Predicting Cuozzo After Supreme Court Oral Arguments

By Gene Quinn
May 4, 2016

scotus-supreme-court-copperOn Monday, April 25, 2016, the United States Supreme Court heard oral arguments in Cuozzo Speed Technologies v. Lee, the first case in which the Supreme Court will decide issues relating to inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).

Immediately before the Supreme Court oral arguments we published predictions from a panel of industry experts watching the case. I posed a simple question at the time: What do you expect the Supreme Court to do in Cuozzo? See Predicting Cuozzo in Advance of SCOTUS Oral Arguments.

With the oral arguments now behind us, I once again reached out to a panel of experts who are closely watching the case to ask for their reactions. Once again, I posed the question: What do you expect the Supreme Court to do in Cuozzo? This time, with the benefit of having listened to the oral arguments, the reactions and predictions of our panel of experts follows.

 

charles-macedoCharles R. Macedo
Partner, Amster, Rothstein & Ebenstein LLP

The most disturbing aspect of the fact pattern in Cuozzo Speed Technologies v. Lee is the apparent lack of due process and fundamental fairness. The concept that an administrative agency, in this case the Patent Trial and Appeals Board, could perform an ultra vires act (i.e., instituting and then invalidating a patent beyond its statutory authority) and yet not be subject to appellate review is so contrary to notions of due process and fundamental fairness, that it is not surprising that the Supreme Court granted certiorari to hear this case.

NYIPLA advocated that, consistent with the statutory structure of the American Invents Act and notions of due process and fundamental fairness, the Supreme Court should confirm that, the appellate courts may still review after the final written decision whether the PTAB’s decision to invalidate (or not invalidate) a particular challenged claim was consistent with the statute even if an interlocutory appeal of a decision to institute or not to institute is not available. This procedure matches the manner in which an interlocutory decision to deny a motion for summary judgment in litigation would be handled. Although this issue was not discussed much during oral argument, I believe the Supreme Court will recognize that any interpretation of the AIA that falls short of this result violates due process and notions of fairness.

With respect to the claim construction issue, I anticipate that the Supreme Court will treat this like any other APA-type issue. It should examine whether the PTAB acted within its statutory authority by adopting a standard typically used in the context of a proceeding where the patent owner is allowed to freely adopt and modify the claims in ongoing proceedings for a proceeding that is substantially more rigid in nature. At oral arguments, the Justices appear to be split on whether the PTAB is more like any other Patent Office proceeding, litigation, or something else. It would not be surprising if the Supreme Court were to find that the adoption of a BRI standard in this context is an abuse of the PTAB’s discretionary authority.

* Mr. Macedo is one of the counsel for the New York Intellectual Property Law Association (NYIPLA). The opinions offered here are his personal opinions and not of the Association, the firm, or its clients. For more on the NYIPLA amicus brief in Cuozzo please see Will SCOTUS Provide Guidance?

John WhiteJohn White
Principal Lecturer, PLI Patent Bar Review Course
Director at Soryn IP

Whenever the patent system “needs” a result from SCOTUS, the system, in recent times, is invariably let down. See Bilski, Mayo, et al. Either they write a baffling “cover every base” decision (KSR), which means all things to all readers, or it is just plain wrong (Myriad). Gone are the days of Chakrabarty; 1. admit their own technical competence limitations, and 2) crisply decide the legal issue before them. SCOTUS out.

In Cuozzo, you have Breyer as a factional wing nut, in favor of any decision to bolster an outcome that reduces the “burden” of patents on society. No one on this Court is a “patent person” by any stretch. Sad, really. How about trashing the 1st Amendment from the bench Breyer? Why not? Google not in favor of it yet is my guess.

As for how this case turns out: 1) in terms of the “broadest” interpretation issue, the votes probably go with an elimination of that standard in Post Grant proceedings. The application of this standard presently results in inconsistent outcomes depending on venue. This is exactly what SCOTUS is supposed to resolve; inconsistency below. 2) this Court would never limit its own job of reviewing Executive branch decision making. Never. A decision not to institute an IPR may be immune from review, but a decision to institute has to be reviewable. Period.

 

Scott-McKeown-160-200Scott McKeown
Partner, Oblon, McClelland, Maier & Neustadt, L.L.P.
Founder of PatentsPostGrant.com

Cuozzo’s key BRI attacks did not appear to resonate with the majority of the Court. Namely, that since IPR was designed as a surrogate for litigation, Congress must have intended the same rules for claim construction (i.e., it is adjudicative and not examinational); and, that BRI is only justified by the USPTO when accompanied by an “unfettered” right to amend.   As such, Cuozzo is left with a bare policy argument assailing what he deems to be different claim construction standards. Even assuming there were meaningful differences in the BRI and Philipps frameworks, and despite the interest of at least Justice Roberts on this issue, a reversal based on a pure policy alone would be an unexpected, legislative pronouncement.   I see a 6-2 affirmance on the issue of BRI.

