• Top Patent Law Firms for 2017

    We compiled a list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2017 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtain…

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  • How Difficult is it to Judge Patentable Subject Matter?

    I’ve long argued that the Supreme Court’s patentable subject matter jurisprudence is inherently uncertain, and that it is therefore nearly impossible to determine what is patentable. But this is only theory (a well grounded one, I think, but still). A clever law student has now put the question to the test. Jason Reinecke (Stanford 3L) got IRB approval and conducted a survey in which he asked patent practitioners about whether patents would withstand a subject matter challenge. A draft is on SSRN, and the abstract is here:

    In four cases handed down between 2010 and 2014, the Supreme Court articulated a new two-step patent eligibility test that drastically reduced the scope of patent protection for software inventions. Scholars have described the test as “impossible to administer in a coherent, consistent way,” “a foggy standard,” “too philosophical and policy based to be administrable,” a “crisis of confusion,” “rife with indeterminacy,” and one that “forces lower courts to engage in mental gymnastics.”

    This Article provides the first empirical test of these assertions. In particular, 231 patent attorneys predicted how courts would rule on the subject matter eligibility of litigated software patent claims, and the results were compared with the actual district court rulings. Among other findings, the results suggest that while the test is certainly not a beacon of absolute clarity, it is also not as amorphous as many commentators have suggested.

    This was an ambitious study, and getting 231 participants is commendable. As discussed below, the results are interesting, and there’s a lot of great results to takeaway from it. Though I think the takeaways depend on your goals for the system, no matter what your priors, this is a useful survey.

    I believe that I took a version of this survey sent to professors, but I think my results were not included, as I was not in the target group described in the draft. I can definitively say that it was hard. Some of the rulings were pretty easy, but others were not. I think this is reflected a bit in the results – where the court found a claim invalid, survey takers were more likely to guess correctly. This is completely consistent with the view that Nothing is Patentable.

    Instead, it was the edge cases that had the most uncertainty. This can be a problem. First, it means that it was difficult for attorneys to plan for whether something would be valid. Second, it is unclear whether District Courts will always get the edge cases correct. Third, the number of cases on the edge grows as the Federal Circuit reverses some of the district court invalidity rulings (and affirms other validity rulings). This would have the effect of increasing, rather than decreasing, uncertainty.

    In other words, as more than nothing is patentable, it becomes harder to sort. Indeed, this study starts with cases after the Federal Circuit’s ruling in McRo affirming validity. Had I taken it before McRo, I could have gotten it 100% correct – just say it’s invalid. That’s actually an overstatement. According to Bilskiblog, just before McRo, 66% of claims were found invalid. Between that time and April 2017 (when this study cuts off), 50% of claims were found invalid. As more were valid, picking the valid ones gets harder. While the draft discusses some of these nuances, a slightly more robust discussion of statistical issues might be useful.

    An interesting takeaway from this study was that prosecutors were more accurate (sometimes much more so) than patent litigators. My initial thought was that perhaps litigators were being obtuse, but it occurs to me that two other things may be going on. First, prosecutors are in the business of getting patents (a point the paper makes) and thus have a completely different perspective on validity. In other words, they may have validity bias (that was where the primary differences were) whereas litigators (mostly defense, as the paper notes) might think everything is invalid. (OK, maybe they were being obtuse). Second, prosecutors and litigators typically use different interpretation standards. Interestingly, this cuts the other way, because the broadest reasonable construction, in my view, lends itself to more invalidity findings.

    Finally, takeaways from this paper depends on what you want from the system. Predictions were between 60% and 67% accurate overall (with much more uncertainty in the valid patents). The paper argues that this isn’t so bad, especially when you consider that respondents spent little time and didn’t have priority date or other context. I’m not so sure. The best results were picking invalid claims, but that’s easy because the invalid ones pop out at you. Instead, the failure to pick valid claims means that a) folks think eligible claims are not eligible, b) they spend money trying to show it, and c) there are potential appellate issues. This isn’t great. And it means that when writing patents, prosecutors know what won’t fly, but will be wrong half the time or more when they think something will fly. That’s not so great in my view. But that’s my view. If your view is that PSM is no better than a coin flip, then attorneys were definitely able to beat that, especially in rooting out invalid claims.

