Thryv v. Click-to-Call: Accuracy vs Efficiency; Merits vs Technicality

Thryv, Inc., fka Dex Media, Inc., v. Click-To-Call Technologies, LP (Supreme Court 2019)

Oral arguments are set for December 9, 2019 in this case that again questions the meaning of “nonappealable” in the AIA trial context.

The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

35 U.S.C. 314(d).

The inter partes review (IPR) petition challenging Click-to-Call’s U.S. Patent 5,818,836 was filed by Ingenio who later became Dex Media and who is now known as Thryv.  The PTAB instituted the petition and later found the claims unpatentable.  On appeal, Federal Circuit sided with the patentee — holding (on rehearing) that the IPR should not have been instituted in the first place and thus vacating the final written decision.  In particular, the court held that prior litigation on the patent triggered the 1-year time-bar of Section 315(b). The en banc majority also held that the “nonappealable” statutory language was not strong enough to bar appeals of situations like this – where Director’s decision to institute went outside of her statutory authority. In Cuozzo v. Lee (2015), the Supreme Court arguably authorized such review (UPDATE BELOW):

While the decision to institute inter partes review is “final and nonappealable” in the sense that a court cannot stop the proceeding from going forward, the question whether it was lawful to institute review will not escape judicial scrutiny. This approach is consistent with the normal rule that a party may challenge earlier agency rulings that are themselves “not directly reviewable” when seeking review of a final, appealable decision. 5 U. S. C. §704. And it strikes a sensible balance: The Patent Office may proceed unimpeded with the inter partes review process … but it will be held to account for its compliance with the law at the end of the day.

Cuozzo. UPDATE – NOTE that the quote above comes from Alito’s concurrence/dissent, not the majority opinion.

The Supreme Court granted certiorari in Thryv on the following single question:

1. Whether 35 U.8.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that§ 315(b)’s time bar did not apply.

[Thryv Petition].  In its briefing, the Gov’t has provided a more neutral question:

Whether, in an appeal from the final written decision of the [PTAB] in an [IPR], the Federal Circuit is authorized to vacate the Board’s decision as to patentability on the ground that the review was improperly instituted because the petition was time-barred by 35 U.S.C. 315(b).

Merits Briefing is now ongoing with petitioner’s opening brief filed along with a Gov’t brief and amici supporting either (1) reversal or (2) neither party.

Although expected, the Gov’t brief is important. The Gov’t originally opposed certiorari and has now switched sides to support petitioner.  That change was foreshadowed at the petition stage in the Gov’t brief:

Although the government agrees that the court of appeals lacked jurisdiction to consider Click-to-Call’s challenge to the institution determination in this case, the court’s contrary jurisdictional holding does not warrant further review.

[Gov’t Brief Opposing Certiorari].  The Gov’t explains its conclusion of no-appellate-authority as consistent with Cuozzo.  In particular, Cuozzo explains that the no-appeal provision applies to questions “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”  The Gov’t key authority on this front is the dissent filed by Justice Alito in Cuozzo itself.  Alito particularly argued that limitations in the Cuozzo majority opinion would leave the courts “powerless” to curb abuses by the PTO, including improper policing of the 315(b) time bar.  [Gov’t Brief on the Merits].

Petitioner Merits Brief substantially parallels the brief of the Gov’t, although going a bit further by arguing that the no-appeal provision was designed to ensure that a patentee could not save its patent on a technicality not related to patentability.

This is critical, because overturning an IPR decision based on tangential, non-merits grounds decided at the institution stage would permit the patent owner to continue to enforce an invalid patent, thereby substantially harming the public interest.

Petitioner Brief.

So far, eight amici briefs have been filed:

  1. Supporting neither party: Federal Circuit Bar Association. (arguing that initiating a petition in violation of the time-bar is an “ultra vires” agency action appealable even when appeals are barred by statute).
  2. Supporting neither party: PTAB Bar Association. (this brief essentially requests that the Supreme Court write a careful opinion that considers its impact beyond the facts of this particular case).
  3. Supporting neither party: American Intellectual Property Law Association. (section 314(d) should not shield Board action that contravenes its statutory authority).
  4. Supporting petitioner: AARP. (quick and efficient IPR proceedings are saving lives by making drugs and biosimilars available at a lower cost).
  5. Supporting petitioner: Atlanta Gas Light Company. (“Providing greater opportunities for appellate review may increase accuracy, but at a cost to efficiency.”)
  6. Supporting petitioner: Intel Corporation. (decrease efficiency).
  7. Supporting petitioner: ON Semiconductor Corporation, et al. (the result here is to allow patentee to enforce invalid patents).
  8. Supporting petitioner: Superior Communications, Inc. (the only way this situation comes-up is where the patent has been found unpatentable on the merits but is seeking to escape judgment on a technicality).

Respondent’s brief and briefs in support will be filed over the next few weeks.

