Federal Circuit Fails its Civil Procedure Test on Standing

Personal Audio v. Electronic Frontier Foundation (EFF) (Fed. Cir. 2017)

On appeal, the Federal Circuit has sided with the USPTO — affirming the IPR final judgment of unpatentability of Personal Audio’s US Patent No. 8,112,504.  The patent claims a system for “disseminating media … episodes in a serialized sequence.”

The most interesting question addressed by the court is whether the original Inter Partes Review (IPR) Requester – EFF – has standing to to participate as a party.  The problem for standing is that EFF is a public-interest organization that promotes online civil liberties.  EFF was not threatened by the ‘504 patent, but instead filed the IPR petition as part of its general public interest campaign against “stupid patents.”  EFF thus doesn’t appear to meet the “case or controversy” standard required by Article III of the U.S. Constitution.

The Federal Circuit decided a somewhat similar standing question in Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014).  Consumer Watchdog also involved a public-interest organization challenging a patent via AIA-Trial. Standing wasn’t a problem for the trial itself since the PTAB is not an Article III court – and so the constitutional requirement didn’t apply.  However, the Federal Circuit dismissed Consumer Watchdog’s appeal (it lost the case at the PTAB) on standing grounds.

EFF case has a slightly different posture since it won at the PTAB – with the patent being held invalid.  The appellant Personal Audio clearly has standing since its patent has been judged unpatentable, and the question is whether EFF has standing to participate as an appellee despite its lack of a direct interest in the outcome.  For the Federal Circuit, that posture makes the difference:

Here, the party invoking judicial review is Personal Audio; it is apparent that Personal Audio, on cancellation of its patent claims by the PTAB, has experienced an alteration of “tangible legal rights . . . that is sufficiently ‘distinct and palpable’ to confer standing under Article III.” Virginia v. Hicks, 539 U.S. 113, 121 (2003) (internal citations omitted). With Article III satisfied as to the appellant, EFF is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor.

The court then went on to side with EFF and PTAB on the merits – confirming the claims as unpatentable.

I would suggest that the Federal Circuit’s decision on the standing issue here does not fully explore the somewhat complex precedent on the standing issue.  In particular, the court wrongly focuses its standing decision on the position of the appellant.  The Supreme Court has explained several times that all parties must have an ongoing case-or-controversy:

[T]he opposing party also must have an ongoing interest in the dispute, so that the case features “that concrete adverseness which sharpens the presentation of issues.”

Camreta v. Greene, 131 S. Ct. 2020, 2028 (2011) (quoting Los Angeles v. Lyons, 461 U.S. 95, 101 (1983)).  I’ll note here that my reading of Camreta and Lyons is that both are addressing the Constitutional requirement – thus the AIA statutory statement allowing parties to appeal is inapplicable.

The Federal Circuit relied upon another line of Supreme Court cases – notably ASARCO Inc. v. Kadish (1989).  In that case we similar situation where the petitioner was clearly harmed by a lower state-court decision but the respondent probably did not itself have sufficient case-or-controversy standing.  In its decision on the case, the Supreme Court began with a recitation of standing – noting that the petitioner’s harm was sufficient: “We determine that petitioners have standing to invoke the authority of a federal court and that this dispute now presents a justiciable case or controversy for resolution here.”  ASARCO.  The problem with this holding is that it speaks  only to the case as a whole rather than standing of the particular party.

 

175 thoughts on “Federal Circuit Fails its Civil Procedure Test on Standing

  1. Dennis: … simply infringing a patent is not sufficient to create a sufficient case-or-controversy. There needs to be some further action regarding enforcement of the patent.

    Like buying a planet ticket to see an endangered bird in Egypt.

  2. (re)Post – Pardon Potential (re)Peat…

    Dialogues pieces inexplicably remaining blocked:

    TO DRJlaw at 10.3.2.1.1

    August 11, 2017 at 1:21 pm

    Except for the fact that a court of appeal vacating is within the authority of the court of appeal.

    As I mentioned, you cannot have it both ways.

    The subsequent issue that vacating may “impose” a standing requirement on administrative agencies is a fallacy.

    No such requirement (actual) would be created. The administrative agencies may continue to act as Congress directed – WITHIN THEIR FORUM.

    The issue simply is not what happens in the that first forum of the administrative agency. You don’t get back there by addressing the SEPARATE issue of standing in the Article III forum.

    The fact of the matter that Congress screwed up in writing a law that broaches two different forums with two different sets of requirements does not – and cannot – eradicate the requirements of that second forum.

    And DRJlaw at 8.1.3.3

    August 11, 2017 at 1:24 pm

    ASARCO does NOT hold what you think it does.

    Malcolm at 9.1.1.2.1:

    August 11, 2017 at 1:23 pm

    You are still playing that game of ignoring the fact that Congress may not write laws that broach other Constitutional protections.

    The caveat of “subject to provisions of this title” does NOT change that fact.

    You are acting like that caveat opens a free for all and that the property right is thus robbed of the other Constitutional protections.

    It is just not so.

    And Malcolm at 7.3.1.1

    August 11, 2017 at 1:27 pm

    The reasons already given have not been on point and are insufficient.
    ESPECIALLY the reasons given by you.

    Maybe YOU should catch up and stop telling others to do what you (need to) do…

    To Greg at 7.2.2.1.1.1

    August 10, 2017 at 2:40 pm

    We will see if this continued dialogue item is let through…

    Greg, here, you are talking about the first portion that IS expressly allowed by Congress.

    But such a first portion does not – and cannot (reference Ned’s “congress cannot manufacture standing”) carry over into the NON-Article I different forum.

    At that point in time (moving to Article III forum), what EVER Congress intended in the Article I forum is not enough for Article III standing.

    This distinguishes your attempted distinguished treatment of Lujan. So while I was not entirely accurate about “the start does not matter,” it DOES matter as to whether or not standing is met when EVER an Article III situation arises.

    Where, as here, the arising occurs in relation to what Congress penned as allowable for an Article I proceeding, such is not enough when the issue is standing in the different forum of Article III.

    There is a lot of assumptions going on. From assumptions of One-party-therefore-both-parties to Article-I-carries-over.

    These assumptions are just that: assumptions. They cannot be deemed as given (as so many here are doing).

    To Ned at 7.2.2.1.3

    August 11, 2017 at 1:31 pm

    Ned,

    Sorry but here you are simply incorrect as Congress was explicit about discussing and including the no standing angle.

    We’ve been over this. Please do not pretend something that is plainly evident to the opposite of what you suggest.

    1. I forgot a few:

      To Prof. Crouch at 12.2:

      August 11, 2017 at 7:11 pm

      Well that’s at least two steps beyond Malcolm’s Lujan style concerns…

      to PIKA at 8.1.1.2:

      August 11, 2017 at 1:06 pm

      How do you see the doctrine of chilling effect being applied?

      (I am not sure I am understanding your view)

      to Jane at 8.2.4.1:

      August 10, 2017 at 3:04 pm
      Jane,

      That has nothing to do with parties, present or not, or their standing or lack thereof.

      The appointment of the amicus has zero to do with the present issue. The appointment of the amicus is present ONLY because there is a case WITH both parties, having standing.

      Whether or not a subsequent invitation of the Court to ANY amicus to cover ANY issue that the Court wants further information on simply does not – and cannot – substitute for the standing required of both parties in the first place.

      Your comment is at best a non sequitur, and bears zero relevance to the issue at point.

      That Malcolm “celebrates” this as some sort of “zing” only shows that once again that to Malcolm, the Ends justify the Means (and that he lacks the ability to critically review points of law).

      to Greg at 8.2.4.2:

      August 11, 2017 at 1:08 pm

      Case or controversy though is present – and it that which standing comes from (so no, the Court is NOT free to do “whatever” it wants to).

      and Greg at 7.1.1.1.1:

      August 10, 2017 at 3:06 pm

      As noted elsewhere, a transfer from Article I to Article III does not – and cannot – remove the standing requirement TO BE IN that Article III forum.

      Ned, at 7.2.2.1.3:

      August 11, 2017 at 2:29 pm
      Defeat the intent…

      Congress should have written a better law that comports with the fact that setting up a law with a first part in one forum does not inoculate the requirements (standing as derived from the Constitutionally required case or controversy) that exist in a separate forum.

      If [was ‘Of’] so allowed, the entire notion of standing is effectively disbanded at the whim of Congress.

      How would such not be a violation of separation of powers?

      1. Case or controversy though is present – and it that which standing comes from (so no, the Court is NOT free to do “whatever” it wants to).

        Er, fine, but I am not sure where this observation gets you. There clearly is a “controversy” between Personal Audio and the EFF. In other words, if all we have to go on is the literal words of Art. III, then the CAFC clearly got this one right.

        The only reason we are even having this discussion is because, over the years, the Court has (for practical reasons necessary to the well functioning of the judicial system) developed a gloss on case-or-controversy that goes several steps beyond what the Art. III text literally requires. This extra gloss, however, is the Court’s own creation, not a strict mandate of the constitutional text. The Court has, as it were, made up this proximate causation aspect of standing, and the Court is, therefore, free to relax the proximate causation requirements where the Court deems appropriate.

        1. Er, fine, but I am not sure where this observation gets you

          It is not where the observation gets me. It is where the observation takes you. You were the one saying the courts could do anything that they want to. The observation takes you somewhere else than that.

          As to the “controversy between Personal Audio and the EFF” you (once again) fail to notice the pertinence of Lujan – NOT JUST ANY controversy is enough to satisfy the type of controversy to merit the legal meaning of “case or controversy.” That you want to characterize this as “gloss” only means that you have not yet gone where the counter point presented necessarily takes you.

          Take that journey and then come back to comment.

          Why am I holding your hand on this rather simple point?

          1. You were the one saying the courts could do anything that they want to.

            No, I did not say that. You are putting words in my mouth. What I said was that “the Court is… free to relax the proximate causation requirements [in the standing analysis” where the Court deems appropriate.” I will address this point in greater detail in a future response to Ned below.

            As to the “controversy between Personal Audio and the EFF” you (once again) fail to notice the pertinence of Lujan…

            Once again, I have not “fail[ed] to notice” anything. I have addressed Defenders of Wildlife. I agree with you (against MM) that merely living in a society affected by patent claims is not enough to give standing in an Art. III court, which is the relevant aspect of the Defenders of Wildlife holding. That observation, while accurate, really is not germane to the point at issue here.

            The point at issue is whether both parties in an Art. III court need a tie to the case that is concrete enough to support standing under the Defenders of Wildlife standard, or whether only the party invoking the court’s jurisdiction needs such a concrete interest. You keep asserting that both sides need that concrete tie-in, but this assertion is not self-evidently true, and you do not actually cite any law to establish as much.

            Defenders of Wildlife does not answer that question. Defenders of Wildlife does not even raise that question. Citing Defenders of Wildlife does not really get you any closer to establishing the proposition that you are repeatedly flogging up and down this thread, and unestablished assertions do not become any better established merely by bald repetition.

            1. But your view of mere flogging is not accurate, as Lujan does stand for the principle that both parties need standing.

              The good professor listed other cases. I happen to reference Lujan because it mirrors the stance of the EFF quite well.

        2. Greg, Article III “case” means the same thing as it did in England. Do you actually believe that people with no interest at all in the outcome of a case could bring suit to harass anyone in an English court of law?

          1. Greg, Article III “case” means the same thing as it did in England.

            Er, fine, but Art. III say “cases… or… controversies…,” not just “cases.” Even if Art. III, §2 was intended to incorporate some common-law standard of what is a “case,” on its own terms Art. III does not purport to limit the judicial power to only that incorporated standard.

            Do you actually believe that people with no interest at all in the outcome of a case could bring suit to harass anyone in an English court of law?

            In a court of law? No. I agree that courts of law rightly limit their jurisdiction to those with a real and tangible interest in the outcome of a proceeding.

            As I explained in #7 below, this is an issue where a return to first principles is really helpful in clarifying how one should think:

            (1) Art. III does not say anything about “concrete” or “tangible” or “particular.”

