certainly, standing has something to do with the defendant – in that the injury must be caused by the defendant. But intervenors aren’t traditional named defendants, and the idea that they need to have standing on their own behalf is an issue that got up to the Supreme Court this term.

                2. Thanks.

                  As I mentioned, there does not seem to be much out there, and yes, I noticed that the main thrust was related to intervenors.

                  That being said, the article does seem to lay out (as an unproven premise) that standing is required for MORE than just plaintiffs, and it is this angle that seems in direct conflict with your post at 4.3.2.1.1.1 (particularly: “Standing is and has always been about the plaintiff, appellant, or petitioner. “)

              2. Guest, of course the patent owner can appeal, and if the other side drops out, the ordinary course of action is to vacate the judgement or order from which the appeal is taken.

                Regarding IPRs, the PTAB is supposed to act like a trial court only. It is not taking any action. It is the intervention of the Director that transforms the situation, where the Director is now a party advocate against the patent owner, and a judge at the same time, being a member of the PTAB. (Due process?) So the question concerns of standing of the Director to actively litigate as a party advocate against the patent owner.

                The SC has already ruled that the government has no standing to sue to invalidate a patent. It follows that the government has no standing to actively participate as a party adverse to the patent owner in a court appeal seeking to invalidate a patent.

                1. It follows that the government has no standing to actively participate as a party adverse to the patent owner in a court appeal seeking to invalidate a patent.

                  No.

                  It does not.

                  I have shown you exactly where above – but you keep on avoiding actually taking apart the sections of the AIA that I have provided to you.

                  Your “advocacy” on this point is underwhelming. Repeating your desired conclusion – without more – is simply you seeing nails all over with a hammer in your hand.

                2. Hey anon, thanks for linking the article.

                  Look at fn. 54. Talks about statutes and how they cannot confer standing where one did not have standing before unless new rights are created and they are injured and can sue for compensation.

                3. …which is one of the reasons for my earlier comment regarding the difference between “conferring standing” and simply setting something up that does not require standing.

                  Look again at the AIA sections I listed and my further comments therein.

              3. Guest, you are right that it ties in to the fundamental issue of whether the PTO has jurisdiction to reexamine the validity of an issued patent. But, one of the bases for the decision of the Supreme Court in McCormick Harvesting that the government could not cancel the claims in an issued patent was because the government did not even have standing in a court of law to seek cancellation for invalidity — referring to cases involving land patents and not, for some reason, to US v. American Bell that it decided earlier in that same year. (And this is a puzzle.)

                Chicken and the egg.

                1. Ned, as I keep noting, the different procedural posture here is critical. In that sense, an appeal from an IPR is not distinguishable from any other APA appeal. Patent law does not have different administrative law rules than other areas of law. I agree that the US does not have a freestanding right to go try and invalidate patents in a court of law, but that’s not what is happening here. There’s a specific agency decision (as delegated by Congress) and a party is seeking to overturn or vacate that decision.

                2. Guest, you are talking about procedural injury. Case and controversy requires an invasion of a legal right owned by one party, or potential infringement of the legal right owned by the other party, here the patent owner.

                  How is the government impacted by an invalid patent in any way different than the populace at large?

                3. Ned,

                  you are still not addressing the direct AIA sections that I have provided that speak to the questions you keep on asking.

                  Please stop asking questions to which answers have been provided when you are ignoring those answers.

  6. Questions: how good an expert declaration in support of unobviousness did the patent owner file in this IPR that the PTAB ruled against? How effectively were the foreign references alleged disclosures challenged? Was this IPR successful because it found and presented better prior art than the others? How effective were the Petitioner’s cross examinations and counter-declarations? [The Supremes are very unlikely to get into any conflicting 103 evidence technical fact dispute, but might be interested in a case of relevant but ignored evidence?]
    Also, were there adequately specific dependent claims to distinguish the prior art, or an attempted but denied amendment to do so?
    Also, “copying” is a great jury argument, but by itself does not normally overcome relevant prior patent teachings, especially in a proceeding before three patent attorneys. Not all trial lawyers seem to fully appreciate just how different an IPR is from either a jury trial or ex parte examination?
    Unless and until one of the constant wishes for IPR system total elimination are successful, these kinds of practical questions need to be asked by those defending patents in IPRs.

