by Dennis Crouch
The pending petition in Nike v. Adidas asks the Supreme Court whether it is proper for the Patent Trial & Appeal Board (PTAB) to raise sua sponte new grounds of unpatentability against a substitute claim added during an inter partes review proceeding. The government, as a respondent in this case, argues that the PTAB can create its own reasons for rejecting newly-added claims so long as the patent owner is given sufficient notice and a chance to respond.
However, the case intrigue has recently heightened due to a somewhat chaotic saga involving the PTAB. Key figures involved include former PTAB Chief Judge Ruschke, current Chief Judge Boalick, and Judge Michael Fitzpatrick, who was recently justified as a wronged-whistleblower.
The Supreme Court petition was submitted amidst revelations of secretive maneuvers within the Board. These questionable practices include an abrupt panel expansions and judge replacement without notifying involved parties. Specifically, in the Nike v. Adidas IPR, the Board panel was first expanded to include Chief Judge Ruschke and then Deputy Chief Judge Boalick after all parties had finished their arguments and opinion writing had begun. The process also witnessed the replacement of Judge Fitzpatrick after he expressed discontent over the panel’s expansion, prompting his removal from all America Invents Act (AIA) cases.
Judge Fitzpatrick’s ousting ignited a legal battle against the USPTO, which recently concluded with a victory for Fitzpatrick at the Merit Systems Protection Board (MSPB). Fitzpatrick alleged that the USPTO had manipulated the inter partes review process in the Nike v. Adidas case, inappropriately expanding the PTAB review panel and delaying the final decision. Furthermore, Fitzpatrick’s whistleblowing disclosures extended beyond the PTAB, unearthing a misrepresentation by the Solicitor General to the Supreme Court regarding the frequency of expanded panels during the Oil States proceedings. In briefing in the case, the Solicitor General recently apologized to the Supreme Court, expressing regret for the unintended misinformation. The SG’s brief indicates that they only recently learned of the underlying drama.
In light of these troubling revelations, the Solicitor General suggests the Supreme Court grant, vacate, and remand Nike v. Adidas, offering the petitioner a chance to present arguments based on this new information to the Federal Circuit, and allowing the Federal Circuit to consider these points in the first instance.
Interestingly, this practice of unannounced judge replacements parallels the Federal Circuit’s tactics in the infamous Novartis case. Although the Adidas name is still on the case, the company has formally requested not to be involved in the appeal, citing a settlement reached with Nike.
Totally off topic, but it just occurred to me how strange it is that we are seeing discussion of a cert. petition from Nike, but we have not yet seen a write-up about the actual Prince v. Warhol decision. Fair use is not of interest?
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June 8, 2023 at 4:29 pm
“N” and K from the New York Times is (thankfully) behind a paywall.
As for the Fair Use angle, I am indeed awaiting the pundits views — especially in view of comparing and contrasting this with the Google v. Oracle case.
Looking in from Europe, inevitably I observe IPR practice through the lens of the EPO post-issue opposition procedure that has been operating since 1978. Interestingly, the home jurisdiction of one of the parties here is Germany.
From the get-go, in 1978, the dilemma for the EPO is what to do when a party files its grounds of opposition but then settles with the patent owner and withdraws its opposition, leaving the patent as granted unamended. Given the settlement between the parties, this leaves the patent threatening every other competitor except the erstwhile opponent. Cosy, no?
So should the EPO continue the opposition “of its own motion”, for example when the validity of the issued claim is egregiously lacking? Under the AIA, what must the USPTO do? Or does it have a discretion, what to do, in the public interest?
An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. 35 U.S.C. §317.
Thanks for that concise and clear answer. But you are wrong (at 8.2) about the bureaucrats in Europe. Even there, post-grant just as much as prior to grant, there is always a right of appeal to a judicial instance. What is it that leads you to think otherwise?
