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[patentatt]

Why the heck did the government recommend taking *this* case to the Supreme Court?

Even discounting for my huge pro-applicant bias, I can't imagine how the PTO could win.  They seem to be repeating the same mistake that Microsoft made in i4i: arguing that old, established Supreme Court precedent and patent practice must be sharply revised and shoehorned into the modern APA.

BTW Hyatt's brief is here:

http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/10-1219_respondent.authcheckdam.pdf

Does anyone think the PTO can win this thing?

[horsechute]

My question is why the Supreme Court took the case, when there are important issues like reverse settlements in the pharmaceutical industry that are begging for a hearing.

[NJ Patent1]

Patentatt: Thanks.  Overlooked that Cert was granted.  I downloaded the brief from the link you kindly provided and will read it (60 pages? ugh).  But I only had to go as far as the “questions presented” to respond.  You asked: “Why the heck did the government recommend taking *this* case to the Supreme Court? "

WRT first question presented, I’m clueless.  Seems uncontroversial to me.  Congress, wisely or unwisely, established two distinct routes for redress for an applicant dissatisfied w/ a decision of the Board, and knew that a circuit court of appeals does not hear evidence, but that DCs do.  And also knew that a looser in the DC had recourse to courts of appeal anyway.  If a DC could only rely on the “cold record”, what’s the point of yet another “bite at the apple” based on the same old cold (“frozen”?) record?  IMO, SCOTUS should affirm CAFC “per curiam”.  But were it as cut and dried as I see it, why Cert?  And what do I know anyway, don't wait for me 2 get nominated and confirmed.   

Question 2:  Maybe a subtle difference, maybe too long since I last read Tribe or Chemerensky.  But per my comments above, DCs find FACTS, courts of appeals don’t (they just look for substantial evidence to support an agency’s findings of fact, right?).

IMO something is indeed rotten in Denmark.  I heard a talk from judge Gajarsa last spring re: SCOTUS’ “oversight” of the CAFC (between us girls, he was a bit cranky). En banc , “bright line rule”, and panel-to-panel inconsistencies decisions appear to attract attention (What's left?). 

Maybe something to do with the APA and agencies - or their organic statutes - in general?  A bench slap at Congress, not CAFC?

Horse:  IMO “pay-for-delay” is indeed a bigger issue (full disclosure, I don’t like it).  But as far as I am aware, there is no “split” between circuits.  FTC has lost every time (no?).  FWIW, I watched the Senate vote on the AIA.  An amendment (Sen. Sessions?) to cabin pay-for-delay was narrowly “tabled”.  I suspect Congress will get around to it again when the unemployment rate sinks.  Two members of the Congressional “super committee” on the budget deficit have already drafted a bill to address it, citing increased Medicare / Medicaid costs.  I think SCOTUS wants to punt to Congress. 

[patentatt]

Patentatt: Thanks.  Overlooked that Cert was granted.  I downloaded the brief from the link you kindly provided and will read it (60 pages? ugh).  But I only had to go as far as the “questions presented” to respond.  You asked: “Why the heck did the government recommend taking *this* case to the Supreme Court? "

WRT first question presented, I’m clueless.  Seems uncontroversial to me.  Congress, wisely or unwisely, established two distinct routes for redress for an applicant dissatisfied w/ a decision of the Board, and knew that a circuit court of appeals does not hear evidence, but that DCs do.  And also knew that a looser in the DC had recourse to courts of appeal anyway.  If a DC could only rely on the “cold record”, what’s the point of yet another “bite at the apple” based on the same old cold (“frozen”?) record?  IMO, SCOTUS should affirm CAFC “per curiam”.  But were it as cut and dried as I see it, why Cert?  And what do I know anyway, don't wait for me 2 get nominated and confirmed.   

Question 2:  Maybe a subtle difference, maybe too long since I last read Tribe or Chemerensky.  But per my comments above, DCs find FACTS, courts of appeals don’t (they just look for substantial evidence to support an agency’s findings of fact, right?).

IMO something is indeed rotten in Denmark.  I heard a talk from judge Gajarsa last spring re: SCOTUS’ “oversight” of the CAFC (between us girls, he was a bit cranky). En banc , “bright line rule”, and panel-to-panel inconsistencies decisions appear to attract attention (What's left?). 

Maybe something to do with the APA and agencies - or their organic statutes - in general?  A bench slap at Congress, not CAFC?