62 thoughts on “Thryv v. Click-to-Call: Accuracy vs Efficiency; Merits vs Technicality

  1. 8

    The main post offers the interesting quote that, “while the decision to institute inter partes review is ‘final and nonappealable’ in the sense that a court cannot stop the proceeding from going forward, the question whether it was lawful to institute review will not escape judicial scrutiny,” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2151 (2016) (Alito, J., concurring in part and dissenting in part).

    I wanted to note for clarity that this quote comes from Justice Alito’s opinion concurring in part and dissenting in part, rather than from the majority opinion.

    Justice Alito suggested that the no appeal provision can be “fairly interpreted to bar only an appeal from the institution decision itself, while allowing review of institution-related issues in an appeal from the Patent Office’s final written decision at the end of the proceeding.” Cuozzo, 136 S. Ct. at 2151 (Alito, J., concurring in part and dissenting in part).

    Justice Alito made the compelling point that Supreme Court “cases have used the term ‘nonappealable’ in just this way—to refer to matters that are not immediately or independently appealable, but which are subject to review at a later point.” Cuozzo, 136 S. Ct. at 2151 (Alito, J., concurring in part and dissenting in part) (citing Mohawk Industries, Inc. v. Carpenter, 558 U.S. 100, 105, n. 1, (2009) (agreeing with decisions holding that attorney-client privilege rulings are “nonappealable” because “postjudgment appeals generally suffice to protect the rights of litigants”); Coopers & Lybrand v. Livesay, 437 U.S. 463, 469, 472, n. 17, (1978) (describing an order denying class certification as “nonappealable” but noting that it “is subject to effective review after final judgment”)).

    Justice Alito concluded that, “consistent with the strong presumption favoring judicial review, Congress required only that judicial review, including of issues bearing on the institution of patent review proceedings, be channeled through an appeal from the agency’s final decision.” Cuozzo, 136 S. Ct. at 2149 (Alito, J., concurring in part and dissenting in part).

    In Cuozzo, the majority did suggest that its interpretation of § 314(d) does not “enable the agency to act outside its statutory limits.” Cuozzo, 136 S. Ct. at 2141. However, Justice Alito was concerned with “how to get there from the Court’s reasoning—and how to determine which ‘statutory limits’ we should enforce and which we should not.” Cuozzo, 136 S. Ct. at 2155 (Alito, J., concurring in part and dissenting in part). Justice Alito indicated that he would have “h[e]ld that 35 U.S.C. § 314(d) does not bar judicial review of the Patent Office’s compliance with any of the limits Congress imposed on the institution of patent review proceedings.” Id.

    The Court had occasion to revisit this issue in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), where the Director tried to argue that Cuozzo and § 314(d) “foreclos[ed] judicial review of any legal question bearing on the institution of inter partes review—including whether the statute permit[ted] his ‘partial institution’ practice.” SAS, 138 S. Ct. at 1359.

    The Court in SAS noted that “Cuozzo … emphasize[d] that § 314(d) does not ‘enable the agency to act outside its statutory limits’,” SAS, 138 S. Ct. at 1359 (quoting Cuozzo, 136 S. Ct. at 2141), and indicated that “nothing in § 314(d) or Cuozzo withdraws our power to ensure that an inter partes review proceeds in accordance with the law’s demands.” SAS 138 S. Ct. at 1359.

    While it is certainly possible that the Court will now re-emphasize Cuozzo and find that 35 U.S.C. § 314(d) bars review of whether the Director complied with the Congressional mandate of 35 U.S.C. § 315(b), the Court’s opinion in SAS perhaps suggests that the Court instead may move further away from Cuozzo.

    It may be that the Court wishes to further clarify jurisprudence in this area and cabin Cuozzo as specific to its facts, or it may be that the Court has decided that Justice Alito had the right of it and find that “that 35 U.S.C. § 314(d) does not bar judicial review of the Patent Office’s compliance with any of the limits Congress imposed on the institution of patent review proceedings.” Cuozzo, 136 S. Ct. at 2155 (Alito, J., concurring in part and dissenting in part).

  2. 7

    It would be interesting to see informed comments on what the real odds of success in further litigation are for a patent owner who’s claims were held invalid in an IPR but the IPR decision vacated on jurisdictional grounds, not on the merits? More specifically, would not almost any other defendant not having a jurisdictional problem be able to get a litigation stay and a favorable IPR decision subject only to the low odds of Fed. Cir. appeal on the merits? Also, what are the odds of a D.C. summary judgement in such a case?

    1. 7.1

      It would be interesting to see informed comments…
      Evergreen sentiment.

