No Costs to Government when it Intervenes in IPR Proceedings

by Dennis Crouch

LG Electronics v. Iancu (Fed. Cir. 2018) [ORDER]

In a R.36 Affirmance, the Federal Circuit upheld the PTAB obviousness judgment. The USPTO promptly filed a request for a bill of costs for $387.60.  The Federal Circuit has now rejected that request since the PTO was an intervenor, not a party.

LG Electronics (LG) sued Advanced Micro Devices, Inc. (AMD) for infringement back in 2014 and AMD responded with the filing of this inter partes review (IPR) petition. U.S. Patent 7,664,971. The PTAB found all the challenged claims obvious and LGE appealed, but AMD did not defend the case on appeal since the parties settled the underlying infringement dispute.  At that point, the PTO “exercised its right to intervene” under 35 U.S.C. 143.

The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.

After affirming on the merits, the PTO asked for its costs Federal Circuit Rule 39.  Under the rule, costs just include copying, service of process, clerk fees, etc. — and here added up to $388.

The Federal Circuit rule states that “if a judgment is affirmed, costs are taxed against the appellant.” However, the rule includes a caveat when costs are “for or against” the US. In that case, costs are assessed “only if authorized by law.”  28 U.S.C. § 2412(a) allows for costs when the Government is a party to litigation.  Here, however, the Government was an intervenor.

This appeal was not brought by or against the United States. It was a dispute arising between two private parties, AMD and LG. The PTO was an intervenor, which, although having a right to intervene, see 35 U.S.C. § 143, had no obligation to intervene. No one asked it to intervene. It was in effect a volunteer. Section 2412(a) is therefore not applicable to this case.

The court found no other particular statute authorizing costs to the government — and thus the court “decline[d] to award costs in these circumstances.”

22 thoughts on “No Costs to Government when it Intervenes in IPR Proceedings

  1. 2

    The prospect of Presidential Har@ssment by the Dems is causing the Stock Market big headaches!

    Friendly reminder: there are patent attorneys out there who actually chose not to vote against this insufferable l y i n g sniveling five year old tantrum throwing shirtbag.

    I’ll never let them forget it.

    P.S. Director Iancu accepted an appointment from this piece of shirt which makes sense because Iancu himself is a dish 0nest h@ck whose primary goal is enriching himself and his l0wlife friends in the “community.”

    1. 2.1

      “I’ll never let them forget it.”

      As if any of them care — ever — what you think … thanks for my evening chuckle.

      That said, Trump is, was, and forever shall remain unqualified to be our President.

      … if only the Dems had given us someone besides Hillary to choose from.

      1. 2.1.1

        if only the Dems had given us someone besides Hillary

        Probably the least of the problems with the last prez election but, hey, your kind of abject st0 0 pity and political cluelessness is just par for the course in the United States.

        1. 2.1.1.1

          Political cluelessness: my party because of my party.

          And yes, that shows up on both sides of the aisle.

          You know what else shows up on both sides of the aisle?

          The type of mentality exhibited by Malcolm/Trump.

          Now can we get back to patent law?

    2. 2.2

      Malcolm remains the Trump of this blog – not caring one whit just how many of his non-patent law rants have been expunged.

      The throw away with Iancu means nothing (given as Obama appointed Kappos and Malcolm railed on Kappos as well).

      wtf Crouch – even having Malcolm be expunged more often than all other posters combined is not enough — apparently.

      1. 2.2.1

        Malcolm remains the Trump of this blog

        Actually I’m one of a handful of people here who have been commenting for a long time with more integrity than you’ll ever achieve in your s@ d little life, Billy.

        I’m sooooo sorry that you can’t connect the dots between politics and patent law, even as your cl0 wnish glibpyuke c0horts do their pitiful best to corrupt both the former and the latter.

        Thankfully we’re not all like you, sn0wflake.

        [shrugs]

        [friendly reminder to everyone that “anon” continually whines about “political correctness” being the worst thing ever but simultaneously insists on playing P0liceb0y on the blog every chance he gets LOL]

        1. 2.2.1.1

          Way to double down with the Trump tactics.

          You are absolutely stultifying that way.

          1. 2.2.1.1.1

            Congrats to Arizona for rejecting the disgusting idiO cy and putting another woman (D) in the Senate!

            1. 2.2.1.1.1.1

              Nice.

              Does not excuse or make up for your actions here in any way, shape, or form.