As to the second issue, given the seeming lack of interest by the Court, reversal would seem unlikely. In this case I don’t believe Congress envisioned blocking all institution decision issues from appeal that are currently blocked by 35 U.S.C. § 314(d). But, given straight forward language of the statute, here too, Congress would need to recalibrate.

 

mossoff_adamAdam Mossoff
Professor of Law, George Mason University School of Law

The oral argument in Cuozzo v. Lee was interesting and suggested perhaps that Cuozzo may lose. But I think it ultimately provided little insight into how the Supreme Court ultimately may decide the case.  As a general rule, it is virtually impossible to guess how the Court might decide a case based on the oral argument. One prominent example of this point in recent memory was NFIB v. Sebelius (2012); after the oral argument, most people predicted that the Supreme Court was going to strike down ObamaCare, but it did not. Sometimes, when all of the Justices are saying the exact same things in oral argument, predictions may seem a bit easier, such as in Bowman v. Monsanto (2013).  But these are rare cases.  In most cases, like Cuozzo, some Justices ask critical questions, some Justices ask favorable questions, and it’s anyone’s guess as to how it’s going to come out.

With that said, the recent loss of Justice Scalia may have played a role in the lop-sided oral argument in Cuozzo. Justice Scalia likely would have been more receptive to the separation of powers concerns raised by the question concerning the PTAB’s adoption of the broadest reasonable interpretation (BRI) standard. These concerns were voiced almost solely by Chief Justice Roberts during the oral argument.  Justice Scalia’s absence might even play a role in the final opinion. Of course, these concerns about a violation of the separation of powers might have been expressed in the Court’s majority opinion, or they just as easily could have been expressed in one of Justice Scalia’s colorful dissents, in which he would have rejected the majority’s “jiggery pockery” in approving the PTAB’s decision to adopt the BRI standard in its adjudication of patents.

 

Justin-Krieger-160-200Justin Krieger
Partner, Kilpatrick Townsend & Stockton, LLP

In light of the questions presented during oral argument in Cuozzo Speed Techs. v. Lee on April 25, I expect the Court to uphold the broadest reasonable interpretation (BRI) standard for Inter Partes Review (IPR) proceedings. Right out of the gate, Justice Sotomayor suggested that she disagreed with Cuozzo’s position that the Phillips plain and ordinary meaning standard used in district court should be controlling, stating that she might be moved by Cuozzo’s arguments “if Congress had not given any right for the Board to amend.” Justice Kennedy was similarly accepting of the BRI standard since it is the same standard used during prosecution and could be used to determine whether the patent should have issued in the first place. Rather than looking at IPR proceedings as “a little court proceeding,” as suggested by Cuozzo, Justice Breyer countered that there was another way of looking at it—that, in fact, Congress desired for the PTO to give the patentee the same chance they had during prosecution with the possibility of amending, but only if the patent should have been issued in the first place under the BRI standard. Justice Breyer also indicated that if the statute could be read both ways, perhaps it was up to the PTO on how to interpret the statute. Justice Kagan pointed out that since the PTO has a history of using the BRI in patent office proceedings, it seemed logical that Congress would have articulated a different standard if that had been the legislative intent—but it did not.

Chief Justice Roberts appeared to be the lone supporter of the plain and ordinary meaning standard for IPR proceedings, indicating that it was “perfectly clear” to him that Congress meant for IPR’s to substitute for judicial action and pointing out that it was a “very extraordinary animal” in law for two different proceedings addressing the same issue to lead to different results.

Notwithstanding the ultimate decision of the Court, as a patent practitioner, I am concerned by the apparent position taken by the Patent Office during oral argument that there should be three distinct claim construction standards: (1) BRI during prosecution, which does not consider the prosecution history, (2) BRI in IPR’s, which does consider the prosecution history, at least to the extent briefed, and (3) the Phillips standard, which considers the prosecution history as well as the presumption of validity. Although I do not expect the Court to address this position, the proposed sliding scale for claim construction would likely lead to even more uncertainty and confusion in determining patentability.

