Cancelling a Patent Claim

by Dennis Crouch

The pending case of Jump Rope Systems v. Coulter Ventures is fascinating to me as someone who teaches both property and civil procedure. The basic questions: (1) As an inter partes review (IPR) proceeding draws to a close – toward cancellation – at what point are the claims no longer enforceable? (2) What is the effect of cancellation, in particular, is it like canceling a magazine subscription where the former subscriber isn’t off the hook for past-due bills; or, is it like an annulment – an Ab Initio Extinguishment?  The case also (3) raises a straight-up due process challenge to the IPR system.

A typical IPR where the petitioner prevails includes the following three-step sequence:

  1. Unpatentable Decision: PTAB issues a final written decision concluding that the challenged claim has been proven unpatentable with a preponderance of the evidence.
  2. Affirmed on Appeal: On appeal, the Federal Circuit affirms that judgment.
  3. Certificate of Cancellation: Once the appeal is complete, the USPTO Director then issues a certificate canceling the claim. 35 U.S.C. 316.

The first question — if the patentee is involved in concurrent district court infringement litigation, at what step is the patent no longer enforceable?

Clearly, the patent claim is canceled at Step-3 and by that point cannot be enforced going forward. The Federal Circuit though has held that the claim is already unenforceable at Step-2 based upon the court’s questionable application of collateral estoppel.   I call it questionable because of the different standards  of proof applied in the PTAB vs the District Court.  The affirmed PTAB decision found the claim invalid with a preponderance of the evidence.  But, in district court litigation invalidation requires clear and convincing evidence, a substantially higher standard. And, a conclusion of invalidity under a lower standard does not conclusively tell us that the same claim would have been proven invalid under a higher standard.  Using a standard approach such as found in the Restatement (Second) of Judgments, collateral estoppel would not apply here because of the difference in standards.  Here, we tend to use an exacting standard for res judicata principles because of their due process implications — the result bars a party from making their argument in court.  The Federal Circuit’s fudging of the rule makes some practical sense – the statute appears to make the issuance of the cancellation certificate a ministerial process with its “Director shall” language.  And yet, fudging the rules in a way that undermines due process is troubling.  I’ll note here that courts appear to generally be waiting for the appeal decision before announcing preclusion, although it is unclear whether that approach is somehow required or simply prudential (since district courts generally see the Federal Circuit as unpredictable).  I’ll also note that I previously called out the Federal Circuit for improper expansion of preclusion law with regard to the Kessler Doctrine – they did not listen to me there either.

The second question at issue in Jump Rope Systems involves the impact of cancellation — what about infringement that occurred (and lawsuits pending) prior to the cancellation?

The reissue system is a somewhat-close relative to inter partes review and has the benefit of 150 years of case law, including numerous Supreme Court decisions.  With reissues, courts have clearly held that cancellation of claims during reissue render those claims entirely moot.  See, for instance, Moffitt v. Garr, 66 U.S. 273, 283 (1861) and Meyer v. Pritchard, 23 L. Ed. 961 (1877).  But, the reissue system has a significant difference — a reissue begins with a patentee surrendering its patent as required by statute. 35 U.S.C. 251.  It is that surrendering that makes the cancellation of claims in a reissue so dramatic.

With inter partes review, the patentee does not surrender the patent and so we have a potentially different situation.  Still, courts have regularly treated cancellation of claims as voiding the claims backward and forward through time.  But, it is not so clear that approach is correct and there are many situations where the courts have given “cancel” to only prospective effect.  In its briefing, Jump Rope cites a long string of cases in various areas of law as well as simple plain meaning of the word:

Plain English is in accord. “Canceling” a magazine subscription stops future deliveries, but past issues remain in hand.

Jump Rope Reply Brief. If Jump Rope wins on this, an IPR petition that cancels claims would only cut-off prospective damages and injunctive relief.  The patentee could still recover pre-cancellation damages so long as the defendant failed to prove the claims invalid in district court at the higher standard.

= = =

The briefing also includes an important due process challenge — arguing that the use of IPRs to prevent infringement lawsuits violate due process.  In Oil States, various the patentee raised various challenges to the system, but did not bring a due process challenge. Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365 (“We emphasize the narrowness of our holding. . . . Oil States [has not] raised a due process challenge.”).

