Shenanigans, Time Bars, and Federal Circuit Oversight

Guest post by Saurabh Vishnubhakat, Associate Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering.  Although Prof. Vishnubhakat was an advisor at the USPTO until June, 2015, his arguments here should not be imputed to the USPTO or to any other organization. Prof. Vishnubhakat was counsel of record for the amicus brief by patent and administrative law professors in this case.

***

In its en banc decision in Wi-Fi One, LLC v. Broadcom Corp, the Federal Circuit held that applications of the one-year time bar for inter partes review are, indeed, subject to judicial review in light of the Supreme Court’s 2016 decision in Cuozzo Speed Techs. v. Lee.  The en banc decision, authored by Judge Reyna and joined by eight others, overrules the panel opinion in Achates Reference Publ’g, Inc. v. Apple Inc.  The panel in Achates had held that decisions about institution are unreviewable even where the time bar may have been applied incorrectly.

In a previous post discussing the oral argument, I noted three important issues that the court appeared to be considering: the balance of power between the PTAB and the district courts, the balance of supervisory power between the USPTO Director and the Federal Circuit, and the agency’s obligations of reasoned decision-making.  The en banc outcome focuses largely on the first of these issues.

The PTAB-District Court Balance of Power

In fact, the issue of court-agency power allocation was central to the whole case.  The one-year time bar of 35 U.S.C. § 315(b) forbids inter partes review if the petition is filed more than one year after the petitioner (or its privy or real party in interest) is served with a district court complaint for infringement.  Thus, the time bar forces a substitutionary choice: leave the court within a year and come to the PTAB, or do not come to the PTAB at all.  This boundary-policing function makes the one-year time bar qualitatively different from other provisions that also bear on the institution phase, such as the pleading requirements at issue in Cuozzo.

The APA Baseline

From looking to Cuozzo, much of the initial debate surrounding this case was over what constituted a “shenanigan.”  The Court in Cuozzo had held that routine determinations that are closely tied to institution are unreviewable under 35 U.S.C. § 314(d), but assured that other determinations may remain reviewable.  These include appeals based on constitutional arguments, on less closely related statutes, on interpretive issues whose scope and impact extend beyond merely the institution statute, or on agency actions that are plainly ultra vires.  These were shenanigans that the Court in Cuozzo did not purport to protect from judicial scrutiny.

Wi-Fi One, however, argued persistently (and sensibly) that the inquiry did not begin with Cuozzo’s exceptions.  As the en banc majority here agreed, the baseline should still be a presumed availability of judicial review under the Administrative Procedure Act.  That presumption was overcome in Cuozzo, but Broadcom here would have to overcome it anew and had not done so.

This jurisprudential point is an important reminder that each new argument for unreviewability must start from the same APA baseline.

Relatedness to Institution

In this case, the argument for unreviewability failed first because the one-year time bar are not closely related to institution—certainly less closely related than the requirements for a petition, including the particularity requirement at issue in Cuozzo.  In construing the nonappealability provision of § 314(d), the Court in Cuozzo had emphasized that what is immune from appeal is institution “under this section,” i.e., section 314.  The standard for institution is a reasonable likelihood of success on at least one claim in the patent.  The pleading requirements at issue in Cuozzo came from § 312 but were related to institution “under this section” because those requirements directly shaped how the likelihood of success would be evaluated for § 314 purposes.  The Director has discretion in this regard, as § 314(a) makes reasonable likelihood of success a necessary condition but not a sufficient one:

The Director may not authorize an inter partes review to be instituted unless . . .

The one-year time bar is different.  It is unrelated to institution “under this section” because it has nothing to do with the necessary reasonable likelihood of a petition’s eventual success.  Put another way, even a petition that is otherwise certain to succeed must be denied if it comes after the time bar.  As a result, though requirements such as pleading and particularity may be folded into the Director’s § 314 discretion to evaluate reasonable likelihood of success, the time bar cannot.  The time bar has no analytical connection to evaluating whether a petition is reasonably likely to succeed for § 314(a) purposes.  Therefore, the time bar is not unreviewable for § 314(d) purposes.