            (2) However, our adversarial system only works where you have two genuinely adverse parties. It is only with genuinely adverse parties that the court can have confidence that it is being presented with all relevant facts and all relevant precedent before making its decision.

            (3) Because each appellate court’s decisions is binding on the decisions of future courts, you really need to be worried about present precedents being decided on the basis of incomplete or one-sided presentation of facts or precedent. The worry is that if you let two parties who are not genuinely adverse stage a mock presentation of a trial in front of a court, the result could be a binding precedent that is based on selective representations, and this new precedent could then have untoward effects down the line.

            (4) The requirements of Defenders of Wildlife, then, are not really the unambiguous mandates of a clear constitutional text, but rather a gloss layered on top of the text, in view of what we know about how the world (and precedent) works. The requirements for concrete and particular interest in the outcome of a procedure are a safe-guard against collusion between two parties to sandbag the court into laying down an ill-considered precedent.

            (5) Because this is all just a gloss intended to achieve a certain result, however, the court is free to relax the requirements set down in the gloss where there are other guarantees present against such collusion.

            Point #5 is exactly the situation we have here. There is no question but that EFF really is adverse to Personal Audio. EFF has a long and well established track record of trying to tank software patents, so there is reason for a court to worry that Personal Audio and EFF might be colluding here to pull the wool over the court’s eyes.

            1. You err in saying “gloss.”

              To borrow your own statement then: “unestablished assertions do not become any better established merely by bald repetition

              There is no question but that EFF really is adverse to Personal Audio.

              This is simply not so. Not in the legal meaning of the term.
              THAT is why we are even having this discussion in the first place.

              1. This is simply not so. Not in the legal meaning of the term [“adverse”].

                Black’s Law Dictionary, “adverse”

                Opposed; contrary; in resistance or opposition to a claim, application, or proceeding. Having opposing interests; having interests for the preservation of which opposition is essential. In re National Lock Co., D.C.Ill., 9 F.Supp. 432, 433.

                As to adverse “Claim,” “Enjoyment,” “User,” “Verdict,” “Witness,” see those titles.

                Which of these legal definitions does EFF not satisfy? It seems to me that EFF satisfies all of them, but it certainly satisfies at least some of them. How, then, can one say that EFF is not adverse “in the legal meaning of the term”?

                1. Asked and answered: Lujan.

                  Did Lujan meet the legal definition that you offer here?

                  Why did they get thrown out then?

                  On gloss?

                2. Why did they get thrown out then? On gloss?

                  Yes, on gloss. Defenders of Wildlife, 504 U.S. 555, 583 (1992) explains that “[t]he plaintiff must have a personal stake in the outcome sufficient to assure that concrete adverseness which sharpens the presentation of issues upon which the court so largely depends for illumination of difficult questions,” (Stevens, J., concurring, emphasis added, internal quotations and ellipses omitted). That is not a direct citation to Art. III. It is an explanatory gloss on the reasons why “concrete adverseness” comports with the Art. III requirements.

                  The requirement for “concrete adverseness” is not a mandate of Art. III. It is a safeguard that the Court itself has created for the protection of Art. III. Because the Court has erected this safeguard, the Court can take it back down when it is less evidently necessary and when it conveniences the interests of justice so to do.

                3. What you seek tocall (and seek to dismiss) as “gloss” is not.

                  Yet again – and NO, I am not putting words into your mouth – you seek some open-ended “they can do whatever they want”

                  You also did not answer why Lujan was thrown out even though they meet YOUR version of the legal meaning.

                  That’s a dichotomy YOU need to resolve.

                4. you seek some open-ended “they can do whatever they want”

                  No. I do not. Art. III says “cases… or… controversies… .” That textually excludes some things. At a minimum, it implies a set of adverse parties. One cannot have a single person submit a hypothetical to an appellate court to get an answer to a “what if” question, because that would not be a “case” or a “controversy.” In other words, I fully agree that Art. III does not permit a court to do “whatever they want.”

                  However, the requirement that the parties in the case or controversy have a direct and tangible stake in the outcome is not mandated by the Art. III text. That is an invention of the Court. Because the requirements for proximate causation or ongoing redressibility (lack of “mootness”) are not themselves expressed in the Art. III text, the Court has a lot more of a free hand to set the boundaries of these more “prudential” aspects of the standing doctrine.

                  You also did not answer why Lujan was thrown out even though they meet YOUR version of the legal meaning.

                  They were thrown out because the Court has created these prudential standing standards. Just because the Court can relax these standards where it likes does not mean that the Court must do so. The Court in Defenders of Wildlife evidently considered that it saw more harm than good in allowing valuable Art. III court resources to be used up on cases of only tenuous connection to the actual plaintiffs. Art. I tribunals are less costly and less scarce, so it is hardly surprising if the standing standards for Art. I litigation are different than the standards for Art. III litigation.

                5. It more than implies a set of adverse parties – YOU are the one employing too much gloss here.

                  You still want to reach to some “direct mandate from the limited words” as being some open-ended thing, and supposing that anything underneath your (unstated) limit is merely “gloss”

                  I.e., your choice of Black’s law – and yet unable to square Lujan with that choice. Your admissions to date (now including “only tenuous” do not seem to have meaning to you – or else, you really are not interested in understanding the topic and are just tr011ing me).

                  And I hope you do realize that your attempted distinction between Article I forums and Article III forums, while perhaps interesting to contemplate, do NOT address the views that I have advanced regarding the (more) proper takeaway from ASARCO.

                6. Greg, I believe that relieving particularized harm is a requirement of Separation of Powers:

                  [T]he case-or-controversy limitation is crucial in maintaining the “`tripartite allocation of power'” set
                  forth in the Constitution. Valley Forge Christian College v. Americans United for Separation of Church and State, Inc., 454 U. S. 464, 474 (1982) (quoting Flast v. Cohen, 392 U. S. 83, 95 (1968)). Marshall again made the point early on, this time in a speech in the House of Representatives. “A case in law or equity,” Marshall remarked,

                  “was a term . . . of limited signification. It was a controversy between parties which had taken a shape for judicial decision. If the judicial power extended to every question under the constitution it would involve almost every subject proper for legislative discussion and decision; if to every question under the laws and treaties of the United States it would involve almost every subject on which the executive could act. The division of power [among the branches of government] could exist no longer, and the other departments would be swallowed up by the judiciary.” 4 Papers of John Marshall 95 (C. Cullen ed. 1984).

                  As this Court has explained, “`[n]o principle is more fundamental to the judiciary’s proper role in our system of government than the constitutional limitation of federal-court jurisdiction to actual cases or controversies.'” Raines v. Byrd, *342 521 U. S. 811, 818 (1997) (quoting Simon v. Eastern Ky. Welfare Rights Organization, 426 U. S. 26, 37 (1976)).

                  Diamler Chrysler, 547 U.S. 332 at 341-342

            2. Greg, you admit that EFF would not have standing to go into a court of law and seek a remedy of cancellation of a patent for invalidity because it does not have standing. And yet you believe that there is a genuine case or controversy simply because EFF is concerned about software patents in general.

              May I ask you a polite question? How is it that the Supreme Court has always required the ACLU, an organization dedicated to civil liberties, to always find somebody that is actually been harmed by some action, law or policy before it has a right to get of the court?

              Cases require actual harm to somebody before they have a right to go to court. Of course they can be backed by big money people such as EFF. But they have to have at least one nominal party who has been injured in fact.

              No doubt EFF has at least one member who has been accused of infringement. Name that member as a party. Have that party intervene.

              1. May I ask you a polite question?

                Of course you may. I would be shocked were your questions other than polite.

                How is it that the Supreme Court has always required the ACLU, an organization dedicated to civil liberties, to always find somebody that is actually been harmed by some action, law or policy before it has a right to get of the court?

                I am not sure that I can concede your premise as true. Does the ACLU always need to find a representative plaintiff? It is not perspicuously clear to me that this is so. I feel fairly certain that they need to find a representative plaintiff when they begin in federal district court, but it is not clear to me that they need a representative plaintiff elsewhere, and it precisely the subject of “elsewhere” that we are discussing now.

                In any event, it is well settled in law that “[a]n administrative agency, which is not subject to Article III of the Constitution of the United States and related prudential limitations… .” Pfizer Inc. v. Shalala, 182 F.3d 975, 980 (D.C. Cir. 1999). In other words, although it is true that Congress cannot manufacture standing by legislative fiat, it does not need to do so when it places the administration of a public right into the hands of an administrative tribunal, because Art. III does not apply to such tribunals.

                1. and it precisely the subject of “elsewhere” that we are discussing now.

                  That too does not appear pespicuously clear, given that we have TWO forums wrapped up in what Congress wrote in the AIA, and it very much focuses on the apparent proxy in the second forum that Congress attempts from the first forum.

                  Very much like ASARCO sought to protect State’s integrity, the integrity of the judicial branch from such legislative encroachment is part of the issue here (and THAT is simply not “gloss”).

                  Further, your last paragraph, while a truism, simply does not grasp the full issue of what Congress has done with the AIA. At the same time that you admit that “it is true that Congress cannot manufacture standing by legislative fiat” you ignore that THAT is exactly what is happening IF the proxy of starting in the first forum is allowed to carry through into the second forum.

                  Ignore, discount, not agree, however you want to term your “response,” your “response” is painfully lacking given your immediate admission.

      2. I don’t know how the doctrine of chilling effect would be applied.

        But I find it strange that the court would say that a party needs to infringe a patent and be threatened to be sued by the owner before the court can step in and help with reviewing the validity of the patent. It’s like the court is inciting infringement of patents. There should be other ways for a party to have standing for challenging patent validity in court that do not require the party to commit infringement.

        1. Is your “finding it strange” a function of not understanding how case and controversy works?

          And by case and controversy, I do mean the legal meaning of that term (so yes, a “controversy” such as that exemplified by the Lujan case is not legally sufficient).

          Sorry PiKa, in trying to understand what you mean by chilling effect, I am now even less sure of how your views should be integrated into the legal discussion.

          On what basis is your “should” be informed? Why those and not others? And what then of Lujan?

          No one – as of yet – has truly distinguished that case, especially in view of the “shoulds” and “feelings” that appear that abound.

          1. No one – as of yet – has truly distinguished [Lujan]

            ROTFLMAO

            Because “anon” says so.

            Meanwhile, back on Planet Earth, the case has been distinguished from multiple angles by several commenters.

            1. It is not just mere say so, Malcolm. Do not be disingenuous. Counter points have been presented to each of those attempting to distinguish Lujan, and yes, to date, no one has truly distinguished Lujan in a legally cognizant manner.

          2. By chilling effect, I mean the discouragement of the practice of a technique that is in the public domain, where the discouragement is caused by the issuance of an invalid patent claim.

            Regarding Lujan, Justice Scalia noted that the affiants did not personally experience an inability to observe an animal species, and were not about to. However, when a patent is granted with overly broad claims, the public is constantly threatened of trespassing the patentee property, despite the limit of this property being incorrectly defined. Unless you agree that issued patents should simply ignored, the public actually experiences a threat of an infringement suit. That distinguishes the facts in Lujan from the facts typically arising in a patent suit.

            1. Sorry Pika, but the same generalized harm is in both cases.

              In Lujan you did not focus on the harm, see that it was a generalized harm; much like the harm that you do see with patents remains a generalized harm – as noted by Prof. Crouch that more than mere infringement is necessary to bring about more than just generalized harm.

              I do not think “chilling” gets you where you want to be, because “chilling” appears to be the ability to allow the mere generalized harm to serve as a proxy where the courts having already addressed such a proxy, said “no.”

              (but thanks for replying – I think that I do understand your view now)

    2. “The subsequent issue that vacating may “impose” a standing requirement on administrative agencies is a fallacy.

      No such requirement (actual) would be created. The administrative agencies may continue to act as Congress directed – WITHIN THEIR FORUM.”

      It’s a persuasive “fallacy,” since it was the reason the S. Ct. refused to vacate the state court decisions in ASARCO.