Horse:  IMO “pay-for-delay” is indeed a bigger issue (full disclosure, I don’t like it).  But as far as I am aware, there is no “split” between circuits.  FTC has lost every time (no?).  FWIW, I watched the Senate vote on the AIA.  An amendment (Sen. Sessions?) to cabin pay-for-delay was narrowly “tabled”.  I suspect Congress will get around to it again when the unemployment rate sinks.  Two members of the Congressional “super committee” on the budget deficit have already drafted a bill to address it, citing increased Medicare / Medicaid costs.  I think SCOTUS wants to punt to Congress. 

From what I've heard, cert. was granted because:

A. the government recommended it
B. the government recommended it because the PTO hates Hyatt

[horsechute]

NJ,

I know that at least the Sixth Circuit has held that patent settlement agreements and reverse payments to be per se antitrust violations. See In re Cardizem CD Antitrust Litig., 332 F.3d 896, 907-08 (6th Cir. 2003). Also, the Supreme Court could hear the issue if they wanted to, since they did deny a petition in at least the controversial Schering-Plough case.

[NJ Patent1]

Patentatt:  I'm aware that SCOTUS often (always?) seeks the view of the Solicitor General when deciding to grant cert.  There may even be some term-of-art for that.  You've piqued my iterest.  Would love to know what the Solicitor said.  Is the Solicitor's reply protected from FOIA request under  "executive privilege?  Or will we have to wait and see if an Amicus brief is filed? 

Horse:  Thanks,  completely forgot that one, been focused on defeats for FTC (who are not giving-up on the issue).  Divining whay SCOTUS denies cert requires more tea leaves than I can count.  Per my prior comment, my best guess is that Congress has tried to address pay-for-delay, and (apparently) will try again, and SCOTUS wants to stand-back (even as such settlement agreements continue to be reached).   

[horsechute]

NJ, I should point out there are other cases as well.

In re Terazosin Hydrochloride Antitrust Litig., 164 F. Supp. 2d 1340: "  Both the Geneva Agreement and the Zenith Agreement warrant condemnation as per se violations of section one of the Sherman Antitrust Act. This tribunal's extensive review of the undisputed record has validated the presumption that the defendants' horizontal market allocation agreements would tend to inhibit domestic output and price competition without creating efficiencies [**41]  for American consumers, and the defendants have not adduced sufficient facts to place the illegality of their restraints in genuine dispute."

At any rate, if anyone lives in the DC area, they should, at least once, go and watch the Supreme Court while in session. I went to see two patent cases argued last year, and it was very, very interesting sitting in the front row of the supreme court bar section, about 10 feet from the justices. It is an experience you won't forget.

[patentatt]

Patentatt:  I'm aware that SCOTUS often (always?) seeks the view of the Solicitor General when deciding to grant cert.  There may even be some term-of-art for that.  You've piqued my iterest.  Would love to know what the Solicitor said.  Is the Solicitor's reply protected from FOIA request under  "executive privilege?  Or will we have to wait and see if an Amicus brief is filed? 

The solicitor recommended cert.  That's why I wrote earlier that the government recommended the SCOTUS take the case.

I don't think that the solicitor files any reply.

[NJ Patent1]

Patentatt:  I have no reason to not take you at your word.  But just a “thumbs-up, thumbs down”? No memorialized rational?  OK, question closed. 

Horse:  Noted w/ thanks.  Confess that - right or wrong - I pay less attention to DC cases, unless of course I’m in that district.  Maybe wrong bcs, as stated, pay-for-delay is a pet peeve.  Perhaps SCOTUS sees it as “intent of Congress” in the Hatch Waxman (or Hatchman Wax after two Jonnie Walkers) act, rather than Clayton. Hmmmm.  Dunno.

By opportunity, SCOTUS argument in a patent case would be a gas and worth the Amtrak fare from NYC.  Even if one had to sit in the “nosebleed” section so to speak. 

Both:  Have good weekend,  Ciao

[patentatt]

Patentatt:  I have no reason to not take you at your word.  But just a “thumbs-up, thumbs down”? No memorialized rational?  OK, question closed. 

Sometimes the SCOTUS orders the SG to give the view of the government on whether cert. should be granted (a CVSG order).