        2. 2.2.1.2

          I’m one of a handful of people here who have been commenting for a long time with more integrity

          Empty boast contradicted by 13 and 3/4 years of dissembling and emotional rants.

          Not sure what you think “integrity” means, but it does not mean “Ends no matter what the Means.”

  2. 1

    This strikes me as a poorly reasoned order. Dennis summarizes the reasoning this way, which I think gets to the heart of the problem: The Federal Circuit has now rejected that request since the PTO was an intervenor, not a party. My understanding is that intervenors generally are full parties to the case. This is what distinguishes intervenors from amici. See, e.g., Wright & Miller section 1920; Alvarado v. JCPenney, 997 F.2d 803, 805 (10th Cir. 1993) (We agree that “[w]hen a party intervenes, it becomes a full participant in the lawsuit and is treated just as if it were an original party.” Schneider v. Dumbarton Developers, Inc., 767 F.2d 1007, 1017 (D.C.Cir.1985); see also Brown v. Demco, Inc., 792 F.2d 478, 481 (5th Cir.1986). The intervenor renders himself “vulnerable to complete adjudication … of the issues in litigation between the intervener [sic] and the adverse party.” United States v. Oregon, 657 F.2d 1009, 1014 (9th Cir.1981) (quoting 3B Moore’s Federal Practice ¶ 24.16[6] )). This means that the government would have had the right to petition for cert, for example, if the case had turned out differently. And it should mean–in my view at least–that they’re presumptively entitled to costs just like other parties unless something specifically says otherwise.

    As to 35 USC 143, the court starts from the opposite presumption–assuming that if a statute doesn’t give the government the right to costs then it has no such rights. The court doesn’t explain why it starts there, other than to note that there are other statutes that state specifically that the government can have costs when it intervenes. I don’t buy it. Sometimes Congressional silence is just silence, and spelling out something in some statutes doesn’t implicitly create a clear statement rule to spell it out everywhere it applies. That seems fair here–Congress didn’t need to spell out the obvious point that intervenors are generally full parties, entitled to make arguments, seek further review, and collect costs where appropriate. That should be enough if the PTO decides to fight this.

    The section 2412(a) analysis bothers me a bit less, but it also seems wrong. The court says that this isn’t a civil action “brought by or against the United States” for two reasons. First, the court describes the IPR as “a dispute arising between two private parties, AMD and LG.” Second, it emphasizes that the PTO had a right to intervene–but no obligation and wasn’t asked to. “It was in effect a volunteer.”

    On the first point, earlier Federal Circuit panels and and the Supreme Court don’t describe IPRs that way. Here’s what the Federal Circuit said in July (St. Regis Mohawk Tribe v. Mylan, 896 F.3d 1322, 1326):

    IPR is neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government. It is a “hybrid proceeding” with “adjudicatory characteristics” similar to court proceedings, but in other respects it “is less like a judicial proceeding and more like a specialized agency proceeding.” Cuozzo Speed Techs., LLC v. Lee, ––– U.S. ––––, 136 S.Ct. 2131, 2143–44, 195 L.Ed.2d 423 (2016).

    Ultimately, several factors convince us that IPR is more like an agency enforcement action than a civil suit brought by a private party…

    There’s more, but I don’t want to copy and paste several pages of a court opinion into the comments here.

    The court’s second point seems to confuse intervenors and amici. The PTO doesn’t have to intervene, but so what? It has a statutory rightto do so, and when it does it should get the same rights as other intervenors unless controlling law says otherwise. And in this case there was nothing odd about it intervening. The petitioner settled out of the case. If the Federal Circuit had reversed here, the PTO would have the right to petition for cert if it intervened, but not if it didn’t. There may be other reasons why 2412 doesn’t fit here, but I don’t think the “volunteer” point does anything.

    1. 1.1

      (my knee-jerk reaction on a quick read and 10 minutes of thought, anyway…)

      1. 1.1.1

        lol – appreciate your quick read and thoughts.

    2. 1.2

      Good points, but will the PTO want to try a cert petition unless the number of IPRs in which the PTO feels that it has to intervene to defend the PTAB invalidity decision [because no one else is left in the case who will] is so large that the total of all such costs is significant?