    1. E.g., if the maximum and minimum hole size in the ceramic layer is critical to the invention, was it defined in any claims?

      1. [That is, in the IPR cancelled claims, as not all were.]

    2. I think that perhaps more on point to the thrust that Rule 36 is improvident would be a situation where multiple items individually may have sustained (or not) a finding of obviousness, and that the court’s lack of articulating which of the multiple may apply, if all of the multiple apply and overall, providing the required “notice” to applicant so that applicant could make an informed decision as to how to proceed.

      Whether or not arguments themselves were “well argued against” has far less to do with the issues at hand (albeit, it certainly does not hurt if the Office and the court can be shown to have outright flubbed the analysis).

    3. Paul, do not you have any problem with hindsight?

      If one just takes a look at the Supreme Court cases that have held inventions to be obvious, either it was known that the thing substituted would be useful for the purpose or that the new combination provided no new functionality not provided by the elements separately.

      I do not know how modifying a reference in such a way as to defeat the purpose of the reference in order to combine it with some other reference is obvious at all. But that seems to be routine mode of analysis conducted by the PTAB, or at least portions of the PTAB.

      Once TSM was no longer required, hindsight seems to be de rigueur.

      1. “It is better that the public suffer ten obvious inventions than that one inventor suffer.”

        In other news, the supreme court invited the administration to brief on Samsung v. Apple.

      2. I do not know how modifying a reference in such a way as to defeat the purpose of the reference in order to combine it with some other reference is obvious at all

        News flash: people of ordinary skill know how to read a reference with a view as to how the teaching in the reference can be applied in other contexts. Moreover, if reference A teaches X for purpose X1 and reference B teaches Y for purpose Z, then combining X and and Y for purpose Z may be perfectly obvious even if Z is the opposite of X1.

        Teaching away is a very limited defense to obviousness. It’s also probably the most frequently frivolously asserted defense and it should be sanctioned far more often than it is. But it won’t be because … UNFAIR! UNFAIR! Oh, the whining and the crocodile tears.

        1. Teaching away is a very limited defense to obviousness. It’s also probably the most frequently frivolously asserted defense and it should be sanctioned far more often than it is.

          LOL – your feelings are noted.

          (and yes, ALL that you have is feelings. You have absolutely zero factual basis for your statements)

      3. TSM, IMHO, was a device imposing a framework on evidence. Because, how exactly does a court of appeal review “common sense,” indeed, the common sense of an expert at that?

  7. It’s an interesting question, but a largely academic one—what is the difference between a per curiam at the Supreme Court, or a one-paragraph opinion, or a one-page opinion, or a one-line opinion? Where do you draw that line?

    Personally, I like that we have a system of reasoned opinion-writing on appeal, but I just don’t think the system you’re proposing is practical given workload concerns. And it would run counter to years of practice. I take more issue—and see more injustice in—the ability to make things “precedential” or “nonprecedential” at will.

    As an aside, question three is particularly weak—any petition for cert. premised on the “principles of right and justice” is effectively admitting that there is no basis other than personal disagreement.

    1. “I take more issue—and see more injustice in—the ability to make things “precedential” or “nonprecedential” at will.”

      I don’t think that is so much “at will”. It actually depends on a few factors that are set down somewhere whether or not a decision is precedential or not.

  8. The CAFC are like simians, fire-hosed into submission, not even attempting to use the stepladder in the middle of the cage to reach for bananas.

    It’s time for Congress to take notice.

    1. Good analogy there anon.

      They want to let the patent office get away with… The problem is, the Supreme Court is watching.

      1. Corrected:

        The problem is the Supreme Court.

        (they are the ones fire-hosing the simians of the CAFC)

        1. The USPTO is the friend of the efficient infringer, anon.

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