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  • Authors’ Group Study: Copyright Safe Harbour Provisions Distort Market

    Copyright “safe harbour” rules aimed at ensuring the free flow of information by internet service providers without liability for infringing content are “distorting the digital market, profiting tech giants and leading to significant underpayment of copyright owners,” according to an international authors’ industry association study released this week. The study, “Economic Analysis of Safe Harbour […]

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  • Computer history, nothing abstract to be found

    Computers, processors, memories and transmission equipment are devices or machines. All these machines, as configured systems, have a documented history of addressing concrete technical problems that were difficult to overcome.  Ultimately, computing machines are characterized by what they do, or by their architecture. This article illustrates some of the historical issues in developing programmed and programmable machines.

    The post Computer history, nothing abstract to be found appeared first…

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  • A Modest Proposal Redux

    By Kevin E. Noonan — Motivation is an important factor in any policy-based decision. Understanding motivation — whether considering legislation, programs by administrative agencies, or judicial decisions — can go a long way towards creating strategi…

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  • 介在する



    $$ Preferably a cable sub-assembly of the connector includes tubular insulating means interposed between the shield connection me…

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  • U.S. Antitrust Division Chief Makan Delrahim: Making Patents Great Again?

    Makan Delrahim, the leader of the Antitrust Division of the U.S. Department of Justice of the Trump Administration, has made several interesting comments concerning patents and the antitrust interface.  In a recent post on the Patently Obvious Blog, Professor Dennis Crouch discusses some debate concerning Mr. Delrahim’s positions as to when patent holders may create antitrust issues: “[Delrahim] explained that the DOJ’s historic approach has been a “one-sided focus on the hold-up issue” in ways that create a “serious threat to the innovative process.””  Professor Crouch includes links to documents concerning Delrahim’s positions as well as some responses. 

    A few days ago, Mr. Delrahim spoke to the College of Europe in Brussels.  His speech is titled: Good Times, Bad Times, Trust Will Take Us Far: Competition Enforcement and the Relationship Between Washington and Brussels.”  Most of the speech concerns the successes of cooperation between the DG Competition and the US DOJ Antitrust Division.  However, he does note some divergence in approach concerning intellectual property:

    In the intellectual property area, we each have licensing guidelines; DG Competition’s guidelines were revised in 2014; ours just last year.  Both sets of guidelines highlight the benefits of robust IP protection, the importance of innovation incentives, and the risk that certain hardcore conduct poses to competition.

    Intellectual property rights and innovation are topics I have cared about for a long time.  Intellectual property rights are enshrined in the U.S. Constitution, and I believe that strong protection of these rights drives innovation incentives, which in turn drive a successful economy.

    A deep-seated concern for protecting incentives to innovate underlies many of the changes in U.S. antitrust law over the past several decades, and it is no coincidence that we have enjoyed a period of staggering innovation over that time.  But in an ever-evolving marketplace, success is not a static outcome.  We must continue to think critically about how best to calibrate our enforcement decisions to promote competition and innovation.

    As you may know from what I have said publicly, a particular concern of mine is how we use antitrust enforcement in the context of standard setting.  In particular, I worry that we have strayed too far in the direction of accommodating the concerns of technology licensees who participate in standard setting bodies, very likely at the risk of undermining incentives for the creation of new and innovative technologies.  We continue to better our understanding of this important field.

    The dueling interests of innovators and implementers always are in tension, but the tension is best resolved through free market competition and bargaining.  And that bargaining process works best when standard setting bodies respect the intellectual property rights of technology innovators, including the very important right to exclude.  To the extent a patent holder violates its commitments to a standard setting organization, remedies under contract law, rather than antitrust remedies, are more appropriate to address licensees’ concerns.

    I am aware that there may be some distance between my position and that of some of my European counterparts.  If that is the case, however, we can look to our long history of effective and productive collaboration for guidance about how to proceed.  I will make every effort to work with our counterparts at DG Competition to narrow any gap between Brussels and Washington in this area.  We must maintain our close dialogue on the cutting-edge issues—innovation, intellectual property rights, and digital markets—that will occupy much of our time in the future. Innovators and consumers in both of our unions deserve nothing less.        

