[Patentpractice] Appeal from PTAB Decision

Wed Sep 17 23:26:30 UTC 2025

Thanks Ron.  That'a thought provoking.

Stan's original question was a list of possible challenges to a PTAB
decisison.   i didn't think that question was answerable.

Now i know the answer,

Step 1.  Look at you papers.  That's what's appealable.  If you didnt raise
it below, it's waived or forfeited now.  There are a handful of exceptions
to waiver/forfeiture, but they're really uncommon and fact dependent.

Step 2.  Look at 5 USC 706(2),  As a practical matter, an appeal can't
attack an agency decision, only the section 706 underpinnings.

On Wed, Sep 17, 2025, 3:59 PM Ron D. Katznelson <ron at bileveltech.com> wrote:

> 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
>
> SSRN: http://ssrn.com/author=706742
>
> Get Outlook for iOS <https://aka.ms/o0ukef>
> ------------------------------
> *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> 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> *
>
>
> Get Outlook for iOS <https://aka.ms/o0ukef>
> ------------------------------
> *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
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
>
> --
>
>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA  02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> *dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
> <http://www.potomaclaw.com>*
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
>
> --
>
>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA  02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> *dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
> <http://www.potomaclaw.com>*
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250917/a9e5bb08/attachment.html>