 

Brad OlsonBradley Olson
Partner, Barnes & Thornburg

It seems difficult to reconcile the Respondent’s principal argument that two standards should still apply: that is, that the PTAB should be permitted to continue applying its policy-derived broad BRI standard for construing patent claim scope in Congressionally mandated “adjudicative” IPR proceedings while still using the lower preponderance of the evidence standard provided under 35 U.S.C. § 316(e). The notion that the USPTO may “infer” such intent to also apply the BRI in the absence of any express guidance from Congress was weak, at best. Especially because having two such claim construction standards applied by Article III courts and the ITC on the one hand, and the USPTO’s unilateral application of an “examination” claim construction standard in an intended “adjudication” setting on the other hand, has already led to inequitable and presumably non-appealable results.

The extirpative effect of the broadest reasonable interpretation in IPR proceedings can be discerned from the USPTO’s own data: from September 2012 to January 2016, more than 4,000 petitions for institution of IPR proceedings were filed. From reviewing the USPTO’s own data, a total of 792 IPRs reached a final decision and in 685 of those IPRs (or a whopping 86%), the PTAB invalidated some or all of the challenged claims. See PTAB Statistics, January 31, 2016, at pp. 2, 7, 9, U.S. Patent and Trademark Office (last accessed May 2, 2016).

Fortunately, a glimpse of how the Supreme Court may rule in Cuozzo gives some hope that the Court will correct the inequities being wrought by the PTAB’s application of the BRI. This theme was revealed during questioning of the government’s attorney by Chief Justice Roberts, who stated at one point that “it’s a very extraordinary animal in legal culture to have two different proceedings addressing the same question that lead to different results.” Cuozzo; Tr. at 32. If that statement sheds some light on Chief Justice Roberts’ mindset as to how he would draft the majority opinion, the decision may depend on how many associate justices can be convinced to join that same line of thinking.

EDITORIAL NOTE: The above quote from Mr. Olson is an excerpt from his article Practitioner Strategies for Living in a Post-Cuozzo World, published on IPWatchdog.com on May 4, 2016.

Paul-BerghoffPaul Berghoff
Partner, McDonnell Boehnen Hulbert & Berghoff LLP

Even though there were two independent issues, most of the questions from the justices focused on the first issue of whether IPRs should be based on the use of the broadest reasonable claim interpretation (BRI) or the plain and ordinary meaning standard set forth in Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005) (en banc).

What did we learn from the oral argument? As a threshold matter, the questions from the justices betrayed a general unfamiliarity with the procedures and substance of patent law. To those who have followed previous Supreme Court arguments in patent cases, this difficulty in formulating relevant questions comes as no surprise. After all, none of the justices arrived at the Supreme Court with any significant background or experience in patents.

That said, the questions posed by the justices did shed some light on what we can expect from the Supreme Court’s eventual decision in Cuozzo, at least with this respect to the question of BRI versus plain and ordinary meaning. Although it is always risky to predict outcomes based on the questions posed at oral argument, it looks like the Supreme Court will maintain the USPTO’s reliance on the broadest reasonable interpretation in IPRs.

EDITORIAL NOTE: The above quote from Mr. Berghoff is an excerpt from his forthcoming article “To BRI or Not to BRI, That is the Question,” which will publish on IPWatchdog.com on Monday, May 9, 2016.

UPDATED Wednesday, May 4, 2016, at 6:23pm ET.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 51 Comments comments.

  1. Ken May 4, 2016 7:59 am

    “…she might be moved by Cuozzo’s arguments “if Congress had not given any right for the Board to amend.””

    And as the Chief Justice rightly noted, that’s been allowed only six times ever…

  2. Ken May 4, 2016 8:01 am

    Does the fact that they seemed to spend hardly any of their time asking about the appealability issue suggest that the justices felt they were already largely in agreement on that going in? (And if so, which way?)

  3. EG May 4, 2016 9:26 am

    Unlike some of the other Justices (Breyer in particular who with his grossly exaggerated “billions of invalid patents” reminds me of the late Carl Sagan’s “billions and billions” moniker) who simply accept BRI as the claim standard for IPRs, Chief Justice Roberts clearly understands and is very troubled by parallel forums that apply different substantive standards in judging the validity of granted patents in at least two respects: (1) claim construction standard (BRI in IPRs v. “ordinary meaning” in the courts); and (2) the presumption of validity standard (“preponderance of the evidence” in IPRs v. “clear and convincing evidence” in the courts). Despite all the “hand-waving” I see at Patently-O about SCOTUS not ever holding patents are “property,” Congress clearly says they are in 35 USC 261. I suspect it may have also dawned on Roberts that this substantive disparity in how patent rights (being “property”) are judged for validity in these two forums raises significant concerns about compliance of IPRs with 5th Amendment “due process.” Even worse, the patent owner has essentially no control over being dragged into the more “patent-hostile” IPR forum.