      “If we were to vacate the judgment below on the ground that respondents lacked federal standing when they brought suit initially, that disposition would render nugatory the entire proceedings in the state courts. The clear effect would be to impose federal standing requirements on the state courts whenever they adjudicate issues of federal law, if those judgments are to be conclusive on the parties. That result, however, would be contrary to established traditions and to our prior decisions recognizing that the state courts are not bound by Article III, and yet have it within both their power and their proper role to render binding judgments on issues of federal law, subject only to review by this Court.” 490 US 620.

      So you’ll excuse me if I continue to use it.

    3. “There is a lot of assumptions going on. From assumptions of One-party-therefore-both-parties to Article-I-carries-over.”

      We assume nothing. Personal Audio is the law until overruled or reversed.

      1. Yet again (or perhaps still), editorial control choices hamper attempts at dialogue on patent law related items (as elsewhere, Malcolm continues to spew pure politics unabated). The following are still constrained behind the “do not dialogue” filter….

        To 13.2:

        August 12, 2017 at 12:03 pm

        I care not that you concede or not – your opinion – as entirely equally “unstated” as to interpretation does not change that decision, nor its inapplicability to the present conditions.

        To 13.3:

        August 12, 2017 at 12:04 pm

        since it was the reason the S. Ct. refused to vacate the state court decisions in ASARCO.

        NOT SO. The ASARCO case was far more intensively embroiled in a State/Federal comity issue.

        August 12, 2017 at 12:05 pm

        Federal to Federal (branch to branch) is simply NOT the same as the State to Federal dynamic.

        Not even close.

        To 13.4:

        August 12, 2017 at 12:07 pm

        You ASSume many things leading up to [emphasis added here] how you have framed your support of the Personal Audio case…
        then you obfuscate by pretending that the assumptions noted are in the larger case of Personal Audio when CLEARLY no one has said anything of the sort.

        1. “I care not that you concede or not – your opinion – as entirely equally “unstated” as to interpretation does not change that decision, nor its inapplicability to the present conditions.”

          I’ve provided as much of an explanation as is necessary in post 10.

          On the other hand, you’ve pointed to nothing specific — no alternate interpretation of ASARCO, no reason why the other cases Dennis identified trump ASARCO, and no other cases to analyze. The Constitution requires only a “case or controversy,” not “standing” on both sides of a case. Standing is a creation of the Supreme Court that it is free to refine, qualify, and create exceptions to when deciding whether the “case or controversy” requirement is met. If the best you’ve got is “agencies are not States,” then you get the Personal Audio decision. Because that is a distinction with very little difference when it comes to interpreting and applying Federal law.

          “NOT SO. The ASARCO case was far more intensively embroiled in a State/Federal comity issue.”

          The quoted text says otherwise. Explicitly. For the third time: “The clear effect would be to impose federal standing requirements on the state courts whenever they adjudicate issues of federal law, if those judgments are to be conclusive on the parties. That result, however, would be contrary to established traditions and to our prior decisions recognizing that the state courts are not bound by Article III, and yet have it within both their power and their proper role to render binding judgments on issues of federal law, subject only to review by this Court.”

          There is no “comity” issue here — the U.S. Supreme Court has a mandate to review and overturn state court decisions concerning Federal law. You should be embarrassed for even writing such balderdash.

          “You ASSume many things leading up to [emphasis added here] how you have framed your support of the Personal Audio case…”

          Name two. Because there is only one: that Personal Audio is analogous to ASARCO because a Federal agency, like a State, is not bound by the “case or controversy” requirement of Article III. Everything else falls directly out of the language of ASARCO, as quoted in post 10.

          1. You ask for things already given.

            The State/Federal divide is distinctly different than a Federal/Federal divide AND what you seek is the reverse subjugation that ASARCO warns against (in reverse): you would have the standing requirement nullified for the Article III forum based solely on the single legislated efforts of the AIA that makes a proxy for the switch between forums (something – as previously noted – is forbidden for Congress to do).

            Your post 10 is simply insufficient to cover the details (and differences) of the State/Federal decision for your desired use of that decision.

            You then mistake the debunking of your view with some requirement (for me) to prove a case with other case law. No such other effort is needed to show that what you want to do with ASARCO is simply not in line with the present situation.

            1. Anon, right on man. Congress does not have the power to override the Constitution. Case and controversy is constitutional – and it is there because in cases between two parties, there is a dispute that can be resolved and a judgment entered that is binding on the parties and on the res.

              Congress cannot by moving the litigation to the executive branch effectively pencil through these constitutional requirements that exist to protect parties from harassment, let alone to assure that we have three functioning branches the government and that legal disputes are settled in court.

              Let us observe that Congress built in numbers of the protections against harassment a patent owners in IPRs and these include a requirement that and accused infringer choose between litigating validity in court or in the PTAB, and having the results of the PTAB holding in favor of the patent owner binding as collateral estoppel in a court of law. None of this pertains to EFF because they are not an accused infringer. In fact they are front for accused infringers who evade the law by litigating by proxy.

              Let us see the system that they have erected. We have organizations called AFF, BFF, CFF, EFF, DFM, FFF. One petitions, and if they fail, the next one petitions, and so on and so on and so on. The number of front organizations suing can continue to the end of time without their owners or sponsors ever being estopped.

              And yet, here we have Judge Newman once again created a constitutional crisis.

              1. Ned Heller: The number of front organizations suing can continue to the end of time

                LOL You want to limit the number of companies that can invalidate a junk patent? What would be a satisfactory limit for you? Three?

                Smell the freedom, folks.

                1. MM, there is a difference between defending in court an suing in an IPR. In court, the petitioner/defendant has some skin in the game, and the patent owner has some potential upside by which to pay counsel.

                  Thus IPRs are a form of harassment designed to bring down either the patent or the patentee. The weaker and smaller the patentee, the sooner he will say uncle and simply abandon the fight.

                  Gotta love due process, MM.

                2. The weaker and smaller the patentee, the sooner he will say uncle and simply abandon the fight.

                  But Malcolm is “all about” being against “rich whitey one-percenters, so this – just like his stance against software patents, the form of innovation MOST accessible to the non-wealthy – remains ever an unexplained dichotomy.

                  More likely than not, He is simply an angry and bitter Liberal Left, and his views of being anti-patent override any other “sensibility.’

            2. Your post 10 is simply insufficient to cover the details (and differences) of the State/Federal decision

              Seems more than suffcient coverage for me (definitely more sufficient than the barely comprehensible word salad you’re offering). Also, it’s the law.

              you would have the standing requirement nullified for the Article III forum based solely on the single legislated efforts of the AIA

              There’s no “nullification” of anything.

              1. Seems… for me

                That is saying less than nothing.

                Also, it’s the law

                LOL – that’s the point that you are not grasping – the law of the case here is NOT in accord with the law – THAT is why we have an issue.

                There’s no “nullification” of anything.

                Standing is required of BOTH parties.
                THAT is being nullified through legislative proxy.

                Obtuse. Is it deliberate?

            3. You then mistake the debunking of your view with some requirement (for me) to prove a case with other case law.

              As a preliminary, I will say that I agree with you (and disagree with DRJlaw, whose arguments I am otherwise going to second) that ASARCO seems grounded in federal/state comity concerns.

              That said, this observation about the federalism concerns in ASARCO really does not take you as far as you want to go with it. You are advancing an affirmative proposition here—viz., that both sides of a lawsuit in an Art. III court need a Defenders of Wildlife-type concrete interest in the outcome before an Art. III court can exercise jurisdiction over a case. That is to say, in order for you to be correct here, it is not enough for you merely to discredit DRJlaw’s argument. You actually have to establish your own affirmative case.

              You have not done that. You keep citing Defenders of Wildlife, but Defenders of Wildlife does not even raise, let alone answer the question of whether both sides or only one side (i.e., the side invoking the court’s power) needs a concrete interest in the outcome of the proceeding.

              In other words, even if you really have refuted DRJlaw (which I do not believe you have), this does not get you far enough to establish that the CAFC has made any sort of mistake here as you allege. If DRJlaw really is wrong about ASARCO, the most that one can say is that “hm, the CAFC appears to have stepped into an issue of first impression. I wonder how the SCotUS will view this issue when eventually the issue makes its way up to the Court?”.

              In any event, even if ASARCO is grounded in a federal/state comity concern, it still remains that ASARCO exhibits at least one instance where the Court has acknowledged that the Art. III “cases… or… controversies” standard is satisfied so long as the party invoking the federal court’s power has a Defenders of Wildlife-type interest in the outcome. Nowhere in ASARCO or elsewhere is this outcome said to be “limited” to an “exceptional” circumstance where federal/state comity concerns are implicated, so it is far clear that the distinction that you are (correctly) drawing between Personal Audio and ASARCO is actually a material or relevant distinction.

              1. Nowhere in ASARCO or elsewhere is this outcome said to be “limited” to an “exceptional” circumstance where federal/state comity concerns are implicated,

                While perhaps not explicit – you should read the case.

              2. Greg, the takeaway from ASARCO is that the SC could not simply vacate because to do so would impose a requirement on the State Courts that it had no constitution power to do.

                With regard to IPRs, the situation is entirely different, not so?

                1. Let’s see if this makes it through….

                  Please Pardon Potential (re(re))Post…

                  Here Ned, I will disagree with you – but it does become a matter of properly framing the issue.

                  IF one frames this as the vacatur FORCING the Article I forum to have a standing requirement (an improper framing, IMHO), then a parallel, as phantastic as such may be, may be fabricated.

                  IF one frames this in the reverse – that FORCING the Article III portion of the single legislative of the AIA to forego its constitutionally based case or controversy derived standing requirement with a legislatively created proxy, then the standing requirement effectively disappears at the whim of Congress, which abrogates the separation of powers.

                  A careful – and better – read of ASARCO actually points one in the opposite direction that THAT case was first advanced for.

                2. Anon, absolutely.

                  Standing ought to be viewed on appeal from the point of view of a party at the time of filing of the “lawsuit” in the lower court. When the case is inter partes, and both parties have a right to appeal, the case is essentially one of Article III from its beginning.

                  In such a circumstance, the Supreme Court will vacate the appeal where the initial plaintiff had no standing regardless of its posture on appeal – either as appellant or appellee. ASARCO is a special case involving comity respect to the independent of the state courts.

                3. ASARCO is a special case involving comity respect to the independent of the state courts.

                  This seems to be the real nub of the disagreement.

                  Is ASARCO a generally applicable precedent standing for the proposition that all that is necessary is that, during the whole course of a case’s history in an Art. III court, the party seeking to invoke a given court’s jurisdiction have standing? This is DRJlaw’s view and my own.

                  Or, is there a general rule that at all times in the course of litigation, the party seeking to invoke a forum’s jurisdiction must satisfy Art. III standing requirements (even when the litigation is not yet in an Art. III forum)? This is Ned’s view (near as I can tell), and ASARCO, on this understanding, is just a special exception to the general rule that was crafted so as not to trespass against federal/state comity principles.

                  Or, is there a general rule that during the whole course of litigation in an Art. III court, both sides must satisfy Art. III requirements, even if it is also the case that such requirements are binding in early stages of the litigation that take place outside of the Art. III court system. Once again, on this understanding, ASARCO is a special case, limited to federal/state comity issues. This, I gather, is anon’s position.

                  The problem that I see with the ASARCO-is-a-special-case understanding is that ASARCO does not say as much, either explicitly or even implicitly. If we look at ASARCO, we see that the Court has already reached the conclusion that Art. III requirements are satisfied before it even touches on the question of federal/state comity:

                  Asarco Inc. v. Kadish, 490 U.S. 605, 617-18 (1989)

                  The question now arises whether a judgment rendered by the state courts in these circumstances can support jurisdiction in this Court to review the case. At this juncture, petitioners allege a specific injury stemming from the state-court decree, a decree which rests on principles of federal law.
                  Petitioners insist that, as a result of the state-court judgment, the case has taken on such definite shape that they are under a defined and specific legal obligation, one which causes them direct injury.

                  We agree. Although respondents would not have had standing to commence suit in federal court based on the allegations in the complaint, they are not the party attempting to invoke the federal judicial power. Instead it is petitioners, the defendants in the case and the losing parties below, who bring the case here and thus seek entry to the federal courts for the first time in the lawsuit. We determine that petitioners have standing to invoke the authority of a federal court and that this dispute now presents a justiciable case or controversy for resolution here.

