Guest Post: Joinder and the One-Year Time Bar in Inter Partes Review

Guest post by Saurabh Vishnubhakat, Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering. Disclosures: Professor Vishnubhakat was formerly an advisor at the USPTO, but his arguments here should not be imputed to the USPTO or to any other organization. Professor Vishnubhakat was an author of amicus briefs by Professors of Patent and Administrative Law in Wi-Fi One v. Broadcom (in support of neither party) and in Thryv v. Click-to-Call Technologies (in support of the respondent), both of which cases are discussed below.

The March 18, 2020 precedential Federal Circuit opinion in Facebook v. Windy City has notable implications for the system of inter partes review proceedings before the USPTO Patent Trial and Appeal Board. The case was about how two important provisions of the IPR statute—the one-year time bar of § 315(b) and the Director’s discretion to permit joinder under § 315(c)—interact with each other. (As those who follow PTAB issues know, the one-year time bar is also currently before the Supreme Court in Thryv v. Click-to-Call Technologies, on whether PTAB determinations about the time bar are subject to judicial review.) The holding in Windy City is fairly straightforward. The broader implications deserve some elaboration.

The Panel Decision

The panel held that § 315(c) does not authorize same-party joinder, i.e., does not allow a petitioner who has filed an inter partes review petition to join its own, earlier inter partes review petition. The panel also held that § 315(c) does not authorize issue joinder, i.e., does not allow joinder that would introduce new issues material to patentability, such as new patent claims or new grounds for cancellation. (As to the merits of the PTAB’s final written decisions on claims from each of Windy City’s four patents, the panel affirmed that the PTAB’s findings of obviousness were supported by substantial evidence—except as to the patent claims that had been improperly joined through Facebook’s later, time-barred petitions.)

The Dispute’s Background and Timeline

The case began with an infringement suit in which Windy City asserted four patents against Facebook. Exactly one year after it had been served with Windy City’s complaint, Facebook timely sought inter partes review of some, but not all, claims across all four of Windy City’s asserted patents. Taken together, the four patents contained 830 claims, though it was not yet clear which claims were in suit. The PTAB instituted review as to nearly all of the patent claims that Facebook challenged in its petitions. By the time Windy City had clarified which particular patent claims it was asserting in its district court suit, the one-year bar of § 315(b) had passed.

Facebook still sought inter partes review on the remaining patent claims asserted against it, along with a motion under § 315(c) to join these IPRs to the earlier IPRs that the PTAB had already instituted. The PTAB instituted both petitions and allowed joinder.

June 2, 2015

Windy City sued Facebook in the Western District of North Carolina.

June 3, 2015

Windy City served its complaint upon Facebook.

June 3, 2016

Facebook timely filed four IPR petitions challenging some, but not all, claims across all four of Windy City’s patents.

December 12–15, 2016

The PTAB instituted review on nearly all of the patent claims that Facebook had challenged in its IPR petitions of June 2016.

October 19, 2016

Windy City identified the patent claims that it believed Facebook had infringed.

January 12–17, 2017

Facebook filed two more IPR petitions challenging the remaining Windy City patent claims that were asserted against it—and sought joinder of these IPRs to its earlier, already-instituted IPRs.

July 31–August 1, 2017

The PTAB instituted review on both of Facebook’s additional IPR petitions and allowed them to be joined to Facebook’s earlier IPRs.

The Court’s Statutory Analysis

On the question of same-party joinder, the panel explained that the Director’s discretion under § 315(c) is only to “join as a party to that inter partes review any person who” meets certain conditions. Slip op. at 14 (emphasis added). This language excludes the joinder of a petitioner who is already a party to the existing IPR, as Facebook was in this case. The court analogized to the Federal Rules of Civil Procedure, under which “joinder of a person as a party is uniformly about adding someone that is not already a party.” Id. at 16 (emphasis in original). It also noted that joinder under § 315(c) pertains to persons, not proceedings, and that combining one IPR proceeding with another, earlier IPR proceeding was best understood in terms of a different statutory provision: consolidation under § 315(d). Id. at 14–15.

Importantly, this reading of § 315(c) does not depend on whether the later-filed petition or petitions were time-barred under § 315(b). The USPTO’s contrary view had been expressed a year ago by Precedential Opinion Panel’s review of Proppant Express Investments v. Oren Technologies. The agency’s conclusion was that same-party joinder is permissible under § 315(c)—indeed, is permissible even if the later-filed petition may otherwise be time-barred under § 315(b).

