Federal Circuit: PTO Must be More Liberal in Allowing Amendments during AIA Trials

by Dennis Crouch

Aqua Products v. Matal (Fed. Cir. 2017) (en banc) [Aqua Products Decision]

In a nuanced set of opinions the Federal Circuit – with no clear majority opinion – holds merely that:

The final written decision of the Board in this case is vacated insofar as it denied the patent owner’s motion to amend the patent. The matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.

The ‘leading opinion’ by Judge O’Malley goes on to explain:

Because the participating judges have different views—both as to the judgment we should reach and as to the rationale we should employ in support of that judgment, as explained below, today’s judgment is narrow.

This result was supported by a 7-member panel.

The opinion package, is 148 pages in length and includes five separate opinions walking the question of deference to PTO Decisionmaking.

  • Opinion filed by Circuit Judge O’MALLEY, in which Circuit Judges NEWMAN, LOURIE, MOORE, and WALLACH join, and in which Circuit Judges DYK and REYNA concur in result.
  • Opinion filed by Circuit Judge MOORE, in which Circuit Judges NEWMAN and O’MALLEY join.
  • Opinion filed by Circuit Judge REYNA, in which Circuit Judge DYK joins, and in which Chief Judge PROST and Circuit Judges TARANTO, CHEN, and HUGHES join in part.
  • Opinion filed by Circuit Judge TARANTO, in which Chief Judge PROST and Circuit Judges CHEN and HUGHES join, dissenting from the judgment, and in which Circuit Judges DYK and REYNA join in part in other respects.
  • Opinion dissenting from the judgment filed by Circuit Judge HUGHES, in which Circuit Judge CHEN joins.

The setup and context here is ripe for Supreme Court review.  More to come later.

111 thoughts on “Federal Circuit: PTO Must be More Liberal in Allowing Amendments during AIA Trials

  1. David Boundy: The showing of patentability required of the patent owner is clearly a “collection of information” covered by the Paperwork Reduction Act.

    Well, it’s counter-intuitive on its face so it can’t be that “clear.” Anybody knows what Boundy is talking about? “Collecting information” can be onerous and unnecessary but it certainly does seem like it in this instance. So what’s Boundy talking about? Where’s this “clear” language that he’s referring to re “collection of information”?

  2. What are the odds that the Paper Reduction Act is unconstitutional?

    LOL

  3. Funny how this so-called “Paperwork Reduction Act” apparently requires government agencies to generate more paper, at greater cost, and for sillier reasons, than ever before.

  4. Question for David Boundy:

    If I had a 1 billion dollars to spend (on anything necessary) how easy would it be for me to completely kneecap the PTO for a substantial period of time? You know, let’s say a combination of filings and lawsuits (I’ll hire you and, say, 5 other top notch “partner” types and 100-300 or so attorneys working full time). The goal is to essentially cripple the PTO with a combination of lawsuits and paperwork (e.g., patent filings and other filings) so that it can’t function even close to properly absent Congressional intervention.

    On a scale of 1 to 10, where easy is 1 and 10 is extremely difficult. How easy would it be? Let’s say I want it done within three years, and I don’t really care how it is done as long as we aren’t violating “the rule of law” (which is the worst thing ever, of course).

    Just asking.

    1. In first order predicate logic, any statement of the form

      if P then Q

      where P is false, is vacuously true for any value of Q.

      So given that your P is false, all answers Q yield a true answer to your question.

    2. I have the impression that MM does not actually have much experience with prosecution at the PTO or in litigating against the USPTO.

      The USPTO can suspend prosecution (37 CFR 1.103 (e)).

      It could thereby force you to seek relief under 28 U.S. Code § 2201 – Creation of remedy for violation of the APA. The USPTO would motion to dismiss and cite the precedents of Bell Atlantic v. Twombly in 2007 and Ashcroft v. Iqbal in 2009.

      The USPTO has more than enough tools to ignore an abusive effort even if you really want to waste money.

      1. I have the impression that MM does not actually have much experience with prosecution at the PTO or in litigating against the USPTO.

        This is a keen observation. He, of course, professes to the opposite (all the while continuously displaying an over abundance of anti-patent feelings that mark the level of cognitive dissonance off the charts).

  5. This rule was far outside the PTO’s rulemaking-by-adjudication authority. The ABA Landslide that prints and mails in mid-November has a paper (currently in copy edit) that explains the whole landscape (without discussing Aqua specifically).

    A few of the legal problems with the PTO’s rule —

    * This is clearly not “interpretation” of the statute or regulation at issue, as Judges O’Malley and Moore explain. “Interpretation” requires some underlying word or phrase that has an ambiguity. The PTO pointed to no such ambiguity. Making up a new requirement out of whole cloth, with no underlying text to interpret is not “interpretation.”

    If the PTO was exercising its § 316(a)/§ 326(a) “regulation” authority or “gap filling” rule making authority (rather than “interpretative” authority), the rule fails on a number of fronts —

    * The rule is clearly “substantive” as an allocation of the burden of proof. The PTO has a form paragraph that they use in rule making notices (as a reflex, with no thought or fact-checking). The Federal Circuit called them out on this, pretty harshly. Substantive rules (that don’t qualify for the “interpretative” exception) require legislative procedure. The PTO skipped this procedure.

    * To gain Chevron or Auer deference, an agency must meet a long list of requirements. The rule met very few of these. Judges O’Malley and Moore identified a number of points where the PTO shortcut corners that must be cut square.

    * The showing of patentability required of the patent owner is clearly a “collection of information” covered by the Paperwork Reduction Act. The PTO failed to even attempt the PRA process.

    As Ned comments at 11, yes the PTO can promulgate the same rule as a notice-and-comment regulation. Those three little words are the tip of a substantial iceberg (and a lot of work—which is why the PTO so consistently declares all its rules outside requirements for notice-and-comment). Required notice-and-comment triggers the following—
    * The PTO must do a benefit-cost analysis under Executive Order 12866 (and since well over $100 million of issued patents are at issue, a full Regulatory Impact Analysis under OMB Circular A-4—I’ll believe that when I see it. The PTO Office of General Counsel cheats its ass off to avoid starting an A-4 analysis, or and the Chief Economist has clearly never read the Circular to understand required content or form).
    * A series of analyses under the Paperwork Reduction Act
    * A correct and analytical Regulatory Flexibility Analysis
    * Several other inquiries, all designed to make sure that the PTO is actually regulating in the public interest (instead of its self-interest), is fairly balancing the interests of all stakeholders, that the final reg is stated clearly enough that all parties have notice, and the like.

