PTAB Appeals, Standing, and the PTO’s Voice as Intervenor

Guest Post by Matthew J. Dowd and Jonathan Stroud

Professor Saurabh Vishnubhakat’s recent well-reasoned post and longer article add much to the discussion about standing to appeal from the PTAB. Standing has recently garnered significant interest from the Federal Circuit. Building on existing scholarship, we have written a concise synopsis of standing law as applied to PTAB appeals, forthcoming in Catholic University of America Law Review.

Drawing from it, we offer a counterpoint to Professor Vishnubhakat’s view, as expressed in his post, of intervenor standing—with his permission (and we thank Prof. Crouch for the opportunity). Professor Vishnubhakat’s thesis asserts, in part, that while 35 U.S.C. § 143 grants the PTO “the right to intervene in an appeal,” separate and independent constitutional standing requirements should prevent it from doing so when an appellee fails to appear. He finds that the PTO’s “ability to intervene often will rest on its ability to show Article III standing” and that the PTO “as intervenor may be able avoid having to show its own standing—but only if (1) the agency has entered the case on the side of a party that does establish standing, and so long as (2) the agency does not seek relief that is different from what that friendly party seeks.” The PTO, he concludes, should not be able to intervene where a party does not appear.

In our view, as a matter of standing alone, the PTO can participate as an intervenor in virtually all AIA appeals from the PTAB—and many reasons are consonant with the principles on which Professor Vishnubhakat bases his reasoning. We make no judgment here on the merits of the positions the PTO solicitor has or will adopt, or the frequency of intervention. While there is a valid debate about the policy choices and the frequency with which the PTO has intervened, that debate is distinct from the legal question of whether the PTO has, or must have, standing as an intervenor beyond their express statutory grant. Professor Vishnubhakat reasons correctly; he just goes a bridge too far.

First, while no court has definitively held that each party to an appeal must establish independent Article III standing where appellants have standing, most courts and opinions suggest that if the party invoking the court’s jurisdiction establishes Article III standing, the inquiry is resolved. For instance, in Camreta v. Greene, 131 S. Ct. 2020 (2011), the Supreme Court found that any opposing party necessarily has an “ongoing interest in the dispute,” so that the case by nature features “that concrete adverseness which sharpens the presentation of issues.”

In ASCARCO Inc. v Kadish, 490 U.S. 605 (1989), the Supreme Court held that while the state-court plaintiffs-respondents lacked Federal Article III standing, the Court had jurisdiction, because the petitioners seeking review had suffered “a specific injury stemming from the [adverse] state-court decree.” Importantly, the Court took no issue with the respondents’ participation in the appeal; they found simply that “the parties remain adverse,” as the plaintiffs-respondents were defending the state court’s judgment, and an appeal would resolve a “genuine case or controversy.”

And the following year in Department of Labor v. Triplett, 494 U.S. 715 (1990),
the Department of Labor and the Committee on Legal Ethics appealed the claims of a third-party attorney below. The majority held that both appealing parties had standing. The government’s “Committee on Legal Ethics” had “the classic interest of a government prosecuting agency arguing the validity of a law upon which its prosecution is based.” There was “no question” the third-party defendant-respondent Triplett had standing, the court reasoned, given his claim that his clients were being deprived of due process. Justice Marshall, concurring, explained that where “respondent has not invoked the authority of any federal court, then, federal standing principles are simply inapplicable to him.” He went on: “Under this Court’s clear pronouncement in ASARCO, the only relevant question for us here is whether one of the petitioners has standing to seek review by this Court of the state court’s judgment.”

Those are a few in an extensive line of cases supporting the view that the party having to show standing is the one seeking to invoke the court’s jurisdiction. For instance, in Rumsfeld v. FAIR, Inc., 547 U.S. 47 (2006), the Supreme Court held that “the presence of one party with standing is sufficient to satisfy Article III’s case-or-controversy requirement.” At a minimum, any fulsome analysis of intervenor standing must consider this precedent.

