It is difficult for me to judge the merits of the Oil States constitutional arguments as I am neither a legal historian, a constitutional law expert, nor an expert on administrative law. What I do know is that it would be a rather big deal if the Supreme Court ruled that the IPR regime is constitutionally prohibited.
My question of the day:
Assuming hypothetically that IPR is ruled unconstitutional, how should the courts and PTO deal with the thousands of patents whose claims have already been found unpatentable and cancelled by the PTAB?
An easy practical answer is that Oil States would effectively overrule those administrative decisions and thus removes any preclusive impact of an IPR cancellation. That approach runs into significant problems when a court has already relied upon an IPR cancellation to issued a final judgment (with appeals exhausted). Our federal courts strongly favor finality of judgments and are wont to revisit those judgments even when later evidence suggests that the judgment was based upon faulty information.
I should note here, however, that IPR cancellations or ordinarily not relied upon for their preclusive effect, but rather courts hold essentially that a patentee has no standing to assert cancelled claims – the patentee’s cause of action goes away. In a property sense, the patentee no longer has any property right to the cancelled claims. With that theory in mind, it is not clear to me that win for Oil States would automatically annul prior IPR final decisions. Rather, those already-cancelled claims are likely to require a revival action by the PTO before the patents are again assertable.
link to washingtonpost.com
The Google power.
I don’t understand your use of “wont” in the article. Seems to me it would have been correct if you had used the virtual opposite: “loath.”
Wont: one’s customary behavior in a particular situation.
Loath: unwilling; reluctant; disinclined; averse.
Which is the meaning you intended? I suspect it is the first:
“Our federal courts strongly favor finality of judgments and are [reluctant] to revisit those judgments even when later evidence suggests that the judgment was based upon faulty information.”
or
“Our federal courts strongly favor finality of judgments and [customarily] revisit those judgments even when later evidence suggests that the judgment was based upon faulty information.”
Professor Crouch: “That approach runs into significant problems when a court has already relied upon an IPR cancellation to issued a final judgment (with appeals exhausted). Our federal courts strongly favor finality of judgments and are wont to revisit those judgments even when later evidence suggests that the judgment was based upon faulty information.”
Yet they don’t strongly favor finality of patentability judgments of the Patent Office, do they? Even in the face of faulty information. Why does finality matter for litigants but not patent holders? They invest in inventing, they go through the costly process of proving the merit of ownership rights in their inventions, they rely on those ownership rights to conduct their business, and yet the legal system is happy to sweep that ownership away with little deference, and not just with IPRs, but with fact-free section 101 analysis, by ignoring trial-court findings of fact, and other ways. Why is finality a legitimate goal for courts and affected parties but not for patent holders?
A PTO administrative decision is not a final decision of a federal court. Neither is a Federal District Court decision a final decision if it is still on appeal, and/or has not concluded the calculation of damages or other judgement aspects.
But the main issue under discussion here is the potential reopening under FRCP 60 of a large number of truly final decisions of District Courts that were based directly on final claim invalidity decisions based entirely on a statutory proceeding when that statute is later declared unconstitutional.
I think the Part II Dennis should ask
“What will Google and its PR machine will do ?”
Given this new revelation on what it does when someone on the left tries to go against Google Gospel
link to nytimes.com
PTAB “Final Written Decisions” are inherently advisory as they do not operate by themselves to cancel the claims. Any certificates of cancellation that have issued will be null and void as ultra vires. Thus all of the 4000+ PTAB proceedings will be rendered advisory, but probably still admissible in District Court proceedings.
Patent owners that consented to dismissal of their infringement actions with prejudice shot themselves in the foot. This may cover the majority of patents killed by the PTAB.
Patent owners that had actions dismissed without their consent are few and far between. The only question is whether they can claim damages for the PTAB era once their patents are restored, and by what rule/mechanism.
Are you forgetting that the “advisory” nature will not carry into the Article III forum (for at least the different BRI standard)…?
Nope. If the finding of “unpatentability” hinged on BRI, then the District Court will have to re-evaluate novelty/obviousness under the correct construction.
