Oil States Transcript. Commentary to follow.
Interesting quotes:
Justice Sotomayor: If I own something, which is what your basic position, I understand, is, that this is a personal right, how can a government agency take that right away without due process of law at all? Isn’t that the whole idea of Article III, that only a court can adjudicate that issue?
JUSTICE GORSUCH: [W]e have a number of cases that have arguably addressed this issue already, like McCormick, for example, in which this Court said the only authority competent to set a patent aside or to annul it or to correct it for any reason whatever is vested in the courts of the United States.
Is there anything in the transcript of the other IPR case also argued at the Sup. Ct. on Monday, SAS Inst., Inc. v. Matal,* that gives any attitude clues as to Oil States?
*[On whether section 318(a) of the Patent Act requires the PTAB to issue a final written decision as to every IPR Petition-challenged claim, or only those claims the PTAB actually puts into an IPR.]
Since no one on this blog has even yet mentioned the parallel SAS Inst., Inc. v. Matal oral arguments, here is the gist of the observations made on the Patents Post Grant blog:
This case was apparently not taken up to limit Chevron Deference, because that never came up, just straightforward statutory interpretation questions.
Other than for Justices Gorsuch and Alito, the PTAB interpretation seemed to be accepted under the IPR rulemaking discretion provided for it in the AIA. The fact that only one amicus brief was filed in this case may have clued in the Court that no one other than the parties cared much or really wanted a Fed. Cir reversal here [which would have made a lot more work for the PTAB and both IPR parties]?
Another report says that Justice Sotomayor observed in the parallel SAS Inst., Inc. v. Matal oral arguments: “So you’re really looking for a way around the ruling in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), that decisions to institute are non-appealable?”
I thought that question was a rather loaded question, and one that should have been stepped around far more easily than it was.
The answer that I thought should have been provided was: “No. This is NOT an attempt to have any type of “way around” the ruling in Cuozzo Speed, but rather, it IS an attempt to put some teeth into the supposed estoppel effects that should attach to an IPR effort.
Informing Justice Sotomayor that the prior decision was not the focal point (directly, albeit politely), this would have indicated back to her that her loaded question was recognized as such, and then redirect her back to the actual issue on the table.
Instead, counsel was “sucked in” to the trap and spun wheels round and round.
Please Pardon Potential (re)Post:
anon
Your comment is awaiting moderation.
November 29, 2017 at 12:17 pm
I thought that question was a rather loaded question, and one that should have been stepped around far more easily than it was.
The answer that I thought should have been provided was: “No. This is NOT an attempt to have any type of “way around” the ruling in Cuozzo Speed, but rather, it IS an attempt to put some teeth into the supposed estoppel effects that should attach to an IPR effort.
Informing Justice Sotomayor that the prior decision was not the focal point (directly, albeit politely), this would have indicated back to her that her loaded question was recognized as such, and then redirect her back to the actual issue on the table.
Instead, counsel was “ s u c k e d in” to the trap and spun wheels round and round.
Not sure about the tea-leaf reading there, but certainly, Oil States is the case with the much heavier potential impact.
On an admittedly partial read of the transcript, I will note that my positions seem to be the ones that the Court is indicating that it will take.
Paul, You are correct. In all of this we lose sight that it is the claims that are being challenged, not the patent as a whole. Though I admit that the way most patent claims are drafted these days, many practitioners do not give the same degree effort in drafting a dependent claim than they do for an independent claim. Unfortunately, many practitioners consider dependent claims as fill in. They are not, they should be drafted in a way that not only considers potential infringement activity, but more importantly, stake out defensive validity positions.
I liked Roberts position alluding to Lucas v South Carolina (no house on beach for you, just a blanket and picnic basket – held to be not a taking). Yes,Lucas was the result of a Judicial proceeding, and no question of due process there, but the issue was based on state law and executive regulation of that law. The PTAB does not necessarily remove all rights, just the one that should have never been granted in the first place. If you hire a practitioner who understands dependent claims you still have your blanket, or maybe just a small house on the beach.
