Chrimar v. ALE: Federal Circuit Approves PTAB Nullification of Previously Affirmed Jury Verdict

By Josh Malone
September 20, 2019

“Immediately upon affirming the PTAB cancellation, the same Federal Circuit panel wiped out Chrimar’s second final judgment against ALE…. The Federal Circuit identified no error by the judge or jury. Yet the PTAB unwound the verdict.”

This article has been updated to include a statement from ALE’s counsel, Jackson Walker LLP.

Yesterday, the Federal Circuit once again breached a fundamental boundary of our American system of law. This particular transgression has occurred only a handful of times, but each is more ominous than the last. If this is allowed to stand, we can no longer be considered a democratic republic, but will have become a banana republic. What is rapidly becoming routine to the patent litigation industry will create shockwaves throughout the other 12 circuit courts, upend the rule of law, and damage our nation.

The PTAB is Undermining the Judiciary

In Chrimar Systems, Inc. v. ALE USA, Inc. FKA Alcatel-Lucent Enterprise USA, Inc. (Fed. Circ. Case No. 18-2420), the Federal Circuit allowed the Patent Trial and Appeal Board (PTAB) to overrule an Article III court and jury. That is, the Executive Branch of government directly and unequivocally has overruled the Judicial Branch, including a jury.

My friend and fellow inventor John Austermann invented a technology to send power over ethernet cable in the late 1990s. At that time, sending power over the ethernet required dedicating one of the four twisted pairs in a CAT5 cable to carry the power, meaning it could not be used for data. John figured out how to send the power over the same line that was carrying data so there was no need to sacrifice bandwidth and there was no harm to the sensitive data circuits on either end of the line. His company, Chrimar, was awarded several patents, including U.S. patent No. 8,942,107 for A Piece of Ethernet Terminal Equipment.

A jury verdict was entered October 7, 2016 finding the ‘107 patent valid and infringed by ALE. The Federal Circuit affirmed the jury verdict with respect to validity on May 8, 2018. The ‘107 patent was and is valid according to the Article III court.

However, the case was remanded because the Federal Circuit identified an error in claim construction on a different patent. This is an all too frequent occurrence wherein multiple issues are re-litigated on appeal and the Federal Circuit forces the inventors to battle though multiple trials and appeals spanning most of a decade. In my own case, I had to endure 14 appeals before the infringer finally surrendered.

Chrimar had to go back to the trial court, strike the patent found to have been wrongly construed, and obtain a second final judgment on the ‘107 patent. Then ALE appealed, again.

Meanwhile, a different company persuaded the PTAB to determine that the ‘107 patent was obvious. It was typical claim construction and hindsight nonsense that inventors suffer at the PTAB. For example, they accused John of claiming to have invented the technology that causes a 1930s era telephone to ring, called “phantom power”. Of course, that was not his invention and the examiner would never have awarded him a patent for such an outrageous claim. The real judges and juries understood this, but PTAB technocrats are not bound by common sense.

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Entering the Upside Down

Here, the merits are not relevant to the point of this article, which concerns a much, much bigger issue. There is still work to be done to demonstrate how the PTAB administrative patent judges are a far cry from the technical and legal experts they are advertised to be. But the threat to our society posed by yesterday’s decision exists even when the PTAB is correct.

Setting aside the merits of the PTAB procedures and their decision to invalidate the ‘107 patent, Chrimar had already won against ALE—an award of $324,000 plus costs and interest. ALE refused to pay. They delayed and they appealed. That was their entire strategy. They figured they could lose their case and still win. And they did.

Yesterday, the Federal Circuit issued a Rule 36 affirmance of the PTAB cancellation of the ‘107 patent. Then the terrible, perilous, republic-rattling event occurred. Immediately upon affirming the PTAB cancellation, the same Federal Circuit panel wiped out Chrimar’s second final judgment against ALE. Even though the decision was indisputably correct. They nullified it. The PTAB nullified it. The political special interest-infected court in the Executive Branch agency overturned an Article III judge, jury, and appellate court! There was no error. Years of litigation, hundreds of briefs, weeks of hearings, depositions, a week-long trial, tens of thousands of hours of legal work, judge, jury, and appeal ending with a 100% correct judgment in favor of Chrimar. The Federal Circuit identified no error by the judge or jury. Yet the PTAB unwound the verdict.

