Jumping In Line: IPR and District Court Dance

Molly Metz is a competitive jump-roper (5-time world champ) and also an inventor of an innovative jump rope handle that allows super speed jumping loved by both competitors and cross-fit freaks.  U.S. Patent Nos. 7,789,809 and 8,136,208.  There has been massive infringement since her patents issued 10-12 years ago.  Financing an infringement lawsuit is a bit tricky, especially for a total-startup (micro entity) in a fairly small market.  After failed licensing discussions, her company Jump Rope Systems eventually sued Coulter Ventures (owners of Rogue Fitness) in 2018 for patent infringement.  Jump Rope Systems, LLC v. Coulter Ventures, LLC, 18-cv-731 (S.D. Ohio).  Coulter turned around and petitioned for inter partes review (IPR).  IPR2019-00586, IPR2019-00587.  The PTAB granted the petitions and eventually concluded that the claims were obvious compared against the prior art.  The PTAB decision here is fairly questionable as applying hindsight bias in justifying the combination of prior references. Still, the Federal Circuit affirmed without opinion.

The Federal Circuit precedent is clear that all enforcement litigation should end as soon as the PTAB finds a claim unpatentable in an IPR/PRG and the determination is affirmed on appeal.  “That affirmance … has an immediate issue-preclusive effect on any pending or co-pending actions involving the patent.” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).  As I write below, the Federal Circuit’s approach has some doctrinal holes.  Still, it is precedent and the district court followed that precedent–dismissing the case and siding with the accused infringer.  Jump Rope appealed, but made clear to the Federal Circuit that the purpose of its appeal was to change the law and moved for summary affirmance of the district court’s judgment.

The IPR Certificate eventually issued in August 2022 stating that the claims have been cancelled, but that time the district and appellate courts had already been treating them as cancelled for months.

= = =

Jump Rope Systems’ case is now pending before the US Supreme Court on petition for writ of cetiorari and it argues that the Federal Circuit’s approach is in direct conflict with our law of issue preclusion.   Question presented:

Whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit  in federal district court. 

Jump Rope Petition.  

Although the Second Restatement of Judgments is not “law” as such, the Supreme Court (and other courts) have repeatedly concluded that its statements do reflect the law.  One theory for immediately applying the PTAB judgment is the doctrine of collateral estoppel (aka “issue preclusion”).   In XY, the Federal Circuit particularly concluded that collateral estoppel applies to immediately bar a patent infringement lawsuit once the PTAB finds the claims unpatentable and that determination is affirmed on appeal.  Judge Chen’s XY decision has numerous problems. The basic concern is that the opinion fails to consider standard limitations on the application of collateral estoppel, such as differing standards of review.  One key example: the PTAB decided obviousness based upon the low standard of preponderance of the evidence; and the IPR Appeal was decided on an even lower substantial evidence standard.  But, decisions on those low standards do not tell us whether the issue would be decided the same way under a higher standard of clear and convincing evidence. Standard issue preclusion rules prohibits this sort of application.  See Grogan v. Garner, 498 U.S. 279 (1991).  But, the Federal Circuit majority simply concluded that the patentee “had its day in court” and now is bound by the outcome.  As I noted above, in my view the PTAB obviousness decision here is quite weak in the way that it combines disparate references and identifies the problem to be solved.  I mention this because it seems like a case where the standard of review might make a difference.

To be clear, in my mind all of this might be a different situation once the USPTO issues its IPR certificate that actually cancels the claims.  At that point, the patent has been cancelled, but the parties here appear to be fighting about the pre-cancellation interim period.  One additional complication to this case is the reality that obviousness is a question of law, albeit one based upon substantial subsidiary facts.  Legal decisions by the courts also become binding precedent (apart from their preclusive impact on the parties), but this area becomes complicated when the legal determinations are based upon unique underlying factual conclusions.

 

155 thoughts on “Jumping In Line: IPR and District Court Dance

  1. 14

    Professor Crouch- I was hoping that you could provide some input. Does the ruling from the PTAB regarding motivation make sense? If the swiveling and pivot actions already exists in the Terper patent, why would the PHOSITA be motivated in adding the pivot action to the Wolf patent.

    I also thought that the secondary argument of “eliminating the mass of the second arm” of the Wolf handle (exhibit 1024 @103) was a bit misplaced. If the expert was that concerned about mass, he would eliminate both of the arms in the Wolf patent and just go with the Terper patent.

    If you have any input I would appreciate it.

    Thanks
    John

  2. 13

    OT, but a lot more relevant, with pending patent legislation, than social media and stock market comments below:
    In another attack on 112(b)(6) unpatentable subject matter motions since Alice over on Gene’s blog, I noted in that post by former Judge Paul Michele on Oct 26 the statement that:
    “Patent infringers now routinely raise Section 101 as a defense, often merely as a strategy to complicate and prolong the litigation, rather than as a good-faith defense with a likelihood of success. For example, one analysis found that … by 2019, accused infringers were filing over 100 such motions each year.”
    How is only 100 of the roughly 4000+ patent suits per year – only 2.5% – a “routine raising”? If anything, that number seems to detract from the extent of the [real] problem? Also, re whether those pre-trial motions are so often being brought in bad faith [some may well be], the indicated 38% percentage of such motions being rejected could be compared to the rejection rates of other pre-trial dispositive summary judgment motions, which I would suspect are even higher. [Many dispositive pre-trial motions never get decided at all in the large majority of suits that are settled before trial.]

    1. 13.1

      Judge Michele is a paid hack for patent trolls. He’s a disgrace and his dishonesty and cluelessness with respect to the topic of subject matter eligibility is legendary at this late date.

      1. 13.1.1

        Chief Judge Michel can still be assigned to hear cases under 28 U.S.C. §294. Given your accusations, the DOJ should contact you and see what evidence you have to back up your statements/libel so as to ensure an honest judiciary.

        1. 13.1.1.1

          TrickiWoo, it appears the person was merely sharing an opinion. By definition, opinions are neither right nor wrong – they’re merely opinions.

          I have come torealize this is a difficult concept for most un-American types of folk, and I don’t need evidence to say that. Just look around and see how few can discern an opinion. There ya go. 🙂

          1. 13.1.1.1.1

            …. Clearly, that is Chrissy’s opinion.

            1. 13.1.1.1.1.1

              While not unlawful, I wouldn’t consider it a legal opinion 🙂

              Strong facts are always nice to have, say, in a sec. 103 obv. determination. If the facts are strong enuf, there will be no or only little polydispersity of opinion. unfortunately, many patterns are low-fact. 🙂 What gets me is “PHOSITA” Its too long and any Spanish-speaker sees the ” -ita” suffix as meaning “little”. So, it is a little PHOS. A tiny phosphate ?

              We need a better word for the little PO3. I tried POS for “person of ordinary skill” but POS has bad connotation obviously. The pos in the art, haha. “person of ordinary skill” can also be POOS, but, nobody wants to be called that.

              Literally too, PHOSITA is “little person of ordinary skill”. It’s bellittling !

              PHOSITA is just too long. How about “Man of Skill” MOS ?
              hh, no way.

              How about “Inventor of Ordinary Skill” IOS

              Yeah. IOS

              Just my opinion 🙂

              1. 13.1.1.1.1.1.1

                “Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something—call it what you will—which sets them apart from the workers of ordinary skill…,” (emphasis in original). Bausch & Lomb v. Hydrocurve Inc., 796 F.2d 443, 448 (Fed. Cir. 1986).

