Patently-O Bits and Bytes by Juvan Bonni

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30 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 7

    Greg @ 4.1 has got it — the challenger would be a petitioner that loses at either petition/institution stage or final written decision stage.

    Yes, this could be up for judicial review on an “institution denied.” There’s a long history at the Supreme Court for granting judicial review for agency “shenanigans” even if a statute precludes review on the merits. My article on the history of preclusion of review and Cuozzo is available at my firms website link to or at ssrn link to An agency that feels like it can just flip off the Administrative Procedure Act is a template case for judicial review.

    1. 7.1

      Dave, if the petitioner cannot make a credible showing that the IPR result would be any different under BRI than In re Phillips, isn’t the appeal an improper request for an advisory opinion?

      1. 7.1.1

        Interesting question.

        A wrong standard of review is a per se vacate and remand (Dickinson v Zurko, Leatherman Tool Group, both at Supreme Court in recent years). Is this the same kind of thing? Hard to know.

        Patent Office would have a better argument under “harmless error” than lack of standing.

      2. 7.1.2

        for agency “shenanigans” even if a statute precludes review on the merits.” would “void” your view of “advisory opinion”

        Again, Paul, many points of discussion “on mere blogs” were dismissed outright by you (and dismissed in a pejorative fashion). That you never deigned to actually participate in discussions of these issues has never meant that those issues were not there all along.

        Clearly here, there is more than merely the singular “BRI or Philips standard” as an issue (or example of “shenanigans”).


              “Wolf” has an appropriate analogy to it (just not Greg’s).

              As I noted in my reply, Paul LONG not only refused to engage on the merits of ANY issue being brought up in regards to the infirmity of IPR (in his nigh-constant and vociferous cheerleading efforts), he actively denigrated those who would “dare” to bring up any such issues in regards to IPR practice. How often did he “cry wolf” as to the impropriety of even bringing up any infirmity to the IPR regime, snipe from the sidelines, and refuse to engage on the merits?

              He deserves to have his nose rubbed in his own “cries of ‘wolf’.”

              Had HE not been such a consistent arse, I may have cut him some slack, but ALL TOO OFTEN (hint: Greg) those who want to take a coward’s path to actually engaging on the merits deserve to be called out when their actions come home to roost.

              Has Paul (at all) shown any remorse to his own “being a jerk?” Has he at all reflected that those bringing up points were anywhere close to brining things up of merit?

              Of course not.

              You are more than welcome to choose to “be soft” with Paul. That does NOT make the decision to NOT be soft to be a “bad decision” or even to be “a jerk.” I will bet that he STILL feels as has posted in regards to issues that he is afraid to engage with.


                “refuse to engage on the merits” — there’s the pot calling the kettle black. Sorry, I shouldn’t have responded to you, not even to ask you to not be a jerk to Paul. My error.

                1. Lol – let me know of even a single instance of my not responding to the merits.

                  Hey, I “get” that you do not like my brusqueness, but at least get the necessary things right.

      3. 7.1.3

        Paul —

        Good question.

        For an analogous situation — a wrong standard of review applied by tribunal below — the reviewing tribunal vacates and remands essentially per se, and won’t try to figure out what the right answer would have been. Dickinson v Zurko, Leatherman Tool Group are recent IP cases at the Supreme Court.

        Would this be analogous? Hard to know.

        The PTO would likely defend its decision under “harmless error” rather than constitutional advisory opinion.

  2. 5

    Am I understanding the Patel article to say that there are takings challenges already pending against the IPR process? Those will be interesting to follow.

    1. 5.1

      The article notes that there are several parties that have added that unconstitutional taking argument re older patents to their Fed. Cir. appeals of IPRs. [Presumably just to preserve them just in case the Sup. Ct. might take cert, since the Fed. Cir. is not going to go out on that limb on its own.] But he then also admits that the Supreme Court already summarily denied even an unopposed certiorari petition thereon in Advanced Audio Devices, LLC v. HTC Corp. on Oct. 9, 2018.