Very well stated.
Also worth mentioning at this point that one of the main reasons that claims aren’t amended in IPRs is not because patentees are not given a chance to amend but rather (1) there is no support for anything narrower and (2) the patentees don’t want a blanket, they want a mansion on the beach and they want to close the beach to the public and charge admission and nothing else matters to them.
Your cognitive disssonance is showing.
Again.
Professor, that is some selective outtakes. Petitioner got hammered.
Those are*
Very much so, and for the very reasons I said she would get hammered – trying to defend reexaminations.
Not only that, Ned. Only Justice Gorsuch, maybe Justice Kagan, seemed interested in the private right argument. Justices Alito, Kennedy seemed to reject that outright.
The score board is broken.
yeah, but back in the McCormick days, there were no federal statutes for reexamination, reissue, or the like, right? they were all codified by the USPTO rules but not Congress. Ned, am I correct here? So Gorsuch’s reliance on McCormick may be misunderstood.
His follow-up was “Why is your reading that [those cases where] constitutional, if you could help me with that?”
patent leather, court was construing the reissue statute that ordered the PTO to reexamine the original claims in the patent on application for reeissue. The construction given was that the examiner had no power to revoke the claims in an issued patent because that power was “vested” in the courts.
Are post-grant reviews under a similar constitutional attack? With PG Reviews you have the nine month window to “correct” administrative mistake. How does that change the argument (positions)? Would it fall with IPR, if that is the result?
To my mind, the one thing that might make PGRs different than IPRs is that PGRs only apply to AIA patents. Therefore, there is a plausible argument that a patentee has implicitly consented to PGR treatment. IPRs, by contrast, apply to all patents (pre-AIA and AIA) alike, and therefore there is no good argument that most patentees (including Oil States itself) ever consented to IPR. In other words, if the Court holds against IPRs, it will require subsequent cases to say whether PGRs also fail. It will not be self-evidently true that everything that applies to IPRs applies equally to PGRs.
This “implicit consent” position was negated (by another poster – so I am not taking credit) on a previous thread.
So you are not going to explain the argument, nor are you going to cite to it? Instead, you will simply aver that there exists somewhere in this universe a truly devastating rebuttal of my position.
Truly, what fair minded person could fail to be convinced by this?
Too busy at the moment, and since it was not my argument, I am merely pointing out that such an argument was made (and made on a post recently concerned with this topic; so no need for any type of “universal” search.
Perhaps the person who made that argument will step up and fill the gap…
such an argument was made
Also every patent creates a job.
So nyah nyah nyah, Greg.
Your reply is merely trolling and adds nothing of use here Malcolm.
Go figure
I posted a link to the original position (by LodeRunner) on the main thread, but it appears that the narrative there is not going in the desired direction and several of my comments to various positions on that thread remain blocked.
Still held in moderation on the other thread:
anon
Your comment is awaiting moderation.
November 29, 2017 at 6:40 am
Greg,
Here is your support:
link to patentlyo.com
By the way – you closed your eyes during that discussion so it is of little surprise that once again you fail to see things here.
“who could fail to be convinced” – says the guy clenching tight his eyes, fingers jammed into his ears and chanting loudly…
If you don’t want to be convinced, nothing anyone says will convince you. All that is left then is to highlight the fact that you are the one acting in a manner showing that you do not want to be convinced.
Good point, but on the other hand PGRs [never discussed in this oral argument?] cover far broader invalidity issues than IPRs and invite messy trials on disputed testimony, contested documents and dates, etc., that are far closer to Article III D.J. actions than an IPR or reexamination, which is limited to patent and publication content prior art.
But those problems have not had much exposure because there have been only a handful of PGRs. Because few patent get asserted within only 9 months from their issue date. And becuase their estoppel for a losing petitioner is broad and dangerous.
Different estoppel effects?
Comments are closed.