Amicus Briefing for PTAB Decision on Tribal Immunity in IPR Proceedings

Arguing Against Immunity

Arguing for Immunity



43 thoughts on “Amicus Briefing for PTAB Decision on Tribal Immunity in IPR Proceedings

  1. 7

    Am I missing something here. The tribe acquired the patents after the IRPs were filed. They take the patents with this condition. They bought themselves into the litigation and IPRs, which should at least be an implicit waiver.

    I did not see any arguments in the briefs arguing this specific point.

    The arguments are more directed to arguing immunity for patents that were never asserted in litigation.

  2. 6

    Say Greg, I think you’re missing a nuance. I am talking about an issued patent. Gregory Manson was about a patent that had yet to be granted. The situation is entirely different because the government by definition is an adverse party with respect to an applicant.

    1. 6.1

      Sure, that is a distinction. I just do not see why it is all that meaningful a distinction. The utility requirement for a pending claim is exactly the same as the utility requirement for a granted claim. In Manson, the government had its chance to contest the claim’s patentability in front of a U.S. court and it lost (In re Manson, 333 F.2d 234 (C.C.P.A. 1964)). When it sought certiorari review in the SCotUS, one of the contested issues was whether the government had standing to maintain the appeal, given that there was no injury in fact. The Court held for the government on that point, which implies that the existence of a patent claim that does not satisfy the utility requirement is some sort of injury to the government. I do not really understand why this is an injury to the government (as I said before, it is not as if the Commissioner faces any sort of punishment for granting an invalid claim), but the Supreme Court held that it is an injury to the government sufficient to support standing, and the Supreme Court’s word on this sort of point is (quite literally) law.

      I suppose that one could say that in the pre-grant circumstance, the government is being ordered by the court to do something that it does not want to do (publish a set of claims as part of a granted patent), and that is the injury. If so, however, then the same logic establishes the injury for a granted claim. In that circumstance, the government wants to publish a certificate of correction rescinding that claim, and the patentee is resisting the issuance of the certificate of correction, so the government’s injury is the legal restraint on its ability to publish something that it wants to publish.

      Neither of those really seem like an injury to me. If, however, being forced to publish something that you do not want to publish is an ‘injury’ sufficient to support Art. III standing, then it rather strains credulity to say a restraint on the ability to publish something that you do want to publish is not an equally valid ‘injury.’

      1. 6.1.1

        You err in trouble ing to treat pre-grant and post-grant as if there was no difference.

        Not only is this a fundamental mistake – it is one that has been pointed out to you numerous times.

        Perhaps you should seek a different position. You seem unable to grasp important points of law in the patent law sphere.


          I see a lot said about me, personally, in 6.1.1, but very little said about U.S. patent law. I would have thought that on a board like this one, folks would consider U.S. patent law a more interesting topic of discussion. If you prefer to wander uselessly into irrelevant digressions about the personal failings of individuals, however, I suppose that there is nothing to stop you (so long as you stay on the right side of libel laws). De gustibus non est disputandum, I suppose.


            The “lot about you personally” is that you personally continue to get a very basic thing about patent law wrong.

            Sorry Greg, but if you don’t want to see that “personally,” then do not “personally” get that very basic thing wrong.

            Thus, you double down in your error by trying to spin this as “to wander uselessly into irrelevant digressions about the personal failing” – as my point is NOT
            i) wandering
            ii) useless
            iii) irrelevant
            iv) digression.

            Your personal failing is directly on point, would be useful (for all concerned for you to correct your rather blatant error), being on point, is certainly relevant, and not at all a digression.

            I “get” that you may “feel bad” for being called out for such an egregious error, but the nature of your error remains. Instead of being defensive or whining, the better path would be for you to correct your error or remove yourself from the area of law that you seem incapable of grasping that you HAVE made an error (or simply do not care about the error and the magnitude of the error).

            This is NOT a matter of “taste.” How very odd of you to try to spin it so.


              Wow, those are a lot of words to spill on a patent law board without ever actually addressing the substantive merits of an issue of patent law. I must be uniquely fascinating, that you wish to spend so much time discussing me, when there is a much more interesting subject of patent law at issue to discuss. I am not sure whether to be flattered or creeped out.


                More spin Greg – and more spin in error.

                “without ever actually” – wrong – I shared the very basic nature. Just because it is basics does not mean that I have not shared the substantive merit,.

                “spend so much time” – wrong – the correction of you took hardly any time at all. YOUR spinning, on the other hand – is taking time – and as I noted, is time that would be better put to use correcting your rather ignoble error.

                “whether to be flattered or creeped out” – How about neither? How about instead of spinning, you simply figure out the basics (or care enough to recognize your error ON the basics).


          You… treat pre-grant and post-grant as if there was no difference.

