En Banc: No-Opinion Judgments and Changing Course mid-IPR

SNF Holding Co. v. BASF Corp. (Federal Circuit 2017)

Important petition for en banc rehearing filed by the Duffy-Dabney team (Hughes Hubbard) with three questions presented:

  1. Whether 35 U.S.C. § 144 requires this Court to issue an opinion when exercising original jurisdiction under 35 U.S.C. §§ 141–144.
  2. Whether 35 U.S.C. § 316 authorizes the USPTO to change an instituted ground of inter partes review (“IPR”), post-institution, in a manner that conflicts with the ground as stated in the petition on which IPR was instituted.
  3. Whether a patentee, in an instituted IPR, can impeach its own admissions in the specification of a challenged patent.

Read the petition: 2017-11-16 Petition.  The case revolves around BASF’s US Patent No. 5,633,329.  The PTAB instituted review, but ultimately affirmed patentability of the claims – although with a changed claim construction in the final decision.


9 thoughts on “En Banc: No-Opinion Judgments and Changing Course mid-IPR

  1. 3

    The Petition is well-written, but I don’t think they should have opened up with the argument that 35 U.S.C. 144 mandates that the CAFC issue a written memorandum and opinion in every PTAB appeal. That argument is a heat seeking missile that will likely lead to denial of rehearing. I suspect there isn’t a single judge at the CAFC who even wants to contemplate a world in which a panel would have to write a written opinion in every PTAB appeal, no matter how groundless the appeal may be.

    And all Section 144 says is that the CAFC, upon its determination of the appeal, “shall issue to the Director its mandate and opinion…” Nothing in the statute actually mandates that the CAFC issue an opinion; it only requires that an opinion, if written, be transmitted to the Director upon the CAFC’s determination of the appeal. (A mandate, of course, would be a part of any appeal disposition.) It is true that administrative agencies are statutorily obligated to write opinions stating the bases of their decisions, but that requirement does not extend to Article III courts reviewing those decisions. The fact that the proponents of this argument rely almost entirely on the word “opinion” in Section 144 reveals how tenuous the argument is.

    This is another one of these “trendy” nuisance arguments that arises from Patently-O (like the argument that 101 patent eligibility cannot be raised in court), that simply needs to be put to rest.

    1. 3.2

      Re: “..the argument that 35 U.S.C. 144 mandates that the CAFC issue a written memorandum and [full blown] opinion in every PTAB appeal … is a heat seeking missile that will likely lead to denial of rehearing.”
      Loved that vivid expression LR. But subsequently it occurred to me that the Fed. Cir. might actually be so aggravated by that argument being so repeatedly made lately as to want to take it up to put an end to it?

  2. 2

    That rehearing petition avoids any discussion or analysis of the purpose of Section 144. Very crafty though, but there was absolutely zero intent of the statute to impose a written opinion requirement with reasons and bases on the Federal Circuit. Even assuming the statute requires a “written opinion,” — which it does not — there’s a well-accepted difference between an “opinion” and an “opinion with reasons and bases.” link to papers.ssrn.com

    1. 2.1

      G. My paper explains that the rule requiring written opinion goes back 100+ years and is generally an important principle of administrative law – albeit not a constitutional requirement.

      1. 2.1.2

        “Important principle of administrative law” — AGREE. Failure to answer material traversed, failure to decide the issue presented (especially petitions decided in Office of Petitions0, is one of the most constant sins at the PTO.

        But that doesn’t lead where you’re trying to take it. Agencies have to write opinions. But an Article III court is not subject to “administrative law,” and Article III courts don’t have the same obligations.


          But that doesn’t lead where you’re trying to take it… But an Article III court is not subject to [_]

          Can Congress write a law making the Article III court “subject to” a specific act in furtherance of the Agency requirement?

          If one takes the opposite view of Judge Rich’s Ghost and accepts that Congress intent was to foster feedback from the Article III forum back into the agency process (which is where ANY of these particular Article III write-ups go to), then it at least appears logical (and in fact necessary) that THAT feedback is required.

          This plays directly to Prof. Crouch’s longstanding anti-rubber stamp Rule 36 position.

  3. 1

    5,633,329? When does even back infringement recovery expire for this old patent?

    Question 2 is a bit misleading, as IPR “grounds” are the petitioner’s cited art and the spec admissions of the subject patent. What changed here was the claim scope interpretation for the decision after the trial evidence and arguments. Even D.C.s do that quite often.
    The answer to Question 3 should be an easy “no” for an issued patent if what the spec described was really an admission of what was prior art to the applicant?

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