      Seriously, though…. I suppose the hypothetical is the following. Patent owner is litigating patent X in district court and fighting a challenge at the PTAB. District court litigation is stayed pending IPR. The PTAB invalidates all challenged claims. Federal Circuit doesn’t reach the merits; instead it vacates because the whole thing was time-barred. Back in the district court, the defendant wants to use the PTAB’s (now-vacated) final written decision to kill the patent, so it files a summary judgment motion saying that although the IPR was time-barred the PTAB was right.

      I think the patentee might have a few responses:

      1. The PTAB was wrong, and the Federal Circuit might have said so if it had needed to reach the merits. The district court should not presume that the Federal Circuit would have affirmed had it reached the merits.
      2. (If true) — The now-vacated PTAB ruling was based on the APJs’ resolution of disputed factual issues (e.g., how to read prior art, and which expert was more credible). Those issues are (a) inappropriate to resolve at summary judgment, and (b) particularly so where the evidence in district court is different (again, if true).
      3. It would be somewhat perverse to deny the patentee its day in court because of the result of an illegal now-vacated administrative proceeding. The IPR ruling clearly can’t have preclusive effect, but a summary judgment ruling relying on it is effectively the same thing.

      I may be overlooking a legal or practical reason why a later vacated as time-barred final written decision would still sink the patentee’s chances in district court, but I can’t think of one. If the PTAB decision was extremely high-quality and gave unassailable answers to anything the patentee might say in defense of its patent, maybe… but aside from that, I tend to think that the patentee gets its day in court and that the IPR wouldn’t change much.

      1. 7.1.1

        I suppose the hypothetical is the following…

        That is one hypo that I could imagine. Another would involve a situation in which the IPR petitioner sought IPR against Claims 1-13, but the PTAB (pre-SAS) only instituted on Claims 1-5, 9, & 10. The PTAB declares all challenged claims (i.e., Claims 1-5, 9, & 10) unpatentable, but then when the case is remanded back post-SAS, they revoke the institution.

        At this point, the original IPR petition has been published as part of the IPR file wrapper on the PTAB’s AIA trial site. The initial IPR victory was won by Defendant #1, and now D#1 is hosed when the decision gets vacated.

        But then the patentee sues D#2. D#2 pulls D#1’s petition from off the AIA trial site, and changes only a few lines (asking for petition against Claims 1-5, 9, & 10, instead of Claims 1-13). Nothing is guaranteed, but the chances are pretty good that this petition gets instituted and that the same outcome obtains as in the original IPR brought by D#1. It would be small work for the PTAB (who could mostly recycle their previous decision).

        This may not solve all of D#2’s problems (if any of Claims 6-8 & 11-13 are asserted, the IPR does not totally resolve them). At least it simplifies issues. Meanwhile, the cost for drafting the petition is de minimis.

        1. 7.1.1.1

          My eyes may have skipped over the word “other” in Paul Morgan’s comment. Whether for SAS or time-bar reasons, if a patentee wants to sue a second defendant in district court, and the defendant files a motion for summary judgment based on the vacated IPR decision, the patentee would have the same responses listed in my comment above (7.1).

          But if the second defendant wants to IPR the patent, I think the patent owner is hosed unless it has a good argument that the PTAB simply got it wrong on the merits. The district court would probably grant a stay (some might not). As Greg DeLassus points out, defendant #2 can recycle defendant #1’s IPR petition, PTAB panel #2 can recycle PTAB panel #1’s final written decision, and there will be no time bar, so the patentee’s hopes will likely be pinned to an appeal on the merits at the Federal Circuit.

          1. 7.1.1.1.1

            … unless of course the Patentee is able to learn something from the first go-around IPR and make a different argument in the second ‘replay.’

            I would have to presume that a patentee WOULD have done at least such a preliminary assessment before engaging in a secondary enforcement effort…

      2. 7.1.2

        Also dcl, the defendant is now facing a million bucks in unrecoverable legal fees and a possibly existential threat to their business over a right that the government, by it’s own untainted process, has determined should not have been granted. The auspices of that determination may have been flawed, but how can justice be had for this harmed defendant?

        1. 7.1.2.1

          Good question. I don’t know

        2. 7.1.2.2

          Martin,

          I think that referencing “the auspices of the determination” risks losing sight of the reality that the issue here is not just a matter of a defect in agency action that the petitioner had no control over. The petitioner controls when a petition is filed.

          Legal issues frequently come with uncertainty. One may have a creative legal theory that a complaint dismissed without prejudice does not trigger § 315(b)’s time bar, but obviously there is a real risk that courts may not agree.

          Is it unjust if a petitioner has to bear the costs of proceeding on a legal theory, when it knew that the theory came with the risk that the courts might disagree?

          Further, is it unjust to deny a petitioner access to the fruits of the IPR process where the petitioner was not actually entitled to utilize the IPR process at the time of petition filing?

          1. 7.1.2.2.1

            If the filing was knowingly fraudulent, wouldn’t justice suggest sanctions against the filers, but not vacatur of the untainted result?

