by Dennis Crouch
In Oil States, the patentee lost its broad challenge to the AIA Post Issuance trial system. However the majority opinion penned by Justice Thomas hinted that other collateral attacks on the system could find more success. Particularly, the court wrote that “our decision [finding that patents are public rights] should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.”
A Costly Screen: The takings clause is an interesting limit on government power. Rather than serving as an absolute limit, the clause creates a costly screen. Although the government has power to take private property for public use, it is required to provide “just compensation” for every such taking. “[N]or shall private property be taken for public use, without just compensation.” U.S. Const. 5th Amendment (1791).
If the government cancels my land ownership rights to instead create a public commons — the takings clause would require just compensation. Imagine for a moment that the PTO’s cancellation of established patent rights is also categorized as a taking — the PTO would need to provide just compensation to the patentee. The question now being raised in various cases — including the recent petition in Advanced Audio Devices, LLC v. HTC Corp.
One starting point: It is certainly a taking for the government to cancel patent rights in merely because it wants to use the invention or to give the public free access to the invention. IPRs also involve cancelling patent rights. However, in IPRs the patents are cancelled based upon a different justification — a non-patentability determination rather than merely a desire for unfettered public use of the invention. The question though is whether this different justification will serve as a cognizable distinction.
The Advanced Audio petition adds the additional twist that its patents were filed pre-AIA. Thus, the patentee asks the following question:
Whether inter partes review (“IPR”) of patents filed before enactment of the Leahy-Smith America Invents Act (“AIA”) violates the Takings Clause of the Fifth Amendment to the U.S. Constitution.
[Advanced Audio Devices SCOTUS Cert Petition (Final)]. Similar arguments are being raised in other cases, including the class action Christy v. USA.
I had not considered that there could be any way to make Examiners even more reluctant to grant claims. At times it already feels like they are examining under a Broadest Unreasonable Interpretation standard. Yet, here we are.
If the revocation/invalidation of patents through IPR requires the Federal Government pay the invalidated-patent’s assignee/owner, the practical effect is going be that a much greater burden will be placed on the USPTO and thus the Examiner Corps to Not. Grant. Any. Damn. Thing. even remotely close to a borderline arguable case where the Fed Gov’t may have to one day pay the value lost on an improvidently granted monopoly.
This is one of those situations where it might be better for the overly-zealous advocates to Just Leave It Alone, because the continued single-minded pressure may have undesirable consequences.
(One would think that this lesson would have been learned already. Arguably, the lack of respecting / giving teeth to 103 under KSR led to defendants seriously resorting to 101. Similarly, one can argue that the bullying behavior of the patent owners in Myriad essentially pissed off enough people to form AMP and also attack on the basis of eligibility. Yes, those situations are different, but I’m sure everything will work itself out rationally if IPRs become a drain on the finances of the government.)
Well, we could have a counter force – I hear that the USPTO just lost a major battle to Hyatt.
Yes, but it was a Hyatt win in the D.C., not yet the Fed. Cir. Also unique to the unique Hyatt situation of his having so many patent applications with thousands of amended claims already pending so long that their future patent terms keep on extending indefinitely, with appeal avoidance, AND the bizarre and very unusual special treatment by the PTO some years ago which was a major contributor to those application pendencies.
Good points.
As to your apparent “blessing” of using 101 in place of 103 – that’s a critically different problem (and it is NOT with the patent holders).
A common refrain in the comments below is that no Takings can occur if the patent right had not properly existed in the first place – in a PTAB finding of “invalidity.” Contrary to this notion, a PTAB finding of “invalidity” is still Takings without due process of law because this Fifth Amendment protection is an essential requirement for any legal proceeding regardless of the ultimate decision on validity.
First, a PTAB invalidity determination may itself be in error – when the patent is actually valid. This PTAB error in IPRs cannot be challenged de novo in an Article III court as available for PTAB errors in affirming examiner rejections in prosecution. The only judicial review available in IPR is a Federal Circuit review deferential to the PTAB.
Second, adjudications at the PTAB lack fundamental due process of law protections which are fully available only in Article III courts of law. Due process of law under the Fifth Amendment requires (a) inclusion of the presumption of validity and the application of a clear and convincing evidence standard for invalidation, (b) multiple procedural fairness protections in the proceedings, and (c) safeguards for fair availability of discovery.