Scope and Impact

The argument for unreviewability also failed because the one-year time bar reaches, in terms of the “scope and impact” that Cuozzo described, well beyond merely “this section,” i.e., well beyond § 314’s institution decision.  The key to this inquiry is the substitution of the agency for district courts as a decision-maker on patent validity.  For a boundary-policing statute such as § 315(b), the scope and impact are broad and far-reaching.  The time bar is part of a larger set of structural provisions (also including, for example, court-agency estoppel) that strike an interbranch balance of power.  As a result, proper enforcement and supervision of the time bar is a concern not solely for the agency, but also for the Article III courts that compete with the agency.  As the en banc majority explained:

The timely filing of a petition under § 315(b) is a condition precedent to the Director’s authority to act.  It sets limits on the Director’s statutory authority to institute, balancing various public interests.  And like § 315 as a whole, [the one-year time bar] governs the relation of IPRs to other proceedings or actions, including actions taken in district court.

Judge O’Malley’s Concurrence

Judge O’Malley joined the en banc majority but also wrote separately to advance a simpler line of reasoning.  Her concurring opinion distinguishes between two authorities.  One is “the Director’s authority to exercise discretion when reviewing the adequacy of a petition to institute an inter partes review.”  The other is the Director’s “authority to undertake such a review in the first instance.”  Cuozzo implicates the former and so is unreviewable.  By contrast, the present case and others like it implicate the latter, and so the Federal Circuit “sitting in its proper role as an appellate court, should review those determinations.”  The goal of such an appellate review should be “to give effect to the congressionally imposed statutory limitations on the PTO’s authority to institute IPRs.”

Interestingly, where the en banc majority opinion emphasized the court-agency allocation of power in deciding patent validity, Judge O’Malley pointed to the agency-legislature allocation of power.  It is Congress that delegated to the Patent Office the power of substantive decision-making about patentability and its incidents.  But it is also Congress that crafted a fairly bright-line time bar and instructed the Patent Office simply to apply it.  For the Director to exercise discretion on the latter, with no judicial oversight, would be inappropriate:

Congress is well versed in establishing statutory time bars.  Congressional discretion should control the application of such time bars, not that of the Director of the PTO.  I do not see the need to say more.

The Dissent’s Case for Unreviewability

The case also drew a dissent from Judge Hughes joined by Judges Lourie, Bryson and Dyk.  In the dissent’s view, the language of § 314(d) is expansive: determinations whether to institute are nonappealable.  On this view, the majority’s reading is unjustifiably narrow because it limits the prohibition on judicial review to the § 314 criteria for institution, i.e., the reasonable-likelihood-of-success standard.  The majority reads out of the statute other determinations that occur at the institution phase, including application of the one-year time bar.  The dissent took a strong textualist approach, admonishing that “[o]ur inquiry should start and end with the words of the statute.”

In support of this textualist view, and in reading Cuozzo, the dissent disagreed about the relatedness of the time bar to institution.  The timeliness of a petition is closely related to the institution decision because what is unreviewable is broadly the decision “whether to institute.”  Compare, for example, the nonappealability statute for ex parte reexamination, which provides that “[a] determination by the Director . . . that no substantial new question of patentability has been raised will be final and nonappealable.”  The decision to proceed is nonappealable, but the decision to refrain is not.  For AIA reviews, the unreviewability of the decision does not depend on its outcome.  This suggests that the unreviewability of the decision should also not depend on its origins.  Institutions should be unreviewable where they are based on timeliness or any other input just as if they were based on the petition’s likelihood of success.

