Cuozzo Speed Tech v. Lee (Supreme Court 2015)
Cuozzo lost its petition for en banc rehearing in a 6-5 split of Federal Circuit judges. Now, the patentee has raised is challenge to the IPR process to the Supreme Court – asking two questions:
- Whether the [Federal Circuit] erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
- Whether the [Federal Circuit] erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.
Answers to these questions will fundamentally alter the inter partes review system. The petition does a good job of walking through the importance of the case and then separately explaining their legal argument.
I’m sure that we’ll cover this case more as the briefing moves forward – amici have 30 days to file. Meanwhile, read the petition here: Cuozzo Speed Technologies LLC v Michelle K Lee Petition for a Writ of Certiorari
The Cuozzo petition was filed by a rising star in Supreme Court practice – Jeffrey Wall, who is partner at Sullivan & Cromwell. Wall was a clerk for Justice Thomas and was an Assistant to the Solicitor General for five years. He also has the distinguishing mark of being my law school classmate (as well as Prof. Rantanen).
Ned I had a look at Wood v Brundage. What I’m thinking is:
1. The Wood case seems to involve competition for a patent, between rival inventors. This is notoriously difficult to resolve. Perhaps that’s why Europe puts a time limit on ownership disputes, two years from issue.
2. This theme of a time limit applies also to oppositions in Europe. Opposition is thought of as a continuation, inter partes, of the ex parte pre-issue patentability examination. Hence the time limit. Examination has to stop sometime, but the PTO is not omniscient and sometimes needs to know what the Opponent knows, before it can decide accurately on patentability. Mind you, the EPO might feel more free to look again at patentability immediately after issue, for it never did dispense grant certificates decorated with ribbons and seals.
3. Recent changes in patent statutes are extending time limits for disputing validity at the Patent Office. But just as you don’t need a jury to decide issues during USPTO pre-issue examination, neither do you (in principle) for an EPO-style opposition carried out immediately after issue, despite the intervening inadvertent USPTO handing out of a fancy-looking be-ribboned document.
…..is what I was thinking.
You seem to make a lot of “fancy-looking be-ribboned documents” while all the while missing the aspect of property…
In this sovereign, the people putting together the government were a bit more concerned with property and a bit less concerned with ribbons.
Just saying.
On Wood, the court said it was a validity challenge.
On oppositions, no problemo pre-grant provided there is some term restoration. Why not do it the same way as trademark oppositions: publish for opposition, an opposer must file or request an extension to file within 30 days.
After the patent issues, it is enforceable in theory, but not in fact. The opposition simply wastes term and become part & parcel of an egregious abuse of process. Pre-grant oppositions with strict time limits on notice to file (30 days), plus mandatory term restoration, should be the only way to go.
Ned, up until 1978 UK allowed oppositions pre-issue. What happened? People opposed so as to delay issue till the end of the patent term. You couldn’t issue proceedings for infringement till the patent issued.
So when the EPC was written in 1973, they put opposition to post-issue. From the day of issue patent owners could assert.
And they did. And continue to do. Frequently. As from the day of issue. And they get injunctive relief. Promptly. And frequently.
What’s wrong with that?
Sitting here in Europe, one gets sick and tired with criticism of “the patent system”, such as in the learned pages of The Economist, because it fails to distinguish between problems with the patent system in the USA, and problems elsewhere in the world. Just because you have a problem in the USA does not mean that the problem is inherent, or suffered anywhere else in the world.
Max, the obvious problems with pre-grant opposition in the US and a term based on filing date was the ability of the opposer(s) to block issuance of the patent at all based on delay. Obviously, there the solution to that could have been to require strict time limits, and to grant back term based on the delay.
IPR trials, start to FWD take only 1yr.
Now tell me an opposition could not be done in that amount of time — particularly if the examiner were removed and the opposition was a party on party trial with a decision by 3 experienced examiners who had nothing to do with he original examination?
In Europe, you apparently do not have a concept that property rights can only be revoked by courts. That is why, I think, you have no problem with post-grant oppositions.