Here, the patentee makes two arguments:

  1. “First, front-line adjudicators are not sufficiently insulated from political forces. United States v. Arthrex, Inc., 141 S. Ct. 1970, 1993 (2021) (Gorsuch, J., concurring in part & dissenting in part) (‘The Court’s decision in Oil States allowing executive officials to assume an historic judicial function was always destined to invite familiar due process problems. . . . [P]owerful interests are capable of amassing armies of lobbyists and lawyers to influence (and even capture) politically accountable bureaucracies.’) (citations and internal quotation marks omitted).”
  2. “Second, by not permitting traditional live cross-examination of witnesses
    (instead, relying on written depositions), IPR procedures violate due process in view of the importance of the property right at issue. See Goldberg v. Kelly, 397 U.S. 254, 269 (1970) (‘In almost every setting where important decisions turn on questions of fact, due process requires an opportunity to confront and cross-examine adverse witnesses.’)”

Great questions from petitioner.

Robert Greenspoon (Dunlap Bennett) is counsel for the patentee Jump Rope Systems. Louis DiSanto (Banner Witcoff) is representing the accused infringer Coulter Ventures.   Their offices are a few blocks apart in downtown Chicago.

42 thoughts on “Cancelling a Patent Claim

  1. 8

    Anyone know if the cancellation is not retroactive argument has been raised in the context of ex parte reexams? The article mentions IPRs are different than reissues because patentee surrenders their patent in a reissue. Ex parte reexam, like IPR, does not require patentee to surrender the patent.

  2. 7

    Dennis, you say the PTAB finds the claims “invalid.” It finds them unpatentable. Thus, the issue in litigation is invalidity by clear and convincing evidence, but in the PTAB it’s unpatentability by preponderant evidence (thankfully, both now under Phillips not BRI). I think that distinction undermines the argument that it’s not “retroactive” since that, precisely, is what it is: unpatentable from the start.

    1. 7.1

      Prof Hricik,

      Does not your re-labeling merely beg the question?

      That is, the change in label does not (as you assert) automatically make the case of “unpatentable” ab initio. It is still arguable that it is (time wise) at the point of determining “unpatentable” that such then forward in time is the condition.

      Otherwise, there is (theoretically) NO ‘securing’ (as dictated by the Constitutional clause) of ANY patent right. Ever. The possibility of being dragged back into the Executive Branch administrative agency forecloses any sense of ‘secure,’ and the prior legislated (and not changed) notion of existence and level of presumption of validity is quite meaningless.

      The AIA was p00rly written, and this whole “post grant” mechanism was one of the w0rst parts.

      Truly sad thing is, I had informed all of my congressmen at the time that the AIA was going through the Legislative Branch, but to no avail.

      1. 7.1.1

        I agree with your points but, absent time to really look at the statutory text way more than I want to!), I’d argue that a PTAB finding of unpatentability necessarily means that, as of the date of issue of the patent based what had been available prior art, the claim had been unpatentable. (And I agree on the issues with the AIA. My favorite is the “compromise” about best mode, but I digress.).



          So, let’s assume I own the 123 patent. I sue Bob. Bob wins an IPR and for simplicity’s sake, its only claim is found unpatentable. The argument is that Bob may have prevailed under a preponderant evidence standard (and Phillips) but that isn’t collateral estoppel (issue preclusion, to be precise) in the suit: he needs to prove invalidity under Phillips by clear and convincing evidence, and the IPR judgment does not do that. That, to me, is a settled application of basic issue preclusion principles.

          Does anything in the statutory language indicate Congress meant something different. As Dennis noted from the briefs, the plain meaning of “cancel” would suggest only future damages are lost (and equitable relief, obviously).

          However, does Congress’ use of the word “unpatentable” rather than “invalid,” indicate Congress intended a different impact than invalidity (which bars any damages, past or future relief). Otherwise, Congress would have said something like the PTAB should see if a claim is “invalid under a preponderant evidence standard” or something like that.

          On the other hand, Congress could have put “unpatentable in an IPR” in the list of defenses to infringement, but did not.

          Final random thought: What if I sue Susie? Can I get 6 years of past damages (assuming marking/notice/etc.)? If not, why not?


          A “preponderance of the evidence” standard was used for questions of patentability raised during an interference. The patents were not declared unenforceable from issuance.

          An IPR can be filed any time during the life of a patent (after post grant period expires). If the patent was deemed unenforceable from issuance, that could have dire consequences.

  3. 6

    IWasThere always likes to bring up Hayburn’s Case, 2 U.S. 409, 410 n.1 (1792), which explains that it is not permissible for a law to be structured such that the judgments of the Art. III branch can be set aside or undone by officers of the Art. II branch. The more I think about it, the more I am convinced that he is onto something in his critique of the current schema of how the district courts and PTAB interact.