Similarly on the question of issue joinder, the panel started from the same premise that the Director’s discretion under § 315(c) is only to join a person as a party to an earlier IPR who meets certain conditions. Among these conditions is the limitation that such a joinder must be to “to an already-instituted IPR.” Slip op. at 17 (emphasis in original). This point matters because the already-instituted IPR “is governed by its own
petition and is confined to the claims and grounds challenged in that petition.” Id. at 17–18 (citing SAS Institute v. Iancu, especially that “the petitioner’s petition, not the Director’s discretion, is supposed to guide the life of the litigation”). That confinement, the court concluded, does not allow “the joined party to bring new issues from the newer proceeding into the existing proceeding.” Id. at 18.

As with same-party joinder, the court’s view against issue joinder did not depend on whether the later-raised issues were time-barred under § 315(b). And here, too, the court explained that allowing a new petition with new issues to be combined with an already-instituted petition with its own issues was simply not the purview of party joinder under § 315(c). Rather, it was the stuff of consolidation under § 315(d). Id. at 18–19.

The Court’s Deference Analysis

On both of these statutory questions, the panel concluded that the plain language of § 315(c) is unambiguous. As a result, the USPTO’s contrary view was not entitled to deference under the familiar two-step framework of Chevron v. NRDC. Id. at 23–24. The agency lost at step one.

The entire panel also went further, however, in a separate concurring opinion that offered additional views about what deference, if any, might have been owed to the USPTO as a result of its Precedential Opinion Panel’s conclusion in Proppant. The panel in its concurring opinion concluded that, even if § 315(c) were deemed ambiguous in the contexts at issue here—same-party joinder and issue joinder—the agency’s views as expressed through the Precedential Opinion Panel would still fail at Chevron step two: the most reasonable reading of § 315(c) would remain the one adopted in the majority opinion. Slip op. at 2 (Prost, C.J., conc.).

This position of non-deference and the precedential interpretations of joinder and the one-year bar together represent a major milestone in the PTAB’s adjudicatory power as well as in Federal Circuit oversight of the USPTO. It is these two very practical concerns, which are at the heart of the AIA’s system of administrative patent revocation, where the larger significance of Windy City really lies.

Implications for the PTAB and the USPTO

The District Courts vs. the Agency

That first concern of adjudicatory power is, to be more precise, about the separation of the PTAB’s power from that of the federal courts—indeed, about the AIA’s intended plan that the PTAB should act as a substitute for the courts. The one-year time bar is an especially important safeguard of that substitutionary choice, which the AIA requires petitioners to make. As I have previously discussed on this blog, the boundary-enforcing function of the one-year bar makes § 315(b) a robust statutory limit on the Director’s discretion in institution-related matters.

For purposes of judicial review, § 315(b)’s work as a statutory limit means that the en banc Federal Circuit correctly decided Wi-Fi One v. Broadcom, holding that the nonappealability of institution decisions under § 314(d) does not extend to PTAB determinations about the one-year time bar. It also suggests that the Supreme Court in Thryv v. Click-to-Call, argued last December, should affirm that § 315(b) determinations are judicially reviewable.

The problem of joinder, however, raises further questions both on its own and in combination with the one-year bar. On its own, PTAB joinder offers a mechanism for socially beneficial collective action in challenging patents whose validity may be in question. The problem of resolving patent validity through litigation in the federal courts is not limited to cost, delay, and potential inaccuracy due to the relative technical inexpertise of most judges and juries. That problem also includes the high constitutional barrier of access to federal court—in the form of Article III standing—that allows only certain parties with certain kinds of incentives even to enter the fray. PTAB proceedings under the AIA have no such standing requirement and so reduce this barrier to entry considerably.

Moreover, the Blonder-Tongue doctrine means that an unsuccessful patent validity challenge in federal court estops only the challenger, whereas a successful validity challenge invalidates the patent as against the world. Thus, federal-courts litigants with a concrete enough stake in challenging a patent generally bear all the costs of losing but must share with the world—including their competitors—the benefits of winning, creating a collective action problem. By contrast, the relatively lower costs of entering and conducting PTAB review and the ability to join inter partes review petitions as co-challengers reduce this collective action problem.

Empirical research on the PTAB offers good evidence of this intuition. For example, inter partes review (unlike covered business method review) allows not only defensive petitions by parties sued in district court for infringement but also entirely preemptive petitions by those who have yet to be sued on the patent in question. Thus, when so-called “standard” petitioners who act defensively file IPR petitions, they may subsequently be joined by “nonstandard” petitioners who are interested in striking preemptively. And across most major fields of technology, the share of standard IPR petitions (in which at least one petitioner was previously sued on the same patent) is greater than the share of standard IPR petitioners (who have themselves previously been sued on the same patent). In fact, this disparity is quite high for certainly technology categories, such as Drugs and Medical (48.5% vs. 70.8%) and Mechanical (53.1% vs. 70.2%).