            The result is untainted because all parties, including PTAB, accepted the institution at the time and completed the trial in the ordinary course, unless I am missing facts.

            Had the institution been in dispute during the whole pendancy, an argument can be made that the result would be tainted because one or more actors could have had a reasonable belief the trial would likely be meaningless and thus have been biased by that knowledge in their decision-making.

            1. 7.1.2.2.1.1

              It wasn’t a matter of being knowingly fraudulent, there was simply a disagreement on the legal issue of whether a complaint dismissed without prejudice triggers § 315(b)’s time bar.

              Far from all parties accepting the institution, the patent owner actually argued that the petition was time barred even prior to institution in its preliminary response.

              (Moreover, it may not even matter whether all parties accept institution at the time, because “[t]he question [of] whether [an executive branch agent] has acted in a case to which the statute is inapplicable,” Crowell v. Benson, 285 U.S. 22, 63 (1932), is a question of whether “the [agent] had no jurisdiction of the proceedings before him,” Id. at 64, which would “deprive them of their effectiveness for any purpose.” Id.)

              1. 7.1.2.2.1.1.1

                … in simpler (and more direct) terms:

                The Ends do not justify the Means.

  3. 6

    Terrain and all that, but ISTM that “the result here is to allow patentee to enforce invalid patents” is just a wee problem.

    If the PTAB instituted the review in good faith error, but actually tried the case, shouldn’t the valid result stand? You know: qualified immunity….

    1. 6.1

      Yes, but the two parties on this phone call were connected using an online service which is, conceptually, the greatest invention ever. Rich Whitey gotta get rich, you know.

      Looking forward to the day when patents become a “states rights” issue. Because the Repu k k les are all about states rights! Just ask Bildo.

      1. 6.1.1

        Whitey

        ?

        W
        T
        F

        1. 6.1.1.1

          Just calling it like it is, Bildo. Don’t lose focus now!

          Lyin’ Brett needs you.

          1. 6.1.1.1.1

            “Calling it like it is” is more along the line of calling you out for the ISM that you are (mindlessly) engaging in here.

            “Whitey” — and your use here — is racy ism.

            1. 6.1.1.1.1.1

              Run with that, Bildo! Defend those poor persecuted white patent monetizer bros.

              1. 6.1.1.1.1.1.1

                it is NOT a matter of defending anyone as much as it is a matter of recognizing when racy ism is afoot.

                Racy ism is NOT proper when any particular group is practicing it – it is IMproper in all regards.

                E vil is E vil.

          2. 6.1.1.1.2

            MM didn’t even hear that lyin’ NYT newspaper had to retract, again. And now “lyin’ Brett” is having to decide whether to bring defamation suuuweets agin the lyin’ whamin. They just want to kill their babies in peace ya know. But, not an excuse to defame someone.

    2. 6.2

      Marty,

      Perhaps in this instance the distinction may be a bit too nuanced, but the Ends do not justify the Means.

      I “get” that you only want to look at the Ends and base your judgement therein.

      But Law (especially) abhors such a mechanism.

      Which is precisely why (in the criminal context — much more severe, btw, than the patent context — guilty WILL get off on technicalities.

      1. 6.2.1

        Terrain again. The Exclusionary Rule exists to prevent bad official actors from faking good faith every time they want to search lacking probable cause. Qualified Immunity exists to protect good official actors from inhibition doing their jobs so that a good faith mistake does not ruin them. Your refusal to see that ‘The Ends Justify the Means” is a two-sided coin accords with your general rigidity.

        Enforcing invalid patents is a pretty serious wrong.

        1. 6.2.1.1

          My “general rigidity” is nothing more than recognizing, acknowledging, and integrating foundational concepts across the spectrum of law.

          Terrain indeed — just not how you are grasping it.

          1. 6.2.1.1.1

            Because Bildo is totally not a hypocrite. Nope. Not him.

            1. 6.2.1.1.1.1

              There is ZERO hypocriticalness in my stance here.

        2. 6.2.1.2

          Enforcing invalid patents is a pretty serious wrong.

          Murder is a FAR more serious wrong, and yet “the Ends do not justify the Means” is entirely appropriate in that ‘terrain.’

    3. 6.3

      Re the suggestion that “the result here is to allow patentee to enforce invalid patents”:

      This statement seems slightly misleading in that it could be clarified to make clear that it merely allows patentees to subsequently *attempt* to enforce their patent. Estoppel under 35 U.S.C. § 315(e)(2) only attaches if an IPR “results in a final written decision,” 35 U.S.C. § 315(e)(2), so a petitioner generally remains free to subsequently challenge patent validity in court, should they find themselves the subject of an attempted enforcement action.

      Congress, in designing the IPR framework, set clear limits on when an IPR may not be instituted. While this may sometimes mean that invalid patents cannot be challenged via IPR by a particular party, this is a feature of the IPR scheme enacted by Congress, and cannot be used to justify ultra vires agency action.