In support of its argument about relatedness, the dissent also pointed to the dissent in Cuozzo itself.  Justice Alito, joined by Justice Sotomayor, had criticized the broad reach of the Cuozzo majority’s opinion by arguing that the time bar was closely tied to institution and that their reviewability might rise and fall together.  The Cuozzo majority opinion, meanwhile, did not rebut this criticism.  The en banc dissent in this case took Justice Alito’s argument and the majority opinion’s silence as a sign of consensus that the time bar was, indeed, “closely related” to institution for Cuozzo purposes:

Moreover, although Justice Alito disagreed with the ultimate result in Cuozzo, even he recognized that “the petition’s timeliness, no less than the particularity of its allegations, is “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate . . . review,” and the Court says that such questions are unreviewable.

This issue was also a line of questioning during en banc oral argument—raised by Judge Chen, who ultimately joined the en banc majority.  The answer that I had suggested in my recap of that oral argument was that Justice Alito’s argument about the one-year bar should be seen as hortatory, intended first to build a majority and later, when the case was lost, to cabin the impact of the majority’s reasoning.  In other words, the dissent did not merely read the majority’s logic broadly but read it broadly as a reason to reject that logic.  Indeed, Wi-Fi answered Judge Chen along just these lines by discussing what the Cuozzo dissent was trying to accomplish—limiting nonappealability to a prohibition of interlocutory review—not merely what the dissent said.

Notably the en banc dissent in this case did not address the scope and impact of the one-year time bar, though that was a separate self-imposed limitation on the logic of Cuozzo.  The interbranch balance of power and the substitution between the Patent Office and the Article III courts, which figured prominently in Judge Reyna’s majority opinion, were absent from the dissent.

The Way Forward

Looking ahead, it is possible that Broadcom will seek review in the Supreme Court.  Following Cuozzo itself and the partial institution/reviewability controversy in SAS Institute v. Matal (and assuming the entire PTAB system is not invalidated in Oil States Energy Services v. Greene’s Energy Group), a grant of certiorari in this case would be a third foray by the Court into the specific issue of Federal Circuit review despite § 314.  The en banc dissent has laid out a reasonable roadmap toward a petition for certiorari.  It expressly and repeatedly argues that the en banc majority is inconsistent with Cuozzo.  It characterizes the en banc outcome as an effort “[t]o sidestep this binding precedent.”  And it points to the colloquy between Cuozzo’s own majority and dissent to suggest consensus on the issue now in dispute.  Taken together, these arguments invite further Supreme Court clarification.

However, whereas the facts of Cuozzo made a reasonable case for unreviewability—evaluating the requirements of the petition is, after all, part and parcel of determining the petition’s likelihood of success—the facts of Wi-Fi One v. Broadcom suggest a clearer case for the opposite conclusion, especially in light of the scope and impact of the time bar.  If the Supreme Court found reviewability in SAS Institute and saw it as a closer case than Wi-Fi One, then there would be little need for further clarification and little reason to grant certiorari in Wi-Fi One.  Conversely, if the outcome in SAS Institute were unreviewability, the result would be two Supreme Court decisions denying judicial review and one en banc Federal Circuit decision affording review.  This, too, may be ample guidance in the Court’s view, leaving little reason for certiorari in Wi-Fi One.  A middle-ground may come in the form of a grant-vacate-remand (GVR) order whereby the Court would grant certiorari, vacate the Federal Circuit decision, and remand for reconsideration in light of SAS Institute.  (This was the course that AMP v. Myriad Genetics initially took nearly six years ago in light of the Court’s intervening decision in Mayo v. Prometheus, though the Federal Circuit decision vacated there was that of a panel, not of the en banc Court of Appeals.)

The decision in Wi-Fi One v. Broadcom is the first real test, following Cuozzo, of the broad view that the Patent Office has taken of its immunity from judicial review in PTAB institutions.  Going forward, it will likely be the dialogue between the Federal Circuit and the Supreme Court that defines the full contours of the agency’s discretion.

66 thoughts on “Shenanigans, Time Bars, and Federal Circuit Oversight

  1. In the history of patent law, there has never been a less credible group of bad faith actors than the patent maximalists attacking IPRs as “unconstitutional.”