What this disparity reveals is that petitioners who are not prior district-court defendants tend to use § 315(c) to join IPR petitions that have been filed by prior defendants.

Source: Saurabh Vishnubhakat, Arti K. Rai & Jay P. Kesan, Strategic Decision Making in Dual PTAB and District Court Proceedings, 31 Berkeley Tech. L.J. 45 (2016) [SSRN].

Still, though joinder under § 315(c) offers benefits for socially desirable collective action, it is easy to see how it can conflict with the overarching boundary between district courts and the PTAB, the very boundary that the one-year time bar of § 315(b) exists to enforce. If parties can evade the one-year deadline by joining already-instituted petitions, whether their own or those of others, then the substitutionary function of PTAB review is undermined, potentially significantly. But if patent owners can “run out the clock” in district court before identifying their patent claims in suit—as Facebook cautioned in this case, slip op. at 21—then petitioners may not be able to make fully meaningful use of inter partes review.

Given these competing policy choices, the practical question becomes: who should decide the contours of the PTAB-district court boundary, the USPTO or the Federal Circuit? By construing the statute for itself and giving no deference to the USPTO’s interpretation, the Federal Circuit has sent a strong signal about the degree to which the USPTO still does not enjoy full policymaking authority in the patent system.

The Federal Circuit vs. the Agency

That same strong signal from the Federal Circuit also pervades the second major concern, regarding appellate oversight of the USPTO. The panel opinion’s direct holding about § 315(c) sidesteps whether the substance of the Precedential Opinion Panel’s position would merit Chevron deference, as the statute here was deemed unambiguous. The court’s dicta in its separate concurring opinion, however, offers a stark picture of how the agency’s future positions might fare in debates over judicial deference.

In that picture, the role of the Precedential Opinion Panel is of central importance. Created in September 2018 to streamline the process by which PTAB opinions could be designated precedential, the POP marked a departure from the USPTO’s preexisting Standard Operating Procedure, which had required discussion and a majority vote from the entire PTAB membership followed by approval from the Director. That process had proven relatively unwieldy for generating case law that could effectively bind PTAB panels, and the resulting lack of precedential force had hamstrung the USPTO’s desire for deference.

For example, the Federal Circuit had previously “decline[d] to give Chevron deference to these nonprecedential Board decisions, which do not even bind other panels of the Board”—observing further that, “[i]ndeed, this court has not yet opined on whether deference is warranted for precedential Board decisions.” Power Integrations v. Semiconductor Components, 926 F.3d 1306, 1318 (Fed. Cir. 2019). And even in the present case, the Windy City concurrence still noted that “precedential value alone does not add up to Chevron entitlement.” Slip op. at 13 (Prost, C.J., conc.).

What matters more for Precedential Opinion Panel review, the court explained, is whether Congress has delegated to the USPTO the authority to speak with the force of law and whether the USPTO’s relevant statutory interpretation represents an exercise of that authority. Id. at 6 (citing United States v. Mead Corp., 533 U.S. 218, 226–27 (2001)). In the court’s view, the POP process does not rise to that level. It is true that § 316 confers rulemaking authority to govern the conduct of inter partes review proceedings. However, that authority is limited to prescribing regulations and does not include other means for adopting legal standards and procedures. Id. at 7. In this regard, POP review “is not equivalent in form or substance to traditional notice-and-comment rulemaking” and so does not rise to Chevron-worthy agency action. Id. at 12–13.

It is also true that §§ 3(b) and 3(c) delegate adjudicatory authority over inter partes review proceedings and that, according to the Supreme Court in Mead itself, the power to adjudicate is as quintessential a form of lawmaking authority as rulemaking. Id. at 8. However, that authority belongs in this case to the PTAB itself whereas the rulemaking authority of § 316 is delegated to the Director. The court observed that most modern Congressional delegations of authority to administrative agencies vest “a single delegee with both rulemaking and adjudicatory powers”—that delegee being the agency head. Id. at 9–10. The AIA, by contrast, divided the powers of rulemaking and adjudication between the Director and the PTAB. In this sort of “bilateral structure,” the two forms of lawmaking cannot be exercised interchangeably in order to achieve Chevron deference. Id. at 10 (citing Martin v. OSHRC, 499 U.S. 144, 154–55 (1991)).

