Cert Denied in Oil States Follow-On Cases

Until today, a host of patent cases have been pending before the Supreme Court — hanging onto the coattails of Oil States. Following full affirmance of the IPR regime, the Supreme Court has now denied certiorari in those cases.  The one additional case that was ripe-for-certiorari in the most recent Conference is PNC Bank National Association  v. Secure Axcess, LLC, No. 17-350.  The court issued no order in that case — suggesting that it may be up for further consideration.  In PNC, the substantive question is “whether . . . CBM review requires that the claims of the patent expressly include a ‘financial activity element?'”

CBM Review Keeps its Narrow Scope: Narrowly Surviving En Banc Challenge

As far as I know, all of the Oil States follow-on cases denied today involved a patent whose claims had been cancelled by the PTAB.  In those cases, all appeals have now seemingly been exhausted.

Cases where Certiorari was Denied:  

  • Affinity Labs of Texas, LLC v. Andrei Iancu, No. 17-117, 17-232, and 17-233
  • Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd., et al., No. 17-116
  • AT&T Intellectual Property II, L.P. v. Andrei Iancu, No. 17-643
  • Audatex North America, Inc. v. Mitchell International, Inc., No. 17-656
  • C-Cation Technologies, LLC v. Arris Group, Inc., et al., No. 17-617
  • Celgard, LLC v. Andrei Iancu, No. 16-1526
  • Depomed, Inc. v. Andrei Iancu, No. 17-114
  • Enova Technology Corp. v. Seagate Technology (US) Holdings, Inc., et al., No. 17-787
  • Google LLC v. Unwired Planet, LLC, No. 17-357
  • Hillcrest Laboratories, Inc. v. Movea, Inc., No. 17-39
  • Hitachi Metals, Ltd. v. Alliance of Rare-Earth Permanent Magnet Industry, No. 17-768
  • Industrial Models, Inc. v. SNF, Inc., et al., No. 17-1367
  • Integrated Claims Systems, LLC v. Travelers Lloyds of Texas Insurance Company, et al., No. 17-330
  • IPR Licensing, Inc. v. ZTE Corporation, et al., No. 17-159
  • KIP CR P1 LP, Successor in Title to Crossroads Systems, Inc. v. Cisco Systems, Inc., et al., No. 17-708
  • KIP CR P1 LP, Successor in Title to Crossroads Systems, Inc. v. Oracle Corporation, et al., No. 17-707
  • Linkgine, Inc. v. VigLink, Inc., et al., No. 17-558
  • Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co., Ltd., et al., No. 17-751
  • Outdry Technologies Corporation v. Geox S.p.A., No. 17-408
  • Paice LLC, et al. v. Ford Motor Company, No. 17-110, 17-111, 17-112, 17-113, 17-220, 17-221, 17-222, and 17-229.
  • Security People, Inc. v. Andrei Iancu, et al., No. 17-214
  • Skky, Inc. v. MindGeek, s.a.r.l., et al., No. 17-349
  • TransPerfect Global, Inc. v. Andrei Iancu, No. 17-535
  • Uniloc USA, Inc., et al. v. SEGA of America, Inc., et al., No. 17-1018
  • Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc., No. 17-1043

Note, there are a set of follow-on Oil States cases without complete briefing.  In those cases, the patentees should likely withdraw their petitions following Oil States unless raising alternative theories for judgment.

40 thoughts on “Cert Denied in Oil States Follow-On Cases

  1. 6

    Why are you guys hung up on IPR retroactivity. Oil States declared patents as falling under the ‘Public Rights’ exception. The ramification being a statutory administrative scheme now regulates the patent right. The ‘takings language’ is dicta. How could that holding not be retroactively applied? Under the old law, a patent was a property right, a property right afforded the full protection under the Constitution but today going forward it’s a right subject to administrative regulation? The King’s Court (Privy Court) A.K.A. PTAB can make some arguments and declare your duly issued patent invalid. Heck the Director himself can do that as a member of PTAB. Sure, you get “some” due process because you might get the record reviewed (with difference) by CAFC, but you sure don’t get a court of record to afford you full and traditional due process. The holding of Oil State, was like a revelation that we were wrong for 200 years, patents are mere grants of franchise subject to administrative revocation. How can that ‘revelation’ not be retroactive in application?

    1. 6.1

      Whine, whine, whine, whine, whine, whine.

      The idea that IPRs would work retroactively was not even controversial before Oil States. It’s certainly not controversial now.

  2. 5

    Did any of these cases involve the situation where an IPR decision was rendered following a jury verdict upholding validity? I don’t think cert petitions of cases that fit this scenario have been denied, at least not all of them.

    1. 5.1

      Anony, don’t forget that you need a Fed. Cir. decision sustaining a jury decision of invalidity not proven, PLUS a Fed. Cir. decision sustaining an IPR invalidity decision on the same claims, between the same parties, before one is in a good position for a cert petition for a further appeal to the Sup. Ct. on that issue. There have been few such cases. Do you know of any in which cert petitions are still pending?