          I think that this rather oversimplifies the point I am making. I will cheerfully acknowledge that pre- and post-grant makes a difference for some points of patent law. For example, you can get an injunction on a granted patent, but not on a pre-grant application. Similarly, pre-grant claims are construed according to the BRI, while post-grant claims are construed accordingly to the Philips standard.

          On the other hand, there are other points of patent law for which the pre- vs. post-grant feature makes no difference at all. The requirements for assignment in writing, for example, are exactly the same for a granted patent as for a pre-grant application. Similarly, the substantive standard of compliance with the written description requirement are exactly the same pre- and post-grant.

          In other words, it is not enough to observe that there are some differences between ways in which the law treats pre-grant applications and post-grant patents. One must, before arguing the point in a given circumstance, establish that the circumstance in dispute is one in which the law makes the pre-grant vs. post-grant distinction. This is not a trivial point, but rather one which must be argued and established.

          As I point out in 5.1 above, I am aware of no cases holding that compliance with the utility requirement operates any differently pre-grant than post-grant. Nor can I see any policy reason why it ought to operate differently pre- and post-grant. Merely to observe that Brenner v. Manson concerns a pre-grant application, therefore, rather talks past the point actually at issue.


            The NATURE of what you are dealing with – the item directly on point here – is different.

            As I have mentioned, this is NOT a new item that you have clenched tight your eyes to.

            At the moment of grant, the inchoate right of the inventor becomes a full legal property right.

            THAT is an extremely important – and basic – point.


              Well, somebody around here has their eyes clenched tightly shut, I will give you that. We will have to agree to disagree about who it is that answers to that description.

      2. 6.1.2

        Greg, we have American Bell (1897) and Brenner v. Manson (1966) that can be reconciled only if there is a distinction between the Government’s standing to challenge the validity of an issued patent and the Government’s standing to challenge the patentability of an application for patent yet to issue. I don’t recall that Manson ever addressed American Bell and its progeny therefore American Bell is progeny remain good law as far as I can tell.

        Thus, the government has no standing in a Article III court to challenge the validity of an issue patent. It has no standing to continue to assert that a patent is invalid in court if a party to an IPR has settled out.


          Ned, I am not following you. United States v. American Bell Telephone Co., 167 U.S. 224, 238 (1897) explicitly noted that the U.S. government does have standing to challenge a granted patent (“The right of the United States to maintain such a suit was affirmed in United States v. American Bell Telephone Co., 128 U.S. 315.”).

          In other words, the Court held that the government can challenge a granted patent for conditions of unpatentability (United States v. American Bell Telephone Co., 128 U.S. 315, 357 (1888)*), and in Manson that the government can challenge a pre-grant application for conditions of patentability. There is no distinction made between the two categories (pre- and post-grant) on the subject of standing of the government to challenge.

          What am I missing here?

          * “If such a fraud were practised upon an individual, he would have a remedy in any court having jurisdiction to correct frauds and mistakes and to relieve against accident; but it is said that the government of the United States — the representative of sixty millions of people, acting for them, on their behalf, and under their authority — can have no remedy against a fraud which affects them all, and whose influence may be unlimited… It would be a strange anomaly… to hold that in that department there should be no remedy for such a wrong.”


            Fraud vs. validity.

            Big difference.

            Fraud is on the government. It is harmed because it cannot perform its duties properly.

            Validity — the harm is is to the public generally, or to specific individuals or companies who infringe or would like to infringe.

            Please take a look at the case the Supreme Court relied on in American Bell (1888), Atty. Gen. v. Vernon. It doesn’t really support the point for which the Supreme Court cited it. I went into this in detail in the Alliacense brief. Atty. Gen. v. Vernon was not a grant from the government, but in exchange of property where the value of the property being exchanged was not stated in the patent. Thus the fraud was in a transaction, not in a grant.

            As we know, the writ scire facias was generally bought by an aggrieved person adversely affected by a patent, and the action was pursued in the name of the King. I believe the same form of action would be the proper way to attack and invalid patent in the United States.


              Fraud vs. validity.

              Big difference.

              Maybe. Maybe not.

              In any event, I am rather lost as to the point you are trying to advance here, Ned.

              When I pointed out that the government was held to have an injury sufficient to support standing in Manson, you replied that the only way to reconcile Manson with American Bell is to distinguish pre- and post-grant status. I do not see a contradiction between Manson and American Bell that requires reconciliation, so what is the authority to support your assertion that the government lacks standing to challenge a patent on which the government has not been sued?

              As I said, I agree with your instincts here. I do not see how the government can be said to be “injured” by the bare existence of a wrongly allowed claim, either pre- or post-grant. But the Court clearly does not see it my way on this point. What case can you cite to show that the Court sees it your way?


                The cases in front of you already.

                But your eyes are clenched tight (still) to what the difference means between an inchoate right and a full property right.