    The level of absolute self-serving b.s. these p@ thetic perpetually unsatisfied whiners sling around on a daily basis is simply mindblowing.

    1. Your feelings are noted.

      Of course, those feelings and any relation to reality are absolute strangers, but hey, Malcolm being Malcolm, what else can one expect?

    2. MM, since I started it, I think you can hardly call me a bad faith whiner even though we do have are differences about a certain politician. Furthermore, my arguments were carried forward in the Oil States petition and about two dozen amicus briefs, with ample citation to authority. The fact that the arguments had merit is the reason why the Supreme Court took the case.

      1. MM, since I started it

        LOL – you forgetting just who prompted YOU, Ned?

        (that would have been me)

      2. I don’t know Ned. I had this conversation about IPRs being unconstitutional before the AIA took effect with senior partners at our law firm. Everyone was sure it was unconstitutional, but we didn’t have anyone that wanted to pay to push this.

        1. Night Writer,

          And some of us (including me) also indicated such during the AIA legislative process and indicated that affirmative action was taken to point out such problems to our representatives.

          My point above though is that it was directly through MY challenges to Ned on this blog that he started to understand the Constitutional problems that became his platform for his in-court actions.

          He has not learned all the lessons I have attempted to provide to him, and even the ones he has learned, he has not learned fully, but make no mistake, he did not originate that which he claims to have started.

  2. From Page 8:

    The remainder of the IPR-related provisions of the AIA…

    Um, wait. How are these other things “related” but at the same time NOT related…

  3. I read through the amicus brief on SSRN submitted by Professor Vishnubhakat and other amici. I see that many of these amici joined the brief of the 27 law professors in support of the petitioners in Oil States, and none that I can spot joined the brief of the 72 law professors in support of the respondents.

    But before checking this out, what struck me, reading the brief, was that, in some alternate parallel universe in which SCOTUS had not granted certiorari on Oil States, or that case had not been submitted, and had the “substitutional view” of the Congressional purpose in creating inter partes review had been presented in a brief in support of the respondents in Oil States (i.e., supporting the constitutionality of IPR), Chief Justice Roberts would have, I suggest, regarded that “substitutional” purpose as illegitimate and unconstitutional, and perhaps would have written a trenchant opinion to that effect.

    I am basing this observation in particular on the basis of Chief Justice Roberts’s dissent in Wellness International Ltd. v. Sharif, especially Section II. The dissent is available on Justia here:

    link to supreme.justia.com

    ===

    I came across another separation-of-powers SCOTUS bankruptcy case today: Executive Benefits Insurance Agency v. Arkison (2014). The unanimous opinion of SCOTUS delivered by Justice Thomas in the latter case suggests that, were SCOTUS to find IPR, in its current form, to be unconstitutional, they might not have the same objection to a system of specialized patent courts, analogous to bankruptcy courts, with patent judges appointed by and responsible to the circuits, where, with appropriate consent requirements, such patent courts might make findings on claim construction and validity, making recommended findings as to law and fact to district courts, subject to de novo review of matters of law and disputed matters of material fact.

    1. specialized patent courts, analogous to bankruptcy courts

      aka PTAB

      patent judges appointed by and responsible to the circuits

      Because why? Nothing in the Constitution suggests such a requirement for a patent system.

      appropriate consent requirements

      LOL

      SCOTUS might not have the same objection to a system of specialized patent courts

      But rest assured that this same group of professional shameless whiners will shamelessly whine about this “system of specialized courts” being “unconstitutional” (or worse) at the top of their shamelessly whining lungs. That’s 100% guaranteed. How do we know that? Because it’s really all these people know how to do, 24-7. My goodness just look around. And we all know why they do it, too.

      1. aka PTAB

        Wow – like the entire non-Article III nature of the situation seems to have escaped your ken.

    2. Distant, the equivalent of court magistrates is only required if there are private rights involved. That is why the 27 Law Professors were arguing that patents were property and not public rights.