Second, Town of Chester v. Laroe Estates, Inc., 137 S. Ct. 1645 (2017)—the Court’s most recent opinion on intervenor standing—comports with prior precedent and runs against the need for intervenors to establish standing independent from the parties to the matter, or to establish the standing of an underlying party whose position they support. In Town of Chester, the Court squarely held that “an intervenor must meet the requirements of Article III if the intervenor wishes to pursue relief not requested by a plaintiff.” The Court cited cases specifying that it is the “plaintiff” who needs to show standing, maintaining consistency with the cases discussed above. To read in a requirement that intervenors must establish standing for their positions—or for the parties they side with—even where they pursue the same relief requested by a party would impermissibly broaden the holding.

The Court further explained that, in multi-plaintiff cases, “[a]t least one plaintiff must have standing to seek each form of relief requested in the complaint.” That statement implicitly accepts that not every party needs to prove Article III standing if multiple parties are seeking the same relief and one party has standing. And it does not follow that at least one defendant must have standing to participate on appeal. The Court has deliberately distinguished between a plaintiff’s standing requirement versus a defendant’s.

Arizonans for Official English v. Arizona, 520 U.S. 43 (1997), is not to the contrary, as the good professor suggests. There, the Court held that standing “must be met by persons seeking appellate review, just as it must be met by persons appearing in courts of first instance.” The person seeking appellate review—and thus invoking the court’s jurisdiction—is the appellant, similar to the plaintiff below.

A third consideration—one noted in Professor Vishnubhakat’s post—further supports the PTO’s role as intervenor, and supports the bulk of, but not all of, his conclusions. He is right that, in cases where the PTO will be asking for relief different from one party with standing, the PTO may then have to demonstrate standing, consistent with Town of Chester. This would be true regardless of—and separate from—whether the underlying party has standing.

This matters little given the Chenery doctrine, which bars courts from accepting an agency’s post hoc rationalization as support for the agency’s decision. Chenery essentially precludes the PTO from asking the Federal Circuit for relief that is any broader than what the PTAB held or what the appellee might argue on appeal. In PTAB appeals, rarely will the PTO be seeking a different scope of relief than what the PTAB did or what an appellee will be seeking—usually affirmance. And if the intervening PTO does expand its argument beyond the scope of the original decision, then its argument is simply barred from doing so by Chenery, and the court need not concern itself with a standing analysis.

Fourth, as a practical matter, even if the PTO had to demonstrate standing, the PTO has a statutory right to participate in the appeal as an amicus. The PTO could advance the same arguments as amicus as if it were intervenor, rendering this debate somewhat academic. And the Federal Circuit, if it were so inclined, could grant the PTO leave to file a brief longer than the standard amicus brief, or any additional briefing it might seek. This point does not affect the Article III standing analysis directly, but it speaks to any practical effect of denying the PTO its statutory right to participate as intervenor. If the Federal Circuit is confronted with the choice of having only one side argued, as opposed to having both sides argued, we would suggest most judges, as a practical matter, would prefer to have the competing arguments for consideration, instead of a docket of one-sided, limited, or partially argued cases. The standing issue aside, the patent system and the public good are best served by arguments fully vetted by the adversarial process.

As a final point, we acknowledge the distinct policy concerns created by frequent intervention on one side of the “v.” Getting beyond the standing issue—which we don’t see as much of a hurdle for PTO participation in PTAB appeals—more significant questions arise about if, when, and how often the PTO intervenes. Indeed, George Washington University Law School Professor Dmitry Karshtedt has persuasively called for further exploration of whether the PTO solicitor must or should defend the Board’s decision. Dmitry Karshtedt, Acceptance Instead of Denial: Pro-Applicant Positions at the PTO, 23 B.U. J. Sci. & Tech. L. 319 (2017). This issue is the third question raised sua sponte in Knowles Electronics LLC v. Matal, currently pending at the Federal Circuit. Professor Karshtedt concludes that the PTO solicitor may disagree with the Board where it is plainly inconsistent with the public good. Although we take no position here, we recommend his paper and agree that it’s a debate well-worth having.