In the American tradition, the way to determine if an “issued claim is egregiously lacking…” is to prove the granted property right is unlawful by clear and convincing evidence before a jury of citizens. This sort of adjudication provided the certainty of title for substantial private investment and an abundance of innovation from diverse individuals — citizens and foreigners alike. Then in 1980 the U.S. began following Europe in allowing bureaucrats to revoke issued patents, eventually destroying the U.S. patent system with the 2012 establishment of a full-fledged corporate-captured administrative tribunal, that now finds “errors” in 84% of the patents they review.
“eventually destroying the U.S. patent system”
Sounds like a job for Supernewman! And her trusty sidekick, Balloon Boy.
Sure, with moral support of our “glibertarian” forefathers like Thomas Jefferson and George Washington who gave us the 1790 patent act granting patents to any “he, she, or they, [who] hath or have invented or discovered any useful art, art, manufacture, engine, machine, or device…”
“Looking in from Europe, inevitably I observe…”
…an uncanny ability to apply the spectacles of an EPO-Uber Alles shill.
Because it’s Hayburn’s case. And all the reasoning behind Hayburn’s case as to why mixed power is the road to destruction of ordered liberty. Story and Marshall, held it so again and again and again – the theory of contract drives Constitutional jurisprudence. But we are all so enlightened now with our modern SCOTUS for 200 + years we we all just stupid to as to ‘public choice theory’ whatever that is.
A few thoughts:
1. Bravo for Fitzpatrick. Great to see a gov employee willing to risk their job by standing up for what is right. You go Michael.
2. “The SG’s brief indicates that they only recently learned of the underlying drama.” This is a lie. SG staff go through all cases — start to finish — with a fine-tooth comb before writing their briefs. No way they missed this mess. They simply got caught with their hands in the cookie jar.
3. The only way to end these PTAB shenanigans is to end the PTAB experiment. The need for repeated whack-a-mole cancer treatments have simply got to end.
4. What anon, Breeze, ipguy, and dcl said.
“The only way to end these PTAB shenanigans is to end the PTAB experiment.”
LOL.
This is why you need to stay in the shallow end of the pool, with Billy. Don’t forget your floaters!
Yes, the PTAB abomination must go, otherwise this will spread to every agency.
Maybe you should carefully define “this” and, more importantly, describe how “this” thing you refer to “spreads”. Then explain the urgency around (LOL) the PTAB.
Seems to make more sense to start at the top if you are really concerned. Also you forgot to mention that it’s the DEI policy which is responsible, right?
LOL
If one abolishes the PTAB, who will adjudicate interferences and ex parte appeals? Is your idea that the §145 suit should be the only way to resolve an impasse with the examiner?
Thanks Dozens — to insure clarity, it’s IPRs and PGRs which must be abolished. Interferences ex parte appeals would remain.
How would this resolve the problem to which iwasthere purports to object? If the PTAB remains in place for ex parte appeals, it will still be subject to the director stacking the panels. If the PTAB remains for interferences, then it will still have the ability to circumvent Hayburn’s case.
It seems to me that the real solution to iwasthere’s (quite legitimate) objections is not to abolish the PTAB. Rather, the proper solution is to hive it off from the PTO and set it up as a proper Art. III court. It would need its own FRCP (so that appeals and IPRs do not get lost in an endless morass of discovery). I would probably also put in its statutory charter that one needs a PTO reg. no. to be nominated to this particular Art. III bench.
One way or the other, however, abolishing the PTAB will create as many problems as it solves, while abolishing IPRs and PGRs will not really solve the problems that iwasthere identifies.
The middle “I” in “III”
“God almighty. Is there any conspiracy theory that conservatives won’t eagerly follow off the cliff of common sense?”
Word of advice to Drum (and Greg), if you are going to throw about the “conspiracy theory” charge, please stop feeding those theories such that EACH of them are shown to be true.
Hint: stop Sprinting Left and bandying about how bad “conservatives” are.
See also: link to patentlyo.com
Drum — like Greg — has a terminal case of “common sense means MY common sense.”
Sadly, many on the Far Left do not even understand the foundations of their own “sense.”