      If Public Rights are involved, Congress can provide for government tribunals and further provide that there be no appeal. Whether to involve the courts is, according to Murray Lessee’s, entirely discretionary.

      1. Oil States oral argument, page 37:

        “JUSTICE GORSUCH: Isn’t that question begging about what’s a private right? Isn’t that the very question this Court has to decide?”

        I was adverting to the eventuality in which the Court did decide that a granted patent was a vested property right that was a private right, and most definitely not a public right.

        Moreover, however the case comes out, I would suggest that there is a pressing need for the Court to settle on a formulation of what they understand by the distinction between public, quasi-private and private rights, and explain it in sufficiently explicit language that reasonable people can be of no doubt of what they mean by such terms.

        Some hints at least as to where my thoughts are going. “If it walks like a duck, swims like a duck, quacks like a duck,…”

        It is commonplace in discussions to talk about the right to exclude. Consider also the right to alienate, e.g., by assigning, selling, gifting, bequeathing. (Of course, assuming a genuine property right, there may be servitudes.)

        Think about the right of the inventor to prosecute an application for a patent (and to exclude latecomers from prosecution). If the inventor dies, do her heirs inherit the right to continue the prosecution? Can the inventor vend her right in that subject matter to another who then has the standing to prosecute in his own name with respect to the subject matter originally claimed by the inventor? (This is not the same as an enforceable contract to assign patents once granted.) I believe the answer to such questions is no, and indicates the limitations of a quasi-private right.

        Maybe an employee has a “property right” in a particular post, but can a university professor sell his tenured employment to another who would thereby gain the right to deliver lectures etc. in return for the salary of the original tenured professor?

        Again what about someone’s right to live in a safe house, or be employed in a safe workplace? Can someone bargain away the right to live in a house that complies with the building code, negotiating a discount for agreeing to live in an unsafe house? Suppose the house goes up in flames? There may be guests in the house who might lose their lives. The fire might spread to neighboring houses. Can one sell to another one’s right to be prescribed safe medicines that have been thoroughly tested? We are surely talking about public rights here.

        But with regard to holder of granted patents…

        1. the eventuality in which the Court did decide that a granted patent was a vested property right that was a private right, and most definitely not a public right

          A “granted patent” will never be “most definitely not” a “public right”.

          There’s a cookie waiting for you if you can manage to understand why my statement is necessarily true. Good luck! Should be easy for an alleged attorney.

          assuming a genuine property right, there may be servitudes

          LOL

          1. A “granted patent” will never be “most definitely not” a “public right”.

            There’s a cookie waiting for you if you can manage to understand why my statement is necessarily true. Good luck! Should be easy for an alleged attorney.

            You will need more than a cookie to navigate that “word salad” of quotation-filled mindlessness.

            That Malcolm believes that his own rants are “necessarily true is hilarious.

        2. The hilarious thing about these “analogies” is that they miss the point which is that “patent rights” are whatever Congress says they are. And unless Congress says that “patent rights” are, in all respects, exactly like [insert your favorite property right here], then you’re looking at something utterly unique. And that’s what they are.

          Congress created a right that is revokable by the granting agency. If you don’t like that, then get out of the game.

          It’s not like you’ll be missed or anything, DP. On the contrary.

          1. …get out of the game

            For all of your own whining and cognitive dissonance, YOU should follow your own advice Malcolm.

        3. Distant, these distinctions are covered in law school, IIRC. There are rights and duties. One cannot assign a duty. So if the consideration, the right, is intimately involved with a duty, the right also cannot be assigned.

          When private rights are involved, even the liberals on the Supreme Court demand a completely unbiased trier of fact — disassociated from the political branches. I am no sure the PTO is all that unpolitical.

          There are easy ways to fix IPRs. The easiest is to simply require consent. But of course, without fairness, patent owners would never consent; and IPRs are today unfair.

          The second easiest is your idea. Move the PTAB into the court system like bankruptcy judges in a system that requires court review and de novo review of facts under dispute.

          I am not sure any other fix will work under all circumstances.