    Where the trial judge stays the trial to await the PTAB’s decision. Where, however, the trial judge declines to stay the trial and reaches a decision before the PTAB, it is Hayburn-problematic to set aside that district court’s judgment in view of an Art. II tribunal’s decision.

    1. 6.1

      Where the trial judge stays the trial to await the PTAB’s decision.

      Sorry, I seem to have accidentally deleted a block of text in the course of editing. The quoted sentence should have ended “…, that is all fine because the Art. II tribunal delivers its decision before the Art. III court reaches a decision.”

    2. 6.2

      Nobody thinks that a final judgment reached in art III court is affected by a PTAB decision

  4. 5

    Poor write-up, Dennis. You didn’t say what kind of case this is or where it’s pending. Is it an IPR? An appeal of an IPR? DC litigation? Appeal of DC litigation? A petition to SCOTUS for cert? Would it have been so difficult to provide links to the relevant documents?

    First rule of journalism, that I learned when I was in fourth grade: tell the reader who, what, where, when, why and how.

  5. 4

    “But, in district court litigation invalidation requires clear and convincing evidence, a substantially higher standard.”

    You say this, completely taking for granted whether it is actually true for claims that have been deemed unpatentable by the PTO. The clear and convincing evidence standard arises from the common law presumption of validity, which in turn is based on a “presumption the patent office did its job.” Query whether, when the patent office itself says a claim is unpatentable, the “presumption of validity” (based on deference to the patent office) applies. I think you will have a hard time convincing yourself that it makes sense in this context. You will also see the presumption of validity has always been qualified to patents that are facially valid, or similar language. It has never been absolute as you are trying to make it.

    To the extent you think statute extended the common law presumption of validity even to cases where the basic rational behind it (“deference to patent office”) fails, then its a matter of implied repeal.

    1. 4.1

      “The clear and convincing evidence standard arises from the common law presumption of validity, which in turn is based on a “presumption the patent office did its job.””

      I can’t remember his evidence, but Greg disabused me of this idea awhile ago.

      1. 4.1.1

        Well, I am glad to know that I have disabused at least one person of this mistake. Unfortunately, the idea that the requirement for C&C evidence derives from the fact of examination by the USPTO has become one of those things that “everyone knows,” such that it is largely pointless to mention that it is not true. The effort to correct the record is like spitting into the ocean.

        For the record, the C&C standard applied even during those intervals when the U.S. did not have an examination system. The requirement for C&C evidence for invalidity derives from the intuition (implicit in our notions of substantive due process) that it should require more proof to avoid liability by destroying the patent than is required to avoid liability simply based on a noninfringement positionjust as it requires more evidence to avoid trespassing liability by proving P’s claim of ownership is faulty than by asserting that you never went onto P’s land.

      2. 4.1.2

        That would be news to SCOTUS, too.

        “‘The presumption of patent validity had long been a fixture of the common law. According to its settled meaning, a defendant raising an invalidity defense bore “a heavy burden of persuasion,” requiring proof of the defense by clear and convincing evidence.”

        “[The] presumption of validity of patents,” what, until that point, had been a common-law presumption based on “the basic proposition that a government agency such as the [PTO] was presumed to do its job,”

        i4i is pretty straightforward.

      3. 4.1.3

        Cardozo’s opinion in Radiocorp alsi explicitly links the “convincing” standard to the presumption of validity, and further conditions the presumption of validity on the patent being “regularly issued”.

        link to

        “A patent regularly issued … is presumed to be valid until the presumption has been overcome by convincing evidence of error. ”

        Its not crazy to think that a patent cancelled by PTO is not one that is “regularly issued.”

        (But yes, maybe a few unanimous SCOTUS opinions, as well as a few decades of Fed Cir precedent (and particularly Judge Rich) is wrong and Greg is right…)

  6. 3

    decide or announce that (a planned event) will not take place.
    “he was forced to cancel his visit”

    (of a factor or circumstance) neutralize or negate the force or effect of (another).
    “the shipping costs canceled out any savings”

    3. a new page or section inserted in a book to replace the original text, typically to correct an error. “a cancel title page”

    Both 2 and 3 suggest that an error was always an error, and the recognition of the state of error recognizes the error’s existence at all times.

    As to the due process claims?

    The patent system is a lawful creation of Congress, and the IPR system is a lawful creation of Congress (i.e if the IPR system has been held Constitutional), so due process seems to be implied.