Ned, the “property” idea is interesting. Here in Europe, the idea is that, if you need a patent urgently, in order to assert, you ought to be able to get it, straightaway, on request. See the EPO PACE program of expedited examination.
And when you get your patent, you should be able to assert it straightaway and, in appropriate cases, get interlocutory injunctive relief from infringement. Pre-issue opposition frustrates this public policy imperative.
But with post-issue opposition, a court can enjoin the infringer one day after issue, whether or not the infringer opposes. Of course, the judge, in contemplating whether to grant interlocutory injunctive relief, will give weight to preserving “the status quo” in the marketplace. So speed is of the essence, when petitioning for interlocutory relief.
I think that the notion of “property” is not as compelling as the notion that those little guys who file on patentable inventions should be able, on request to the courts, to be given prompt and effective relief from infringement by Big Corp. Only an injunction will serve.
Max, Perhaps if an “accused infringer” (served with allowed claims) files the opposition pre-grant, he would have to pay a RR to the applicant over the period of delay if he is found to infringe any claim in the confirmed patent. I would still require the whole procedure be done in one year.
Ned as I say, when Big Corp is bent on putting the Little Guy out of business, only an injunction will do, to keep the little guy alive long enough to win through. Europe doesn’t do punitive damages or criminal proceedings for ordinary patent infringement cases.
And anyway, since 1978, when the EPC came in, Europe has provided a RR as from the date of 18 month publication of the A document. Art 67 EPC I think it is. They did think of that one!
The trick is to have courts experienced enough to decide accurately between the good patents that give the public something it never had before, and the bad ones that depriove the public of what it already had. We learned to express it like that from the words of a judge in the USA, if I’m not mistaken.
The trick? How can courts decide which patents are good and which are bad when the courts are all but excluded from deciding validity?
Max, I also see that you have resisted every suggestion to set time limits on oppositions, and to remove examiners — meaning, no amendment to the claims.
I have suggested this before I will say that again here that an IPR or an opposition is a very bad place to discuss amended claims that have not been examined in the 1st place by an examiner. What the applicant/patent owner should do if he wants amended claims is to file them in a reissue/continuation where, after complete examination, they too can be opposed. But the IPR/opposition should only be concerned with the patentability/validity of allowed/issued claims.
Ned,
What about time limits (2 years on broadening reissues) and the requirement of a live family member in order to file a continuation?
While I “get” what you want to do with post grant review, your desired constraints have their own logistical difficulties.
(and I would add the reminder that it has become somewhat common practice now to try to keep at least one family member “alive” for continuations, exactly per the limitations reflected in your post and the “anti-patent” atmosphere of judicial patent profanity – and that this “keep alive” practice is something that certain to-remain-unnamed-non-listed-non-prosecuting types have expressed as a “bad thing”)
Ned,
The R R avenue is not good enough – as I have already mentioned to you (and to which you already agreed).
All that does is prompt more of the same bad behavior from Big Corp, who would love nothing more than to make the patent right a “speed bump” and not a show stopper.
To Big Corp, a R R is a green light to infringement.
What’s the worst that could happen? IF they are caught, and IF the patent holder has enough cash to engage in an enforcement battle and IF the patent holder can withstand the wave after wave after wave of post grant reviews…. then Big Corp merely pays a “going rate” as if negotiated from day one….?
Way too much upside for Big Corp to infringe and far too little downside NOT to infringe.
The answer to all of this is the opposite path: make patent rights STRONGER. Making patent rights weaker only breeds more problems and more problems driven by Big Corp. who can – and desires to – fight “the game” on non-innovation, size and established entity factors.
anon, I somewhat agree with your last three posts, but recall that in an IPR, claims cannot be broadened anyway — so a conventional reissue should suffice.
Given the brave new world of PGR’s, it would be foolish not to file that continuation/reissue divisional so that it might be pending when and/or if a PGR is declared. That is nothing more than common sense and not an abuse of any process.
It would almost be malpractice not to have a continuation perpetually open, eh?
And yet, such a thing would be offered as scorn for g-g-grifters and such.