The Federal Circuit said it was as if the patent never existed. How? It was a real patent. It has a ribbon on it, and it is signed by former USPTO Director Michelle Lee. I saw it with my own eyes. ALE said it wasn’t a real patent under Section 282, and they lost. The judge said it was a real patent. The jury said it was a real patent. The first Federal Circuit panel said it was a real patent. Yesterday morning it was a real patent. But today it never existed?

A Mockery and a Threat

This stuff only happens in banana republics—societies that have no rule of law. We are supposed to have the seventh amendment and an independent judiciary. This decision yesterday makes a mockery of our legal system. Worse than that, it is a huge threat to our entire society. This is not just about patents. This is fundamental. If the USPTO has this power to take away your property and overturn a court of law, then so do the IRS, EPA, DEA, FBI, ICE, FDA, SEC, and all the rest. Whatever you think about those agencies, they must not be allowed to overturn a court of law that has upheld the rights of a citizen. In fact, this is completely upside down. When an agency like the PTAB loses its way, we need courts and juries to vindicate our rights. This ruling yesterday is completely backward.

This must not be allowed to happen to our country. Not in America. We must fight for our rights. This decision must be overturned, and the balance of powers and rule of law restored. Our heritage, our rights, our freedom, and our prosperity are too precious to squander.

Following is the statement of ALE’s counsel, Chris Cravey and Leisa Talbert Peschel of Jackson Walker:

“We are pleased with the Federal Circuit’s decision to vacate the judgment of the district court and dismiss the case.  The decision is consistent with Supreme Court and Federal Circuit precedent. This case dates back to 2015 and required two appeals to the Federal Circuit. It’s gratifying to end this long-running dispute with such a favorable result for our client.”

The Author

Josh Malone

Josh Malone quit his corporate job in 2006 to take his shot at the American (Inventor’s) Dream. Eight years later, savings depleted and orthodontics and college unfunded, he took one last swing before trudging back to the corporate world. And hit the homerun with Bunch O Balloons. His solution to the 63 year old problem of filling and tying water balloons instantly became the number one selling spring/summer toy. It was just as quickly knocked off resulting in a patent litigation now totaling 6 patents, 5 patent suits, 5 PTAB petitions/trials, 4 preliminary injunctions, and 8 appeals at the Federal Circuit. He is currently a Fellow with US Inventor working to restore the patent system.

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 45 Comments comments. Join the discussion.

  1. Kerri September 20, 2019 2:00 pm

    Investigate the true patent owner of scale-ability, as it pertains to social media.

  2. Mike September 21, 2019 7:34 am

    This is a very emotional argument. The important fact underlying whether justice was served is whether the patent is in fact valid. If it’s not valid, nobody should have to pay damages for infringement. Also, the challenger in the PTAB certainly has a right to its day in court to argue invalidity. It’s the banana republic that would deny a potential patent defendant its invalidity defense just because someone else had lost theirs. This case makes perfect sense – if the patent is invalid the result was justice for all.

  3. angry dude September 21, 2019 9:49 am

    The FAANG money freely flowing into Washington DC over the last 15 years has turned 200-year old US Patent system into a farce.

    It is interesting to note that FAANG entities (Facebook, Apple, Amazon, Netflix, Google) all (except Apple) started right after Internet came to prominence as some type of internet startup fueled by explosive user base growth and unrestricted VC investments – well protected by trade secrets btw, no hardware or client-based software which could be immediately stolen by competitors – Google home page still looks the same, their patent apps were just for VC enticement..

    Later on, when they got billions in their accounts they branched into all kinds of tech – software, hardware, self-driving cars, cell phones, TVs, tablets, VR, AR, AI … you name it…
    And now they don’t want patents of course cause patents form smaller more innovative companies and independent inventors are a threat to those lines of their business..
    Do Congress critters understand the ugliness of this situation ?
    Allowing well-monied entity from outside to enter some new field like consumer electronics, traditionally based on strong patent protections, and to change the patent laws to their liking ?