                  N.B., the court has already agreed that the petitioners have standing to pursue this federal appeal by pg. 618. Meanwhile, we do not get to questions of comity until two pages later:

                  Although petitioners satisfy the requirements of federal standing and present an actual case or controversy for decision here, the United States contends that this showing is insufficient to support our jurisdiction. The Government suggests that the appropriate order is dismissal, and that petitioners are then free “to bring a declaratory judgment action in federal court” raising these same claims. Brief for United States 20, n. 14. Petitioners counter that if the Court finds it cannot review the judgment on the merits, the proper course is to vacate the judgment below and remand for appropriate further proceedings, Tr. of Oral Arg. 13-15, as we have done at least on some occasions when a case becomes moot while it is pending on review from a state court, see, e. g., DeFunis v. Odegaard, 416 U. S. 312, 320 (1974). Neither disposition is appropriate here.

                  If we were to vacate the judgment below on the ground that respondents lacked federal standing when they brought suit initially, that disposition would render nugatory the entire proceedings in the state courts. The clear effect would be to impose federal standing requirements on the state courts whenever they adjudicate issues of federal law, if those judgments are to be conclusive on the parties. That result, however, would be contrary to established traditions and to our prior decisions recognizing that the state courts are not bound by Article III and yet have it within both their power and their proper role to render binding judgments on issues of federal law, subject only to review by this Court.

                  In other words, the discussion of federal/state comity issues is not actually necessary to reach the ultimate holding here. This is merely a digression where the Court explains why it is not heading down a different path offered by the government. This is dictum. The holding is simply that the petitioner has a sufficiently concrete interest in the outcome of the case by the time it reaches the federal courts, and that what happened before the federal courts is irrelevant to the Art. III standing analysis.

                  I agree that ASARCO discusses federal/state comity issues, but there is nothing here to suggest that the whole outcome would have been different but for that federal/state peculiarity. Quite the contrary. The whole opinion would still make just as much sense if pg. 620 had been omitted.

                4. “… that such requirements are binding in early stages of the litigation that take place outside of the Art. III court system.”

                  Whoops. Sorry. “… that such requirements are not binding in early stages of the litigation that take place outside of the Art. III court system.”

                5. Greg, then why is it that the Feds generally vacate a decision below (originating from a Federal District Court) if the prevailing plaintiff below does not have standing? Cf. Daimler Chrysler Corp. v. CUNO Your theory that defendant/appellant standing is sufficient does not stand scrutiny.

                  When EEF filed the IPR, and went to trial, it had a statutory right to appeal to the Federal Circuit in order to obtain judgment there if not at the PTAB level. Thus by invoking the IPR, it (inchoately) accessed Federal Judicial power. It needed standing then — at the petition stage. It did not have it. Thus the case cannot proceed to the Federal Circuit regardless of who won or lost the IPR.

                  In contrast, the State Court proceeding did not grant the plaintiff any right to invoke Federal Judicial power. Thus its action did not require inchoate Federal Standing.

                6. [W]hy is it that the Feds generally vacate a decision below (originating from a Federal District Court) if the prevailing plaintiff below does not have standing? Cf. Daimler Chrysler Corp. v. CUNO Your theory that defendant/appellant standing is sufficient does not stand scrutiny.

                  You misunderstand my position, Ned. My position is that an Art. III court cannot exercise jurisdiction unless the person invoking the Art. III court’s jurisdiction has standing. The only person, however, who needs to show standing, is the one invoking the court’s jurisdiction.

                  In Consumer Watchdog, the appellant (IPR petitioner) lacked standing, and therefore was not able to invoke the CAFC’s jurisdiction. In Personal Audio, the appellant (patent owner in the IPR) had standing, and was, therefore, able to invoke the CAFC’s jurisdiction.

                  When you point to Cuno as a counterexample to my theory, I think that you are missing the salient fact about Cuno, i.e., that there was no judgment to appeal. The Cuno plaintiff lacked standing to invoke the jurisdiction of the district court. The district court rendered a judgment, heedless of the lack of jurisdiction, and then a party with adequate standing appealed the district court’s decision. At that point, it is not the standing vel non of the appellant in the appeals court that matters. The district court lacked standing to give a judgment, and therefore there is nothing to appeal.

                  In other words, my point is that as soon as you set foot in an Art. III court, the party invoking the court’s jurisdiction needs to show standing. Until you set foot in an Art. III court, however, there is no standing requirement, so analyzing the standing of an IPR petition is just beside the point.

                  When EEF filed the IPR,… it (inchoately) accessed Federal Judicial power… In contrast, the State Court proceeding did not grant the plaintiff any right to invoke Federal Judicial power.

                  With respect, I find this rather unconvincing. The state court plaintiff enters the state court knowing that the case could go up on review to a federal court if a federal issue is at stake. As such, the ASARCO plaintiff had just as “inchoately” invoked the Supreme Court’s jurisdiction as the Personal Audio petitioner had invoked the CAFC’s jurisdiction. I find such talk of “inchoate” invocation of the jurisdiction of the Art. III courts to be rather muddled and unhelpful, but to the extent that there is anything to this way of thinking, it applied just as much to the ASARCO plaintiff as to the EFF.

                7. Greg,

                  Where do YOU get your “one-party-only” views on standing (and contrast that please with what Prof. Crouch has provided as to the BOTH parties needing position).

                  As noted – ASARCO is easily distinguished. Do you have any other case?

                8. Where do YOU get your “one-party-only” views on standing…

                  My theory can explain Consumer Watchdog and Personal Audio and ASARCO (and any other case you might care to name). In other words, I get this view by looking at a lot of cases and seeing if there is a single, simple rule that can explain all (or almost all) of them.

                  By contrast, your rule can only explain Consumer Watchdog. From there on out, you have to assert that Personal Audio was wrongly decided, and that ASARCO is a super special exception with no applicability outside the circumstance of federal appeals from state court (despite the fact that ASARCO never actually says that).

                  When you have two theories, one of which can neatly explain most cases, and another of which can only explain some cases—and even then only by tacking on epicycles—then as Aristotle wrote in the Posterior Analytics, “[w]e may assume the superiority, all other things being equal, of the demonstration which derives from fewer postulates or hypotheses.”

                  [C]ontrast that please with what Prof. Crouch has provided as to the BOTH parties needing position.

                  I agree with Prof. Crouch that the CAFC did not spend a lot of time wrestling here with the conflicting welter of standing precedents. Prof. Crouch characterized Camreta and Lyons as constitutional, but as you have already seen, I consider the “constitutional” aspect of standing to be much the smaller aspect, and the “prudential” aspect to be the part at work in all of the precedents that we have been discussing.

                  As I see it, the only “constitutional” element of standing is that the thing being adjudicated be a “case” or a “controversy” (no ex parte submissions of a law-school hypo in hopes of receiving an advisory opinion in answer). Everything else (proximate causation of the plaintiffs asserted harm, redressability, mootness, etc) is prudential—a “gloss,” as I have termed it elsewhere on these boards, on the Art. III text.

                  I realize that this assertion can be dismissed as “just my opinion,” but I would beg you to ask yourself where in the Art. III text you actually see mention of mootness, or redressability, or proximate causation. It is not there. These requirements are, indeed, prudent for the well functioning of the actual Art. III requirements, but that is merely as much as to say that they are prudential. The prudential Art. III requirements are flexible, and so I can hardly blame the CAFC if they decided to apply them flexibly here, and not trouble themselves overmuch about walking through the welter of largely contradictory or unintelligible standing precedents before getting to what is—intuitively—the obviously correct result.

                9. Greg: “even if it is also the case that such requirements are binding in early stages of the litigation that take place outside of the Art. III court system.

                  That is expressly NOT my position and I say that such is a poor read.

                  See at least my framing comment to Ned (among many other posts).

                10. That is expressly NOT my position…

                  I take it you missed the correction I wrote in my very next post (at 10:35 am), where I inserted a critical “not” that was missing from the original that you quoted?

                11. not trouble themselves overmuch about walking through the welter of largely contradictory or unintelligible standing precedents

                  Do you realize that this is another admission that contradicts the opinion of law that you want to place AS law?

                  The CAFC does NOT get to ignore the standing precedents. The precedents are not gloss.

                  You have provided NO case backing for your single party standing and your aggregation is nothing more than “your opinion” (as you note).

                  Thanks but no thanks. You dismiss as gloss that which is not gloss and attempt to use less than gloss as substantive law because – to you – such makes better sense. Your theory does NOT explain the other cases because YOU say those other cases are not speaking to the Both Parties Must Have Standing Issue.

                  You cannot have it both ways.

                  As to
                  In other words, my point is that as soon as you set foot in an Art. III court, the party invoking the court’s jurisdiction needs to show standing. Until you set foot in an Art. III court, however, there is no standing requirement, so analyzing the standing of an IPR petition is just beside the point.

                  That’s a strawman that no one is arguing. Quite in fact, I have made it a point to distinguish whether or not one or two forums are involved (in a single law, such as the AIA) and made clear that Congress simply does not have the authority to create a proxy that invades the second forum for those who are freely able to enjoy the first forum.

                  As I have pointed out – my read of ASARCO (protecting different forums) comes out 180 degrees opposite the original invocation of that case.

                  So no, your opinion of my argument alignment with ASARCO is not correct.

                  When you have two theories, one of which can neatly explain most cases, and another of which can only explain some cases—and even then only by tacking on epicycles

                  Except you have the roles reversed – and YOU are tacking on epicycles (and ignoring items by labeling them ‘gloss’ – a FAR too literalist view of law, as pointed out with your appeal to Black’s Law dictionary) and have made several admissions that do not square with your own position.

                  My view is the cleanest view.

                  As to Personal Audio being wrongly decided – THAT is the issue we are discussing. You do not get to use a scoreboard that is broken as an indicator of the score when we are discussing the brokenness of that very scoreboard.

        2. editorial control choices hamper attempts at dialogue

          LOL

          That’s not what’s happening, “anon.”

          But kudos for recognizing that you are only “attempting”.

  3. What I really don’t get is why EFF didn’t actually practice the patent. (Or perhaps they did—I have read only the summary here and not the case itself.) If the claims are stupid, and they’re fulfilling their role as a public-interest advocacy organization, it should be easy to practice them and refuse any licensing offer.

    This would be a good rule to prevent waste of judicial resources on the validity of patents that aren’t of public interest because they are too difficult to infringe. And it solves the standing issue.

    If you want to challenge it, practice it.

          1. Ned,
            Is the following sentence: “ [t]he rule that a plaintiff must destroy a large building, bet the farm, or (as here) risk treble damages and the loss of 80 percent of its business, before seeking a declaration of its actively contested legal rights finds no support in Article III ” just dicta? Would you agree that infringing a patent is not needed to create a sufficient case-or-controversy?

            1. Pika, no. There has to be some bona fide controversy between the parties. This requires some action on the part of the right holder to indicate to the petitioner/plaintiff that they will be sued.

  4. Just slightly OT but I became aware recently that Judge (and Professor) William Schwarzer (ND CA) passed away earlier this year (February 1, at the age of 91). RIP He would have loved this discussion!

    link to legacy.com

  5. “The Federal Circuit relied upon another line of Supreme Court cases – notably ASARCO Inc. v. Kadish (1989)…. The problem with this holding is that it speaks only to the case as a whole rather than standing of the particular party.”

    I strongly disagree, based upon the court’s detailed discussion of the standing of the petitioners and respondents before the Supreme Court, as well as the standing of the plaintiffs and defendants in the state court actions that led to the petition for certiorari. The assertion that the case does not discuss the standing of particular parties is facially incorrect.

    “Our review discloses no basis on which to find that respondents would satisfy the requirements for federal standing articulated by our precedents. It follows that the suit would have been dismissed at the outset, were the federal rule to
    apply.” 490 U. S. 616-17.

    “The question now arises whether a judgment rendered by the state courts in these circumstances can support jurisdiction in this Court to review the case. At this juncture, petitioners allege a specific injury stemming from the state court decree, a decree which rests on principles of federal law.” 490 US 617.