    I also predict a fairly strong disapproval by Roberts (be it majority opinion or dissenting opinion) of these parallel forums that accord greatly differing substantive standards in judging the validity of patent rights. Even if in dissent, that would at least give patent owners some significant PR “ammunition” to go to Congress to request correction these two “glaring” and significant deficiencies in IPRs in terms of according patent owners “due process” in judging the validity of their patent rights.

  4. step back May 4, 2016 12:07 pm

    Both from the questions asked at orals and the treatments that inventors get in the written decisions, one can conclude that most of the Supremes view inventors and their crafty legal draftsmen (aka patent practitioners) as unnatural Frankenstein like creatures arisen from under the bridge (with their Egor style hunch backed legal assistants right behind them) all trying to do unnatural acts by inventing in the realms of Mother Nature (fooling around with naturally occurring DNA) and in the realm of God’s other creation,the human “mind” (by creating artificial forms of intelligence) and thus they must be stopped at all costs.

    So if these night time vigilante parties with their torches, pitch forks and BRI cries of monster are effective death squads for halting the unnatural acts of inventors, even if that means no due process, so be it. Kill the hideous trolls. Kill their legal support assistants. They are not human to begin with.

    Or as Justice Breyer might more eloquently phrase it … so you see what I mean, see what I mean? King Tut and Mother said stop. Just stop.

  5. Gene Quinn May 4, 2016 12:56 pm

    Ken-

    I was surprised that so little time was spent on the appealability issue. Reading tea leaves of the Supreme Court is an inexact science (to put it politely)… after all, no one thought Roberts would say ObamaCare violated the Commerce Clause but was still OK as a tax. So predicting the Supreme Court is virtually impossible, and only further complicated based on the fact that they answer to no one.

    Having said that, I agree with John White (above). This Court is NEVER going to limit their own authority, period. To think that they will find some statute passed by Congress as an impediment to reviewing institution decisions they don’t like seems pure fantasy if you ask me. I’m as certain as you can be about SCOTUS that they will reverse on that question and then back fill the legal analysis as necessary to prove what they wanted to do was perfectly within line with the select subset of their own cases that support that particular conclusion (while ignoring any of their own cases that suggest a contrary ruling is mandated of course).

    -Gene

  6. Edward Heller May 4, 2016 3:50 pm

    My own view is that BRI applies and should apply to new and amended claims, but should never apply to issued claims. This “opportunity” to amend logic assumes that amending does no harm to the patent owner, but benefits the public. No one ever made clear to the justices that this is hardly the case given intervening rights.

    If “we” lose on BRI, it is because of somewhat poor advocacy.

  7. step back May 4, 2016 4:23 pm

    Ed,

    In the law business you can dance and sing in front of the decision makers all you want. But at the end of the day they are human, humans are irrational and thus the decision makers can decide against you (thumbs down) no matter how rational and correct all your presented arguments and items of evidence are.

    (Besides, when it comes to SCOTUS, they only listen to their favorite amici and pluck the leaves off the tree of knowledge accordingly.)

  8. Edward Heller May 4, 2016 4:34 pm

    step, I am not so cynical about the Supreme Court. But I am very cynical about the USPTO and everyone behind or that was behind IPRs. They are like used car salesmen, all. They pretend to be your friend. They give you smooth sales pitches. But in the end, they do not have your best interests at heart. Their every purpose is sucker-punch you.

    That is what BRI is. We learn that the “opportunity” to amend justifies it. But, as I as said, this assumes that amending does not harm the patent owner while benefiting the public. A moment’s thought about that tells you that you have been sold a bill of goods.

    Never trust anyone who tries to sell you this pig with lipstick.

  9. Thomas Duston May 4, 2016 5:35 pm

    After seeing the transcript of the argument, it is difficult to see that there are five votes for reversing the Fed. Cir. on “broadest reasonable construction.” For a summary of the Justices’ questioning, see http://www.ptabwatch.com/2016/04/groundhog-day-again-observations-on-the-oral-argument-in-cuozzo-speed-technologies-llc-v-lee/

  10. Anon May 4, 2016 7:26 pm

    Mr. Heller,

    Let me remind you that your “umbrage” at the PTO is misplaced, and that they are doing what Congress has written for them to do in the AIA.

    You need to put your “cynicism” in check, at least to the point of being able to survey the territory in an objective manner in order to compose yourself for future battles.

    Their “every purpose” is NOT “theirs.” The USPTO is not selling pigs with lipstick – that was sold by Congress.

    The real question then becomes, is Congress allowed to do this, or are there other parts of the Constitution that protect vested property rights.

    Once you ask the right question, then – and only then – will you force the Court to give you an answer to that right question.