    Judges O’Malley and Moore wrote masterful opinions, especially impressive because the briefs were so startlingly deficient in their recognition (let alone discussion) of the relevant administrative law principles. I hope my paper can provide a framework that brings some of the court’s fractures together. Judge Reyna’s opinion is accurately characterized hy Judge O’Malley as “odd” on a number of fronts. Judge Hughes overlooks the obvious — the PTAB is not an Article III court. Judge Hughes’ analysis might be plausible in an Article III/Article III review, or for a regulation that has gone through all the rule making hoops, but is wide of the mark in court/agency review of an agency’s blue sky common law rule. Agencies are bound by many statutes governing rule making (the difference between the words “regulation” and “rule” is far more significant than Judge Hughes acknowledges), and it’s not correct to analogize a procedurally-deficient rule (like the PTO’s) under the same standards as a full-dress procedurally-proper rule (such as those discussed in many of the cases Judge Hughes cites). Maybe my paper will help clarify some of that understanding.

    The O’Malley and Moore opinions are soundly-reasoned centers around which the court should coalesce.

    1. Judge Moore has one subtle misstep, in her footnote 10. <Cooper v. Dudas is an “interpretative” rule case, not a “procedural” rule case.

    2. Hi David,

      Any other agencies engaged in violations of the Paperwork Reduction Act? Or is this the worst agency action taking place right now?

      Serious question for you, because you’re a very serious person.

      Also, as you’re a very wealthy person, I’m curious: do you rely on any Federal agencies for your health and well-being? Which ones? How much time do you spend, on average, per year, assaulting those agencies over their failure to adhere to the most onerous aspects of the PRA?

      1. MM —

        Given your history, your statement that this is a “serious question” is not credible.

        Show me a month of two of reasoned, respectful, knowlegeable discourse with others, and I’ll reconsider my earlier notification that I will not engage with you.

        1. “I just called the Klingon a liar.”

        2. Eleven and a half years of consistent blight bets against that happening, David.

    3. David, what you think the chances are that the PTO will seek certiorari on the issue of PTAB “formal rulemaking” by precedential decision. Do they have any chance whatsoever if they chose that route?

      1. I have no idea whether the PTO will seek cert.

        If Aqua hires a lawyer with good administrative law chops, the PTO hasn’t a prayer. They broke the law every which way from Sunday.

        1. They broke the law every which way from Sunday.

          Any particular individuals in particular who bear the most responsibility for this alleged mayhem?

    4. As usual, David, I’m trying not to laugh at your habitual muckraking on behalf of the worst attorneys on the planet (i.e., junk patent peddlers), but maybe you can help everyone out here:

      If Congress writes a statute with a gap in it and the agency has to make binary choice about how to fill in that gap, why isn’t it enough for the agency to weigh the common sense factors and make the call about how to fill in the gap? Where’s the statute that says the agency can’t do that? I want to see the statutory language that spells it out.

      The showing of patentability required of the patent owner is clearly a “collection of information” covered by the Paperwork Reduction Act.

      LOL Really? Seems to me like the patent owner is the one making the request here. The PTO is simply responding in a logical fashion, i.e., “show us that your request isn’t spurious.” That hardly seems like the sort of “collecting information” that the statute was meant to prevent. I mean, try to be serious here.

      The PTO must do a benefit-cost analysis under Executive Order 12866 (and since well over $100 million of issued patents are at issue, a full Regulatory Impact Analysis under OMB Circular A-4—I’ll believe that when I see it.

      And that right there is how you carry water for the chaos-bringers. You understand this, right, David? You know how transparent it is, right? “Full regulatory impact analysis” for … asking someone to provide some evidence that they aren’t putting forward a baseless amendment to a patent claim? Seriously? Good grief, man.

      We’re talking about a simple easily-complied-with rule that represents one of two choices. The analysis is simple. Boundy thinks making a simple decision needs to be incredibly complex and expensive and time-consuming. Why does he think that? Because — apparently — his favorite clients are unhappy that their junk patents are being devalued. Boo hoo hoo.

      make sure that the PTO is actually regulating in the public interest

      I’m a member of the public and a patent attorney and like most of us I don’t have any problem with it whatsoever. It seems very reasonable …. because it is. And you know it is, David, which is why you aren’t objecting to it on any grounds except your usual silly ones.

      fairly balancing the interests of all stakeholders

      Well, the public without patents vastly outnumbers the tiny tiny handful of rich people (like David) who have them or who profit from them. Putting the burden on the patentee whose patent is already deemed suspect (and is admittedly so — hence the amendment) seems very fair. What’s your problem with it, David? Tell everyone.

      the final reg [needs to be] stated clearly enough that all parties have notice, and the like.

      The rule has been pretty clear to me for a long time. What part is unclear to you, David?

      1. MM writes “why isn’t it enough for the agency to weigh the common sense factors and make the call about how to fill in the gap?

        Let’s revisit something you learned in your first year of law school—the basic Constitutional principles for separation of powers. Article I, section 1, vests “All legislative Powers” in Congress. Article III, section 1, vests “The judicial Power” in the courts.

        The thrust of Aqua is to remind the PTO that an executive branch agency has neither the law-making power of a legislature nor a common law court. Administrative judges have neither presidential appointment nor Senate confirmation to be “judges” or to have Article III law making authority.

        How does the PTO get whatever power it does have to make laws?

        Basic first year constitutional principles: by delegation from Congress. 5 U.S.C. § 301, 35 U.S.C. § 2(b), § 3(a)(2)(A), § 3(b)(2)(A), § 316(a), § 326(a), and other statutes delegate rule making authority to the PTO and the Director. Congress may delegate rule making authority, but the delegation must be express or clearly implied, and the agency must follow the procedures set by Congress in promulgating laws. Executive agencies have rule making authority only to the extent, and only on the terms, delegated by Congress.