Notably, the USPTO has been here before. As the Federal Circuit held in its complex and fractured en banc decision in Aqua Products v. Matal (Fed. Cir. 2017), the USPTO was not entitled to Chevron deference for its interpretation of § 316(e), which places “the burden of proving a proposition of unpatentability” upon the petitioner. The USPTO’s view at the time was that, for patent claim amendments offered during inter partes review, the patent owner bears the burden of proving that the amended claims are patentable—not the petitioner to prove that the amended claims are unpatentable. The en banc court concluded by a 7–4 majority that the USPTO’s approach did not merit Chevron deference, but the split in reasoning did much to shape the outcome.

Only five of the eleven judges had concluded that § 316(e) was unambiguous on the relevant question; the other six concluded that the statute was ambiguous. But of those latter six judges, only four concluded that Chevron deference was appropriate for the USPTO’s interpretation of § 316(e). The other two judges held that the agency had not engaged in APA-compliant rulemaking and so was not entitled to deference. Thus, the USPTO’s engagement in APA-compliant rulemaking could potentially have turned a 7–4 defeat into a 6–5 victory on the question of Chevron deference.

Source: Saurabh Vishnubhakat, The Mixed Case for a PTAB Off-Ramp, 18 Chi.-Kent J. Intell. Prop. 101 (2019) [SSRN].

Conclusion

The concurring opinion in Windy City seems to offer much the same lesson. It is not enough simply that the AIA contained delegations of lawmaking authority and that the USPTO has attempted to speak with the force of law. The institutional details of who in the USPTO received which powers—and how specifically those powers were exercised to generate the agency’s views—matters a great deal. Following an initial period of judicial latitude toward broad USPTO assertions of authority and discretion, the Federal Circuit’s more recent jurisprudence has reflected some retrenchment, such as its en banc reversal in Wi-Fi One. The same is true of the Supreme Court, which after a broadly drawn affirmation of agency discretion in Cuozzo v. Lee, took a considerably more skeptical view two years later in SAS Institute v. Iancu. This retrenchment, if it continues, will demand an increasingly formal, increasingly specific exercise of the authority that the USPTO believes it is exercising.

77 thoughts on “Guest Post: Joinder and the One-Year Time Bar in Inter Partes Review

  1. 7

    OT, but does this news report contain another misleading suggestion that patents were interfering with coronavirus treatment?
    “Israel Approves Viral Generic Treatment Despite AbbVie Patents – On Thursday, March 19, Israel’s Justice Ministry approved the use of a generic version of AbbVie’s Kaletra HIV treatment, which could be used to treat patients infected with coronavirus, despite the fact that AbbVie’s Israeli patents don’t expire until 2024.”

    1. 7.1

      I did not make that jump — I thought it was clear that this was a tangent to the COVID-19 issue (yes, COVID-19 was involved, but this was more to combat the other issue that presented a complication).

      The fact that the complication has a heightened immediacy is still support for the Sovereign decision to step in (as most all Sovereigns may).

    2. 7.2

      If it actually works then just throw them a few billy and let them be happy.

    3. 7.3

      Paul, the issue is that since reports first surfaced that Kaletra MIGHT be useful against COVID-19, demand has jumped well beyond what Abbvie can supply. That’s not just in Israel, that’s everywhere. And it’s a testament to the fact that the Israeli legal system has teeth that the state played by the rules here, issued the order per the statute, and limited the scope of the order allowing importation of generic Kaletra for treatment of coronavirus only. In fact, the reason this got press at all is that the lawyers in the various ministries who researched and drafted the order understood that in the 50+ years the patent statute is in place, this is the first time the state has exercised its right to authorize infringement (which would be akin, I suppose, to the USA exercising march-in rights under Bayh-Dole, which IIRC hasn’t yet happened). And Abbvie will be entitled to compensation. I blogged about this here: link to iliplaw.com and here: link to iliplaw.com.

  2. 6

    The problem with the PTAB is that APJs are amateurs pretending to be judges. They are very weak on technical experience and even weaker on the law. They are a little better than the average college graduate at wordsmithing. So their opinions are riddled with phrases like “we agree with petitioner” and “we decline to apply discretion” and “we find it would have been obvious”…

    Along with nonsense like:
    • For these reasons, the phrase “a connecting force that is not less than a weight of one of the containers when substantially filled with water” as applied to an expandable container is unclear and indefinite.

    • we determine that Petitioner has provided adequate articulated reasoning with rational underpinning to support a legal conclusion of obviousness as to claims 1–4, 8, and 14 based on the combined teachings of Cooper (a garden sprinkler), Saggio (a balloon with an internal flap), and Lee (a gastrointestinal dietary device).