  7. 2

    1. Once the Fed Circuit affirms the PTAB, the claim is dead, including in parallel district court litigation. The PTO’s ministerial act of cancelling the claim is of no moment to this analysis. The standard of proof for invalidating the claim is irrelevant (otherwise the IPR system makes no sense).

    2. If the PTAB finds a claim unpatentable and the Fed Cir affirms, then the patent owner cannot have any relief whatsoever under such claim. (One caveat: if the patent owner in the past received damages in infringement cases that are closed and can no longer be appealed, they can keep those).

    1. 2.1

      And past royalty payments? Are those to be paid back? An IPR can be filed at any time past the post grant period.


          Methinks thou must be thinking of PGRs, not IPRs, Sir Agent. Compare 35USC 311 and 35 USC 321.


            Yes, and contrary to PatentMom’s other suggestion, IPRs can indeed be filed after patent expiration. I am having difficulty understanding how any infringement claim not reduced to judgment (regardless of when it accrued) might be enforced after cancellation. Wish it were otherwise, but a result to the contrary would be surprising to me. A law professor I had many years ago said that many questions throughout the law come down to the difference between what is void as opposed to voidable. Wise prof.


              Thanks for the clarification. I was focusing more on the fact that there is no time limit, unlike PGRs and European oppositions.

  8. 1

    A so recall, the late Ned Heller consistently vanished when I provided him the ‘template’ for a due process challenge based on legislative takings AT the institution decision point (well before any actual decision on the merits) — in regards to one of the sticks in the bundle of property rights (an important one taken all the way to the Supreme Court – see i4i).

    1. 1.1

      The “presumption of validity” in district court case exists only due to a statute. Another statute can constitutionally remove that presumption for administrative actions. No person has a general vested right in legislation never changing. I get your template but it has a zero percent chance of prevailing in a federal court.

      1. 1.1.1

        Except the changes made by the AIA did NOT aim to change the section of law creating that right.

        Once such a right has been created, it is not so easy to take away (think voting rights).

        This is the essence of a legislative takings.


          No “right” was created. The statute (S282) just allocated the burden of showing invalidity to the challenger and provided that a patent shall be “presumed valid”.

          Nothing about IPR changes that presumption anyway – it just sets a preponderance standard for overcoming the presumption, instead of clear and convincing evidence.

    2. 1.2

      Anon, I’ve seen your “bundle of sticks” arguments for years now. IF the right case came and was argued the way you’d have it argued, how do you see the current members of this court ruling?

      1. 1.2.1

        How the current members of this Court rule, and what is the correct way to rule may well be two very different things.

        While I recognize that the configuration of the bench is changing, I fear that there remains too much apathy (and for some Jurists, too much antagonism) towards patents.

        After all, what is the count now on certs denied for eligibility cases?

      2. 1.2.2

        Bundle of sticks. First ask him what his own designated expert said about his views after “engaging” with him. The first time or the second time. Your choice. Then ask him why he thinks his “opinion” should matter. He is not a lawyer. Find one. There’s a registry at the PTO.


          ^^^ what is worse than a mindless attempt at ad hominem?

          A: the penchant of my adoring (! – at a minimum, 0bsess1ve) friend with the shifting historical pseudonyms to repeat non sequitur non sensical rants that I have long ago debunked.

          But Shifty, this does fall into how I have enterprised off of your choices of how You post.

          So thank$ for that!


                Your choices in your two posts here ADD to how I have enterprised off of your odd 0bsess10n with me – so again thank$$ for that.

                Certainly, if you were to replied to my comment at, you would have been (merely) blatantly in error.

                By choosing instead to reply to my post at, you doubly err – as this IS a continuation post (read that as sub-thread — it is a misnomer to insert “TO” when the operative description would be “ABOUT”), AND there is nothing in my upbeat joining in that speaks either to any 0bsess10n of me with you OR any indication that the pejorative of “snowflake” makes any sense.

                Rather, your choice reflects projections from you.

                You are just not very good at this.

                1. Snowflake, Do you prefer the first or the second assessment of your cognitive abilities specified by your own designated expert when you attempted to “engage” with him?

                  What a maroon.

                2. “AND there is nothing in my upbeat joining in that speaks either to any 0bsess10n of me with you OR any indication that the pejorative of “snowflake” makes any sense.”

                  People in the US never say “upbeat joining,” Snowflake. What do they think Snowflake means where you are?

                  What a maroon.

                3. Try again Shifty — you parsed the phrase incorrectly (“joining in” is the verb phrase, upbeat being the adverb describing how that joining in was done).

                  Hence — as usual — your attempted denigration is simply more of a projection than anything else.

                  You really are not very good at this.

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