Patent Reform 2008: (fixing constitutional errors)

PatentLawPic390The only patent reform bill to make it through both the House and Senate in 2008 may well be the “Duffy Provision.” In an article first published in Patently-O on July 23, 2007, Professor John Duffy of GWU Law School argued that current provisions for appointing members of the Board of Patent Appeals and Interferences are unconstitutional. According to Duffy’s article, the constitution requires that these inferior officers (BPAI judges) must be appointed by either the President of the US or a “Head of Department” such as the Secretary of Commerce. I conducted a study in June 2008 and found that 83% of recent BPAI decision panels included at least one panel member that had been illegally appointed under the Duffy construction. In my study, a significant number of panels (44%) included a majority of illegally appointed judges, and about half of the opinions were authored by illegally appointed judges. John Welch, an expert on the Trademark Trial & Appeal Board suggested that TTAB judges would fall in the same category. [LINK

The House and Senate have acted on the issue and have now sent a Bill to the President that would correct the appointment process for both the BPAI and the TTAB by placing the appointment duty in the hands of the Secretary of Commerce.

The Bill also includes a “defense to challenge appointment.”  In particular, the new statute would read that “It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.”

Notes:

  1. Library of Congress Information on the Bills;
  2. Duffy is also a member of the McCain Justice Advisory Committee.

89 thoughts on “Patent Reform 2008: (fixing constitutional errors)

  1. JAOI,

    I can’t answer or discuss right now or until late next week. I am working on four applications for the client who has set a mandatory deadline for next of Friday (10 days from now). I have one almost completed, the second will be adopted from the first, a third which I think I know what the inventor wants, and a fourth of which I have little clue on the technology.

    I need to focus. Gotta go! I’ll resume and respond late next week (it will be sort of a de-compression).

  2. Dear Jim H.,

    I didn’t mean to be curt or disrespectful after Happy Hour yesterday. If I offended, please forgive.

    Please, by all means, what is undisputable to one may well be disputable to another. However, each time I knock down one position as fallacy, you raise another. I’ve presented clear, unmistakable and unambiguous evidence that “the exclusive Right” does not mean “compulsory licensing” but you, acting as your own lexicographer, want to believe differently, and you are certainly free to do Just that – this is, after all, America.

    But, if we constrained ourselves to using generally accepted English language meanings for words, we should be able to quickly come to agreement.

  3. JAOI,

    If you think something is undisputable, then I won’t make an effort disputing it. More I cannot say. What more can I say?

  4. JAOI,

    “This definition came from the link bvelow:”

    I know where the defintion came from. I want you to apply it to that which you think is best to support your position.

  5. This definition came from the link bvelow:
    “EXCLUSIVE, rights. Debarring one from participating in a thing. An exclusive right or privilege, is one granted to a person to do a thing, and forbidding all others to do the same. A patent right or copyright, are of this kind.”

    link to legal-dictionary.thefreedictionary.com

  6. Jim,

    By now, with all due respect, I’d like to think you know exactly where I stand. I’m trying to figure out where you stand and why you resist so what evidence is, in reality, undisputable.

    If you succeed in twisting “the exclusive Right” into “compulsory licensing,” the Framers, and the myriad Inventors they sought to reward with “the exclusive Right” for publishing their inventions, will never forgive you – you will be haunted and never get other good night’s sleep.

    Come on, come around; you’ll thank me in the morning, guaranteed or thrice your money back – Just pay shipping..

  7. JAOI,

    “Black letter law. Excerpt:
    “EXCLUSIVE, rights. Debarring one from participating in a thing. An exclusive right or privilege, is one granted to a person to do a thing, and forbidding all others to do the same. A patent right or copyright, are of this kind.”"

    What is the “do a thing” of patent law that you wish to apply to the definition? That is, what would you like to insert in place of this phrase to make the point of your argument?

    I will address your other comment in a later e-mail, but before I do, here’s a question needing yes or no answer.

    Do you agree with the discussion of “exclusive license” in the article that you linked?

  8. Jim,

    Re:
    “I have shown you what the Framers could have thought when they used the term “exclusive.’”

    Please provide some support for your above “leap in faith.”

    Please bear this in mind:
    link to legal-dictionary.thefreedictionary.com

    Black letter law. Excerpt:
    “EXCLUSIVE, rights. Debarring one from participating in a thing. An exclusive right or privilege, is one granted to a person to do a thing, and forbidding all others to do the same. A patent right or copyright, are of this kind.”

  9. JAOI,

    Do we need to go into discussion about the three other synonyms of “exclusive”? It seems to me that what “exclusive” meant under English law would have been an understanding to the Framers. If Congress is the licensor, then it may give an exclusive license while retaining the strings. To put it another way, if Congress is the patentor, then it may give an exclusive right while retaining the strings on the patentee’s right.

    Agree? If not, then how is my logic errorneous?

  10. JAOI,

    “As President Reagan might have said, “There you go again – what’s “injunction” go to do with it?”

    You asked me if three provisions would fit into the blank, and I said no. Then, in like fashion, I filled in blanks with provisions that would appropriately fit to provide to you with an example of words that would work and, at the same time, cut to the underlying issue of eBay.

    As you note, the words in contention include “exclusive.” With YOUR source, I have shown you what the Framers could have thought when they used the term “exclusive.” “In general under English law the [Congress] can carve out as many exceptions as it wants from an exclusive [Right].” Hence, the Framers chose “exclusive” with an understanding that Congress could carve out as many exceptions it wants — including enforcement — with respect to the exclusive Right.

    Let’s assume for the sake of argument only that “sole” is not an appropriate synonym of “exclusive.” There are still three other adjectives.

  11. Jim,

    As President Reagan might have said, “There you go again – what’s “injunction” go to do with it?

    The words in contention are:

    “… ‘exclusive’ means ‘single,’ ‘sole,’ ‘whole,’ or ‘undivided.’…”

  12. JAOI,

    “May I suggest the following for between the brackets (below)?

    (A) To regulate Commerce,
    (B) to provide for the common defense, and to
    (C) to promote the general Welfare (i.e., eminent domain).”

    First, these aren’t rights; they are powers. Second, there is no “exclusive” provision from where the reservation of right flows.

    Here’s my fill in the blank (and although you may not like it, you cannot deny that it fits into the blank):

    Fill in the Blank 1

    Sometimes there are exceptions to that exclusivity. The [Congress] may reserve itself the right to [set conditions of enforcement either by injunction, and if not available, by monetary damages].

    Fill in the Blank 2

    Sometimes there are exceptions to that exclusivity. The [Congress] may reserve itself the right to [set conditions of enforcement solely by injunction but subject to court applying appropriate judicial standards].

    Fill in the Blank 3

    Sometimes there are exceptions to that exclusivity. The [Congress] may reserve itself the right to [set conditions of enforcement solely by monetary damages].

  13. Dear Jim,

    Thank you. I could tell, as could serious others, that you were much more than “a slightly better man.”

    May I suggest the following for between the brackets (below)?

    (A) To regulate Commerce,
    (B) to provide for the common defense, and to
    (C) to promote the general Welfare (i.e., eminent domain).

    “Sometimes there are exceptions to that exclusivity. The [Congress] may reserve itself the right to [__________].”

  14. JAOI,

    My apologies. I didn’t “bracket” all of the replaced words. Thus, read the following:

    Exclusive [Rights]
    An exclusive [Right] typically grants the [patentee] an exclusive territory…. The effect is to exclude the [Congress] … for [a period of time].
    Sometimes there are exceptions to that exclusivity. The [Congress] may reserve itself the right to [__________].
    In general under English law the [Congress] can carve out as many exceptions as it wants from an exclusive [Right]. However if it does none of these things then using the word “exclusive” means that the [Congress] is excluded. It cannot then intrude in the territory otherwise it will breach the [Right] and can be sued for damages by the [patentee].