    They are not qualified to make determinations that are SUBJECTIVE or related to EQUITY. Due Process requires that they follow strict rules, rules promulgated through proper notice-and-comment rulemaking.

    We should abandon this misguided scheme to recreate a judiciary inside of the USPTO.

    Instead, the PTO should pass some very clear and objective rules that can be followed by any bureaucrat. Joinder, timing, multiple petitions, previously considered grounds, scheduling orders and determinations by real courts, efficiency, effect on economy, and every other criteria should be promulgated in clear rules.

    Informal guidance, precedential opinions, and subjective determinations have no place in the Executive Branch. And the USPTO for sure should not be undermining the integrity and reliability of patents in this manner.

    If they truly do issue a patent to the wrong inventor, then they should correct that under the provisions of the AIA. But do-overs and usurping the judicial branch and short-circuiting due process must end.

    Give us clear rules and expectations so inventor can get back to work.

    1. 6.1

      But how is it you have none of those complaints about APJ decisions re lay jurors, to which your complaints apply in spades – having no technical or legal education or patent law experience whatsoever yet dealing with more difficult invalidity issues AND reading claims for infringement?

      1. 6.1.1

        That’s a fair question, Paul, and one answer may come from the realization that one carries an institutional bias AGAINST patent holders, while the other — like ALL jury situations — is neutral and exposed to BOTH sides of advocacy (and then weighs that on their own, with no “policy” stake in the outcomes.

        When viewed in this manner, the abject institutional bias may be seen as even more detrimental to a true sense of impartial justice, far surpassing even Josh’s original point of technical/legal capabilities.

        1. 6.1.1.1

          An IPR “institutional bias” argument is at least not hypocritical. But given the high percentage of Fed. Cir. reversals of jury decisions even on a high “no reasonable juror” test, why cannot one argue that there is an “institutional bias” there also?

          1. 6.1.1.1.1

            Because the jury is a neutral third party to which both sides advocate to.

            Not so at the PTAB (even though it may be argued — under the LicensOR/EE arrangement — that the Patent Office should be defending the patent owner and not as is, looking to revoke.

          2. 6.1.1.1.2

            A Fed. Cir. “institutional bias” ?

            Richard Posner, while sitting with the Federal Circuit, was famously skeptical of the work they were doing. Long before, he had shown how specialty courts tend to (as in, always) inflate the importance of whatever the subject matter that is given them in their jurisdiction. Not coincidentally, SCOTUS is skeptical of the Fed. Cir.’s patent work, too.

            1. 6.1.1.1.2.1

              Not coincidentally, everyone should be skeptical of SCOTUS’s patent work.

              1. 6.1.1.1.2.1.1

                “Not coincidentally, everyone should be skeptical of SCOTUS’s patent work.”

                Music legend Victor Olaiya, who created Nigeria’s highlife rhythms and influenced a generation of musicians including Fela Anikulapo-Kuti, was never skeptical of SCOTUS’ patent work. Can you explain to his family why Diamond v. Chakrabarty was wrong?

                1. 1) no idea why you would think that person (and that person’s trust) has anything to do with anything.

                  2) I owe his family no explanation of anything, much less an explanation of:

                  3) you insert a false position in your question with the assertion (for me) that I would think of any ONE case from the Supreme Court to be indicative of my position of “everyone being skeptical of SCOTUS’s patent work.

                  Your game is sunk even as it attempts to leave the harbor.

                  What is your line of work that you think such shoddy rhetorical games have any chance of impressing anyone?

                2. You were the one who said “everyone should be skeptical of SCOTUS’s patent work.” I found one person who would not care one way or another. In point set topology, it’s known as the bare denial.

                  What a maroon.

                3. was never skeptical of SCOTUS’ patent work.
                  Is not the same as:
                  would not care one way or another

                  Who taught you how to argue?

                  What is your line of work that makes you think that you are not transparent in laying out bogus questions?

                  In point set topology, it’s known as the bare denial.

                  Why would you try to conflate topology with ‘denial?’ Did you stumble across the word and thought that it sounded cool?

                  link to mathworld.wolfram.com

                4. Snowflake, you will not learn much about point set topology from Wikipedia or lazy Google searches. When someone says “nobody goes to the grocery store on a Sunday,” in point set topology a bare denial is “my auntie went to the grocery store last Sunday.” [i know, the point sets can be confusing because they are based on axioms concerning the real axis] [what a maroon]

                5. Because you seem to be so interested, here is the first axiom. For every point P on the real axis, there is a point to the right of P, P+1, and a point to the left of P, P-1.