    Mr. Delrahim also discussed the purpose of antitrust or competition law, and digital markets:

    We also continue to work to narrow the differences between us on policy and substance.  Mr. Kolasky’s speech identified a “sharp divergence” between the EU approach and “the central tenet of US antitrust policy – that the antitrust laws protect competition, not competitors.”  But since those remarks, European Commissioners have again and again affirmed their commitment to the consumer welfare standard.  Starting with then-Commissioner Mario Monti and continuing with Commissioners Neelie Kroes, Joaquin Almunia, and on to Commissioner Margrethe Vestager today, Commissioners have expressed their commitment to the same consumer welfare standard that guides U.S. competition enforcement.  As Commissioner Vestager has stated, “we don’t always do things the same way.  But I think our goals are very similar: We want to protect competition and consumers.”

    This is not to say that we have overcome all of the differences between us.  We still do have differences, but we talk about them regularly and respectfully, so that we can understand what motivates them.  

    For example, we have not yet closed the gap in the area of unilateral conduct. European competition law still imposes a “special duty” on dominant market players, while we in the U.S. do not believe any such duty exists.

    With respect to unilateral conduct, we have particular concerns in digital markets.  We continue to advocate for an evidence-based approach based on existing theories, which are sufficiently flexible to apply to new forms of doing business in the digital economy.  Where there is no demonstrable harm to competition and consumers, we are reluctant to impose special duties on digital platforms, out of our concern that special duties might stifle the very innovation that has created dynamic competition for the benefit of consumers. 

    But the benefit of our close relationship with DG Competition is that we can and do talk about these differences, making progress along the way.  For example, in the ICN’s Unilateral Conduct Working Group, we spent significant time working together to develop an Analytical Framework for Unilateral Conduct.  Even though we have different views on how dominant players should be treated, we nevertheless reached agreement on a fairly significant policy document.

    Will Mr. Delrahim Make Patents Great Again? 

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  • Patent lawyers as magicians?

    Many of the “patent law” blogs have been silent on Judge Stark’s ruling in favor of Gilead in the hepatitis C dispute. Law.com emphasized the lawyers rather than the substance.

    Scott Graham of Law.com on the Stark decision in Idenix/Merck v. Gilead in post Skilled in the Art: Gilead’s Houdini Act :

    I begin today by asking: Is Fish & Richardson partner Jonathan Singer a distant relative of Harry Houdini? Once again Fish and Singer— this time with help from Irell & Manella and Orrick—have wriggled out of a massive verdict that a jury slapped on client Gilead Sciences Inc.

    Fish and Gilead took a $2.5 billion hit in Delaware federal court in December 2016. Jurors found that Gilead willfully infringed a Merck patent on a hepatitis C treatment. But on Friday U.S. District Judge Leonard Stark granted Gilead’s post-trial motion to invalidate Merck’s patent for enablement, saying essentially that the patent wasn’t precise enough to predict breakthrough medicines like Gilead’s sofosbuvir.

    Sound familiar? Yes, it does. In 2015 Merck scored a $200 million verdict against Gilead— same medication, different patents—but U.S. District Judge Beth Labson Freeman threw it out based on Merck’s unclean hands. Singer argued both that motion to Freeman and the enablement motion decided Friday.

    A key part of the opinion of Judge Stark relies on text from the 2007 post-Supreme Court Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334; 83 U.S.P.Q.2D (BNA) 1673 (CAFC 2007) ; for convenience IPBiz includes the FULL text of the paragraph:

    The rule that a jury verdict is reviewed for support by “substantial evidence” does not mean that the reviewing court must ignore the evidence that does not support the verdict. See Reeves, 530 U.S. at 150-51 (“in entertaining a motion for judgment as a matter of law, the court should review all of the evidence in the record”). The Court in Reeves stated that “[i]n the analogous context of summary judgment under Rule 56, we have stated that the court must review the record ‘taken as a whole’,” citing Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 [page 1682] (1986), and observed that “the standard for granting summary judgment ‘mirrors’ the standard for judgment as a matter of law, such that ‘the inquiry under each is the same’,” citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-251, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). Thus the Court pointed out that “the court must draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence,” Reeves, 530 U.S. at 150, but cautioning that “although the court should review the record as a whole, it must disregard all evidence favorable to the moving party that the jury is not required to believe. See 9A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 2529, p. 299 (2d ed. 1995). That is, the court should give credence to the evidence favoring the nonmovant as well as that ‘evidence supporting the moving party that is uncontradicted and unimpeached’.” Id. (citations omitted).

    The portion cited in the opinion by Judge Stark is as follows:

    “The rule that a jury verdict is reviewed for support by ‘substantial evidence’ does not mean that the reviewing court must ignore the evidence that does not support the verdict…. That is, the court should give credence to the evidence favoring the nonmovant as well as that evidence supporting the moving party that is uncontradicted and unimpeached.” Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334, 1345 (Fed. Cir. 2007).

    Judge Newman, in dissent in Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320; 21 U.S.P.Q.2D (BNA) 1161 (CAFC 1991), laid out the standards for “substantial evidence,” drawing in part from cases in the Third Circuit Court of Appeals:

    The standard of judicial review of jury verdicts is established. Sometimes described as a “reasonable jury” standard and sometimes as a “substantial evidence” standard, the challenger must show that there was not an evidentiary basis for the verdict. As discussed by the Court:

    But where, as here, there is an evidentiary basis for the jury’s verdict, the jury is free to discard or disbelieve whatever facts are inconsistent with its conclusion. And the appellate court’s function is exhausted when that evidentiary basis becomes apparent, it being immaterial that the court might draw a contrary inference or feel that another conclusion is more reasonable.

    Lavender v. Kurn, 327 U.S. 645, 653, 90 L. Ed. 916 , 66 S. Ct. 740 (1946). This standard has its roots in the Constitution and in tradition, for the principles underlying the jury right require that the jury verdict receive judicial deference.

    Many illustrations of the requisite standard of appellate review of jury verdicts appear in the precedent of the Third Circuit. 1Link to the text of the note [page 1171] E.g., Chuy v. Philadelphia Eagles Football Club, 595 F.2d 1265, 1273 (3d Cir. 1979) (en banc) (“Our limited function at this point is to ascertain from review of the record whether there is sufficient evidence to sustain the verdict of the jury on this issue”); Dawson v. Chrysler Corp., 630 F.2d 950, 959 (3d Cir. 1980), cert. denied, 450 U.S. 959, 67 L. Ed. 2d 383 , 101 S. Ct. 1418 (1981) (the jury verdict must be sustained unless the record “is critically deficient of that minimum quantum of evidence from which a jury might reasonably [page 1333] afford relief”), quoting Denneny v. Siegel, 407 F.2d 433, 439 (3d Cir. 1969).

    Federal Circuit decisions have well illustrated this standard. E.g., Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1571, 1 USPQ2d 1081, 1085 (Fed. Cir. 1986):

    To convince this court that a trial judge erred in granting a motion for JNOV, an appellant need only show that there was substantial evidence to support the jury’s findings and that those findings can support the jury’s legal conclusion.

    Also, e.g., DMI, Inc. v. Deere & Co., 802 F.2d 421, 425, 231 USPQ 276, 278 (Fed. Cir. 1986) (to reverse the jury, the findings must not be supported by substantial evidence); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 619, 225 USPQ 634, 636 (Fed. Cir.), cert. dismissed, 474 U.S. 976 (1985) (determining from the evidence as a whole whether there was substantial evidence in support of the jury verdict); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed. Cir.), cert. denied, 469 U.S. 857, 83 L. Ed. 2d 120 , 105 S. Ct. 187, 225 U.S.P.Q. (BNA) 792 (1984) (“only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV.”)

