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« Federal Circuit Issues Stay in St. Regis Mohawk Tribe Sovereign Immunity Appeal | Main | ACI Paragraph IV Disputes Conference »

March 29, 2018


Two words come to mind:

Damage Control

Followed by one more:



the snippet regarding: "direct result of the chimerical nature of the proceedings engendered by the Leahy-Smith America Invents Act. Characterized as "trials" in the rhetoric used to obtain passage of the Act, the various post-grant review instruments are more in the nature of "a specialized agency proceeding" as the Supreme Court noted in Cuozzo Speed Technologies v. Lee."

does NOT ring true with the current legislative attemtps to remove American Indian Tribal immunity - the bill EXPRESSLY designates the PTAB as being equal to an Article III court (for that purpose).

Thanks, and it would also be helpful to clearly separate and distinguish expanded Board decisions expanded with 35 USC 6(a) members, and changed or expanded panels that changed the result arrived at by the original panel. [From the above report, it looks like most of the few few expanded panels for rehearings supported the result of the original panel.] To the rare extent that it occurs, the new PTO Director can change that practice - it would not require any rule or statutory change.
Most expanded panels have been for statutory interpretations, which do not bind the Fed. Cir. They can overrule any PTAB decisions on legal issues. [Chevron deference is overrated.] The hot button cases of alleged tribal patent assignments for asserted IPR sovereign immunity should soon have a Fed. Cir. decision rendering any PTAB decisions of any kind on that immunity issue moot.

The snippet reflects current law, of course; Congress can, of course, do whatever they want, having "plenary" power over the scope of tribal immunity.

Dr. Noonan,

While I agree with you that Congress - acting under its own power can do what it wants with the "plenary" power vis a vis American Indian Sovereignty, I suggest that you read the actual bill.

What they want to do with the bill - and how the bill is actually written - is very problematic from a Constitutional standpoint.

For one thing, they want to make the PTAB "equal to" an Article III court.

Separation of Powers will have an impact on that tactic.

I don't read the bill that way (and certainly no court would). I just see the bill attempting to say 1) tribal sovereign immunity cannot be used as a defense in a number of administrative agency proceedings relating to patents and 2) it cannot be used in court, either. The second part to me is just a way to prevent having PTAB decisions struck down after the fact on sovereign immunity grounds.

Not sure how else one (ANY one) would read that part of the bill.

I just told you - it abrogates tribal sovereign immunity asserted in:

(A) [one of several administrative proceedings]; or
(B) a review by a court of the United States with respect to a decision reached in a proceeding described in subparagraph (A).

The structure of the bill first abrogates tribal sovereign immunity in derivation proceedings, IPRs, etc., and then says the immunity is also abrogated for review of those decisions in a court.

The fact that the bill says, under these circumstances, that the immunity is abrogated in two fora doesn't say those two fora are in any way equal or equivalent. It just says that the status of the immunity in each is the same, i.e. it no longer exists.

That's not the part (nor the wording) that I was referencing.

This part:

"...as if the Office or the Patent Trial and Appeal Board, as applicable, were a court of the United States."

Please enlighten us

Never mind, I suspect you are referring to those passages regarding foreign states:

IMMUNITY OF FOREIGN STATES.—If a patent owner is a foreign state, for the purposes of any review described in paragraph (X)(A), the Patent Trial and Appeal Board shall determine whether the patent owner is immune from the jurisdiction of the Patent Trial and Appeal Board, in accordance with chapter 97 of title 28 as if the Patent Trial and Appeal Board were a court of the United States.

This is a function of international law, not domestic law, and would be resolved far outside the scope of the PTO. I'm not worried about these provisions.

Thanks for the comments

It's "great" to be "not worried."

You have one up on Alfred E. Neuman.

Alas, my point remains (and remains accurate).

Alas as well, that this may NOT even be an interesting point as to the options afforded Congress when writing a law that "goes into" several different sections and one of those sections is facially infirm as to Constitutional viability. The generous "“(4) LIMITATION.—This subsection shall apply only to the extent permitted under the 11th amendment to the Constitution of the United States.” appears everywhere - except for the insertion into Section 296 and Section 337 of the Tariff Act.

The larger point here is that this law is written poorly.

...correction: "law" should read "would-be law" or "bill"

Mea Culpa

No culpa required - it isn't new that bills tend to be poorly written these days. Whether that is due to the drafters, or the urgency to get this bill to the floor, or the compromises necessary to get anything passed is hard to know.

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