Correcting your Patent Based upon Later Advances in Science

Cubist Pharma v. Hospira (Fed. Cir. 2015)

An interesting aspect of this Hatch-Waxman decision involves the question of whether the PTO properly issued a certificate of correction.

Justification for a Certificate of Correction: The Patent Act authorizes the issuance of a certificate of correction when “a mistake in a patent, incurred through the fault of the USPTO, is clearly disclosed by the records of the Office” 35 U.S.C. § 254 or “a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the USPTO, appears in a patent and a showing has been made that such mistake occurred in good faith.” 35 U.S.C. § 255.

In this case, the original patent filing included a structural diagram of the claimed daptomycin compound that was inaccurate because it misidentified a stereoisomer of asparagine. It was only after the patent issued that researchers discovered that the compound contained the D-isomer rather than the L-isomer. To be clear, when the patent issued, scientists thought that the compound actually had the L-isomer but then later learned that it had the D-isomer.

Seeing that mistake, the applicant petitioned the PTO for a certificate of correction to correct the error in the specification and the PTO agreed. Now, Hospira argues that the correction unduly broadens the scope of the claims and thus should be stricken.

Impact of Striking a Certificate of Correction: I’ll pause here to note that the Patent Act does not directly identify any remedy associated with improper issuance of a certificate of correction. Generally, the only result is that an improperly issued certificate will be stricken – and only after clear and convincing evidence showing the improper issuance. Following this line of cases, the defendant Hospira is asking for here is simply that the patent be returned to its original pre-amended state.

On appeal, however, the Federal Circuit sided with the USPTO and district court – holding that the amendment was proper.

[T]he [district] court characterized the PTO’s action as simply correcting an error in the diagram … without changing the scope of the patent. The court agreed with Cubist that the specification made clear that the patent claimed the daptomycin compound all along; the pre-correction version merely misidentified the stereoisomer of the asparagine amino acid found in that compound. . . .

Contrary to Hospira’s argument, the original structural diagram … did not establish that the patent was directed to a compound other than daptomycin. As this court has noted, a chemical structure is “simply a means of describing a compound; it is not the invention itself.” UNM v. Knight (Fed. Cir. 2003).

In light of the heavy burden on a party seeking to invalidate a certificate of correction, we uphold the district court’s conclusion that the certificate of correction did not alter the scope of the patent, but merely corrected an error as to the chemical structure of daptomycin.

As noted above, the statute provides for correction of “a mistake of a clerical or typographical nature, or of minor character.” Here, the correction was deemed to fit within the “minor character” prong of the test. The decision itself is quite fact specific, but it does highlight the general fact that the “error” being corrected need not be simply a typo.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

107 thoughts on “Correcting your Patent Based upon Later Advances in Science

  1. David: the grant of a patent implicates some sort of amorphous public concern

    What’s “amorphous” about the public’s concern with patents that should never have been granted but were granted anyway?

    what does that even mean? The answer: nothing

    In fact, the public’s interest in eliminating the invalid patents from the system is paramount. But you knew that already because you’re so familiar with “the law”. All that “amorphous” hand-wavey policy stuff is for the hippies to worry about.

    1. In fact, the public’s interest in eliminating the invalid patents from the system is paramount.

      In fact, NOT.

      You are trying (way way way too hard) to have the means justify the ends.

      In fact, at the moment of grant, personal property is created.

      At that point, even Congress cannot violate takings doctrine in its laws.

      And yes, you should note that the portion of the Patent Act designating the grant AS property was not changed.

      You do need to recognize, understand, and incorporate this into your arguments.

      Tht is, if you want to have any shot at credibility.

      1. You do need to recognize, understand, and incorporate this into your arguments.

        Nobody needs to incorporate anything you see into anything they write and it’s probably better to simply ignore your comments entirely.

        For the sake of laughs, however, I’ll just point out the obvious: if the “property” handed out by Congress comes with strings and caveats that, e.g., limit the “rights” available to the “property” owner when certain conditions are met, then there is no “taking” when those conditions are met and the “rights” are consequently limited or eliminated.

        Note that when I say “obvious”, I don’t just mean “obvious to lawyers”. I mean obvious to everybody. The fact that some microscopic of conflicted “lawyers” can’t see it or won’t admit to it doesn’t really matter at all.

        Thanks for playing.