How much of “the problem” really is a “problem?”
What you have here – and what is reflected in The Economist – is a bunch of propaganda.
About that “Tr011” problem, how is it that NO ONE has taken a concern that the propaganda piece by the Executive office, called out by Ron Katznelson, has not been rectified? It is now mid-October. The answer to Ron’s motion was due in the normal course in what, June? Overdue in July? Really late in August? AWOL in September? What is the apt description now? What is the “polite” description? “Delinquent?” “Tardy?”
“Sitting here in Europe, one gets sick and tired with criticism of “the patent system”,”
How do you think we here in the US feel?
And yet forums, such as this “esteemed” one, are overrun with certain anti-patent viewpoints for whom it appear no “politeness” rules apply. No effort at constraining the runaway monologues, the sAme short scripts.
The present example, MaxDrei – your own “convenient” overlooking of this sovereign’s view on property rights. Such are key to the discussion here, and yet, none of your posts reflect that important, neigh critical, element. Instead all you want to do is hand over your own pair of glasses and say “here, wear these, they help my eyesight.”
Per Ron’s generous link on the “Patent Tr011s” thread, the 60 day window for response of the correction made per the request asked for by Ron elapsed on May 30, 2015.
As of today, that is 136 days late than that first due date..
Not within the first 60 days.
Not within an additional 60 days.
Not within a third 60 days.
We are now within a fourth 60 days.
The silence is deafening.
You ask how do we feel in the USA, about the steady stream of criticism of patents, like in The Economist recently. I think you feel that it is ignorant criticism, criticism of patent systems the whole world over. I’m just pointing out that the criticism it makes fits with the USA but nowhere else.
There are plenty of aspects of patent law in Europe that The Economist could criticise. Of course there are. Mostly on the enforcement side. But one has to understand it first, before one can credibly criticise.
And I am pointing out that it – in fact – does NOT fit the US.
The point of the matter is that the “criticism” is nothing but propaganda. Saying “it fits the US” is part of the problem.
“But one has to understand it first, before one can credibly criticise”
The irony of that statement is truly awesome.
How little it is of that “understand it first” that is part and parcel of the sAme tired scripts so often trotted out here in the anti-patent rhetoric?
Much like as with voting rights, that once established, the legislature is not free to do “whatever they want,” the plain fact of the matter here is that patents ARE property – personal property at that.
the Court vitiated much of the core content of “private” rights as a concept and left resolution of the central issue to a balancing test. That is, “public” rights are, strictly speaking, those in which the cause of action inheres in or lies against the Federal Government in its sovereign capacity, the understanding since Murray’s Lessee. However, to accommodate Crowell v. Benson, Atlas Roofing, and similar cases, seemingly private causes of action between private parties will also be deemed “public” rights, when Congress, acting for a valid legislative purpose pursuant to its Article I powers, fashions a cause of action that is analogous to a common–law claim and so closely integrates it into a public regulatory scheme that it becomes a matter appropriate for agency resolution with limited involvement by the Article III judiciary.
The last part, which is the subject of the government’s brief is pretty damning.
Logical proof
1)The majority of the patent power is vested in Congress
2)congress has delineated the event to which patents are property in the 1952 act
3)congress has the right to alter the extent of the property right so long as it is a public right
4) public rights are those that are analogous to common law claims
5)even if there is a common law claim a public right can still exist depending on the level of congressional involvement via a “balancing test”
5) see 1) again
6) patents are a public right.
Your move
Extent to which*
Cooper hammered the majority of these points in its Reply Brief.
The brief was posted by IP Watchdog, and may be read here:
link to ipwatchdog.com
T, it would be nice if you identified the case and brief you are quoting from.
Regardless, I do not dispute much of what the government says there; but the brief never addresses the law. See below for more.
4. is not an accurate summary of what a public right IS. Public rights are rights of the government acting as a sovereign — in exercising its traditional functions (taxation, customs, etc.) — pursuant to its delegated powers. While the government does not have to be a party, the essential action must be an action by the government as a sovereign. Private rights, like property, are excluded from the doctrine per Stern citing a number of prior cases.