We leave these debates for another day, simply noting that a rough internal count reveals: As of September 2016, out of 179 cases decided, the PTO had intervened 98 times (~54% of decided cases); by September 2017, that percentage had fallen dramatically, to 144 out of the 408 then-decided (~35%). Overall, the PTO has said it has intervened in fewer than 25% of all appeals, and that number continues to fall. There may be several reasons for the decline, such as fewer fundamental legal issues as the AIA matures, or a change in PTO policy after thinking its frequent intervention may have irked some judges. Regardless of the precise reasons for the decline and the other policy concerns raised in Knowles, the question of the PTO’s standing to intervene is a distinct legal question. And we think precedent strongly supports the PTO’s ability to intervene in most, if not all, appeals from the PTAB.

57 thoughts on “PTAB Appeals, Standing, and the PTO’s Voice as Intervenor

  1. 5

    Here’s an interesting question re the most common topic on this blog [now at the Sup. Ct.] – eliminating all PTO post-grant proceedings and returning all such patent issues to Article III courts. PTO proceedings have defined costs, but there seems to be a miss-impression that Article III patent proceedings come free. But in fact in the U.S. they carry a large cost burden that falls almost entirely on taxpayers. Has anyone done a true cost analysis of what it costs the Federal Courts for an average patent trial? That is, a fully factored proportion of the costs for Federal judges, magistrates, law clerks, and all their supporting administrative and maintenance and security staffs and building, utility, and other overhead costs? [Also, most Federal District courts are already busy with criminal case dockets.]

    1. 5.1

      but there seems to be a miss-impression that Article III patent proceedings come free.

      ??? That is the very first time that I have seen that “notion” being advanced Paul.

      It appears that you are really reaching for some port in the storm of the coming Oil States decision…

    2. 5.2

      Paul, there are two simply fixes for post-grant PTO proceedings:

      – Require patent owner consent; and/or

      – Provide for de novo review in the District Court.

      I don’t see how providing for due process and fairness of the patentee is going to harm the patent system or society or anybody else.

      1. 5.2.1


        Your second item may not be so simple (and delves into the attempted “legislated standing” for the other party than the patentee).

        That’s kind of the point here, after all: the AIA created a two-part process, wherein one part is in a forum with NO standing requirement, but the other part of the process DOES have a standing requirement.

        There is NO “simple” fix if this attempted legislative end-run of Article III standing is NOT addressed.

      2. 5.2.2


        Your “simple” path one will NEVER be taken by any responsible patent holder’s advocate, given the surrender of sticks from the bundle of property rights that occurs at an initiation decision point.

        You offer a deceptive “simplicity” under BOTH prongs of your offering.

  2. 4

    Maybe instead of the inane and insipid drivel of Malcolm inserting politics into this, a patent law website, we can discuss the potential patent aspects of this:

    link to

  3. 3

    Delighted to see an academic legal publication substantively rebutted in another. It does not seem to happen nearly as often as it should, especially where absent the serious pre-publication peer review systems of some other fields.

      1. 3.1.1

        I don’t think there is such a thing as a “legal academic.” There used to be. Now all but a few are being paid to write papers to abstract Google wants. And, there is no ethical standards for publishing a “paper” in a vanity press publication, which some call a law journal.


          NW there is no ethical standards for publishing a “paper” in a vanity press publication

          Or on some maximalist patent blog run by an admitted Rep u k k k e. And we all know what the Re pu k k kes are about, don’t we?

          Who here voted for Emperor Cheetostain? Other than Ned?

          Come out, come out, wherever you are!



            MM, what? Can you try to stay at least within the same subject area.