That very “will have to re-evaluate” removes the advisory nature, as you will be removing the very substance of what is being “advised.”
So, your “nope” is the opposite – it is a “yep.”
Which in a case like Oil States, would save the patent. Because sealing by mechanical lockdown is new and non-obvious over sealing by hydraulic means. Article III judges and juries understand that kind of thing…
Lol — really? The sealing arts are that primitive?
MM: you constantly judge inventions just off the top of your head. What a joke you are. The entire basis of patent law is to judge inventions based on prior art and obviousness. Anyone that has spent anytime in this field or inventing knows that hindsight can make even the best inventions look obvious.
Your behavior is at best juvenile. (But, we all know you are being paid to behave this way.)
(Note too that MM claims all these inventions are junk and easy and yet MM hasn’t invented anything and has to slave away to earn his money.)
you constantly judge inventions just off the top of your head.
Correct me if I’m wrong but you’re the one who asserted that this junky patent — tanked by both the PTAB and the CAFC, if I’m not mistaken — is “non-obvious “without any explanation.
MM hasn’t invented anything
Well, that’s false.
MM … has to slave away to earn his money
Oh, I love it when the maximalists true colors come out. Thank you! LOL
>Correct me if I’m wrong
You are wrong.
The rest of your post does not address the substantive criticism of you constantly ranting about “junk” claims using your own private “feelings” on the matter. No prior art. No obviousness argument. Just a 3 second review by MM with a pronouncement that the claims are “junk.”
Most unprofessional.
Correct me if I’m wrong
You are wrong.
LOL — right, it was “Invention Rights”, the mewling maximalist sycophant who you are leaping in to defend. Huge difference.
MM, nonresponsive.
“Correct me if I’m wrong”. No one has that kind of time (except yourself).
Which means Greene’s Energy would have to use old fashioned drilling or pay for a license. Kind of like it used to be when inventors held exclusive rights to their discoveries…
I have no idea how this issue will end (although I agree it is a very interesting question). I do have a suggestion about one possible way to resolve the issue:
Assume the SCotUS holds IPRs to be unconstitutional in Oil States. By definition, the only patents that can have been unsettled by the now-defunct IPR process are the ones that involved a change (mostly cancellations, but in a few circumstances there is also the granted amendments).
I suppose that it is possible that the SCotUS will also hold ex parte re-exams unconstitutional on the same grounds as IPRs, but the more likely supposition is that the Supreme Court simply will refuse to consider ex parte re-exams (which are not properly before the Court in Oil States). Could not the PTO simply drag all claims that were cancelled or amended in IPR back into ex parte re-exam?
The work of sending office actions will be fairly slight, because one can just copy and paste the reasoning of the PTAB decision. There will be no shortage of examiners to do this copying and pasting, because all of the PTAB ALJs who had been doing IPRs will now be available for this ex parte re-exam work.
There will be an unpleasantly large bolus of ex parte re-exams to handle all at once as these EPR proceedings are prosecuted, but the work will be only temporary, and, as noted above, there is (in this hypo) a corresponding boom in staff to handle the boom in work. At the end of it, most of the claims that the PTAB found unpatentable in IPRs should end in the same manner in the EPRs. This amounts to fairly minimal disruption in the end (unless and until the SCotUS takes cert on a challenge to EPRs).
Greg, wow!
I suppose it largely depends on whether the court deals with the case law regarding Article III/Public Rights interface, or regarding the Seventh Amendment; or whether it resolves the issue based upon McCormick Harvesting, a case involving reexaminations.
Exactly, Ned. How and why the Court decides Oil States will have an important effect on the viability of my suggestion. The Roberts Court has a well established reputation for narrow holdings, so I guess that I am expecting them to decide this case on a ground that will not settle the ongoing validity of EPRs, but if they do decide this case so broadly as to do away with EPRs as well as IPRs, then obviously my suggestion is no good.
Greg, that’s an interesting idea, and Director-initiated ex parte reexaminations are specifically provided by statute. But do you think the PTO would be that creative and responsive, and if it would simply raise another constitutional attack?