          1. IPRs are today unfair

            Too bad you have no evidence of any systematic unfairness. That would be very helpful.

            Of course, we all know that the evidence doesn’t exist.

            We do know beyond any question that most patents that are taken into IPR proceedings were granted … unfairly.

            1. Your cognitive dissonance is showing.

              With all of your 0bsess10n with Quinn, one would figure that you would have actually read the posts there that detail many transgressions (with ample evidence).

              “Go figure folks.”

            2. No evidence, MM?

              – Preponderance of evidence;

              – Broadest reasonable interpretation.

              1. BOTH of which are proper, once you are back in the confines of the administrative agency (and we both know which stick in the bundle of patent rights is taken – and when that stick is taken – that enables THAT, eh Ned?

                You have to ask the right questions.

    3. Distant, you may want to visit the Houston IP Law Assoc. Brief. A bit dishonest, b/c they do not note that reexaminations were appealable to a district court for a de novo trial, same as interferences. That right of de novo appeal was removed by the AIA. The brief is very misleading on this point.

      But the point here is that Congress provided de novo review by a court when it gave the PTO the power to revoke a patent. All that ended with the AIA. Inter partes reexamination is an exception. But that was enacted in 1999. So, 1999 is the year Congress allowed the PTO to revoke issued patents without a court de novo review.

      1. Admittedly a bit of a tangent (albeit, the point st the end carries), all this talk of “years” has me wondering – what year was it that the Trademark law that was just deemed unconstitutional was passed?

  4. CAFC (Judge Dyk writing for the panel) might have just cued up the demise of logic patents in today’s Finjan decision. The stench is pretty unbearable.

    1. MM, but the court held that a software claim that linked a security profile to a downloadable to be directed to improved computer technology and also was not directed to a result, thereby passing Alice step 1.

      The opinion was written by Dyk.

      Given that Dyk is the leading liberal on the Federal Circuit (Harvard Law), that is saying something.

      1. Given that Dyk is the leading liberal on the Federal Circuit (Harvard Law)

        LOL

        What?

    2. Yes another 101 eligible software patent is sure to sink our boat.

  5. that Justice Alito’s argument about the one-year bar should be seen as hortatory, intended first to build a majority and later, when the case was lost, to cabin the impact of the majority’s reasoning.

    You may have to explain the meaning of the word “cabin” to Ned.

    1. Someone needs to explain “reasoning” to anon.

      1. You are doing that Malcolm Accuse Others meme again Ned…

  6. The “not related” position advanced here is crabbed and entirely unsatisfactory.

  7. >>Law360, New York (January 9, 2018, 3:46 PM EST) — Former U.S. Patent and Trademark Office Director Michelle Lee told Law360 in a recent interview she did not stack panels of Patent Trial and Appeal Board judges to achieve a particular outcome, addressing an issue that has been a source of criticism for the board and drawn concerns from some U.S. Supreme Court justices.

    Lee should be barred from speaking until she discloses her emails and contacts with Google. The DOJ should investigate compensation she may be receiving now for her service to Google while working for the USPTO.

    1. While I certainly agree that the lack of sunlight is deeply [sic] problematic,
      (and said lack was endemic under President Obama, not just in the patent side of the administration – and ultimately ironic given President Obama’s first term running plank of “visibility,” when his presidency is on record as being the LEAST visible presidency), are their any signs whatsoever that Lee has obtained post-government compensation of any form related to her time in the Office? If anything, she is remaining out of view for a while.

      1. My understanding is that there is evidence of emails between Lee and Google that are not appropriate for an employee of the federal government.

        I don’t know how Google will compensate her. Lots of ways and certainly they can wait a couple of years. The DOJ should investigate her.

        1. You forgot to end you post by donning your tinfoil hat and chanting, “Lock her up! Lock her up!”

          1. So, no content again Ordinary. Try to put something in one of your responses that is not just an ad hominem attack. Just once. I remember Ordinary you saying about the same thing about me when I was saying that Google was pouring money into lobbying for anti-patent judges and legislation–and yet they were.