Lol. ERIC membership requires the states to solicit voter registrations and forbids questions about eligibility to vote. And, states must ask for the info about improper voting upon written request. It is not automatically provided. Why not? It is marketed as a voter integrity package.
You need to look up what the issues really were, rather than parroting what the media says.
Greg only cares about signaling.
He does not care about level of noise (in fact, that consideration ist verboten.
Do NOT question the Mass Media.
Do NOT think for yourself.
Greg has several (gas-lighting) New York Intelligencer comments hidden in his various posts today…
The one here in “1” is simply 1gn0ring the more pressing “D” authoritarianism to focus on the “R” authoritarianism.
(as for gaslighting, see his comments about ‘these are only extremists views, why pay attention to them — as he continues his secret signaling of the extremist of Spring Left propaganda….)
Pro Say Said: ” The only way to end these PTAB shenanigans is to end the PTAB experiment.”
The best thing would be to shut down the Patent Office and go to a patent registration system handled by the Copyright Office.
The important patents get litigated anyway. Stop subjecting patent owners to double jeopardy.
Yes, U.S. patents are a joke, no one believes in them anymore. Examination provides no benefit, just cost.
No benefit, Josh, from a pre-grant enquiry into patentability? How about a presumption of validity, conferred by examination and giving potential investors that which you aver is crucial to prosperity, namely the confidence to invest?
Is that presumption not higher, and therefore more valuable, for an “examined right”? Without it, would any investor be interested?
How about a middle way, like the French invented? A serious search of the prior art by a specialist PTO Examiner, but then it’s left up to Applicant whether to amend and the public to assess whether the patent would survive an attack on its validity.
Middle way will satisfy no one.
The path to the Gold Standard will be decried by those who are disadvantaged by new innovation.
The SG does not care about patent cases. There’s no way they would try to pull a fast one on the Supreme Court just to quote some minor stat.
Wow Kyle – can you really be that naive?
“ The government, as a respondent in this case, argues that the PTAB can create its own reasons for rejecting newly-added claims so long as the patent owner is given sufficient notice and a chance to respond.”
Seems reasonable. It can’t be the case that newly added claims are not subject to rejection. What’s the alternative?
It is eminently NOT reasonable given the role (neutral arbiter) that the PTAB has in these proceedings.
But you be you Malcolm and take every chance you can to gaslight as to how you are not anti-patent.
What is not “neutral” about the PTAB evaluating the proposed claims’ patentability?
Yes, yes you can – apparently.
There is nothing NEUTRAL about deciding against patentability – as would happen with examination.
The PTAB in the post grant review DO NOT HAVE THE ROLE OF EXAMINERS.
(it really is that simple)
Further, it is NOT (as I have long postulated) a matter for the PTAB to be examiners for any new or amended claims.
That is simply not how the AIA is written.
Pay attention son.
> That is simply not how the AIA is written.
The AIA itself says very little about amended claims and provides little more than the barebones statement that a motion to amend can be brought in an instituted IPR (in Section 316 for IPRs). The statute leaves the “standards and procedures” for a motion to amend entirely to Director-prescribed regulations.
I get the argument that the PTAB is not in a position institutionally or practically to “examine” proposed amended claims, but the alternative (where the IPR petitioner drops out because of settlement and doesn’t file an opposition) seems far worse, if that means the amended claims would get summarily confirmed regardless of their content simply because the motion to amend was not opposed.
Seems like one way to deal with this problem would that the PTAB, where the IPR challenger has dropped out or for other good cause, could appoint an examiner (perhaps someone in the CRU) to do an initial review and basically issue an Office Action on the amended claims that would stand in the place of the opposition the IPR challenger would have filed.
Many variations on that idea would seem to work just fine if there is some problem with the PTAB performing the task.
Of course, our super serious glibertarian commentarians will have us believe that Congress needs to examine every patent claim itself (as The Framers intended!). You know, small government without the “deep” administrative state. Like they do in Predunk, Wyoming.
WAY in the weeds Malcolm.
This has nothing to do with your pet phrase of “glibertarian” and more to do with the basic understanding of law.