    Well, there are entities out there much bigger and wealthier than all of the FAANG members combined together.
    Those entities are called “countries”
    China will swallow the entire USA with all of the FAANG alive for breakfast and pretty soon

  4. angry dude September 21, 2019 1:37 pm

    To add to my previous post @2

    FAANG corporations (except Apple to some extent… which needs to be investigated in detail…) all branched out to other industries like consumer electronics via corporate acquisition route (and also efficient patent infringement), not internal R&D

    Simple put, Facebook would have never been able to enter VR technology space if they did not acquire Oculus or another similar startup

    FAANG is like a giant octopus that grows its tentacles into any new tech that can generate enormous future profits by using their existing cash and (over-inflated) stock prices

    Very sad and unhealthy situation if you ask me

    And they broke up Standard Oil a century ago.. for doing what ?

  5. angry dude September 21, 2019 3:30 pm

    Top add to my post @3

    BTW, all of the original Oculus co-founders (Palmer Luckey, Brendan Iribe,
    Michael Antonov, Jack McCauley and Nate Mitchell) left Facebook (and left VR tech development altogether) to pursue other careers…
    Tells you something…

    Congress, break them up already !!!
    We do not need FAANG octopus sucking blood from smaller hi-tech R&D ventures and picking winners and losers

  6. Jack September 22, 2019 4:51 pm

    US patent system simply is Fraud. But what to expect from nation claiming in it constitution freedom of their citizens from unreasonable search and seizure of private property what at the same time there is Civil forfeiture law allowing Police to seize homes cars, accounts etc without due process just based on suspision” it is unbelievable until it happens to you. Same with other areas

  7. Josh Malone September 22, 2019 6:21 pm

    Mike, the patent was found NOT INVALID by the Article III Court and the Federal Circuit affirmed that verdict. ALE had their opportunity and they lost.

  8. Mike September 22, 2019 7:42 pm

    Josh, I thought an Article III court did uphold an invalidity finding. Patents should be objectively valid or not, and damages should not be based on how good a defense attorney is. If the patent was found invalid in any context, damages should not inflict any alleged infringer. Another perspective is someone thought of a way to exploit the patent system for a shake down. Thank goodness we live in a country with a legal system that has back stops against such activities. A shame it doesn’t always work.

  9. Josh Malone September 22, 2019 7:49 pm

    Mike, the patent was upheld as objectively NOT INVALID by the Article III courts – judge, jury, and appellate.

  10. Tesia Thomas September 22, 2019 9:11 pm

    Well the Executive branch should just undo all attorneys. Who needs a JD?
    Save your money and your time, future law students. If you’re ready passionate about law, go into business…

  11. angry dude September 22, 2019 9:34 pm

    Mike @8

    Dude, we live in the country where idiots like you but wearing black robes can make up idiotic and unconstitutional laws in areas they have no idea about and apply those laws retroactively to already settled property rights – e.g. to patents duly issued by the USPTO (and not just issued but already litigated and found valid)
    This is not just about patents – “Kelo vs City of New London” Scotus decision was no less outrageous and caused immediate outrage and pushback from the states
    Unfortunately lemmings in this country, while they still care about their sh1tty plywood homes (until they are homeless which is coming), don’t give sh1t about patents and inventors.. . until they are forced to read and speak Chinese – try it for once – and eat cheap Chinese food and work 12 hour shifts for their Chinese master
    Its coming…
    Now get lost

  12. angry dude September 22, 2019 9:47 pm

    https://www.cnn.com/2015/05/19/asia/gallery/china-nail-houses/index.html

    This is how SETTLED real estate property right looks

    This is “communist” China btw

    The title to any property right HAS TO SETTLE at some point. Period.

  13. Night Writer September 22, 2019 10:32 pm

    The problem with your argument is that “Yesterday, the Federal Circuit issued a Rule 36 affirmance of the PTAB cancellation of the ‘107 patent.”

    So the Article III court had the decision whether to ignore the Article I court or not. You stated, “That is, the Executive Branch of government directly and unequivocally has overruled the Judicial Branch, including a jury.” This isn’t really correct since the CAFC had the decision whether to overturn this or not.

    Effectively, the CAFC said that the Article I court was right. Pretty outrageous this was done with a Rule 36 given the history.

    Not surprising given the people that Obama appointed to the CAFC. My guess is that this is fairly common in other circuits as well with administrative law. The problem is that Oil States says we don’t have the right to try invalidity of a patent before an Article III court, so the CAFC is within their powers to allow an Article I court over rule an Article III court.

    It all comes back to Oil States.