        Not all silences are Chevron “gaps.” Without an express delegation of authority, exercised with all necessary procedure, a silence is just that—a silence that leaves the underlying default in place. Here, the default burden of proof falls on the petitioner. The Board doesn’t have law-making authority to make up a a law out of whole cloth to shift the burden the other way, without going through full dress rulemaking.

        If you don’t remember that much basic constitutional law, there’s no point in discussing anything further.

  6. I see that Prost and Taranto are taking on the chin. These have been the leaders in endorsing every position advanced by the PTO that denies a patent owner due process. Taranto was the first to say that the Section 314 appeal bar applied outside of Section 314. Prost wrote Achates, which was plainly wrong. She also wrote Microsoft Corp. v. Proxyconn, Inc., 789 F. 3d 1292 (Fed. Cir. 2015) which is heavily criticized and now overruled.

    Oil States is next. Prost (and Hughes) were on MCM Portfolio.

    1. A couple corrections:

      * Prost did not author Achates, although she was on the panel. Judge Linn authored the Achates mistake.

      * Taranto has not been a leader in denying patent owners due process in IPRs. Quite the opposite. Taranto has been a critical judge driving the application of the APA to preserve the due process rights of patentees in IPRs. See, e.g., In re NuVasive Inc., 841 F.3d 966 (Fed. Cir. 2016)

      * As for Microsoft v. Proxyconn, I am rather lost as to why you mentioned this one in a list of examples of patentee’s rights being trampled. Proxyconn represents the first instance in which a patentee won a reversal from a PTAB invalidation, and therefore stands as a case in favor of patentees in front of the PTAB. I think that Proxyconn was a little flawed (I do not see how the CAFC thinks that remand to the PTAB is statutorily possible in view of the hard statutory, 1.5-year time limit for IPRs), but it is scarcely an example of the CAFC trampling patentee rights.

  7. Observation: the cancellation of a claim from a patent only affects infringements on a going forward basis. Patent owners may still collect for damages accrued until cancellation.

    1. Patent owners may still collect for damages accrued until cancellation.

      On what basis can you collect damages “up to the time of cancellation” for something being cancelled (and thus treated as if it were not proper all along)?

      If you cancel during an IPR process, you do NOT get any type of “accrued damages.”

      Are you talking about some other type of scenario?

    2. How do you figure that, Ned?

      35 U.S.C. §318(c) says that the certificate of correction that issued after an IPR “shall have the same effect as that specified in section 252 for reissued patents… .” One cannot collect damages on claims that are cancelled in reissue, for conduct that occurred prior to reissue (§252 “A reissued patent shall not abridge or affect the right of any person… who, prior to the grant of a reissue,… used within the United States… anything patented by the reissued patent, to continue the use of… the specific thing so… used… unless the… using… of such thing infringes a valid claim of the reissued patent which was in the original patent”).

      1. Greg, you have a good point there. The cancellation does appear to affect past damages as well and present and future infringements.

    3. Because there is a huge distinction in the doctrine of intervening rights. When a patent owner surrenders his original patent, he gives it up ab initio. It would not be fair to allow him to have a patent with certain scope for a period, and then when convenient to change the scope. He must chose one or the other, not both.

      This is not the situation in the involuntary cancellation. The rationale underlying intervening rights case law was glossed over in Fresenius.

      1. Invention Rights, got it, and I agree.

        A lot of the briefs in Oil States referred to a Supreme Court case that held that Congress had no power to abrogate vested rights in a patent. I presume that this would extend to authorizing the PTO to abrogate existing rights of patent by cancellation of claims against the will of the patent owner.

        But this is another way of saying that IPR are unconstitutional.

  8. It actually may not be over. The PTO may still win thru formal rulemaking.

    The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee. All the rest of our cogitations, whatever label we have placed on them, are just that—cogitations. Even our discussions on whether the statute is ambiguous are mere academic
    exercises.

    The final written decision of the Board in this case is vacated insofar as it denied the patent owner’s motion to amend. The matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner. The Board must follow this same practice in all pending IPRs unless and until the Director engages in notice and comment rulemaking. At that point, the court will be tasked with determining whether any practice so adopted is valid.

    Aqua Products, slip at *66.

    1. Technical nit — the term “formal rulemaking” is rulemaking after a formal trial-type hearing under 5 U.S.C. §§ 556 and 557. A few agencies have this requirement — I believe the Nuclear Regulatory Commission is one.

    2. Ned is correct, this same rule could (at least on the understanding I have today) be promulgated as a notice-and-comment regulation, after the rule goes through all the steps to make sure that it is a sound policy balance.

      The PTO’s error was trying to promulgate it as a common law rule without vetting by the public, Executive Office of the President, and Small Business Administration Office of Advocacy.

      The PTO argued that the rule had been vetted by a majority vote of the APJ’s. However, the PTO fails to explain what statute qualifies that forum as a substitute for vetting required by statute.

      Statutory vetting is important, and dodging it had the consequence we see here — the rule was invalidated.

      Longer discussion at comment 14, and an upcoming article in ABA Landslide.

      1. The PTO’s error was trying to promulgate it as a common law rule without vetting by the …. Executive Office of the President

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        You mean the m — r 0n? What’s the point of this “vetting”, David?

        LOLOLOLOLOLOL

  9. I have a for serious question here though about the whole “rule” where the petitioner, rather than the board/an examiner along with the petitioner or in addition to the petitioner, has the burden of persuasion. For that matter, it seems in this paradigm that only the petitioner can say anything at all about the patentability of the amended claims IN THE first instance.

    My question is: if the petitioner does not deem it necessary or in their own interests to contest the claims as amended then do those claims just sail through to “allowance” without further PTO review? Would this not tend to just have unexamined but issued claims running wild upon the open plains of the world?

    1. Well, in this case, there is not a PTO Rule on this issue, and the majority says they would have to reconsider if the PTO adopts one.