        1. Your “strings” is not what Congress set the property to be.

          You are rather not getting the fact that the section of the law that set the property aspect was not changed.

  2. As noted above, the statute provides for correction of “a mistake of a clerical or typographical nature, or of minor character.” Here, the correction was deemed to fit within the “minor character” prong of the test. The decision itself is quite fact specific, but it does highlight the general fact that the “error” being corrected need not be simply a typo.

    Modern diagramming programs often have a one or two stroke reflection function. The reversed optical isomer of the specification could easily be a simple typist’s error.

    1. Joachim,

      I think that you can appreciate the following (since you identified with modern diagramming programs – not that I am pinning the “logic” comment to you, which I am not):

      Slightly OT, but serving notice to those who wish to create a “logic,” but then need to simply apply that “logic” to its (logical) ends…

      And guess what happens when an Art finally grows up from the “gee-we-don’t-know-what-will-happen” phase…

      (from Greg A’s email today)

      But now, there is increasingly becoming automated. The most recent challenge hosted by the Cambridge Crystallographic Data Centre has resulted in a combination of two teams being able to completely automatically determine the 3D structure of complex chemicals – “… this blind test has shown that the problem of organic crystal structure prediction [note: KSR prediction?] has been solved.

      Yes “folks,” for those who believe 103 rules out anything predictable, you might as well close the patent doors for the chem (and bio-chem) arts.

      1. for those who believe 103 rules out anything predictable, you might as well close the patent doors for the chem (and bio-chem) arts

        Because the crystal structures of some small organic molecules were predicted?

        LOL

        1. ..try again (your “beloved” objective (singular?) physical structure…

          Wait, you want more than that…?

          /off sardonic bemusement.

  3. The Federal Circuit just can’t help itself sometimes. Today in Inphi v. Netlist it shoots itself in the face with a bizarre decision expanding upon its already dubious decision Santorus.

    The holding: Merely “[d]escribing alternative features—without articulating advantages or disadvantages of each feature—can constitute a “reason to exclude”’ and provide written description support for negative claim limitations that carve out certain “alternatives” but retain others.

    Weirdly enough, the amendment added in re-exam to avoid the prior art relies on different prior art (a standards publication) that discloses the claimed and disclaimed features and identifies them as “distinct”.

    1. Malcolm, I have no idea why the patentee added the negative limitations in the first place because everyone of ordinary skill in the art would know that a chip-select signal is not an address signal.

      This was a lot to do about nothing.

      1. Ned,

        Pay attention as I have already explicated the differences.

        (and yes, this is a severe case of your “enjoy the swagger” of someone who-aligns-with-your-viewpoint-so-they-must-be-an-Einstein self-induced blindness)

  4. Paul, is that what happened there? I didn’t know that the patentee was trying to get the court to fix an obvious error. Did they file a separate motion?

  5. Is there any easy to determine what percentage of requests for certificates of correction are denied by the PTO? And whether that percentage has changed substantially over the years (I’m guessing it hasn’t but who knows)?

  6. Dennis,

    “The decision itself is quite fact specific, but it does highlight the general fact that the “error” being corrected need not be simply a typo.”

    If you are attempting to harmonize IPR with McCormick, you should write a law review article about it.

    link to caselaw.findlaw.com

    Get off the sidelines.

    1. Analogy to land patents:
      The only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent. Moore v. Robbins, 96 U.S. 530 , 533; U. S. v. American Bell Tel. Co., 128 U.S. 315, 364 , 9 S. Sup. Ct. 90; Lumber Co.v . Rust, 168 U.S. 589, 593 , 18 S. Sup. Ct. 208. And in this respect a patent for an invention stands in the same position and is subject to the same limitations as a patent for a grant of lands. The power to issue either one of these patents comes from congress and is vested in the same department. In the case of a patent for lands it has been held that when one has obtained a patent from the government he cannot be called upon to answer in regard to that patent before the officers of the land department, and that the only way his title can be impeached is by suit. U. S. v. Stone, 2 Wall. 525, 535; Mining Co. v. Campbell, 135 U.S. 286 , 10 Sup. Ct. 765; Noble v. Railroad Co., 147 U.S. 165 , 13 Sup. Ct. 271. But a suit may be maintained by the United States to set aside a patent for lands improperly issued by reason of mistake or fraud, but only in the case where the government has a direct interest or is under obligation respecting the relief invoked. U. S. v. Missouri, K. & T. R. Co., 141 U.S. 358 , 12 Sup. Ct. 13.
      – Paragraph 3 of opinion, not the facts recited.