                1. good thought. Yeah, its problematic to use IOS too. All I have is this:

                  The bar for inventor-ship itself is low. Mom invented a device and method to remove chicken fat from soup without need to chill and solidify it and a search turned up nothing like it. but she’s not at the same standard as in arts where skill level is high, such as pharma arts, even though she’s an”inventor.” Since the bar for mere classification of one being an “inventor” is so very very low, there is little significant difference btw a person of ordinary skill in an art, and an inventor of ordinary skill.

                  But, if the 103 bar for obv-ness were based on the inventor of ordinary skill, that would maybe make it a lot tougher to be awarded a patent, since the higher standard supposedly possessed by pers. of ord. sk. in that art.

                  But isn’t that how 103 cases are judged anyway in a defacto sense ?

                  Must a person themselves possess at least some glimmer of inventive skill, before they have the ability to determine whether or not the invention of another is obvious ?

                  I think sometimes, its really inventors who judge other inventors. I’ve seen many 103’s put together by some Examiners, which demonstrated inventive skill on the part of the Examiner in assembling the thing !

                  I will use that next time an Ex. gets inventive in their rejection, and argue that they are not merely a person but have become inventor and accordingly demand an inventor who is not possessed of anything which sets them apart from other persons. ha 🙂

                2. Chrissy,

                  You veer into the weeds here.

                  Do you really think that “In The Art” is (or should be) the same across different arts?

                  It also appears that you almost want some type of “flash of genius” (but we both know what Congress thought of that idea, eh?)

    2. 13.2

      I agree that those numbers do not really fit with a “bad faith” frame.

    3. 13.3

      Here’s something else former Judge Michele said recently on that subject that one can well agree with: “.. the Federal Circuit could do much to fix a lot of the uncertainty surrounding Section 101 and other areas of U.S. patent law if the appellate court would make an effort to render more en banc decisions to speak as one voice..”

      1. 13.3.1

        Except that a lot of 101 has in fact become more clear over the years but the same people (like Michele) continue to shriek about it because they still arent getting what they want (a wide open gate where subject matter eligibility is just a formal exercise in choosing one of three correct descriptive words in your claim preamble).

      2. 13.3.2

        Dennis himself was able to find clarity on two basic issues that once were very confusing and controversial to the maximalists (they weren’t confusing or controversial to normal people:

        Collecting and organizing data (these are the invalid claims in Weisner);

        Collecting; organizing; and displaying data (these are the invalid claims in IBM);

        are both ineligible subject matter. It doesn’t matter what the content of the data is or whether the data saves 10 million kids or is worth ten trillion dollars. Note that this does NOT mean that every claim that includes such subject matter is ineligible. It does mean that if your claim includes this and nothing more except old tech or functionally claimed “new” tech, then your claim is ineligible.

        This isn’t complicated. Judge Michele should be able to understand all this but he can’t and he won’t because he’s a hack who gets paid to NOT understand.

        1. 13.3.2.1

          Note that this does NOT mean that every claim that includes such subject matter is ineligible.

          Malcolm’s incredible moving goalposts…

          Tell me Malcolm, a claim — objectively to one of the recognized statutory categories AND (in your words) “containing” — what then is determinative of eligibility?

          That you “feel” (or sniff) otherwise,
          That you (or the courts) “Gist” otherwise?

          Someone has forgotten their history and what led up to Congress finally having had enough and writing the Act of 1952.

          1. 13.3.2.1.1

            Putting in a magic word isn’t sufficient.

            “A machine that obeys E=mc2.”

            (drafted by Einstein shortly after he made his discovery: not eligible even if novel, not obvious, and described by an enabling and detailed specification).

            “A composition of matter comprising DNA Sequence XYZ.”

            (with DNA Sequence XYZ occurring in nature, drafted by a genius that was the first to sequence this DNA and determine its trillion dollar anti-cancer properties: not eligible even if novel, not obvious, and described by an enabling and detailed specification).

            “A method for banking transactions comprising a processor that searches a database for past indications of fraud associated with the participants in said banking transaction, wherein said processor generates a warning message if past indications of fraud are identified.”

            (drafted by a troll that did not invent banking or any improvement to computer technology: not eligible even if novel, not obvious, and described by an enabling and detailed specification).

            If you disagree, please explain. We can debate Section 101 all day but you really need to look at claims, rather than debating the issue “in the abstract.” (Pun intended).

            1. 13.3.2.1.1.1

              It appears a public policy decision re

              “A method for banking transactions comprising a processor that searches a database for past indications of fraud associated with the participants in said banking transaction, wherein said processor generates a warning message if past indications of fraud are identified.”

              because, if permitted to be enforceably patented, it would interfere with legitimate IRS and other agencies fraud investigation activities.

              This idea is maybe extensible to other IT inventions and discoveries – if the smaller entities were permitted enforceable patents in some of these areas, the costs for compensating all of them would be immense. It is more expedient to disallow certain categories of subject matter to smaller entities, in the interests of advancement from less interference by the private sector.

              1. 13.3.2.1.1.1.1

                Sorry Chriss, but no — any such policy would ONLY come from Congress.

                (Further, chew on encryption)

                1. Judicially-created doctrines in the presence of the absence of Congress on the matter, after enough time of it doing nothing, become defacto pp. CONgress doesn’t need to positively act in order to make pp, it can be effected by silence too. Unless somebody gets loud about the matter. Things have just been, pretty quiet. Make some noise! There’s ears everywhere. I think that people like it when they can do the right thing !

            2. 13.3.2.1.1.2

              Your “not in the abstract” claims
              F
              A
              I
              L

              For other than eligibility.

              Maybe try one that only
              F
              A
              I
              L
              S
              For the Gordian Knot of misapplied eligibility.

              1. 13.3.2.1.1.2.1

                How is the claim written by Einstein “failing” for other than eligibility? How about the trillion dollar DNA discovery? Those “fail” only because you cannot patent such things. And with the banking hypo, the instruction was to assume that the claim was novel, not obvious, and described.

                1. Litig8or,

                  Have you bothered with the earlier post (what I actually stated) at 13.3.2.1?

                  (hint: no, you have not – and this is the second time you have done this on this thread…)

                  Your attempt then is nothing but goal-post oving and wanting to instead talk about a situation of ONLY “magic word.”

                  But your examples are p00r ones, and to which my direct rebuttal to you was that they hardly get to a “magic words” scenario.

                  Let’s take each in turn.

                  1) Machine that obeys.

                  First and foremost, you do realize that “the map is not the land” eh?

                  Second, IF Einstein IS correct, than his discovery – as applied – CN NOT be novel as to ANY machine, as his discovery in and of itself was an observation of the existing universe and not in fact anything novel.

                  ALL prior machines would “obey” as claimed.

                  Thus, your ‘example’ is a fallacy.

                  2) Composition comprising

                  This example claim is not enough on its face, given that ‘comprising’ is an open ended item, and that – without more – one can NOT arrive at your asserted “even if novel.”

                  You are attempting to assume your own conclusion, which is a logical fallacy.

                  Just as a claim to: A composition of matter comprising H2O would not succeed (and that based not on eligibility of 101 ALONE, as clearly such would be barred by 102).

                  3) Method of banking

                  As bad as the first two examples are, this is the worst example from you – given that you insert your bias with the Tr011 comment, and is such a stilted example that is easily rejected under either 102 or 103 (and thus simply not on point to my post at 13.3.2.1). Your attempt to ‘inoculate’ by asserting “instruction was to assume” is a no-go and you need to actually provide a claim that fits how you want to apply your logic. Giving a claim example that cannot conflates your assumed conclusion with a false sense of logic (casual reading of something that on its face won’t fly).

                  Try again – this time in view of what I actually stated.