            Really Ordinary, your method of just attacking me because you don’t like what I say is pretty sad and ineffective.

            1. This is the part where you are suppose to pitch vitamin supplements and doomsday survival kits at me.

        2. My understanding is that there is evidence of emails between Lee and a cabal of anti-American marsupials that are, quite frankly, not appropriate for an employee in general. I think the DOJ should investigate that too.

        3. The DOJ should investigate her.

          She hangs out with pot smokers. It’s a fact!

        4. “My understanding is that there is evidence of emails between Lee and Google that are not appropriate for an employee of the federal government.”

          Were they discussing how to fight Cis White Hetero Males and their Patriarchy?

      2. said lack was endemic under President Obama, not just in the patent side of the administration – and ultimately ironic given President Obama’s first term running plank of “visibility,” when his presidency is on record as being the LEAST visible presidency

        Remember, folks: not a parody.

        LOLOLOLOLOLOLOL

        1. Your reply is most odd.

          The item I provided is factual.

          Do you have a problem with reality? Is this an offshoot or your “one-bucketISM” in that ALL of what Obama did somehow “MUST” be good because Obama is opposite of Trump?

          Apply at least a smidge of critical thinking before you post your reactionary feelings, Malcolm.

          1. The item I provided is factual.

            Sure it is, Billy.

            ALL of what Obama did somehow “MUST” be good

            LOL Did I say that? No, I didn’t.

            Glibertarians never cease to amuse.

            reactionary feelings

            Says the di@per-soiling reactionary who just finished ranting about Obama … in January 2018. ROTFLMAO

            1. The topic I addressed is not ranting and is an on point reply to Night Writer.

              It’s the kind of thing that YOU should aim to do.

              1. on point reply to Night Writer.

                Yes, you and your bff NW are very, very serious people.

                It’s shocking — totally shocking I tell you! — to see the blog’s resident glibertarians getting frothy just thinking about the DOJ investigating Michelle Lee for “crimes” related to her failure to grant enough patents.

                Very very serious stuff.

                ROTFLMAO

                1. Says the guy CONSTANTLY getting frothy about non-patent items on a patent law blog…

                  YOU should also note that the topic being advanced has had a direct impact on the patent legal realm.

                  So take your Accuse Others meme elsewhere.

          2. Do you have a problem with reality

            Things must be slow in the mailroom today, huh? Isn’t there a stack of registered mail addressed to the firm’s attorneys that you need to open and review so you can prevent any prior art from slipping through?

    2. Lee should be barred from speaking

      Very deep stuff here.

      1. The 1st Amendment is only for people who have the “correct” views on patents. You better be careful, the secret patent ideology police will soon be knocking at your door.

    3. “I’m innocent” and now I’m pleading the Fifth Amendment right to refuse to answer any further questions. Thank you very much.

  8. “and assuming the entire PTAB system is not invalidated in Oil States Energy Services v. Greene’s Energy Group”

    It is malpractice for an attorney to suggest that this is a possible outcome for Oil States.

    Explain yourself Saurabh.

    1. How do you reach the view that suggesting this outcome is malpractice?

      Are you an attorney, anony?

      1. If Saurabh had bothered to read the transcript, he’d know that the Justices signaled a *possible* outcome during argument.

        JUSTICE GORSUCH: Well, it’s not true
        with respect to magistrate judges or anything
        like that. You have an absolute, you know,
        opportunity — the district judge has to put
        its imprimatur on it before it has — as an
        adjunct of the district court.

        It doesn’t sound to me like the Supreme Court is considering invalidating the “entire PTAB system.”

        Saurabh:

        ADJUNCT OF THE DISTRICT COURT
        ADJUNCT OF THE DISTRICT COURT
        ADJUNCT OF THE DISTRICT COURT
        ADJUNCT OF THE DISTRICT COURT

        Get it?