And how much lipstick ARE you going to put on that strawman of “Congress needs to examine every patent claim itself” (which exactly ZERO people have actually advanced as an argument)…?
[T]he PTAB is not in a position institutionally or practically to “examine” proposed amended claims, but the alternative (where the IPR petitioner drops out because of settlement and doesn’t file an opposition) seems far worse, if that means the amended claims would get summarily confirmed regardless of their content simply because the motion to amend was not opposed.
How is that “far worse.” Imagine that the IPR had never happened: then an invalid claim would be on the books in the form as broad as originally granted. That amendment can only narrow the claim. It is not permitted to broaden it along any dimension.
If the PTAB takes the position that the amended claim will issue unless opposed, that means that—at worst—one is left with a narrower claim on the books than would have existed in a world in which the IPR never happened. How is that so bad?
[T]he PTAB, where the IPR challenger has dropped out or for other good cause, could appoint an examiner (perhaps someone in the CRU) to do an initial review and basically issue an Office Action on the amended claims that would stand in the place of the opposition the IPR challenger would have filed.
Color me skeptical that this can be done within the 1-year limit that the AIA prescribed for IPR decisions to issue. You are basically reinventing the ex parte (or perhaps the inter partes) re-exam here. The whole point of the IPR was that it was supposed to be faster and simpler than the ex parte re-exam or the inter partes re-exam.
“That amendment can only narrow the claim. It is not permitted to broaden it along any dimension.”
Again – this misses the point that the item to which one is going to compare as to “being more narrow” has NO propriety (if so determined in the post grant proceedings).
Once that outer fence is removed, there is NO magic new fence of ANY ‘less broad’ for a newly amended claim to fit within.
As for the hidden hyperlink of “h” in ‘that,’ – Drum’s “incredible age” … why hide that?
> How is that “far worse.” Imagine that the IPR had never
> happened: then an invalid claim would be on the books
> in the form as broad as originally granted. That amendment
> can only narrow the claim. It is not permitted to broaden it
> along any dimension
The amendment may narrow the claim in ways that are immaterial from an infringement standpoint, and the amendments may also lack 112 support. Summarily confirming such a claim is far worse than if the IPR never happened. I’m surprised you cannot see that.
That confirmed claim now has an imprimatur of approval because it emerged from IPR. The new 112 issues in those claims cannot be challenged by later IPR filers (since 112 isn’t a ground for IPR), and these will be hard to win in district court. From a 102/103 standpoint, the prior art that was used in that IPR is effectively “burned,” both in district court and for IPR petitions by later challengers. In some areas where the art isn’t plentiful, this can effectively block later IPR challenges.
Fallacy: “ imprimatur of approval”
i4i won a battle – Efficient Infringers are winning the war.
Hm, nothing that you just wrote makes it any more clear to me how this is “far worse,” but I gather from your “surprise[ I] cannot see that” that you regard this as quite clear and straightforward. Clearly, then, one or both of us is missing something important.
I will try again to lay out why I do not think that there is any great harm in a rule that allows unopposed amendments to be entered without further review. When one says “far worse,” it is important to be specific. Far worse for whom? Let us approach this question systematically:
(1) FOR THE PATENTEE. Is a rule that allows unopposed amendments to be entered without further review worse for the patentee than a rule that requires some measure of review before the amendment can be entered? No. The patentee wants the amendment entered. A rule that lets it be entered is good for the patentee.
(2) FOR THE IPR PETITIONER. Is the rule worse for the IPR petitioner? Well, if the petitioner does not want the amendment entered, then the petitioner has the opportunity to object to the amendment. The rule under discussion is that an unopposed amendment gets entered without further review. If the petitioner thinks that the amendment is bad for the petitioner’s interests, then the petitioner should oppose the amendment, and then it will not be an unopposed amendment and the rule will not be triggered.
