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« Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (Fed. Cir. 2018) | Main | In re Janssen Biotech, Inc. (Fed. Cir. 2018) »

January 28, 2018


A slight detour, but I would "borrow" the following quote:

Further, an agency acting beyond its purview lacks legitimacy and accountability. Controversial measures such as Petitioners' proposed restrictions on tribal sovereign immunity require a broader national democratic debate than an agency like the Board can provide [citing Hampton v. Mow Sun Wong, 426 U.S. 88, 116 (1976), Greene v. McElroy, 360 U.S. 474 (1959), and King v. Burwell, 135 S. Ct. 2480, 2489 (2015)].

and apply it to the Supreme Court itself when THAT Court seeks to legislate from the bench on matters of statutory subject matter (35 USC 101).

The "Supreme" in the name of the "Supreme Court" is not meant to be above the Constitution itself.

How would those opposing the Board deciding this motion issue make the patent owner better off? If the Board does refuse to decide the issue and the Board proceeds to invalidate the subject claims, the Fed. Cir. will have to decide this issue on appeal anyway?

"Lawrence Tribe... [& al.] state[] that "once a tribunal recognizes that an assertion of sovereign immunity is 'not frivolous,' it is 'error' for the tribunal to proceed further to address the merits... [A]dministrative agencies should not decide questions... beyond their statutory purview and institutional competence."

This is nonsense. Once the tribe injected sovereign immunity into the case, the PTAB had no choice but to decide whether sovereign immunity applied. It is fatuous in the extreme to argue that the PTAB *cannot* decide sovereign immunity. At this point, there is no way for them *not* to decide the question (remember, dismissing the case as the tribe requests is a *decision* on the sovereign immunity question).

Well, Greg, I think the argument would be that when the PTAB dismisses the IPRs this is not an affirmance of the substantive issues of validity raised in the petitions. It is analogous to the CRISPR interference, where the PTAB decided there was no interference-in-fact and dismissed; the many invalidity motions submitted by the parties or raised but not briefed have not disappeared, and indeed provide a road map to any accused infringer going forward. The Learned Professors' point is just that the PTAB should not reach the substantive issues and should let Congress restrict the scope of sovereign immunity to exclude IPRs if that is what it decides to do.

Thanks for the comment.

Paul: I think these arguments address the procedural niceties and (impliedly) address the PTAB's penchant for wanting to eat its litigation cake and have it too. Either IPRs are "litigation-lite" or "a specialized administrative proceeding" and if the latter, subject to the notice and comment rules under the APA. What these amici are saying is that the Director should promulgate a rule, go through the N&C procedure and then promulgate a final rule, which can be litigated like any other agency action.

I think this situation is like many in the IPR world, constrained by the statutory 12-month limit on rendering a decision. While I think it would have been irresponsible to adopt the "or an additional 6 months if you need it" option wholesale, this is a case where it would have given the Office time to go through the APA hoops. The amicus briefing is just cover for what the PTAB will undoubtedly do - deny the motion and decide the substantive questions raised in the IPR petitions. Then it will go to the Federal Circuit (who always have the option to send back for proper N&C and rulemaking under the APA).

Thanks for the comment.

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