None of these are properly available in IPRs. Rather, the PTAB applies no presumption of validity and invalidates claims by mere preponderance of evidence, which is “a constitutionally defective evidentiary standard” when the countervailing risk of error for the litigants are asymmetric. Santosky v. Kramer, 455 U.S. 745, 745-46 (1982).
The limits on discovery in IPRs undermine substantive litigants’ rights that can only be available in an Article III court. The latter’s discovery standard provides that “[p]arties may obtain discovery regarding any non-privileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case…” Fed. R. Civ. P. 26(b)(1). In contrast, the one-year statutory deadline for completion of IPRs in 35 U.S.C. § 316(a)(11), and the substantial hurdle of meeting the PTAB’s permissible discovery “in the interest of justice” standard under 35 U.S.C. § 316(a)(5) results in PTAB denial of discovery that would otherwise be available in Article III courts. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 26, at *5–6 (PTAB. Mar. 5, 2013) (In IPR, “discovery is limited as compared to that available in district court litigation.”) The lack of such protections is a direct result of Congress’ deliberate choice to displace Article III adjudications through cost reduction for invalidating patents at the expense of patent holders.
The fact that the SCOTUS held in Oil States that IPRs’ removal of invalidity adjudications from Article III courts does not violate Article III of the Constitution does not mean that such removal does not violate other provisions of the Constitution such as the “due process of law” clause of the Fifth Amendment, a matter that was not before the Oil States Court.
While IPRs provide a procedural process for adjudication, they do not provide “due process of law,” which only Article III courts of law provide. So it matters not whether a tribunal finds an issued patent invalid ex-post – the Fifth Amendment protections must be available throughout the proceedings regardless of their outcome.
Bravo.
In a rough translation, some view it as “OK” to kick you out of your house at the onset of any process, and then say “no foul” if in the end, the non-Article III body states that you shouldn’t have had the house all along.
Separately, Ron, I would be interested in your views of “Public Franchise Rights” – still being a form of property – have as much “impact” in Takings law as does the (formerly understood) “Private Personal Rights” that patents were (near universally) understood to be prior to Oil States. Most all of my Takings Law understanding is not reflected in any cases that deal with “Public Franchise” types of property. I was curious if you feel that this (underlying fundamental change) affects the Takings stance – in your opinion.
Anon,
I believe that any discussion on “Public Franchise Rights” of patents is a distraction from the rights actually adjudicated in IPRs. The SCOTUS sidestepped those issues in Oil States despite our amicus brief’s urging that they focus on those as required by their own decision in Tull v. U.S..
First, even if the patent is found invalid, there are implicated rights extinguished that are strictly “private rights.” Whether in court or at the PTAB, an issued patent must be presumed valid, 35 U.S.C. § 282, and “shall have the attributes of personal property.” 35 U.S.C. § 261. Takings may thus occur of a private trade secret right that would not have been disclosed but for the reliance on the statutory promise of Sections 282 and 261 of the patent bargain. It is the government that is responsible for an “error” in issuance (and publication of a trade secret), and the government’s dedication of the trade secret to the public is a Taking of private rights.
Second, as you correctly point out below, the issuance of the patent constitutes “inducement” subject to which the patent holder incurred “franchising” costs, which are private rights. And more importantly, even if the ex post invalidation of the patent is justified, any value of post issuance investments the patent holder made under the expectations of, and reliance on, the statutory presumption of validity and the property attributes of an issued patent are private rights that are redistributed to the public. This too is a Taking of private rights – not public rights.
To be sure, I am not saying that the government cannot engage in such Taking; it certainly can, and perhaps should; but it must do so with due process of law and provide fair compensation for that which was taken.
I refuse to discuss “Public Franchise Rights” of patents because it should be irrelevant to IPR’s constitutionality. Oil States was wrongly decided because the Court did not focus on the rights actually adjudicated in IPR, which are private rights. Any “Public Franchise Rights” of a patent may relate only to the enforcement of the exclusive right, i.e., § 271 (infringement of patent), § 281 (remedy for infringement of patent); § 283 (injunction), §§ 284, and 286 (damage awards), and § 285 (award of attorney fees). None of these are adjudicated in IPRs.
Thanks Ron – interesting notion that although the Court classified the entire patent as being of one type, that a patent may have a panalopy of rights, some of which may be designated “public,” while others designated “private.”
I’ll have to ruminate on that.
