Accused patent infringers are fighting to overturn NHK-Fintiv rules that permit the PTAB to deny IPR institution in favor of pending litigation between the parties.
In addition to pending SCOTUS petitions; see a recent letter to the Commerce Sec. https://t.co/DszZkr2RG9 pic.twitter.com/pqOgtrtn73
— Dennis Crouch (@patentlyo) February 15, 2022
Since the APJs are overloaded with IPRs, instead of unfairly denying some people the right to institute IPRs the sensible thing to do is to eliminate all IPRs.
There is an island in the North Atlantic where men have been looking for treasure for more than 200 years.
It’s Oak Island.
The Fellowship of the Dig included a team of archeologists. When the archeologists found artifacts that they identified as belonging to the Mi’kmaq people (First Nation native Americans who traditionally inhabited Nova Scotia between 500 and 2500 years ago) Nova Scotia’s Dept. of Communities, Culture, and Heritage (CCH) and the Acadia First Nation council ordered the team to stop digging in that area. As the archeologists found more and more Mi’kmaq artifacts more and more of the island became off-limits.
Finally, Rick, Marty, and Craig did the only thing they could to save the project. They sent all of the archeologists home except for one who is limited to observing the activities at the Money Pit.
When they finally find the Treasure Vault at the bottom of the Money Pit they will find that all of the gold and silver is gone (spent), and the only thing at the bottom of the Money Pit is old patents.
From the letter:
“NHK-Fintiv practice has written vital protections intended by the America Invents Act out of the law without public notice or comment, and has caused—and continues to cause—immediate and irreparable harm to American innovators and manufacturers.”
Oh, really? Then the necessary facts, examples, evidence, and proof of such an allegation should be everywhere.
Obvious to all. Deniable by none.
Yet . . . the signatories offer . . . nothing in support of their allegation.
Not one word.
And coming from chief legal officers?
Shameful.
If they think they’re going to be able to pull the wool over the eyes of Ms. Raimondo, they’re sadly mistaken.
She’s far smarter, far wiser, then they give her credit for.
That remains to be seen.
Grow up, Paul.
I can understand why the individual defendant whose IPR is denied cares about Fintiv, but I am less clear why any of the rest of us should care. There are a finite number of APJs, and a finite number of hours in a day. That means, by logical extension, that there are a finite number of APJ work hours.
So long as the APJs are not just goofing off (an unlikely possibility, given the production quotas and drive for counts), there exists, therefore, a margin at which time spent on Case A is necessarily time not spent on Case B. If they deny institution on Case A because of Fintiv, that just frees up more time for Case B (or Case C, etc).
Is there any reason to believe that the cases that they do institute under the Fintiv rule are (on average) less important than the ones that they deny under Fintiv? Absent such a showing (and I certainly have not seen anyone attempt such a showing), why should society as a whole care about Fintiv?
Greg, you have a point in that [like many patent issues] these PTAB discretionary denials of IPRs under Fintiv “rules,” being a relatively small proportion of all IPRs, they are likely affecting less than a billion dollars of litigation. But the fact that so many of them have been in the now huge pending patent lawsuits docket of the one judge in one district of WDTX, and are felt to be directly contrary to the intent of Congress to settle patent & publication prior art issues by a much cheaper and faster PTO re-examination system, is a major sore point.
[T]he fact that so many of [the discretionary Fintiv denials] have been in the now huge pending patent lawsuits docket of the one judge in one district of WDTX, and are felt to be directly contrary to the intent of Congress to settle patent & publication prior art issues by a much cheaper and faster PTO re-examination system, is a major sore point.
Two brief responses:
(1) The bit about “directly contrary to the intent of Congress” is question-begging. Did Congress intend for IPRs to be instituted regardless of the trial schedule of the corresponding district court? If so, where did Congress express that intent? I do not see it.
(2) The complaint that most of these Fintiv denials relate to one or a few specific district court dockets is fairly well baked into the nature of Fintiv. The rule is that the PTAB will exercise its discretion to deny where the district court purports to be able to take up the matter as promptly or more promptly than could the PTAB. By definition, then, these denials will cluster in the one or two district courts whose dockets (1) contain a lot of patent trials and (2) move them (or at least schedule them) aggressively. To complain about this concentration of trials is to complain about Fintiv, because the rule is fairly constructed to achieve this outcome. However, as I said above, I do not see why the rest of us should care about Fintiv, and therefore I do not see why the rest of us should care about the concentration of denials that is the logical result of Fintiv.
If you could show me that the WDTX is being loaded up with a set of trials about which society as a whole ought to care more than it cares about the mine run of IPRs, then I would have to reassess my thinking about Fintiv. Honestly, though, I have not seen anyone make such a showing, and I do not even really know how one might fairly establish such a proposition.