    Ask the Court the wrong question (one with an “easy” out, that does not involve any danger of making a call on a question of constitutionality), and you can rest assured that the Court will jump at the chance to answer your wrong question and not answer the right – but much harder – question.

  11. Anon May 4, 2016 7:33 pm

    And to be perfectly clear, the focus on whether or not Congress can do what they have done DOES invoke that more difficult question, because then is it not a matter of the Office changing what they are doing, but instead directly strike the law as written by Congress as being the problem.

    Here – given the explicit rejection by Congress of the ability to treat the law that is the AIA in the manner of severability, the Court – if asked the right question, would indeed be hard pressed to supply a solution – any solution – that does in effect what Congress has rejected.

    That’s a rather large albatross.

    But remember your sailing history: the albatross was originally a sign of good luck, until someone went and killed it.

    Not killing the albatross (to me) means that you ask the right question no matter the consequence. Force the Court to answer that right question.

    If that means that the AIA, built to not be severable, must fall altogether, then that is what it means to not kill the albatross.

  12. step back May 4, 2016 7:52 pm

    Anon @9

    I’m more tempted to believe that all the government actors are used car slicksters who sell their cars with automatically re-settable odometers.

    Congress is no better than the rest of them and the USPTO is not a stone caster lacking in blame.

    IIRC, Congress is the actor that said, Trust us, we’ll early publish your invention without quid quo pro and then negotiate fairly with you after the fact.

    USPTO exam groups are the ones who send out BS restriction requirements and say, there, we have timely given you substantive examination, then milk you for every RCE they can get.

    PTO Petition officers … (well don’t get me started on that hell hole)

    PTAB Death squads … they laugh at the fact they suckered you into paying all the fees (including maintenance … maintenance of what?) and then tell you that the car they sold you never should have left the lot in the first place.

    And as for SCOTUS, what can Tommy Boy say about his good friend Uncle Breyer Patch? Tommy gets to experience what it’s like being the pinball instead of the pinball wizard. You get the full round of bounce arounds before you end up down the exit hole. (Fear not. Alice awaits you down there. Hee ha ha.)

  13. step back May 4, 2016 7:55 pm

    Anon @10

    What the F? Albatross? Kill the albatross?

    And I thought I was the one who had gone down the Mad Hatter head hole. 😉

  14. Night Writer May 4, 2016 8:23 pm

    It seems to me that this is a strange hybrid of admin and federal law. I don’t think they will care about the BRI unless they care about the takings in which case it brings into question IPRs. So, since I think BRI will bring up all sorts of issues they are not going to deal with, my prediction is BRI left alone. As to the non-reviewable: I think they are going to reverse this, but I disagree with White. I think they are going to say that not instituting should be reviewable.

    I think the problem is that it would be easy to construct new legislation where non-reviewable institutions would deprive people of rights. To much at stake. What if you are sued in federal court and the director just doesn’t like you. Then you don’t get the favorable forum but the more difficult and expensive path of federal court only. That is huge. That has to be reversed.

    So, my prediction: BRI left alone. Reviewability: reversed.

  15. Anon May 5, 2016 6:49 am

    Night Writer @ 14,

    I see your predicted result (reversed).
    I see the feeling why that result is “desired” (too much at stake).

    I do not see the legal reasoning for that result. How does the Court “phrase” the path to the desired result? Under what proper operation of law is the law written by Congress concerning non-reviewability to be struck down and deemed to be reversed? What is the legal authority that you think the Court will rest on? – and I do realize that the Court does seem to fabricate “authority” as it sees fit.

    I think that that is a far more interesting discussion point. I think that that carries potentially far more consequence.

    Will the Court actually “strike down” one piece of the America Invents Act?
    Will the Court “hand wave” that the controlling piece of law is “OK,” but somehow “invent” a way to not follow the clear and unambiguous directive?

  16. Night Writer May 5, 2016 9:52 am

    I admit I am flying by the seat of my pants on this one (which is very unusual for me in making a prediction), but I think the nonreviewability goes to the Constitution in the equal protection and due process clauses. I think that a lot of mischief could be done by Congress if a person cannot appeal a decision by an agency to take up or review a decision by the agency. Just run through some scenarios–the President appoints a racist and it turns out that he/she just does allow the review of petitions by black people. (And you can imagine this being used for all sorts of other agency review decisions.) So, this one is simple as it goes to the Constitution.

    As to BRI, I don’t see anything in BRI that is too terrible beyond the whole process of IPRs. I think IPRs are unconstitutional, but I think to get to where you change BRI, I think you have to say IPRs are unconstitutional for all the reasons that have been said here many times. But, the question is how would the SCOTUS touch BRI without going to the whole Constitutional issue of IPRs? I don’t think they can. I think they could use statutory interpretation and say Congress meant this or to make it equal with litigation etc. Blah. But, I think under Chevron, that BRI is OK for the statute.