    Sole [Rights]
    If the [Right] is a “sole [Right]” this means the [patentee] is the only [patentee] in that territory or for that group of customers. This is different from an exclusive [Right] where the [Congress] itself will not compete. Sole [Rights] mean that the [Congress] remains free to compete with the [patentee] but simply that other [Rights] will not be granted.

  15. JAOI,

    First, my compliments in your research. Second, I will continue to discuss because you have presented a fresh look, i.e., it’s not jsut a re-hash of previous arguments

    With that said, I respectfully disagree with your analogy. If viewed in the light of the Patent Clause:

    licensor = Congress
    licensee = patentee
    license = Right

    With that, the following is the language of the article but substituting the analogous language:

    Exclusive [Rights]
    An exclusive [Right] typically grants the [patentee] an exclusive territory…. The effect is to exclude the [Congress] … for [a period of time].
    Sometimes there are exceptions to that exclusivity. The [Congress] may reserve itself the right to [__________].
    In general under English law the [Congress] can carve out as many exceptions as it wants from an exclusive [Right]. However if it does none of these things then using the word “exclusive” means that the [Congress] is excluded. It cannot then intrude in the territory otherwise it will breach the [Right] and can be sued for damages by the [patentee].

    Sole [Rights]
    If the Right is a “sole Right” this means the patentee is the only patentee in that territory or for that group of customers. This is different from an exclusive [Right] where the [Congress] itself will not compete. Sole [Rights] mean that the [Congress] remains free to compete with the [patentee] but simply that other [Rights] will not be granted.

    Is this a fair analogy?

    Also, if I don’t respond immediately (i.e., maybe a day or two, it will be because I really have other work to do). Also, don’t you have a brief to finish?

  16. Dear Jim,

    By analogy, the grant of the patent comes from the licensor (the PTO, via Congressional statute, via Constitutional statute). The Inventor, who is granted the patent, becomes the licensee.

    The PTO, under lawful Congressional Patent Statutes (which Congress elected to enact), may grant to an Inventor (or his assign) under Constitutional statute, “the exclusive Right” to his invention.

    Here is the analogy:
    “An exclusive licence typically grants the licensee an exclusive territory or an exclusive set of customers. The effect is to exclude the licensor either from that geographical territory or those customers for however long the licence lasts.”
    ————————–

    The PTO does not grant “sole” rights to the inventor – meaning the PTO cannot reserve any rights to the Inventor’s invention for any other purpose including compulsory licensing. Any Court ruling to the contrary is unconstitutional (with constitutional exceptions previously discussed).

    Here is the analogy:
    “The Licensor grants the Licensee a sole licence of the Rights for the Territory for the duration of this Agreement. The Licensor shall not, subject as provided below appoint other licensees for the Territory, but may itself manufacture and sell the Products in the Territory.”
    ————————–

    You also said in your August 2nd comment I noted above, that:
    “While sections 154 and 283 might appear to be in tension, they are reconcilable.”

    As I explained way above, they are not reconcilable and will not be reconcilable until (if ever) there is a formal Constitutional Amendment to the Patent Clause – 283 is not reconcilable with the Constitution, and that fatally flawed faulty statute (283) is what (and only what) the eBay Supreme Court based its (unlawful) eBay ruling on.

    Please, please think about it. I researched this issue for quite some time and every scholarly opinion I’ve gotten has not found any fault with my analysis (except yours, of course, at least thus far.)

    I and many other Patently-O readers respect your comments and opinion, but in this case there is a subtle but distinct difference, and it is so, so fundamental to patent jurisprudence.

    * * * * *
    If you can find support for your Aug. 2 statement:
    “… In my opinion, ‘exclusive’ means ‘single,’ ‘sole,’ ‘whole,’ or ‘undivided.’…”

    I will be happy to study it and reconsider my opinion, and I will make full amends if I am proven wrong.

    Old Hickory, Andrew Jackson, our 7th President, said:
    “Any man worth his salt will stick up for what he believes right, but it takes a slightly better man to acknowledge instantly and without reservation that he is in error.”

  17. JAOI,

    In the analogy you’re drawing with the article, who do you think is the licensor and who do you think is the licensee with respect to the Patent Clause?

  18. (I copied/moved this from the other thread for reference.)
    Dear Jim,

    I have reviewed our dialogue regarding the Patent Clause. I believe I have found the precise point of departure between our respective opinions:

    On Aug. 2 at 01:12PM you wrote:
    “… In my opinion, ‘exclusive’ means ‘single,’ ‘sole,’ ‘whole,’ or ‘undivided.’…”

    With all due respect, this is where you are mistaken, at least in my view and in the view of the author of the article which was written to explain:

    “This article examines exclusive, sole and non-exclusive licenses of intellectual property rights and the respective meanings of the terms.”

    There is legal distinction between “exclusive” and, e.g., “sole” in regard to patents. The full article, which explains the distinction, is found on this link:
    link to pharmalicensing.com

    Here is an excerpt:
    “Sole and exclusive is a term often used in licenses but it is confusing and meaningless. If the licence is exclusive then it is not ‘sole’.”

    “Exclusive” means all but one, i.e., the patent owner.
    “Sole” means the licensee AND the patent owner.

    That is why the Patent Clause recites “the exclusive Right” and only “the exclusive Right” – it does not say or imply “sole” or any other word, phrase or meaning.
    I trust you and others who harbored mistaken views will appreciate that I do not mean to be confrontational. Please bear in mind that this issue is THE most fundamental issue regarding patents.

    For example, reputable powerful patent firms that take contingency cases will reserve final say on whether or not to accept a settlement offer to the patent owner — and, when you stop and thing about it, it tells tomes about the critical nature of “exclusive” versus “compulsory” licensing when even reputable and powerful patent attorneys do not “control the deal” but leave that final say to the patent owner.

    Posted by: Just an ordinary inventor(TM) | Aug 18, 2008 at 01:30 PM

  19. JAOI,

    In the analogy you’re drawing with the article, who do you think is the licensor and who do you think is the licensee with respect to the Patent Clause?

    Please ignore the following link. It is the one you provided in the other link, and I’m just pasting it here on this thread for future reference.

    link to pharmalicensing.com

  20. How is the “Defense to Challenge of Appointment” constitutional? Seems to me the defect is fundamental and jurisdictional and cannot be cured so cavalierly.

  21. “Isn’t it apparent that the Coalition for Patent FAIRNESS has been LOBBYING Congress so LOUDLY as to be heard by the main stream Media, little tributary Media and by We the American People, as well as the PTO management team including its most impressionable dimwits, by Judges across the Land and in Washington’s use-to-be patent-friendly patent-savvy Federal Circuit Court of Appeals, and by our Honorable Supreme Court Justices who, as Boston Legal’s Alan Shore’s stunning lambasting thereof put it so well, “You folks aren’t as hot as all get out” (and that was in regard to a capital matter; patents are more obscure and far beyond the reach of the Supremes) to VIOLATE the Constitution mostly unwittingly, BUT WITTINGLY AS WELL for it seems our government’s three branches “don’t give adamn for our greenbackin’ dollar” (lyrics by the Kingston Trio) any more than they do for one of the most stunning achievements of our Founding Fathers, The United States Constitution— we went off the gold standard and now are mostly off the Constitutionally standard, but I suspect I am beginning to repetitively preach to the choir majority (this is one long sentence, like a claim)?”

    Has Faulkner been reincarnated as an inventor? hmm…

  22. JAOI,

    My heart of hearts accepts the fact that governmental taking has been a part of the American way of lift since the inception of this country. The Framers knew it, and because many of they were property owners, made sure they would receive just compensation. I don’t think anybody can disagree with taking property for roads, air bases, airports, etc…. Typically, in an eminent domain case, the court has to sign off on the amount paid to the property owner.

    I disagree with the Kelso case because “public use” includes limited “private use.”

    Unlike my disagreement with Kelso, the eBay decision was competely lawful, constitutional under the Patent Clause, and correct. There is simply no constitutional right to exclude. Although Congress has provided a statutory right to exclude, they have made the patent owner prove to the court that the equities favor injunctive relief. If not, then they have ensured just compensation through reasonable royalties, i.e, compulsory licensing.