            Try to stay on topic.


      2. 3.1.2

        Did you notice how cagey Dowd’s bio is? He never says it, but he only did PhD studies. He should be clear that he has only received degrees up to a Masters as I do.

        BTW, I left Yale not because I could not complete my PhD but because I was subjected to racial abuse by a senior University official. While I am not an Hispanic despite my name and despite tanning to the point of appearing non-white, I was unwilling to remain when the University refused to take action in such a flagrant case.

        Without a PhD I later received a faculty position at MIT, and just to be clear, it was not an issue of AA targets. I always identify myself to be non-Hispanic and Caucasian on job applications.


          Sorry to hear about that. I left before finishing a Ph.D. too, but for different reasons.


          I did not look at that as “cagey,” and find Dowd’s credentials to be impressive enough to make me ask why the person is co-authoring anything with the likes of Stroud, whose “Unified Patents” organization is as anti-patent as anything out there.


          “BTW, I left Yale not because I could not complete my PhD but because I was subjected to racial abuse by a senior University official.”

          Brosef you can’t just come in here and drop that in and not tell us all about it.

          “I always identify myself to be non-Hispanic and Caucasian on job applications”

          Henceforth I suggest you add at least a little diversity to your titles. Go trans-assaulthelicopter (a transgendered identity) at the very least if you’re uncomfortable changing your ethnicity/se xuality/religion/age/ability etc. to a more regal and noble one. One day soon you might even consider putting forth a real effort to compete in the diversity Olympics with me (spoiler you don’t have a chance unless you’re on my team!).

  4. 2

    The simple observation here is that if the patent owner appeals and there is no adverse party the court should vacate the lower “court” judgment/order without further ado.

    Secondarily, the right of the director to intervene must be conditioned upon the government having some interest to protect. When it intervenes in a contest where there are two opposing parties, both who have standing, whose interests are they trying to protect? They have to be protecting their own interests – because all intervenors and all litigations intervene to protect their own interests. That is why in most of these interventions the government is intervening to protect an interpretation of the rule or statutes or the constitutionality of the statutes. They are not intervening in the dispute between two private parties on one side or the other, or at least they should not be, because the government is not adverse to either side.

    Assume for the moment that the government intervened in a case where the rules and the statutes were not at issue but only the merits. Would they argue a position different from either the two parties to the Federal Circuit? Why would they if they have no interest in outcome?

    There seems to be an underlying assumption here that the government is adverse to the patent owner on the issue of patentability of his patent. But the Supreme Court has already ruled that the government has no legitimate interest in the validity of an issued patent and has no standing in court to challenge the validity of an issued patent. Congress can change this holding of the Supreme Court by statute because standing cannot be conferred by statute.

    1. 2.1

      In considering PTO standing, consider the obligation of contracts. Assume that either side could back out of the deal without consequences if the deal became disadvantageous to them or no longer serve their interests? (Those of you who are fans of Big Brother may know that a deal in Big Brother is meant to be broken because there are no consequences other than losing votes. Thus one contestant early in Big Brother history broke an alliance saying that his obligation to continue in the alliance ended when a no longer serve his interests.) But, is not the government reneging on its deal with the patent owner when it turns on the patent owner in a reexamination or by intervening in court against the patent owner on the merits of patentability of his patent. The patent owner has filed a patent application and paid appropriate fees. The patent owner has disclosed his invention to the public. The patent owner has significant reliance interests in receiving from the government a patent that the government itself has The only circumstances where the government should have standing to challenge the validity of a patent is if the government itself has been harmed in some way by the patent owner such as if the patent owner defrauded the government – which was the case in United States v. American Bell.

      What is going on here when the government is taking sides against the patent owner is fundamentally unfair and a breach of contract.promised the patent owner they will support. When the government becomes adverse to the patent owner in the matter of patentability, it is breaching the deal.