      Thus, it could be argued that the issue here is simply allowing for judicial review for patentees who find their patent improperly haled into an IPR in violation of Congress’s clear prohibition in 35 U.S.C. § 315(b). While this may sometimes mean that a Board’s cancelation of claim is set aside, it is not clear how this cancelation could be upheld if it is ultra vires.

      1. 6.3.1

        Some have no problem whatsoever with ANY ultra vires action as long as patents are harmed.

        One of that some is purportedly a patent attorney who works to protect innovation by creating patent rights for his clients.

        The cognitive dissonance of that one has been noted.

  4. 5

    I know this particular issue isn’t addressed by the Click-to-Call appeal, but I really despise the PTAB’s practice of vacating a previously-issued institution decision, sometimes years after the fact, and then having that decision treated as unappealable to the Federal Circuit. It’s a cute end-around Supreme Court precedent.

    In the recent BioDelivery Sciences case, for example, the PTAB originally instituted on some claims/issues (pre-SAS); the Federal Circuit later remanded the case and instructed the Board to further address the other claims/grounds in the petition under SAS. The Board refused to do that; it instead vacated the original institution decision. Federal Circuit treated that as non-appealable.

    Seems like a total abuse to me, one that would justify drawing a clear distinction, from an appellate jurisdiction standpoint, between the vacatur of an institution decision and a decision denying institution in the first instance. In the BioDelivery Sciences case, the PTAB reasoned that the new grounds they had to consider under SAS were pretty lame; but if that was the case, they should have punished that petitioner with AIA estoppel by issuing a Final Written Decision rejecting those grounds on their (lack of) merits, not by exercising “discretion” to prejudge the merits of the grounds without actually deciding them.

    By vacating the original institution decision, there’s no estoppel, no decision, no guidance to the district court, and the whole proceeding became a big fat nullity. The parties basically ended up wasting years of time litigating invalidity issues only to have the rug pulled out from them by the sloth of PTAB judges.

    1. 5.1

      Lode_Runner: “Seems like a total abuse to me, one that would justify drawing a clear distinction, from an appellate jurisdiction standpoint, between the vacatur of an institution decision and a decision denying institution in the first instance.”

      Clever. The biggest potential obstacle that immediately jumps to mind is whether the reconsideration of the institution decision is unreviewable as “committed to agency discretion by law.” 5 U.S.C. § 701(a)(2).

      Relatedly, the Court has indicated that “a tradition of nonreviewability exists with regard to refusals to reconsider for material error, by agencies as by lower courts,” and indicated that it “believe[s] th[is] to be a[] tradition that 5 U.S.C. § 701(a)(2) was meant to preserve.” Interstate Commerce Commission v. Brotherhood of Locomotive Engineers, 482 U.S. 270, 282 (1987).

      Is an agency’s discretion to reconsider a decision analogous (for this purpose) to an agency’s discretion not to reconsider such that a Board’s decision to reconsider an institution decision is unreviewable as “committed to agency discretion by law”? 5 U.S.C. § 701(a)(2).

      Generally, if an agency “issues a new and final order setting forth the rights and obligations of the parties, that order — even if it merely reaffirms the rights and obligations set forth in the original order — is reviewable on its merits.” BLE, 482 U.S. at 278. Obviously, though, here, 35 U.S.C. § 314(d) would seem to bar such direct review of the new decision not to institute, thus leaving the creative approach of appealing the reconsideration itself.

      In BLE, the Court indicated that “[w]here… the Commission refuses to reopen a proceeding, what is reviewable is merely the lawfulness of the refusal,” and “[a]bsent some provision of law requiring a reopening (which is not asserted to exist here), the basis for challenge must be that the refusal to reopen was ‘arbitrary, capricious, [or] an abuse of discretion.'” BLE, 428 U.S. at 278 (quoting 5 U.S.C. § 706 (2)(A)).

      Analogously, where the Board reconsiders and sets aside its prior institution decision, it may be that review is available for a challenge that the reconsideration represented an abuse of discretion. However, this may require “‘a showing of the clearest abuse of discretion’.” BLE, 428 U.S. at 278 (quoting United States v. Pierce Auto Freight Lines, Inc., 327 U.S. 515, 534-535 (1946)).

      1. 5.1.1

        Thanks J. Doerre, this is pretty insightful stuff. I think the clear abuse of discretion might be the only angle available here, and I am quite interested to see how the Supreme Court would react to this. The Federal Circuit never wanted the “all-or-nothing” IPR review rule, it was imposed on them by the Supreme Court, so it isn’t surprised they allowed it to be circumvented by such a transparent tactic of vacating the institution decision.

        1. 5.1.1.1

          allowed it to be circumvented by such a transparent tactic of vacating the institution decision.

          ?

          That’s an odd view, given that the “tactic” is NOT a circumvention, but instead is an actual implementation.