However, as I said above, I do not see why the rest of us should care about Fintiv
So Congress writes a law providing for a mechanism for a complainant to access a procedure ostensibly faster & cheaper than district court litigation. But if you happen to be a complainant in certain districts at certain times, no soup for you.
No due process issues there, clearly. And yes there are a finite number of APJs. There are also a finite number of patents.
Congress didn’t mention that you can’t get an IPR instituted when the office gets busy.
It’s all perfectly clear.
So Congress writes a law providing for a mechanism for a complainant to access a procedure ostensibly faster & cheaper than district court litigation. But if you happen to be a complainant in certain districts at certain times, no soup for you.
Exactly. If you happen to be involved in a suit in one of a handful of districts that move faster than the PTAB, then the original logic of IPRs (to provide a faster forum) no longer applies. As such, your IPR will not be instituted. Seems fair and logical to me.
Congress didn’t mention that you can’t get an IPR instituted when the office gets busy.
Congress set a one-year time limit on IPRs. Obviously, not all issues are so simply and straightforward as to be amenable to a fair trial in a single year. For this reason, Congress gave the PTAB essentially unreviewable discretion to deny institution, so as to weed out the ones to which the PTAB could not do justice, within the constraints imposed by the Congressional requirements. For all intents and purposes, that is a Congressional directive that “you can’t get an IPR instituted when the office gets busy.”
For all intents and purposes, that is a Congressional directive that “you can’t get an IPR instituted when the office gets busy.”
By this reasoning, the office need not ever institute a single IPR. And who would have standing to challenge that practice?
True. It need not, and no one has standing to challenge such a decision if a hypothetical PTO director were to announce a blanket policy of “no IPRs on my watch.” The mechanism of accountability there is political (the PTO director serves at the President’s pleasure).
It’s more than just mere “reasoning.”
It is how Congress wrote the law.
“why should society as a whole care about Fintiv”
I am amused that this sounds in, “in the long run, we are all dead.”
Greg’s valid point is that these non-rule-based Fintiv IPR Denials are only of benefit to only the very few patent litigation attorneys thereby getting huge billing opportunities from a full patent trial on all possible issues [which client costs could have been avoided by a successful IPR, or estoppel-restricted if un-successful]. And, that Fintiv is certainly nowhere near the most important issue of concern to the Secretary of Commerce.
Tornado warning issued with Paul’s spin of “Greg’s valid point.”
Re: “Tornado warning issued with Paul’s spin of “Greg’s valid point.” An amusing complement, thanks.
BTW, I see that responses here to the subject letter from 24 major companies is quite subdued. It must have soaked in that attacking so many present or potential future clients of one’s own lawfirm might not be advisable.
Or not.
“ It must have soaked in that attacking so many present or potential future clients of one’s own lawfirm might not be advisable.”
Once upon a time, the “rules” of posting were both known and readily available. One of those rules was that posting was ONLY to be done in a personal capacity – which such rule would negate your attempted spin in BOTH removing the implication that one’s voicing need be limited by possible pecuniary repercussions, AND that any such repercussions would flow from the likes of your suggestion to begin with.
This is the type of snide ‘shot from the sideline’ that is at best unhelpful in dialogues on the issues.
As to your implication, I would sh00t back with the fact that these GC’s may have implicated themselves in a less-than admirable manner, bowing to the quite obvious self-dealing interests of firms that would benefit from Efficient Infringer tactics.
The letter at one time asserts too much and says too little. It is NOT as if ALL avenues of redress have been removed, and the ACTUAL intent of the AIA — as noted of late as providing a true ALTERNATIVE (as opposed to multiple bites) is in NO WAY impacted – notwithstanding the false impression given in the letter.
I “get” the pressure that an internal position may place on the attorney, but such is just NOT an excuse to engage in such self-dealing and notices to the court that frankly, smell worse than rotting fish that had fallen behind the counter sight unseen.
I don’t even know what most of that is even about, certainly not about what I said. But “GC’s ..bowing to the quite obvious self-dealing interests of firms that would benefit from Efficient Infringer [litigation] tactics” is absurd. GC’s do not “bow” to outside counsels. [Much less P&P attorneys.] They hire, fire, and review them. They cut their billings if they can, not encourage them. Most GC’s are in favor of IPRs because reducing their company’s litigation budget is often their primary management-desired objective, and IPRs are one way to help do that.
“GC’s do not “bow” to outside counsels. ”
Not stated or even implied. Not sure why you would even go in the direction of influence from outside counsel…
Quite the opposite – GC’s WILL bow to the dictates of the firm and its Executive directions (which MAY WELL be at odds with the legal ethics of how one should treat case law including case law that is in error (but may ‘benefit’ the firms, especially firms that benefit from Efficient Infringer tactics and mindset. GC’s are typically cost-center aspects, and run ‘at the pleasure of’ the business, as opposed to being a true ‘hands-off’ neutral advisor.