      3. 13.3.3

        It is a nice thought that more en banc consideration could add clarity to subject matter eligibility, but I am not sure that this is true. The CAFC—even sitting en banc—cannot overrule the SCOTUS. Diehr pretended that it was not overruling Flook, but Justice Stevens (the Flook author) was not fooled, and noted in his Diehr dissent that the Diehr holding was effectively overruling Flook without owning as much. Justice Breyer decided to play the same trick in Mayo, saying that the Court was not overruling Diehr, while effectively overruling Diehr.

        So, now we have a situation in which the published opinions in the U.S. Reporter say that all of Flook, Diehr, Mayo, and Alice are good law, despite the fact that these opinions are mutually irreconcilable at points. No matter what an en banc CAFC says, any given panel can always reach for whichever SCOTUS precedent (all of which are “good law”) they want when deciding a case in front of them, regardless of their most recent en banc holdings.

        The only way that the “en banc” panel can resolve the contradictions is if the CAFC judges are individually of the same mind on these issues. If that were so, however, then an en banc reconsideration would hardly be necessary.

        1. 13.3.3.1

          or, alternately, repeal the AIA. That might be slightly statistically more probable than getting all the judges’ minds aligned. Your writings are appreciated.

          1. 13.3.3.1.1

            Repealing the AIA would only make things worse. All of Mayo/Alice could have been avoided had the AIA been enacted a decade earlier.

            Your writings are appreciated.

            Likewise.

            1. 13.3.3.1.1.1

              All of Mayo/Alice could have been avoided had the AIA been enacted a decade earlier.

              This is flat out incorrect, given the express purposes of why the AIA was passed (hint: with other minor things NOT eligibility related, the AIA’s main emphasis was on recalibrating 102/103.)

              To think that an earlier passage of the AIA would have altered or forestalled the Judicial Branch rewriting of Congress’s eligibility law [further given, as Greg admits, that THAT rewriting is in self-conflict — damm Justice scriviners] would be to show a lack of understanding of BOTH the AIA and the mess of eligibility jurisprudence that we have.

        2. 13.3.3.2

          Otherwise known as the Gordian Knot.

          Sorry Greg, but you are most definitely not the first one to note this.

          And Chrissy, elsewhere you err in stating that “things have been quiet.”

          High ranking members of EACH of the three branches have been vocal about the Gordian Knot created by the Supreme Court.

          That “quiet” must be in that other dimension that you go to. It’s not here in this reality.

        3. 13.3.3.3

          Referring to cases by name as if they stand for one single absolutist position is pretty simplistic and doesn’t reflect how the “the law” works.

          Aspects of the Diehr decision are still sensible and are still relevant. The illogical nonsensical parts were NEVER good law which is why they were never actually applied and also why every subsequent case repudiated those aspects and affirmed what Stevens wrote in his dissent.

          Again: the extremist position regarding the holding in Diehr (that reference to any eligible subject matter in a claim rendered the entire claim eligible) was NEVER defensible. Nobody hear has ever been able to defend it. It was always nonsense.

          Grow. Up.

          1. 13.3.3.3.1

            Grow. Up.

            Says the least grown-up of all posters (with no sense of the irony).

            As for Stevens, as an attorney, I would expect you to know how Dissents work (hint: that’s the part that is NOT the law).

  3. 12

    Amazon stock down a full 20% in after hours trading bros, can get in if you have thinkorswim and some dollars floating around. Best deal in 3 years time for amzn if you want a piece.

    1. 12.1

      Lol — never mind why the stock is cratering….

      6’s “buy now,” likely means “buy now so I can sell”

      1. 12.1.1

        Anon bro I’m not shillin my bags, even if PO people buy even 100k it wouldn’t have practically any effect on the price derp. And I do not currently have a large position in amzn.

        1. 12.1.1.1

          You “derp” in the wrong direction, bro, as you be selling does not have anything to do with Macro movements, and the slight is quite the opposite as you do appear to be hawking in order to personally exit.

        2. 12.1.1.2

          To activate the hyperlinks, copy and remove the line returns (too many in one post activates a filter here).

          Latest stock for 6

          https:
          //www.businessinsider.com/stock-market-crash-valuations-earnings-disappointments-bottom-fed-hawkish-hussman-2022-10?utm_source=facebook&utm_medium=news_tab

          Twitter and the Left:

          link to redstate.com

          Musk closed and sacks…

          link to msn.com

          1. 12.1.1.2.1

            Not even sure what you’re talking about, the first link is paywalled and I’m not going to bother going around it. I saw the news about twitter happenings, sink n all.

    2. 12.2

      The big thing that is going to happen, in my opinion, is that Twitter is going to swallow the other social media applications.

      Musk is a risk to Google, Facebook, Snap, Tiktoc, and others.

      The far-left extremists (all Ds) don’t get that people want a level playing field. I know that google has hidden items from my searches and I have had FB delete or flag many posts. It is funny, though, the way the Maoist think that the current content moderation and the current level of fear from the DOJ and FBI that people who are not far-left extremists feel is OK.

      Watch as Musk slowly swallows the internet. Companies like FB and Google just have no idea how much resentment they have built up against them. They are like CNN. And once your credibility is gone it is almost impossible to get it back.

      1. 12.2.1

        This is relevant to patents as FB, Google, and the like that “curate” the content in accordance with what the White House tells them to do as very similar to the Lemleys of the world.

        It is the same political movement of a neo-Marxist state. Musk represents a counter to that by providing a fair playing field.

        Watch. It will take some years but in five years the playing field is going to look a lot different. Musk will look at Google and realize that he could easily wipe them out. Just provide excellence with no finger on the scale.

        1. 12.2.1.1

          FB, Google, and the like that “curate” the content in accordance with what the White House tells them to do as very similar to the Lemleys of the world… Musk represents a counter to that by providing a fair playing field.

          Worth remembering that Musk says that “patents are for the weak.” He has a great deal more in common with Prof. Lemley than with you or I when it comes to the patent system.

          1. 12.2.1.1.1

            ? Why the attempt to make this some type of monolithic “agree//must agree with everything” type of thing?

          2. 12.2.1.1.2

            Greg,

            No. Musk supposedly does place great value patents. But he is open about it.

            Lemley does not value patents and tries to get rid of them through backdoor methods and judicial activism.

            1. 12.2.1.1.2.1

              “does not”

            2. 12.2.1.1.2.2

              Lemley’s “judicial activism” is that lots of judges find his scholarship persuasive and cite it in their opinions. In other words, he publishes arguments that convince people. These are hardly “backdoor methods.” It is all quite out in the open.

              I do not find Prof. Lemley’s subject matter eligibility arguments any more convincing than you do (although I appreciate his empirical work quantifying how many patent cases reach what stage of the enforcement process). I cannot see, however, that there is any material difference of transparency or openness between him and Mr. Musk. Neither of those two are particularly subtle or reserved.

              1. 12.2.1.1.2.2.1

                The “back door” in his methods is his lack of ethics and self-serving writings (how HE wants the law to be).

                “Convincing” anyone is most definitely NOT the point, as should be abundantly evident given the amounts of confirmation bias exhibited by Anti’s on this blog.

        2. 12.2.1.2

          I predict this prediction of yours will be as accurate as your predictions about all the examiner layoffs at the PTO that are just about to start happening.

          1. 12.2.1.2.1

            Hey look, P00py Diaper and Passing Gas on the same thread.

          2. 12.2.1.2.2

            I share your expectations of the future, but I don’t approve of the tone here. NWPA’s willingness to make concrete predictions is a positive personality trait and shouldn’t be discouraged. You can notice his prior errors without mocking him for them.

            1. 12.2.1.2.2.1

              Good point.

            2. 12.2.1.2.2.2

              I think you misunderstood his comment. He wasn’t referring to NWPA. He was referring to Malcolm aka P00py Diaper who is now posting under the pseudonym “Breeze” and a clever twist on Breeze of “Passing Gas.”