          LR, you are usually much better at NOT spinning things, but here (again), I think that your emotion has overcome your reason.

    2. 5.2

      … know this particular issue isn’t addressed by the Click-to-Call appeal, but…

      I think that your emotion is getting the better of your reasoning.

      The topic of “starting over” in view of the Supreme Court decision’s “you have to take all or nothing” was that sometimes such a “redo” should be expected to result in a ‘nothing,’ and sometimes should be expected to result in an ‘all.’

      There is NO reason (or even reasonable) expectation that such do-overs will ALWAYS result in an ‘all.’

  5. 4

    These claims must be incredibly sh-tty. Can we see them?

    1. 4.1

      1. A method for creating a voice connection over a circuit switched network between a first party and a second party using an on-line data service to initiate the connection, comprising the steps of:
      a) establishing an electronic communication between the first party and the second party through the on-line data service between a first party and a second party;
      b) requesting a voice communication through the on-line service;
      c) transmitting a message from the online data service to a voice system requesting the voice connection between said first party and said second party;
      c) establishing a first telephone call for the first party;
      d) establishing a second telephone call for the second party; and,
      e) connecting said first telephone call with said second telephone call.

      1. 4.1.1

        Wow. Worse than I thought!

  6. 3

    I don’t fully understand these bar association briefs that say they support “neither party” when the substance of the brief clearly supports one of the parties. The Supreme Court granted review to answer a yes or no question. The petitioner thinks the answer should be no. (314(d) does not permit appeals to argue that the petition was time-barred). The respondent thinks the answer should be yes. 2 bar associations also think the answer should be yes, but claim to support neither party. The “supporting neither party” label seems like a disingenuous pretense of neutrality. Isn’t it?

    The PTAB Bar Association brief seems like a true “supporting neither party” brief and might actually help the court decide this case.

    1. 3.1

      I don’t fully understand these bar association briefs that say they support “neither party” when the substance of the brief clearly supports one of the parties.

      I am glad that I am not the only one mystified by how a brief that clearly favors either the petitioner’s outcome or the respondent’s can be said to “support neither party.”

      1. 3.1.1

        This is fairly standard and boilerplate amicus language, and there are a lot of reasons people use it. The main reason you see this language is because amicus briefs may espouse a particular interpretation of the law, but differ from the litigating parties as to reasons the Court should reach that conclusion. A well-written amicus brief can give the Court a way to reach the same outcome but based on a different rationale the amicus filer thinks is more sound, more supportable, or simply more consistent with its own self interest.

        But if you come right out and say, I support one of the parties, you’re somewhat shackled to their rationale and analytical approach; amicus briefs that do that are typically ones in which the legal issues are fairly straightforward and the amicus brief focuses on the public policy implications of the decision (like in civil rights, criminal, death penalty, etc. cases).

        1. 3.1.1.1

          The main reason you see this language is because amicus briefs may espouse a particular interpretation of the law, but differ from the litigating parties as to reasons the Court should reach that conclusion. A well-written amicus brief can give the Court a way to reach the same outcome but based on a different rationale the amicus filer thinks is more sound, more supportable, or simply more consistent with its own self interest.

          But if you come right out and say, I support one of the parties, you’re somewhat shackled to their rationale and analytical approach; amicus briefs that do that are typically ones in which the legal issues are fairly straightforward and the amicus brief focuses on the public policy implications of the decision (like in civil rights, criminal, death penalty, etc. cases).

          This may explain it, and I wonder how many people agree with it. I happen not to agree. In general, I think that, if you’re making a legal argument that, if accepted, necessarily leads to the result one of the parties wants, you have filed a brief supporting one of the parties and should say so honestly. You may be indifferent to that party’s broader self-interest, and your reasons why the party should win might be different from the party’s reasons in its merits brief, but that doesn’t mean that your brief doesn’t support that party. I don’t mean this as an absolute position. Some cases present more complex questions, and sometimes the nuances of an amicus brief might differ from a party’s merits brief in such a way that the amicus can genuinely say that it supports neither party. But more often the “supporting neither party” label strikes me as faux neutrality.

          1. 3.1.1.1.1

            I think there’s a lot of merit to this position. When you see the bar associations here filing amicus briefs in support of “neither party,” that arguably is just faux neutrality. They don’t want to take the chance that one of the litigants in the underlying is an association member, owned by an association member, or may have some connection to an association member that the association isn’t aware of; supporting one party explicitly in an amicus brief creates a risk of the association being called out as biased. So their safe approach is, “we support this particular interpretation of the law, and if it happens to correspond with one party’s position, that’s just a coincidence, our interest is in the legal interpretation and not the outcome to the parties here.” That’s what the “neither party” language, when used by a bar association, is supposed to convey.