Re: “a PTAB finding of “invalidity” is still Takings without due process of law. ” Yes, but flogging a dead horse as an attack on the entire system, as opposed to a few individual evidentiary IPR errors.* Numerous due process violations have been alleged in IPRs, Fed. Cir. appeals, and at the Sup. Ct. in Cuozo briefs. If there were actual fundamental 5th Amendment Constitutional violations in every IPR or reexamination they would have long since been successfully argued on appeal. The AIA will be 7 years old in September, and of course inter partes and ex parte reexamination is very much older and of course contains the same fundamental 5th Amendment Constitutional violations you are still alleging.
*A very small number of due process violation allegations which have been sustained at the Fed. Cir. have been given remands to the PTAB to provide the other party with a responsive evidence opportunity.
“they would have long since been successfully argued on appeal”
Vacuous logic amounting to “don’t argue that now” –without addressing the argument.
I would be happy to see you and anyone else here dare to make your arguments in an actual case or amicus brief. I would only be bothered if you were conning a client into paying for it.
And I would be happy to see you NOT snipe from the sidelines here and actually engage on the merits.
The “out yourself with an amicus brief” is beyond lame and entirely fails to deal with the fact that HERE AND NOW is a different forum and a conversation that you are not engaging with on the merits.
Instead, we just have your lame rebuttals and “but no one argued that” mantra.
Well, clearly someone HAS argued that – and argued it HERE. Maybe instead of the dodging, you actually spend a little time and address the points being made HERE.
By all means, Paul, follow your own advice and ONLY “post” in amicus briefs if that is the forum that you deign to be the only one that counts.
One does not have to “out oneself” IF one can find anyone that agrees with one’s legal theories and is signing and filing the amicus brief themselves. Or, is willing to raise arguments in one of their own cases as suggested in hundreds of published comments.
Paul,
Forget about amicus briefs. Let me turn the question directly back to you given the information in my post at 17.3:
If you were counsel to Oil States in the IPR, would you have left on the table the Fifth Amendment retroactivity argument and not raise it with all other challenges? If so, please explain why?
No. But that is not what we are talking about now that Oil States has been decided with only one dissent, and on a pre-AIA patent.
Paul,
This is not about what has been decided by SCOTUS – it is about what has not been decided. It is an effort to get you to explain why you think that Fifth Amendment challenges at this stage are futile. Your point was that they would have been raised earlier if they had merit. So I tried to get you to explain why they had no merit at the time they could have been raised.
Please give actual reasons tied to the substance of the arguments – not to the fact that they were not raised – why the Fifth Amendment arguments have no merit now.
I am frankly amazed that Paul has even bothered engaging at this level.
He typically limits his involvement to cheerleading for the IPR regime (and taking snide shots from the sidelines).
Oh wait, that’s what he is doing here.
Paul,
The fact that nobody since the AIA has raised these Fifth Amendment infirmities of IPR is of no import. At best, it only shows counsel’s lack of foresight and proper analysis, and at worse an indication of malpractice.
The attached table shows the various cases for which a cert petition on IPR was filed. But only Oil States’ was granted. Now, note that unlike its failed predecessors, the Oil States’ case had the ideal fact pattern and patent attributes for challenging IPR based on the Fifth Amendment.
First, the `053 patent was filed not only before the AIA, but also before the AIPA’s inter partes reexaminations became law. This constitutes the strongest Takings argument against retroactive application of the IPR statute. Congress could not “impair” a patentee’s existing “right of property” by retroactively changing the law. McClurg v. Kingsland, 42 U.S. 202, 206 (1843); Richmond Screw Anchor Co. v. U.S., 275 U.S. 331, 345-346 (1928) (refusing to interpret a statute to “take away” a patent holder’s right to sue government contractors for infringement to avoid “serious” Fifth Amendment constitutional questions). So why did Oil States’ counsel blow this opportunity to raise an obvious Fifth Amendment cause of action?
Second, note that Oil States’ `053 patent was never published before issuance, making this a classic case of the patent bargain – disclosure in exchange for the exclusive patent right. This too was an ideal fact pattern for arguing that the government “error” in issuance resulted in its Taking of a trade secret right without just compensation. So why did Oil States’ counsel blow this further opportunity to raise the Fifth Amendment cause of action?
Indeed, one cannot miss the text inserted in the SCOTUS decision, without which there would likely not have been 7 votes:
“We emphasize the narrowness of our holding. … we address only the precise constitutional challenges that Oil States raised here. Oil States does not challenge the retroactive application of inter partes review, even though that procedure was not in place when its patent issued. Nor has Oil States raised a due process challenge.” Oil States, 138 S. Ct. 1365, 1379 (2018).