  14. Night Writer September 22, 2019 10:46 pm

    It is kind of interesting to think about the implications of Oil States. It makes all that work in an Article III court not worth much. But it is all from Oil States that says you don’t have the right to an Article III court. It is interesting too to realize that this structure puts all the power in the CAFC where both appeals from the PTAB come and where appeals from the Dist. Ct. come.

    All kind of interesting that since the standards are different that res judicada doesn’t apply. Maybe this should be an amendment to the AIA that the Article III courts rulings have to be respected. Also it is interesting that the validity of a patent has to be re-litigated with each new defendant, so there is some symmetry in allowing IPRs on patents that have been found not invalid at the Fed. Dist. and affirmed by the CAFC.

    Still frankly this is all from Oil States and there is no surprise here given Oil States.

  15. jack September 23, 2019 12:16 am

    All this legal BS. What about the Inventor and real effect of idiotic convoluted laws on his/hers activity. We got now new kind of economic refuges leaving US for greener pastures in EU and China.
    Why Chinese patents laws are based on German law not the supposedly “best under sun” US bs.?

  16. angry dude September 23, 2019 6:34 am

    jack @15

    This is not just extremely costly and idiotic legal bs but a complete undermining of the US Constitution and everything US stands for.
    The priority date on this patent goes back to 1998 and first litigation was filed in 2008
    The year is 2019 now…. and patent title apparently never settled and has now been revoked by the very same government agency (USPTO) that granted it in the first place !!!
    The Founding Fathers are spinning in their graves faster and faster..

  17. Anonymous September 23, 2019 7:27 am

    You seem to avoid key issues in interpreting this decision. You note that “the merits are not relevant to the point of this article”, but the merits of a court decision are always relevant to the decision. It actually explains what happened and why. A different company challenged the patents at issue using different arguments and prior art. Why would you be surprised that the factfinder (the PTAB in this case) came to a different conclusion? Think about two different criminal trials where one results in a hung jury and the other results in a unanimous verdict (not an unusual situation in our legal system). Which decision stands? Should the second one be ignored because the first one produced a different result? Here’s another question for you. As you noted, a different company challenged the patents at the PTAB. Should they be denied their right to challenge those patents because someone else already challenged them? If only one challenge is permitted to any patent, what is to stop patent holders from having sham litigation filed in order to prevent anyone else from challenging their patents? As much as you’re also ranting against the PTAB, they only made a decision based on the evidence in front of them. It was the CAFC that upheld the decision you don’t like. Seems like you can’t even figure out who should be the target of your ranting.

  18. Josh Malone September 23, 2019 7:28 am

    Night Writer you are missing the point. The PATENT IS VALID under Section 282 with respect to defendant ALE. The Federal Circuit affirmed it.

    The problem is that without finding any error the Federal Circuit vacated the verdict. Yet Chrimar prevailed on all accounts.

    Oil States did not contemplate this scenario, and I think is is unlikely that SCOTUS would allow it.

  19. Mike September 23, 2019 8:01 am

    Josh, the Federal Circuit is an article III court, and it upheld an invalidity finding.

    Angry Dude, if you resort to name calling that indicates you have no good arguments. You lost.

  20. Anon September 23, 2019 8:21 am

    Josh and Mike,

    Can each of you provide a citation?

  21. Concerned September 23, 2019 8:54 am

    And because it takes many years, there are always questions as to novel and usefulness today as to what was happening 20 years ago.

    That was one reason, among many, why I put the prior art on the official record to demonstrate that my process is not well understood, routine and conventional as of my priority date regardless who says what in 2039.

  22. angry dude September 23, 2019 10:48 am

    Concerned @20

    I was always saying that obviousness arguments can’t be used to invalidate a patent 20 years after its issue..
    Obviousness HAS TO be decided by the USPTO examiners ONLY (not courts) right from the getgo and no later than few years after patent publication

    Only NOT NOVEL (if some *newly discovered* and previously not cited reference reading on patent claims is brought to USPTO or court’s attention) or NOT ENABLED (can’t reproduce claimed invention from patent specification alone) arguments can be used 20 years later. Period.

    Current US patent system is an ugly farce and no self-respecting citizen should participate in it.

    The doc said ‘to the morgue’ – to the morgue it is !

  23. Josh Malone September 23, 2019 11:35 am

    Mike, I agree with you. The Federal Circuit has held the patent both Valid and Invalid. Hence, the banana republic.