            3. 12.2.1.2.2.3

              I would hardly call making a prediction about his prediction to be “mocking” him. Calling him Night Wiper would be mocking him. Carry on.

              1. 12.2.1.2.2.3.1

                Wiper is a well-documented lying t0 0l whose intelligence is sub-par even for a popular patent blog. On top of that, he’s an elderly rightwing crank. Such people exist to be mocked (actually all rightwing and glibertarian cranks exist to be mocked).

                1. lol – as only Malcolm deigned to use the ‘Wiper’ term, we have here the s U ck1e replying to himself.

                  Way to go, Malcolm.

          3. 12.2.1.2.3

            This is totally off topic and none of my business, so please feel free to ignore me if this is an unwanted question, but what motivated the name change from AAA JJ to Breeze?

            1. 12.2.1.2.3.1

              Greg(“Dozens”) is off by a mile here.

              First, AAA JJ has never been inclined to change his moniker.

              Second, the writing has no parallels to what (or how) AAA JJ posts.

              See instead 4.1.2.1.1 below for the link that lists five parallels to Malcolm (who HAS employed s U ckpu pputs many times over).

            2. 12.2.1.2.3.2

              Had the chance to review a past link to Patently-O comments from earlier this year and I do have to walk back a step and permit the chance that Greg is correct in AAA JJ picking up a new pseudonym.

              Two indicators:

              1) replicating an avatar — while not impossible — is highly unlikely; and

              2) when drawn into discussing non-patent law items, AAA-JJ does have a habit of losing his reasoning ability, slipping into a Hard Liberal Left mode, and closely emulates Malcolm’s posting content and “style.”

              That being said, to be so close to Malcolm cannot be considered a good thing.

              Ever.

      2. 12.2.2

        Back when one of my daughters was wearing glitter, she told me about twitter. Since then, I’ve associated twtr with 8 graders. Am I alone on this bend ?

        1. 12.2.2.1

          No, you are not alone cw. Millions feel the same way.

          Never used it. Never will.

          Never followed anyone. Never will.

          1. 12.2.2.1.1

            It definitely has utility, not so sure about the commercial success, iirc that company rarely had positive earnings.

            The amount of money Mr. Musk was alleged by some news sources as paying for twtr, seems far more than it would require to just start up a new completing entity. If they could code it back in 2010 or so, it’d be easier these days to do so.

            Perhaps the political nature of control of public disclosure is a factor in the lack of a more-viable competitor than F-book. I bet $5B would get a competitor rolling, then grow it from there.

            1. 12.2.2.1.1.1

              “The amount of money Mr. Musk was alleged by some news sources as paying for twtr, seems far more than it would require to just start up a new completing entity.”

              What he’s paying for, overpriced as it is, are network effects.

              1. 12.2.2.1.1.1.1

                I agree with you Ben.

                Also, there is more than just a little premium being (voluntarily) paid to de-Bot and stick it to the Liberal Left.

              2. 12.2.2.1.1.1.2

                I definitely agree that Musk is paying a premium for the network effects (although even then, I agree with you that he appears to have overpaid). For my part, I see this transaction ending in one of three ways. I consider the first two to be more likely than the third, although the third is darkest.

                1) Twitter has never been profitable, and Musk has no experience running a social network. His leadership turns and already unprofitable enterprise into an unsustainable failure and the whole things shuts down within two years.

                2) Musk finds the business of running Twitter to be much less fun than participating on Twitter and divests (either to another private buyer or by re-IPO) within two years.

                3) We really know nothing about the financing that Musk employed to make the purchase. Perhaps this deal is backed by nefarious actors (e.g., China, Saudi Arabia, etc) who are willing to keep it running at a loss because of the influence it permits to them. In that case, Musk remains the nominal owner off into the indefinite future. Because the secret owners wish for the platform to retain its current, influential reach, the moderation policies do not change all that much, except that they become noticeably more tolerant of MAGA self-expression and subtly less tolerant of criticism of CN, RU, SA, etc.

                1. Those network effects are easily reproducible however. It seems spurious, that no other viable competition is permitted. It suggests that monopolistic control by sheer size without regards to puny patents (for little ppl) is the goal of that forum,, eventually. I saw predictions of what musk will do with twtr., my prediction is that it will become a tool of tear-anny.

      3. 12.2.3

        Twitter is going to swallow the other social media applications… The far-left extremists (all Ds) don’t get that people want a level playing field…
        Watch as Musk slowly swallows the internet. Companies like FB and Google just have no idea how much resentment they have built up against them.

        I gather that you are predicting that (1) FB will decline and (2) Twitter will take off, and from this outcome you will infer that the broad mass of people are angry at Democrats. What inference will you draw if both FB and Twitter decline instead?

        1. 12.2.3.1

          >>What inference will you draw if both FB and Twitter decline instead?

          I don’t think it is going to happen. I think that people want a level playing field with transparency. Elon said the goal is a public algorithm for content curation.

          I think Elon is going to fix Twitter and then expand Twitter into FB and Google’s spaces. Maybe even Microsoft and Amazon (web hosting) spaces. We’ll see.

          Elon just expands where he can and I think FB is very vulnerable. Google less so but still quite so. Web services very vulnerable to a person like Elon.

          But I think he will focus first on just getting Twitter righted. Probably fire 90 percent of the people in the next few years.

          1. 12.2.3.1.1

            I don’t think it is going to happen.

            Right. I understand that you do not expect this outcome. Nevertheless, what should one conclude about public opinion and market demand if it does happen?

            1. 12.2.3.1.1.1

              Probably will mean a fracturing of the public into different groups that support curation that favors their views.

      4. 12.2.4

        “The far-left extremists (all Ds) don’t get that people want a level playing field.”

        I suspect that you’re wrong, but I eagerly await the results of the great Twitter experiment!

        Here’s my predictions:

        1. Twitter’s (inflation adjusted) value will not exceed what Musk paid for it in the next 5 years.

        2. In the next 5 years, Twitter will “censor”/deprioritize content under pressure from China.

        1. 12.2.4.1

          Ben, I don’t think so.

          1. My bet is based on Elon expanding the services of Twitter.

          2. Elon has said his goal is a public algorithm for content curation so it is a completely level playing field and transparent.

          1. 12.2.4.1.1

            We’ll see!

            Perhaps Xi won’t have reason to pressure Musk. But how confident are you of how Musk will react if he hears from a Xi surrogate: “Nice Tesla factories you’ve got here in China. It’d be a shame if something happened to them. Can you make this small modification to the algorithm for us?”

            1. 12.2.4.1.1.1

              It is a good point Ben. A very good point.

              Hopefully, Elon can shield himself from that by the opensource algorithm for curation model.

              (My biggest fear now is Chian invading Taiwan. One of my Chinese American friends said that China is obsessed with Taiwan. That it is a matter of honor for them and they want it more than anything else. )

              1. 12.2.4.1.1.1.1

                “(My biggest fear now is Chian invading Taiwan. ”

                You can rest 100% easy on that one bro. Don’t let the media get to you.