  3. 4

    BTW, there is a reportedly a non-patent case at the Supreme Court on federal agency management independence, or not, of the 1,200 federal-wide administrative judges. [A much bigger issue than the Oil States and Cuozo decisions on PTAB APJ administrative proceeding activities.] Does anyone have any evaluation of whether or not a decision in that case could affect APJs as well?
    [P.S. The PTO does use some of those federal administrative judges [not PTO APJs] for PTO OEAD attorney disciplinary proceedings.]

    1. 4.1

      Does anyone have any evaluation of whether or not a decision in that case could affect APJs as well?

      Have not seen any arguments one way or the other.

    2. 4.2

      “Does anyone have any evaluation of whether or not a decision in that case could affect APJs as well?”

      APJs should not be affected. ALJs are intended to be independent from the agency they are reviewing. For example, 5 cfr 930.201(f)(3) instructs the agency to ensure the independence of its ALJs. On the other hand, APJs are employees of the PTO (under 35 usc 6) and under supervision of the Director. Plus they have some examining functions delegated from the Director, such as entering new grounds of rejection.

    3. 4.3

      [The case is Raymond J. Lucia and Raymond J. Lucia Cos. Inc. v. Securities and Exchange Commission.]

      1. 4.3.1

        Lucia Cos. v. SEC appears to be about the Appointments Clause, not so much about ALJ independence. At least one law professor is arguing that APJs should be appointed by the President, as were the PTO’s Board of Appeals Examiners-in-Chiefs from the 1860s to the 1970s. (The appeals backlog called for “faster” appointments by the Commerce Secretary.) So yeah, the Supreme’s decision could possibly affect APJs by application to APJ appointments.


          Would that mean they would serve at the pleasure of the president and not have civil service protection?


              That sounds like it would be a serious effect to me. Many PTAB critics do not seem to understand the protections that civil service status give to APJ judicial decision independence.


                I think you have that backwards, Paul. It is not that PTAB critics fail to appreciate the effects that civil service protection has in shielding a decision from politics. Rather, it is that PTAB critics understood from the beginning (in a manner that perhaps you had misunderstood) that there are no civil service protections for the PTAB, and thus IPRs are necessarily more open to political influence than one might wish.

                1. There are no civil service protections for the PTAB? Sorry, wrong. Just wrong. APJs are Title 5 employees.

                2. I think that the mere existence of any civil service protections has no effect on the political nature of the Ends reached through the PTAB.

                  Anyone thinking otherwise simply is not understanding politics – at a level beyond naïveté.

                3. Just wrong. APJs are Title 5 employees.

                  I have been wrong before, and I will be wrong again, so I can well believe that I am wrong here. Can you please point me to the statutes where I can see that I am wrong about this one?

                  Meanwhile, Paul, please excuse my error. Naturally, if I am wrong, I withdraw my previous remark.


            “Would that mean they would serve at the pleasure of the president and not have civil service protection?”

            A compound question. APJs as non-career, political appointees would not have Title 5 civil service protections. But they probably would not be serving “at the pleasure of the president.” Congress could likely specify the terms of tenure and removal because, after all, the APJs are not serving as part of the chief executive’s staff but are making decisions relating to a power delegated from Congress.


              Except that is not the structure now, is it T?

              Your post may be a good suggestion, but as of now, there are more angels dancing on the head of a pin as to how your view intersects with reality.


              There is a world of difference between and APJ and an ALJ. ALJ’s have structural protections to create impartial administration of law and insulate them from politics, etc. ALJ’s serve on things like Tax Court, a court that gives full faith and credit to the Art III courts prior adjudication of fact and law. Particularly appalling about Oil States, is PTAB is constituted as a political court by statute. That point gets a big intellectually lazy shrug from SCOTUS.


          “Can you please point me to the statutes where I can see that I am wrong about this one?”

          The statutes do not work like that; you’re asking me to prove a negative. Rank and file APJs are members of the competitive service. You can conclude this from the current APJ job announcement and from checking the current Plum Book — APJ positions are not listed. 5 USC 2302 (a)(2)(B) says that “any” position in the competitive service is a “covered position” with respect to prohibited personnel practices, with certain exceptions. One may _disprove_ the negative by providing any statute, regulation, or executive order that expressly exempts the APJ position from Title 5 protections. There are none.

          It shouldn’t matter, of course, that i have personal knowledge of which I speak. I suggest at the next PTAB dog and pony show you ask the Chief APJ whether APJs have Title 5 protections. He’ll know what the asker is asking, even if the asker does not.


            Thanks. That is a helpful answer. Just so that I am clear, however, does this mean that your understanding of the status of APJs might prove mistaken depending on how the Court holds in Lucia, or are the issues there so distinct that the status of APJs is not plausibly affected by that case?


              Before actually looking at the case and seeing the Constitutional challenge, I’m afraid I indicated otherwise. But if the Court clarifies the types of positions that require appointment under the Appointments Clause, that would most definitely inform as to whether the current APJ appointment process passes muster.