    Anon, I think the links in the article address your request for citations.

  24. TFCFM September 23, 2019 12:00 pm

    That is, the Executive Branch of government directly and unequivocally has overruled the Judicial Branch, including a jury.

    I find that it’s often helpful to understand what one is talking about before one gets one’s panties in TOO MUCH of a knot.

    A private party challenged the validity of a patent. A district court held that that private party did not satisfy its burden to prove the patent invalid. The Federal Circuit affirmed. This is not, by any stretch of a sane imagination, a declaration that the patent is “valid” against all subsequent challenges.

    Here, a subsequent challenge to the validity of the same patent was held to have satisfied the burdens imposed upon the subsequent challenger to prove the patent invalid.

    Some validity challenges succeed; some fail. There’s nothing to see here.

    “Sun rises in the East (again)” material. Yawn.

  25. Anon September 23, 2019 2:24 pm

    Josh,

    I was looking for the direct contrast between what you have just stated: the Fed Circ saying opposite things.

    Is that in the article links? I did not see the “explicit validity” item in the link to the first Fed Circ opinion.

  26. Night Writer September 23, 2019 3:27 pm

    Josh Malone >>Night Writer you are missing the point. The PATENT IS VALID under Section 282 with respect to defendant ALE. The Federal Circuit affirmed it.

    I get that. I get your point. But again different D’s each get a shot at invalidating a patent and once invalid that is it. You lose. Here had the P sued another D and lost, then they could have lost their patent too.

    So, like it or not, this is a consequence of Oil States as the AIA makes pretty much anyone able to challenge the validity of the patent in an IPR rather than having to wait to be a D (or use another post-grant review at the PTO which would likely not result in invalidity.)

    So–again–no surprise. The SCOTUS will be fine with this. And this is exactly the type of thing that would be expected under Oil States.

    Not sure why anyone would be surprised by this. The standards at the PTO are only more likely than not, and at the Fed. Dist. Ct. the standard is much higher to invalidate a patent.

    So, we can expect this type of thing to happen frequently as a result of Oil States. (And again this is the typical pattern for patents. You can lose the validity of the patent outside one district court preceding.)

  27. Night Writer September 23, 2019 3:30 pm

    Note too the rubber hits the road when the fed. dist. ct. responds to the motion to dismiss by the D.

  28. Mike September 23, 2019 3:45 pm

    Appeals courts can only review the record in front of them. The winning invalidity argument was made before the PTAB, which the Federal Circuit affirmed. Presumably, if the same arguments were made at the trial, the same result would have been reached, although different standards apply, and the jury is the fact finder at trial (as opposed to the PTAB), so it’s possible that opposite outcomes could occur at trial than before the PTAB even with the same arguments. The Federal Circuit should reach the same conclusion on the same facts and arguments, though.

    It’s important to realize that a patent cannot be held to be valid because everyone deserves their day in court and subsequent defendants can prove invalidity even if previous defendants didn’t. A trial court can only find that a defendant did not carry its burden of proving invalidity, which is a different thing than proving a patent is valid (which is not the patentee’s burden anyway since patents are presumed valid).

  29. Anon September 23, 2019 5:16 pm

    I have to agree with TFCFM here (as shocking as that may be). I was hoping for more of a direct comparison (to which umbrage might then generate), but did not see the smoke for the amount of fire in the article.

  30. Joachim Martillo September 23, 2019 6:30 pm

    Josh, the CAFC found that there was neither error in law nor egregiously incorrect determination of fact by either trial court.

    IANAL, but as I understand 35 U.S. Code § 282 (Presumption of validity) only applies to a matter of fact. Invalidity is a matter of law.

    35 U.S. Code §§ 302-307 (Reexamination) has been around since 1980, and there were practically no complaints. At this late date the US patent system can only be fixed by Constitutional amendment.

  31. Josh Malone September 23, 2019 7:15 pm

    I am not sure which of us is being obtuse here. To ordinary people on LinkedIn my article is logical and the legal system is nonsensical. Yet some blog readers who spend a lot of time in AIA Wonderland find it confusing.

    The PTAB decision was contrary to the District Court decision. Normal people expect Article III courts and juries to outrank the Executive Branch, especially when they have already resolved the issue. Even more so when that is the only venue where the two parties presented their cases.