                All foreign affairs experts know the following: in order to ensure success JUST vs Taiwan by itself, china needs ~1 milly men to invade (all of which need troop transport within a short amount of time = gigantic numbers of boats in a small easily viewable area via satellite). That’s 250Kish men fielded in a pinch by Taiwan by time of conflict vs. china then needing 1 milly to do a landing with assured success, and get it done within like 2 weeks (otherwise it turns into a sht show). They also agree that both governments (china/taiwan) are thoroughly riddled with spies from the other side (as they are both actually just chinese and have many family ties etc. etc. = super ez spying). In such an event, we’d be looking at a 6+ month planning period, during which the other side would almost certainly get word of the planned invasion almost immediately. That’s before the huge gathering of boats takes place. Further, there is only like a 3 month window in which an invasion can even take place due to the weather in the straight between the islands, otherwise it is totally infeasible (large part of why they were left alone back in the day). Finally there is just not enough will to do the thing on the mainland, they know with near 100% certainty that eventually they will absorb them peacefully. Finally, there is too little to gain from what will be a huge invasion bare minimum, likely doing lots of damage to the island, and more than a 1/2 chance for it to end in disaster for the attackers (china suks balls at military for the last 400+ years + they’ll be up against America and friends = it ain’t happenin most likely, with huge chance of disastrous and embarrassing failure, see falklands dispute except vs america+5 allies).

                Bottom line, taiwan is safe for the next 20-30 years minimum, you’ll be dead well before they face a real invasion.

                ” That it is a matter of honor for them and they want it more than anything else.”

                All true, but there is no real will to take it because it is a mount Everest level challenge with no oxygen tanks, base camps and no gear. It is like saying I’d really really really like to be the first to do that Everest summit I just mentioned. Except if they screw it up, it’s a black eye on their country forever and another in a long line of embarrassing commie misadventures.

        2. 12.2.4.2

          Why are you mocking Night Wiper?

          1. 12.2.4.2.1

            Why are you not?

            Oh wait Malcolm – you already are.

      5. 12.2.5

        “ Twitter is going to swallow the other social media applications.”

        Oh dear. Grandpa’s drool cup is overflowing again.

        But it’s really important to give Grampa Himmler a platform here. He’s a very serious person!

    3. 12.3

      Speaking of stocks…

      6,

      Have you ever heard of an Examiner trying to push cases off their docket by buying stocks exceeding the nominal interest limit?

      Say I have an Amazon case I hate. Can I just buy $15k of AMZN to force the office to remove me from the case? Have you heard of anyone doing this?

      1. 12.3.1

        No, I’ve never heard of anyone doing that, especially as you would almost surely get soft forced, or forced outright to divest in short order, potentially at an inopportune price point.

  4. 11

    [To be clear, in my mind all of this might be a different situation once the USPTO issues its IPR certificate that actually cancels the claims.]

    “Might be different” implies “might not be different.” So you think there’s a chance patent owners can sue for infringement of claims that the USPTO has canceled? On what theory?

  5. 10

    “… the Federal Circuit affirmed without opinion.”

    Star Chamber courts, writs of Assistance… Decisions without opinion, on a property right matter. Wasn’t Lord Mansfield the primary cause of the 1776 declaration, for similar reasons ?

    Note to self: the 7th Amendment says suits at common law. It does not say in Law.

    Note the 7th Amendment says suits at common law. It does not say in Law.

    1. 10.1

      Fun fact. Markman holds that patent suits are covered under the 7th Amendment. But, Oil States holds that everyone has been a dope for 200+ years. Patents have always been a privilege of the King and the depth of your genuflect depends on your connections and donor budget. Kings courts are back, and every agency wants one. Now, Bend. The. Knee.

      1. 10.1.1

        Your (several) “Bend The Knee” posts are acknowledged.

        For some reason, people do not want to acknowledge the fact that we have a Deep State problem.

        1. 10.1.1.1

          … and by the way, that DS problem occurs across BOTH sides of the aisle.

          (Malcolm’s propensity for One-Bucketing, notwithstanding)

        2. 10.1.1.2

          Its more of an Admiralty problem, and ppl in denial that the overreaches they’re perceiving are the result of admiralty creeping inland and into the Art. III courts. old commentary ‘Benedict on Admiralty’ quipped that Lord Mansfield did more to extend Admiralty than even the admiralty courts, at that time! The Colnists of legal education didn’t like that, so created public money for private purposes.
          Later, private money for public purposes was introduced, commercial paper. When everybody is using commercial paper as money, everybody is deemed merchants. Different law applies to merchants than citizens of the soil, they get a different law. But one cannot pretend to avail themselves to the inLaw forum, when they’re merchants who’ve behaved in at Law fashion. The feud attached via 14th amdnemt + national trust act, for those who participate, means they have lost some standing, in exchange for the ability to receive a benefit.

          1. 10.1.1.2.1

            Whatever parallels Admirality may present, the Deep State is simply VERY different (and a very different thing).

            1. 10.1.1.2.1.1

              Deepstate is a misnomer, as one might expect from a deepstate. It is broader than deep. Shallowness is its weakness but few have guts enough to get into the water to find out. Reference History of Jack Cobinism & Ill uminatti in America” Abbe Barrue’l pub. 1799 Hartford Conn. by Hudson & Goodwin for Cornelius Davis.
              Missing pieces, behind the “deeper” meaning of the Heald Square monument, ooooo, the intrigue… Enforcing admiralty on the land is merely an expedient.

              1. 10.1.1.2.1.1.1

                Misnomer…?

                Not at all.

                You simply are not understanding what Deep State signifies.

                For some background, review your Edward Snowden (and that be barely the tip of the iceberg).

      2. 10.1.2

        Oil States holds that everyone has been a dope for 200+ years.

        More like 20 years. Oil States did not invent the idea that patents are public franchises. The Court cited its own precedent (Seymour v. Osborne) from 1871, which explicitly explains (78 U.S. 516, 533) that “[l]etters patent are… public franchises granted to the inventors of new and useful improvements for the purpose of securing to them… the exclusive right and liberty to make and use… their own inventions,… as matter of compensation to the inventors for their labor… “ (emphasis added). In other words, this has all been clear in the case law for over a century. It is not the Court’s fault if folks neglected to study or remember this point of law in recent decades.

        1. 10.1.2.1

          Greg – as is his want – yet again paints a false legal picture.

          He wants to take dicta from a case (see

          https:

          //supreme.justia.com/cases/federal/us/78/516/

          ), and paint dicta as holding.

          Greg should know that dicta (even Supreme Dicta) is NOT the law.

    2. 10.2

      The Sarah Palin Institute called and they want you interns back on bathroom cleaning duty TOMORROW!

  6. 9

    Not going anywhere.

    1. 9.1

      Bottom line this is just the time before the claims are canceled.

      The Scotus has held this is a public right so if the USPTO pulls the rug out from under you with their IPRs, there is not much you can do.

      1. 9.1.1

        “just the time” is not a negligible matter.

        Further – this provides an opportunity wasted by the late Ned Heller when he stubbornly refused my observations in the lead up to the Oil States case of a legislative Takings (which will STILL apply when the granted personal property right of a patent is viewed as a “Public Franchise”).

        1. 9.1.1.1

          Well at least Justice Breyer is gone – fingers crossed the franchise theory (patents are like a ticket to the municipal round about) of patents went with him.

          1. 9.1.1.1.1

            Breyer was one — but unfortunately not the only contagion.

            IIRC, Oil States was penned by Thomas, with Gorsuch and Roberts the only dissents.

    2. 9.2

      The petition is moot.

      1. 9.2.1

        Moot? Not under the reasoning of cases like Roe. Lack of standing? Yes. Under Oil States. The King’s grant is only good so long as the King continues to grant.

  7. 8

    Bottom line:

    Molly has been robbed.

    Blind.

    By the Death Squad. By the CAFC. By Coulter Ventures.

    Will SCOTUS make right that which is wrong?

  8. 7

    Yet another attack on IPR. The Supreme Court has consistently rejected such attacks. For example, IPR doesn’t violate the Seventh Amendment right to a jury trial in civil patent cases. It would not make sense to now effectively render the IPR system moot. There’s a 0% chance this petition works.

    1. 7.1

      Is that what you think will happen here?

  9. 6

    Still, the Federal Circuit affirmed without opinion.