I do think it likely that this strategy would raise another constitutional attack, but I am not sure that this would be a bad outcome. If there is an unconstitutional feature of our patent system kicking around, it is better that we know it than not know it.
Of course, if the ex parte re-exam procedure is challenged and held unconstitutional, then my suggestion in #9 does not actually solve any problems, but we do not know that until we try.
As for whether the PTO would want to do this, probably not. EPRs without an initial petition bring no fees, so from the PTO’s perspective this is a lot of work for no reward. I would be pleasantly surprised, however, if the PTO were to decide that the public good mattered more in this instance than the PTO bank balance.
The PTO does not have authority to operate outside of its bank balance.
Your “for the good” presumes that such would indeed be “for the good,” and given the caveats already present about possible Constitutional infirmity, that is a presumption that should not go unchallenged (BY the PTO in whatever decision process they engage in).
The PTO does not have authority to operate outside of its bank balance.
Quite right. The PTO cannot operate outside of its Congressionally allotted budget. If the EPR scheme that I am suggesting really would bust the budget, then it is a no-go. As I noted in my hypo above, however, the budget for the necessary staff is already allocated (all of those ALJs currently hearing IPRs and PGRs), so it is not clear to me that these hypothetical EPRs would bust the budget.
[T]he caveats… about possible Constitutional infirmity… should not go unchallenged [by] the PTO in whatever decision process…
Hm, that seems wrong to me. Executive agencies should not refrain from exercising their statutory powers because such powers might be unconstitutional. If the power is unconstitutional, then it should be challenged once exercised, and let the courts decide.
Interest thoughts, Greg. My guess is that, rather than the office sua sponte initiating ex parte reexams, it would hold back and wait for previously-successful IPR-institutors to re-file their IPR offerings as requests for ex parte reexam – thereby collecting fees again in order to do what will amount to the same work. And then collecting fees after that when the disgruntled patentees appeal the findings of the reexam examiners.
Ka-ching!
This seems regrettably plausible.
If there is an unconstitutional feature of our patent system kicking around
Pretty sure there’s a tiny swath of wingnerts (over-represented in the patent bar, of course) who believes that the whole thing is “unconstitutional”, along with the rest of the so-called “administrative state”.
Or maybe they figured out some “exception” for patents. A really principled one! Sure they did.
Greg,
You assume one not-so-minor point:
You assume your that all of these items are somehow back in the Article I forum.
Yes. I thought I made clear (“… it is possible that the SCotUS will… hold ex parte re-exams unconstitutional…, but the more likely supposition is that the Supreme Court… will refuse to consider [EPRs]…”) that the continued existence of an Art. I forum to judge claims post-grant is an assumption of my proposal. If the Court decides Oil States on the broad grounds that all Art. I fora for post-grant reconsideration of patent claims are unconstitutional, then my suggestion is still born.
That was not the point of my post at 9.3.
Even if the Supreme Court decides narrowly, you must STILL put all of those items under discussion back into the Article I forum.
Would the Ex Parte examination process really be able to bear the weight of that task?
Would the Ex Parte examination process really be able to bear the weight of that task?
In a common law justice system like our own, there is only one way to find out.
Does autocorrect really not know that “stillborn” is a word, that it should need to change it into “still born”?
At any rate, the issue of IPRs has some analogies to the issue of arbitration that the nation is currently facing. Both seek to limit free access to the courts, and should be met with extreme skepticism.
Freedom! Smell it.
Meanwhile one of the major political parties is transparently courting white supremacists and doing everything in its power to suppress or nullify the votes of brown people.
But let’s worry about arbitration and inter parte review of patents. Very serious stuff.
It turns out the same party is advocating for arbitration.
What the F is up with the CONSTANT attempts to insert non-patent rants into the comments?
Prof – seriously – just how many times do you have to expunge this stuff?
non-patent rants
Like rants about arbitration?
You’re totally not a hypocrite, “anon.” You’re very deep and serious! And objective. Yes, really and truly objective.
LOLOLOLOL
We’ll try not to talk about r@ cism if it hurts your fee-fees. After all, we live in a post-r@ cist society. Republi kkkans told us so, so it must be true.