      Yes, if the IPO petitioner does not care about the amended claims because they do not infringe them, or because they got a settlement agreement from the patent owner, I would guess that the amended claims might issue without examination, UNLESS they were partially based on “new matter”? But, they would be subject to intervening rights, and subsequent IPR or reexamination petitions, and must be narrower than the original claims they were substituted for, hence claims that would have been allowed in the application examination absent 112 issues.

      1. ” and must be narrower than the original claims they were substituted for,”

        Oh ok, I was actually wondering about that as well, because I couldn’t remember if that was a rule or not. But yeah that makes it ok in my book, seems fine.

        1. yes, claim broadening is prohibited by statute in all post grant proceedings except in reissues for only two years after the patent issues.

      2. ” and must be narrower than the original claims they were substituted for,”

        That does NOT necessarily help – at all.

        Remember, that broader claim is being shot down – by the BRI standard and by ‘new art.’

        You necessarily then have any item birthed from that in a basic non-allowed state.

        Saying (with the slight of hand) that “this is ok because narrower” misses the point of “narrower than what? Of something deemed not patentable!

        Think of it this way:
        I claim the whole football field: 120 yards (including both endzones).

        You produce something that knocks out the redzone of the opponents side of the field.

        My broad claim is no good.

        I provide an amended claim of my endzone up to your 20 yard line (90 yards).

        You want to say that this is “OK as is” because it is more narrow than the purported bogus claim.

        But what has actually been “examined?”

        Surely NOT the more narrow claim.

        And just because the broad claim had once been allowed, does NOT mean that any and all more narrow slivers are “OK” just because “more narrow.”

        For crying out loud, isn’t the point here of IPR is that the edges of the granted claim were improper?

        The answer, 6, is that NO ONE has truly examined the substitute claim for what it is.

        The “out” of “well, that substitute clam can also be IPR’d” is actually one of the more damaging takeaways here. What that statement really means is that there is NO “quiet title” in the property right of a granted patent. It also does not reflect the fact that a patent coming out of IPR with such an amended claim is – on its face – NOT ACTUALLY EXAMINED.

        If IPR’s are meant as a “safety valve” to poorly examined patents, how is it that a permitted outcome is a patent claim not truly examined at all?

        Saying that at least it is less than (more narrow) than the admitted bad claim does NOT equate to really saying that it is a good claim.

        1. You’re right that it isn’t a perfect panacea anon but overall it’s pretty decent.

          “Of something deemed not patentable!”

          yes but something that was previously determined to be allowable, and which is now seen as allowable save for the challenge agin it.

          1. yes but something that was previously determined to be allowable, and which is now seen as allowable save for the challenge agin it.

            The point there though 6 – is that because of the challenge, there is ZERO allowable.

            You are stuck in an intermediate zone of “narrower” but MUST ask “narrower than what?”

            Narrower – in and of itself is a false panacea, and is NOT a replacement for examination for ANY of the levels that “narrower” may settle at.

            In discussions past with Ned, I tried to drive this point home by removing from the discussion the “easy” aspect of an amendment that merely transforms a dependent claim into its own independent claim form. THAT type of thing IS supposedly examined during original prosecution. But that is expressly NOT the type of “narrowing” that I am talking about here. I am expressly talking about an unexamined narrowing, to which ITSELF is not – and has not – been examined.

            The actions of the petitioner are NOT the actions of a duly powered member of the administrative agency responsible for saying “I grant this claim.”

            By placing this “proving” on anybody but an examiner, the court here is NOT resolving the question that you (surprisingly astutely) put forth!

            1. Narrower… is NOT a replacement for examination for ANY of the levels that “narrower” may settle at.

              Says who? I grant you that by the time we are talking about a claim such as you propose (a narrowing amendment that is not embodied in one of the granted dependent claims), we are talking about a claim that has been only imperfectly reviewed prior to grant. Why, however, should we make the perfect the enemy of the good? Why is the more limited review accorded by the adversarial process of IPR (or, in some cases, lack thereof) not “good enough” in these circumstances?

              1. we are talking about a claim that has been only imperfectly reviewed prior to grant.

                An amended claim that is not from a dependent claim has not only been “imperfectly reviewed prior to grant” it has not been reviewed at all.

                That’s the point.

                1. Please change “reviewed” to “examined,” as the point that I am stressing is examination (by an examiner – the one that carries out the legal directive given to the director and that specifically is what garners the clear and convincing presumption).

                2. [I]t has not been reviewed at all.

                  Not true. The PTAB does not do an art search to review for compliance with §§102/103, but they are obliged to examine the §112 compliance of the proposed new claim before it grants—even if the petitioner does not challenge the new claims.

                3. The PTAB does not do an art search to review for compliance with §§102/103, but they are obliged to examine the §112 compliance of the proposed new claim before it grants—even if the petitioner does not challenge the new claims.

                  Are you saying that such IS “examination”…?

                  (and where is this “obliged” factor coming from? Is the 112 “examination” put on the record, and does the patentee have a right to challenge the 112 “examination” as would be present in an actual examination?)

                  No Greg, I think that you are attempting to shoehorn far too much into your “good” in order to reach a “let’s not sacrifice ‘good’ for ‘perfect’ position.

                  Bottom line is that amendments (and yet again, for Ned’s sake I am NOT talking about mere dependent claims into independent form amendments) are NOT examined fully or properly and yet may make into a granted patent state.

                  You STILL have a vehicle meant to address “improper examination” that may rely on improper examination of claim amendments.

                4. [I]t has not been reviewed at all.

                  Just to be clear, the entire scope of any proposed substitute claim has already been searched by the examiner. Admittedly, the fact that we are now talking about an IPR would tend to indicate that the examiner did a less-than-perfect job in that search, but it is not accurate to say that the claim scope has not been examined “at all.”

                5. You are still being obtuse Greg.

                  The “not examined at all” accepts the notion that the first examination is being thrown out as improper.

                  So, if you want to be pedantic, you can say “not properly examined at all.”

                  ALL of points though still carry.

                  See the football field example for an easy to follow illustration of how one cannot accept mere narrowing based on the item that is no longer considered proper, and the resultant fact that true examination – proper examination – is lacking in the mechanism that has been put in place FOR improper examination.

