[Patentpractice] Appeal from PTAB Decision

Wed Sep 17 09:07:21 UTC 2025

Stan Kremen asked whether the preponderance of the evidence standard for an IPR rather than clear & convincing evidence has ever been challenged in court. As best I know, the answer is no, but detailed briefs to that effect were filed with SCOTUS and the PTAB.

The first occasion was on August 31, 2017, when we filed an IEEE-USA amicus brief<https://patentdocs.typepad.com/files/16-712-tsac-ieee-usa.pdf#page=28> that I authored in the Oil States case before the SCOTUS.  Section III of our brief provides authorities and explaining why the preponderance of evidence standard in 35 U.S.C. § 316(e) is “a constitutionally defective evidentiary standard.” I showed that the application of of this standard in IPR proceeding violates the patent holder's Due Process rights as being too lax to make reasonable assurance of accurate fact-finding.  "The function of a standard of proof, as that concept is embodied in the Due Process Clause and in the realm of fact-finding, is to instruct the factfinder concerning the degree of confidence our society thinks he should have in the correctness of factual conclusions for a particular type of adjudication." Addington v. Texas 441 U.S. 418, 423 (1979).  The standard of proof depends solely on the relative disparity of the parties’ countervailing risks of adjudication errors against them. The presumption of patent validity under the clear & convincing evidence standard is an immutable adjudicatory standard matched to the large asymmetry in the countervailing risks to the litigants due to factfinder errors in patent validity determinations. When the factfinder erroneously upholds an invalid patent, the patent challenger risks the unjust loss of damage award only for his own infringement, whereas when the factfinder erroneously finds a valid patent to be invalid, the patent holder risks the unjust loss of his rights to damage awards not only from the patent challenger but also from hundreds of infringers or licensees. He also unjustly loses his trade secret, enriching the public with a disclosure of his invention that was published upon consummation of the patent bargain.  That is why proof against him must be at the heightened standard of clear & convincing evidence.
This constitutional argument was not raised by the parties and therefore the SCOTUS decision in Oil States did not address the issue.

The second occasion that this constitutional argument was raised was at the PTAB by the Patent Owner's response on March 3, 2021 in IPR2020-00995<https://s3-us-west-1.amazonaws.com/ptab-filings%2FIPR2020-00995%2F23#page=48>. Section V of the response provides an updated detailed analysis, further distinguishing the argument from the constitutional case in Celgene Corp. v. Peter, 931 F.3d 1342, 1358 (Fed. Cir. 2019).
The PTAB had no authority to consider the constitutionality of § 316(e) and simply passed on the issue. The Patent Owner Appealed to the Federal Circuit in Case No. 2022-1357 on January 11, 2022. However, the case was not briefed as the Patent Owner voluntarily dismissed the appeal pursuant to FRAP 42(b) on  April 22, 2022, for other reasons.
I believe you do not need to have raised this constitutional issue at the PTAB and can do so for the first time at the Federal Circuit. This is because the PTAB cannot decide the constitutionality of its own statute.
Best,
Ron
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Ron D. Katznelson, Ph.D.
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________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, September 16, 2025 6:26 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; Stanley H. Kremen <shk at shk-dplc.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentpractice] Appeal from PTAB Decision

Look at any Federal Circuit case.  Every single one starts with standard of review.

On Tue, Sep 16, 2025 at 2:14 PM Stanley H. Kremen via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Colleagues:

What are the general grounds for appeal from an IPR decision. Would PTAB misinterpreting claims be adequate grounds. Also, has the statute setting the evidentiary standard for an IPR to preponderance of the evidence rather than clear and convincing ever been challenged at the Fed. Circuit or at SCOTUS?

Stan Kremen
Sent from my iPhone
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