Your reply is nonsense – and nonsensical.
If you have a point, make it.
And please – address your “point” to what I have actually stated and not the feverish delusions that plague your troubled and self-anointed watcher over the fields of patent rye (and any other ISMs that grasp your) mind.
Do not falsely attribute views – especially non-patent law views. This is simply NOT the forum for that (no matter how many times you post the same dreck and no matter how many times that dreck IS and is not expunged.
Actors within that party have demonstrated that they will use any rule or precedent they can in a bad-faith manner to achieve whatever result they want. Sure, some issues are more important than others, but I have very little knowledge in a lot of those areas, and there are others far more qualified than me to address those issues.
Meanwhile, I would prefer there not be precedent on the books finding that executive branch agents can adjudge their own jurisdiction and it is not appealable to article III courts. Sure the issue might arise in the less egregious context of a vehicle designed to invalidate bad patents, but I think precedent, and rule of law, matters, and I think you do too, if you take a break from antagonizing the clueless long enough to think about it.
I have no clue what would happen. But if the Sup. Ct. is aware that more than 80% of all IPRs and CBMs have been directly tied to District Court infringement suits against the petitioner or its customers, and if all such PTO proceedings are declared void ab initio, would the Court not almost have to consider the impact on their District Courts of reopening the large numbers of those patent suits ended or stayed by IPRs?
[Not even to mention the many hundreds of suit parties that might then also want to move for a venue transfer due to the other recent Sup. Ct. decision on venue. Or any other federal agency decisions that might be affected.]
“would the Court not almost have to consider the impact on their District Courts of reopening the large numbers of those patent suits ended or stayed by IPRs?”
What Legal bearing would any of that have on the case/controversy directly before the Court (and would not wanting that “to be considered” smack of providing an advisory opinion)?
There is nothing “advisory” about an opinion that reaches that issue in this case. Oil States was involved in litigation when the IPR was filed, so there is a genuine issue in this case about what is to become of that Art. III litigation if the IPR result is tossed.
It would be completely advisory as to the all those other cases beyond Oil States (re: the very point Paul is trying to introduce).
This is called “precedent.” The Court decides in an issue in one case where the issue presents, and lower courts follow the example in every other case where the analogous issue presents. This is the opposite of an “advisory opinion.”
No Greg – what Paul is trying to introduce is NOT precedence. He is trying to introduce the calculas of all of these other matters into the decision making of the Oil States case as some type of factor for the decision that THEN will set precedent.
You mean that Paul is suggesting that the Court—when considering to rule in one case—might take into account the effect that the precedent will have in other cases? The horror!
You now retreat from the mis-characterization with a vapid ad hominem….?
Yes, there is “horror” in inducing what is otherwise advisory opinions not necessary to the determination of a present case on the merits of that case.
Especially at the level of the Supreme Court.
You are acting like you are half asleep to the many ills that the US patent system is currently experiencing because of the problem of judicial over reach.
a vapid ad hominem
Please point to the ad hominem in my 7.1.1.1.1.1.1. I do not see any. By definition, an attack on an argument is not an attack ad hominem.
“the horror” relates to feelings and NOT to an argument.
“The Horror!” is a well known reply when someone is asserting that something fairly banal is somehow intolerable (as, for example, when someone suggests that it constitutes an unconstitutional “advisory opinion” should an appeals court consider the effect of its ruling on other case, on the way to its particular ruling in a particular case). In other words, this phrase relates quite definitely to the argument at issue, and in any event not at all to a person, as would be required for it to be an ad hominem remark).
“the horror” relates to feelings and NOT to an argument.
No matter how “well known” the reply is – it is still ad hominem and not argument.
“Relating to” an argument is not an argument.
ALL feelings (and ad hominem) can be said to “relate to”
And while ad hominem generally “relates to” a person – but as a class of rhetorical vehicle, need not be so. As it is, you are STILL relating the “horror” to a particular person’s statement and impugning that person with the non-argument. As such, it very much IS ad hominem in its general sense.
as to prove the point, the hyperlink you provided is “10 perfect sarcastic responses to annoying humblebrags” – CLEARLY this falls to ad hominem.