            2. “The point there though 6 – is that because of the challenge, there is ZERO allowable.”

              The mere act of the claims being challenged took away the whole presumed valid thing you like to crow about forever and ever? Meh, idk about that brosefulous.

              “narrower than what”

              Narrower than that which the gubmit deemed allowabilityedup.

              “unexamined narrowing”

              I think they do police the narrowing anon. It is true narrowing, as in everything they would allow through this process could have been put in as a dep if filed earlier.

              “The actions of the petitioner are NOT the actions of a duly powered member of the administrative agency responsible for saying “I grant this claim.””

              You’re right brosef but that’s the deal that the gubmit made in implementing these post grant review types of proceedings. It seems somewhat ok, simply because the point of the review is not necessarily to revisit all of examination, as in do all of examination again this time letting someone from outside the gubmit have their say as well. The point of the review is to EITHER establish the invention as a whole unpatentable (at a level of claiming that is deemed valuable enough by the applicant to pursue) OR get it narrowed down a bit more. It’s still an entitlement program and the gubmit doesn’t want to undo its own work in administrating the entitlement program too much.

              1. Me: “The point there though 6 – is that because of the challenge, there is ZERO allowable.”

                6: “The mere act of the claims being challenged took away the whole presumed valid thing you like to crow about forever and ever? Meh, idk about that brosefulous.

                Me: Pay attention to the issue, 6. It is NOT a mere act of being challenged. It is the mere act of the initiation decision point which strips out sticks in the bundle of property rights known as a granted patent. And yes, 6, until the IPR process is done, the government DOES “[take] away the whole presumed valid thing” – as is the law under the AIA.

                .

                Me: “narrower than what”

                6: “Narrower than that which the gubmit deemed allowabilityedup.

                Me: You missed the point (again). That “precious” “which the gubmit deemed allowabilityedup.” is gone thanks to the IPR. Gone – as in – GONE. The question was asked so that you realized that what you want to compare to is (wait for it)

                (wait)

                Gone.

                .

                Me: “unexamined narrowing”

                6: “I think they do police the narrowing anon. It is true narrowing, as in everything they would allow through this process could have been put in as a dep if filed earlier.

                Me: This “policing” of yours is NOT examination, now is it, 6? Look at the football field hypo I quickly laid out for you. For jollies, let’s say in addition to the whole field as an independent claim, we had dependent claims of just my endzone, my endzone out to my twenty and my endzone out to my 35. In an indisputably “true narrowing,” we go from the whole field to from my endzone to the opposing 25. Would THIS have been allowed through if in a dep earlier? Why? AGAIN – if you are basing your “allowed through” on the independent that is GONE, you have NO intermediate backup that says that THIS would indeed have been allowed through in the NEW (IPR-induced) situation.

                .

                Me: “The actions of the petitioner are NOT the actions of a duly powered member of the administrative agency responsible for saying “I grant this claim.””

                6: “You’re right brosef but that’s the deal that the gubmit made in implementing these post grant review types of proceedings. It seems somewhat ok, simply because the point of the review is not necessarily to revisit all of examination, as in do all of examination again this time letting someone from outside the gubmit have their say as well. The point of the review is to EITHER establish the invention as a whole unpatentable (at a level of claiming that is deemed valuable enough by the applicant to pursue) OR get it narrowed down a bit more. It’s still an entitlement program and the gubmit doesn’t want to undo its own work in administrating the entitlement program too much.

                Me: Just what the “gubmit” does, does not make it right. That’s kind of been an important point all along.

        2. Saying that at least it is less than (more narrow) than the admitted bad claim does NOT equate to really saying that it is a good claim.

          Er, o.k. By the same token, however, a notice of allowance also “does NOT equate to really saying that it is a good claim.” Why, then, should we care if the claim comes to grant without “examination” beyond that which is applied by the PTAB in the course of the IPR?

          In other words, if the worry is “this claim will slip through without a proper examination,” that is a pointless worry. It will come through with exactly as much examination as any other granted claim (which may not be enough, but given the constraints of U.S. examination, is evidently as much as we as a society require).

          1. however, a notice of allowance also “does NOT equate to really saying that it is a good claim.”

            THAT is a shocking statement that reveals more than I think that you may have realized.

            I trace this to your not giving proper credit to what it means (BOTH the presumption of validity and the LEVEL of that presumption) for a property right that is a granted patent.

            In other words, if the worry is “this claim will slip through without a proper examination,” that is a pointless worry.

            On the contrary – it is EXACTLY the point of even having the IPR mechanism in the first place – the concern of something being improperly granted.

            How can the answer to the quest of “improperly examined or not” be the answer of “not examined at all”…?

            It will come through with exactly as much examination as any other granted claim

            Expressly NO – this is absolutely incorrect and rather misses the rather direct point that there is a world of difference between NO examination at all, and examination that is yet wrong. The WHOLE presumption of a granted patent right – in current law – comes from the fact of examination, and the fact that we (no longer) merely have a registration system. Further, it is expressly the executive agency of the patent office that is charged with examining “unto the law.”

            We STILL require examination.
            We STILL do not have a mere registration system.

            Pretending that there is no difference is most odd.

            1. We STILL require examination.
              We STILL do not have a mere registration system.

              The present examination system was not handed down to Moses on stone tablets. It is a creation of Congress. Congress has created a mechanism by which some claims are granted after examination, and some (much smaller) quantity of other claims are granted after another process.

              Why, if at all, is this problematic?

              1. Why, if at all, is this problematic?

                Please do not be so obtuse. As I have pointed out, you have induced in a mechanism of correction a fault point that is the object of the correction itself.

                1. And? Once again, what is the problem with that? All I see in your repeated answers here is that this is less than perfect. Fine. I agree. This side of the eschaton, less than perfect is what you are going to get 99 times out of 100. The question to be asked regarding a legal arrangement is not “is it perfect?”, but rather “is it better than the alternative?”.

                  Why is permitting replacement claims under these circumstances worse than not permitting them?

                2. Greg – you are still being obtuse and NO, I am not requiring “perfect.”

                  I am “requiring” that a mechanism put in place to correct improper examination NOT have improper examination as one of its features.