You see Paul, one cannot assume that just because the Fifth Amendment challenge was missed, it does not actually exists in spades. Meritorious constitutional causes of action are not always raised immediately after a law is enacted. Your logic is fundamentally flawed.
Re: “..at worse an indication of malpractice.”
That must make several thousand malpractice cases by now since most IPRs were against pre-AIA patents. Likewise all the inter partes reexamin ations against patents issued before that statute. Law firms are apparently missing a major new revenue source.
Paul,
Again, please explain what in your view all those who did not raise the Fifth Amendment argument know that we do not? Please enlighten the readers of this blog with your knowledge of why retroactive application of the AIA is not constitutionally infirm.
Ron, that is already covered in other comments here and elsewhere. But more to the point, we will soon see the outcome of this Sup. Ct. cert petition, which is what counts, not personal opinions which no Fed. Cir. judge has yet supported.
Classic NON-engagement on the merits Paul.
And yet, you snipe away.
Still waiting for answer/rebuttal to Government “taking” of patents question at 5 re “Court of Federal Claims” [or old Claims Court].
What are you talking about Paul? The entire underpinning of the Court of Federal Claims is based on ‘takings’ law – and the limited waiver of sovereign immunity.
The holding of Oil States is such a giant sea change, SCOTUS had to toss in a little ‘takings’ and due process dicta – because it basically put both the Art III courts and the Court of Federal Claims out of a job and jurisdiction.
As I have pointed out, that “tossing in of dicta” is self-defeating based on the facts already present in the Oil States case itself.
The tossed-in dicta cannot conflict with the Ends reached on holding.
No matter if the point was argued or not.
One person here has postulated that since the item to which the dicta pertains was not “presented to the court,” that the fact of the Oil States case itself are immaterial to what the Court states. The problem of course is that such is simply not true. Facts remain facts. The Court – by holding one way and yet “offering dicta” that “supposes” the rule of law (based on the same facts alone) would yield a different result sets up a Gordian Knot. Both the holding and the dicta cannot be true. Not with the single and unchanging facts of the Oil States case itself.
(Let me add that this is so in part because of the level of the court involved – that one person may be mistaken based on viewing the subordinate courts (and the fact that such offered dicta may well be applied as one goes higher in the judicial branch). The problem for that person’s thinking is that there is no such outlet or higher place to go than the body offering the dicta. This is why dicta and holding offered on a single case (and facts of that single case) that result in mutually exclusive results is an indicator that the offered dicta is meaningless.
How about XY, LLC US 7,820,425? That has to be a taking, right?
Wow, missed that one. That is exactly Hayburn’s case writ large. Oil States is just such an abomination to what it means to have a Constitutional guarantee of an independent judiciary to decide a case and controversy in which it has jurisdiction. Just open warfare to elevate PTAB, which per the statute and the unitary Executive, is like the President himself overturning a decision of an Art III court. CAFC had become it’s own worst enemy, is lawless, and antithetical to the Constitution. Guess it just goes to show – public choice theory is like a law of physics – its only a matter of time before total capture.
But what is “just compensation” for an invalid patent? Isn’t that $0?
True. But the PTAB rules and procedures cannot determine whether a patent is valid or not. It is more like flipping a coin to determine validity.
the PTAB rules and procedures cannot determine whether a patent is valid or not. It is more like flipping a coin to determine validity.
Not very persuasive to simply make stuff up that sounds good to you. Please try harder. Most of us grown up patent attorneys can tell pretty easily whether a patent is cr@p or not. We’re paid between $500 and $1500/hr to do that on a regular basis by clients who keep coming back for more.
“Not very persuasive to simply make stuff up that sounds good to you. Please try harder.”
Heed your own advice, PLEASE.
…at a minimum, Franchisee expenses?
Perhaps even, since the government is the Franchisor, and the act of Franchising creates an expectation value, some “fair” portion of expected income…. (but for the Franchisor granting the original Franchise rights, there would be no expectation, so given the fact that the Franchisor is the “controller” in any such grant, they have induced the expectation)
“Imagine for a moment that the PTO’s cancellation of established patent rights is also categorized as a taking”
This scenario assumes the conclusion that PTO cancellations are takings, in addition to invalidity determinations. Then the question is asked whether the “different justification” of a non-patentability determination is a “cognizable distinction.”