          2. 3.1.1.1.2

            For what it’s worth (nothing), for cases on writ of cert. with a single question presented/accepted, I tend to agree with you and generally tend to view a brief supporting the answer a party is seeking as supporting that party, even if it offers an alternative ground or rationale for reaching that answer. For cases on writ of cert. with a single question presented/accepted, I tend to think of a brief supporting neither party as offering thoughts or a rationale that is not necessarily question dispositive, or possibly offering a rationale or reason why the question is not case dispositive.

            That being said, if an amicus chooses to style their brief as supporting neither party even though it offers question and outcome dispositive reasoning (e.g. for the practical reasons spelled out by Lode_Runner), I’m not really that bothered by it. I would be more bothered if it was ever done for believed strategic reasons, but I can’t imagine that such a ploy would really have any useful effect.

            1. 3.1.1.1.2.1

              Interesting. I’m only a little bothered by what I sometimes view as faux neutrality. The Supreme Court rules make sure that there’s no strategic advantage that could come from making a questionable claim to supporting “neither party.” There’s one deadline for amici supporting the petitioner AND for amici supporting neither party, and another later deadline for amici supporting the respondent.

              1. 3.1.1.1.2.1.1

                My apologies for the lack of clarity regarding my incredibly vague term “believed strategic advantage”. I was intending to reference the strawman theory that, by identifying a brief as in support of neither party, faux neutrality might lend the brief additional credence. In reality, I can’t imagine this ever being the case.

        2. 3.1.1.2

          Thanks, that makes sense.

  7. 2

    Justice Alito (joined by Justice Sotomayor) had much the better argument on this point the first time around. Here’s hoping that the common sense of these two justices prevails this time around.

  8. 1

    AARP. (quick and efficient IPR proceedings are saving lives by making drugs and biosimilars available at a lower cost).

    Are IPRs making drugs* available at a lower cost? How many concrete examples of this phenomenon can one identify? I grant that IPRs have the potential in theory to achieve this outcome, but the actual live examples of such seem rather thin on the ground.

    *”[A]nd biosimilars”!?!? As if “biosimilars” are not drugs?

    1. 1.1

      Yeah, Greg, these people have been listening to AOC for too long. Patents are definitely a part of the reason for high costs, but ridiculous drug pricing also extends to things that are not patent protected (as your previous posts about insulin have made abundantly clear).

    2. 1.2

      I think the AARP’s phrasing may be technically accurate.

      1. If you think of generics as copies of “the drug” and biosimilars as something a bit more meaningfully removed, it’s fair to say that the ability of generic and biosimilar-making companies to attack patents efficiently makes “drugs and biosimilars available at a lower cost.”

      2. BPCIA and Hatch-Waxman are different regimes. I don’t think it’s an odd shorthand to say that BPCIA governs “biologics” or “biosimilars” and Hatch-Waxman refers to “drugs,” even if “drugs” might technically include biologics and biosimilars.

      1. 1.2.1

        [I]t’s fair to say that the ability of generic and biosimilar-making companies to attack patents efficiently makes “drugs and biosimilars available at a lower cost.”

        Is it fair to say that? Drug prices are a subject for which a vial of empirical data is worth whole vats of economic theory.

        I can certainly imagine a cogent hypothetical by which the existence of IPRs can lead to lower drug prices. Patients, however, do not pay hypothetical prices. They pay actual prices.

        Can anyone point to any actual drug price that can be plausibly said to be lower than it would have been in a world without IPRs? Which drugs exactly? Kyle Bass made quite a splash about how his Credes Master Fund was going to lower drug prices, but its actual results were underwhelming, to say the least.

        1. 1.2.1.1

          I should have been clearer. I’m only responding to your criticism of the phrase “drugs and biosimilars” (“As if ‘biosimilars’ are not drugs?”), not commenting on the broader question about the relationship between IPRs and drug prices.

        2. 1.2.1.2

          Greg, it’s true that relatively few IPRs against drugs have been successful, but even one major drug can represent a large public cost, and if IPRs were not of concern to pharma why did they lobby so hard just a few years ago to get themselves excluded from IPRs? Also, there have been published studies of major price drops when drugs go off-patent.

          1. 1.2.1.2.1

            Paul,

            You will not get a straight (and full) answer from Greg.

          2. 1.2.1.2.2

            [R]elatively few IPRs against drugs have been successful…

            Come to that, district court challenges against pharma patents fail far more often than validity challenges overall. And for good reason. Pharma companies make real inventions (not just vaporware), and then write real disclosures to support real (i.e., structural) claims. Not always of course (and the exceptions to the above represent the bulk of the pharma claims that end up failing—whether in IPR or court). Far more often than in other industries, however, pharma complies with the requirements of Title 35, and therefore there are simply fewer pharma patents deserving to fail.