That Justice would be so… inconvenient…. to secure and uphold, should be no impediment to its exercise.
35 U.S.C. 318 Decision of the Board.
(a)
(b)
CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.
From my understanding, the PTO may not actually be issuing such certificates. If that is the case, the claims are not actually cancelled.
Shut up Ned! Can the moderator remove Ned’s post before the PTO sees it?
Judge Rich’s Dessicated Corpse: Any judgment based on the IPR process would be void, and therefore the property right of the patent owner would be intact.
Which “property right” is that? We’re talking about the situation where the patent is pure junk and the PTO screwed up. There was no “invention”. Either the applicant is a fraud or the applicant was confused. Either the patentee is a fraud, or the patentee is confused.
So the “right” we’re talking about is simply a “right” to threaten the public with litigation in Federal Court based on a junk ptent. Unless the target pays the patentee off.
But there certainly is no “property right”. The claims are public property because they read on the prior art. That prior art is my property, not the patentee’s property. The patentee in that instance is just an example of toxic waste, contributing nothing at all of value to society and instead choosing to be a greedy extortionist.
That’s a nice way to display your abject ignorance of the legal implications. Kudos, MM.
the legal implications
What are the “legal implications” of you coming after me with a patent that is utter junk, as demonstrated by your inability to argue or amend around the prior art in an IPR or find any traction/sympathy on appeal?
Are there none?
History gets wiped out and the property you stole from the public — which was returned to the public and which I never stopped practicing because your patent was junk — is now “yours” again? Even though you still can’t explain why except that “the PTO made a mistake”? That’s how it works? According to (LOL) the “Constitution” because of Lord Cokebottle’s scribblings in Sherwood Forest in 1791?
Some country. LOL I have a better idea. Take your “revived” junk and shove it and get ready for some blowback that’s going to make you very very sad indeed.
Your feelings are noted.
“Which “property right” is that? We’re talking about the situation where the patent is pure junk and the PTO screwed up.”
Even IF true, you still have to deal with the remaining good law of the presumption of validity.
Why is it that you seem to always take the opposite view of that presumption, and deign to post as if your feelings overruled that part of the law?
“So the “right” we’re talking about is simply a “right” to threaten the public with litigation in Federal Court based on a junk ptent. Unless the target pays the patentee off.”
Must you be so very anti-patent? Supposedly, you have “work coming out of your ears” obtaining this very type of thing for your clients.
The cognitive dissonance of your feelings on perpetual display, coupled with your asserted vocation, must be causing you some serious mental harm.
There is nothing “anti-patent” about wanting junk patents tanked in IPR to remain tanked.
Good grief put down the crack pipe please.
Pardon Potential (re)Post….
You are confusing Ends and Means – again.
“We’re talking about the situation where the patent is pure junk and the PTO screwed up. ”
This is circular reasoning. You assume a patent is junk because an IPR invalidated it. And yet the same patent may have been found valid by a trial court. There’s no ground truth validity of a patent. A patent’s validity is a legal status conferred by a legal body. It’s not a function of some Internet tr0ll’s personal opinion.
IPRs might indeed kill some “junk” patents, but that doesn’t mean that it is effective at differentiating between the good from the bad. IPRs are good at cancelling all patents, not just so-called junk patents, because that is what they are designed to do.
What about claim amendments that were voluntarily canceled or amended during an unconstitutional IPR to avoid prior art?
Would those be amendments “nullified”, too? Or are these adversarial proceedings “unconstitutional” only when the patent is pure junk from top to bottom?
You mean “voluntary” after being coerced into being in the Article I forum in the first place…?
No, I mean “voluntary” as in you don’t have to amend your claims in view of lethal prior art. You can always just make a terrible argument and misrepresent the facts if you like.
The last time I checked, patentees aren’t required to amend or cancel their claims after the patent is granted and they discover that their claims are invalid because they didn’t actually invent anything. Instead, patentees in that position are able to threaten the public with bankrupting and business-destroying litigation. Because … the Constitution or something. I mean, you tell everyone. You’re the deep serious expert on these “fundamental rights.”