    Anyway, that is about 1/10 the due diligence I usually do before a prediction, but my gut tells me this is the right.

  17. Edward Heller May 5, 2016 9:55 am

    Night@14,

    1. Takings.
    2. Rights of petitioners?

    Nobody takes anything if they hold a patent invalid. A taking is a use which must be compensated, or taking of title which must be compensated. No one seriously contends, and I really mean this, that the petitioner or the patent office or anybody else should compensate the patent owner for taking his patent when it is invalid. That is beyond nonsense.

    Secondly, no one has a right to a to bring a patent owner before the PTAB from a court. That is completely backwards. There is a constitutional right to a trial in court. There is a constitutional right to a trial of validity to a jury. There is no right to abrogate constitutional rights.

    Night, you purport to be an educated person and criticize and defame anybody who disagrees with you as if they were undereducated, etc. It is quite evident that there is a problem of undereducation, but not necessarily with the people with whom you are having conversations.

  18. Night Writer May 5, 2016 10:16 am

    @17 Ned, you are out of your mind. You are trying to excoriate me for a quick analysis of a case and a prediction? OK. You didn’t even do a good job.

    1. Did I say Ned that for the nonreviewability issue that I was limiting the implicated rights to patents in regard to the Constitution? No I didn’t. In fact, if you read what I wrote, the reason I think the nonreviewability will be reversed is that it could be used by Congress for lots of other mischief. As I said, there would be nothing preventing a President from appointing a person that would simply refuse to grant a petition to anyone that is not from the President’s political party.

    2. As to your second? What? You are the one that is ignorant in this matter. The controlling law that is being implicated is administrative law. “No one has a right to bring a patent owner before the PTAB from a court.” I didn’t say they did. The issue is whether people are being treated equally and the nonreviewability would allow for some people not to be treated equally without any recourse. There is nothing wrong with my reasoning on that. It goes to the limits of administrative agency law. The SCOTUS may not agree with me, but my position is completely reasonable and my Constitutional concerns are completely reasonable.

    What is your prediction Ned? Let’s see what the SCOTUS does. Look, I said this was a quick and dirty analysis. But, nothing I said was wrong and you have merely intentionally misinterpreted it, which is typical of your type. If you want to have a real legal discussion at least try to be fair in interpreting what I wrote.

    You know Ned, I have beaten the pants off you many times on these predictions and each time you go off on some tangent and say I have no idea what I am talking about. Well, guess what, let’s see your prediction and why.

  19. Night Writer May 5, 2016 10:18 am

    And, Ned, everything I wrote said I was flying from the seat of my pants on this one. If I spent four or five hours, I bet I could predict what their decision would look like which I have done many times. But, this one is really seat of the pants.

    1) nonreviewability — could be used for lots of mischief that would implicate the Constitution.
    2) BRI — Chevron probably says this is OK.

    If you think that is just horrible reasoning? OK. Sure. Tell us your position and prediction. You have an abysmal record.

  20. Night Writer May 5, 2016 10:24 am

    And Ned, I remember you said I was out of my mind regarding my predictions about Monsanto. And yet I completely called the case and went through the reasoning the SCOTUS used.

    So, get a life. You anti-patent judicial activists are just mean and unethical.

  21. Edward Heller May 5, 2016 10:24 am

    Night, you were speaking of “rights” and of “takings.” I submit, you have no idea what you are talking about.

  22. Night Writer May 5, 2016 10:31 am

    @21 Ned: OK. So no substantive response from you and no prediction. So, I will take that as a retraction. First decent thing you have done.

    “no idea” — and yet I have repeatedly predicted these right and predicted the reasoning the SCOTUS would use. In Monsanto case, I remember you coming after me too. And, then no apology.

  23. Night Writer May 5, 2016 10:33 am

    @21 Ned:: besides there have been lots of articles about whether the AIA implicates the takings clause of the Constitution. So, what?

    You seem to have bubbled yourself like you did for Monsanto.

  24. Anon May 5, 2016 11:06 am

    Mr. Heller,

    You sling at Night Writer while doing essentially the same thing by advoiding the points that I have out to you.

    Your takings view is simply not complete.

    You have drunk from the Kool-aid fallacy that the government must “use” the patent(ed item) when that is just not the full, complete or accurate view.

    I am curious as to why you do not answer a very simple and straight forward exercise that has been set out for you:

    Compare and contrast the bundle of property rights for a patent immediately prior to initiation and immediately after initiation.