  3. 4

    Re: David Boundy: An Administrative Law View of the PTAB’s “Ordinary Meaning” Rule (Source: SSRN)
    Yes, it does seem difficult to believe that changing IPR claim interpretation from BRI [always used in that and all other PTO proceedings except for expired patents] to the ordinary meaning test [to a POSITA] was not a “substantive” rule making. [More accurately, the In re Phillips en banc test used in D.C. jury trials.]
    But who would effectively challenge that? Not a losing patent owner, since the latter claim interpretation is generally believed to be narrower. And, there was at least a public comment period.

    1. 4.1

      [W]ho would effectively challenge that?

      A losing patent challenger, no? Despite all the flim-flam one hears about “death squads,” plenty of challenges fail in front of the PTAB. Presumably at least one of those failed challengers can gin up an argument that the challenge would have succeeded, but for the (putatively) unlawful change in claim construction rules.

      1. 4.1.1

        Maybe, but if a Petitioner is being denied IPR initiation, that is far more difficult to challenge, under the IPR statute. Even if initiated, but losing, petitioners would have to prove in a theoretical undecided ‘case within a case’ that the PTAB would have clearly held differently.


            It is no longer literally true that there “is NO challenge to an [IPR] institution decision.” But, as I indicated, it would be very difficult to succeed at that, absent a good clear legal reason for its illegality, not just an initial claim interpretation argument.


              It is no longer literally true

              No longer?

              More like, it has never been true.

              Some of us have been willing all along to engage on Constitutional arguments (that have always been there) while others never seemed to want to admit that those arguments were there.

              And yes, we both know which side each of us are on, eh?

              I have to think that maybe you will join the conversation maybe a couple of years after an actual decision…


          [I]f a Petitioner is being denied IPR initiation, that is far more difficult to challenge…

          Sure, a petitioner challenging a denial of institution would have a steep hill to climb. So those folks will probably not be the one with standing to challenge. Instead, it will likely be any one of the myriad of IPR challengers who have challenged (e.g.) 18 claims, and gotten 15 of those challenged claims canceled while 3 come through the IPR upheld. There are many such IPR parties out there. Surely some of them can make the case that they would have successfully brought down at least 1 of those 3 survivors but for the switch from BRI to Philips (and an argument about even 1 is all that is needed for Art. III standing, assuming that the other requirements about immediacy and particularity are satisfied).

  4. 3

    Say the government gives you an acre on the planet Xeenube 7 and gives you a really nice looking certificate that you can frame that describes the metes and bounds of that acre. Subsequently, the government learns that no such acre exists on Xeenube 7. It was the result of an error. The government says, while you can keep the nice certificate framed, the certificate actually doesn’t describe any property that you own.

    Question: Is that a taking?

    1. 3.1

      Does it matter whether you (the recipient) were the one who originally described those metes and bounds?

    2. 3.2

      Your hypo is faulty from the start (based on at least extra-territorial nature).

      As to your attempt at “government mistake,” THAT is old news and does in fact call into the scope the evaluation under Takings Law.

      Perhaps you should change your moniker to Ordinary Anti-Patentist…

    3. 3.3

      “Question: Is that a taking?”

      Arguable, but not analogous. Say you went to Xeenube 7 under a government program which guaranteed ownership of any acreage you discovered there, and the government actually issued you a deed for that acreage, then determined after you had spent time and capital developing the land into a productive piece of property that the land should actually have been considered public domain and revoked your ownership.

      Question – is that a taking?

  5. 2

    Sandip’s article is a bit light (on the right track, but my comments have been far more detailed as to the Takings Law being affected).

    1. 2.1

      That short article also fails to note other arguments against the Supremes taking up IPR consitutionality again after Oil States but on a “taking” argument: the patent in suit in Oil States WAS a pre-AIA patent, the prior existence of reexamination and interference PTO proceedings against pre-AIA patents for many years, and that the PTO is serving as the judge, not the plaintiff or taking “party.”

      1. 2.1.1

        Those other pre-AIA items are not of the same accord, and are not comparable as you want to indicate here.

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