    On judicial review following a duly made motion for judgment n.o.v, the evidence must be viewed and reasonable inferences drawn in the light most favorable to the party with the jury verdict. Continental Ore Co. v. Union Carbide & Carbon Corp., 370 U.S. 690, 696, 8 L. Ed. 2d 777 , 82 S. Ct. 1404 (1962); Danny Kresky Enterprises Corp. v. Magid, 716 F.2d 206, 209 (3d Cir. 1983); Chuy, 595 F.2d at 1273. The reviewing court is not free to reweigh the evidence or substitute its own judgment for that of the jury, Blair v. Manhattan Life Ins. Co., 692 F.2d 296, 300 (3d Cir. 1982), or to pass on the credibility of witnesses. Kinnel v. Mid-Atlantic Mausoleums, Inc., 850 F.2d 958, 961 (3d Cir. 1988).

    Those functions are assigned to the fact-finder, in this case the jury. Our function is to determine only whether there is evidence upon which the jury could properly return a verdict, viewing the evidence most favorably to Kinnel the non-movant, and giving Kinnel the benefit of all reasonable inferences.

    Id. at 961-62.

    The Federal Circuit is in accord. E.g., Orthokinetics, 806 F.2d at 1572-73, 1 USPQ2d at 1085-86 (it is “a misunderstanding of our appellate role” for this court to determine what is supported by the evidence as a whole, rather than whether the evidence the jury could have believed was substantial); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed. Cir. 1983) (the appellate court must consider all the evidence in the light most favorable to the non-movant, must not determine the credibility of witnesses, and must not substitute its choice for that of the jury in finding facts, drawing inferences, or deciding between conflicting elements in the evidence). These are functions of the trier of fact, not the reviewing court.

    Of review for “substantial evidence,” the Court of Appeals for the Federal Circuit had stated in Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575: [jury] determination must be upheld if any set of facts supported by substantial evidence is capable of sustaining the verdict. Orthokinetics, 806 F.2d at 1580, 1 U.S.P.Q.2D (BNA) at 1091.

    In Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 , the CAFC stated:

    Thus, in reviewing the denial of the JMOL motion on the issue of obviousness, we examine the evidence in the light most favorable to the verdict and determine whether a reasonable jury could have found all the facts necessary to support the verdict of nonobviousness, i.e., whether substantial evidence supports the verdict. See Caver v. City of Trenton, 420 F.3d 243, 262 (3d Cir. 2005); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546 (Fed. Cir. 1983).

    See post on IPBiz on 18 Feb 18:

    US District Court of Delaware rules against Merck in case related to hepatitis C drugs Sovaldi and Harvoni

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  • BETR: Innovation in Media and Entertainment Law

    Mizzou’s Center for Intellectual Property and Entrepreneurship along with our Business, Entrepreneurship & Tax Law Review (BETR) is hosting its Spring Symposium this Thursday, March 1st from 9:30am until 2:00pm. Speakers include Professors Lyrissa Lidsky, Mary LaFrance, Jasmine Abdel-Khalik, Amy Sanders, Rachel Jones, and Brett Johnson. Newsy CEO Jim Spenser is the keynote. I’ll be […]

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  • Tribal Sovereign Immunity and Patent Law, Part II: Lessons in Shoddy Reasoning from the PTAB

    Guest post by Professor Greg Ablavsky, Stanford Law School

    Per Lisa’s request, I have returned to offer some thoughts on the PTAB’s tribal sovereign immunity decision (you can find my earlier post here and some additional musings coauthored with Lisa here). I had thought I had retired my role of masquerading as an (entirely unqualified) intellectual property lawyer, but, as the PTAB judges clearly haven’t relinquished their pretensions to be experts in federal Indian law, here we are.