    2. 2.2

      “The simple observation here is that if the patent owner appeals and there is no adverse party the court should vacate the lower “court” judgment/order without further ado.”

      Can you explain your reasoning here? I am concerned about the consequences of this argument.

      For example suppose a patent owner sues, but a court enters judgment after a jury trial that the defendant is not infringing and the patent is invalid. The patent owner appeals, but decides only to challenge the validity determination, deciding there’s no grounds to appeal the non-infringement decision.

      Under this scenario, the defendant does not have standing, as they have no injury. They have won, on a final judgment on the merits, that their acts are non-infringing (assume whatever other facts you need to assume to make it so there’s no possibility this defendant would ever possibly infringe).

      Your argument appears to be that the patent owner should have the validity determination summarily vacated simply because they chose not to appeal the infringement decision, thereby causing the defendant to not have standing. Why should the patent owner automatically get back a patent that has been adjudged, on the merits, to be invalid? Why is it good public policy to do so? Please consider Cardinal Chem v. Morton, 508 U.S. 83, 99-103 (1993) and explain what the Supreme Court got wrong.

      Also note that in Cardinal Chem, as Justice Scalia noted in his concurrence, there was only one “side” as both parties were arguing for the Federal Circuit’s rule to be reversed. He noted that SCOTUS often appoints an amicus in those cases (and doesn’t merely vacate the lower court). Why would appointing an amicus, as SCOTUS regularly does, not be a preferable rule? What public policy (as it certainly isn’t law, in light of SCOTUS’s regular practice to hear cases where both parties agree the lower court is wrong and thus there is no “appellee”/”respondent”) leads you to that conclusion?

      1. 2.2.1

        Jane – please rephrase your question in order to put “court” into an understandable context; that is, make sure your example is clear as to whether the “court” is Article III or not.



          Anon – there’s no ambiguity. I was referring to an Article III court.

          But if you want to assume some other court go ahead. If you think it changes the outcome I would like to understand why you feel that situation is distinguishable from an Article III court in the scenario I presented.


            It is directly distinguishable given the context that the PTAB is not an Article III court.

            Ned’s comment is “directed to” items on appeal from the PTAB.


              Anon – can you explain the distinction?

              Assume that the other party at the PTAB is someone who would have had standing at the district court (someone sued for infringement, perhaps), who wins on non-infringement in the district court in a decision the patent owner does not appeal. Then assume the patent owner appeals an invalidity finding from the PTAB thus, under Ned’s argument, ensuring there is no “party” on the other side who has “standing”.

              What is the distinction you are making over the same circumstance arising out of an Article III court? I.e. why is Ned correct in saying that the invalidity decision should be summarily vacated if it arises out of the PTAB, but should not be if it arises out of an Article III court? Or are you (and Ned?) suggesting both should be summarily reversed?

              Can you explain why SCOTUS regularly hears cases that has no party on the other “side” and what makes the PTAB situation different?

              Note that the exact same parties existed in both lower “courts” whether arising out of the PTAB or the district court, and how there is no “standing” arises out of the same act by the patent owner in not appealing a non-infringement decision. What is the distinction you think is relevant?


                You want me to explain the difference between Article III (and the standing required therein) and the first part of the PTAB (AIA IPR and such) mechanism in the NON-Article III forum (wherein there is NO standing required)….


                It’s rather self explanatory.

      2. 2.2.2

        “consequences of this argument.”

        The consequences of this argument will never be the same.

      3. 2.2.3

        Jane the lizardbrain argument (I use the term loosely) is that policy is irrelevant.

        What’s relevant is that we all put the gun in our mouths and pull the trigger because “Framers wanted it that way.”

        Rich white men! The finest humans.


          Not sure which strawman here you like to beat on the most, Malcolm…


          “Rich white men! The finest humans.”

          A more obviously ra cist statement I don’t think I’ve even heard MM the ra cist utter.



