[Patentpractice] Appeal from PTAB Decision

Wed Sep 17 12:18:54 UTC 2025

Like Ron, I know of no case that that challenged "preponderance of
evidence" and I agree that it wouldn't be waived.

But I disagree with his (unstated) suggestion that it's a viable issue.
There's a reason no one has challenged this -- it's a loser.  Look at the
Constitutional text -- do you see the words "clear and convincing" in
Article I, section 8, clause 8?  I don't either.  Where the Constitutional
text grants a power to Congress but doesn't specify a limit on that power,
Congress can legislate as it likes.  Wisdom isn't a viable basis to
challenge an act of Congress.

You've got a page limit.  Use those pages on something else.

On Wed, Sep 17, 2025 at 5:07 AM Ron D. Katznelson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
> *-------------------------------------------------------*
>
> *Ron D. Katznelson, Ph.D.*
>
> *2020 Chairman, **IEEE-USA IP Committee
> <https://ieeeusa.org/volunteers/committees/ipc/>*
>
> *Office:** 760 753-0668*
>
> *Email: rkatznelson at roadrunner.com <http://rkatznelson@roadrunner.com/>  *
>
> *SSRN: http://ssrn.com/author=706742 <http://ssrn.com/author=706742> *
>
>
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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> 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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