Moreover, it is the law is that if a cause of action was actually litigated in the courts of England at common law, it categorically is not a public right and must be tried in an Article III court.
The government brief, on this issue, simply punts.
This is from Cornell law. That is how they read 4)
T, I’m sorry, I still do not know what brief you are talking about or what Cornell is talking about. Can you provide some indication of what brief you are discussing and if you could, could you provide a link to the Cornell discussion you reference?
link to law.cornell.edu
Seems to have stopped in 1989. Does not discuss Stern v. Marshall.
Regarding regulatory schemes, think ITC and Hatch-Waxman — both commerce clause regualtory programs. Both involve the litigation of patent validity and infringement – the former in an agency, the latter in court. But I would contend that Hatch Waxman could be entirely transferred to an Article I agency.
Is Stern v. Marshall the most recent precedent or is there a later case?
I am becoming fascinated with this issue.
I still think my initial opinion is correct.
Stern v. Marshall dealt with the Bankruptcy Court dealing in tort claims.
“Here Vickie’s claim is a state law action independent of the federal bankruptcy law and not necessarily resolvable by a ruling on the creditor’s proof of claim in bankruptcy. Northern Pipeline and our subsequent decision in Granfinanciera, 492 U.S. 33, 109 S.Ct. 2782, rejected the application of the “public rights” exception in such cases.”
Stern v. Marshall 131 SCt. at 2611.
Our decision in Thomas v. Union Carbide Agricultural Products Co., for example, involved a data-sharing arrangement between companies under a federal statute providing that disputes about compensation between the companies would be decided by binding arbitration. 473 U.S. 568, 571-575, 105 S.Ct. 3325, 87 L.Ed.2d 409 (1985).
This Court held that the scheme did not violate Article III, explaining that “[a]ny right to compensation … results from [the statute] and does not depend on or replace a right to such compensation under state law.” Id., at 584, 105 S.Ct. 3325.”
The PTAB’s lack of a right to trial by jury results from Congress ensuring that they issue a VALID Patent and does not depend on or replace a right to a trial by jury for Patents that ARE valid and.
no “and” at the end
Thomas is a dynamite example of the type of administrative claims that survive the public rights analysis — a legislative enactment mandating data sharing between pesticide companies.
Can you find an antecedent at law, equity, or admiralty?
Now compare with the claim of patent validity, and its many centuries of history at law or equity.
Are you starting to see the problem here?
Again, what do you notice on PDF page 9, opinion page 6?
link to supremecourt.gov
June 2015.
Part II was 8-1, if I counted correctly.
That is dicta that justifies a holding on a taking clause case.
It is an admission that patents were considered personal property—-in 1882.
so yea… there was something that happened in 1952 that may have changed that.
Well, that is one way of looking it. Perhaps others would see it as a clear shot across the CAFC’s bow.
T, if there is a right to a trial by jury, Granfinanciera holds that such are not public rights and must be litigated in Article III courts.
Thus the holding of the Supreme Court that actions to revoke a patent for invalidity had a right to a trial by jury is controlling law on whether a patent owner has a right to a trial by jury and a right to a trial in an Article III court under Granfinanciera/Stern.
“It is an admission that patents were considered personal property—-in 1882.
so yea… there was something that happened in 1952 that may have changed that.”
Nothing in 1952 changed that portion of the law.
Please, please, please, have SOME backing for your “theories.”
Topce,
Maintenance fee has nothing to do with “patent being a private property”
Think about yearly registration fee for Car, or yearly Property tax for your house etc. I can go on and on ..
As you know Car and House are not “Public Property” they are private property.
T, Thomas is no different than Crowell v. Benson. It was a newly created right that had no analogous right in “state law” which appears to be a code word for actions litigated in the courts of England at common law.
Whether this extends to statutory created state rights that are now exclusively federal because of preemption is an issue has not been addressed by the Supreme Court. But patents were known at common law and states issued patents in America prior to 1790.
Anon I do.