            [E]ven one major drug can represent a large public cost…

            Sure. And if there were even one prominent example of a drug price that fell as a result of IPRs, I would not be making the point that I am making. I am not arguing that IPRs are poorly designed to bring down drug prices. I can certainly understand in theory how such an outcome might obtain. My point is simply an empirical point—that in actual lived practice, the IPR system has had surprisingly little effect so far.

            I suppose that one thing to note is that Hatch-Waxman still provides lucrative awards to a generic challenger who wins a court challenge, but not to one who wins in an IPR. Maybe the power of IPRs would be more fully realized if Hatch-Waxman were revised to treat court victories and PTAB victories equally?

            [I]f IPRs were not of concern to pharma why did they lobby so hard just a few years ago to get themselves excluded from IPRs?

            The unspoken premise of your question is that pharma insiders really know what is going on in their industry. Sometimes that is a sound assumption, but often it is not. I think that we should conclude that the industry was simply incorrect in its predictions about the significance of IPRs. In hindsight, it would appear that the lobbying effort was pure waste (not only did it not succeed, but it turns out that it was unnecessary in the first instance).

            Also, there have been published studies of major price drops when drugs go off-patent.

            Sure, and there have also been published studies of instances in which the price does not drop following patent expiration. Clearly, then, patents are the rate-limiting factor for some drug prices, and not for others.

            My rather humble contention here is not that IPRs will never deliver the goods for any drug price. Rather, my contention is that IPRs’ power to lower drug prices is so obviously limited (as an empirical matter), that it is more misleading than true to describe IPRs as “saving lives by making drugs and biosimilars available at a lower cost”

    3. 1.3

      Thalidomide, for one.

      Most of the Celgene patents were “use thalidomide for previously known use, but make sure you don’t give it to someone who is pregnant or likely to become pregnant using a computer database” or something similar. They were invalidated in IPR.

      Seeing as how one of those previously known uses is to prevent tumor growth, and older people are more susceptible to cancer, I’d say the AARP is at least partially correct.

      1. 1.3.1

        Where has the price of thalidomide come down? Certainly not in the U.S., where the price is ~$200/50 mg pill, and where there is no approved generic (despite the fact that it was first approved in 1957).

        Winning an IPR does not—by itself—lower prices. That is my point. Despite the widespread belief that patents are the chokepoint for drug prices, the reality is a lot more complicated. Near as I can tell, if thalidomide were to see a price decline following IPR success, it would be the first example of such a felicitous phenomenon. Here we are seven years on from the advent of IPRs, and I am not aware of a single drug that has seen a price decline plausibly as a result of an IPR.

        I am in favor of IPRs. I think that they are a good thing for the patent system overall. Still and all, if we were hoping that they would lower drug prices, we should acknowledge that they do not seem to be delivering the goods. We need to come at the problem from a different direction, because this approach is not actually achieving results.

        1. 1.3.1.1

          I do expect that generics may finally break into the market with the recent LOSS of Celgene’s ancillary patent protection of its ‘keep out’ (and federally mandated — which was a ‘convenient’ combination) distribution safety method patent.

          Greg “High Road I Use My Real Name” DeLassus is playing a little loose with the facts here.

        2. 1.3.1.2

          We need to come at the problem from a different direction, because this approach is not actually achieving results.

          Funny that — I have provided such a different approach (full openness on the profit mechanism in the Pharma system, including insurance scheme kickbacks and the like), and such was downplayed by the likes of Greg (and other Pharma folk, including Generics Pharma folk).

          Quite seems that shining a spotlight is NOT what Pharma actually wants.

        3. 1.3.1.3

          Good point. I thought that someone (Dr. Reddy’s Lab?) got a generic version approved, but I was mistaken.

        4. 1.3.1.4

          Re: “Despite the widespread belief that patents are the choke point for drug prices, the reality is a lot more complicated.” Indeed. Apparently including some strange FDA practices needing legislation. But the recent Congressional hearings have also produced effective arguments that part of that reality is drug pricing systems so Byzantine that it is very difficult to even determine the total or average patient cost.

          1. 1.3.1.4.1

            [R]ecent Congressional hearings have also produced effective arguments that part of that reality is drug pricing systems so Byzantine that it is very difficult to even determine the total or average patient cost.

            Correct! So much of the problem of high drug prices is a result of collusion between pharmacy benefit managers (PBMs) and drug sellers. As far as they are concerned, the lack of transparency is a feature, not a bug.

            Really, though, even transparency has its limits as a solution. It is probably fair to say that every little bit helps, so more transparency would probably be a fine thing. Come to that IPRs are also a fine thing. My only point is that we should be realistic about how much either of these ideas (separately or in combination) will achieve, and realistically speaking, that is very little.

            1. 1.3.1.4.1.1

              I note with no small sense of irony that the position advanced HERE by Greg stands in conflict with his replies to me (when he had so deigned to do so) previously.

              Maybe the path of sunlight NOT being disparaged shows hope for Greg yet…

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