    “Petitioners insist that, as a result of the state court judgment, the case has taken on such definite shape that they are under a defined and specific legal obligation, one which causes them direct injury. We agree. Although respondents would not have had standing to commence suit in federal court based on the allegations in the complaint, [respondents] are not the party attempting to invoke the federal judicial power. Instead, it is petitioners, the defendants in the case and the losing parties below, who bring the case here, and thus seek entry to the federal courts for the first time in the lawsuit. We determine that petitioners have standing to invoke the authority of a federal court, and that this dispute now presents a justiciable case or controversy for resolution here.” 490 US 618 (emphasis added).

    “If we were to vacate the judgment below on the ground that respondents lacked federal standing when they brought suit initially, that disposition would render nugatory the entire proceedings in the state courts. The clear effect would be to impose federal standing requirements on the state courts whenever they adjudicate issues of federal law, if those judgments are to be conclusive on the parties. That result, however, would be contrary to established traditions and to our prior decisions recognizing that the state courts are not bound by Article III, and yet have it within both their power and their proper role to render binding judgments on issues of federal law, subject only to review by this Court.” 490 US 620.

    “If we were merely to dismiss this case and leave the judgment below undisturbed, a different set of problems would ensue…” 490 US 621.

    “We therefore conclude that we may properly decide this case. Petitioners meet the requirements for federal standing under Valley Forge. Because they are the parties first invoking the authority of the federal courts in this case, and an actual case or controversy is before the Court, there is no jurisdictional bar to review. In these circumstances, and having already granted review, we believe the proper course is not to dismiss the case or to vacate the judgment below, but to undertake review of the federal issues on their merits.” 490 US 624.

    In short, the standing of particular parties is expressly discussed, the decision expressly turns upon the standing of the petitioner (a defendant with particularlized rights that were negated by their loss in a non-Article III-bound forum), the decision expressly states that the respondents would not otherwise have standing, and the court specifically rejects vacateur or dismissal in favor of review despite the respondents lack of standing.

    Camreta v. Greene and Los Angeles v. Lyons dealt with the standing of plaintiffs who brought original actions in federal district courts. They are distinguishable because there was no otherwise binding decision rendered by a non-Article III body (state court or federal agency). Their statements concerning the standing of all parties are dicta since the standing of the other party, the one that did not initially “invoke the federal judicial power,” was not at issue and not material to the decisions involved.

    After having read the three decisions, ASARCO is far more likely to control than those others.

    1. “Camreta v. Greene and Los Angeles v. Lyons dealt with the standing of plaintiffs who brought original actions in federal district courts”

      Strike that, and probably the dicta conclusion. I blurred Camreta and Lyons together. Camreta concerned the standing of a defendant official protected by qualified immunity but otherwise adjudged to have violated the plaintiff’s rights. Petitioner but not plaintiff.

    2. DRJlaw,
      I agree with you Camreta v. Greene and Los Angeles v. Lyons are not on point. ASARCO Inc. v. Kadish is good (close enough) case; instructive is also Ingalls Shipbuilding, Inc. v. Director, Office of Workers’ Compensation Programs, 519 U.S. 248 (1997) which addressed the situation whether the government (on behalf on an agency Art I) appearing in a court of appeals could defend an administrative decision.

      1. Jonathan,

        ASARCO is NOT close enough (for the reasons provided after your post).

        Also, on the standing issue, the Ingalls case is not pertinent, dealing as it is with an incorrect analagous party. Had the party been the USPTO director (as opposed to EFF), THEN the Ingalls case may have been pertinent.

        Or did you mean “instructive” in that EFF does not have standing per the Federal Rule of Appellate Procedure 15(a)? (in addition to not having standing for other reasons?)

        Further yet, as section III of that case presents: “Ingalls also challenges the “standing” of the Director, OWCP, to appear before the courts of appeals as a respondent in cases in which there are already two adverse litigants” – therein, the issue of perahps too many participants is quite different than the issue here of not enough participants.

        Then at 264 of that case, the standing of the director is viewed by the court has being in addition to and not solely from the Act of Congress:

        Any impediment to the Director’s appearance as a respondent in this case is not of constitutional origin. As we stated in Newport News, although the Director had no statutory authorization to petition the Court of Appeals, “Congress could have conferred standing upon the Director without infringing Article III of the Constitution.” Id., at 133. In light of this observation, Article III surely poses no bar to the Director’s participation as a respondent in those courts. Cf. Diamond v. Charles, 476 U. S. 54, 68-69 (1986) (reserving question whether persons seeking to intervene “must satisfy not only the requirements of [Federal Rule of Civil Procedure] 24(a)(2), but also the requirements of Art. III”).

        Focus on the party of the agency is not the same as focus on some other third party – as I have noted, for such third parties, Lujan is more on point.

          1. Being for the rule of law and the proper application of law in NO WAY indicates what you want to merely insinuate Malcolm.

            You are doing that confuse two separate issues thing again.

            Instead of the baseless insinuation and typical attempt by you to solely rely on ad hominem, maybe you should take a little more time, understand the legal principles that I am talking about and compose a reply that is actually on target and addresses the merits.

            You may want to start by evaluating whatever it is that you are about to post, and if there is only ad hominem, hitting that little “X” in the top right corner instead of the “Post Comment” box.

    3. Also consider:

      “When a state court has issued a judgment in a case where plaintiffs in the original action had no standing to sue under the principles governing the federal courts, we may exercise our jurisdiction on certiorari if the judgment of the state court causes direct, 624*624 specific, and concrete injury to the parties who petition for our review, where the requisites of a case or controversy are also met.

      We are not unmindful of the paradox that would result if respondents (plaintiffs below) prevail on the merits, for then they will have succeeded in obtaining a federal determination here that would have been unavailable if the action had been filed initially in federal court. Nonetheless, although federal standing “often turns on the nature and source of the claim asserted,” it “in no way depends on the merits of the [claim].” Warth, 422 U. S., at 500. The rule we adopt is necessary in deference to the States and in response to the petitioning parties who seek this forum to redress a real and current injury stemming from the application of federal law.”

      It seems clear that the petitioner’s were harmed by the judgment of the state courts, the respondents had no federal standing, and that holding was entirely premised on respect for the States to have standing requirements different from those of the States.

      None of that applies here. Everything here is Federal. Everything.

      The court could simply vacate which would impose an indirect standing requirement on IPRs. The Supreme Court has that authority.

      1. Everything here is Federal.

        That doesn’t help you. The holding of ASARCO is that the losers who are petitioning the Federal court have standing regardless of the fact that the respondents could not have brought their case to Federal court in the first instance (just as EFF couldn’t have gone to a district court to invalidate the patent). The petitioners’ appeal, on the other hand, arises under Federal law and petitioners have been harmed. That is what matters for standing purposes.

        As the court notes, to hold otherwise would create “a different set of problems …”

        1. The point Malcolm is that “The petitioners’ appeal, on the other hand, arises under Federal law and petitioners have been harmed. That is what matters for standing purposes.” is just not quite accurate regardless of what the Court decided to do in ASARCO.

          Push comes to shove and the far more complicated facts and posture of ASARCO dealing with the different State/Federal comity issue makes that case inapposite to the current issue (Federal/Federal).

          The Court took a liberty of not FULLY fleshing out the standing argument in ASARCO. At that point in time (as much as I can tell), no one was pointing out that standing MUST be met by all parties, and that the shortcut scrivening that the Court engaged in does not pass actual legal muster.

          The Court is under a much better microscope nowadays.

      2. The court should not, and it does not have that authority

        Administrative agencies, which are Article I bodies, are not subject to a case or controversy requirement, which is an Article III requirement. Vacating the decision of an Article I body creates the same problems that vacating the decision of a state court creates.

        The court clearly does not have that authority since the case or controversy requirement is stated only in Article III, and not in Article I.

        1. Interesting.

          When you say they do not have authority to vacate, one wonders (notwithstanding ASARCO, which itself may have been wrongly decided because the Court may not have had authority to do what it did there), the dichotomy hinted at in that case comes round again.

          As you aptly point out, the action below in a different forum has no case or controversy, no standing, requirement(s).

          But the issue is NOT whether or not standing is required in that different forum. The court (here) is NOT acting as if it were the Article I tribunal. It is instead acting in its appointed role as a court of review, upon a path of review as set forth by Congress.***

          I am not sure that the “power to vacate” is somehow beyond authority when you also want to have within authority, the power to hear the case on the merits.

          You cannot have both, can you? Is not the power to do either tied to the power of the court in the first instance?

          ***the problem here belongs to how Congress set this up. As I have noted, the AIA is an abysmally written law. This is just another example of that. Congress cannot “legislate standing” (I am taking Ned’s point on this as true, having seen no counter points that overturn that view). Congress (properly – as long as the affected action remains within the particular forum) created an Article I “action” that does not require certain aspects.

          No problems (yet).

          But then Congress tags onto that (proper in its own forum) a path to a different forum. When Congress did that, they cannot create a “proxy” of their own first step of Article I to serve as the necessary predicate for the transfer into the different forum.

          That would be exactly the “legislating standing” aspect that is not allowed.

          The underlying problem here is the AIA and its legal deficiencies.

          (perhaps unlike other deficiencies of which I am certain create Constitutional infirmities), I have notbas of yet come to a conclusion one way or the other as to whether this path between different forums creates a (nother) Constitutional infirmity, or if this merely creates a trap for the unwary.

          In other words, to avoid a Constitutional issue, the court MAY have to do the very opposite thing that occurred in ASARCO, in at least small part because of the logic used in ASARCO.

          1. “The court could simply vacate which would impose an indirect standing requirement on IPRs. The Supreme Court has that authority.”

            “When you say they do not have authority to vacate…”

            The court should not vacate. The court does not have the authority to impose a standing requirement on administrative agencies.

            That latter should mean that court won’t vacate, but that’s not going to stop one from doing so if it is wont to.

            1. The court should not vacate

              LOL – I only now noticed the back-pedaling here: you moved from “can not” to “should not.”

              There is a world of difference between authority TO vacate and whether or not a court merely should exercise (apparently admitted) an ABILITY TO vacate.

              DRJlaw, your response does NOT answer my counter point presented, and instead slips merely into a choice not to exercise authority that you originally postulated simply was not there. My point is that the mere presence of the choice is not congruent with your larger argument.

              As I have pointed out here that the court vacating does not IN FACT impose a standing requirement in the different forum (in addition to my posts explaining that here, the dissent in ASARCO also somewhat – albeit not exactly – notes this). A vacating by the court does not replace what the other forum STILL has the power to do. And while it is true that vacating does have and effect, and that effect “seems unfair” and certainly seems opposite the intent of Congress, we ALL NEED TO REMEMBER that Congress cannot manufacture the type of standing that it has attempted to do with the AIA.

              In other words, the drivers in ASARCO work in the opposite direction that you want them to. Rather than merely this case representing some type of one forum imposing on another forum, this case represents ALSO the first forum NOT being able to impose its (non-standing) requirement into the second forum.

              Here, quire different than the situation in ASARCO, the Federal/Federal differences in standing were made in the same piece of legislation, and THAT legislation – already widely noted for a plethora of defects – should NOT get a “free pass” on its attempt to remove the standing requirement in the Article III forum.

        2. DRLaw, all this shows in the end is that PTO should not be in the business of conducting trials of private rights that permanently dispose of that right. It end-runs constitutionally protected rights that exist for numbers of due process reasons.

          Congress can, pursuant to its powers under the commerce clause and the like regulate commerce. The government itself has full standing in a court of law to defend challenges to its regulations or its orders. But in this case, the government is not taking any regulatory action whatsoever pursuant to any regulatory power. It is deciding the validity of a patent, which historically is purely a legal matter matter for the courts. The Supreme Court itself has previously ruled that the government has no standing to go into a court to seek to revoke a patent for invalidity except as part of an antitrust are unfair competition case. The last Supreme Court case to affirm this basic principle was decided 1973.