    CAFC: Let’s skip this one.

  10. 5

    “Molly Metz, a second class citizen, is a competitive jump-roper (5-time world champ) who received an invalid patent on an
    obvious jump rope modification.”

    Fixed for accuracy.

    1. 5.1

      I bet the idiot MM did not even read the claims and review the prior art. What a t—dburgler!

      1. 5.1.1

        I am sure that he at least sniffed them (on the Breeze).

  11. 4

    “The PTAB decision here is fairly questionable as applying hindsight bias in justifying the combination of prior references.”

    There are many, many, many PTAB decisions that are fairly questionable for various reasons, including applying hindsight bias, and especially the bias that allows the PTAB to proclaim that they will not look for any grounds to reverse the rejections that were not raised by the Applicant but they will engage in finding new grounds of rejection that the Examiner did not make.

    1. 4.1

      “ There are many, many, many PTAB decisions that are fairly questionable for various reasons”

      … says the brainless twerp who posts YouTube videos made by flat earth-promoting societal rejects like himself. But he’s a very serious person! Totally not an incel from Texas wound up like a cuckoo clock from freebasing Tucker Carlson every night.

      1. 4.1.1

        Did you forget to take your prescription anti-psychotic medications for the last week or are you confusing me with Bill Honaker?

        1. 4.1.1.1

          are you confusing…

          No more than Malcolm’s usual one-bucketing — you made a “pro-patentee” comment, so, to Malcolm, you are “the enemy,” and fall into that “one bucket.”

          Is that rational?

          Of course not.

          1. 4.1.1.1.1

            As MM has so profoundly stated in the past – patents is white privilege.

            1. 4.1.1.1.1.1

              Using Malcolm and profound in the same sentence is profoundly disturbing.

        2. 4.1.1.2

          His rants are usually more extreme at the end of the month. I think he does run out of medication. 1-800-688-7859

          1. 4.1.1.2.1

            867-5309

            Jenny, I got your number.

        3. 4.1.1.3

          “The Poopy Diaper” needs his diaper changed. You have to forgive him.

        4. 4.1.1.4

          For the record, I am NOT Bill Honaker, who bills himself as IP Guy on youtube videos, and elsewhere.

      2. 4.1.2

        Dr. Gene wisely excised the Malcolm cancer years ago.

        While Dr. Dennis did manage to put this cancer into remission awhile back, the cancer is back.

        Time for the scalpel, Dr. Dennis.

        1. 4.1.2.1

          You can catch a whiff of that P00py Diaper under Malcolm’s latest s0 ck pupp et of “Breeze” under a slightly aged thread below.

          The irony of course is that Malcolm vociferously whined about alternative pseudonyms — at the very time that he massively engaged in that practice (albeit at the PatentDocs site).

      3. 4.1.3

        “made by flat earth-promoting”

        Wait, who is this?

  12. 3

    Blonder-Tongue (S. Ct. 1971) states the law for collateral estoppel in patent cases. Several of the required conditions are absent in this case. The petition should be granted amd the inventor should get her day in court.

    1. the requirement of determining whether the party against whom an estoppel is asserted had a full and fair opportunity to litigate is a most significant safeguard.

    2. we should keep firmly in mind that we are considering the situation where the patentee was plaintiff in the prior suit and chose to litigate at that time and place.

    3. the patentee-plaintiff must be permitted to demonstrate, if he can, that he did not have a fair opportunity procedurally, substantively and evidentially to pursue his claim the first time.

    4. certain other factors immediately emerge. For example, if the issue is nonobviousness, appropriate inquiries would be whether the first validity determination purported to employ the standards announced in Graham v. John Deere Co.

    5. whether…the prior case was one of those relatively rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit

    5. whether without fault of his own the patentee was deprived of crucial evidence or witnesses in the first litigation.

    6. as so often is the case, no one set of facts, no one collection of words or phrases, will provide an automatic formula for proper rulings on estoppel pleas. In the end, decision will necessarily rest on the trial courts’ sense of justice and equity.

    7. Res judicata and collateral estoppel are affirmative defenses that must be pleaded. Fed.Rules Civ.Proc. 8(c)

    1. 3.1

      Nice Josh — did you pick that up from personal experience?

    2. 3.2

      Legal arguments? Logic? Due process? An Independent judiciary? A trial by jury? Come on man. According to SCOTUS, patents are that red headed step child we keep locked in the basement. The Constitutional anomaly that is Oil States will expand and continue to swallow your old fashion notions of ‘law’ and ordered liberty for that matter. Blonder-Tongue? pfft, right into the anomaly. Every agency wants a PTAB. Now, show me your political connections and put some silver on the plate. Bend. The. Knee. And maybe, just maybe, the King shall grant you favor.

      1. 3.2.1

        ALL three branches under the Constitution.

        Separation of Powers.

        Checks and Balances.

        (Cases and Controversies — and not what “MAY” happen at some undetermined date as a basis for the Legislating from the Bench)

        To quote Steve Rogers, “I can do this all day.”

  13. 2

    Couldn’t you also say that the IPR certificate mooted any prior dispute about collateral estoppel?

    1. 2.1

      A response from Molly’s cert petition author:

      The XY panel did not believe “mooting” nor “voidness ab initio” justified this outcome, nor did the present Jump Rope Systems panel. They relied on an estraordinary absolutist view of collateral estoppel. Our Petition shows that this ignores a basic collateral estoppel exception, well known from the Restatement and applied at federal common law in all areas–differing burdens of proof. This is why we believe XY is a doctrinal outlier, easily reversed.

      Sure, Congress has / had the power to override the federal common law. It did not. If you pan out to inspect the Congressional scheme for IPR as a whole, the Act contains no suggestion of retroactive effect. In our petition, we referred to the old chestnut that “Congress does not hide elephants in mouseholes.” Likewise here.

      Congress instead left the “elephant stall” empty. For IPRs, Section 315 offers a grab bag of IPR effects on district court proceedings. This section never mentions retroactive effect of a final PTAB decision, nor of the cancellation certificate. Section 315 is the only IPR provision entitled “Relation to other proceedings or actions.” That would be the single natural place for Congress to speak to this point. Did it? No.

      Crickets.

      One can’t say Congress was unaware of the differing burdens of proof it was creating. The 2011 House bill for the AIA was approved by that chamber a mere two weeks after the Supreme Court’s i4i decision. The ink was not dry on the well-publicized Supreme Court endorsement of “clear and convincing” for district court actions, when the House approved what became Section 316(e)–“preponderance” for the agency process.

      And what of that cancellation certificate? This is not germane to this Petition, but people might wonder. Without a legal basis for asserting retroactive effect, current attitudes smack of received wisdom or wishful thinking. “The patent must be void ab initio since the PTAB invalidated the claims,” one hears. But remember–the Director can “cancel” claims, not “invalidate” them.

      There has never been a sound explanation why an agency’s claim cancellation supposedly might “moot” or render “void” the affected patent claims as invalid, with respect to past damages. A suit for damages by its very nature demonstrates a continuing, unredressed injury; such cases are therefore rarely moot. See 13A C. Wright, A. Miller & E. Cooper, Federal Practice and Procedure § 3533.3 (2d ed. 1984) (“The availability of damages or other monetary relief almost always avoids mootness, while much more difficult questions may be presented by demands for injunctive, declaratory, or other specific relief.”).

      What about Fresenius? Nope. That was a reexamination case, not IPR, but what if it applied? The voidness conclusion in that case (focused on the cancellation provision for reexams) hinged on analogies to 19th and 20th Century reissue cases. That reasoning (a 2-1 decision like XY) was flimsy out of the gate. Reissue always involves a voluntary surrender at the outset of the process. It makes sense that cancellation after reissue might impact a surrendered patent claim retroactively, because the patentee gave it up as the price of admission. But the same does not follow in a proceeding (like IPR) involving no voluntary surrenders by a patentee (like Molly).