I don’t even know what most of that is even about…
Without even seeing it, I can fairly guarantee that it is not worth your time trying to parse it. That gibberish never repays the effort required to understand it.
“Without even seeing it”
No, Greg, you can not.
That you THINK that you can is part and parcel of your problem, and the fact that you do not think this to BE a problem is a blight that you inflict on everyone.
Do you happen to know the production requirements of APJs? If so, please share with the rest of us.
Someone shared the link here on Patently-O within the last year. I cannot remember who, but perhaps that person could share the link again?
“There are a finite number of APJs.”
This is true only in an immediate timeframe, so I do not see why your argument holds in any timeframe beyond that.
There will never be a time in which the PTAB employs an infinite number of APJs.
Greg, the number of IPRs per year, and the number of ex parte application appeals per year, do not seem to be substantially increasing. And Fintiv denials are a small percentage of total IPR petition decisions. So there should not be a need for a substantial increase in APJs.
Agreed.
“the number of ex parte application appeals per year, do not seem to be substantially increasing”
Feels like it’s downright crashing from where I sit.
Fair point.
I am still troubled by your argument, but I am struggling to put a finger on the problem.
Naturally, if I am thinking wrongly about Fintiv, I would like to be set right. If you do spot the error, please let me know.
One trouble, Ben, is that it removes a sense of personal choice, and instead sets the propriety to some larger amorphous “societal choice.”
That’s not how law works in view of the right of redress.
I think that we can all agree that (1) there are limits to how many cases the PTAB can handle each year and (2) the PTAB should be operating at all times at something like maximum capacity. If there were no opportunity costs in taking Case X, then that would imply that there really is a lot of slack capacity. If that were the case, we should fire all of the goof-offs, at which point the slack capacity would cease to exist.
Once we concede that there are opportunity costs in instituting any given case, however, then it becomes clear that Fintiv is just a rule about how we allocate scarce resources (i.e., APJ time). What more, on its face, it is a good rule for allocating that scarce resource—i.e., we will not devote PTAB resources to evaluating validity of the claims when there is another tribunal out there in the nation that is already doing the exact same work.
I think that a lot of the disappointment of these GCs is predicated on a misnomer—viz., a lot of people (on both sides of the issue) still believe the myth that the PTAB is a “death squad.” The numbers do not bear this out, but the “death squad” concept has become one of those things that “everyone knows,” so certain frequent-flyer defendants really want to be in front of the PTAB instead of the district court. In reality, any one tribunal that moves with expedition and dispatch is as good as any other for their purposes, so their dissatisfaction with Fintiv is largely misplaced. One way or the other, however, the essential logic behind Fintiv (allocate the scarce resource of PTAB time so that it is put to its most productive use) is sound, and the self-interest of one set of litigants really should not much influence how we evaluate Fintiv, no more than the self-interest of the other set of litigants on the other side of the lawsuits.
Re: “In reality, any one tribunal that moves with expedition and dispatch is as good as any other for their purposes, so their dissatisfaction with Fintiv is largely misplaced.”
Greg, test that assumption by comparing the number of IPRs decided per year [a couple of thousand?] by the number of patent trials deciding patent validity per year. [Less that 100?] Better yet, compare the number of patent trials deciding validity decided by the only district court judge in Waco last year? [I don’t think more than a couple, but the actual number would be of interest.] [That is the same judge who had generated the most Fintiv IPR denials, which denials were based his near-term trial date projections being faster than IPRs, which, obviously, did not often occur. The PTAB finally noticed that, has stopped such Fintiv IPR denials, and even reversed one.]
Right. Insofar as the scheduled “trial dates” turn out to be illusory, everything I just said goes down with it. As you note, however, the PTAB has already stopped applying Fintiv to the WDTX for just that reason. Problem solved.
I chuckle as Paul’s “defense” of IPRs (rah rah rah) instead only show how overblown the entire “Oh Noes Tr011s” propaganda has been.
Bottom line: you cannot have the so-called out of control Tr011 problem AND have IPR numbers that make any putative Tr011 problem BE de minimus.
For those interested in facts the numbers or percentages of patent suits that are still being brought by PAEs, especially in Waco, is now quite regularly reported over on Gene’s blog.
lol – As I have pointed out TO you when you have feigned not having a clue.
The proper response would have been, “Thank you.”
As the American novelist Upton Sinclair once observed, “[i]t is difficult to get a man to understand something when his salary depends upon his not understanding it.” You can cite all the numbers in the world, Paul, but these boards are enriched for an audience who are willfully committed to not understanding the upshot of those numbers. Good luck!
And I do chuckle at Dozens (GREG) being one of those willfully committed to not understanding the upshot of those numbers.
Irony indeed when one — such as Greg — has purposefully chosen to NOT look at the totality of the conversation.
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