As far as I can tell, a CVSG order was not made in Hyatt.  Rather, the SG simply coauthored the PTO's petition and responses:

Petition: http://www.justice.gov/osg/briefs/2010/2pet/7pet/2010-1219.pet.aa.pdf
Reply petition: http://www.justice.gov/osg/briefs/2010/2pet/7pet/2010-1219.pet.rep.pdf
Supp. petition: http://www.justice.gov/osg/briefs/2010/2pet/7pet/2010-1219.pet.sup.pdf
Brief: http://www.justice.gov/osg/briefs/2010/2pet/7pet/2010-1219.pet.sup.pdf

[horsechute]

Thanks NJ, you have a good weekend too. If you join the SCT bar (100 bucks, at least it was for me) you don't have to sit in the nosebleeds (if I take what you are saying as undesireable seats) and can sit in the box seats. It was really a lot of fun, even joking with the other lawyers waiting in line (you have to get there at about . When you see the justices, it is like going from an old b&w photo to hd-tv. I have people in my family who do lots of appeals (never before the SCT) so I sort of know the game, but it is still really cool to see it up close at least once.

[patentatt]

Thanks NJ, you have a good weekend too. If you join the SCT bar (100 bucks, at least it was for me) you don't have to sit in the nosebleeds (if I take what you are saying as undesireable seats) and can sit in the box seats. It was really a lot of fun, even joking with the other lawyers waiting in line (you have to get there at about . When you see the justices, it is like going from an old b&w photo to hd-tv. I have people in my family who do lots of appeals (never before the SCT) so I sort of know the game, but it is still really cool to see it up close at least once.

I was there for the KSR arguments. 

[NJ Patent1]

Patentatt:  Thanks.  CVSG.  I thought there was a term-of-art or acronym.  And thank you for the links!

[NJ Patent1]

“Why the heck did the government recommend taking *this* case to the Supreme Court?”

Patentatt:  I read the SG’s Supplemental Brief and skimmed the Petition, thanks again 4 links.  I’m no Laurence Tribe - or even Nina Totenberg - but my hunch is “economy of (limited) administrative resources”:  evidence that “could have been presented in the first instance”.  Why hale the Office into court when the Office might have found patentability if this “withheld” evidence had been before it?  IMO makes sense on its face, but who withholds evidence that supports patentability in the hopes of getting a better shake at the DC?  And what is evidence that “could have been presented”?  If it was some document in applicant's possession, maybe OK.  But maybe I didn’t have reason to develop that evidence (e.g. another Dec ?) bcs I didn’t think the Office would be so darn obstinate and unreasonable.  And the Board doesn't here live testimony and IMO is thus ill-equipped to decide credibility if in doubt.   

I agree that wrt Q2 the Office appears to be spitting into the wind; for reasons stated and because any “asymmetry” is long standing.  Different procedural posture, different status of the claims, different standards of proof. 

For me, the equally interesting question is why did SCOTUS grant Cert?  Per Gajarsa, en banc CAFC decisions attract more attention, as do bright line rules.  But it looks like Petitioner is arguing for a bright line rule - the agency is presumed to always be right.  IMHO an extravagant assumption.  It will be interesting to see who gets bench-slapped, CAFC or the Office.

[patentatt]

“Why the heck did the government recommend taking *this* case to the Supreme Court?”

Patentatt:  I read the SG’s Supplemental Brief and skimmed the Petition, thanks again 4 links.  I’m no Laurence Tribe - or even Nina Totenberg - but my hunch is “economy of (limited) administrative resources”:  evidence that “could have been presented in the first instance”.  Why hale the Office into court when the Office might have found patentability if this “withheld” evidence had been before it?  IMO makes sense on its face, but who withholds evidence that supports patentability in the hopes of getting a better shake at the DC?  And what is evidence that “could have been presented”?  If it was some document in applicant's possession, maybe OK.  But maybe I didn’t have reason to develop that evidence (e.g. another Dec ?) bcs I didn’t think the Office would be so darn obstinate and unreasonable.  And the Board doesn't here live testimony and IMO is thus ill-equipped to decide credibility if in doubt.   

I agree that wrt Q2 the Office appears to be spitting into the wind; for reasons stated and because any “asymmetry” is long standing.  Different procedural posture, different status of the claims, different standards of proof. 

For me, the equally interesting question is why did SCOTUS grant Cert?  Per Gajarsa, en banc CAFC decisions attract more attention, as do bright line rules.  But it looks like Petitioner is arguing for a bright line rule - the agency is presumed to always be right.  IMHO an extravagant assumption.  It will be interesting to see who gets bench-slapped, CAFC or the Office.

I really hope the SCOTUS vindicates Judge Moore.  She fought hard to win this battle.  A vindication would give her more resolve to side with Rader and Newman in the future.