      1. 1.2.1

        This is a non-precedential order over $387.60 in costs. This is probably the last word on this particular bill of costs. I would guess that if the PTO wanted to fight further, it would file something in the Federal Circuit only (i.e., not a cert petition). And it would maybe do so if someone at the PTO decided that either (a) in the aggregate, these costs add up to enough to make it worth filing something, or (b) statements in the order could potentially be cited to support arguments for restricting the parameters of the PTO’s participation as an intervenor in other cases, in ways that matter more to the PTO than collecting costs. But I would guess that this is the end.

    3. 1.3

      Great comments here that may come in handy down the road.

    4. 1.4

      Seems logical dcl, yet had costs been awarded, who would have been responsible for paying them?

      LG?

      AMD?

      Both? (if so, how divided?)

      What about the CAFC (if they requested the PTO’s input)?

      Since neither LG nor AMD (I’m presuming) asked for the PTO’s input, why should either of them be responsible for paying for such input?

      1. 1.4.1

        LG would pay the costs. AMD was granted leave to withdraw and was no longer a party.

        1. 1.4.1.1

          …loser pay…?

          Is that an American jurisprudential tradition?

    5. 1.5

      2 other things struck me as odd about this order.

      1. The CAFC says that “No one asked [the PTO] to intervene.”

      True, but I think it’s fair to say that the CAFC asked the PTO if it wanted to intervene, just as it does pretty much every time the petitioner settles out of an appeal. Entries 23-25 of the docket illustrate this.
      —-
      09/28/2017 23
      5 pg, 101.19 KB MOTION of Appellee Advanced Micro Devices, Inc. to withdraw party, Appellee Advanced Micro Devices, Inc., as a party to this appeal. Any response is due within 10 days of service [Consent: unopposed]. Service: 09/28/2017 by email. [463955] [Jon Wright] [Entered: 09/28/2017 09:44 AM]

      09/28/2017 24
      2 pg, 62.73 KB ORDER filed. The motion [23] is granted. The revised official caption and short caption are reflected in this order. No later than 30 days from the date of filing of this order, the United States Patent and Trademark Office is directed to inform this court whether it intends to intervene in this appeal. If the Patent Office elects to participate as intervenor, its brief shall be served within 40 days of the date of filing of this order. Any reply brief is due within 14 days of the date of service of the Patent Office’s brief. If the Patent Office elects not to participate, LG Electronics, Inc. shall file its appendix within 45 days of the date of filing of this order. Service: 09/28/2017 by clerk. [464170] [LS] [Entered: 09/28/2017 04:15 PM]

      10/30/2017 25
      3 pg, 259.51 KB Notice of Intervention pursuant to the provisions of 35 USC Section 143 from the Director of the United States Patent and Trademark Office. Service: 10/30/2017 by email. [471588] [Robert McManus] [Entered: 10/30/2017 05:51 PM]

      2. The CAFC seems to have entered its order without any argument from the parties. Bills of costs are sealed on PACER, so I can’t know for sure without seeing the filing, but I would assume that the PTO just filled out and submitted the Court’s Form 24, without adding any legal argument about its entitlement to costs. LG didn’t object or oppose costs. The CAFC panel just decided not to award any, and seems to have come up with this analysis on its own. Again, see the docket (58-60) for what I’m referring to:
      —-
      10/05/2018 59
      2 pg, 70.87 KB JUDGMENT filed. AFFIRMED. Issued pursuant to Federal Circuit Rule 36. Terminated on the merits after oral argument. COSTS: Costs taxed against Appellant(s). Mandate to issue in due course. For information regarding costs, petitions for rehearing, and petitions for writs of certiorari click here. [PBC] [Entered: 10/05/2018 09:11 AM]

      10/19/2018 60 Open Restricted Document
      0 pg, 0 KB Bill of Costs for Intervenor Iancu. Service: 10/19/2018 by email. Objection to Bill of Costs due on 11/02/2018. [558880] [17-1765] [Robert McManus] [Entered: 10/19/2018 05:08 PM]

      11/05/2018 61
      3 pg, 86.96 KB ORDER filed denying [60] bill of costs/fees filed by Iancu. By: Merits Panel (Per Curiam). Service as of this date by the Clerk of Court. [562508] [SMJ] [Entered: 11/05/2018 10:46 AM]

      1. 1.5.1

        I mean 59-61, not 58-60

        1. 1.5.1.1

          Your 1. is certainly not reached and your 2. is (admittedly) not possible to ascertain whether it was reached.

          Where is the “odd” that you are seeing?

          Unless you want a particular Ends, I am not seeing how you can use the labels that you have used.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture