SCOTUS invites Michelle Lee to Respond to Oil States IPR related petition for certiorari

Earlier this morning the United States Supreme Court requested a response from Michelle K. Lee, Director of the United States Patent and Trademark Office (USPTO), related to the petition for writ of certiorari filed by Oil States Energy Services, LLC, Petitioner, against Greene’s Energy Group, LLC, et. al.

The first and perhaps most obvious news story here relates to the fact that the United States Supreme Court believes Michelle Lee remains Director of the USPTO. Therefore, it can no longer be said that Congressman Darrell Issa (R-CA) is the only government official who has made an on the record statement suggesting that Michelle Lee was held over by President Donald J. Trump. The Supreme Court today seems to confirm Issa’s statements, and the truth that the Trump Administration has for some unknown reason refused to acknowledge. (See here and here) Still, either Michelle Lee is in violation of 18 U.S.C. 912, or she is Director of the USPTO. Lee continues to sign issued patents, she has been signing Federal Register Notices, she continues to report for work, and now the Supreme Court has invited her to respond on behalf of the USPTO. It certainly looks like Michelle Lee remains USPTO Director, and all doubt will be confirmed once the USPTO responds to this Supreme Court invitation to participate, which is not as voluntary as the politeness of the invitation from the Court suggests.

From a substantive standpoint, this dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB). There are three questions presented by Oil States in the petition for writ of certiorari were:

  1. Whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether the amendment process implemented by the PTO in inter partes review conflicts with Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016), and congressional direction.
  3. Whether the “broadest reasonable interpretation” of patent claims – upheld in Cuozzo for use in inter partes review – requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent’s specification.

Despite these very important questions, the Federal circuit affirmed the Patent Trial and Appeal Board (PTAB) without opinion with a Rule 36 judgment, which is simply a one-word judgment that says “Affirmed” without any explanation. See Does the Federal Circuit’s use of Rule 36 call into question the integrity of the judicial process?


It will be interesting to see the response filed by the USPTO, which is due on or before March 29, 2017, and whether the Supreme Court decides to take one or more of the questions presented. Oil States does raise some compelling questions, as does the not specifically raised question about the Federal Circuit’s abusive use of Rule 36 decisions when facing very important decisions – including decisions of Constitutional magnitude.

Oil States will be given the chance to file a reply within two weeks of the government’s response. If the March 29 deadline holds that will likely put the case in line for discussion by the Supreme Court at the April 21 or April 28 conference, says Robert Greenspoon, an appellate attorney from Chicago who specializes in patent appeals. That would mean a possible decision on the certiorari petition on either April 24 or May 1, assuming the Court does not carry the matter forward.

“If history repeats itself, the Government may seek an extension of time,” says Greenspoon. “This could delay this timeline, with a remote chance of pushing consideration of the petition into the next term. If the Government plays this card and seeks a full summer delay, expect resistance from the Petitioner, and possibly a rare opposition to an extension request.”

Substantively, on the Constitutional issue, Oil States questions whether inter partes review is contrary to Article III of the U.S. Constitution and the Seventh Amendment of the Constitution, but notes that this challenge was foreclosed during oral argument because of the Federal Circuit’s decision in MCM Portfolio LLC v. Hewlett-Packard Co.

On the issue of amendments, Oil States explains that the PTAB refused to consider the evidence it submitted in claim charts, which is hard to believe unless you are familiar with the procedural rules (or lack thereof) at the PTAB, which more closely approximate a kangaroo court. The PTAB has said (and the Federal Circuit agreed) that they do not have to consider even timely submitted evidence filed as a matter of right, which is obviously inappropriate. Oil States also argues that the burden was improperly placed on them, the patentee, and that the challenger to the patent never suggested that the showings made relative to the proposed amended claims were lacking. In other words, Oil States argues that the PTAB created the then amendment standard out of whole cloth, which of course is true and sadly common practice at the PTAB. Cf. Federal Circuit slams PTAB for using wrong CBM definition.

With respect to disparagement of the prior art, Oil States raises an important question about the importance of a specification and prosecution history with respect to interpreting claims. Obviously, under black-letter patent law both the specification and prosecution history must be consulted whenever claims are construed. See e.g. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (discussing intrinsic evidence); Nautilus, Inc. v. Biosig Instruments, Inc. (discussing indefiniteness); United States v. Adams, (“it is fundamental that claims are to be construed in the light of the specifications, and both are to be read with a view to ascertaining the invention”); and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., (“the interpretation of the patent must begin with its literal claims, and the prosecution history is relevant to construing those claims.”).