If the petitioner cannot be troubled to lodge its opposition, then there are only two plausible reasons why this is so: (a) the petitioner is too simple to live in this world; or (b) the petitioner has already settled with the patentee, and the settlement leaves the petitioner with sufficient assurances that the petitioner no longer need fear the patent. If (a), then I have a hard time working up much sympathy. Life is hard, and if you cannot look out for yourself, you have bigger problems than the IPR rules. If (b), then evidently the petitioner is not “far worse” of on account of the amendment.
(3) FOR THE PTAB. Is the PTAB worse off for such a rule? No. This rule makes the PTAB’s job easier. No skin off of their noses.
(4) FOR THE PUBLIC. Are the public worse off for such a rule? Not really. Before the IPR, the public’s rights to do X, Y, & Z were constrained by the patent claim. In a world in which we are hypothesizing an amendment incident to IPR, the amendment has only narrowed the claim, which means that the public (which has not—mind you—spent one thin dime on the work of prosecuting this IPR) is now only constrained from doing X & Y, but Z is now an option for them. The public, in other words, is better off—on net—for the IPR.
If some member of the public believes that they also ought to be able to do X and/or Y, they are free to bring their own legal action to vindicate that theory. It is hard, however, to see that they are harmed by the outcome of a process in which they gained a scope of rights and paid nothing in return.
The new 112 issues in those claims cannot be challenged by later IPR filers…, and… the prior art that was used in that IPR is effectively “burned,” both in district court and for IPR petitions by later challengers.
And? If the patentee wants to take a claim out of the IPR with §112 infirmities, that is the patentee’s own funeral. I agree that such things cannot be challenged in IPR, but it does not mean that the claim is now robustly enforceable.
As for “burning” the art, I think that this objection is overstated. PTAB panels are not famously overawed by the work of their peers.
In any event, to the extent that some other member of the public wants to see all of X, Y, & Z—not just Z—tanked, that other member of the public should not sit on its hands while the IPR is ongoing. Get yourself joined to the existing IPR (the PTAB is not overly strict about the joinder), and you will have a seat at the table to oppose the patentee’s proposed amendments down the line. My heart does not bleed too profusely for the party who waits idly to see how the IPR will turn out and then purports to be miffed that it did not destroy as much claim scope as that party might have wanted.
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June 8, 2023 at 11:02 am
Credit where credit is due:
Greg’s step-through is pretty good, even as he misses the fact that the removal of the original “fence” means that the un-examined claims** get to be “turned into” granted patent claims.
** for any amended or new claims different than the set originally allowed. I phrase it this way as it may be the case that an amendment might merely be to put a dependent claim into independent form, and such would have had been examined by an examiner.
As to,
“If some member of the public believes that they also ought to be able to do X and/or Y, they are free to bring their own legal action to vindicate that theory. It is hard, however, to see that they are harmed by the outcome of a process in which they gained a scope of rights and paid nothing in return.”
My supposition would be that at least Malcolm and MaxDrei would feel that the public DOES deserve some type of free-rider rights when a patent holder is somehow not maximally dinged.
Is anyone really surprised by this?
Greg: “ Before the IPR, the public’s rights to do X, Y, & Z were constrained by the patent claim. In a world in which we are hypothesizing an amendment incident to IPR, the amendment has only narrowed the claim”
The world “we” were hypothesizing, my friend, is the world where a substitute claim is entered without ANY evaluation by the PTAB. In other words, the limits you are suggesting do not apply. Amazing that you would write so much without apparently even trying to understand the issue, which was and is plain as paint.
35 U.S.C. §316(d): “During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent… An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter” (emphasis added).
“Amazing that you would write so much without apparently even trying to understand”
I chuckle at BOTH Greg and Malcolm.
The AIA… leaves the “standards and procedures” for a motion to amend entirely to Director-prescribed regulations… [T]he PTAB, where the IPR challenger has dropped out or for other good cause, could appoint an examiner (perhaps someone in the CRU) to do an initial review and basically issue an Office Action on the amended claims that would stand in the place of the opposition the IPR challenger would have filed.