    Your avoidance of the separate point of the taking at the initiation point, and wanting to merely and only look at the decision on the merits as controlling does not even fit your present case before the Court (so if I were you, I would take some care and formulate your answer a bit more carefully than your current posts on the matter).

  25. Edward Heller May 5, 2016 1:08 pm

    anon, I also said that take includes taking title.

    Regardless, the government has the power to “take.” The only issue is compensation.

    So, what you and Night are complaining about is that the government is not paying patent owners for taking invalid patents which are worth nothing at best.

  26. Edward Heller May 5, 2016 1:11 pm

    Also, Night’s attitude about an infringers rights to violate the rights of patent owners sounds just like the so-called rights of those red-flag waving entitled communista’s that took my father-in-law’s land and complained their rights were being violated when asked to leave.

  27. Night Writer May 5, 2016 1:39 pm

    “red-flag waving entitled communista’s that took my father-in-law’s land and complained their rights were being violated when asked to leave.”

    What? Oh come on. You are calling me a communist now? Seriously.

  28. Anon May 5, 2016 4:31 pm

    Mr. Heller,

    It is not necessary to take title to effect a taking.

    And you are still avoiding the issue as I put it to you and you are still trying to only look at this from a finally adjudicated (and adjudicated against the patent holder) view.

    My point to you is decidedly different that that.

    Please answer the actual point that I have presented to you.

    Please stop ducking and trying to cloud the issue.

    It is a straight forward comparison between the bundle of property rights immediately before the institution decision and immediately after the institution decision.

    I will also remind you that this separate-from-any-adjudication-on-the-merits concern is not limited to recompense (of which there is none), but also extends to due process and how Congress wrote the law that the Office is following and how what Congress wrote is what eliminates ANY judicial review of that initiation decision.

    I have been ultra-clear on this matter, and would hope that you would have the decency of answering (directly) the actual issue that I have presented.

  29. Edward Heller May 5, 2016 5:06 pm

    anon, I said the government can take a patent by using it (infringing) or by acquiring title. By twice objecting to this statement, you seem to suggest that there are other ways of taking that these too. Name just one.

  30. Edward Heller May 5, 2016 5:08 pm

    Should be “these two.”

  31. step back May 5, 2016 6:48 pm

    Ed,
    With due respect, you are outside the metes and bounds of your knowledge base. Don’t start up in this area.

    Any diminution of the enjoyment rights of a property can be a taking. For example if the government designates your log cabin as a landmark that can be a taking. It means you can’t tear down the house that Abe lived in and replace it with a Trump Tower. The value of your supposedly exclusive rights in the enjoyment of the property have been diminished but title remains and outwardly nothing seems to have been “taken” from you. Yet it has.

  32. Anon May 5, 2016 7:08 pm

    As I suggested Mr. Heller, your two examples are simply not complete in regards to takings law.

    May I suggest that you brush up on this for your own court time?

    I really would like you to ask the Court the right question. You have a truly golden opportunity among the blogging population, and you seem to not want to recognize a clear issue.

    To help you recognize that clear issue, PLEASE address the point as I have presented to you concerning the sum total of the sticks of property rights in your bundle that is a granted patent.

    I do have to wonder why it is that you have resisted this simple exercise so diligently.

  33. Edward Heller May 5, 2016 9:24 pm

    step, no doubt “diminution of enjoyment rights” potentially is a taking, but please, acknowledge that the government has the power to take, and the question is compensation. Patent owners who are complaining about “takings” only have to request compensation in the court of claims, and if denied there, appeal or file a lawsuit depending on why the court of claims denied compensation.

    Legally, a patent is enforceable in a court of law until it is revoked. So, until the patent is declared invalid, there is no reduction in “enjoyment or rights.” That leave revocation as the taking.

    When the patent is declared invalid, what is the compensation due the patent holder for loss of an invalid right?

  34. Edward Heller May 5, 2016 9:27 pm

    Anon, neither I nor anyone else knows what you mean about the “right question.”

    Certainly, we are not going to discuss this wacko idea of “taking” as basis for “unconstitutionality” when every patent owner whose patent is revoked still has a remedy for compensation.

  35. Anon May 5, 2016 10:16 pm

    Mr. Heller,

    Please do not play dumb. Read my posts and follow the clear directives.

    Your characterization of “wacko” without following the clear directives is an unfortunate mistake on your part – both for it being shameless ad hominem and for it merely covering up something that you evidently do not want to do for some unknown reason.