    The upshot is that I find the PTAB’s decision highly unpersuasive, for the reasons that follow, and I hope to convince you that, however you feel about the result, the PTAB’s purported rationales should give pause. I should stress at the outset that I have no expertise to assess the PTAB’s conclusion that Allergan is the “true owner” of the patent, which may well be correct. But the fact that this conclusion could have served as entirely independent basis for the judgment makes the slipshod reasoning in the first part of the decision on tribal immunity all the more egregious. Here are some examples—I hope you’ll forgive the dive into Indian law and immunity doctrine:

    1. Supreme Court Precedent: The tenor of the PTAB’s decision is clear from its quotation of isolated dicta from Kiowa, where, in the process of considering off-reservation tribal sovereign immunity, the Supreme Court expressed some sympathy for the viewpoint of the dissenting Justices: “There are reasons to doubt the wisdom of perpetuating the [tribal immunity] doctrine.” But the PTAB omits the key language that came at the end of the Court’s discussion of this issue: “[W]e defer to the role Congress may wish to exercise in this important judgment,” leaving the decision as to whether to abrogate tribal sovereign immunity—which Congress may do under its “plenary power”—to the legislature. In short, although you wouldn’t know it from the PTAB’s cherry-picked quotations, Kiowa actually determined that the right approach in the face of uncertainty was to uphold the doctrine of tribal sovereign immunity.

    Nor was the 20-year-old Kiowa case the last word on this question. Astonishingly, the PTAB’s decision never discusses the facts, holding, or reasoning of Bay Mills, even though the Court decided the case, unquestionably its most important recent statement on tribal sovereign immunity, in 2014. There, the Court rejected another effort to invalidate tribal sovereign immunity, stating that “it is fundamentally Congress’s job, not ours, to determine whether or how to limit tribal immunity.” This rule, the Court held, applied even more forcefully after Congress had had twenty years to revisit the holding in Kiowa and declined to eliminate tribal sovereign immunity. Id.

    Arguably, the PTAB should give at least equal deference to congressional determinations as the Supreme Court, especially given the existence of pending legislation abrogating tribal immunity in this context. Or, setting the bar even lower, one would hope that the PTAB would at some point grapple with recent Supreme Court decisions directly on point. But they don’t—in part because, as I’ll discuss now, they mischaracterize the question as one of first impression.

    2. Administrative Proceedings: Having arrogated to itself the decision whether to apply tribal sovereign immunity in the inter partes review context, the PTAB proceeds to conclude that there is no precedent mandating application of tribal immunity in IPR proceedings, badly mangling the doctrine in the process.

    Let’s start, as the PTAB neglected to do, with first principles. As the Supreme Court said in Bay Mills, citing and quoting Kiowa, “We have time and again treated the doctrine of tribal immunity as settled law and dismissed any suit against a tribe absent congressional authorization (or a waiver) . . . . the baseline position, we have often held, is tribal immunity.” (quotation marks and alterations omitted).

    As this statement suggests, to void tribal sovereign immunity, one of the exceptions must apply. There might be an argument for some sort of implicit waiver here, but the PTAB doesn’t make it. Nor is there a credible argument that Congress has abrogated tribal sovereign immunity. The PTAB confuses matters by delving into a line of cases that deal with whether “generally applicable” federal statutes apply to tribes. These cases are relevant insofar as they raise the question of whether the patent laws at issue even apply in the first instance, and the PTAB defensibly concludes that they do. But reading the PTAB’s fuzzy decision, one might be forgiven for concluding that these cases also establish the test for whether Congress has abrogated tribal sovereign immunity. They don’t. As the Supreme Court has said over and over, the test is whether Congress has explicitly abrogated tribal sovereign immunity, a hurdle that no one can credibly argue has been met here.

    That leaves the question of whether the PTAB proceeding is a suit by the federal government, since neither tribes nor states enjoy sovereign immunity against such a proceeding. As the PTAB’s decision notes, a number of federal courts have permitted federal administrative agencies to bring suit against tribes; as the decision doesn’t note, these conclusions have been based on the black-letter principle that tribal immunity doesn’t apply when the plaintiff is a federal agency. Here, the PTAB seems to conclude that inter partes review is a government enforcement action such that tribal immunity shouldn’t apply—the absence of a government lawyer, the PTAB concludes, shouldn’t be dispositive.

    If this were indeed an issue of first impression, that reasoning might be compelling. But it isn’t. The PTAB’s logic would apply with equal force against state sovereign immunity, yet on three separate occasions, the PTAB has determined that inter partes review is sufficiently akin to a civil proceeding to afford the states sovereign immunity, pointing toward the existence of adverse parties, cross-examination, taking testimony, discovery, etc.

