PTAB Request Amicus Support for its Decision on Immunity

In what appears to be a first, the Patent Trial & Appeal Board (PTAB) has requested briefing from Amacus Curie on the question of whether Tribal Ownership of a patent immunizes the patent from Inter Partes Review (IPR) challenge. The case is Mylan v. Saint Regis Mohawk Tribe, IPR2016-01127 et al.

The panel writes:

[W]e authorize briefing from any other amici curiae, which shall also be no more than 15 pages by December 1, 2017. To the extent possible, to avoid redundancy and in the interests of efficiency, we direct any interested amici who wish to present similar arguments to the Board to coordinate in their filing of a joint amicus brief. Arguments redundant to those already presented by the parties or other amici may not be considered.

[98 – Order granting Amicus briefs].  Interesting approach to what is essentially a backdoor administrative rule-making.

37 thoughts on “PTAB Request Amicus Support for its Decision on Immunity

  1. 6

    I think that calling it “backdoor administrative rule-making” is a bit harsh on the PTAB here. After all the PTAB being suddenly faced with at least two demands to stop on-going IPRs cold with motion assertions of tribal immunity, for which they have no guidance from any directly applicable case law, constitutional provision, statute or rule, and an issue clearly outside of any patent law expertise. Asking for amicus briefs on this issue before deciding not only makes good sense, it will also prepare the IPR record for an appeal decision on this legal issue by the Fed. Cir. which will clearly follow.
    In that regard the PTAB panel should also be demanding, as an essential attachment for such motions, a production of copies of the actual “assignment” agreements with the tribe and any licenses related thereto to see if the assignor is still the “real party in interest” under their rules, and/or if [as the first D.C. judge to get hit with this tactic questioned on his record] it was a real or a “sham” assignment.

    1. 6.1

      Absolutely agree that the legal aspects of “sham” (as that term is to be properly used) should be 100% vetted.

      F A R too many (including Congressmen and even judges, so I am to understand) have been throwing that term around without understanding what it legally means.

    1. 5.1

      I’ve decided that you must really be a closet Trump supporter. I mean, look at your use of labels: Ferdlist Suxiety, glibertarian, etc. I mean, you probably were on Trump’s campaign team and helped him come up with Lyin’ Ted, Crooked Hillary, Little Marco, and the rest.

      1. 5.1.1

        I mean, look at your use of labels: Ferdlist Suxiety, glibertarian

        Except the glibertarians and Ferdlist Suxiety are quintessential examples of Trump supporters (the other quintessential examples being the li za rd brains / dep l0r able / Htler youth types).

        Please put an end to your ridiculous “both sides do it” silliness and the tired reflection strategy. It was stale ten years ago. It’s liquified sew age now.


          You quite missed the point as to why your actions bring about the comparison to Trump.

          (hint: the ideologies have nothing to do with it)

  2. 4

    Oh boy this is getting more interesting by the second! Really looking forward to the glibertarian reaction on this. Tell us, guys: since when does a brutal assault on a sitting US Senator end up with a misdemeanor charge and a piddling $7500 bail? What happened here? Perhaps Randy (R) dipped his pen in the wrong ink.

    Best part, there is a patent angle to all this!

    The Kentucky State Police arrested the neighbor, Rene Boucher, 59, and took him to the Warren County Regional Jail, where he was released on $7,500 bond. Mr. Boucher, an anesthesiologist who invented a rice-filled vest used for back pain, has a court date set for Thursday. It is unclear what set off the altercation.

    link to

    Boucher applied for a patent for the vest in February 2003. Since then he’s been working his way through the maze of requirements needed to get a medical product on the market: Trademarks, the Federal Trade Commission and Food and Drug Administration, finding a Chinese factory to produce it and dealing with import regulations, etc. A patent is pending. [story dated 2005]

    I guess it’s true: every US patent creates a Chinese job. LOL

      1. 4.1.1


        I just wish I knew that you could break four or five ribs of a sitting US Senator and pretty much walk away. Who knew it was that easy?

      1. 4.2.1

        …of this one…

        dcl, do you realize just how often Malcolm engages in this type of blight?

        It’s not like this is a rare occurrence.

  3. 3

    Samsung v Apple was denied cert. I guess SCOTUS has lost some of its appetite for slapping around the CAFC.

    1. 3.1

      We can only hope. The whole patent system would be much improved if the SCotUS could conveniently forget that the CAFC even exists for another couple decades.

      1. 3.1.1

        The hypocrisy is out of control.

        Does your firm give you billable credit for your patentlyo time?


            These IPR c/l/o/w/n/s applaud SCOTUS and its role in patent law with cases like Cuozzo and TC Heartland, but with Oil States coming up “oh no generalist Court!”

            Out of control hypocrisy.