    These actions do not dilute or diminish the single, sole, whole, and undivided Right embodied in the Patent Clause. The Framers would not disagree because the patent owner receives compensation (at least in theory or on paper). Moreover, a court of law is the proper place to determine the amount of reasonable royalties just like it is the proper place to determine the amount of compensation in eminent domain cases.

    If you disagree with having to receive a compulsory license, then you will have to get the statutes changed; however, there are one or more patent owners who would likely want the license and money flowing from it where there is infringement. I don’t think you will be able to reach a compromise with this issue, nor do I think you would win in getting the statues changed to affect such outcome. Good luck to you if you choose to accept this course.

    Finally, I think that we’ve beat this issue to death. If you still disagree with the eBay opinion, it will not be because of your legal analysis that was based on the flawed premise that “the exclusive right” of the Patent Clause means “the Right to exclude.” You have agreed that “the Right to exclude” is a statutory right and not a constitutional one.

    Instead, if you still disagree with eBay, then it will be based on the political analysis of the corrupt actions that you have attributed to the executive, legislative, and judicial branches of the government. As I stated before, I just cannot get interested in such a mess.

    ‘Till the next issue ignites your passions!

    Jim

  23. Dear Jim H.,

    Re:
    “Moreover, the Framers adopted the Takings Clause of the 5th Amendment which allows the government to take private property for public use, but the Framers ensured that the owner was justly compensated. BY ANALOGY, THE FRAMERS WOULD CERTAINLY NOT HAVE OBJECTED THE “TAKING” OF THE PATENT IN THE FORM OF A COMPULSORY LICENSE AS LONG AS THE PATENTEE WAS JUSTLY COMPENSATED; Congress has provided for a reasonable royalty provision in the Patent Act.” (emphasis added)

    It is about your analogy I so strongly disagree.

    Please think about it – your analogy takes a huge leap of loving-today’s-government faith. You know in your heart and soul that the Framers would vomit if they had to endure the rulings of the Supreme Court as it is currently constituted. And today’s Congress!, fuggettabowit – there are far far too few who that take their oaths of office to heart to rely on Congress to protect the interests of We the American People. We the People are on our own!, sold out by all three branches!

    The taking of private property by any court of the land including (and maybe especially including) today’s Supreme Court for commercial purposes is so fundamentally un-American I can’t begin to tell you how strongly I oppose such horseshit.

  24. JAOI,

    “I still agree, but would like to point out that this statutory right is derived directly from the Constitution’s Patent Clause, specifically from “the exclusive Right” specificity. It is not derived from Congressional statutes.”

    I agree that the statutory right derives from the Patent Clause.

    “The fact that this language may be similar or the same as language in a Congressional statute does not change this critical Constitutional statutory right, which statutory right, as you know, trumps all.”

    If you mean the Constitutional right trumps a statutory right, I agree.

    “Do you really think the Farmers were dumb enough to mean a compulsory licensing deal when they specifically specified “the exclusive Right?”

    The Framers meant to create a “single, sole, whole, and undivided Right” and intended for Congress to promote the useful sciences by enacting laws commensurate with the Right. If Congress enacted laws which formed a remedial scheme from which a compulsory license could result, then I don’t believe the Framers would take issue with such remedial scheme as long as it promoted the useful sciences and did not encroach upon the single, sole, whole, and undivided right. A compulsory license does not diminish the singleness, soleness, wholeness, and undivided qualities of the Right. I am certain the Framers would accept such a scheme because it promotes the useful sciences.

    Moreover, the Framers adopted the Takings Clause of the 5th Amendment which allows the government to take private property for public use, but the Framers ensured that the owner was justly compensated. By analogy, the Framers would certainly not have objected the “taking” of the patent in the form of a compulsory license as long as the patentee was justly compensated; Congress has provided for a reasonable royalty provision in the Patent Act.

    “Now ask yourself, do you think the Supreme Court as it is constituted today gives a flying fuc about the specificities contained in the Constitution, or that they are smart enough?, or dedicated enough to grapple with the intentions of the Framers? The fact is, today’s Supremes are a political body like Congress voting along party lines.”

    This is a thread onto itself taking a lifetime to hammer out. That being said, I do think they are smart enough, dedicated, and care about the specificities. In fact, Justice Scalia and O’Connor both carry pocket Constitutions with them (at least she did when she was on the Court, but I don’t know now that she participates part-time in the Courts of Appeal). They do look at the words. Also, I do think the Court is politicized, and I think they bring their personal prejudices with them.

    As far as your remaining comments, they really digress away from the original reason why I took issue with your comments regarding the Court in eBay, and I really don’t respond to politics because there is no structure in politics; I possess an engineering degree, MBA in accounting, and an JD. I am anal, and I like structure. Talking politics is frustrating to me because it is an unstructured mess, so I won’t respond to your comments about the political mess of the patent system in general. That being said, many of us lawyers including me were living vicariously through the character Alan Shore when he went on his rant.

  25. Dear BHR,

    Re: “JAOI’s position is that Congress has to go all or nothing.”

    Not exactly; there are exceptions itemized in the Constitution and as found in the link below:

    Thus, Congress has absolute Constitutional Power to administer our patent system, and it has rightly done so. Further, within the Constitution itself, one finds authority for Congress to exercise its Power to moderate “the exclusive Right” under certain constitutionally certified circumstances:

    (A) To regulate Commerce,
    (B) provide for the common defense, and to
    (C) promote the general Welfare.

    Article I, §8, Clause 3: “The Congress shall have Power … To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes;”

    Thus, in its body of antitrust statutes, Congress imposes certain limits when exercising a patent’s “exclusive Rights” in order to regulate Commerce.

    The Preamble: “We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.”

    Eminent domain power, when exercised over a patent’s “exclusive Rights,” for national security and defense, is absolutely consistent with the Preamble, i.e., to “provide for the common defence.” Thus, military appropriations bills in peacetime and wartime routinely include allocations for patent royalties.

    If an independent inventor discovered and patented a vaccine for Anthrax, but refused to license or manufacture it for his anti-American religious reasons, eminent domain could absolutely and reasonably be asserted to “promote the general Welfare.”

    FAULTY ARGUMENT: I refer below to this excerpt from the USSC’s Merc v eBay decision, page 3:

    “To be sure, the Patent Act also declares that ‘patents shall have the attributes of personal property,’ §261, including ‘the right to exclude others from making, using, offering for sale, or selling the invention,’ §154(a)(1). According to the Court of Appeals, this statutory right to exclude alone justifies its general rule in favor of permanent injunctive relief. 401 F. 3d, at 1338. But the creation of a right is distinct from the provision of remedies for violations of that right. Indeed, the Patent Act itself indicates that patents shall have the attributes of personal property ‘[s]ubject to the provisions of this title,’ 35 U. S. C. §261, INCLUDING, PRESUMABLY, THE PROVISION THAT INJUNCTIVE RELIEF ‘MAY’ ISSUE ONLY “IN ACCORDANCE WITH THE PRINCIPLES OF EQUITY,” §283.” (emphasis added)

    Please note the use of the word “PRESUMABLY”!

    link to patentlyo.com

  26. “Unless someone is arguing that Congress does not have the power to grant anything less than complete, total, and unconditional exclusivity (except for time limits), I don’t understand the issue.”

    JAOI’s position is that Congress has to go all or nothing.

  27. Dear Jim H.,

    I agreed with what you wrote above:
    “…the ‘right to exclude’ is statutory language forming a statutory right.”

    I still agree, but would like to point out that this statutory right is derived directly from the Constitution’s Patent Clause, specifically from “the exclusive Right” specificity. It is not derived from Congressional statutes.

    The fact that this language may be similar or the same as language in a Congressional statute does not change this critical Constitutional statutory right, which statutory right, as you know, trumps all.

    Do you really think the Farmers were dumb enough to mean a compulsory licensing deal when they specifically specified “the exclusive Right?