      How about Oil States? Again nope. Nothing in the majority decision reflected on the retroactive effect (or not) of cancellation. Its FN3 justified saving IPR from unconstitutionality by analogy to a long tradition under law allowing one agency–the Bureau of Land Management–to “cancel” public land leases that were invalid “ab initio”. But there is the rub. BLM expressly states that when it does “cancel” invalid-ab-initio public land leases, the effect does not begin until the lessee receives the cancellation. 43 CFR 3213.16.

      So we’re done. Oil States if anything supports prospective-effect only effects of the cancellation certificate, elsewise the separation of powers problem would reemerge. The received wisdom / wishful thinking that cancellation in the IPR statute–as Congress actually wrote it–has some sort of retroactive effect won’t survive analysis.

        1. 2.1.1.1

          Once the Fed Cir affirms the PTAB, the certificate cancelling the claims is only a ministerial act. I don’t think the timing makes any difference to the outcome here–collateral estoppel.

          1. 2.1.1.1.1

            Best answer yet.

            1. 2.1.1.1.1.1

              This strikes me as a distinction without a difference and avoids the counter points provided with a bit of a strawman of “but that is only a ministerial act,” as no one is arguing otherwise.

              Your “best” is yet again merely indicative of your anti bias, Paul.

              1. 2.1.1.1.1.1.1

                It only “strikes you” that way because you are fooling yourself into believing that an affirmed finding of unpatentability means that those same claims can nonetheless still be asserted in a district court litigation. They cannot. Any contrary rule would render the IPR process moot.

                1. It only…
                  Because you are f00lish yourself..

                  No and no.

                  Did you bother at all with the post of 2.1?

        2. 2.1.1.2

          If this cert petitioner is seriously arguing that IPR claim cancellations are not retroactive, note that this would mean that the 35 USC 315(a)(2) “Stay of Litigation” provision would make no sense.
          [Would reexamination and interference claim cancellation decisions allegedly not be retroactive either?]

          1. 2.1.1.2.1

            ? How so?

            1. 2.1.1.2.1.1

              If all claims in a patent are cancelled, then the “res” of the patent ceases to exist, one might think immediately upon cancellation.

              With no res remaining…… there is nothing to talk about and one might think certain filings…. frivolous.

              1. 2.1.1.2.1.1.1

                No Chrissy – what you post here does not touch the point of Paul’s that I am questioning.

                Your post (no res remaining) is a point-in-time and forward.
                Paul’s (and also, Litig8or’s) assertions deal with retroactivity.

                There is a HUGE difference between the two.

                Neither Paul nor Litig8or appear to want to address the points on the table (see post 2.1).

        3. 2.1.1.3

          Dennis, go pull my comment on Hayburns case and the best way to challenge Oil States out the trash box, please. Just because of the noted failure of SCOTUS to jealously guard their power and because of that they suck (a valid point) should not put my otherwise spun gold into the trash bucket.

          1. 2.1.1.3.1

            Has not happened…

      1. 2.1.2

        You really are saying (I think) that the certificate actually makes no difference, because there is no express statutory provision as to its retroactive effect, and that this all must turn on collateral estoppel, which, under any recognized formulation, clearly takes into account the respective legal burdens of the prior and present determinations and doesn’t find CE if the prior burden was lower (e.g., criminal vs. civil, or preponderance vs. clear and convincing). Makes sense. But then again, why do the criteria for a stay for IPR proceedings include the possibility that the IPR will simplify the issues, if, at the end of the day the final written decision in the IPR, even after appeal, actually won’t resolve the validity of the same claims as asserted in the parallel litigation? Perhaps the stay factors, being judge-made, are based on erroneous reasoning as well. The Supreme Court could redetermine all of this, but unless I am completely missing something, it seems unlikely they would do so (much as I wish they might).

        1. 2.1.2.1

          IPR simplifies litigation under this corrected framework two ways: (1) infringers who lose will be estopped, and (2) patentees who lose can’t get injunctions. So there is still fulfilment of this part of the legislative purpose, even if we all wake up to recognize that the statutory scheme keeps past damages claims intact.

          1. 2.1.2.1.1

            Well, if this is turns out to be the law, it would no longer make much sense to bring an IPR or PGR against an NPE, since the only possible impact in such a case (other than foreclosing new lawuits) would be to estop the petitioner. Seems odd to me that Congress would have intended this, given its expressed object of simplifying the domain of patent disputes. Also, based on this “corrected framework,” the patentee could conceivably still go out, after the certificate cancelling claims, and bring an entirely new suit against another target for past damages under thoise claims – such that the result of the IPR becomes in effect nothing more than an expiration with a six-year S/L tail. Indeed, what is the point of an IPR on an expired patent, which is specifically allowed for? Guess that would be contrary to the corrected framework as well. Hard to see this working out.

        2. 2.1.2.2

          Once the PTAB finds claims unpatentable and that decision is affirmed, the patent ceases to exist (actually the certificate must be issued, but as I said that is a merely ministerial act). If the patent no longer exists, then the different standard for showing invalidity becomes irrelevant.

          1. 2.1.2.2.1

            True, the cancelled claims cease to exist (certainly as something with any ongoing effect). But, did they ever exist, i.e., exist (and also give rise to damages) before the cancellation? I perhaps naively thought that the damages would only be locked in if embodied in a judgment that became final and nonappealable prior to the cancellation, but not otherwise, though why this would be the case, I can’t tell you. I had a law professor who made a big point about the difference between void and voidable, and maybe this is an example of that.

            1. 2.1.2.2.1.1

              A fascinating debate. Just ignore the one who styles herself anon. Everybody else does.

              1. 2.1.2.2.1.1.1

                My friend with the Shifting historical pseudonyms (your last 0bsess1ve choice was The Best),

                You “advise” that which you have shown yourself — personally — to simply NOT be able to do.

                The irony is delicious.

                1. Ah, I see that you have shifted to the Best Historical Pseudonym in your list.

                  But Shifty, and you know I have asked this before and yet to receive an answer, who is this “we” that you refer to?

                  🙂

                  (ps, you hang on to EVERY word I utter — so your attempted distinction here falls flat)

                2. The “late” release emphasizing the nature of my pal Shifty…

                  Can you all say, “Obsess1ve.”…?

          2. 2.1.2.2.2

            Your rush to “irrelevant” misses ALL of the points presented above.

            Can you address those points (instead of pretending that no one raised them)?

      2. 2.1.3

        i4i “clear and convincing” standard rests on Section 282’s presumption of validity, which is obviously statutory. Congress of course could repeal it, including implicitly.

        So its not about congress overriding common law. Its about congress overriding itself. Which is a bit different.

        Do you believe congress intended the statutory presumption of validity to apply to patent claims which have been canceled as unpatentable in an IPR? That is the question. (And it seems crazy to me to think that congress intended that a claim deemed unpatentable by PTAB is somehow subject to a presumption of validity) If not, then there is no clear and convincing standard at issue here (for claims that have been canceled as unpatentable), and the “differing standards of proof” problem goes away.

        1. 2.1.3.1

          On the Ocho (sounds like you may be a football fan, and I hope you appreciate the Dodgeball reference),

          You are close.

          But — significantly — off.

          Congress, in passing the AIA, engaged in a legislative Takings when they set up the IPR system.

          This can be seen when the particular stick from the bundle of personal property rights (existence AND level of that presumption of validity) is taken.

          That taking does NOT occur at the point you are referencing — judgement.