            2. Anon bru you seem to be missing that all the examination (art related anyway) done on the originally allowed claim is in effect being done on the now amended claim if that amended claim is narrower.

              The amended claim doesn’t get 0 examination if it is only narrower, it gets all the examination of its forebear and then the added scrutiny of the challenge.

              1. Simply not so 6.

                PTAB is trial, not examination.
                Petitioner is NOT an examiner.

            3. Anon man you seem to be missing that all the examination (art related anyway) done on the originally allowed claim is in effect being done on the now amended claim if that amended claim is narrower.

              The amended claim doesn’t get 0 examination if it is only nar rower, it gets all the examination of its fo rebear and then the added sc ruti ny of the challenge.

              1. 6,

                Review my football field hypo.

                Narrower than the original – and now expressly found faulty – scope may NOT properly establish a new boundary.

                Keep in mind that this discussion of the “protocol” is purposefully using an example outside of the low hanging fruit of merely making an amendment of putting an existing dependent claim into independent claim format. When one only looks at that low hanging fruit, one misses the real issue of a mechanism expressly made to correct “improper examination” having built into it a factor of…

                …improper examination.

                Let me repeat and stress the following:
                PTAB is trial, not examination.
                Petitioner is not an examiner.
                “Policing” is not examination.
                “narrower” than a faulty and now disallowed first-allowed scope is not – in and of itself – enough to show a proper scope.

    2. 6, you have to be kidding. The claims are narrowing and they have support. They have a presumption of patentability.

      1. The claims are narrowing and they have support.

        Says who? The patentee? You must be joking.

        1. MM, Do you actually do prosecution? I doubt it now.

      2. They have a presumption of patentability.

        No, they do not. That presumption was ONLY for the claims prior to the IPR initiation decision point. After that point, there is NO SUCH THING as a presumption of validity.

        Presumption of validity inures from examination. PTAB is trial – not examination. Once taken, it is not within the framework of PTAB to “re-anoint” with that presumption (not properly, at least).

        1. anon, obviously, you have not read i4i v. Microsoft.

          1. Are you sure i4i says that a claim that is narrower than a claim found to be invalid is presumed valid..

            1. JJP, what are you talking about? No court of law has found anything invalid. Patent claims remain valid until a court of law says they are not.

              A claim that is narrower than a valid claim is not invalid over the art that does not invalidate the broader claim. That is why dependent claims are automatically allowable when the broader claims are allowed.

              1. Ned – please for the sake of discussion, do more than just look at that low hanging fruit.

                In every discussion to date, your participation ends when pressed beyond the mere dependent claim change.

              2. Ned, fine, replace invalid with “unpatentable” if you want to be pedantic (though patentability likely encompasses validity).

                The point is, when the board institutes an IPR, they are saying “it is likely the examiner erred during prosecution by allowing this claim.”

                A claim that is narrower than a claim that is “likely unpatentable” is… not presumed to be anything, because, by instituting the IPR, the PTAB has already determined that the initial examination was likely erroneous.

                1. A claim that is narrower than a claim that is “likely unpatentable” is… not presumed to be anything….

                  Not true. A challenged claim in an IPR is still presumed to be valid. The patent challenger has the burden to prove unpatentability. A tie goes to the claim. If the challenger has the burden, then that is a presumption of validity, by definition. “The word ‘presumption’ properly used refers only to a device for allocating the production burden.” Texas Dept. of Community Affairs v. Burdine, 450 U.S. 248, 255 n.8 (1981).

          2. Ned,

            Obviously, you have not been paying attention to what happens at the exact moment of the initiation decision point per the AIA.

            I4i v Microsoft does nothing for you at that point.

        2. No, they do not [have a presumption of validity].

          Yes, they do. “The word ‘presumption’ properly used refers only to a device for allocating the production burden.” Texas Dept. of Community Affairs v. Burdine, 450 U.S. 248, 255 n.8 (1981). In other words, so long as it is the challenger who has the burden of showing a claim to be unpatentable—rather than the patentee having the burden of showing the claim to be patentable—there is a presumption of validity. That is what the word “presumption” means, in this context.

          If you mean to say that they do not enjoy a presumption of validity requiring clear-&-convincing evidence to overcome, that would be correct (as far as we know). It is not, however, correct to say that there is no presumption of validity in IPRs. Both challenged claims and (after today) proposed replacement claims still enjoy a presumption of validity, because it is the challenger who must show them to be unpatentable.

          1. No, Greg – we have had this discussion before. Your “proper” is not proper in the context of this discussion (in part because you do not use the level of presumption in your thinking).

            And yes – when talking about patents, the context (to include the level) IS part and parcel of what we are talking about – properly.

            1. Go back and re-read Ned’s 10.2 with your preferred definition of “presumption” and with my preferred definition. You will find that Ned’s 10.2 makes more sense with mine. If you wish, nevertheless, to respond to a point that Ned is not making by using your own idiosyncratic definition of the words of his post, that is your own business, but that seems like rather an odd waste of time.

              1. It is not a matter of “preferred” definition, Greg.

                The context of what presumption means for patents includes BOTH the presence of presumption AND the level of that presence.

                Your “preferences” simply are not proper.

                1. Fair enough. As I said, if you wish to raise an objection to a point that Ned is not making, by imparting to his words a meaning that he did not intend and that no one else imparts to them, you are welcome to do so. Life is too short to deny you such innocent pleasures. It is not clear to me, however, why this odd word game should amuse you, and totally unclear why anyone else should find it worth their while to play along by responding. I concede the point and withdraw from this particular discussion.

                2. by imparting to his words a meaning that he did not intend and that no one else imparts to them,

                  This characterization is false.

                  It is NOT that he did not intend a specific meaning. It is that he is wrong on his intended meaning. Further, it is not that no one else imparts that meaning, it is that YOU continue to want to treat the level and the presence as if the patent context was immaterial.

              2. further, Ned at 10.2 is simply incorrect. A fact and not a “preference” of the AIA was the stripping of the stick of Clear and Convincing from the bundle of property rights that a granted patent has AT the initiation decision point.