The AIA may say little about procedures for amendment, but it is clear enough about the timeline in which the process needs to finish (one year ordinarily, 18 months in exceptional circumstances). Color me skeptical that this can be done within the 1-year limit that the AIA prescribed for IPR decisions to issue.
You are basically reinventing the ex parte re-exam here. The whole point of the IPR was that it was supposed to be faster and simpler than the ex parte re-exam or the inter partes re-exam.
> Color me skeptical that this can be done within the 1-year
> limit that the AIA prescribed for IPR decisions to issue
I don’t see why this would be a real problem. The Examiner is not starting from zero, they would have the head-start of already worked-up prior art invalidity grounds in the IPR petition on the original claims, which the PTAB found sufficiently persuasive to institute. CRU examiners in ex parte reexam start from a far less developed record (and reexam requests are often far less detailed than IPR petitions), yet they routinely issue initial Office Actions within two or three months after reexam is ordered. We’re not talking about waves of examination, either, but a single Office Action responding to the proposed amendments. A good cause six month extension would probably be more than sufficient to cover any delay occasioned by what I’m suggesting.
> You are basically reinventing the ex parte re-exam here. The
> whole point of the IPR was that it was supposed to be faster
> and simpler than the ex parte re-exam or the inter partes re-exam
This is hyperbolic nonsense. We are talking about the edge case in which the original IPR petitioner drops out before filing an opposition to the motion to amend. And you obviously didn’t do much work under the old inter partes reexamination system, because even if that I’m suggesting in IPR required the six-month good cause extension, the proceeding would still done years, and I mean years, before your average inter partes reexamination reaches any semblance of completion.
I don’t see why this would be a real problem… We’re… talking about… a single Office Action responding to the proposed amendments. A good cause six month extension would probably be more than sufficient to cover any delay occasioned by what I’m suggesting.
I agree that a six month extension would work for the cases where the patentee’s response convinces the examiner. That is to say, six extra months can work for situations in which the patentee’s proposed amendment gets entered.
The interesting case, however, is a situation in which the examiner issues rejections (two months consumed), the patentee responds (two more months consumed), and the examiner maintains the rejection. At that point, due process concerns require that the patentee be given an opportunity to appeal the rejection.
There is no way that the appeal requires only two additional months. For one thing, the patentee is going to need to be allowed at least two months just to prepare its brief to the appeals panel that responds to the examiner’s final decision. This means that there is no way that this can all be done in the statutory time limit even with the six month extension.
a”l”l….
LR,
You miss the point – and badly so.
This is simply NOT a matter of “in a position institutionally or practically” – their role by way of Congress in the post grant proceedings simply does NOT include ANY examination on the merits of ANY amended or new claims.
They serve as the arbiter of two adverse parties.
You simply do not get to legislate from the peanut gallery for ANY “alternatives.”
This is LESS a fault of the PTAB and (with extreme prejudice) MORE the fault of Congress.
Seems reasonable. It can’t be the case that newly added claims are not subject to rejection. What’s the alternative?
I agree that it would be reasonable for the PTAB to articulate its own rejections (provided that it can do so on a time line consistent with the 1-year limit set in the statute). The obvious answer, however, to “[w]hat’s the alternative?” is “the PTAB can approve the claim unless the counterparty objects.” There is nothing unreasonable about that alternative. Either approach is reasonable.
“The obvious answer, however, to “[w]hat’s the alternative?” is “the PTAB can approve the claim unless the counterparty objects.”
I’d rather not have my rights put in the hands of some “counterparty” whose motivations are unknown but which are likely easily purchasable.
Sorry, I do not follow you. What do you mean by “rights”?
If a petitioner convinces the PTAB to institute an IPR, then the petitioner has already prejudiced the patentee’s rights. I do not see what further harm is done to those rights if the petitioner declines to object to proposed amendments in a forum in which the rule is that the patentee’s proposed amendments are granted unless the petitioner objects.
Meanwhile, if the petitioner does object, then the PTAB stands as arbiter between the patentee and the petitioner—exactly as the PTAB was doing for the claims on which the IPR was originally instituted. Once again, this is a prejudice to the patentee’s rights, but no more so than the fact of the IPR’s institution in the first place.