        There is an unfortunate culture of “saying anything” to push a result in patent law, and it starts with the USPTO and CAFC. They set horrible examples. Too much power in D.C. Group think mentality. Orwellian.

        Malpractice.

        1. I think that the “day anything” is infecting you.

          You show NO link between malpractice and the suggestion of a particular outcome.

          You also did not answer the question as to whether or not you are an attorney (well, not directly at least, because if you WERE an attorney, you would not use the “malpractice” term so flippantly).

            1. anony,

              I asked you to explain the link between making a suggestion and malpractice.

              You descended into the very type of “say anything” that you used as an example – without pointing out the connection to malpractice.

              I then pointed out that you failed to answer the question as to you being an attorney, and pointed out that an attorney would not use the term “malpractice” so flippantly.

              “What?” do you not understand here?

  9. Judge O’Malley makes a cogent point: what § 3 14(d) makes is not reviewable is a “determination” by the director “whether” to institute. The only “determination” mentioned in section 314 is that in section “a.” Section 315 (b), in contrast, is a command – the IPR shall not be instituted beyond the one-year time bar. It is not discretionary at all. There is no determination for the director to make in this statute. Therefore by its very terms, the section 314(d) prohibition on appeal of the director’s determinations simply does not apply.

    1. Strained and not compelling Ned. The Director is the one that determines whether or not the directive of 315(b) is in play.

      Given the broad scope of the AIA, to say that 315(b) is not related to the 314 section is simply not believable.

      1. Just my opinion (and I’m not a lawyer…)

        The Wi-Fi decision informs the PTO that the Director’s authority is bounded and the appellate court CAN and WILL enforce those boundaries.

        In section 315(c) it reads:

        <>

        Now under 314(a):

        <>

        Combining these two passages…you get the result that the Director must evaluate the petition of the party requesting joinder making an independent assessment of THAT PETITIONERS INDEPENDENT (!!) REASONABLENESS of SUCCESS. However because any petition by XXXXX is still subject to the 1-year statutory bar since it was sued years ago…any IPR filed by it would have NO chance of success. While this is pretty straightforward….Congress (or specifically current acting PTO Director Matal…who specifically architect-ed the AIA’s crappy language when working for the Senate Judicary Committee drafting it) muddied the waters with the second sentence of 315(b):

        <>

        The PTO has read the above as allowing a party that was time-barred itself from filing its own IPR to join another’s existing IPR….despite that fact that any IPR petitioned by the time-barred party filed would fail by statute (i.e. it has NO reasonableness of success). However, that interpretation was based on the PTO’s own (self-inflated) authority to initiate review of any petition…regardless of the reasonableness of success (since the PTO believed/argued that this couldn’t be reviewed by the appellate courts). WiFi informed the PTO that it view of its own authority was much more limited that the PTO believed.

        A more natural reading (which preserves the statutory qualification as to the reasonableness of success) would be that other parties (who can present petitions the Director presents a reasonable chance of success) can join to an existing IPR petition even if their request for joinder comes more than one year after the initial IPR party was sued.

        However because of the muddy waters mentioned above….I have little doubt that the CAFC (and possibly the SCOTUS) will need to weigh in again specifically on the IPR joinder ‘gamesmanship’ issue.

        1. My post above is probably confusing as the actual sections of the statute were included in the post I tried to post…but were excluded by the sites’s software….probably due to punctuation.

      2. anon, the Director has no discretion regarding 315(b). There is no determination to make.

        If the petitioner is barred, they are barred as a matter of statute. Anyone at any time can make that call. The PTAB can overrule the Director, just for example, because the decision is not placed in the Director’s exclusive bailiwick.

        1. There is EVERY determination to be made.

          Just because the determination does not include discretion does NOT make it any less a determination.

          Anyone at any time can make that call.

          Except for the fact that Congress gave that power to a very particular person.

          The PTAB can overrule the Director

          What are you talking about? All of this topic is already TO the PTAB based on already accepted delegation. Are you meaning to say that the PTAB could overrule itself?

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