    The claim that an identical proceeding is tantamount to a civil adjudication when a state is the defendant but magically transmogrifies into a federal enforcement action when the tribe is a defendant unsurprisingly has no doctrinal foundation. To the extent it addresses this objection, the PTAB engages in so much hand-waving at the truism that tribal and state sovereign immunity are different—which brings me to my third and final point.

    3. Tribal and State Sovereign Immunity: The PTAB argues that it need not treat state and tribal immunity congruently, pointing toward existing caselaw that tribes are entitled to sovereign immunity even when they engage in behavior—such as removing a case to federal court—that might be deemed a waiver of state sovereign immunity.

    The PTAB’s reasoning on this point is a master class in conclusory assertions. If you read the cases the PTAB cites that distinguish tribal and state immunity, they provide what courts should for their decisions—rationales. By contrast, the PTAB offers no explanations, simply positing that the presumed difference between state and tribal sovereign immunity warrants the particular result.

    In fact, in most litigation, state and tribal sovereign immunity get treated similarly. The most glaring difference—that tribal sovereign immunity evolved through Supreme Court decisions rather than a constitutional amendment, granting Congress the right to abrogate it—doesn’t alter the position of tribal sovereign immunity before the PTAB (except, perhaps, in making congressional silence even more relevant). It’s also hard for me to see how the other key differences—for instance, that tribes, unlike states, enjoy immunity against state suits (and vice versa), or that courts are more searching in finding waivers by tribes—are directly relevant to the PTAB’s decision. Moreover, all of these differences flow from the direct application of Supreme Court precedent.

    In fact, although you wouldn’t know it from the PTAB’s decision, there is Supreme Court precedent on the relationship between tribal and state immunity, from the hoary year of 2017. In Lewis v. Clarke (yes, that’s the name of the case), the Court analyzed the analogy between state and tribal sovereign immunity, and, after actually considering the comparison, decided to apply the same doctrine in each instance. “There is no reason to depart from these general rules in the context of tribal sovereign immunity,” the Court concluded. Reasons, though, are in short supply in the PTAB’s decision.

    The takeaway, as you’ve gathered if you’ve read this far, is that I was disappointed in the PTAB’s decision. I was nonetheless surprised at the extent of my disappointment. As I noted in my initial post, I was skeptical of the Allergan deal and its potential consequences for Indian country; at a more fundamental level, I’m also skeptical of the principle of sovereign immunity writ large, even as I believe strongly that tribes, as sovereigns, should enjoy the same rights as other sovereigns. Moreover, teaching and writing in federal Indian law rarely fill me with confidence that the judiciary, particularly the U.S. Supreme Court, will apply the doctrine it has announced in an even-handed and principled way. This doesn’t take long to figure out. Once, when I asked one of my students how a particular case might be decided, she responded, “Should I base my answer on what the law says or how the Supreme Court will apply it?”

    So why the disappointment? In part, it reflects my experience that, when courts manipulate the rules of federal Indian law because they dislike a particular tribal action, the resulting principles take on a life of their own, often with devastating consequences for Native communities. In this context, I fear that there are many judges and commentators, like Justice Thomas, deeply wedded to state sovereign immunity but strongly opposed to tribal immunity; this decision works toward legitimating that position. My disappointment stems in part, too, from the extreme tendentiousness and obvious ignorance of the PTAB’s decision.

    But it also derives from Oil States and my opposition to the petitioners’ arguments challenging the PTAB, which strike me as part of a broader, wholesale challenge to the legitimacy of the administrative state. As I’ve written elsewhere, I think these attacks, which cloak themselves in the language of the “Founding,” represent a profound misreading of U.S. constitutional history. In short, I believe in the importance and legitimacy of administrative tribunals. Yet the PTAB’s decision, at least in this area, demonstrates that, as Jake Sherkow pointed out, these ALJs aren’t very good at being judges, even when it comes to such simple requirements as, say, grasping the fundamental, basic contours of an unfamiliar area of law. That makes me wonder if my confidence was misplaced, and that’s disappointing.

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