The answer is that a determination of non-patentability is the only justification for cancelling claims in an IPR proceeding.
Hypothetical:
USPTO grants a ridiculously broad composition claim to Tr0llBio, Inc. that covers injectable insulin in a solution comprising a physiological acceptable concentration of salt. It’s a travesty. Neverthless … “presumed valid”!
Iancu is asked about the patent, which is generating headlines about PTO incompetence, huckster applicants gaming the system etc, and Iancu replies “Well, that patent is obviously problematic and we are working to understand how it was granted.” Tr0llBi0 stock tanks and some potential licensees walk away from the table (losses on the order of hundreds of millions of dollars).
Is that a “government taking”?
I’m especially interested in comments from the Re pu k k k es and glibertarians who are the f0lks who tend to cheerlead most strongly for abolishment of the IPER system (LOL! never going to happen, l 0 sers)
A prior comment in relation to the actual Oil States decision belies BOTH this article’s lead in statement of “In Oil States, the patentee lost its broad challenge to the AIA Post Issuance trial system. However the majority opinion penned by Justice Thomas hinted that other collateral attacks on the system could find more success.” as well as the dicta itself offered by Justice Thomas.
The patent in Oil States IS a pre-AIA patent.
If the dicta by Thomas had any actual “bite,” there would be nothing stopping the Supreme Court (given their own predilections with their own sense of Supremacy) from deciding the case on that angle.
By offering that angle as a mere “maybe someday but not today” ON an item to which that “maybe” attaches eviscerates that dicta.
Any future holding on that point would immediately be in conflict with the fact that the Oil States case had the proper fact pattern but did NOT apply the law in that manner.
anon,
While you can blightly wave your hand and say that the Court could have decided the case on the angle (using the Taking Clause)….you conveniently bypass the well-written rule at the SCOTUS that they decide cases based on the ISSUES PRESENTED, arguments made, and the law (as individually interpreted by the nine Justices).
Neither Oil States lawyers, the PTO, nor the U.S. Solicitor briefed anything regarding the Takings Clause and the case wasn’t argued along those lines at any point in the proceedings….so how was the case RIPE to rule on regarding that particular issue (raised by none of the parties)?
In the past…in such circumstances where a potential flaw is seen by several SCOTUS Justices…a dicta-like warning pointing out other avenues other aggrieved party can pursue isn’t uncommon.
Your “well-written rule” is not so.
Mere normal courts may have that rule, but you are referring to the Supreme Court.
More silliness and pontification from the patent prosecution bar…
How exactly is IPR a “taking”?? The Takings Clause applies to private property being “taken” for a “public use.” Private property? Check, I’ll give you that one. The patent statute itself says that patents have the “attributes of personal property,” 35 U.S.C. 261, although that property right is expressly “subject to” the other provisions of the Patent Act under Section 261.
But how is IPR a taking?
The AIA allows a patent to be revoked based on a finding by the agency that the patent did not meet the conditions prerequisite to obtaining the patent in the first instance. The revocation of a patent that never should have been issued isn’t a “taking” because the patent rights aren’t being transferred to the government or anyone else; they’re being extinguished because they were never valid. And assuming the PTAB found the patent unpatentable, and was right about that, why would anyone think the patent owner should receive “just compensation” for having its invalid property removed from the patent landscape?
To use a real property analogy, a “taking” would be when the government seizes your land and transfers it to someone else (such as a government agency). AIA is more akin to the situation where the deed to the real property turned out to be invalid, maybe because of a prior recorded transfer, or because you forged the grantor’s signature, or for whatever reason. And that’s not a “taking” in the sense of the Fifth Amendment, nor is that a “public purpose” even if it was a taking. The “takings” analysis simply doesn’t work.
Basically I think you are right. But the takings would be giving to the public the invention which was disclosed in exchange for exclusive right to the invention for a limited period of time. So there is a good argument for a taking.
The taking is the damages available in a court of law that does not find the patent invalid. That is what the agency took when they held the patents were issued in error. While this case was not tried in a court of law, the substantial licensing deals pre-AIA indicate it is very likely it was a valid patent. But for the PTAB death squad, HTC would have had to pay for damages for infringing these patents.
IR: I get your argument. Read below. Close to what I said.