    Now ask yourself, do you think the Supreme Court as it is constituted today gives a flying fuc about the specificities contained in the Constitution, or that they are smart enough?, or dedicated enough to grapple with the intentions of the Framers? The fact is, today’s Supremes are a political body like Congress voting along party lines.

    Here is something I previously posted (the link is below):

    Isn’t it apparent that the Coalition for Patent FAIRNESS has been LOBBYING Congress so LOUDLY as to be heard by the main stream Media, little tributary Media and by We the American People, as well as the PTO management team including its most impressionable dimwits, by Judges across the Land and in Washington’s use-to-be patent-friendly patent-savvy Federal Circuit Court of Appeals, and by our Honorable Supreme Court Justices who, as Boston Legal’s Alan Shore’s stunning lambasting thereof put it so well, “You folks aren’t as hot as all get out” (and that was in regard to a capital matter; patents are more obscure and far beyond the reach of the Supremes) to VIOLATE the Constitution mostly unwittingly, BUT WITTINGLY AS WELL for it seems our government’s three branches “don’t give adamn for our greenbackin’ dollar” (lyrics by the Kingston Trio) any more than they do for one of the most stunning achievements of our Founding Fathers, The United States Constitution— we went off the gold standard and now are mostly off the Constitutionally standard, but I suspect I am beginning to repetitively preach to the choir majority (this is one long sentence, like a claim)?

    link to patentlyo.com

  28. Non Sequitur & Lowly (JAOI see below),

    The issue arises from the words of the title of this thread “fixing constitutional issues.” In the second comment in this thread, JAOI responded:

    “What about fixing the Constitutional error underlying the Constitutionally unlawful Supreme Court eBay ruling?”

    I took issue with JAOI’s statement.

    JAOI believes that the eBay opinion is unlawful. The premise of his opinion is based on his belief that the phrase “the exclusive Right” in the Patent Clause means “the Right to exclude.” Under this premise, a constitutional right to exclude means that the inventor has the right to an injunctive relief without strings. Because the Supremes held that there is no automatic entitlement to an injunction but that a court must apply the traditional test for injunctive relief, JAOI believes that the USSC have forced inventors to accept a compulsory license which means that the inventor’s supposed constitutional right to exclude has been encroached upon. As JAOI puts it, the inventor has been handed a revolver without the bullets because the inventor no longer gets to “exclude” the infringer with an injunction; instead, the infringer is forced to “include” the infringer while being forced to taking monetary damages, i.e., forced into accepting a compulsory license. Under his interpretation of the Patent Clause, the Supremes have unconstitutional and unlawfully acted contrary to the Patent Clause.

    What we (No Sequitur, Lowly, myself, and probably others) intuitively understand is that the “right to exclude” is not granted as a constitutional right. While it may be intuitive to us that the phrase “the exclusive Right” does not mean “right to exclude,” it is not so apparent to JAOI. What I have attempted to do this morning is to articulate why one phrase does not mean the same as the other. Hence, I journeyed into a grammatical analysis of above thread.

    When JAOI takes the phrase “the exclusive Right” and substitutes it for “the Right to exclude,” he replaces the adjective “exclusive” with the verb “to exclude.” By doing so, he changes the meaning of the “the exclusive Right,” and by changing the meaning, formed an otherwise logical argument and conclusion that the Supremes acted unconstitutionally. However, because his substitution of words changes the meaning of the phrase, any logical argument stemming from the improper substitution of words results in an erroneous conclusion. Hence, his frustration with the eBay decision and all of the Supremes may diminish if he understands the grammatical error (although another issue might come up to raise his passions :-)).

    What I have tried to do is to provide a technical, grammatical explanation underlying our intuition that “the exclusive Right” is not the same “the Right to exclude” (we are all geeks at heart who love technical details), i.e., replacing an adjective with a verb changes the meaning of the phrase.

    JAOI,

    The patent grant confers “the right to exclude others from making, using, offering for sale, or selling….” This copies the language of the statute!

    You state “am constrained to agree with the grammatical interpretation of the Patent Clause the Directors of the PTO continue to print on the covers of patents the PTO issues:

    “ the right to exclude others…” [to exclude = verb].”

    JAOI, you have got to realize that the Director is merely parroting the language of the statute; he is NOT making an INTERPRETATION of the Patent Clause. He is plagiarizing the words of the statute.

    The patent grant is conferring “the [statutory] right to exclude others from making, using, offering for sale, or selling….”

    The patent grant is not conferring “the [constitutional] right to exclude others from making, using, offering for sale, or selling….”

  29. Dear Jim H.,

    Again, thank you for your clarifications, many of which I find quite edifying.

    Re:
    “Fourth, JAOI has argued that “the exclusive Right” means “the Right to exclude.” No, it does not. JAOI has made a technical mistake by transforming the adjective “exclusive” into a verb “to exclude.” By not observing this technicality, he has (unknowingly) changed the descriptive nature of an adjective into the action nature of a verb. The Framers used an adjective to describe the nature and quality of the noun “Right”; the Framers left the verbs describing the actions embodied in the Right to the Congress. Hence, when discussing the Constitutional right “to exclude,” the Framers described the Right as single, sole, whole, and undivided; the Framers did not describe the acts embodied in the Right.”

    However, I am constrained to agree with the grammatical interpretation of the Patent Clause the Directors of the PTO continue to print on the covers of patents the PTO issues:

    “ the right to exclude others…” [to exclude = verb]

    As I’ve mentioned, any other interpretation is akin to compulsory licensing, and that is Just not a plausible grammatical interpretation of the language in Article I, Section 8 of our Constitution. THE SPECIFICITIES IN Clauses 8, 12 and 17 ARE INDEED SPECIAL and can only be changed by Constitutional Amendment according to Article V.

    Article I, Section 8: The Congress shall have Power …

    Clause 8: To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

    Clause 12: To raise and support Armies, but no Appropriation of Money to that Use shall be for a longer Term than two Years;

    Clause 17: To exercise exclusive Legislation in all Cases whatsoever, over such District (not exceeding ten Miles square) as may, byCession of particular States, and the Acceptance of Congress, become the Seat of the Government of the United States, and to exercise like Authority over all Places purchased by the Consent of the Legislature of the State in which the Same shall be, for the Erection of Forts, Magazines, Arsenals, dock-Yards, and other needful Buildings;–And

    Just imagine the uproar if a warmongering branch of our government attempted a war appropriation for longer than two years, or tried to expand the boundaries of Washington DC beyond 68 square miles.

    * * * * *

    Dear Lowly,

    Re:
    “Now, his self interest and mine are the same — a strong US patent system – but I don’t believe that a cause of action for patent infringement is some super special thing that should receive extra special treatment over other causes of action.”

    You would do well to grapple with this key Supreme Court eBay debacle.

    Please bear in mind that it is dam near impossible for an independent inventor to license a patent to a big international business even with multi-million dollar litigation if the real threat of stopping the infringement (call it what you will, “cease and desist” or whatever) does not exist.

    And this predicament is compounded by the recent limitation on collecting damages.

    And this is further compounded by the reality that some District Courts, The Federal Circuit and the Supreme Court favor big business over independent inventors.

  30. “The “Right to Exclude” is not granted by the Constitution. “The right to exclude” is a statutory right that Congress is constitutionally authorized to bestow. Unless someone is arguing that Congress does not have the power to grant anything less than complete, total, and unconditional exclusivity (except for time limits), I don’t understand the issue.”

    JAOI cannot see beyond his own self interest. It’s as simple as that. Now, his self interest and mine are the same — a strong US patent system — but I don’t believe that a cause of action for patent infringement is some super special thing that should receive extra special treatment over other causes of action.

  31. Why does Congress have to use the full extent of its power in enacting patent laws?

    Congress has the power (i.e. option) to grant exclusivity for a limited time for the purpose of promoting the arts and sciences. Congress could presumably grant exclusivity only in the month of August, only on Tuesday, or subject to any arbitrary condition that otherwise complies with the Constitution. For example, Congress can make the right to exclude subject to equitable considerations or the payment of fees.