                I see your point Thomas. 35 USC 6 however provides: (a)In General.—
                There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board. ….

                Since the statute itself allows the political appointees to be in the role of ‘judges’ on TPAB, it’s hard to figure some collateral challenge concerning ‘appointments’ of ALJ is going to make a difference. But who knows, it’s not like we have intellectual giants at SCOTUS right now.


              Breaking news. . . . Greg might be closer to the truth than I was. Examiners-in-Chief and Administrative Patent Judges have been members of the competitive service and subject to Title 5 protections at least since formation of the BPAI in 1984, and certainly when the panel was stacked in Alapatt. However, it seems that management recently has told some APJs they are “excepted” service employees. Is this a step toward stripping APJs of their civil service protections? I do not know. It may all be explained when another panel-stacking case goes to the Federal Circuit. In any event, it seems to me that impediments to APJ independence will weigh against the Office in any due process challenge.


                The patent office LONG has been far along towards the spectrum of their administrative adjudicatory function being NOT independent (as may occur under admin. law).

  4. 3

    the substantive question is “whether . . . CBM review requires that the claims of the patent expressly include a ‘financial activity element?’”



  5. 2

    Why would a petitioner with a pre-AIA patent… indulge the invitation

    Whoops, sorry. Why would a petitioner with a pre-AIA patent not indulge the invitation?

    1. 2.1

      “Why would a petitioner with a pre-AIA patent not indulge the invitation?”

      Because the petitioner did not argue the issue(s) at the Federal Circuit or another Court of Appeal?

      1. 2.1.1

        Sure, the question is better presented in a case in which the issue was addressed below. Still and all, waiver is a discretionary matter. The Court is free to take up an issue in the face of a waiver if it likes. There is no downside to asking for cert. if it your pre-AIA patent that has been tanked.


          Well, the downside is paying for a worthless cert petition. The Supremes make up the most “discretionary” court in its grant of jurisdiction that I know of. Are you aware of any cases in the last 100 years or so where they granted cert for an issue raised for the first time in a cert petition?


            The validity of assignor estoppel in Lear v. Adkins was raised for the first time in the cert. petition. Meanwhile, grant you that success is a long-shot in these circumstances, but success is always a long shot in cert. petitions. I am proceeding on the assumption that if a patentee has gone so far as to petition for certiorari, they must consider the patent at issue to be valuable enough to justify the cost. If so, it is rather unlikely that the patent is valuable enough to justify a single effort, but not valuable enough to justify an amended petition.

    2. 2.2

      Why would a petitioner with a pre-AIA patent not indulge the invitation?

      Not everyone has money to throw down the t0 ilet, Greg.

      1. 2.2.1

        Greg’s reasoning is, well, reasoning.

        All else is whining about spending money and NOT trying to protect something that may be worth a shot protecting.

        Some people may actually care enough about their patents (and the law) to at least give a cert shot.

        And if they don’t have enough for a cert shot, then what the F were they planning on doing in order to enforce the patent had it not been challenged and tanked?

        It’s pretty silly dust kicking to focus on the cost of a cert petition as a driving reason not to make an argument.

  6. 1

    [T]here are a set of follow-on Oil States cases without complete briefing. In those cases, the patentees should likely withdraw their petitions following Oil States unless raising alternative theories for judgment.

    Hm, I would phrase this a bit differently. In those case, the patentees should raise alternative theories for judgment. The Court practically invited challenge based on retroactivity and takings concerns. Why would a petitioner with a pre-AIA patent (probably all of them, although I have not actually gone case by case to check) indulge the invitation and raise that issue for the Court’s consideration?

    1. 1.1

      Yes J. Thomas said those questions were not being raised or decided in Oil States, and thus got a big majority including some fellow conservatives. But that does not necessarily mean there are enough votes for a cert grant for another IPR decision so soon after Oil States that is not based on case-facts or any prior judicial consideration, and not even briefed in cert petitions already filed?

      1. 1.1.1

        Also, by now, almost every leading law firm, and many others, must have been involved in some patent litigation impacted by an IPR challenge? It it hard to believe that none of those high powered attorneys would have taken a chance to raise IPR retroactivity, or alleged IPR taking issues, or alleged due process issues if they thought they were legally valid arguments? Note all the OTHER Fed. Cir. and cert petition issues, including those in Cuozo, they have raised since IPRs started over 5 years ago.


          The “it hasn’t been done before” fallacy.

          Remind me please: how many years elapsed from passage to when the proper view of the patent marking statute began its spate of attention (resulting in changes in the AIA)?

          How many years since passage of the Trademark law and the challenge by Tam?


          BTW, there is a good reason why the petitioner in Oil States did not even argued for non-retroactivity. A Sup. Ct. decision on that basis would have defeated the cert intent to get all IPRs declared unconstitutional.


            You mean, that offering an argument in the alternative was not considered (and you are supplying the “why” it was not considered – and you know that…. how?)

            appears to be merely more Rah Rah…

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