Increasingly, however, examiners, courts and the PTAB are only looking at patent claims when determining whether the claims are valid or invalid. This is most dramatic and inappropriate in the case of patent eligibility determinations, but it occurs elsewhere also. Oil States argues that here the patent itself specifically and repeated disparaged the prior art, and explained how and why the instant invention was different from the prior art that was being disparaged. The district court relied on these disparagement teachings in construing the claims, as is appropriate, but the PTAB did not, and neither did the Federal Circuit in their one-word Rule 36 judgment.


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Join the Discussion

15 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 24, 2017 05:48 pm

    Patent Investor-

    It is wishful thinking to believe there will be a new USPTO Director anytime soon. In the article above Robert Greenspoon prophetically predicted that the government would request an extension of time, which they have done in the past. I wouldn’t read too much into this, although I certainly understand why you might be hoping otherwise.


  • [Avatar for Patent Investor]
    Patent Investor
    March 24, 2017 05:34 pm


    There was on order issued two days ago extending the time to file a response, is there any way of knowing why this was requested? Such as “awaiting new director”??

  • [Avatar for Eric Berend]
    Eric Berend
    March 2, 2017 06:42 pm

    @ 10., ‘Caesar Slazar’:

    It’s quite straight forward, and should be simple to you; whose comments have shown a propensity for complexity, even to the point of being picayune: your diction and ardent pursuit of divisive hair-splitting distinctions that NEVER respect the actual inventor, together with your use of pejorative terms such as “patent maximalist” *; according to the ‘playbook’ promulgated by ‘efficient infringers’: makes it clear that you are an anti-patent demagogue.

    As the radical changes to U.S. patent law in the past 15 years, have not been driven by an honest debate over the inefficiencies and issues related to their purpose; nor the Constitutional U.S. public interest (e.g., “welfare”); but rather, the narrow interests of intellectual property pirates – I can have no tolerance for such mendacious racketeers. That includes the likes of you.

    When you and your fellow sycophants stop purporting to legitimize castigation of economic explorers, discoverers and leaders known as inventors; that amounts to fiddling while Rome burns; then, perhaps you will begin to demonstrate adequate reasons for respectability in a forum such as this.

    Until then, the actual situation is the very opposite of what you allege about me: in fact, it is you and your ilk, that sow “delusional, dangerous, and divisive views” about patents – to the detriment of the American people and its once-respected economic heroes, its inventors.

    * – a term used under ‘marching orders’ of the propaganda campaign mounted by the “efficient infringers” cabal, that is merely a synonym for the false canard of so-called “patent troll”

  • [Avatar for Eric Berend]
    Eric Berend
    March 2, 2017 06:23 pm

    @ 11, ‘Cowboy”:

    Thank you – that’s the funniest remark I’ve seen here, in quite some time.

  • [Avatar for American Cowboy]
    American Cowboy
    March 1, 2017 09:37 am

    Maybe Scotus should have sent the letter addressed to “occupant”

  • [Avatar for Caesar Salazar]
    Caesar Salazar
    February 28, 2017 01:21 pm

    Anon, Eric,

    I’m not sure what I have done to raise your ire. Anon has been quite civil, but Eric has had what may be reasonably deemed by an objective person to be somewhat delusional, dangerous, and divisive views regarding my character.

    As to my analogies, I have stated before that they are merely illustrative. And Anon, when I have made a mistake with regards to the law I have owned up to it. However, certain interpretations of the law that I infer are based on what a reasonable person would infer. Such is not uncommon, even at oral arguments before the Supreme Court.

  • [Avatar for Anon]
    February 28, 2017 07:47 am


    Having conversed with Mr. Heller for quite some time, I can – with as much certainty as possible given the circumstances (in other words, comfortably but definitely not provable) state that Caesar is not Mr. Heller.

    Mr. Heller does have his own agenda that he drives for, and does tend to use the appearance of a legitimate stance to do so. However, Mr. Heller’s modus operandi is to run away from the counter points of law that threaten his view point, rather than attempt to twist anything.

    In the instance of Caesar, there is indeed a certain sense of “glee” in pressing assertions onward after a counter point is presented, and yes, this may in fact “derail” from the main focus of the thread. But Caesar is careful enough (and this again goes to the “too clever” notion that I have commented upon) to include a piece of the thread topic.

    He is thus not technically “hijacking” anything. This is not to say that he is attempting to dialogue in an inte11ectually honest manner. He is consistently polite, and uses that politeness as a shield for making inapt analogies that – given his knowledge of law – he should know better than to make.

    His obfuscation is thus much more devious. He even has lured the prominent David Boundy to his defense.

    So as to an outright ban, that is perhaps a bit heavy handed (and as I noted, may in fact be what is desired by Caesar), and a more targeted warning may be warranted.

  • [Avatar for Eric Berend]
    Eric Berend
    February 28, 2017 06:27 am

    Is ‘Caesar’, here, another “Ed/Ned”?