    The “Right to Exclude” is not granted by the Constitution. “The right to exclude” is a statutory right that Congress is constitutionally authorized to bestow. Unless someone is arguing that Congress does not have the power to grant anything less than complete, total, and unconditional exclusivity (except for time limits), I don’t understand the issue.

  32. Jim, clearly I’m out of my depth. All that impressive stuff about verbs and adjectives is beyond me. No time to follow the argument and, anyway, it’s too esoteric to arouse my interest. I wish you and JAOI well in your continuing discussions.

  33. Oops,

    Change

    “when discussing the Constitutional right ‘to exclude,’”

    to

    “when discussing the Constitutional ‘exclusive’ Right,”

  34. MaxDrei,

    “And now that the Framers have done that, Congress is free to write laws that include a “Right to Exclude”. But Congress can trim that Right, if it wants. No?”

    First, as I interpret the Patent Clause, Congress can “trim” that right wholly by getting rid of the patent system because the Constitution gives them the “Power To . . . promote the Progress of Science….” The power to promote includes the power not to promote. If Congress chooses no longer to promote the progress of science, it may revoke the Patent Act. I’m not sure “trim” is the correct verb if the patent system as a whole is revoked.

    Second, I think we agree that Congress can adjust the term as long as it promotes.

    Third, the patent embodies the “exclusive” Right. Congress cannot create a law that affects or “trims” the exclusivity of the Right. In other words and using my definition of the adjective “exclusive” as “single, sole, whole, and undivided” as an example, Congress cannot pass a law that affects the singleness, soleness, wholeness, and undivided nature of the Right.

    What did Congress do by creating the statutory “right to exclude” and using the verb infinitive “to exclude”? Besides driving the passions of JAOI and providing the topic for heated debate, they describe an application of the constitutional Right, i.e., the right to exclude. Does the “right to exclude” effect the exclusivity of the Right? Not at all. In my opinion, the right to exclude is embodied in the “wholeness” and “undivided nature” of the “exclusive” Right.

    Fourth, JAOI has argued that “the exclusive Right” means “the Right to exclude.” No, it does not. JAOI has made a technical mistake by transforming the adjective “exclusive” into a verb “to exclude.” By not observing this technicality, he has (unknowingly) changed the descriptive nature of an adjective into the action nature of a verb. The Framers used an adjective to describe the nature and quality of the noun “Right”; the Framers left the verbs describing the actions embodied in the Right to the Congress. Hence, when discussing the Constitutional right “to exclude,” the Framers described the Right as single, sole, whole, and undivided; the Framers did not describe the acts embodied in the Right.

    When interpreting the statutes in the Patent Act, courts look to see if verbs offend the adjectives. One thing is for certain: the Right in and of itself is a Constitutional right, but the right to exclude is not; it is a statutory right which JAOI appears to have accepted. Because Congress has created this specific statutory right, Congress has created at least two remedies if the right is infringed upon. The opportunity to seek injunctive relief is one form, but it is not guaranteed; rather, it is subject to the traditional equities of the judiciary. In the words of JAOI, the Congress did put “strings” upon the right to exclude by making the right subject to the equities of the court.

    Moreover, the Supremes in eBay did not act unconstitutionally because they did not encroach upon any constitutional right. The holder of a patent still enjoys a constitutional “single, sole, whole, and undivided” Right, and a statutory right to seek injunctive relief subject to the judgment of the court. If the court finds that injunctive relief is not warranted, then the statutory right to monetary damages is still available. In the words of JAOI, this is tantamount to a compulsory license, and in this light, he is correct. But his frustration towards the courts is misplaced. Why?

    It is Congress that created the compulsory license in the remedial scheme – not the courts. The courts will merely enforce the patent with monetary damages if the equities do not justify injunctive relief. If he is upset that inventors have to accept compulsory license, then his frustration should be directed to the Congress and not to the courts.

    Finally, you make two excellent points. Limiting the “exclusive Right” to the “Right to Exclude” is such anathema to the “progress” in the useful arts. Also, “Right to Exclude” doesn’t embody a right to use his or her patent as he or she sees fit, e.g., sell or license the invention and make millions of dollars.

  35. “…IF I AM NOT MISTAKEN, PEOPLE OF COLOR WERE CONSIDERED TO BE A FRACTION OF A WHOLE…”

    Well, perhaps by some. I think you’re referring to the “three-fifths” clause of the Constitution, which provided that, for census purposes, slaves were counted at three-fifths of a whole (certainly not all people of color – free blacks were counted along with everyone else and untaxed Indians weren’t counted at all) . This was a political compromise that had little to do with any debate over the rights of people of color, but rather with ensuring that the South was provided with enough votes in Congress to be happy (but not too many). Perhaps ironically, the Southern states would have preferred to have slaves counted as whole persons for census purposes. In any case, it’s a big mistake to think that the three-fifths clause is intended as a quantitative assessment of the relative worth of slaves.

  36. JAOI(TM) could not resist chiming in. Is it not simply that the “Right to Exclude” is such anathema, not just to “progress” in the useful arts, but also to “Freedom” for every American to do what he wants within his factory or on his land, that the Framers realised they would have to provide in the Constitution explicit permission to Congress to enact such a Right? So they did. And now that the Framers have done that, Congress is free to write laws that include a “Right to Exclude”. But Congress can trim that Right, if it wants. No?

  37. Dear Jim H.,

    Re:
    “BYW…the ‘right to exclude’ is statutory langauge forming a statutory right.”

    There you have it, dead on, and of course, I agree.
    So, that settles it.
    Nice working it out with you.
    Please spread the “statutory” word.

  38. JAOI,

    Please tell me what you think the Framers meant when they wrote “the exclusive Right” in the Patent Clause?:

    Article I, Section 8, “The Congress shall have Power …,” Clause 8: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    My Response:

    Article I, Section 8, “The Congress shall have Power …,” Clause 8: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the [single, sole, whole, and undivided] Right to their respective Writings and Discoveries;”

    JAOI: Do you agree that the inventors have, at minimum, a single, sole, whole, and undivided right?

    BYW…the “right to exclude” is statutory langauge forming a statutory right.

    On to the rest of your questions…

    Did the Framers mean “the exclusive Right” for some Inventors and not others depending on, for example, the business they were in? NOT THAT I KNOW OF.

    Did the Framers mean “the exclusive Right” for working Inventors?, and not for retired Inventors? NOT THAT I KNOW OF.

    Did the Framers mean “the exclusive Right” for practicing Inventors?, and not for expired Inventors? NOT THAT I KNOW OF. TODAY, HOWEVER, AN INVENTOR HOLDS A PROPERTY INTEREST IN A PATENT, AND THAT INTEREST PASSES TO HIS ESTATE UPON HIS DEATH (UNLESS, OF COURSE, THE INTEREST HAS BEEN ASSIGNED).

    Did the Framers mean “the exclusive Right” for white Inventors?, and not for black Inventors? MAYBE OR MAYBE NOT. I DON’T KNOW. AT THE TIME, SLAVERY WAS LAWFUL, AND IF I AM NOT MISTAKEN, PEOPLE OF COLOR WERE CONSIDERED TO BE A FRACTION OF A WHOLE . TODAY, HOWEVER, A PATENT INTEREST IS COLOR BLIND.

    Did the Framers mean “the exclusive Right” for American Inventors?, and not for foreign Inventors? NOT THAT I KNOW OF, BUT THEY COULD HAVE MEANT IT AT THE TIME.

    Did the Framers mean “the exclusive Right” for well-healed Inventors?, and not for indigent Inventors? NOT THAT I KNOW OF.

    Did the Framers mean “the exclusive Right” for happy Inventors?, and not for indignant Inventors? NOT THAT I KNOW OF.

  39. Dear Jim H.,

    Ok, Okay.