          The issue of constitutionality of IPRs is before the Supreme Court now. But the situation involving standing illustrates in spades the problems caused by moving the trial of validity for the purposes of revoking a patent out of the court system and into the executive branch, a political branch of the government.

          1. [A]ll this shows in the end is that PTO should not be in the business of conducting trials of private rights that permanently dispose of that right. It end-runs constitutionally protected rights that exist for numbers of due process reasons.

            To be sure, we have all known for well over a century now that interference proceedings are both unconstitutional and ill-considered as a policy matter even if they were constitutionality supportable.

            Because a first-to-invent system requires the PTO to involve itself in such a transparently unconstitutional arrangement, we can all—I am sure—hope that when the Court finishes striking out IPRs & PGRs, it will not stop there. First-to-invent (with its necessity for interferences) is just as constitutionally infirm as IPRs. No true patriot can rest easy until the pre-AIA patent system is effaced from the books, and the work of drafting title 35 is begun again completely from scratch.

            [/sarcasm]

              1. So then your objection is not really about the “PTO… conducting trials of private rights that permanently dispose of that right,” as you say in 10.3.2.2? What you really find objectionable is the conducting of such trials without a right of appeal to a district court?

                That is fair enough, but these are analytically separate issues. You should not say the one if you mean the other.

                1. Greg, Have you considered Crowell v. Benson as considered by Stern v. Marshall? The right to have a trial de novo was deemed critical to the constitutionality. Also consider Kappos v. Hyatt. There the record below stands unless the appellant brings new evidence, in which case, the entire case is retried.

                  Acceptable.

                  But interferences still had two interested parties. Mostly IPRs have two interested parties where de novo review would solve the problem. But, EFF would have no standing in such a de novo district court proceeding. Just de novo review by itself is not sufficient.

                2. The right to have a trial de novo was deemed critical to the constitutionality.

                  Fine. I take your point as far as it goes. The assertion “PTO should not be in the business of conducting trials of private rights that permanently dispose of that right,” is, however, meaningfully different from “PTO should not be in the business of conducting trials of private rights that permanently dispose of that right[, unless it be possible to take a de novo appeal to a district court].”

              1. Greg’s sarcasm is misplaced.

                Although he does try to stick to legal principles (much more so than others who focus on the same desired ends), he will tend to get caught up in a mocking mode when he himself has not grasped the situation.

                1. …the legal meaning of the term “interested” comes into play.

                  But you keep on wanting to label that gloss, and pay no attention to it.

  6. The appellant Personal Audio clearly has standing since its patent has been judged unpatentable, and the question is whether EFF has standing to participate as an appellee despite its lack of a direct interest in the outcome.

    This last cause is simply false. EFF does have a “direct interest in the outcome.” So do I.

    If the patent is mistakenly deemed valid, EFF’s rights and my rights to practice the prior art are clouded as a directly result of that error.

    Day after day after day after day we hear the patent maximalists here shrieking and whining about how the mere fact that their patents are potentially at the PTO after grant is the worst sort of economic harm that can possibly take place. Suggesting otherwise is treasonous! So we are told.

    If I want to practice the prior art and I need investors then your junky patent is absolutely of “direct interest” to me. Nothing could possibly be more direct. Every junk patent that is granted directly harms *everyone* who wants to be free to practice the prior art.

    You can dance around this all you want but if the EFF and I say that we want to make podcasts available, how does we not have a direct interest in the result of this case? Surely you’re not going to question the sincerity of my desires in this regard. That would be good for laughs but little else.

    1. [I]f the EFF… say that [they] want to make podcasts available, how do[ they] not have a direct interest in the result of this case?

      Did the EFF ever say that? It was my understanding that on this record the EFF had never made such a representation.

      1. First, I’m not sure what exactly needs to be said. The direct impact is both a generic and accurate proposition with no assumptions: every mistakenly valid patent limits my freedom (my right) to practice the prior art without fear of a Federal lawsuit. It seems a bit silly to have to “prove” that I might want to practice the patent to have standing. The fact that my freedom has been improperly stripped away by the government’s malfeasance is a given, regardless of my specific desires at any given moment.

        Second, Congress has defined a patent right as a conditional right that can be taken away by the granting agency upon a showing by any party (Congress did that for reasons directly related to the issue above). In other words, we all have a right to challenge granted patents. If I choose to be that party and the PTAB makes a mistake during the hearing, then my right to a fair and just hearing at the PTO — i.e., the right granted to me by Congress — has been directly impacted by the PTAB’s error. That too should be enough for standing.

        By the way: welcome back.

        1. It seems a bit silly to have to “prove” that I might want to practice the patent to have standing.

          I do not really disagree with the characterization of the law as “silly,” but it is still the law. Defenders of Wildlife held that it was not enough merely to say that you might plan to take an action contrary to the challenged law. You actually have to cough up evidence (plane tickets, in Justice Kennedy’s memorable example) showing a concrete plan of action.

          By analogy, EFF really does need to say that they plan to distribute podcasts (and perhaps show that they have the software in place to do it, or some such) to satisfy the law as defined by applicable precedent. As I said, I can agree with you that this requirement is “silly,” but it is the law all the same, and the lower courts have no real option but to insist on such.

          That is why Consumer Watchdog was out of luck in its almost-analogous case.

          By the way: welcome back.

          Thank you. You are most kind.

            1. He is kind as long as you align with his views. Step out of that line, and enjoy his swagger…

              Sure, I am under no illusions on that score. However, I believe in repaying kindness with kindness. There is no good that comes from being preemptively rude in the expectation of future rudeness (even a well-founded expectation).

              1. I could do without the Bible verse, but you have a point about not being preemptively rude.

                At the same token, hewing to excessive politeness is ill-advised.

                Some people really don’t care at all about anything except their mantras.

                1. “Some people really don’t care at all about anything except their mantras.”
                  Yes indeed, and endlessly repeating them on blogs, even if they would not dare so advise actual clients.

                2. Ah yes, the sniping from the sidelines of cowardly Paul with the insinuation that legal discussions here are somehow NOT valid because (and there is ZERO chance of Paul knowing this) “the advice is not being given to clients”

                  Fundamentally
                  Unsound logic you have there pal.

        2. generic…with no assumptions

          Your feelings are noted.

          Congress has defined a patent right as a conditional right that can be taken away…

          You STILL are missing the point that even Congress – the correct branch of the government to make the statutory law that is patent law CANNOT make any old law that it wants to. Patents were made to be personal property and along with that provision, OTHER Constitutional protections inured. Once that happens, Congress simply cannot do whatever they want in disregard of the Constitution.

          You act as if “has defined” is not a matter of issue.

          It is THE matter of issue.

          1. Patents were made to be personal property

            “Subject to the provisions of this title”.

            Those provisions include conditional recocation by the granting agency.

            Nothing in the Constitution prohibits that. The Constitution doesn’t require that any patents be granted.

    2. This last cause is simply false. EFF does have a “direct interest in the outcome.” So do I.

      (Greg, please take note)

      THIS is exactly where “Lujan” comes into play and negates the principle that Malcom attempts to advance.

  7. Curious that Judge Newman didn’t cite the CAFC Phigenix decision from earlier this year. Are there other cases like Personal Audio coming down the pike? The case seemed to languish, which sometimes happens when the CAFC wants to sync decisions in several cases.

    The Supreme Court seemed to agree with Dennis in DaimlerChrysler Corp. v. Cuno, 547 US 332 (2006). Though the petitioner had standing, the respondent lacked standing. The Supreme Court vacated the district court decision.

    1. Cuno is just like Defenders of Wildlife, in that while the appellant had standing in the appeal, the plaintiff did not have standing before the district court. Because the district court never had jurisdiction to pronounce a judgment (because of the plaintiff’s lack of standing), there is no judgment to appeal, so the whole case is dismissed ab initio

      Once again, this is a very different and distinguishable circumstance from the present case. Here the case did not start in an Art. III court (where the plaintiff needs standing). It started in an Art. I tribunal, where standing is not necessary.

      Noticing, in other words, that an appeal can be dismissed even where the appellant has standing is missing the important point. What was important in both Cuno and Defenders of Wildlife was not the appellant‘s standing before the appellate court, but rather the plaintiff‘s lack of standing before the Art. III court of first instance.

      1. this [Defenders of Wildlife] is a very different and distinguishable circumstance from the present case. Here the case did not start in an Art. III court (where the plaintiff needs standing). It started in an Art. I tribunal, where standing is not necessary.

        That’s not the only difference.

        Improvidently granting a US patent that covers the prior art directly limits my freedom, as a US resident, to practice the prior art without fear of a lawsuit. This is quite a bit different than some Federal administration interpreting a law so that some endangered birds in Egypt are given less protection.

        But remember this as well: Justice Anthony Kennedy and Justice David Souter asserted in their concurring opinion that an airline ticket to the affected geographic areas with endangered species in question would have been enough to satisfy the imminent threat of future injury requirement.

        1. You also keep on forgetting that such a status of “improvidently granting” is the issue under consideration – and UNTIL the resolution of that issue, a granted patent carries with a presumption of validity – the OPPOSITE of the presumption (unstated at that) that you, in your typical anti-patent mode, simply assume.

          I think that you referencing a dissent of two does NOT make your case stronger. If anything, it only emphasizes that your position aligns with what the Court rejected.

        2. Honest question: is the doctrine of chilling effect only applicable to freedom of speech, or could it be extended to a petitioner in an IPR when a review by the CAFC is requested?

      2. Greg – this is a critical point you keep on missing: BOTH sides need to satisfy standing.

        That statement need not be true for proceedings below, where, as here, those proceedings below are in front of an Article I tribunal. BUT THE ISSUE IS NO LONGER IN FRONT OF THAT ARTICLE I TRIBUNAL.

        It is the current location of the issue upon which the current issue of standing is in focus. That focus requires (albeit, as pointed out in the neutral third party article that I presented when this issue first surfaced – not always done) that standing is evaluated for both sides, and one side does not get a free “standing pass” just because the other side has standing.

        This is indeed a critical flaw in the “scrivining” that Congress undertook in a notoriously poorly written AIA. They apparently set up a system that leads to a true lack of addressability for one side in any potential follow-up to the Article I proceedings because what Congress expressly did in the AIA was not require that type of standing for the first part in the Article I domain.

        In other words, a party with no standing can always engage the Article I portion of what the AIA provides. But that is expressly ONLY the Article I portion, and IF the proceedings move to a different forum with different standing requirements, the provision – by Congress – of a standing-free Article I proceeding does NOT carry over into a form of substitute for the different standing that IS required in that different forum (this is what Ned refers to as Congress not being allowed to manufacture standing).

        1. That IS a neat trick…

          that so easily and irreparably justice and rights could be defeated and violated, repeatedly, by individual bad decisions of a puny bureaucratic tribunal.

        2. [T]his is a critical point you keep on missing: BOTH sides need to satisfy standing.

          I suppose that I would respond that I am not “missing” this point, I simply discredit its accuracy. Please cite me a case that was dismissed because the defendant lacked standing. I would be interested to see the jurisprudential foundation of this assertion.

        3. “Greg – this is a critical point you keep on missing: BOTH sides need to satisfy standing.”

          Not according to ASARCO. People keep attempting to pretend that ASARCO doesn’t exist and/or doesn’t count. Dennis essentially says that it doesn’t exist by claiming that the decision doesn’t discuss the standing of particular parties, when it clearly does. Ned essentially says that it doesn’t count because “everything is Federal,” as if the actual issue was not a “case or controversy” requirement in Article III that neither applies to the States nor to Federal administrative agencies.

          Repeatedly generalizing from sweeping statements made in non-analogous cases does not suffice. Dicta is not controlling; the specific supercedes the general, and on and on. You presumably learned these principles in law school. ASARCO created an express exception and, unless that exception is expressly overruled, cannot be ignored. It may not be precisely on-point and controlling, but the cases that are being cited to say that this decision was wrong are even less on-point and even more factually distinguishable.

    2. That is not correct.

      The issue in DaimlerChrysler was whether the plaintiffs, when the case was removed from state court to federal court, had standing in the district court where they were the party seeking relief. Not whether there was standing at the Supreme Court to be a respondent.