    His/her diction is somewhat different. It seems a different person; yet, the very same tactic of deriving an appearance of legitimate stance by partial agreement, to then drive a divisive viewpoint; is utilized.

    However, “Ed/Ned” does not obstinately persist to the point of rudeness, in pressing his assertions. Three, five, even eight messages; as response to just one other commentator, in a single article, here? This edges towards ‘thread hijacking’, and I would caution the ‘Caesar’ person to cool his/her jets. It may take some time to try Gene’s patience, but one thing is clear: he does not tolerate such “hijacking”, for long.

  • [Avatar for Anon]
    February 27, 2017 11:25 pm

    Caesar, and I replied that it was not st all correct in the manner in which you are trying to spin it.

    You can keep repeating yourself and I can keep on pointing that you are just not correct.

    The answer you keep on implying is not – and cannot – be there because the question was simply not asked.

  • [Avatar for Caesar Salazar]
    Caesar Salazar
    February 27, 2017 10:17 pm


    I conceded that it wasn’t totally correct, but also pointed out that it was correct in a sense.

  • [Avatar for Anon]
    February 27, 2017 07:25 pm

    Point blank: what you said IS totally incorrect – as I pointed out, the question to which you want to imply an answer to simply was not asked.

    You do not get to try to hide an elephant in a mouse hole and reach your conclusion in such a round about way.

  • [Avatar for Caesar Salazar]
    Caesar Salazar
    February 27, 2017 04:38 pm


    You’re are correct that the decision was not expressly decided on Congress’ power to do so. However, it did say the “strong presumption” favoring judicial review…is overcome here by these “ ‘clear and convincing’ ” indications that Congress intended to bar review.” It tied this to the APA, which has been upheld under Congress’ power. Thus what I said was not totally incorrect, it was just missing something that I presumed was inherent in the decision. Thanks for the clarification.

  • [Avatar for Anon]
    February 27, 2017 04:23 pm

    Caesar, patents truly are a long way from any semblance of nuance that you want to give with other examples, as Congress point blank has deemed them property. The history of patent law in this country have always deemed them property (up until a stray strain), and the system of patent rights itself was built on the premise of patent rights being fully alienable property.

    You appear to seek a false position of nuance that does not apply.

    One cannot say that the patent right is SOLELY birthed from the administrative state (I know that you did not use the word “solely” and I add it for emphasis) given the foundational aspect of the Quid Pro Quo (there could be no given patent right if the inventor did not give something in return).

    Further, you misstate the Court’s holding with “COTUS ruled that Congress’ decision to make PTAB institution decisions final and non-appealable was proper under Congress’ power to do so.” as that was NOT the holding , nor was it even argued. Quite in fact, the properness of Congress constraining property without due process has yet to be put in front of the Court. I for one pointed out quite clearly that those in front of the Court were simply asking the wrong questions (and not the questions that you think here were answered).

    You appear to have some knowledge of recent case law, but your spin is decidedly not in accord with a full knowledge of patent law.

  • [Avatar for Night Writer]
    Night Writer
    February 27, 2017 04:11 pm

    Well, this is quite a development.

  • [Avatar for Caesar Salazar]
    Caesar Salazar
    February 27, 2017 03:29 pm

    This all depends, it would seem to the reasonable observer, to be ultimately decided on whether patent rights are “public” or “private” rights. While one may fall on one side or the other, it is really a nuanced question. Some rights that are private, such as arbitration claims required by statute (see THOMAS v. UNION CARBIDE AGRICULTURAL PRODUCTS CO. 473 U.S. 568 (1985)), while having many properties of a private right, are so enmeshed in a federal regulatory scheme that Article I tribunals are proper so long as there is a final Article III court available for appeal.

    Where do patents fall in this continuum? As stated earlier, it is very nuanced. The Patent Act of 1790 contained language suggesting that private property rights attached.

    On the other hand, a patent only carries with it the right to exclude, in addition to assignment and licensing schemes. It is certainly enmeshed in a federal regulatory scheme. Without government enforcement a patent would be meaningless. Indeed unlike copyright, the patent right does not attach until one obtains a patent from the PTO. One could say that a patent right is birthed from the administrative state. Furthermore, there is an appeal to an Article III court: the CAFC. This would satisfy the requirements in Union Carbide. Adding a twist into this is the concept of jurisdiction stripping powers by Congress for appellate courts. SCOTUS ruled that Congress’ decision to make PTAB institution decisions final and non-appealable was proper under Congress’ power to do so.

    Thus the real crux of the matter: are patents public or private rights? Recent jurisprudential guidance would suggest that they are quasi-private, but mostly public. The decision in Cuozzo and recent CAFC affirmations of the PTAB suggest the same also.

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