[Patentpractice] Appeal from PTAB Decision

Wed Sep 17 19:59:05 UTC 2025

First, I agree with David that there is a very low probability that the Federal Circuit will engage on this Constitutional issue. However, I disagree with him that the issue is not worth raising anyway, space permitting, because under a strong Constitutional argument on this issue, and a “close call” on the merits, the Federal Circuit may opt to avoid addressing the issue pursuant to the “Constitutional Avoidance Doctrine,” and reverse the PTAB based on the current evidentiary standard.
Second, David dismisses the unconstitutionality argument apparently by reading the IP Clause of the Constitution rather than the Supreme Court case law on the 5th Amendment and the general factors governing the standard of proof as discussed in IPR2020-00995<https://s3-us-west-1.amazonaws.com/ptab-filings%2FIPR2020-00995%2F23#page=48>. The standard of proof cannot be found in a specialized IP Clause; it is a general right as the Supreme Court explained: “Addington teaches us that, in any given proceeding, the minimum standard of proof tolerated by the due process requirement reflects … a societal judgment about how the risk of error should be distributed between the litigants.” Santosky v. Kramer, 455 U.S. 745, 755 (1982) (my emphasis). In Santosky, the Supreme Court held the preponderance of the evidence standard in § 622 of the N.Y. Family Court Act unconstitutional because of the asymmetry in the countervailing risk of adjudication errors of litigants in that particular parental rights setting.
There is similar evidence that in enacting the preponderance standard for IPRs, Congress missed that concept too, as it failed to recognize the much higher countervailing risk of adjudication errors for the patent owner than for the patent challenger. This is evident from the Senate hearings on the early version of the post grant opposition bill prior to the AIA.  See the hearing of the Senate Subcommittee on Intellectual Property, S. HRG. 109–983<https://www.govinfo.gov/content/pkg/CHRG-109shrg38536/pdf/CHRG-109shrg38536.pdf#page=45> at 41-43. The tech industry witness advocated the preponderance of the evidence standard for post grant opposition proceedings and Senator Leahy asked the Pharma witness advocating for the clear & convincing evidence standard why the standard should not be the same as in application prosecution at the PTO. That Pharma witness was Bob Armitage, who had no clue as to the Constitutional reasons and the asymmetry in countervailing risk of error.
Instead, Armitage explained that “the current standard and the standard traditionally applied to patents in litigation has been clear and convincing evidence to invalidate a patent.” Senator Leahy then asked “but it took preponderance of the evidence to grant the patent.” Armitage summarized his argument for the heightened standard by stating that “there are industries for which patents are so important that it is absolutely critical, if they have gone through a rigorous process in the patent office and been found valid, that we have a patent that can be respected, not that intimidates, but can be respected.”  So applicants are not cognizant of that importance during prosecution? Leahy was not persuaded that the standard ought to be as in Article III courts because Armitage did not explain why the standard is different than that at the PTO.
The result might have been different had there been then a knowledgeable witness who could have taught Senator Leahy and the Committee that the asymmetry in the countervailing risk of factfiner errors arises only after claims are finalized and a patent issues with a presumption of validity, as further explained in pp. 44-47<https://s3-us-west-1.amazonaws.com/ptab-filings%2FIPR2020-00995%2F23#page=54> of IPR2020-00995.
That said, raising this Constitutional argument at the Federal Circuit requires confidence that the PTAB decision turned on the evidentiary standard – that this is a close call and that applying the clear & convincing standard would result in the reversal of the PTAB decision. For that to happen, however, there must also be reasonable number of jurists who would reverse the PTAB decision even now under the preponderance standard.
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/>
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From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Wednesday, September 17, 2025 5:18:54 AM
To: Stanley H. Kremen <shk at shk-dplc.com>
Cc: Ron D. Katznelson <ron at bileveltech.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; rkatznelson at roadrunner.com <rkatznelson at roadrunner.com>
Subject: Re: [Patentpractice] Appeal from PTAB Decision

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<mailto: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

Get Outlook for iOS<https://aka.ms/o0ukef>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>; Stanley H. Kremen <shk at shk-dplc.com<mailto:shk at shk-dplc.com>>
Cc: David Boundy <DavidBoundyEsq at gmail.com<mailto: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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