      I feel there is a (understandable, given the state of the law) conflation in many of these posts, including Dennis’, about which party needs to show standing, when that party’s standing becomes relevant, and later review of standing issues that may have arisen at an earlier point in the case.

      For example, anon mentions Lujan, but that case concerned the Supreme Court evaluating whether the plaintiff had standing in the district court, not whether the respondent needed to show standing at the Supreme Court.

      The standing analysis can change and shift, based on who is invoking the jurisdiction of the court. Once the party invoking jurisdiction of that court shows they have standing, the standing of the other side (who is not invoking at that stage) becomes irrelevant, although a higher court may still review whether a lower court’s determination that there was standing was correct.

      As a practical example that shows the irrelevancy of respondent-standing: relatively frequently (usually at least once a term), the Supreme Court will appoint an amicus to argue to defend a position because the parties are not defending that decision. There is never a question as to whether the amicus has “standing” or whether the case is properly before the court; the petitioner has shown Article III jurisdiction. Rather, the amicus aids the court in giving the adversarial presentation that Greg points out is instrumental to the judicial system. Otherwise questions arise regarding fairness, and opportunity, to seek relief.

      I add a fifth option to Greg’s analysis of what the Court could have done: it could have found that the EFF did not have standing, and appoint an amicus to defend the PTAB’s position. But who better to appoint as amicus than the party that brought the challenge all along, and who by statute has a right to participate? Under this option, it comes full circle and the EFF is allowed to participate. The standing of the appellee ends up an academic question.

      1. I add a fifth option to Greg’s analysis of what the Court could have done: it could have found that the EFF did not have standing, and appoint an amicus to defend the PTAB’s position. But who better to appoint as amicus than the party that brought the challenge all along, and who by statute has a right to participate? Under this option, it comes full circle and the EFF is allowed to participate. The standing of the appellee ends up an academic question.

        Zing.

        Nice.

      2. Jane,

        The standing analysis can change and shift, based on who is invoking the jurisdiction of the court.

        is exactly the point under contention – and the point that you are assuming.

        It is simply NOT a ‘let’s look at one party” issue.
        BOTH parties need to have standing.

      3. Sigh,

        The (let’s not allow dialogue filter has already kicked in, so pleas pardonthe potential (re)post:

        Jane,

        The standing analysis can change and shift, based on who is invoking the jurisdiction of the court.

        is exactly the point under contention – and the point that you are assuming.

        It is simply NOT a ‘let’s look at one party” issue.
        BOTH parties need to have standing.

      4. Jane,

        Where do you find this authority of the Court to “appoint an amicus” to stand in for a party that lacks standing?

        Malcolm celebrates a “zing” and does not realize that you made up a power completely out of thin air.

        1. Where do you find this authority of the Court to “appoint an amicus” to stand in for a party that lacks standing?

          N.B., the word “standing” does not appear anywhere in Art. III, nor does Art. III specify the degree of proximate causation required to give one “standing.” The various “standing” doctrines that the Court has crafted are the Court’s own creation—not some unambiguous mandate of the constitutional text.

          Given that the Court invented most of what we call “standing” doctrine, the Court is free to invent exceptions to the doctrine as it deems proper or convenient.

  8. The problem with [the ASARCO] holding is that it speaks only to the case as a whole rather than standing of the particular party.

    I guess I do not see why this is a “problem.” Characterizing this as a “problem” seems to me a case of assuming the consequent.

    Big picture: Art. III does not say anything about “concrete and particular,” or “advisory opinions,” or who does or does not need standing. All that Art. III (§2) says is that “[t]he judicial power shall extend to all cases, in law and equity… [and] to controversies… .” All of our standing law is merely a gloss on those actual words, but those are the words that have real legal effect. One should not get lost in the gloss and lose sight of the actual text.

    The Supreme Court (wisely, in my opinion) has built a standing doctrine on that text because common-law justice has historically worked on an adversarial system. We need adversaries to prosecute cases, because that way the judges do not need to do so much hard work of ferreting out relevant facts or applicable but long-forgotten precedent. They can count on the fact that any relevant fact or precedent will be advantageous to one side or the other, and can therefore count on the parties—acting in their rational self-interests—to bring all relevant facts and precedents to the court’s attention.

    In other words, standing is not really about “concreteness” or “advisory opinions,” or whatnot. These are just words that we have used, over the years, to decorate the fundamental intuition that real adversaries are necessary to make our system work. We do not want binding precedent to form based on a one-sided presentation of facts or precedent in a given case. That is the evil that our standing doctrine is meant to prevent.

    So, take that principle and bring it back to this case. There are really only three ways that this case can end.

    (1) You can say “there is not real skin in the game on both sides, so the case cannot go forward. The judgment below stands with no chance of appeal.” This would be obviously unjust to the appellant here, who clearly has suffered a loss and can hardly be faulted if the one who dealt the loss has no concrete interest in the proceeding.

    (2) You can say “the appellant has skin in the game, but not the respondent, so only the appellant may participate in this appeal.” That achieves exactly the lack of adversarial rigor that our standing doctrine is meant to prevent. In other words, this approach achieves a sort of formalistic reading of standing precedents in such a literal and ham-handed manner as to completely defeat the point of standing in our common-law system.

    (3) Finally, you can say, as the court did here, “well, we have two parties that really are adverse, hammering it out, and at least one of them has real skin in the game. That is good enough.”

    It is clear to my mind that the CAFC made the right choice in this case.

      1. What about Lujan? It does not seem particularly germane to the present question. The appeal in Lujan was from a district court. This appeal is from an Art. I tribunal. Lujan held that a plaintiff needs a concrete and particular injury to bring suit in a district court, but that point is scarcely relevant to the present case, where everyone agrees that Art. III standing requirements do not apply to Art. I tribunals.

        1. Greg,

          I am not going to hold your hand.

          But I will point out that you seem on the wrong track focusing on where the item is coming from (standing is not a question on the location from where the case is coming from).

          Think instead of standing in the reviewing court (and why the Supreme Court kicked Lujan out).

          1. Think instead of… why the Supreme Court kicked Lujan out…

            Lujan v. Defenders of Wildlife, 504 U.S. 555, 578 (1992)

            We hold that respondents lack standing to bring this action and that the Court of Appeals erred in denying the summary judgment motion filed by the United States.

            What does that mean, “respondents lack standing to bring this action” (emphasis added)? Obviously “this action” does not mean the appeal to the SCotUS, because (by definition) the “respondent” does not “bring” the appeal. Quite the contrary—in the main the “respondent” usually files briefs actively resisting certiorari.

            Rather, when Justice Scalia wrote that the respondents (i.e., the “Defenders of Wildlife”) “lack standing to bring this action,” clearly what the Court meant was that the Defenders of Wildlife lacked standing to file suit in the court of first instance. But, of course, that point can only matter because in this case the court of first instance was an Art. III court, with standing requirements.

            That is a materially different circumstance from Personal Audio, where the court of first instance was an Art. I tribunal without a standing requirement.

            1. when Justice Scalia wrote that the respondents (i.e., the “Defenders of Wildlife”) “lack standing to bring this action,” clearly what the Court meant was that the Defenders of Wildlife lacked standing to file suit in the court of first instance. But, of course, that point can only matter because in this case the court of first instance was an Art. III court, with standing requirements.

              Right. Imagine the result of Lujan if, as part of the Endangered Species Act, Congress had created an agency-administered procedure to allow anybody in the public to challenge Congressional interpretations of the Act, and specified that appeals of agency decisions following those proceedings would be heard by the Federal Circuit. Is there a standing problem on appeal when Congress loses to John Doe because John Doe couldn’t have brought the case in the first instance? Of course not.

              Our Constitution isn’t perfect but it’s not clear why we would want to pretend that it’s a gun pointed at our face. “We” meaning “most people.” Obviously there’s a certain contingent out there who views the Constitution “differently”, shall we say.

    1. There is a fourth option: the CAFC vacates the PTAB decision. Think about how the PTAB would react: the CAFC precedent would likely result in the PTAB denying all petitions by “disinterested” parties. Perhaps petitions by disinterested parties could be treated like anonymous reexam requests, though the USPTO would probably have to change some rules.

      1. I do not think that the PTAB has it set up such that it could use “disinterested” as a rationale for denying petitions. Such would go against the direct words of Congress (whereas, as noted to Greg, the question of standing is NOT a matter for the proceedings in the PTAB).

      2. That is a good point. You have put your finger on a fourth option that I did not address above.

        What you are suggesting is that the CAFC should impose a de facto standing requirement on PTAB proceedings. The PTAB can institute a proceeding where the challenger lacks standing, but if the patent owner should be dissatisfied with any aspect of that proceeding’s outcome, the patent owner can appeal and the CAFC will vacate the PTAB proceeding. Under such circumstances, no challenger will ever bother to file a petition unless the challenger has standing, amounting to a de facto standing requirement.

        I suppose that there is nothing legally flawed with this outcome. To my mind, it seems rather contrary, however, to the democratic spirit envisioned by the Constitution to have the court create a standing requirement that Congress did not impose, especially given that it is hard to point to any particular constitutional text that compels such a requirement.

        I still think, even in light of this previously unconsidered fourth option, that the CAFC got this case correct.

        1. ? Greg, rendering IPR or reexam meaningless by allowing automatic vacates simply by filing an appeal against any PTAB decision if a petitioner lacked personal standing, or lost standing by the patent owner giving them a license, would defeat the intent of both the reexamination and AIA statutes, which allow any person to request institution, as has been done for years now.

          1. Allowing unlimited bites at the apple is not what Congress intended either. Congress never envisioned that disinterested parties would shoulder the expense of IPR. The loophole was there, and it is being exploited. Combine this with the PTAB’s unduly narrow view of “real party in interest” and general refusal to consider privity, the one year statute of limitations for a defendant to file a petition becomes irrelevant.

            This is also an entirely unfair proposition for a patent owner. How many times must a patent owner endure validity attacks at the PTAB? As it stands, there is no limit. The burden of defending a patent at the PTAB is immense.

            1. Allowing unlimited bites at the apple is not what Congress intended…

              Agreed, although I am not sure what this observation has to do with the case at hand.

              Congress never envisioned that disinterested parties would shoulder the expense of IPR.

              Really? How do you know that? From where I am standing, the idea of allowing do-gooder civic groups to challenge patents that have a negative impact on a whole community is a feature rather than a bug. On the assumption that Congress is supposed to intend good public policy outcomes, is there a specific reason that we should conclude the opposite—that Congress did not intend disinterested parties to be permitted to challenge patents in IPRs?

            2. How many times must a patent owner endure validity attacks at the PTAB?

              As many times as there are parties who want to attack the patent with their own arguments and art.

              As it stands, there is no limit.

              So? The Constitution doesn’t guarantee you a patent right that can only be challenged X times. Neither does the statute.

              If you don’t want to be challenged over and over, come up with great inventions and claim them properly. And be reasonable with your licensing efforts. Successful people do this all the time.

            3. Paul, on the contrary, both reexaminations and IPRs were intended as low cost alternatives to litigation. Standing of the petitioner was assumed.

          2. [A]llowing automatic vacates simply by filing an appeal against any PTAB decision… would defeat the intent of both the reexamination and AIA statutes…

            In case I was not clear about this above, I agree. I think that the CAFC was wise not to create a de facto standing requirement for PTAB proceedings.

          3. Paul, on the contrary, both reexaminations and IPRs were intended as low cost alternatives to litigation. Standing of the petitioner was assumed.

            The use of the process by parties who are nothing more than meritorious interlopers had to be entirely unexpected.

              1. One wonders just how that got thru congress when the whole point was to provide a low cost alternative to litigation. Did they fully intend that the new procedure be abused, or was that just an oversight?

                Read the excerpt from Patlex below.

                Nothing has changed since reexaminations. They propaganda remains the same. Congress is being sold a bill of goods by people who are not being entirely honest.