            Doncha know? It’s considered “white privilege” that white (and male) cannot be considered “muh victim,” and can only be the “oppressor”

            Leastwise as I understand the Liberal Left leaning…


              “Doncha know? It’s considered “white privilege” that white (and male) cannot be considered “muh victim,” and can only be the “oppressor””

              Close anon, but only if they’re also cis gendered, christian, straight and capitalist anon. One only needs to go transgender or commie etc. to enable the ability to be oppressed and MM was including them. For instance trans-attackhelicopter gendered, trans-otherkin or trans-king gendered are all viable oppressed groups. I’m literally not joking about otherkin, and attackhelicopters and kings are on the rise these days. I of course integrate all three into my titles and I would never be caught dea d being cis. Absolutely plebeian.


              And also MM’s statement was ra cist against non-rich white men. As well as rich white men.

      4. 2.2.4

        Jane, unless there is a settlement whereby an infringer obtains a license for future activity, there is no doubt in my mind that the infringer still has standing to contest validity regardless of the disposition of the infringement issue.

        On Cardinal Chem., I think it is clear that both sides had standing to contest validity in that case as well regardless of the disposition of the infringement issue. The problem there was not standing per se. Both sides had standing to contest validity.

        Regarding certiorari jurisdiction, it extends to reviewing errors by the lower courts and is a little bit independent of whether parties are adverse or not. The adverse party, to a degree, is the lower court. Thus if Supreme Court takes the case, even if both of the parties agree that the lower court was wrong, there should be substantial amicus support to support the position of the lower court.

    3. 2.3

      If the Supreme Court ever said something so inane as “ the government has no interest in the validity of an issued patent” then the Supreme Court was plainly smoking crack cocaine.

      Try to use the non-lizard part of your brain for a change, Ned.

      1. 2.3.1

        MM, the government has an interest in whether a patent is being used to restrain trade. Thus in unfair trade cases or antitrust cases, the government has jurisdiction to attack the validity of patent supporting or largely justifying the unfair or restraint of trade.


          MM, the government has an interest in whether a patent is being used to restrain trade.

          Unless an improvidently granted patent has been dedicated the public, it’s inherently a restraint on trade and on the public’s ability to practice what they are entitled to practice.

          The government is “we the people”. That’s true even when the ability of the government to function is ostensibly being destroyed by a tiny group of by rich white @ holes who don’t give a shert about anything except themselves. Oh right — you voted for these cr e e ps.


            Yet another OFF-tangent NON-patent law rant…

    4. 2.4

      I discuss the Director’s intervenor brief filed for the Tinnus (appellant) v Telebrands (appellee) in USPTO’s New Motto: “You Innovate – We Expropriate!”. The intervenor brief is a piece of trash. Why did Matal feel the need to file such a pitiful document in this case? Did he feel that Telebrands was incapable of responding?

      [Please ignore the discussion of the USPTO’s rule-making authority. Thanks to anon, I know that I had some misunderstandings, and I will fix it soon. I just have a lot going on in my life right now: debilitating middle ear disorder from August 4 to January 10, losing my apartment to fire January 6-7, searching for a Boston apartment for a little more than a month, and job hunting now that I’m okay.]

      The Telebrands v Tinnus PGR is important to a corrupt group of senior USPTO officials because if affirmed by the CAFC it means that the USPTO can invalidate practically any patent, which uses the semantic selector “substantially.” I explain this point in my hyperlink above, but to be brief, the USPTO is trying to define an intrinsic feature of the English language to be indefinite.

      I should add that I have done some forensic accounting with respect to complex financial transactions and instruments. A financial crime expert told me that complex instruments and transactions attract crooks because it can take a while for SEC and FBI investigators to identify and to understand exactly what is really taking place.