The difference is that I am saying that it is not per se that there can’t be a takings. There could be. For example, if Congress passed a law that said that the PTO director may invalidate any claim for public good. This might be a takings.
Or because the (previous) Director applied a stricter requirement than the Patent Act, BRI for example.
I agree entirely with your analysis here, but I wonder if “public purpose” is really an element of the takings analysis. I am sure that—as a practical matter—most government takings are takings to advance a public purpose. Still and all, if the government were to take your property merely out of caprice or to advance the private ends of a corrupt functionary, surely the government would have to compensate you all the same, no? Are you aware of a case in which the government was excused from the obligation to pay just compensation because the taking of property did not advance a public purpose?
No, the Government cannot get out of paying “just compensation” because an alleged taking wasn’t for a “public use.” The premise of the Takings Clause is that the purported taking IS for a public purpose, otherwise it’s a clear violation of the Fifth Amendment.
Of course what constitutes a “public use” is pretty broad under the Supreme Court’s much-reviled decision in Kelo v. City of New London, 545 U.S. 469 (2005), where they held that the transfer of property from one private entity to another (for “redevelopment purposes”) was a “public use” because of the general benefits enjoyed by the community.
But that still implicates the taking (i.e. transfer from one to another) of private property; canceling an invalid patent isn’t a taking, and it’s pretty silly to think otherwise. The fact that the alleged invention falls into the public domain doesn’t make it a “taking,” it simply means the property right isn’t valid. The same would be true if you held a forged deed to the land used for a public playground. If the deed is declared invalid, that’s not a taking, even though the land now falls into public use.
The fact that the alleged invention falls into the public domain doesn’t make it a “taking,” it simply means the property right isn’t valid. The same would be true if you held a forged deed to the land used for a public playground. If the deed is declared invalid, that’s not a taking, even though the land now falls into public use.
Exactly. Agree 100%.
Cancelling an invalid patent is not what happens in an IPR. They are “reconsidering the original decision to grant the patent”. They are determining “unpatentability” under their rules and procedures which under the APA can be stricter than required by the Patent Act. Using BRI for example. Refusing to weight the credibility of so-called experts in a live cross-examination for another. Denying patent owner discovery to prove up commercial success or copying for another. Ignoring the 7th amendment for another. Thirty minute trials for another. Skipping most of the FRCP for another. These things the agency can do. But if they do, they are not determining validity of the property right. To say that there is not a property right because the kangaroo court said so is non-sequitur.
ALL of that which you reference here are part and parcel of the effect of the separate legal point of the institution decision.
People – for some unknown reason – are not willing to uncouple two separate legal events (the institution decision and any later subsequent decision on the merits).
The fact that you can distinguish what “the decision on the merits” means provides a two fold benefit:
1) The points of your own post.
2) the fact that the two legal events are separable
30 minute trial? What are you talking about. Trial is one-year long. Everything after institution is the trial. Oral argument is typically 30-minutes per side for 1-hour. With consolidated IPRs, they can be longer (I’ve experienced 90 minutes per side). I haven’t been in one where the patent owner has asked for more time. And I’ve definitely seen patent owners sit down with 20+ minutes left (where 90 minutes was allotted).
I’ve also experienced the process from the other side, representing patent owners. I’ve only experienced a professional Board (not a kangaroo court). And I’ve been successful in defeat IPRs for patent owners. Some panels even seem to bend over backward to help the patent owner, albeit this isn’t the norm. I’ve seen institutions denied based upon arguments sua sponte raised by the Board (where the actual arguments raised by the patent owner were just bad).
I think many here either (a) don’t know what they are talking about, (b) are angry because their clients’ invalid patents were rightly found invalid, (c) they perhaps aren’t very good attorneys and so a patent was wrongly invalidated, or (d) maybe they’ve just been unlucky. In any event, the vitriol is often over-the-top.
Anonymous, you should participate here more often. It’s needed.
Parsing semantics is not a rebuttal. I was talking about the 30 minute hearing. In a real court the parties get that much time for the opening statement in a Markman hearing. It doesn’t matter how professional it is, the procedures make it a kangaroo court.
You agree that the hearing is only 30 minutes per side. That is one factor that makes it a Kangaroo court. What about the others?
They could also dress up in uniforms and gather in a wood paneled room and professionally flip a coin to determine the patent is invalid. Same thing. It is invalid merely because they declared it so applying arbitrary shortcut procedures.