                6. It’s not the math that is off with your odd attempt at making yourself feel smart.

                  What’s off is how you think that you can apply it to cover your error in posting about ‘ Music legend Victor Olaiya.’

                7. Tell me, my shifting historical pseudonymed friend, was Music legend Victor Olaiya, who created Nigeria’s highlife rhythms and influenced a generation of musicians including Fela Anikulapo-Kuti, ever skeptical of Fed. Cir.s’ patent work?

                  You are the one that introduced this person after all and seem to want to create a certain impression.

                  (You are creating an impression alright — just not the one that you liked intended to create)

                8. … and what it really funny is that you seem to want to base your high falutin’ attack on my quip of “should be skeptical” as if I had instead demanded that everyone “WAS skeptical.”

                  You really do have an issue with hyper-sensitivity to myself and the lack of control of that urge of yours to find some (phantom) ‘gotcha’ in my posts…

                  Is that your current line of work?

                9. Sorry I made you feel the need to type so many words, Snowflake. You were the one who pretended to know something about point set topology after the lazy Google search.

                10. made you feel the need to type so many words,

                  You still don’t get it?

                  You “made” nothing.
                  These are hardly many words.
                  I enjoy making fun of you with my words.

                  You were the one who pretended to know something about point set topology after the lazy Google search.

                  Not at all – I simply showed what a pretender that you are. Notice how you have not shown how your feigned intelligence is actually on point here (you began with a ‘bad’ attempt at a ‘gotcha,’ and that quickly derailed).

                  Your turn.

                11. Not at all, thanks for asking.

                  (You missed the part in which I stated that I am enjoying your follies)

                12. Really? You said you’re no longer a paid shill but you said it in a pseudo-cagey way so maybe you still are.

                13. Switching to the game of misrepresentation and misattribution (with a dose of ‘so when did you stop beating your mother?’)

                  Y
                  A
                  W
                  N

                14. My current line of work? At present, I seem to be a tutor for the slow. What is your availability this week?

                15. Hmm, as usual, you’ve got things backwards.

                  I figured you liked being taken to the woodshed because of that self-flagellation thing you’ve got going on.

                  That would also explain YOUR obsess10n with me (whereas I engage in discussions across the board, you have a 98+% target on being directed to me.

                  It’s a good thing that I am amused by your folly, otherwise, a restraining order would be in the cards for you.

                16. I think we understand what you’re trying to say. Tuesday afternoon is not good for us. Thursday 10:15 AM?

                17. Talking of yourself in the plural and spouting gibberish — this is not a good game for you.

                18. Another baseless accusation from you (and another attempt at the Accuse Others Of That Which You Do game).

                  Maybe one of these days you will actually offer something of substance….

                  Most likely not, as your obsess10n with trying to find some ‘gotcha’ with my posts account for 98+% of ALL of your posts.

                  You do realize this, eh?

                19. Apologies. I mistook you for the anon that types all that gobbledygook. You really should look in to the other guy that has been sullying your name with all that gobbledygook. [extra credit if he types a number in his compulsive response] [and also for the “Accuse Others,” “game,” and vague smiley face tells when somebody questions whatever it is he is selling] [what a maroon]

                20. I mistook you for the anon that types all that gobbledygook

                  You have a different mistake.

                  and vague smiley face

                  No such thing – clearly, I did not create the code for these emoticons, and they are CLEARLY and unmistakably labeled in their deployment.

                  Oh wait, this is YOU for whom the ‘lack of understanding’ portion of the definition of ‘vague’ is what you rely on. But this is nothing more than a variant of the Accuse Others meme that you play with.

                  You really are not good at this. It’s amazing how much of an obsess10n you have with me, and yet, how you have not once played a game that has gotten the better of me.

                21. … and there again is your self-flagellating proclivity with ‘vague’ (per your provided definition and the only lack of understanding being within your mind).

                  Malcolm had his Derp dance, and you have your Ding dance (what a pair).

                  But keep pushing your obsess10n over me with yet another of your 98+% posts directed to me. While no one else may ever pay you any attention, you have my put-downs to ‘validate’ that you exist.

                22. Your new game is not very clever, nor is it very amusing.

                  If anything, it just makes you look even more the putz.

                23. “your definition” (?)

                  Depends on what your definition of “your” is. You tried to sell that I used to have another name and provided to you something you call “Gifs.” So,

                24. “You started on definition”

                  No, you did. You think no one would notice, Snowflake? And nobody is fooled about you making stuff up.

                25. You are now employing your “Dingie” to the use of ‘Shifty’….?

                  That’s a bit bizarre, since you long ago have shown that you use a shifting collection of historical pseudonyms, owning the very thing the label fits.