                A presentation of any other new case will not open your eyes Greg – only you can decide to do that.

                1. Your snideness only emphasizes my point:

                  But YOUR eyes are clenched tight (still) to what the difference means between an inchoate right and a full property right.


                Greg, the Supreme Court ruled in American Bell (1888) that the government was harmed by fraud perpetrated by an applicant during patent prosecution giving the government standing to sue in a court of equity for relief of the fraud. In American Bell (1897) the Supreme Court ruled that the government could not sue to have a patent canceled for invalidity. The government itself is not harmed.

                Greg, you have to understand the distinctions between specific harm to the government caused by deceit by an applicant and harm to the general populace that does not give government standing.

                In the case of Manson, the patent had yet to issue and was still under the jurisdiction of the Commissioner. I don’t see how there can be any serious question of standing in this circumstance. The government is essentially being ordered to issue a patent against its will.

                1. I confess, Ned, I still am not following your argument here. Perhaps you could give the pincites for the portions of the SCotUS opinions that you find otherwise-irreconcilable, but for the pre- vs. post-grant distinction? So far, I just do not see a conflict that needs to be squared by invoking the pre- vs post-grant distinction.

                  Mind you, I am not arguing that there are no distinctions between pre-grant applications and post-grant patents. Obviously there are. But just because some things are different pre- and post-grant does not mean that all things are different, and the very point in discussion right now is whether the particular point of government standing is different pre- and post-grant.

                  This is not a self-evident point, so it really requires some citation to authority to establish. I am perfectly willing to concede that if there is an irreconcilable difference between American Bell and Manson that can only be squared by invoking the pre- vs post-grant distinction, that would constitute authority sufficient to establish your point. So far, however, I do not see the contradiction that you posit between the two cases.

                2. Greg, let us put it this way, the two American Bell cases were about issued patents. One was decided to allow the government a cause of action to revoke a patent because it was fraudulently obtained. The second denied the government a right of action to revoke a patent for invalidity. Letter decision was reaffirmed and followed twice by the Supreme Court.

                  Brenner v. Manson was not about an issued patent. Brenner v. Manson did not discuss American Bell. Thus Brenner v. Manson provides no authority whatsoever on the topic of standing with regard to challenging the validity of an issue patent.

                3. But Ned, the 1897 Court never held that the U.S. lacked the standing to prosecute a suit for invalidity. The 1897 Court held that the U.S. had not adduced sufficient proof to make its case, but the 1897 case was decided, not dismissed for lack of standing.

                4. United States v. Bell Telephone Co., 167 U. S. 224 (1897), acknowledged prior decisions permitting the United States to sue to set aside a patent for fraud or deceit associated with its issuance, but held that the federal courts should not entertain suits by the Government “to set aside a patent for an invention on the mere ground of error of judgment on the part of the patent officials,” at least where the United States “has no proprietary or pecuniary [interest] in the setting aside of the patent [and] is not seeking to discharge its obligations to the public . . . .” 167 U. S., at 269, 265. Subsequently, United States v. United States Gypsum Co., 333 U. S. 364 (1948), referred to Bell Telephone as holding that the United States was “without standing to bring a suit in equity to cancel a patent on the ground of invalidity,” id., at 387, but went on to declare that, to vindicate the public interest in enjoining violations of the Sherman Act, the United States is entitled to attack the validity of patents relied upon to justify anticompetitive conduct otherwise violative of the law.

                  United States v. Glaxo Group Ltd., 410 US 52, 58 (1973)

  3. 5

    When we get the gays and intermingled people out of the PTO, how should we go about promoting a more Ch ris tian patent system, as the Founders intended? I guess start with taking the women out of the substantial positions where they don’t belong and put them in the cafeteria or in superficial positions where they can put on their make-up and look good for publicity purposes etc.

    Any other ideas? Specifically reaching out to the maximalists, who tend to be Repu kke types as everybody knows.

    1. 5.1

      Your “one-bucket” attempts are as offensive as your unmitigated race h a t e.

      That cognitive dissonance is not limited to patents, is it?

  4. 4

    Askeladden LLC (ownership is substantially irrelevant since PTO can continue with IPR without owner’s consent or participation)

    This might just prove too much, no? Does that mean that those IPRs against state universities really ought to have been instituted? After all, if ownership is irrelevant, then any sort of immunity predicated on ownership questions should be irrelevant.

    Maybe this is correct, but given how eager the PTO has been to avoid this question, consider me skeptical that you can convince the PTAB to decide an issue on these grounds.

    1. 4.1

      Another (necessary) ripple from the “patents are not property but are public rights” theme.

      If not property, no real “ownership” – no one to bother having an “ownership”-related interest such as sovereign immunity…


          I do not see the point that you are trying to make.

          What does this sideshow comment from you about “god” have to do with anything that I have said?