                Ned’s comment at 10.2 is simply incorrect in that he does not recognize (here) this removal.

                What you see as an “odd waste of time” is you merely clinging to your own “odd” incorrect understanding of how the level and presence of presumption exist in the patent context.

                This is not a matter of my being “idiosncratic” or my applying my own “preferences,” as you wish to portray. This is a matter of YOU not seeing the issue correctly, or as you put it, “properly.”

    3. Not just that, but what if petitioner DOES care about the amended claims, and the claimed amendments are easily defeated by prior art that is different than that which is instituted. Do they need to file ANOTHER IPR?

      For example, disputed claim 1 recites: A+at least one of B, C, D, E.

      I have prior art that teaches A+B, and I have another piece of prior art that teaches A+C. I chose the first one for an IPR. The patent owner amends to A+C and says the instituted art does not cover that, am I allowed to introduce the new art? Or do I need to file a brand new IPR?

      1. JJS that was the same good question I was suggesting in the second paragraph of comment 8 here – does the petitioner get to submit new prior art for the newly added claim elements in the same IPR?

        1. Saw an interesting comment elsewhere, while not directly to your question Paul, is close enough to cause me to cogitate:

          If a claim amendment is accepted (hence “narrower” AND any other hurdle per the PTO process), is not the petitioner estopped from bringing any new art?

          By the token that these (potentially truly unexamined) claims are now part of the patent, would not the reach of estoppel be brought to bear for any subsequent attempts with new art?

          1. By the token that these (potentially truly unexamined) claims are now part of the patent, would not the reach of estoppel be brought to bear for any subsequent attempts with new art?

            Yes, that appears to me to be what Congress wrote, and what Congress ought to write even if it had not done so. The point of IPRs was to be a cheaper and faster alternative to litigation, not a means of stretching it out even longer and making it even more expensive. IPRs are supposed to be a one-and-done. If you cannot demonstrate the invalidity of your opponent’s claims in such a one-and-done process, you simply should not go down the IPR route.

            1. Ah,

              But consider my football field example to 6.

              NON-dependent claim amendments STILL – even as they may be outside of (and have MORE scope than any) prior dependent claims, be only “examined” in relation to a measure that no longer truly dictates the level of what is patentable.

              You remove the “entire football field” level of scope with the IPR challenge.

              The fall back of the patentee MAY BE something of scope larger than any depenendent claim that may (should) have been examined on the merits in an initial examination.

              The PTAB – a trial and NOT an examination – may pass through something less than the original scope, but more than the original dependent scope, and may do so based solely on the notion that such is narrower than what is being disallowed.

              As I have stated (and I hope that you soon drop your attempts at being obtuse), you have a correction mechanism that is built to be self-defeating for the very purpose of having the mechanism in the first place.

              Former Chief Judge Michel has indicated this situation (at least in part) with his call to have some type of “off-ramp” from the trial of PTAB back into a true examination mode.

              Such a mechanism simply does not exist today. Pretending that this is NOT an issue is unseemly.

              1. [Y]ou have a correction mechanism that is built to be self-defeating for the very purpose of having the mechanism in the first place.

                “Self-defeating” seems to me too strong to be supportable. If the IPR ends up cancelling an invalid claim, that is not a “defeat.” I take your point that it can end up replacing that invalid claim with another invalid claim. That is less than perfect, but it is still not a “defeat.”

                An invalid claim in a granted patent is an offense against the public domain and the rights of all U.S. residents. The larger the scope of that invalid claim, the greater the offense. If the IPR achieves nothing more than shrinking the scope of the granted-but-invalid claim, that is still a public good. It is, in other words, a victory, not a defeat, albeit a smaller victory than one might have hoped.

                Judge Michel has… call[ed] to have some type of “off-ramp”… into a true examination mode.

                Two points:

                (1) Why do we care about “true” examination. As I said elsewhere, the examination system was not handed to Moses on Mt. Horeb. It is a creation of Congress, intended to accomplish a particular purpose in a particular circumstance. Congress has now created a second, different process that can also lead to granted claims, but which serves a different purpose in different circumstances. Why should we care if the IPR process is not a “true” examination?

                (2) Such an off-ramp really would be a self-defeating add-on to the IPR system. As I said, IPRs are intended to be a faster and cheaper alternative to litigation. If claims could be shunted out of IPR and into an examination process of indeterminate length and expense, it would defeat the purpose of IPRs. After all, what you are describing is essentially pre-AIA inter partes re-exams. There is a reason why very few of those were ever requested—because they serve very little useful purpose. They simply add time and expense to litigation, which is the opposite of the effect that Congress intended when it created the IPR.

                1. An invalid claim in a granted patent is an offense against the public domain and the rights of all U.S. residents.

                  LOL – Lujan Ho!

      2. You can raise new art for proposed claims.

        1. Is there an IPR decision with precedent for that?

          1. It appears (at least in the case of this thread), that any such “IPR decision for precedence” may not be sufficient.

            See Dave Boundy’s posts above.

  10. “The opinion package, is 148 pages in length and includes five separate opinions walking the question of deference to PTO Decisionmaking.”

    What a debacle.

    1. Yes 6, that may be strange and messy, but it is not all that significant, since the Court is well aware of the pending Congressional efforts to entirely eliminate the Chevron doctrine [of deference to statutory interpretation by an agency handling that statute]. By the majority not relying on the Chevron doctrine for this specific issue of statutory construction they may even have made this decision slightly less likely to be taken by the Supremes? But they did not hold that they would not rely on it in other cases.

      1. “since the Court is well aware of the pending Congressional efforts to entirely eliminate the Chevron doctrine [of deference to statutory interpretation by an agency handling that statute]”

        Yeah I’m aware of those as well. I’m still not sure if there should be chevron or not in my own personal opinion. It seems good on the face of it, but then agencies start getting into things like creating kangaroo se xytime college “mini-courts” (through their interpretatin’ powaz) because hur dur muh s’criminations and then I’m like “ok, looks like these expert agencies aren’t actually all they’re cracked up to be, time to relieve them of their authority”. Still deference might be somewhat appropriate for some narrow range of issues. Maybe it could be for issues that mostly entirely only affect the agency itself. Otherwise, if its interpretatin’s start having substantive effect on people outside the agency then it might have to be curtailed and deferring might shouldn’t be handed out like candy.