          4. From Patlex, “The bill’s proponents foresaw three principal benefits. First, the new procedure could settle validity disputes more quickly and less expensively than the often protracted litigation involved in such cases. Second, the procedure would allow courts to refer patent validity questions to the expertise of the Patent Office. See Senate Hearings at 1, wherein Senator Bayh said that reexamination would be “an aid” to the trial court “in making an informed decision on the patent’s validity”. Third, reexamination would reinforce “investor confidence in the certainty of patent rights” by affording the PTO a broader opportunity to review “doubtful patents”. 126 Cong.Rec. 29,895 (1980) (statement of Rep. Kastenmeier).”

            I see nothing in there about interlopers.

    2. (2) You can say “the appellant has skin in the game, but not the respondent,

      Which is false. We all have skin in the game.

      1. We all have skin in the game.

        Please see (and at least try to square your assertion with) Lujan.

        You keep on pretending that exactly that type of “we all have skin” was expressly rejected by the Supreme Court.

        1. Please see (and at least try to square your assertion with) Lujan.

          Lujan is distinguishable from this case for reasons already given by several commenters, including myself, in this thread. Take two minutes and catch up.

    3. Greg, the considerations of ASARCO are not present-respect for States Rights.

      The Supreme Court routinely vacates lower court judgments where the appellee had not standing to sue in the first place or lost it because they mooted the case in some fashion. See, e.g., in re Lockwood. See, also, DaimlerChrysler Corp. v. Cuno, 547 US 332 (2006).

      Vacating here would impose a defacto standing requirement for IPRs.

      1. Vacating here would impose a defacto standing requirement for IPRs.

        Technically not true.

        The actions in (and only in) the Article I tribunal remain as they are.

        That much Congress can – and did – do.

        Where this goes astray is in the next step that Congress laid out: the path to a different forum (and the fact that THAT different forum DOES have limits on its authority vis a vis standing.

        Congress wrote a law saying, “go there” while the Constitution provides limited authority which basically says that Congress cannot say “go there”***

        ***at least, cannot say “go there” to everyone invited to start a process in an Article I forum.

        This appears to become exactly the case that you have stated that Congress may not do: legislate standing to be IN an Article III forum.

        In this instance, since it is the entire single legislation of the AIA that creates the entire path, the beginning of the path (being in Article I land) cannot control as per a direct (and perhaps crabber) view of ASARCO would at first glance indicate.

  9. DCL, I think the best statement of the law is this: at least one party on each side has to have standing. Standing of an appellee cannot rest upon the standing of the appellant, which was effectively what Judge Newman held here.

    If Judge Newman were correct, the doctrine of mootness would be in trouble. A party can settle a case but continue in the appeal as an appellant, and rest its standing on the standing of the opposing party. This would permit, for example, a plaintiff to continue to try to reverse a case which if reversed is already settled.

    However, you may want to review Perry v. Schwarzenegger at the Ninth Circuit that referred the question of standing of a public interest group to defend the constitutionality of a state referendum. The question was certified to the California Supreme Court, which ruled, in Perry v. Brown, that in this particular case, the public interest group did have a right to defend the constitutionality of the state referendum because they were the authors of that referendum and worked to get that referendum on the ballot in the first place. Thus they had particularized harm.

    1. Ned, I do not think your second paragraph is an accurate summary of this decision on standing.
      But I would like to see Dennis or others comment on the 9th Cir. Perry v. Schwarzenegger decision you have cited in your third paragraph. Also, in a blog below you had cited a law review article on standing for [intervening?] defendants – please cite it again here.
      Even if this decision IS vulnerable to Sup. Ct. reversal, its facts are not appealing for getting cert.
      This EFF standing grant decision seems relevant to this other [also sua sponte J. Newman panel raised] standing question in Knowles Electronics v. Matal as to PTO Solicitor participation in appeals to support PTAB decisions.

      1. Hall, Matthew I. “Standing of Intervenor-Defendants in Public Law Litigation.” Fordham L. Rev. 80 (2011): 1539.

    2. Dear All,

      Hollingsworth v. Perry, 133 S. Ct. 2652, 2661-63 (2013) (observing that Article III requirement of an “`actual controversy’ persisting throughout all stages of litigation” implies that standing “must be met by persons seeking appellate review, just as it must be met by persons appearing in courts of first instance,'” and the Court proceeds to analyze appellants’ standing under Article III test quoting Arizonans for Official English v. Arizona, 520 U.S. 43, 64 (1997).

      And a famous footnote on the separate and distinct Art III standing requirement on appeal:

      Steffel v. Thompson, 415 US 452, 459-60, 459 n. 10 (1974):
      [FN 10] The rule in federal cases is that an actual controversy must be extant at all stages of review, not merely at the time the complaint is filed. See e. g., Roe v. Wade, 410 U. S., at 125; SEC v. Medical Comm. for Human Rights, 404 U. S. 403 (1972); United States v. Munsingwear, Inc., 340 U. S. 36 (1950).

      1. Thanks Jonathan. It looks like the California Supreme Court/Ninth Circus was overruled/reversed one more time. 5-4. Odd mix of players at the Supreme Court. Roberts, Breyer, Kagan, Scalia, Ginsburg for the majority, Kennedy, Thomas, Alito and Sotomayor for the dissent.

      1. John, Since Personal Audio has a right to its day in court, the usual procedure is for it to move the court of Appeal to vacate the lower court judgment. The appellate court has no other jurisdiction.

        1. Ned,

          How do you explain ASARCO? There, the Supreme Court recognized that the respondent would not have had standing to bring the suit in federal court in the first instance.

          Yet the Supreme Court did not vacate the state court opinion. They decided the case on the merits, and allowed the respondents (again, parties who would *not* have had standing to sue in federal court) to participate in the appeal.

          I urge you to read the entirety of the ASARCO opinion. The court explicitly discusses why vacating the state court decision would not be proper.

          1. Jane, consider my post above where I quote from ASARCO. To simply vacate the judgment of the Arizona courts would be to impose a Federal standing requirement on them. That is why the court took the case rather than vacate.

            If the case were first filed at the federal level, the result would have been a summary vacatur. That is clear.

          2. Jane,

            Much like your attempt with the Court appointing an amicus (wherein such was untethered to standing, being that actual standing has been met), here too, your view of ASARCO is crabbed.

            If or when my posts escape the “don’t be involved in actual dialogues” filter, the supporting points of this statement in my other comments should be clear.

  10. It is just unbelievable just how bad the judges are at the CAFC. There are only a couple that are qualified to sit on the CAFC. All the judges since O’Malley were select by Google (presumably with pledges to burn the patent system down, i.e., to get it under control.)

    It is a goon squad of loons that often don’t even have science degree and don’t have any experience with innovation or the real world. Some give us proclamations about science that are counter to what scientists say. Some openingly go against the laws. Most are judicial activist that hate patents and want to end the patent system.

    And be clear. What bothers me is they do not apply the law and that they are unqualified in that they don’t have science backgrounds with experience in patents and innovation.

    We are a third-world country. I strongly advocate disbanding the CAFC.

    Yes, there are a few that are respectable. Newman, O’Malley (not qualified, but a respectable person that tries to apply the law), and Chen.

    1. Night, you complain about just how bad this decision is and then speak highly of Judge Newman. But she wrote this opinion just as she wrote the opinion in Patlex that held reexaminations to be constitutional.

    2. I strongly advocate disbanding the CAFC.

      I cannot say that I “strongly” advocate disbanding the CAFC, but I am basically in agreement.

      To my mind, it is problematic that we created a subject-matter specialized court out of three separate pre-existing courts: the court of customs appeals; the CADC’s appellate jurisdiction over patent office appeals; and the court of federal claims. These are really three fairly specialized courts, but expertise in one of those three subjects really does not qualify one to work in the other two areas. Lumping them together was really a matter of administrative and budgetary convenience for the Congress, and not based in any sort of actual public policy advantage.

      We ought to cull the patent & trademark cases out of CAFC jursidiction and create a special court devoted to only those issues. I would favor transferring copyright and trade secret jurisdiction to this hypothetical court as well, for a sort of pan-IP expertise. We should also require that all of the judges on this court have at least a bachelors degree in math, physics, chemistry, biology, or engineering. This would be better for both the court itself and for the litigants appearing before the court.

    3. This was a general comment. This opinion is a bit off, but the mix of IPRs with dist. courts is off. The whole IPR structure is just wrong and this type of opinion is the consequence.

  11. However, the Federal Circuit dismissed Consumer Watchdog’s appeal (it lost the case at the PTAB) on standing grounds.

    Stare Decisis appears to not matter at all from panel to panel at the CAFC.

    Prost not paying attention…?

    And yes, standing is required separately of each party – for that party. While Malcolm has recently provided a single word response to the the negative of this, declining to back up his view, I provided a link when this topic came up a while ago to a neutral third party that explicitly showed that standing IS required by each party, even though standing is predominantly asked of only one side. This is so because the other side so often clearly has standing and the courts tend to not be as complete as they should in addressing the issue (lazy shortcuts, reminiscent of eBay…)

    I would also submit that the facts of Lujan and the “public interest” angle that is being ployed (in the parallel battle as to the legal nature of patents themselves: personal property versus public right) is (or should be) illuminating here.

    How could Lujan be distinguished?

  12. In its book of tricks to erode property rights and engineer takings could a Left turning State, hypothetically, set up a system allowing “other” parties to challenge those property rights, stack the determining body with the “right” kind of adjudicators, proceed with the erosion and taking, and then snidely, to avoid any appeals, hide behind a some fiction, that there is no “adverseness”…

    that under a Constitution set up to protect individuals against government action, someone whose rights have been stripped away, by government, really can do nothing… because there’s no real conflict with that all important “other” party…

    Nice trick.

  13. The post title strikes me as unfair. The post itself not so much, but do you think that the Court is misreading ASARCO? And are you sure you’re reading Camreta and Lyons properly?

    Camreta says what it says, but that statement appears to be dictum and also either (a) mischaracterizing Lyons, or (b) just borrowing a phrase from Lyons rather than invoking Lyons as legal authority. Camreta deals with a cert petition by a party that nominally prevailed below (officers won qualified immunity), which isn’t what’s going on here. The court below held that the officers’ conduct violated the constitution but that that the officers were nonetheless entitled to QI. Since the officers had “won,” the question was whether they had standing to file a cert petition. I don’t think there was any issue in Camreta of whether the respondent had the right to show up in court. In that light, the passing statement in Camreta that the appellee must also have a stake in the outcome seems like dictum, or at the very least targeted at a different issue.

    Camreta quotes the phrase “that concrete adverseness which sharpens the presentation of issues” from Lyons, but Lyons didn’t use that phrase in the way your post (and arguably Camreta) suggests. Lyons deals with mootness and standing, but doesn’t seem to say anything about whether the appellee must have a stake in the outcome to be able to show up on appeal.

    But even if the court’s right here and not overlooking Camreta/Lyons, I wonder what would have happened if the court had reversed and EFF had wanted to file a cert petition. EFF would be the one invoking a court’s jurisdiction and would presumably need to show standing… It would be somewhat odd if a party could kill a patent at the PTAB, appear in the CAFC to defend that result on appeal, but then not be able to file a cert petition because that’s the one time they’d need to show standing.

    Relatedly, if you have PACER or law360 access…

    In late June, 2/3 of the same panel (Newman, Clevenger, Wallach) issued an order in Knowles v. Matal, No. 16-1954, asking the PTO Solicitor and the appellant to brief questions regarding whether the PTO director (a) had standing to intervene in PTAB appeals, and (b) needed to have standing to intervene (I’m paraphrasing).

    On July 31, the PTO Solicitor filed its brief, which makes some similar points and cites the same ASARCO case as Judge Newman’s opinion here does. link to law360.com Maybe the PTO Solicitor’s brief influenced this opinion; maybe it didn’t.

    1. You are again making an assumption on the point to be proven, dcl

      As I recall, it was I’m comversation with you that o provided that neutral third party reference drawing out the very item you presume (and which is the point to be proven).

    2. [T]he PTO Solicitor filed its brief, which makes some similar points and cites the same ASARCO case as Judge Newman’s opinion here does. link to law360.com Maybe the PTO Solicitor’s brief influenced this opinion; maybe it didn’t.

      One way or another, this EFF decision appears to me to indicate that the PTO is going to win this particular argument.

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