What is perceived problem? Whose “rights” are prejudiced here?
Malcolm’s most likely thinking of ‘strawman’ antagonists that might make flimsy arguments.
As reflected above by MaxDrei, there is a misperception that such weak opponents make it so that no one could launch their own attack on any such patent.
Greg’s “o” of ‘nothing’ gets the religious aspect completely wrong (of course) and misses the deeper dilemma of the religion of the Spring Left Woke.
As for the actual legal point (again), it is NOT for the pundits of peanut gallery armchair ‘legislators’ to derive ANY “alternatives.”
Missing this fundamental aspect of law makes ALL of those comments UNreasonable.
The MSPB decision is long but fascinating, and makes PTAB’s leadership at the time look pretty bad. Credit to Fitzpatrick/his counsel for apparently taking depositions and getting to the bottom of this, and (if it’s all accurate) credit to the MSPB’s AJ for laying out all the evidence.
The SG’s apology footnote seems weak by SG standards, and a bit protective of PTAB leadership. They don’t even take a position on whether they said inaccurate things at argument. They end with this grating passive-voice “mistakes were made” statement.
If this Office had been aware of the expansion of the panel in this case, counsel for the government would have made clear that the relevant answer during the Oil States argument referred to completed cases and would have avoided any suggestion that expansions were limited to the institution stage. We regret any misimpression inadvertently created by the answer that was given.
That does not make sense, given that “expansions at the institution phase” is not even an issue — either at the PTAB or at the Oil States case status.
Respectfully, under the holding of Oil States, this is exactly the mischief (to put it kindly) directly on point to the logic of Hayburn’s case. Letting the political departments invade the judicial department – no matter the “good cause” injects politics and connections into was is judicial.
Oh, I see that point, iwasthere — but that point was rejected by the Court in Oil States (thus, it is expressly NOT the holding of that case that recognizes the trap of Ends justify the Means that you speak to)
>The SG’s apology footnote seems weak by SG standards,
Why say more? There won’t be any consequences at that level.
Eminently “reasonable**” OC.
Which only goes to show that wicked people can be “reasonable” in skirting their larger duties in pursuit of desired Ends.
** this is the same type of “it is reasonable” that provides cover for Efficient Infringers: IF they can get away with their actions, it is ‘reasonable’ for them to try to do so.
In response to Old Curmudgeon:
The SG often makes factual representations about reality on the ground within the federal government. The Supreme Court often takes the SG’s word for it on these things, on the understanding whatever the SG says is scrupulously accurate and has been looked into. The SG has a special relationship with the court, and its credibility matters. That seems to be why the SG will send letters years or even decades later when it learns that it gave the court inaccurate information–even if the misstatements may have had no consequences. This article describes a few such corrections.
link to justsecurity.org
Maybe this one is fine in context. It seemed weak to me.
The PTAB is riddled with bias. It always has been. A large number of ex parte PTAB decisions I’ve read appear riddled with pro-Examiner/USPTO bias. I haven’t participated in any AIA PTAB proceedings but I see no reason why the bias in favor of the result desired by the USPTO would not carry over into AIA proceedings.
While at a previous job, we had a former APJ speak to our practice group, and he stated unequivocally, “We were looking for any reason to affirm.”
Those are their marching orders. Anybody who says different is not paying attention. Or lying.
[A] former APJ speak to our practice group, and he stated unequivocally, “We were looking for any reason to affirm.”
About 80% of the appeals that I have handled over the course of my career (and I have handled many) ended with the examiner being reversed. I am hard pressed to square my personal experience with your APJs anecdote. I realize that I am pitting anecdote vs. anecdote here, but it is hard to credit someone else’s anecdotal experience over one’s own anecdotal experience.
To be fair, however, I could easily believe that this varies by art unit. Perhaps the APJs who handle pharma have a different ethos than those who handle (e.g.) mechanical devices.
YMMV