Comments for Patently-O

Comment on Integrity Versus Repose: When Claim Preclusion Bars Fraud on the Court by paulf

paulf — Mon, 08 Jun 2026 19:40:07 +0000

An interesting asserted “fraud on the court” case [with asserted conflicted legal representation] was just reopened in a FL D.C., per news reports. The above quotation from Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944) may be appropriate there as well: “The public welfare demands that the agencies of public justice be not so impotent that they must always be mute and helpless victims of deception and fraud.”

Comment on A United Front Against “Settled Expectations” by dstout

dstout — Mon, 08 Jun 2026 17:36:12 +0000

In reply to paulf. I would like to see Congress enact the statutes they have been kicking around for years, including clarifying the muddled mess the courts have made of eligibility law and the concept of the presumption of patent validity. I think that if Congress did its job the Director would not feel the need to act.

Comment on Integrity Versus Repose: When Claim Preclusion Bars Fraud on the Court by CaptainCraig

CaptainCraig — Mon, 08 Jun 2026 17:15:06 +0000

Correcting fraud-based injustice should not be barred by res judicata.

Comment on A United Front Against “Settled Expectations” by DavidBoundy

DavidBoundy — Mon, 08 Jun 2026 16:19:20 +0000

For challenge to discretionary denial of an IPR, constitutionally-based mandamus is three-strikes-you’re-out. Mandamus only reaches “clear and indisputable rights” and ministerial acts. In contrast, IPR institution decisions are discretionary. Similarly, due process can only apply where the claimant shows a life, liberty, or property interest—but it’s impossible for an IPR petitioner to show a “legitimate claim of entitlement.” Third, many of the recent mandamus cases misapprehend basic administrative law: 5 U.S.C. § 553(b)(A) allows agencies to issue some rules by mere publication in the Federal Register; a frontal challenge to an agency’s exercise of a lawful power cannot succeed. For three reasons, mandamus is the wrong tool for the job. The petitioners in these cases, and Google here, have excellent counsel—the failures were architectural, not a matter of effort or talent.

These challengers are overlooking alternatives. A viable challenge begins by identifying the weak link in the chain, and then focuses overlooked principles of Supreme Court and statutory administrative law on that weak link. The two most vulnerable rules are “settled expectations” and “summary denial without explanation.”

I’ve navigated this landscape before. In 2007-09, I led challenges that caused OMB to quash the Patent Office’s continuation, 5/25 claims, IDS, and appeal rules. I’ve quashed another half dozen since then. Most often, I’ve used a law that’s unfamiliar to the patent bar—the Paperwork Reduction Act, or various executive orders, or corners of the Administrative Procedure Act. That experience is directly applicable here.

If you have been subject to a discretionary denial that appears to lack statutory grounding or any meaningful explanation, the right question to ask is how to frame a successful challenge—not whether to pursue a mandamus challenge that is doomed from the get-go. If that’s your situation, let’s talk.

Comment on What the Verdict Might Have Said: Jury Black Boxes in Ollnova v. ecobee by paulf

paulf — Fri, 05 Jun 2026 18:49:41 +0000

This is a Federal Circuit reversal of a surprising jury instruction by Judge Gilstrap (E.D.Tex.), since by now he may well have decided more patent trials than any other D.C. judge? His overall Federal Circuit reversal statistics [in comparison to the average] would be interesting to see if his high % of patent suits continues on?

Comment on Foreseeable Is Not Inducing: Hikma v. Amarin by paulf

paulf — Thu, 04 Jun 2026 21:00:05 +0000

Although relying on its own prior decisions, this unanimous Sup. Ct. skinny-label case decision re new-use claims for a generic drug is consistent with a normal statutory interpretation of the 35 USC 271(b) language: “Whoever actively induces infringement of a patent shall be liable as an infringer.” I.e.,“induces”, with the added requirement of doing so “actively,” by the inducer itself.

Comment on A United Front Against “Settled Expectations” by dstout

dstout — Thu, 04 Jun 2026 18:44:26 +0000

In reply to paulf. Everything appears to have been done lawfully and Constitutionally so far.

Comment on A United Front Against “Settled Expectations” by paulf

paulf — Thu, 04 Jun 2026 16:23:14 +0000

In reply to dstout. Fine, if done in the lawful manner of legal changes intended by the Constitution.

Comment on Wine Railway and the Patent Marking Statute: Is a Covenant Not to Sue a Patent License? by paulf

paulf — Thu, 04 Jun 2026 12:07:28 +0000

In reply to paulf. If by "control over manufacturing process or the product itself" was meant simply requiring the licensee to put the patent number on subsequent products or packaging [note the liberal AIA changes to marking] is there any legal [as opposed to defendant objections] reason that could not be required as part of a “covenant not to sue” license?

Comment on Wine Railway and the Patent Marking Statute: Is a Covenant Not to Sue a Patent License? by paulf

paulf — Thu, 04 Jun 2026 02:40:39 +0000

Is this not a PAE suit on a patent that had already expired before they sued this defendant? Otherwise, there would have been assertable post-suit infringement damages to base the suit’s complaint on even absent prior-licensee’s product markings, to avoid getting thrown out ab initio?
Also, I do not understand these two sentances: “But marking statute assumes that the patentee can authorize the making or selling of “patented articles.” That is something more than a bare patent license – which is simply a covenant not to sue – authorization seemingly would include something more like control over manufacturing process or the product itself.”
The latter such non-patent controls over licensee companies are not part of any patent suit settlement licenses I have seen. They would even make me AT nervous. “Authorize” in that context is logically understandable as simply allow making using, selling or importing the licensed products free of infringement of just that licensed patent. As does a “covenant not to sue” license. [It more clearly does not admit to either patent infringement or patent validity, nor has any implied warranties on the part of the patent owner [more like a quit-claim deed?]].