About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Conference & CLE Calendar | Main | GoPro, Inc. v. Contour IP Holding LLC (Fed. Cir. 2018) »

July 29, 2018


When I weigh the back and forth of the dissent’s position (especially as guided by the majority’s identification of where the dissent obtained its grounds), I find the majority position EASILY to be the better one.

It’s not even close.

"Chief Judge Prost's dissent (joined by Judges Dyk, Reyna, and Hughes) makes the more straightforward (if not better) argument."

Hey Kevin,

I'm not surprised that Prost, Dyk, Reyna, and Hughes dissented but I'm also unimpressed with their draconian view that makes the ability to appeal an adverse decision where the government is the party potentially prohibitively expensive, even if the private appellant succeeds. (I also applaud the majority for not interpreting this statute in such a draconian fashion where the dissent's view on legislative intent is hardly clear and is ambiguous at best.) Do these four judges dissenting even understand what due process is?

Yes, Skeptical, but we are not the audience CJ Prost was writing for.

Be that as it may, Dr. Noonan, my comment is based on legal impact and any writing geared otherwise runs the risk of entertaining folly to attempt to curry favor with what may be surmised to be a fleeting (non-legal impact based) emotion or perhaps philosophy.

Better would be (and is, in my book, even for audiences that are not me), would be the writing of the majority that shows a better balance of ALL the points (including those offered by the dissent).

Better display of critical thinking is something that I will turn to in every single instance. Even for other audiences. Of course, that better critical thinking may need to stress different factors of its critically developed points to suit different audiences.

Be that as it may, is there a particular audience that you have in mind, to which you would rank the dissent as being better written for?

I would not find such an audience (not even the Supreme Court, seeing as there remains an absence of the emotive buzzwords that might be taken as "better" for the Supremes).

"Better" in this case means "simpler," and many Supreme Court cases hinge on plain meaning determinations of what statutory language means. Plus the Court is likely to say that the PTO is not bound by its earlier failure to ask for its attorneys' fees, using the change in funding under the AIA and the uptick in Section 145 actions (according to the dissent) as justification, and that the American Rule should not apply in instances where winning and losing does not determine responsibility for payment. If CJ Prost is able to have convinced the Court that there is a Circuit split, that is all the justification the Court will need. And it will be in a position of deciding whether an Executive Branch agency should be precluded from implementing this statutory section as it sees fit.

Simple - but simply countered well.

Plain meaning - as explained by the majority decision is NOT what the dissent wants it to mean.

The AIA fund changing is inapposite to the issue (that's not simple - that's clouding the issue).

American rule applying where winning or losing does not determine IS the issue - you assumed the conclusion to be proven there. Again, that's not simple, that's simply clouded (and circular).

Circuit split? Meh, two different topics (TM and patents).

Chevron? Not nearly enough to overcome the American Rule.

Sorry, but the simple and direct STILL adheres to the better legal position. Even to the audience of the Supreme Court.

I am just not seeing the sense of "better" here.

Hey Kevin,

With all due respect (and you are due much in my opinion), I side with Skeptical's assessment. Indeed, the dissent's interpretation of 35 USC 145 comes dangerously close in my opinion to violating the spirit, if not the express text, of the "right to petition to redress grievances" clause of the 1st Amendment of our Constitution. Assessing attorneys fees is one thing if such an appeal is deemed frivolous. It's an entirely different matter if such an appeal can be "chilled" by the threat of the government being able to automatically obtain such fees, even if the appeal, though unsuccessful, is deemed non-frivolous. Also, why doesn't Chevron deference (which BTW I detest) apply here if the agency believed for decades that "costs" didn't include attorneys fees under 35 USC 145? Your argument that the AIA changed matters on this issue also (to use my late father's expression) "doesn't hold soap" as far as I'm concerned because it's far too speculative for a change this drastic without a clearer expression of legislative intent than what the dissent offers. And good luck on your argument about Prost being persuasive to SCOTUS to get a petition for cert based on a "split" in the Federal Circuit simply because of her title as Chief Judge. In my humble opinion, she's a very weak Chief Judge.

The problem is that Congress enacted a statute open to interpretation, i.e. "expenses" and added the emphatic "all." While Judge Stoll's majority opinion makes her case well the Supreme Court doesn't care about that - I suspect that the combination of 1) an administrative agency interpreting the statute within the scope of its authority; 2) the breadth of the term "expenses," particularly in early 19th Century English (the Court loves these historical antecedents); and 3) the circuit split (think about Impression Products and Kirtsaeng as being applications of the law in two different contexts, particularly where there was a statutory basis in one and not the other) and the recipe is there for Supreme Court review. Which is why I characterized the dissent as being more straightforward. And there is always the fallback: if Congress wants anything to transpire differently they can make it explicit.

Hey Kevin,

I agree (sadly and infuriatingly) that Congress in using the word "all expenses" failed to craft) a statute having clarity. (The AIA, Abominable Inane Act, another such atrocious example of lack of clarity.) But the concept of the bedrock American Rule abhorring a grant of attorney fees without an explicit mention of such should prevail unless the statute is clearer on that fact than is 35 USC 145. (And again, in view of Chevron deference, why should the USPTO now be allowed to change its view of 170 years or so to the contrary?) Also, I've got a more fundamental concern that permitting the government specifically to recover its attorneys fees (which are likely to be greatest cost to the government) invoke my concern that such a measure comes close to violating the spirit, if not the letter, of the "right to petition to redress grievances" clause of the 1st Amendment of our Constitution. Also, if "all expenses" includes attorney fees, where does it stop? Does that include the relevant portion of the salaries of those government employee (e.g., clerks) that can be related to the appeal of PTAB to district court?

You see problems that thave been SIMPLY addressed by the majority position.

“Expenses” is not the expansive term as you would want (per the dissent approach), and once that is resolved, the “all” loses its force. This was simply explained in the majority portion.

If you want to bank on the Supreme Court not caring about anything and doing whatever they want, then you might as well shutter the blog and not bother providing ANY critical thinking to any case. So while you may have a point on that “logic,” it is not a point that beckons to any type of dialogue.

Further, Kirtsaeng and impression products were LESS about circuit splits and more about borrowing concepts across IP fronts then your comment implies. Here, it is an aberration that you want to “borrow” from. In “K” and “IP,” the borrowing was from a more established line of thought in order to arrive at consistency. Such is not the immediate case, as consistency is already obtained per the majority view.

In view of critical legal thinking, the only “plus” on the Supreme Court taking this (and reversing) is that the Supreme Court sometimes acts as a a complete wild card and does whatever it wants.

While this may be true, it is not something that makes the Prost view “better” in any measure whatsoever. All other “lead-in” factors simply are in the majority view’s favor.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29