        “By the majority not relying on the Chevron doctrine for this specific issue of statutory construction they may even have made this decision slightly less likely to be taken by the Supremes? But they did not hold that they would not rely on it in other cases.”

        Indeed so. I would say that they would rely on it in other cases. They are after all bound by their USSC precedent. We can’t have the whole white cis hetero patriarchal lawl crumble just because of some gender activist leftists assuming control of an agency (etc.) or their being some tensions in other regulatory schemes.

    2. Reminds me of the Alice en banc.

      1. Yeah, that about sums it up.

  11. The actual decision seems clear enough – the IPR Petitioner, not the patent owner, has the burden of persuasion to prove substitute [amended] claims unpatentable, and prior decisions to the contrary are overruled. The majority did not give Chevron deference to a PTO interpretation for what they considered an ambiguity in the statute on this particular issue.

    [But may this require Board decisions and possible appeals as to how much additional time and cross-examination, if any, will be be provided for the Petitioner’s response to the proposed claim amendments, especially if they are submitting additional prior art [or a 112 non-enablement attack] re newly-added claim elements? Would anyone care to comment on that?]

    No wonder this case took so long for the court to decide en banc. Their admissions of difficulty in getting to an agreement are unusual. Furthermore, unfortunately, Judge Stoll did not even participate.

    1. how much additional time and cross-examination, if any, will be be provided for the Petitioner’s response to the proposed claim amendments

      “If any?”

      LOL

      1. not sure where your “LOL” is coming from – the point here is that the person wanting to the patent gone may need some time to look at the amended claim and make a case for that amended claim to ALSO not be patentable.

        As mentioned above, the “at least it is more narrow” may “sound good on its face, until one realizes that the “what” in “more narrow than what” has just been thrown out, and you have no real intermediate fallback point – AND that lack is now on the party wanting the patent gone.

        From you, I would have expected the opposite of an “LOL.”
        I am not certain that you understood that which you were commenting to.

    2. P.S. This decision undercuts one of the main objections to IPRs without significantly affecting them, because so few patent owners even attempt claim amendments within IPRs [rather than with reissues], and are still stuck with “intervening rights” if they do.

    3. [H]ow much additional time and cross-examination, if any, will be be provided for the Petitioner’s response to the proposed claim amendments, especially if they are submitting additional prior art [or a 112 non-enablement attack] re newly-added claim elements?

      It seems to me that the right way to deal with this is for the PTO to do a rule making that says that replacement claims must be presented in the patent owner’s (pre-institution) response to the petition. Failure to propose replacement claims that stage waives the right.

      If the patent owner presents the replacement claims at that early stage of the process, it seems to me that no additional time would be required, and thus none needs to be granted. This is important, because there is a one year statutory deadline, so I am not really sure how additional time could be granted, absent a statutory change by Congress.

      1. Yes, IPRs need a specific rule deadline for patent owners to file any requested claim amendments after they have had sufficient time to study the prior art and claim charts they were served with by the Petitioner.

  12. Federal Circuit: PTO Must be More Liberal in Allowing Amendments during AIA Trials

    Translation: “You have to ignore the law and just let things slide every once in a while. You’re dealing with very entitled people — the wealthiest people in the country. They just have to get their way sometimes, no matter what.”

    1. Translation: “You have to ignore the law…”

      Not to put too fine a point on it, but what today’s decision is to restore the law, not ignore the law. Congress provided an opportunity to propose amendments in IPRs (§316(a)(9)) and that the challenger should have the burden of proving unpatentability (§316(e)). Today’s decision serves to restore those Congress-made laws in the face of implausible PTO regulations to the contrary.

      1. 316(e) doesn’t fall under the amendments section.

  13. The systemic problem isn’t PTO regulations.

    The problem is vast reams of junk patent specifications without one single non-obvious idea.

    Everybody knows this.

  14. This is yet another example of how fractured (politicized?) the Federal Circuit has become. If the court can’t do its job, we should go back to having the regional circuit courts decide patent appeals.

    1. Your conclusion does not follow from your premise here. A fractured CAFC still gives a uniform law (dissenting and concurring opinions, while often interesting to read, are not law). Circuit splits, by contrast, give a fractured law. It is uniformity of law that the the Congress was trying to promote by creating the CAFC, not unanimity among judges.

      1. A fractured CAFC still gives a uniform law

        Only IF the CAFC (panel to panel) were to give proper adherence to its own binding conditions.

        That is just not so.

        Which is why we see “ricochet” eligibility decisions from panel to panel.

    2. CW5 you would not actually like what you think you would get. I’m old enough to have been there. Differences between Fed. Cir. panel decisions PALE in comparison to extreme differences between certain circuits and their patent survival rates before the Fed. Cir. was established.

  15. What a mess. 6 judges think the statute is ambiguous and then disagree on the Chevron/Auer question. 5 think it’s unambiguous but disagree on which way it’s unambiguous. This feels like an inevitable Supreme Court review situation unless the PTAB enacts regs first to tee that dispute up more clearly.

  16. When read in conjunction with the directive of § 318, we believe that the Board must assess the patentability of all claims in the proceeding, including amended claims that have been entered into the proceeding after satisfying the requirements outlined in § 316(d), and must do so through the lens of § 316(e).

    Interesting. CAFC declined to rehear the SAS case last year, but have come around to their side.

  17. The Federal Circuit has become the very problem that it was created to solve. What is the difference between inconsistent panel opinions and splits in regional circuits?

    1. “splits in regional circuits?”

      Those could hypothetically involve hundreds of differing opinions I suppose, rather than a mere handful.

  18. “Punt.”

    (in other words, PTAB, we don’t like the result you ended with, cannot figure out and agree on a basis, so we are giving this back to you to stall a bit – why don’t you take some time and redo what you did so that we will be asked on appeal to answer a different question, one with which we may be able to come to some agreement [with hopefully this becoming moot with the Supreme Court and the Oil States case rendering post grant review unconstitutional anyway])

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