  5. 3

    Hi, I’m a patent maximalist. I can’t decide what movie to rent on my own or how to parallel park but I do know beyond any doubt that every patent creates a job and if we make it harder for innovators to make a million dollars off a granted patent we might as well become Amish.

  6. 2

    I thought the BSA and EFF amicus briefs against sovereign immunity would be similar, but look at their respective tables of contents arguments:

    “A. Other Federal Agencies Operating Under Similar Statutory Schemes
    Have Jurisdiction over Tribes……………………………………………………………5
    B. PTAB Agency Action in IPRs Implicates None of the Exceptions to the
    Tuscarora Rule……………………………………………………………………………….7
    “I. Inter Partes Review Is a Public-Interest Administrative Proceeding,
    Not Private Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
    II. Sovereign Immunity Does Not Apply to Inter Partes Review Based on
    Judicial Precedent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
    A. The Board Has Jurisdiction Only over Patents, and Exercises No
    Jurisdiction over the Patent Owner or Other Parties . . . . . . . . . 8
    B. The Character and Effect of Inter Partes Review Is Closer to Generalized
    Agency Action than Private Dispute Resolution . . . . . . 10
    III. The Board Should Certify This Question to the Director . . . . . . . . . 13 “

    1. 2.1

      There seems to be an underlying assumption that the government has a right to sue in the courts of law to have a patent canceled. There is no such right. The government itself is not injured, nor is it acting on behalf of any particular person that is injured and to whom it owes a duty. The government has no standing. The government simply cannot pursue patent cancellation proceedings in the interest of the public.

      I am constantly boggled by the fact that no one wants to raise this issue when the government is representing itself or the public as a party in an IPR proceeding in an appeal to the district court.

      If Congress cannot grant the government standing by legislation then how in the world can the government be involved adversely to a patent owner in the federal courts?

      1. 2.1.1

        Oh, so then “the government” — including anyone working for the government — can’t infringe either. Good to know.


          THAT is a serious straw man/misrepresentation there Malcolm.

          Ned’s premise here is clearly outside of the case in which the government is an actor in potential infringement of the the granted property right.

          Greg’s point then is just not in play in relation to the point that Ned was trying to make.

      2. 2.1.2

        The government simply cannot pursue patent cancellation proceedings in the interest of the public.

        Why not?

        The government can’t correct a mistake when the mistake is pointed out to it by the public?

        Where is that in the Constitution? Answer: nowhere.

        But, hey, if the whole thing is all about making rich white people richer, at all costs, then you’re reasoning makes perfect sense, Ned. And so does your complaining about “voter fraud”. Go figure.


          the whole thing is all about making rich white people richer,

          Your ISMs (including race) are showing YET again (you really are the Trump of these boards).


          “But, hey, if the whole thing is all about making rich white people richer, at all costs, then you’re reasoning makes perfect sense, ”

          Somewhat correct about what it all boils down, at least under lefty “logic”.

          That is to say, this is all a small side battle in the larger war between the white cis hetero christian patriarchial view of gubmit vs the leftists et al. challenging the same. Specifically it is the view of “equality of opportunity” vs “equality of outcome”. The leftist sees a bunch of white people getting some $$$ and their muh victims not, and thus proceeds to conclude that even though the entitlement program under 35 U.S.C 102 is literally available for everyone in the world, only whitey is, as a group (probably excluding a lot of asians, indians etc.), hugely benefiting. Thus, this is not equal outcome, thus it is anathema to their entire gubmental view of “forcing equal outcome”.

      3. 2.1.3

        I follow what you are saying here, Ned, but it seems to me that this position more or less failed when the Court held in Brenner v. Manson, 383 U.S. 519, 528 (1966) that the Government has the right to pursue review of the C.C.P.A. by certiorari. After all, the same logic applies—what injury does the PTO suffer if the C.C.P.A. instructs it to issue the patent? It is not as if the they cut off one of Brenner’s fingers every time he is ordered by the court to grant a patent. Still and all, the Court held that the government (i.e., the PTO) may seek certiorari to the C.C.P.A. to vindicate its belief that the claims in question are unpatentable.

        The Court never comes out and says what it is thinking on this point, but reading between the lines it appears that the Court simply regards the government as some avenging angel, charged by God to smite unworthy claims. It is not that the U.S. code gives the government this power, or even the Constitution. It is more as if such is preordained by ordered existence of the universe.

        As for people being unwilling to challenge this point, I would be delighted to see someone try. Somehow, however, I expect that the effort would get just as short a shrift as Manson got when he argued that dissatisfied applicants have a right of certiorari to the C.C.P.A., but the PTO does not.

  7. 1


    Just wanted to note that the PK/EFF brief is actually “amici collegii,” not “amici curiae,” for reasons explained in the brief.

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