The IPR final hearing is for attorney oral arguments AFTER a trial in which all the evidence must submitted, contested, declarations subjected to live cross-examination, and final briefs have been submitted. Your arguments and cites to their support in the record are supposed to already be in your final briefs! It is not an evidence and testimony proceeding such as a pre-trial Markman proceeding can be for claim interpretation.
Also, an IPR has far less issues to dispute than a patent trial. In a patent trial often the most serious dispute is over products infringements, validity issues are not restricted to only prior patents and publications, and technology and patent law have to be explained to lay jurors.
IPRs are not going to be eliminated or improved by misunderstandings or inaccurate representations as to how they operate. Specific rule change suggestions are needed.
I think many here either (a) don’t know what they are talking about, (b) are angry because their clients’ invalid patents were rightly found invalid, (c) they perhaps aren’t very good attorneys and so a patent was wrongly invalidated, or (d) maybe they’ve just been unlucky. In any event, the vitriol is often over-the-top.
It’s “over the top” because hysterical dust-kicking and sycophantic misinformation campaigning is pretty much all these people know how to do. They aren’t “innovative.” They aren’t particularly smart. They’re just incredibly loud and overburdened with the some of the legal profession’s most extreme narcissism and entitlement issues. This has been going on for years.
Plan A: complain that the patent system is being destroyed by entities who “don’t understand innovation” or by incredibly successful entities who plainly do understand innovation but who are just being mean
Plan B: come up with a bizarre hail mary argument regarding “unconstitutionality” or (worse/better) a statutory interpretation argument completely at odds with decades of reasoned understanding and the congressional record
Plan C: when plan B fails, attack the entire premise of judicial review of the patent system as “broken”/unconstitutional
Plan D: start from Plan A and pretend that nobody is paying attention
Typical Malcolm Accuse Others meme (yet again)
A cop caught me coming out the window of somebody’s house carrying a TV set. They took the tv away from me before booking me for burglary. Takings clause, save me from this state tyranny!
(How is this meaningfully different from someone who claims to have invented something that was already in the public domain and who wrongfully files for a patent monopoly on that basis, thereby attempting to rob the public of something it rightfully owns?)
A cop caught me coming out window of my own house carrying a TV set. They took the tv away from me and convicted me (and yes, I am ‘upping’ your story here) of being a burglar.
Never mind that the window was a double wide and was simply an easier way to remove the giant TV than through a narrow door, which was down a narrow and twisting hallway.
How is this meaningfully different?
Well, for starters, you might want to read Ron’s posts at 17 and 17.1.1.
Secondly, if in fact this is a case of “attempted robbing the public of something the public rightfully owns,” then there are proper legal channels for that. Or do those legal channels not interest you?
Clarifying the syllogism under the most recent “error correction” jurisprudence (i.e., Oil States and Saint Regis Mohawk Tribe):
1. If IPR is a taking then the government will compensate the patent owner
2. If IPR is not taking and the patent is found invalid under §282 then the patent owner gets nothing
3. If IPR is not a taking and the patent is not found invalid under §282 then the patent owner gets damages from the infringer
For Ex Parte Reexamination (EPR), was there ever a challenge to the applicability to patents filed before the enactment of EPR?
In Oil States, there was an admission that EPR was constitutional. If EPR applied retroactively, then there should be no difference with IPR applying retroactively.
The party admission as to EPR being constitutional does not make it so.
The admission may have been based on a prior case upholding EPR. Does anyone have a cite?
Yes, Patlex Corp. v. Mossinghoff, 1985. The Federal Circuit held that PTO ex parte reexamination proceedings do not violate the Seventh Amendment or Article III of the Constitution. Later on in Joy Technologies v. Manbeck they also re-affirmed the adjudication of “public rights” in reexaminations.
This will go nowhere. They have already said–don’t remember where–that post-grant procedures are invalidating claims that were improperly granted.
The takings clause approach will go nowhere.
That depends on how the question is asked.
Ask – as here – on something after a final determination on the merits has worked against you is quite different than asking at a different Takings point – at the institution decision point prior to any adjudication on the merits – and your answer may well be VERY different.
anon, they have said it is a public right like a driver’s license. I know a driver’s license is state. But they could pass a new law that said licenses used to be for life, but now we are saying that you have to pass the eye test every year after the age of 70.
Etc. This has no chance.
A public right coupled with characterizing invalidating claims as merely invalidating claims that were improperly granted and we have nothing.