                  Your game of merely (and mindlessly) replying to any post with “Ding Ding Ding” is busted.

                  Don’t you have anything that rises above a juvenile response level?

                  Or are you content with flogging yourself with busted gamery?

                26. Ding Ding Ding !! “game” !!!!

                  Was this “shifting” before or after I went by another name and provided to you something you call “Gifs?” BTW, if Ding Ding Ding were part of a “game” the game would be called Name That Tell. And there would be some lovely parting gifts for the contestants.

                27. “Name that Tell” is not correct. You don’t seem to understand what a “Tell” is.

                  Try again.

                28. Was this “shifting” before or after

                  Now you are just being obtuse. I have clearly explained how that nickname for you came about (think: Morse/Lincoln/Pain et. al).

      2. 6.1.2

        > But how is it you have none of those complaints about APJ
        > decisions re lay jurors, to which your complaints apply in spades –
        > having no technical or legal education or patent law experience
        > whatsoever yet dealing with more difficult invalidity issues AND
        > reading claims for infringement?

        Because the complaints you see on this blog’s comments about the PTAB and APJs do not stem from sincere concern with the fairness of the underlying process. Most of the complainers here would be more than happy to transform the PTAB into the most unfair kangaroo court imaginable, if it turned out pro-patent decisions in their favor. The comments from prosecutors here mostly reflect bare self-interest disguised as feigned concerns over institutional integrity.

        Patent owners will forever bemoan that the PTAB post-grant system is going to find a lot of patents invalid, simply put, because a lot of the patents that are challenged are, in fact, invalid. Deal with it. The PTAB reviews only an infinitesimally tiny fraction of enforceable patents each year (less than .02% by my calculation). The costs and effort involved with that the system have created an organic selection process in which challenges tend to be mounted against the broadest (and concomitantly weakest vis-a-vis prior art) patents. Given this type of selection process, it shouldn’t be surprising that the PTAB invalidates a decent percentage of the patents it reviews.

        1. 6.1.2.1

          ?

        2. 6.1.2.2

          Lode Runner has unloaded both barrels here with:
          “..the complaints you see on this blog’s comments about the PTAB and APJs do not stem from sincere concern with the fairness of the underlying process. Most of the complainers here would be more than happy to transform the PTAB into the most unfair kangaroo court imaginable, if it turned out pro-patent decisions in their favor. The comments from prosecutors here mostly reflect bare self-interest disguised as feigned concerns over institutional integrity.”
          [It would be even more entertaining to observe the apoplexy that would result from also posting that on Genes’s blog.]

          1. 6.1.2.2.1

            Unloading both barrels in an unsubstantiated rant attributing false beliefs, and then turning around and ignoring any sense of due process in his own comments…

            NOT the thing to cheer on, Paul.

            (that YOU then double down and want to attack another blog is cringeworthy on the order of Malcolm cringeworthiness)

        3. 6.1.2.3

          I am not sure if you are referring to me or other commentators. I do indeed “have a sincere concern with the fairness of the underlying process” at the PTAB. I have sat in dozens of hearings and read hundreds of decisions. The APJs rarely understand or care what was invented, insist on construing the claims broader than intended by the examiner and inventor, and frequently rely on subjective hindsight in decisions.

          It is impossible to predict whether any particular patent will survive an IPR, no matter how carefully it was examined and reexamined.

          The PTAB today “is the most unfair Kangaroo court imaginable”, there is no need to transform it.

          I do agree with you that a lot of the patents are indeed invalid. Of the 2,200 patents invalidated by the PTAB I estimate about half are actually invalid under a preponderance of evidence standard. The other half are not actually invalid.

  3. 5

    POP goes the . . .

  4. 4

    Excellent write up of Facebook v. Windy City. This joinder issue, like claim substitutions and this time bar, is another of the initial complaints or confusions about IPR practice that is gradually being fixed by the Fed. Cir. and/or the PTAB itself.
    Also, I do not think that arguments for Chevron deference [which is not binding anyway] should have have been taken seriously anyway for mere PTAB decisions on statutory interpretation, or to mere PTO Guidelines on interpretations of Supreme Court 101 decisions, before the Fed. Cir. delt with them. [But Precedential Opinion Panel [POP] decisions still do have to be respected in other PTAB decisions until they get reversed by the Fed. Cir., as here.]
    My only caveat is that some of the IPR statistical references could have been clearer and not potentially confusing. E.g., only
    a relatively small percentage of all IPRs have ever been filed OR joined by parties that have NOT been sued or at least threatened by the patent owner on that or a closely related patent. Also, that the number of plural IPRs filed by the same party against the same patent is small, and was used in many cases to overcome IPR page limits where the patent had a large number of asserted claims. [A practice now ended by this decision.]