    As to your reply concerning only remuneration, that too is just not correct, as the act of taking can also involve violations of due process. Also, your last statement is unintelligible (“every patent owner whose patent is revoked still has a remedy for compensation“) as you once again want to only focus an end-adjudicated situation (revoked) and provide no sense whatsoever what this remedy for compensation is. Maybe you meant to say something else, but what you said here sounds like you simply lost your mind and are attempting some mad scramble in order to NOT follow the clear and easy directive that I laid out for you. I am reminded of the “umbrage” game that you have played with others: imagining some slight, “getting upset” and storming off and refusing to carry on the conversation.

    Please do not attempt to insult my intelligence with either that game or with your petty “wacko” labeling of something that you are just not willing to step through and to understand.

  36. step back May 6, 2016 2:44 am

    Ed @33
    When government “takes” without due process of law (i.e. by way of an ultravires PGR) that is a violation of the Constitution. Due process is that which is afforded in a full fledged Article III court proceeding, not in an Article I quickie kangaroo tribunal.

  37. Night Writer May 6, 2016 7:13 am

    @36 Ned is like Lemley. They come and say they like patents and then try to hug you in deep water.

  38. Night Writer May 6, 2016 7:36 am

    >>1) nonreviewability — could be used for lots of mischief that would implicate the Constitution.

    I am having buyer’s remorse on this one. I wondering if the justices would think it is enough that say Republicans or blacks could sue for a civil rights violation if the director of the PTO was using her discretion improperly.

  39. Edward Heller May 6, 2016 11:33 am

    step, “due process” only in a court of law? I do not disagree. However, why not just say that the adjudication of the validity of a patent must take place in an Article III court?

    That position is now before the Supreme Court in two petitions.

  40. Anon May 6, 2016 1:09 pm

    Mr. Heller,

    Please respond to the substantive points that I have put to you.

    Please do so without changing the subject into a discussion of anything other than the separate institution point.

  41. step back May 6, 2016 1:49 pm

    Ed @39

    IRCC, Judge Newman’s position (Fed. Cir) in a couple of her recent dissents is that by AIA, Congress intended for PGR’s to be a “substitute” for Article III adjudication and therefore burdens of proof and claim construction must be the same as in District Courts. In other words, clear and convincing and no BRI.

  42. Edward Heller May 6, 2016 2:47 pm

    Step, Newman: No on BRI. Strong on 7th Amendment.

    However, the lower burden of proof is statutory.

    The only way forward to level the playing field is to put validity litigation back into courts. As to the high cost, congress ultimately controls the rules. That is in the constitution.

  43. step back May 6, 2016 3:18 pm

    Ed

    Statutory is not inherently Constitutional.

    An “issued” patent is considered personal property.
    Why are holders of this kind of property discriminated against (no equal protection) in comparison to other holders who are not subject to kangaroo court takings of their personal property?

  44. Anon May 6, 2016 4:09 pm

    The “statutory is not inherently Constitutional” line of thought is what exactly leads to asking the right question.

  45. Edward Heller May 6, 2016 4:14 pm

    step, listen, I think the law (constitution) is well established that validity must be tried in common law courts, not in administrative courts because it was so tried at common law. It is just that the Federal Circuit refuses to follow the law. They are famous for it. Until and unless we end the monopoly that the Federal Circuit has on patent law, we are going to have to go the Supreme Court or to Congress to fix its intransigence.

    Even today, in a case involving an inventor filing a legal claim to be named as a coinventor, the court ruled his legal claim barred by laches, relying on Aukerman, even though that case is under review by the Supreme Court.

  46. Anon May 6, 2016 4:42 pm

    It is just that the Federal Circuit refuses to follow the law.

    So very sad that you are the one with a case before the Supreme Court if you continue to blame the Federal Circuit for what Congress has written.

  47. Night Writer May 9, 2016 3:34 pm

    @45: the problem is that the federal courts are overflowing. Very hard to believe that Roberts will do anything to bring all that work into the federal courts. Don’t forget he runs them.

  48. Night Writer May 9, 2016 3:35 pm

    @41 step: but the problem is Chevron. The PTO is merely interpreting the statute that they are implementing. I think BRI lives on.

  49. step back May 9, 2016 5:16 pm

    Night @48

    Chevron deference is given only if the agency has expertise in the field in question. The PTO has no prior experience and expertise in litigating patents AFTER they have issued and the amendment option is not as of right.

  50. Night Writer May 12, 2016 9:07 am

    @49 step back–you can’t be serious. The PTO is the only expert in regards to patent validity.

    I made my prediction. I am worried that the justices might see the no review as OK since we have moved into a post Constitution judiciary.

  51. step back May 12, 2016 1:59 pm

    Night –agree about SCOTUS being in an above-the-Constitution modality