Patently-O Bits and Bytes by Juvan Bonni

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

  1. 2

    Dave, thanks for your comments. It caused me to go back through all (1)-(13) of the AIA 35 U.S.C. 316(a) grants of authority for Director regulations. These all appear to relate to IPR procedural matters, not to PTO interpretations of AIA substantive law changes.

    1. 2.1

      You also lead me to wonder why no one has yet attacked on administrative law grounds the way in which the PTO switched the substantive law of claim interpretation in IPRs from BRI to the Phillips standard?

      1. 2.1.1

        Dear Paul —

        Hooboy is the “Ordinary Meaning” rule a target rich environment. The only reason it hasn’t been challenged is that the first “ordinary meaning” IPR/PGR is about nine months from an appealable final written decision.

        When I first read the Notice of Proposed Rulemaking, I entertained suspicions that the two APJs were intentionally sabotaging the rule. A year later, I am willing to “never attribute to malice that which is adequately explained by stoopidity.”

        Take a look at my article An Administrative Law View of the PTAB’s ‘Ordinary Meaning’ Rule at link to (Normally I manage conflicts by only staying on patent owners’ side. I’ll work with a petitioner on this one.)


          Thanks for your additional article cite “An Administrative Law View of the PTAB’s ‘Ordinary Meaning’ Rule” at link to
          I would only note, as others have noted earlier, that I have yet to see an IPR decision in which the difference in claim interpretation between BRI and In re Phillips or “ordinary meaning” would clearly have changed the outcome if the latter had been applied. That is, the cited prior art was effective, or not, for either claim interpretation. [Reportedly in some prior IPRs the APJs had even asked that difference question of the parties, and gotten “no” answers.] Thus in my view this clearly substantive rule change was a PTO political pacifier for the many IPR haters who had convinced themselves that this change would make a big difference.
          So, will not anyone challenging this rule change on administrative law grounds have a difficult first step of showing why that would make any actual difference to their IPR outcome?


            Dear Paul —

            Yeah, I’d guess claim construction is outcome determinative in 10-20% of cases?

            “Harmless error” plays out differently for agency rulemaking errors vs agency adjudication errors.


  2. 1

    Atty. David Boundy: The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions (Source: SSRN)

    I haven’t read it yet, but these precedential opinions are weird. How do you enforce a precedential opinion from the PTAB without an appellant layer of courts?

    1. 1.1

      Quite depends what you want to enforce, and more particularly, upon whom you want to enforce upon.

    2. 1.2

      The Boundy article seems definitely worth the read, but, like you, I haven’t had the time to read it fully yet.

      “Precedential” could have several meanings re: a PTAB opinion. Could be intended to be a pronouncement (on authority validly (?) delegated by the Commissioner) on policy or interpretation. If so, following the opinion within the Office would be enforced by Commissioner, though petition or appeal to the Board.

      Boundy raises what appear to be significant concerns about such practice under Chevron, that is, what deference — if any — the courts may give any particular Board opinion or the way it is implemented within the Office.

      Alternatively, “precedential” could merely mean the Board opinion is open to citation for whatever suasion its arguments have. An opinion marked “nonprecedential” couldn’t be cited or relied on in the Office or on appeal; you’d steal the arguments without citing the source.

      In that sense perhaps not so different from unpublished court opinions, or opinions from other jurisdictions — nonbinding, but taken for what they’re worth.

      Apologies if I have this wrong, but Boundy appears to suggest a continued refusal (not mere failure) of the Office to comply with the APA. I’m not at all sure that all the members of the Federal Circuit are aware this needs to be addressed.

      Again, appears to be well worth the time to read.

      1. 1.2.1

        Cass L. Singer —

        Thank you for your comment.

        There’s a wide range of legal effect for the PTAB’s existing precedential decisions, from firmly binding on all parties and courts, to asymmetrically binding on the office but not on parties, to persuasive, to just plain illegal. Three paragraphs of your post sum up some of the points on the spectrum.

        “Continued refusal (not mere failure)” is a question that is fair game to be asked. After the Federal Circuit’s Aqua Products decision struck down the PTAB’s Idle Free and MasterImage, I was struck by how little time it took for the PTAB to repeat exactly the same errors.

        Thank you for a thoughtful post.

      2. 1.2.2

        Re: “I’m not at all sure that all the members of the Federal Circuit are aware this [APA compliance] needs to be addressed.”
        The Fed. Cir. has addressed APA compliance on certain subjects, but they are also aware that no PTAB legal decision, whether or not marked “precidential,” is going to be legally “binding” on them, not even under the Chevron doctrine in a case where that could be asserted.


          Dear Paul —

          Your understanding is not correct. The whole point of Cheveron and Auer is that an agency adjudication can bind courts. For the PTAB, the circumstances are very narrow, but it can happen (I point out the only example I can even conceive of in the article). I recommend that you read the article.


            Dave, thanks for noting that “For the PTAB, the circumstances are very narrow” for the Chevron Doctrine to apply. But what I had said was that the Chevron doctrine is not “binding” on appellate court decisions [because it is not]. It is by definition a doctrine of “deference” which is not the same as “binding.” Chevron deference will be denied for several reasons, especially if the agency’s interpretation of an ambiguous statute was not legally permissible, which has been held to mean not “rational” or “reasonable” [in the court’s view]. In determining the reasonableness of a particular construction of a statute by an agency, the age of that administrative interpretation as well as congressional action or inaction in response to that interpretation at issue can also be considered by the court.


              Dear Paul —

              Part of your email is correct — there are a lot of precondition filters. Chevron or Auer deference is far from automatic.

              But your opening sentence “Chevron doctrine is not ‘binding’ on appellate court decisions [because it is not]” is just dead wrong. Once an agency rule gets through all those filters, the agency rule or interpretation binds courts just as much as a regulation does. Take a look at Nat’l Cable & Telecomm’ns Assn v Brand X Internet Svcs, 545 US 967 2005), or last month’s Kisor v Wilkie, link to or my article.


                Dave, was not Helsinn Healthcare v. Teva an example of an [un-bound] overruling of PTO AIA implementation rules, made by the formal rulemaking process, interpreting the AIA 102 as eliminating secret sales as prior art, pursuant to the specific grant of rulemaking authority in the AIA?

                1. Dear Paul —

                  Helsinn is a perfect example of the operation of several of the filters you mention. The Supreme Court’s opinion doesn’t even mention the PTO examination guidelines. They’re not out at first base, they don’t even connect with the ball.

                  1. I am unaware of anything that could remotely be characterized as “pursuant to the specific grant of rulemaking authority in the AIA.” As your question posits, an agency rule or interpretation can only be Chevron-eligible if it’s within the agency’s rulemaking authority. So the PTO’s opinion of § 102 is worth exactly nothing. (Which is greater than the worth of Bob Armitage’s opinion of the powers the PTO had in AIA implementation.)

                  2. Why do you characterize them as “made by the formal rulemaking process?” The PTO’s examination guidelines are not “regulations.” They’re just examination guidelines. Pfffth. The Federal Register notices requesting comment didn’t attribute any more weight to them than that.

                  There are several more filters that the examination guidelines fail–read the article.


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