    Ordinary people are perplexed that Chrimar could win against ALE in court, the decision is affirmed to be correct (with respect to the ‘107) patent, and yet Chrimar still lost. THERE WAS NO ERROR BY THE JUDGE OR JURY.

    In the normal world a patent cannot be adjudicated to be both NOT INVALID and INVALID.

    Yet that is what happened here.

    Someone, please show me the error made by the District Court?

    The jury foreman should have checked the YES box next the ‘107 patent? On what basis?

    If there is no error, then the patent is NOT INVALID.

  32. Josh Malone September 23, 2019 7:31 pm

    Joachim, §282 is not just presumption of validity. It is the comprehensive list of defenses to infringement provided by Congress.

    ALE lost fair and square under §282.

    The Supreme Court added §101 as a defense.

    The Federal Circuit added PTO nullification as a defense in Fresenius.

  33. Joachim Martillo September 24, 2019 7:48 am

    Sorry, I meant 101 patent-eligibility is a matter of law.

    I think these are the rules.

    (1) Eligibility is a matter of law.

    (2) Anticipation is a matter of fact.

    (3) Obviousness is a matter of law and is based on factual determination.

    (4) Compliance with written description requirement is a matter of fact.

    (5) Enablement is a matter of law based on factual determination.

    (6) Possession is a matter of fact.

    (7) The issue of definiteness is based in claim construction and thus is a matter of law.

    The CAFC only revisits obviously and materially incorrect determinations of fact but reviews all matters of law.

    After all, the CAFC only has the trial court documents before it and only hears oral arguments from the attorneys for the parties. What else could the CAFC do?

    Is the above summary correct in describing the appellate review of an infringement trial?

  34. Joachim Martillo September 24, 2019 7:59 am

    Berkheimer makes eligibility based in factual determination, but SCOTUS is about to review the Berkheimer decision.

    As I understand the Abstract Idea decisions going back to Rubber-Tip Eraser v. Howard through Alice, Abstract Ideas consist of mathematics and of praxis.

    It is inherently confusing to call praxis, e.g., joining by insertion, an abstract idea.

    Joining by insertion as discussed in Rubber-Tip Eraser v. Howard is an engineering fit and certainly not abstract even if in SCOTUS-speak praxis (well-understood, routine, conventions activity) is a type of Abstract Idea.

  35. TFCFM September 24, 2019 9:49 am

    JM: “To ordinary people on LinkedIn my article is logical and the legal system is nonsensical.

    I would modestly suggest that your article omits an accurate description of the issues that were decided by the district court and by the PTAB. Simply put:

    – the district court (and its jury) addressed the question of whether the patent was proven invalid in view of the arguments presented by ALE (and held that it had not been so proven).

    – the PTAB addressed the entirely different question of whether the patent was proven invalid in view of the (again, different) arguments presented by Chrimar (and held that it had been so proven).

    One straight-forward explanation of the differing outcomes would be (I haven’t checked) that Chrimar simply made far-better arguments and/or had far-better proof than did ALE.

    However, even if Chrimar and ALE made identical arguments on identical art and facts, the different outcomes are not necessarily incompatible, because the Federal Circuit is an appellate court (i.e., there’s a second level of potentially-different argument). That is, even assuming that the outcomes before the district court and the PTAB should have been identical, if the appeal of one of the two lower decisions was “poorly argued” before the Federal Circuit, while the other was “well argued,” (whatever the two quoted terms might mean specifically – that is, one appellant satisfied his burden-to-convince while the other did not), different outcomes still might result.

    The moral of the story: both the facts and the arguments matter when comparing outcomes.

  36. TFCFM September 24, 2019 9:55 am

    (Should have checked before I hit ‘submit comment’:)

    In the preceding message, I named ALE as the district court patent-challenger who failed. ALE was, of course, the patentee, and I should have named the challenger (but don’t know the challenger’s name). Sorry about the confusion.

  37. Josh Malone September 24, 2019 1:26 pm

    Here are the parties/proceedings:

    In Chrimar v. ALE (EDTX) the patent was NOT INVALID. This was affirmed by the Federal Circuit in 2018.

    In Juniper v. Chrimar (PTAB) the patent was INVALID. This was affirmed by the Federal Circuit in 2019.

    The Federal Circuit then said that ALE does not have to pay Chrimar even though ALE infringed and the patent was NOT INVALID in that trial and there was no error in the decision.