          That taking occurs when the Granted personal property right is clawed back into the domain of the Executive Branch’s administrative agency: at the Institution Decision point, prior to any judgement on the merits.

          As you may remember, I had this discussion (numerous times) with the late Ned Heller, who for other reasons, would not accept the plain legal logic I presented.

          1. 2.1.3.1.1

            Whether its a “taking” to lower a standard of proof (administratively or legislatively) is an interesting question. I’d welcome citations on the issue.

            The point still stands though that Greenspoon’s entire premise is based on the argument that: patents which have been canceled by PTAB are nevertheless entitled to the common law/statutory presumption of validity, and therefore require clear and convincing evidence to invalidate in court.

            This premise has a lot of holes. As SCOTUS noted in i4i, the presumption of validity traditionally applies to “patents regularly issued” and a “patent that is fair on its face.” Its pretty easy to conclude that a patent that has been canceled by the PTAB is neither of these. Also, the rationale for presumption of validity is that there is a “presumption that the PTO did its job.” That rationale makes little sense when the PTO, at the same time, is telling you the claims are not valid.

            Its very easy to reach a conclusion that, “once PTAB cancels a claim, it is not entitled to a presumption of validity.” (That may be a taking, but thats not at issue here). At that point, Greenspoon’s entire case falls apart, because clear and convincing standard would not apply to invalidating such claims, and there would thus be no differing standard of proof in court, and thus no barrier to issue estoppel.

            1. 2.1.3.1.1.1

              I’d welcome citations on the issue.

              It’s a blog – I’m not going to do that legwork, but I have dealt with Takings law enough to know my point is solid – and most definitely applicable here (your post presumes otherwise – and if you push for citations, I would push back and ask YOU to provide citations for your position).

              The point still stands though that Greenspoon’s entire premise is based on…

              No, no it is not.

              The points above (post 2.1) are NOT so tied to this notion that the item IN AN IPR still has some type of stick in the bundle of property rights of a granted patent — particularly of that existence and level of presumption of validity.

              As I noted – that stick IS TAKEN at the institution decision point.

              It simply no longer exists before any decision on the merits in an IPR.

              THAT is a critical point in this discussion (your attempt to state that it is not at point here is simply in error). The reference to the i4i case does NOT read as you attempt, because your “justification” for the loss of that existence and level is based on the later-in-time decision on the merits; but that is simply NOT when that stick disappears. The IPR decision on the merits rests on the FACT that that stick in the bundle of property rights is already gone. You cannot pretend that the decision on the merits is the same as if that stick were still in the bundle of property rights.

              You must acknowledge the timing factor. You cannot properly reach your “very easy to reach a conclusion that…” because the Office determination IS MADE on a differing standard of proof – and that difference occurs at the institution decision point PRIOR TO the Office determination on the merits.

              There is NO WAY AROUND the difference due to timing and WHEN the taking occurs.

            2. 2.1.3.1.1.2

              Whether its a “taking” to lower a standard of proof (administratively or legislatively) is an interesting question. I’d welcome citations on the issue.

              It is less interesting than one might think. Firstly, the question is premised on a misnomer—viz., that the “clear & convincing” standard disappears when the IPR is instituted. No such presumption vanishes upon institution. It has always been the case that validity contests in the BPAI/PTAB (interferences, re-exams, IPRs, etc) are decided on a preponderance standard, while validity contests in court are decided on a c-&-c standard. There has, in other words, never been a “stick” in the patentee’s bundle that permits the patentee to insist on c-&-c proof in front of the PTAB.

              The institution decision, however, does not take away the patentee’s right to insist on c-&-c proof in an Art. III court (which is the only forum in which the patentee has the right to insist on such proof). If the district judge decides not to stay the case following the PTAB’s institution decision and the validity challenge goes to trial in the Art. III court, then the defendant must still prove invalidity by c-&-c evidence, notwithstanding the PTAB’s institution of the parallel proceeding. No stick, in other words, is missing from the patentee’s bundle after institution that had ever been present before institution.

              Second, even if a stick were missing, that is not a “taking” in the constitutional sense. “[W]here an owner possesses a full ‘bundle’ of property rights, the destruction of one ‘strand’ of the bundle is not a taking, because the aggregate must be viewed in its entirety.” Andrus v. Allard, 444 U.S. 51, 66 (1979).

              1. 2.1.3.1.1.2.1

                Now Greg (“I Use My Real Except When I Don’t) DeLassus is being both a F001 AND a

                L

                I

                A

                R

                The F001 part comes from him wanting to comment on what he professes to be HALF aware of — the conversation that he cannot see.

                The

                L

                I

                A

                R

                part comes from him misrepresenting the state of the law vis a vis BOTH Takings (his Andrus “aggregate” simply misplays the recent i4i case), as well as his assertion of “misnomer” being completely wrong – getting what the actual Act of Grant does and the differences between a voluntary surrender of ALL of the sticks in that bundle of property rights when a patent holder agrees to re-enter the Executive Branch Administrative domain (short of the Congressional provided ability to enter an Article III court in challenge WITH that full basket of rights.

                He is simply wrong when a Patentee is dragged – against their will back into that Executive Branch Administrative domain – and in the IPR setup – by a party that could even LACK STANDING under the Article III domain.

                He is simply wrong about his assertion of “never was.”

                He is simply wrong about his assertion that “only in Article III” could that stick in the bundle “be asserted.” It is just NOT a question of WHEN a patentee COULD assert – it is whether or not the patentee HAS that stick TO assert.

                The fact of the matter is that UPON INSTITUTION, that stick does not exist anymore. THAT is how the AIA was written, and THAT is – in fact – a legislative taking of a critical stick in the basket of property rights of the granted patent. See i4i.

                And will someone who knows him personally, please be a dear and stop Greg from continuing to so crater his professional reputation (whatever left of it, I mean – it’s not like Greg “Dozens” is some type of special cat with a dozen lives).

  14. 1

    It seems that PTAB and parallel district court proceedings almost invariably set up a “race condition” that manifests in various ways, including the (almost now caput) Fintive doctrine, district court stay practice upon IPR institution (or earlier), what happens to the district court case after an adverse final written decision in the PTAB (not to mention the separate question of whether/how PTAB matters are presented to a jury), and the timing of respective appeals. IPRs and PGRs are supposed to be a more lightweight way to challenge and potentially invalidate poor patent claims. PTAB cancelation amounts to a determination that the claim(s) ruled upon should never have issued. Once there is the IPR certificate, after the PTAB appeals(s) have been exhausted, it would appear to be final bar for the patent assertion, and retroactive as well, at least to the extent there is no final judgment on infringement of the patent as to which appeals have been exhausted. However, where the invalidation is all complete but for the issuance of the certificate, then it is presumptively only a matter of passage of time until it does issue. The district court could have stayed the proceedings until the certificate issued. The fact that it didn’t, and perhaps jumped the gun by over-applying collateral estoppel, strikes me as harmless, given that the IPR certificate would eventually have come forth in any case. The underlying problem is that IPRs and the abbreviated process by which they are decided, appealed, etc., is less than optimal (for the patent owner), but unless there is some further constitutional flaw yet to be found in the IPR/PGR process, the remedy for the shortcomings of these procedures unfortunately lies with Congress (and good luck with that!). Regrettably, I can’t see any outcome here other than cert. denied. This inventor probably got screwed by a slipshod, hindsight obviousness finding that was glossed over by an overburdened appellate court, where the inventor happened to exhaust her appeals from the PTAB before the district court case could be resolved. The whole field of parallel and successive patent cases (e.g., Kessler) is conceptually very shaky.

    1. 1.1

      Address Hayburns case. The timing issue is an irrelevant hypothetical.

      1. 1.1.1

        ?

        Not sure I get your point.

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