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.
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.
Was that dicta, or something less than dicta….?
(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.
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?
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.
“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?
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.
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.
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?
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.
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.
This is simply not so. Not in the legal meaning of the term [“adverse”].
Black’s Law Dictionary, “adverse”
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”?
Asked and answered: Lujan.
Did Lujan meet the legal definition that you offer here?
Why did they get thrown out then?
On gloss?
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.
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.
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.
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.
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,
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
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.
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.
“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.
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.
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.
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.
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.
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.
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)
“ASARCO does NOT hold what you think it does.”
Oh. Then I concede to your entirely unstated interpretation. Not.
“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.
“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.
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.
“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.
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.
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.
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.
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.
“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.’
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.
“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?
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.
“it is far clear that the distinction…”
Apologies. “it is far from clear that the distinction…”
“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.
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?
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.
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.
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)
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:
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.
“… 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.”
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.
[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.
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?
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.
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).
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?
“ 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.
editorial control choices hamper attempts at dialogue
LOL
That’s not what’s happening, “anon.”
But kudos for recognizing that you are only “attempting”.
You really don’t get these things Malcolm.
At all.
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.
I think we don’t have evidence regarding that issue b/c the PTO does not require such evidence when conducting an IPR.
Further, 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.
How does this fit with MEDIMMUNE, INC. v. GENENTECH, INC.?
Pika, depends.
Ned,
Is the following sentence: “ ” just dicta? Would you agree that infringing a patent is not needed to create a sufficient case-or-controversy?
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.
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
Also slightly OT but today in AIA America, a Hughes-penned opinion gets into the Seventh Amendment and finds no right to a jury trial to resolve dispute over attorneys fees requested under Sec 285 of the Patent Act.
link to cafc.uscourts.gov
“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.
“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.
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.
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.
Remember, folks: “anon” is all about “patent quality.”
Try to believe it.