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March 23, 2021


"there are distinctions between Tumey and this case that could make a difference to a reviewing court"—That seems like a considerable understatement, even taking into account the two distinctions you did mention.

"These structural circumstances mirror those found to be due process violations in Tumey, Dugan, and Ward."—So I guess there aren't really any meaningful distinctions after all?

Also, is there more than one 1928 Dugan case in existence? The only one I can pull up found there was *no* DP violation.

I suppose you can tell I take a dim view of the argument's chances of success, but like I always say, my input's worth as much as you paid for it. At least there's no Tumey argument that I'm biased in that regard :)

Dear Hard: in some instances we advocate, in others we just try to inform and direct the reader’s attention to an issue like this. Betting against the current regime is unwise, but the Court has hinted on more than one occasion that they would be open to the due process argument if properly presented to them.

As for Dugan I didn’t check it so either I misunderstood their argument or it glossed over that decision.

Thanks for the comment

Well, no one can doubt that the patent office has set itself up to generate income for itself with the duopoly of "near 100% quality examination" on the front end and the (admittedly suffering from selection bias) near 90% LACK of 'quality' for patents having at least some claims revoked.

ALL of the monies collected on both ends go to the Patent Office for their operations (including salaries and bonuses), eh?

I hope this cert petition is not falsely implying that APJs [either individually or as a unit of the PTO] get paid more for instituting IPRs than not instituting them. They are all on straight civil service salaries, and the PTO fees for IPRs do not go to either. The recent great increase in discretionary IPR institution denials even demonstrates what an incentive for that rather than institutions once judicial review thereof was severely restricted.

@Kevin Noonan

Thanks as always for taking time to read these comments and reply. I appreciate the distinction between advocacy and informational pieces. My comments weren't meant to critique your post itself, just to probe and pick at the underlying arguments in the brief.

You're of course right that the Court has invited a DP argument, and I can't fault counsel for taking them up on that offer or for pulling out all the stops to undo an adverse judgment against their client. I also actually give them higher marks for creativity than the Arthrex challenge. In patent terms, I see the latter as exceedingly obvious. You have lots of well-known prior art, including Humphrey's Executor and Morrison, the former of which has been around for almost a century. And then you're highly motivated to simply apply that in a different context of APJs. In contrast, plucking out a fairly obscure case from the 20s that was only applied affirmatively (so Dugan aside) one other time many decades later, is definitely unexpected.

But creativity alone doesn't carry the day if the substance is weak. Here I think the same factors that make it creative make it flimsy on the merits. Just the idea that a pretty obscure case like this based on a very unique factual setting that only reoccurred *once* in nearly a century—Dugan (at least as I read it) even distinguished it on *nearly identical* facts—could apply to something vastly different like AIA reviews seems quite implausible on its face—and even that I think is being charitable. I've seen these kinds of obscure SCOTUS case longshot challenges before and they never seem to pan out.

To get into specific distinctions, Paul Morgan already noted a significant one that really seems to undermine the argument. For me another big one is that decisions *to* institute aren't even final decisions for instituted cases; that would of course be the FWD. (Decisions *not* to institute are pretty much final, but I assume New Vision is ok with those!) And in Tumey and its extremely scant progeny, as I understand it the money going into the public purse was coming right out of the individual's pocket. Here in contrast, a patentee isn't personally deprived of anything that could arguably be called "property" simply by a decision in favor of institution.

Last, I see a bit of a "vehicle problem", if you can call it that at the non-SCOTUS level, because this case arises from a CBM. While it's pretty clear the same or a similar argument could be made about IPRs, it is a fact that CBMs sunsetted (at least for now) last fall. So that just seems to give one more possible reason—albeit a relatively peripheral one—for CAFC to toss the case because anything connected to CBMs isn't going to be relevant in the long run.

But again, I'm just an ordinary interwebs punter (Punter of Ordinary Skill in The Art of commenting?), so when I offer prognostications, you definitely want a "salt thereof."

@Paul Morgan

Many thanks for highlighting these key facts about APJ compensation. You also beat me to it in pointing out the current trend that goes *against* institution.

BTW, it's a minor point, but it's not a cert petition—at least not yet, although ultimately I predict it will be. For now it's just a CAFC brief.

Paul: I certainly think the implication was that APJs have a personal stake in instituting CBMs (and by analogy IPRs), at least with regard to bonuses and workload. It was soft-pedaled prudently but nonetheless it was there.

Hard: don't underestimate the importance of these conversations to identify weaknesses (real or putative) in the arguments. Which you have certainly provided, and we thank you.

Mr. Morgan,

If I recall correctly, the topic of "They are all on straight civil service salaries" was explored over at IPWatchdog awhile back and the conclusion was NOT as your statement suggests (and more in line with Dr. Noonan reflects in his answer).

Bonuses and workload ARE affected by the decision to institute.

As are such "non-hard" things like showing that you are in line with 'taking down bad patents' (whatever THAT happens to mean at the moment in a Political Branch and administrative agency more than a bit insulated from the reflections of voters (outside of the presidential cycle)).

As to "The recent great increase in discretionary IPR institution denials even demonstrates" - there may well be OTHER reasons for this (the till is full, for example). The LARGER issue here though is that whatever behinds the scenes reasoning is just that: behind the scenes and NOT in plain sight - as your post tends to want to paint the picture as.


I will take exception to your notion of "Here in contrast, a patentee isn't personally deprived of anything that could arguably be called "property" simply by a decision in favor of institution."

One of the sticks in the bundle of property rights is the existence and level of the presumption of validity. Just ask i4i.

That stick IS taken at the point of decision to institute - REGARDLESS of any actual decision on the merits.

I would also caution you to take words from Paul Morgan with a separate (rather large) grain of salt. He is without a doubt the biggest cheerleader of the IPR (and tangent, the CBM), more so than any other regular patent law blog commentator.

It often appears that there is nothing more pleasing (to Paul) than to have MORE power to denigrate granted patents, and every comment of his can be counted on to spin towards "IPRs/(CBMs) are GOOD things" - regardless of the actual detriments to the general strength of patents that they have actually generated.

Thanks for the detail and the history, friend. The only thing I will add here is that I don't think it's universally agreed that the Dudas rule changes were universally bad---some of them are things the prosecution bar and companies have been asking for for decades, and most of them would have brought U.S. practice closer in line to generally all other international systems. Limiting continuations, endless claim sets, and other commonsense changes are things that are individually, I think, well within the ambit of what a motivated USPTO could accomplish, and would help prevent the inequality of endless prosecution from well-heeled applicants over smaller inventors who can't afford to pay their way to allowance.

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