    Please tell me what you think the Framers meant when they wrote “the exclusive Right” in the Patent Clause?:

    Article I, Section 8, “The Congress shall have Power …,” Clause 8: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    Did the Framers mean “the exclusive Right” for some Inventors and not others depending on, for example, the business they were in?

    Did the Framers mean “the exclusive Right” for working Inventors?, and not for retired Inventors?

    Did the Framers mean “the exclusive Right” for practicing Inventors?, and not for expired Inventors?

    Did the Framers mean “the exclusive Right” for white Inventors?, and not for black Inventors?

    Did the Framers mean “the exclusive Right” for American Inventors?, and not for foreign Inventors?

    Did the Framers mean “the exclusive Right” for well-healed Inventors?, and not for indigent Inventors?

    Did the Framers mean “the exclusive Right” for happy Inventors?, and not for indignant Inventors?

  40. JAOI,

    You haven’t shown me the “specific instruction” (your words) directing the Article III courts to issue injunctive relief in the form of c&d. I asked you, but you didn’t respond because you probably (correctly) agree with me that the Framers didn’t direct the judiciary to act in a specific manner.

    Your assumption to your first question to me is incorrect. Your question “[w]hy do you think the Framers needed to repeat themselves” assumes that something is being repeated. If you look at the words, there is no repetition. The language of Article I empowers a “right” and the language of my sample Article III empowers a “remedy.” In American jurisprudence, they are not the same; they are entirely distinct concepts which, respectfully, you seem to neither understand nor comprehend.

    Moreover, even you, JAOI, have acknowledged that a right and a remedy are not the same in your response yesterday at 2:31:

    “‘Enjoining’ and ‘injunctions and ‘… the exclusive Right…’ are related but they are not equivalent.”

    How can you even suggest that the Framers repeating a right would make a remedy when you yourself have admitted the two are not the same? You cannot repeat something if the thing you want to repeat is not the same.

    I think your caught up in circular logic again: on the one hand, you believe the Framers would be repetitive by adding language of a right to Article III, but on the other hand, you know that a right and a remedy are not the same, so there is nothing being repeated.

    The assumption to your second question to me is equally incorrect. Your language “you seek found in Article I” assumes that I am seeking the sole remedy of injunctive relief by c&d. I am not the one seeking the remedy — you are.

  41. Dear Jim H.,

    Re:
    “There is simply no language in Article III directing courts to treat patents and patent-related claims with special preference.”

    Why do you think the Framers needed to repeat themselves?

    Isn’t the clear, unmistakable and unambiguous language you seek found in Article I?

  42. JAOI,

    What specific instruction did the Framers give the courts if Congress decided to legislate pursuant to the Patent Clause? I know the Patent Clause provided specific instructions to Congress in Article I, but I don’t know of specific instruction provided to the courts in Article III. Please provide your reference directing the courts to treat patent-related claims differently from any other claims such as those arising in contract, tort, etc….

    Moreover, if the Framers intended for courts to issue cease and desist orders upon a finding of infringement, then there should be a clause like the following:

    “The judicial Power of the United States shall exercise the injunctive remedy of cease and desist upon a finding of patent infringement.”

    I have read Article III many times, and I am not able to find any clause that comes close to using such language. Please provide your Article III directing the courts to take the action you suggest.

    There is simply no language in Article III directing courts to treat patents and patent-realted claims with special preference.

  43. Sunday Thought:

    “Beer is proof that God loves us and wants us to be happy.”
    Benjamin Franklin

    “But Bourbon Be Better.”
    Jaoi

    WARNING: The consumption of alcohol is a major factor in dancing like a retard.

  44. Dear Jim H.,

    Re:
    “My infringement claim should not be treated with special preference over your breach of contract claim.”

    Why not? The Framers of the Constitution gave specific instruction to follow if Congress elected to legislate laws in accord with:

    Article I, Section 8, “The Congress shall have Power …,” Clause 8: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    The Framers gave no specific instruction regarding breach of contract.

  45. Does professor Duffy have any experience running an agency? I happen to know of a position that may becoming available…

  46. JAOI,

    The court should treat the “claims” eqaully and not treat one as having greater priority over the other whether a party brings the claims in tort, contract, or patent. If I sue one for infringement of patent and you sue another for a breach of contract, do you want the court to give my infringement claim preference over your contract claim or treat it as special? My infringement claim should not be treated with special preference over your breach of contract claim. That is was I meant by equal treatment.

  47. Dear Jim H.,

    I do not offhand see why one would equate tort law, contact law and patent law, but I have not studied this in view of Article III – I will do so when I am “fresh.”

    In the mean time, I’ll comment that:
    Tort law evolves;
    a Contract is what it says, i.e., static; and,
    “the exclusive Right” is the patent owner’s Right to exclude others from infringing.

    I truly look forward to fleshing this “unlawful eBay ruling out” once and for all.

  48. JAOI,

    First, a permanent injunction does not give “the exclusive Right” to an Inventor –the Patent Clause of the Constitution does.

    Second, I agree with you that a Cease and Desist Order that stops an infringer(s) from infringing a valid patent is consistent with the Patent Clause of the Constitution.

    Third, when I mentioned that patents aren’t “special,” it was from the viewpoint of an Article 3 court and not from the viewpoint of the Article 1 Congress. As far as the Article 3 court is concerned, a remedy is a remedy is a remedy. Personally, I want a fair judiciary, and one that treats each cause of action before it the same whether it is a claim in tort, a claim in contract, or a claim of infringement in patent. I am a professional engaged in activities created as a result of the Patent Clause, and it is special to me in that regard because I make a living with inventors who are excited about their inventions; however, I take a step back of creating for myself a sense of entitlement that my claim of relief is special over any other claim of relief. It is in this context that patents aren’t special.

    Finally, the question presented to the USSC in eBay was “[w]hether the Federal Circuit erred in setting forth a general rule in patent cases that a district court must, absent exceptional circumstances, issue a permanent injunction after a finding of infringement.” Since you think the Supremes got it wrong, then you believe they should have answered in the affirmative.

    By logic, you believe the Framers intended an Article 3 court to act differently in patent cases and blindly rubber stamp cease and desist orders when infringement is found.

    I disagree with you that the Framers intented such robotic behavior by an Article 3 court, and I find nothing in Article 3 to support such position.

    JAOI, you and I aren’t going to come to agreement as long as you do not expand your Constitutional argument to include Article 3 responsibilites of the judiciary and analyze the issue in the context of the principle of the separation of powers.

  49. Dear Jim H.,

    If a permanent injunction has strings attached so that it only selectively gives “the exclusive Right” to an Inventor, it is not consistent with the Patent Clause in the Constitution.

    If a Cease and Desist Order stops an infringer(s) from infringing a valid patent (with exceptions as discussed in the link below), that Order is consistent with the Patent Clause in the Constitution.
    link to patentlyo.com

    The Founders were specific about “the exclusive Right”, and that makes Patents Special.

    Three Clauses of Article I, Section 8 of the Constitution contain specific enumerated limits, and the limits in these three Clauses have never been amended:

    The limit in Clause 8 is: “one”;
    The limit in Clause 12 is: “two”;
    The limit in Clause 17 is: “100”:

    A patent without the Right to stop infringement is a de facto compulsory licensing agreement, and that is Just not a plausible interpretation of the Patent Clause language in our Constitution. As you know, the Constitution trumps all:

    Article. VI, Clause 2:
    “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.”

    I hope this is helpful, and I have enjoyed the opportunity to discuss my views – Thank you. The Framers of our Constitution knew what today’s Supremes do not know, that a patent without the ability to stop infringement is like a revolver without bullets.

  50. JAOI,

    I don’t subscribe to Westlaw, so I have to revert to Black’s Law Dictionary (which I own) and other sources. While I am not too enthused about using Wikipedia, the following is stated:

    “A judge may issue a cease-and-desist order with the intent to halt an illegal activity. This prohibition is sometimes used as the outcome of a trial, in which case it is a permanent injunction against the activity.”