      Patent law is similarly complex, and invalidations can be worth millions to hundreds of millions of dollars to an IP parasite, claim jumper, or patent poacher. In the financial world the SEC alway assumes that sums so large inspire criminal activity. Similar assumptions should be made about the USPTO, and at the slightest hint of USPTO impropriety or misbehavior, the FBI and the SEC should be crawling all over USPTO records. Crap like the ridiculous invalidation of the “Bunch O Balloons” patent will continue at the USPTO until a good number of senior USPTO officials are serving time in federal prison.

      BTW, I almost feel I should file an amicus brief in the appeal on behalf of the English language. SCOTUS has told us that grammar is a matter of law. The USPTO needs to be slapped hard for linguistic chicanery and especially for filing an intervenor brief on behalf of such (almost certainly corrupt) nonsense. IANAL, but if a lawyer wants to help, I could probably write most of the brief.

      When someone like me (growing up in a NJ suburban mafia hideaway, one grandfather a NJ labor organizer, the other a New York City extortionist, uncle corrupt IRS official — later slumlord) reviews the documents from the plethora of Tinnus v Telebrands legal proceedings, the papers scream out payoff.

      For those that don’t know the mob, the picture above is “Greasy Thumb” Guzik of the Capone outfit. If someone of my heritage can be an inventor, engineer, and patent agent as well as credentialed from Harvard, Yale, and MIT, no one should doubt that Guzik has at the very least spiritual descendants among USPTO officials even if not even one is Sicilian like my maternal grandfather. The extortionist came from historic Poland just like Guzik.

      1. 2.4.1

        It would be nice if someone on here would address the merits of the post. The above post is just uncorroborated speculation. And if you put a long and incorrect post up about PTO rule-making, few people will seriously consider you other points.

      2. 2.4.2

        Those are good points. What case was it that said that an algorithm without a flowchart was not enabled?

        That would be a good case to take to the SCOTUS. What the federal circuit did was make their own private findings of fact about information processing methods/algorithms. They wiped out hundreds of millions to billions of dollars worth of patent with that decision. (I know algorithms well. 112 does not require a flow chart.) I think that was Taranto who is very clever at using judicial activism to wipe out patents.

        That is an example of why the Google appointed judges are so harmful to the patent system.

      3. 2.4.3


        To your comment in the [___] – no problem, as your plate has been rather full (let’s not forget that you also recently passed the patent bar – that’s a lot more difficult than many consider). May I suggest that you amend the article itself to indicate an update is coming? People come to your article through different paths, and I would not want the better points that you do capture suffer some mitigation of credibility with an item that now understand better.

    5. 2.5

      Ned, “if the patent owner appeals and there is no adverse party the court should vacate the [PTO proceeding] judgment/order” why would that not eliminate all PTO ex parte Board decisions against applicants and patent owners, plus eliminate all inter partes decisions in which the patent owner gives the other party a license for agreeing to drop out of any appeal? Or is that what you have in mind? ]
      [Your other suggestion, to eliminate any PTO proceeding the patent owner does not agree to, is even simpler since it would eliminate any and all inter partes proceedings.]

      1. 2.5.1

        Paul, before a patent issues, the PTO is adverse to the applicant and has standing in court. After the patent issues, the PTO does not have standing. The Supreme Court has so ruled on three separate occasions.

        Standing depends on injury, and the PTO has and cannot suffer any injury from an issued patent. That is why the government has no standing in an Article III court to complain about the validity of a issued patent.

        So, even if IPRs or whatever pass muster under the constitution for some reason I cannot think of now, a party seeking access to the courts for review of a PTO decision needs standing. The PTO itself cannot intervene on the merits because they have no standing.

        The Feds should simply vacate an PTAB decision if there is no party to defend it left.



          As may be abundantly clear, the requirement of “standing” is being sought to be eliminated for eradicating the personal property right known as a patent.

          It’s as simple as that.

          Whether or not the Supreme Court has said anything (at all) about patents and the nexus with property in the past simply does not matter to those who would simply “reclassify” patents as NOT property (for any number of reasons/philosophies).