The subsequent amendments including the AIA, which you rally against, imply that congress intended patents to be a revokable lisence from the government.
Evidence: nearly everything from maintenance fees to ex parte reexam to reissue.
Nobody liked Patlex went it came out. And now because this proceeding “looks like” an article I adjudication, you want a do over.
I am slowly catching on to the B$.
You seek an “implication” while the words of Congress are explicit.
STOP trying to force the law to your desired ends and learn to understand what the law IS.
T, There are two later cases that deal primarily with Stern claims and with whether one can voluntarily waive his Article III rights. See Executive Benefits I quoted before, and Wellness v. Sharif that the Supreme Court issued in June. You can get that opinion from the Supreme Court site.
T, the Supreme Court addressed a statutorily created right in Granfinanciera v. Norberg, and held that it was not a public right because there was an analogous right litigated the courts of England at common law.
Just read it. That is interesting.
About to read wellness v. Shariff.
The outcome here is far from clear. This was about whether submitting to adjudication precludes the right to an article III review.
Well of course not.
Ok I am not sure how matters of equity in bankruptcy cases have relevance to patents.
However it appears to me based on te caselaw on “public rights” that a patent cannot be revoked without a trial by jury.
The problem is the government can still argue that patents are invalid unless they can pass IPR. IPR is merely part of the examination process. I don’t know how you can get around that argument.
The “examination process” ends with the initial grant.
Once the property leaves the Executive branch that very first time, (personal) property rights are established.
Once established,….
anon the problem is the government can argue that the patent never leaves the executive and legislative branches.
A patent is property but more like a unilaterally revocable lisence.
Do you think maintenance fees are unconstitutional?
Topce,
Maintenance fee has nothing to do with “patent being a private property”
Think about yearly registration fee for Car, or yearly Property tax for your house etc. I can go on and on ..
As you know Car and House are not “Public Property” they are private property.
The “examination process” ends with the initial grant?
Says who?
Like every patent is valid contingent on favorable IPR/PGR/CBM review?
Basics, Topce, basics.
Why do you want to continue your “philosophies” while ig noring the basics?
Patents share attributes with personal and real property. But how do you justify that they ARE personal property?
You are thinking like a politician; not like a litigator — again, what has the SCOTUS said about this?
Very little since 1952z
Maybe because Congress was explicit about this…
(just a thought)
Another thought – brush up on your statutory construction.
Well again. Not really. Part of statutory construction is to look at the statute as a whole. Other parts of the 1952 act and subsequent amendments are inconsistent with that intent or may override it.
One thorn you have to deal with is the fact that reissue and reexamination were passed by Congress.
You can’t pick and choose the parts of title 35 that you like and ignore the parts you don’t like.
You really need ot learn how to read and understand statutory law – including the time elements of changes to that law.
Your statement of “You can’t pick and choose” is simply off point.
Where does Hotel Security fit in here?
Hotel Security is relevant to 101. The analysis in both Mayo and Alice is that announced in Hotel Security. Hotel Security was prevailing law on business methods until State Street Bank “overruled” it.
Wrong on so many levels Ned.
And you have been informed of this by Prof. Crouch and shown so by David Stein.
It is unethical for you to continue your blatant L I E S in advocating on this social media forum.
I take enormous pride, anon, in being called a liar by you. Made my day.
Alas, my friend, that does not surprise me.
anon, we have to much history to bash each other. We agree on some things. Disagree on others. That is life. But we should treat each other with respect.
Yes we should.
Please begin to do so by stopping your monologues and properly consider the counter points presented for discussion.
Take those discussions to their logical conclusions – no matter how inconvenient that will be for your dogmatic pursuits.
anon, I will give it my best.
Thanks Ned – if it is any comfort, I do recognize that often your posts here are NOT personal posts and that you feel constrained by your obligations to your clients.
HOWEVER, I would point out (again) that the original guidelines to posts on this blog dictated that ALL posts were to be of a personal nature.
I also grant that these ground rules have (for some unknown reason) been made very difficult to find.
Go figure.