    See link to en.wikipedia.org

    Cease and desist at the outcome of a trial (after infringement is found) is a permanent injunction.

    If you still disagree that a cease and desist order is not an injunction, please provide your basis.

  51. JAOI,

    Per Black’s Law Dictionary:

    cease and desist order: “A court’s or agency’s order prohibiting a person from continuing a particular course of conduct. See INJUNCTION; RESTRAINING ORDER.”

    injunction: “A court order commanding or preventing an action.”

    Injunctive relief takes the form of many actions, and a “cease and desist” is merely one form. If you still disagree, then please tell me how they differ?

    I have read your comments in the link, and I responded in kind. I raised issues that include (1) separation of powers, (2) the power granted in Article 1, (3) and the absense of a power in Article 3. I have presented comments based upon the context of the Consttuition as a whole and not a few important words. I would appreciate it if you tackled these issues because they provide a proper Constitutional context.

    I have also asked you that if your interpretation of “exclusive Right” language of the Constitution means the “right to exclude,” then how do you expect a patentee to enforce such right to exclude? What other action out there permits the patentee the ability to enforce the right to exclude besides an injunctive remedy like a cease and desist order?

    You seem to be caught up in a catch-22 or circular logic: you state that “35 USC 283 is not consistent with our Constitution and therefore cannot and should not stand” but it is the remedy which the Court can tell the infringer stop or you’ll be in contempt. You position on section 283 makes no sense if you’re arguing the right to exclude means stopping somebody from infringing or he’ll go to jail or pay a heavy fine. You’ve got to coerce the infringer to stop with the big hammer, and unless jail or a heavy fine isn’t it, I don’t know what else is out there. Do you?

    I think you need to accept that cease and desist is injunctive relief and one form of an injunction. Would you be more confortable if section 283 used the language “cease and desist orders” instead of “injunctions”? You would still be stuck with having to deal with the four elements stated in eBay.

  52. Dear Jim H.,

    To the penultimate comment above:

    You are right – my mistake; I stand corrected.

    With authority it derived directly from the Constitution, Congress has elected to legislate patent laws which established the PTO which is empower to grant “patents.”

    Courts are therefore obligated to enforce a valid and infringed patent, if that is what the patent owner wants (with exceptions as discussed in the link below) by issuing a “Cease and Desist.”

    link to patentlyo.com

    * * * *

    To your comment immediately above:

    Re: “In my opinion, a ‘cease and desist’ action is injunctive relief.”

    This is where we differ: A “cease and desist” action is NOT equivalent to “injunctive relief.”

    And 35 USC 283 is not consistent with our Constitution and therefore cannot and should not stand. This is where the Supreme Court stumbled.

  53. JAOI,

    In my opinion, a “cease and desist” action is injunctive relief. You are using the court to enforce an action in equity. Trying to cloak this action with different terms places “form over substance,” and courts don’t favor “form over substance.”

    Since you have qualified your question with “infringement,” that means the court has already held the trial from which infringement was found. If the patentee wishes to get a “cease and desist” order, he must meet the elements of injunctive relief.

    Also, if the patentee calls it a “cease and desist” action, then a court would likely re-categorize it as an injunction action so as to have proper jurisdiction under section 283. Technically, the federal court does not have jurisdiction to hear a cease and desist patent matter. If the patentee is stubborn and wishes to limit his remedy to the form of “cease and desist” action, then I would think a court would dismiss such action for want or lack of jurisdiction (at least the infringer would raise it as a defense and prevail).

  54. JAOI,

    Could you please re-phrase “[i]f Congress and our Courts do not grant ‘the exclusive Right’”? It doesn’t make sense, and it is wrong. Neither Congress nor courts “grant” an exclusive right.

    Congress created statutes (and inherently, a statutory right) to “secure…the exclusive Right[.]”

    The inventor seeks a remedy by asserting an infringement action.

    Courts enforce the patent through the infringement action.

  55. Dear Jim H.,

    Why can’t a Court issue a “cease and Desist” to stop infringement?

  56. JOAI,

    First, I address your comments to gp.

    Courts do not grant the “Right to exclude.” A patentee may go to court to seek the remedy by civil action for infringement of the patent, i.e., infringement of the patentee’s statutory right to exclude.

    Also, a patentee has no obligation to enter into a compulsory license as you suggest. He cannot be forced to enter into an agreement. However, if he cannot meet the traditional elements required for equitable relief, he may want to exercise his right to damages in his patent is found to have been infringed. He doesn’t have to accept reasonable royalties, but he would be a fool to not to enjoy the fruits of his discovery if the court finds that the elements of equitable relief have not been met. If you do need to view the damages in the context of a compulsory license, then the de facto compulsory license has been established by Congressal action pursuant to the power provided in the Patent Clause of the Constitution.

    Now, I address your response to me.

    First, I did read you comments of the link, and that is what inspired my comments. I started my earlier comments that I disagree with your fundamental assumption that an “exclusive” right means the “right to exclude.” Do you deny that the adjective “exclusive” doesn’t include “single,” “sole,” “whole,” or “undivided.”

    Second, assuming you are correct and that the “exclusive Right” is means the “right to exclude,” then how do you suggest your right to be enforced? Courts enforce, and if it is injunctive relief you seek in the form of an injunction, then you must at minimum meet the traditional elements needed for such relief; if not, you’re merely using the courts as a rubber stamp, and I seriously doubt the framers intended the courts to be used for such ministerial, robotic purpose.

    big harry rat,

    Thanks for the advice. I hear you.

  57. “the Constitution does not use the word “enjoin” or “injunction” or even “patent”"

    … nor does it use the word “damages” or “reasonable royalty” … I guess the damages provision of 35 USC is unconstitutional too because, after all, Congress can only give the right to exclude, not the right to collect past damages

  58. Dear Jim H.,

    Thank you for your response. However, I must disagree – Patents Are Special.

    With all due respect, the Constitution does not use the word “enjoin” or “injunction” or even “patent.” Congress elected to legislate patent laws and it labeled the grant a “patent.” The Constitution’s “Patent” Clause specifically recites: “… the exclusive Right…” and Congress is thereby bound. The core issue is that Congress’s 35 USC 283 is fundamentally and fatally flawed.

    “Enjoining” and “injunctions” and “… the exclusive Right…” are related but they are not equivalent.

    If Congress and our Courts do not grant “the exclusive Right” after a patent is found valid and infringed, then you have de facto “COMPULSORY LICENSING” and that is Just not a plausible interpretation of the language in our Constitution. As you know, the Constitution, which has never been amended in this regard, trumps all.

    Please let me know if this helps. I will study your missive more completely later today and provide a follow up comment as may be further appropriate.

    If your schedule permits and you are so inclined, perhaps you’d like to take another look at this link:
    link to patentlyo.com

    * * * * *

    Dear BHR,

    Re: “There is no point in trying to explain the law of injunctions to JAOI – it only encourages him.”

    With all due respect, you are right but I suspect for the wrong reason.

  59. Jim H

    There is no point in trying to explain the law of injunctions to JAOI – it only encourages him.

  60. JAOI,

    Your argument re the eBay decision is based on the assumption that “exclusive” Right of the Patent Clause (i.e., Clause 8) means “the power to exclude” Right and “exclusive Right” means “the Right to exclude others from making, using, offering for sale” to their respective discoveries.

    I disagree with your fundamental assumption. In my opinion, “exclusive” means “single,” “sole,” “whole,” or “undivided.” In other words, the framers wanted no one else to possess the single, sole, whole, and/or undivided Right to the discovery but the inventor.

    The language “right to exclude others from…” appears in section 154. This is Congress’ language and not the language of the Constitution. The right to exclude others is a statutory right and not a Constitutional right. In my opinion, the creation of a right provides the basis of remedial relief.