          IF one accepts that proposition, then standing (and its requirement) disappears from the equation. That is what is desired here.

          All is smoke and mirrors.


            anon, you cannot be a lawyer. You simply cannot.

            Standing is a requirement of the constitution. Congress cannot create standing where none otherwise exists. Standing requires personal harm, not harm to others.



              You are misunderstanding my post.

              I am NOT saying that standing is not necessary for an Article III appearance.

              I AM saying that others want to remove standing through the removal of the property aspect of patents (as reflected in the AIA – no standing required – FIRST part of the IPR and other Post Grant Review processes (and then ride that avenue into the second half of the Congress vehicle which is in an Article III forum.

              It is NOT my view that such is proper.

              Quite the reverse.

              But my post is indicating what OTHERS want.


                Well, anon, I am having a hard time understanding how a patent owner would not have standing in a court of law to keep his patent even if it were not deemed to be property, but only a privilege. The property aspect is important with respect both to the Article III and Seventh Amendment issues; but not with respect to standing.

                1. S I G H…

                  It is NOT from the patent holder’s perspective that those seeking to not bother with standing WANT that particular view, Ned.

                  Criminy man – wake up and see the bigger picture and that more than just the patent holder is advocating here.


          Where has the Supreme Court ruled “on three separate occasions” that the PTO does not have standing?

  5. 1

    This error, previously pointed out, still needs correction:

    First, while no court has definitively held that each party to an appeal must establish independent Article III standing where appellants have standing,

    1. 1.1

      How is that an error? Please explain. I’m not saying you’re wrong (or right). I’m just curious.

      1. 1.1.1

        Both sides need Article III standing.


        Now it may be that standing for the Defendant is almost always easier to establish, but one cannot jump past the fact that it still must be established – in most normal Article III forum instances, such will be in play; however, in the particular instances that generate the discussions here; Congress has created a split forum item in which there is no need or requirement for standing for the first forum, and – as Ned has pointed out – Congress cannot legislate standing in the second part of the two part item, as that type of creation for Article III standing by legislating is just not allowed.


          Show us a case that stands for your proposition that “[b]oth sides need Article III standing.”


          Can you identify any Supreme Court case that stands for your proposition that “[b]oth sides need Article III standing”?


            Can you identify any Supreme Court case that stands for the opposite proposition that both sides do not need Article III standing?

            Standing stands as a minimum requirement. Can you even provide a cogent argument (not even a Supreme Court case) as to why both parties would not need to meet a minimum requirement?

            Make note that any attempt to “piggyback” is still an effort to show standing (albeit a “piggybacked” standing).


              Good non-response to my question. And your comment demonstrates that you haven’t read Dowd & Stroud’s article or any of the leading cases on Article III standing.


                To the contrary, JRG, I have rad the article and the leading cases on Article III standing.

                While I do admit to something of a “he said/she said” answering your question with a question, the point remains that ALL of the articles and leading questions do NOT excuse the fact that both sides need standing – rather; the “spin” is often that the D’s standing is bootstrapped to the P’s standing.

                My question remains valid – why don’t YOU try reading my posts?

                1. Well, now you’re posing a different question. First, you asserted: “Both sides need Article III standing. Period.” Now, however, you’re complaining that a defendant can bootstrap onto plaintiff’s standing. That’s a different question and different issue. Shifting sands . . .

                  And you still haven’t shown a case to support your argument that the following is erroneous: “while no court has definitively held that each party to an appeal must establish independent Article III standing where appellants have standing.”

                  Your non-response is telling.

                2. Nothing different at all JRG.

                  There is NO shift to point out that all along standing has been required from both sides and that often the one side got there (having that standing on their side) through a bootstrap mechanism.

                  Quite in fact, this proves my initial point, as if standing were NOT needed for both sides, then there would never have been those very same “bootstrap” attempts.

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