              In vain will you look for a comment where I applauded Cuozzo or TC Heartland. In fact, with the exception of Monsanto v. Bowman, I am hard pressed to think of a patent case in recent memory of which I have had a nice thing to say. If you think that I am being hypocritical for faulting the Court in taking Oil States* but effusively praising the Court in other cases, you evidently have me confused for someone else. I have no effusive praise for the Court, in any patent case.

              * I really cannot remember whether I faulted the Court for taking cert. in Oil States. If I did express such criticism, then I withdraw it. My view on Oil States has reversed since back in the day when cert was merely a possibility. I now agree that IPRs are unconstitutional as currently constituted, so it will be all to the good if the Court so holds.


                “I now agree that IPRs are unconstitutional as currently constituted,”

                What changed your mind?

      2. 3.1.3

        Gotta agree with Ned on this one Greg….

        Ignoring the series of bad decisions which Prost and Dyk faction of the CAFC has promulgated in recent years would be a huge mistake by the SCOTUS.

        I don’t disagree with you that the SCOTUS is general BAD dealing with patent cases (hello Ebay….hello Alice…etc) ….but I can’t even imagine the damage that Prost and Dyk would foster if the SCOTUS weren’t even a THEORETICAL brake to their blatant anti-patent holder bias.


          What evidence is there that the SCotUS acts as any sort of “brake” on the worst elements of CAFC jurists? Can you point to any recent incident where one of the CAFC’s more egregiously pro-defendant opinions was reined in by the SCotUS?

          It might well be that the CAFC is staffed with some patent-system arsonists, but the SCotUS are supplying the CAFC with matches and gasoline.


            Completely agree.

            (My preferred analogy is the “fire-hosing of simians in a cage with bananas suspended above a step ladder”).

    2. 3.2

      I thought the SG’s amicus brief made a compelling bad vehicle argument. Samsung should have objected to the jury instructions.

    3. 3.3

      Ben, no surprise, the only part of that case with cert appeal seemed to be the allegedly strange Fed. Cir. handling of its en banc reversal of its panel?
      If you are tracking that case, is there a chance of Apple now getting an injunction as well as damages against Samsung on any of those Apple utility patents?
      Yes, the Supremes do seem to be taking more “hot potato” non-patent constitutional cases now, and that may well reduce the unusually high number of patent cases in the past few years.

  4. 2

    I notice that on Friday the CAFC affirmed the invalidation of some of the Univ. of Md’s claims in an inter partes re-exam. Maybe the university just forgot to plead sovereign immunity as a defense, but does not the fact that the CAFC affirmed this PTAB judgment rather call into question the premise that anyone (even states) enjoy sovereign immunity from PTAB inquiries?

    1. 2.1

      My comment from the other thread: Perhaps the PTAB does not levy “judicial power” when reviewing examiner action in reexams, but does when adjudicating IPR “trials.”

      A distinction without a difference, perhaps, but who knows in the crazy world of admin law.

      1. 2.1.1

        Yes, one can name some distinctions between IPR and inter partes reexam, but (as you acknowledge, “distinction without a difference”) none that are genuinely material to the point in issue here.

      2. 2.1.2

        PVT, there may be a number of ways the PTAB could exercise “judicial power,” any one of which might be sufficient. But the most important one of all is the remedy of cancellation of claim and authority for this point is Supreme Court itself. See, McCormick Harvesting.

  5. 1

    What do you mean “backdoor”? Administrative agencies use tribunal decisions to announce agency policy all the time (e.g., NLRB decisions). This is just as “frontdoor” a means of rulemaking as the other common, informal rulemaking procedure known as notice-&-comment.

    1. 1.1

      What do you mean “backdoor”? Administrative agencies use tribunal decisions to announce agency policy all the time (e.g., NLRB decisions).

      An agency requesting amicus briefs in an adjudication is a very rare thing and has at least the superficial appearance of notice-and-comment rulemaking in all but name. Maybe “backdoor” has some objectionable connotations, but this is at least an unusual procedure.

      But unusual doesn’t mean wrong. I think it would actually be weird to decide this issue by rulemaking. Per Chenery II, the choice whether to proceed by rulemaking or adjudication is generally within the agency’s discretion, and the choice seems totally reasonable here. link to

      1. 1.1.1

        An agency requesting amicus briefs in an adjudication is a very rare thing and has at least the superficial appearance of notice-and-comment rulemaking in all but name.

        Sure. No argument there.

        Maybe “backdoor” has some objectionable connotations, but this is at least an unusual procedure.

        My only quibble is with those objectionable connotations of “backdoor.” The implication is that the PTO is doing something skeevy here, and I simply wish to make clear that the process here appears quite above-board to my eye. Nothing skeevy in the least.

      2. 1.1.2

        Not sure that the administrative agency of the SEC is directly (or even substantially) parallel enough to the administrative agency of the USPTO – vis a vis rule making authority – for the cited case to be pertinent (and to allow the USPTO to do by “judicial act” what might actually be required to do under “proper” notice and comment).

        Maybe this is what “backdoor” is in reference to….

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