    Congress provided an enforcement mechanism of the inventor’s statutory right in section 283 by means by providing a statutory right to an injunction; however, the right to enjoin is far from being unfettered because a court MAY (read, not must) “grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

    While sections 154 and 283 might appear to be in tension, they are reconcilable. The inventor has the right to exclude but not the unfettered right to enjoin; the right to enjoin is tempered by the principles of equity. If Congress attempted to grant an unfettered right to enjoin, I am sure you would agree with me that Congress would be violative of the Constitutional principle of separation of power by impermissibly encroaching upon the power of the judiciary. The power to promote teh Progress of Science is found in Article 1 and not Article 3. Congress cannot tell the court how to exercise its inherent power; it can provide the court a power, but it cannot direct the outcome.

    If someone interferes with the inventor’s statutory right to exclude, Congress has created the remedy by civil action for infringement in section 281. Remedies provided include the injunction and damages in the form of reasonable remedies under section 284. Because an inventor has the statutory right to exclude but Congress cannot encroach upon the judiciary function of issuing injunctions, someone interfering with the inventor’s has been given a Congressionally-created remedy of infringement which includes two forms of remedy which may be sought in a court of law: one is legal and one is equitable. Traditionally, the equitable form of remedy has lied solely within the discretion of the court – not Congress.

    Finally, even if I should accept your assumption that “exclusive right” means the “right to exclude” under the Patent Clause of Article 1, nowhere in Article 3 does the Constitution provide the inventor with the “exclusive right to enjoin” if the “right to exclude” is infringed upon; in other words, the inventor does not have the “Right to an injunction” under Article 3. Had the framers wanted to provide such right, they could have included such language in Article 3; they did not. Because the principle of separation of powers forbids the legislature from directing the courts to act in a specific way, the best the Congress can do under the Patent Clause is to create the injunctive remedy in accordance with the principles of equity; they cannot direct the application of the remedy to provide for a specific outcome.

    Also, assuming your assumption is correct, then you believe that the “right to exclude” means the “right to enjoin.” If this were the case, then the function of the court is automatically issue an injunction upon the finding of infringement. Is it your opinion that the framer’s intended the courts to function as a rubber stamp when granting equitable relief? Do you not believe that the framer’s intended to apply traditional standards of injunctive relief when the right to exclude has been infringed? If you believe the framers intended the courts to apply traditional standards of injunctive relief, then you must realize that courts abhor the use of equitable relief (of which the injunction is one form) where monetary relief is available. Courts are concerned about making the party whole and would prefer to do so through monetary damages and not equitable relief.

    In my opinion, the eBay decision simply informed the CAFC to stop treating patents differently when it comes to injunctions. Patents aren’t special. Injunctive relief is injunctive relief whether the subject is patents or nuisance (for example).

  61. Awh cumon uh oh & lefty– GP appearently hadn’t got the message, so why shouldn’t I spread the word. I mean, the analysis is sound doncha know.

  62. Dear GP,

    You are right to this extent — Congress does not need to enact patents.

    Article I, Section 8, “The Congress shall have Power …,” Clause 8: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    With all due respect, however, if Congress does enact patents, it needs to abide the grant on the face of every U.S. patent which says:

    “Grants to the person(s) having title to this patent THE RIGHT TO EXCLUDE OTHERS FROM MAKING, USING, OFFERING FOR SALE, or selling the invention throughout the United States of America …” (emphasis added)

    For a more complete explanation, please read this link:

    link to patentlyo.com

    If Congress and our Courts do not grant the “Right to exclude” if a patent is found valid and infringed, then you have de facto “COMPULSORY LICENSING” and that is Just not a plausible interpretation of the language in our Constitution.

  63. “Nothing in the Constitution mandates exclusive rights to inventors…”

    Now you’ve stepped in it…

  64. Just an Ordinary Inventor,

    Just because Congress has the power to promote laws that secure exclusive rights to inventors, does not mean that they need to. Nothing in the Constitution mandates exclusive rights to inventors: “The Congress shall have Power….” Congress, of course, can overrule eBay by statute, but hardly needs to in order to make the rule Constitutional.

  65. Quoting your blog entry:

    “a significant number of panels (44%) included a majority of illegally appointed judges”

    would be making an improper and ill considered statement. The current statute, arising from the enactment of the Intellectual Property and Communications Reform Act of 1999 reads:

    Ҥ 6. Board of Patent Appeals and Interferences

    (a) Establishment and Composition.— There shall be in the United States Patent and Trademark Office a Board of Patent Appeals and Interferences. The Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Director.”

    Argumentation advanced by Prof. Duffy purports only that, unlike other Administrative Law Judges, Administrative Patent Judges are to be considered at least “inferior officers” of the United States and subject to the limitations on diffusion of executive power as Constitutionally ensured under the “appointments clause.” In that the enactment and constitution of the board and its Law Judges stem from other than the Administrative Procedure Act of 1946, that may be arguably so. Other arguments might be made on the basis of the board’s establishment and the legislative and administrative histories of our Patent (and lately Trademark) Office. Constitutionality or lack thereof of the statute under which appointments of Administrative Patent Judges were made is unestablished by the argumentation of Professor Duffy, who is under the Constitution and any enacted statute not established to be Judge in this matter.

  66. Isn’t a single APJ powerless to do anything of substance? It’s only when there are at least three APJs convened to a panel that a single APJ can cast one vote.

  67. “So, is this an issue of substance or really just a formality? I would like to know your opinions.”

    It is an issue of substance because the allocation and limits of authority is at heart of any constitution. You cannot have governments purporting to exercise powers in a manner inconsistent with the constitution for reasons of convenience because it undermines the whole idea of constitutional government.

    At least that is my opinion.

  68. “Is this an admission by Congress that current BPAI judges are not properly appointed?”

    No, of course not.

    “Can we challenge the validity of BPAI decision on the basis that the administrative patent judge had been improperly appointed?”

    Yes, but the bill explicitly provides a defense to that challenge. That’s the sole purpose of this section. Whether it’s constitutional is another matter, but is your client really prepared to take on that battle?

  69. `(d) Defense to Challenge of Appointment- It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.’.

    Is this an admission by Congress that current BPAI judges are not properly appointed? Can we challenge the validity of BPAI decision on the basis that the administrative patent judge had been improperly appointed?

  70. “…the BPAI has essentially unreviewable authority to order the grant of a patent”

    The BPAI has ZERO authority to “order” the grant of a patent.

    They have the authority to review the decisions of examiners, and to remand cases or enter new grounds of rejection. That is it.

    If the BPAI reverses every single grounds of rejection that is appealed, and the examiner refuses to allow the application, and instead re-opens with new grounds, there is absolutely nothing the BPAI can do.

    Nothing.

  71. If I understand this issue correctly, the objections to the BPAI members is not that they were not qualified but that they were not properly appointed. Is that correct?

    If this is correct, is this not really more a technicality than anything _really_ of substance? Sort of like the junior lawyer that comes in to interview a case, but are were not listed on the original power of attorney (probably not even with the firm back then). But, they have a reg # & the file, maybe even signed the last response, so we go ahead & grant the interview. We could probably technically make them come in with a associate power of attorney but most do not bother since we know they work for the firm of record, etc.

    So, is this an issue of substance or really just a formality? I would like to know your opinions.

    thanks,

    LL

  72. It would be interesting to get Duffy’s take on Orin Kerr’s blog post. For myself, I don’t think that Orin’s contract paradigm solves the “significant authority” problem because the BPAI has essentially unreviewable authority to order the grant of a patent (at most, its authority to deny a patent is subject to review, and deferential review at that). It is hard to say that the power to grant a monopoly over a chunk of commerce is not an exercise of significant authority, given that such monopolies were one of the traditional and much-abused privileges of the English Crown.

  73. The Bill also includes a “defense to challenge appointment.” In particular, the new statute would read that “It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.”

    It will be interesting to see how this “defense to challenged appointment” provision passes constitutional muster. Is there case law to support “retroactively” approving what was previously a constitutionally incorrect appointment? (Maybe Professor Duffy has the answer.) If not, we could have a real constitutional mess on our hands in our area of the law.

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