    1. 4.1

      It is a pretty good write up overall. One correction: the separate opinion is not, as the Professor says, authored by Chief Judge Prost and joined by the other two judges on the panel. All three panel members claim authorship.

  5. 3

    Additionally, I believe that David Boundy has spoken directly to the Office attempting too much power in its desire to form patent law; and the following portion of the article may well be better with an additional focus on Boundy’s writings:

    What matters more for Precedential Opinion Panel review, the court explained, is whether Congress has delegated to the USPTO the authority to speak with the force of law and whether the USPTO’s relevant statutory interpretation represents an exercise of that authority. Id. at 6 (citing United States v. Mead Corp., 533 U.S. 218, 226–27 (2001)). In the court’s view, the POP process does not rise to that level.

  6. 2

    It says a lot (perhaps more than intended) when one views the protection of Article III standing as a cost and as an impediment:

    That problem also includes the high constitutional barrier of access to federal court—in the form of Article III standing—that allows only certain parties with certain kinds of incentives even to enter the fray. PTAB proceedings under the AIA have no such standing requirement and so reduce this barrier to entry considerably.

    In a slight tangent, I am reminded of the nose of the camel inside the tent with the current Congressional setup of the TWO PART post grant review mechanism, with the first part in the ‘open’ no Article III standing required Executive Agency forum, but the second part in the hard floor Article III standing required Court of Appeals Federal Circuit.

    1. 2.1

      Re the quoted text in 2 above, as noted in 4 above only
      a relatively small percentage of all IPRs have ever been filed OR joined by parties that have NOT been sued or at least threatened by the patent owner on that or a closely related patent. Corporate IP departments do not normally waste hundreds of thousands of dollars attacking patents they have not been threatened with, or is blocking a new product introduction. I have heard of a couple of IPRs filed by a company against the patents of companies suing them on other patents to gain a settlement advantage, but even that is not effective without good patent or publication prior art.
      Only threatening to do so without may be more effective.

      1. 2.1.1

        ?

        Not sure why you are attempting to shunt my point into your distinct (other) point at 4. These are disparate points.

        1. 2.1.1.1

          I am simply disputing the author’s apparent contention that a big difference between IPRs and Article III courts is the absence of any “standing” requirement. Its not – most IPR petitioners DO have standing. [And you and others have noted other more important differences.]
          Of course the biggest difference is that an IPR is vastly cheaper, faster and more effective for proving invalidity than an Article III court. In article III suits most defendants prefer to pay for settlements to avoid discovery and other massive litigation expenses, and thus never even get a hearing on invalidity defenses.

          1. 2.1.1.1.1

            Structurally, it IS a big difference.

            If you are attempting to argue otherwise, you are arguing against a factual matter (iow, you are attempting an argument that you cannot win).

            That being said, you may be making a point that as applied, the entities engaging in the multiple fora AIA mechanism generally DO have standing, so Congress could have chosen differently and constructed the mechanism such that standing would have been required throughout, and the effective use of the mechanism would not have been compromised.

            But we both know that THAT is just not what Congress did.

            In fact, the word “most” is not enough as but a single example shows that the factual, structural difference IS real.

            Does what Congress did raise issues?

            Certainly.

            Does your ‘argument’ make those issues go away?

            Certainly not.

            1. 2.1.1.1.1.1

              Re: “Structurally, it IS a big difference.” Where did that straw man come from? It was not in dispute by anyone.

              1. 2.1.1.1.1.1.1

                Lol — you take my initial point, try to co-opt it, get rebuked and then want to turn my initial point into some type of strawman?

                That’s ballsy.

          2. 2.1.1.1.2

            If most IP petitioners did not have “standing” how could such large numbers of them appeal to the Fed. Cir. from IPR decisions? Are there even more that two of them that that the Fed. Cir. has refused for lack of standing?

            1. 2.1.1.1.2.1

              The point is NOT about numbers in any type of ‘as applied’ basis, Paul, the point is how the structure of the law IS as written.

  7. 1

    Not mentioned, but would not the degree of latitude undergirding the Oil States case (patents being a Public Franchise, easily susceptible to ‘recapture’ in the Executive Branch’s adjudicatory machine) have an impact on the relative ‘value’ (or power) of the PTAB, especially the POP of that PTAB (which is the entity that appears to suffer the most from the immediate decision)…?

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