  38. Eric September 24, 2019 4:16 pm

    “TFCFM ” –

    You are missing the forest for the trees. Technically, parsing legal details that escape the ready comprehension of ‘ordinary voters’ means you “are correct”, here. But, what of the stated and original purpose of U.S. patents?

    “To promote the Progress of Science and the useful Arts” (sic).

    With U.S. inventors fleeing the system in droves, and recently, increasing declarations of abandonment by leading inventors who have pursued non-corrupt treatment for years, your ‘proper precision’ of opinion only provides further evidence of obdurate obsession with ‘rearranging deck chairs on the Titanic’, while said ‘ship’ of American inventiveness goes down.

    I’m sure you do a sterling, bang-up job for your clients, who wish to use inventors hard-earned genius works for free – as well as, legally dispatching those who challenge your clients with so-called ‘frivolous’ patents. However, that does not give you any greater veracity when talking down to inventors, who will correctly identify your arguments as being inventor-antagonistic and infringer-friendly.

  39. Night Writer September 25, 2019 9:40 am

    Josh, the only thing I can tell you is this is how patent law has always worked. The difference now is that with the AIA a challenge to your patent can be made by anyone at anytime for any reason.

    Oil States said this is fine.

    And, there doesn’t have to be an error in the Dist. Ct.’s decision. The standards at the PTO and the Dist. Ct. plus the invalidity arguments can be different.

    Plus it has always been the case that claims can be challenged multiple times and if you lose once, then say bye to your claim.

  40. TFCFM September 25, 2019 10:38 am

    @Eric #39: “your arguments [are] inventor-antagonistic and infringer-friendly.

    My arguments are absolutely “inventor-agnostic.” An issued patent is either valid or invalid (whether or not courts ever make mistakes). An issued patent that is first ineptly challenged by an idiot and held “not invalid” is not thereby insulated from future challenge by another party who satisfies the burden of proving the patent invalid.

    If this truth were otherwise, then there would be a thriving industry of folks advertising, “I’m a complete moron!!! Let ME challenge your patent as soon as it issues!”

  41. Anon September 25, 2019 12:06 pm

    Josh,

    Thank you for your clarifying post at 37.

    You appear to still be struggling with the concept of “void ab initio.”

    It does matter very much whether or not the facts of the two cases are in alignment (and this is the reason for my posts above at 20, 25, and even 29).

  42. Josh Malone September 25, 2019 1:07 pm

    Night Writer, it has only happened a few times in history. Translogic in 2007, Fresenius in 2014, XY, LLC in 2018. Chrimar last week. Perhaps a couple of others I am forgetting.

  43. Josh Malone September 25, 2019 1:19 pm

    TFCFM, you are missing the point. ALE and their Jackson Walker lawyers were not idiots. But they lost.

    We are not talking about Juniper, the party that won at the PTAB.

    We are talking about ALE, the party that lost their invalidity argument under Section 282 in court.

  44. Anon September 25, 2019 3:29 pm

    Josh,

    With all due respect (and trust me that I align with TFCFM not easily), but here it is you that seems to be missing the point that the “retry” was on different grounds (coupled with the concept of void ab initio), and that this is fact a critical difference that deflates the supposed “nullification.”

    It is simply not a matter that the Article I apparatus directly nullified the case itself of the Article III apparatus.

    Pause and consider for a moment if the second case result were to have been generated by a different Article III court. No one would be positing that a “nullification” had taken place. Everyone would have recognized the situation to be merely something that CAN happen due to the nature that an Article III court does NOT declare a patent valid, but instead uses the “double negative” of “not found invalid.”

    I “get” the related position of wanting a sense of “quiet title,” but the situation really is no different than normal (this too is captured well in the writings of Ron Katznelson when Ron explains WHY granted patents carry the level and existence of the presumption of validity.

    That level and existence is NOT ONLY due to the fact that an administrative agency has vetted the property (which some have attempted to make into “THE” problem), but is also due to the asymmetry of “one against many.”

  45. jacek September 25, 2019 5:08 pm

    And what is the point to have so long discussion leading to nowhere? If we are going put so much energy into fixing what is wrong I am sure we will achieve it very quickly. Who is going volunteer to educate members of US congress who have their money invested in BIG TECH? Tons of knowledge means nothing against the mighty dollar.

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