      Had the original patent been procured by fraud or deception, it would have been the duty of the commissioner of patents to have had the matter referred to the attorney general with the recommendation that a suit be instituted to cancel the patent; but to attempt to cancel a patent upon an application for reissue when the first patent is considered invalid by the examiner would be to deprive the applicant of his property without due process of law, and would be in fact an invasion of the judicial branch of the government by the executive.
      [3rd to last paragraph]

      Seems like a pretty strong indication that (1) patent = property, under 5th, therefore requirement for due process in a court of equity to revoke; (2) any attempt by Congress (by statute) or Executive to invalidate patent, without going through the judiciary, encroaches on article 3’s power.

      Besides the usual bickering on here, does anyone know how the Supreme Court views this type of old precedent? Scalia will probably go nuts and ecstatic OR find some English case from the 1600s and merely state that McCormik was actually incorrectly decided.

      1. does anyone know how the Supreme Court views this type of old precedent?

        For the most part, they view it like any other reasonable human beings who can count, who have a basic understanding of history, and who recognize that humans — including judges — are fallible and sometimes say things without much consideration for the consequences.

        Did you note what’s missing from the text you cited? There’s no reasoning, just self-serving restatements of the conclusion.

        1. MM, of course the reasoning comes from Marbury v. Madison and its conclusion that the court system is the entity that decides legal rights, their validity and their infringement. This is a matter of structure of government, of separation of powers, and the role of the court system within our Constitution.

          This is not to say that Congress cannot create new regulatory programs involving the regulation of commerce, where the scope or the validity of a patent is at issue, and place the determination of that scope and of that validity in the context of the regulation within the scope of authority of a regulatory agency.

          But when one is attempting to actually enforce the patent for damages or and injunction or where the patent is going to be revoked or modified, that is where the courts cannot be displaced. See, e.g., Murray’s Lessee.

          1. the reasoning comes from Marbury v. Madison and its conclusion that the court system is the entity that decides legal rights, their validity and their infringement

            There’s a giant hole in this “reasoning”, however, when it’s the PTO — not the judiciary — who “decides the legal rights” in the first place and where those “legal rights” come with strings attached that expressly permit the same agency to re-examine those rights.

            Let’s imagine a scenario where there was an utterly incompetent PTO director who decided to ignore the law and, as a result, granted five million patents in one year 95% of which are invalid on their face (this isn’t that far from what actually happened). As a whole, the patents cover pretty much every valuable process and manufacture in the country. And again, every one of these patents was granted under a regime which expressly recognizes that the patent is subject to re-exsmination.

            Your suggestion is that this absurd windfall for patentees can only be addressed one patent at a time by Federal courts? Because Marbury says so? That’s ridiculous.

            1. Kinda like we give everyone a fair trial except in the case of POW’s where, if we tried to do that, we’d lose the war.

              But, your argument applies best to oppositions and reexaminations. It really does not apply validity trials between a patent owner and an infringer.

          1. American Bell doesn’t suggest that IPRs are unconstitutional. All it says is that the US may bring suit against a patentee in Federal Court if the US believes the patent was obtained fraudulently.

            If anything, the case supports the public’s right to have patents examined by the granting agency. That’s because the opinion justifies its conclusion with the following: “the acts of Congress … have in express terms provided that the United States may bring suits in those courts, and they are all very largely engaged in the business of affording a remedy where the United States has a legal right to relief.”

            Likewise, the acts of Congress have in express terms provided both patentees and the public a means for correcting, eliminating, and further examining granted patents.

            I’ll also add that if you are maintaining that once the PTO’s rubber stamp leaves its impression on the patent that somehow “everything is changed” and now only courts can touch it, fairness requires that such a magical transformation would apply equally to both patentees and the public, i.e., no more “requests” to the PTO to consider additional art after grant and no more “requests” to the PTO to fix invalid claims (and no running around that ban by disguising those requests as continuations). I suspect, for obvious reasons, that’s not a problem for many patentees but it may be a problem for some of them.

            1. MM,

              Your reading of American Bell is intellectually disingenuous.

              Beyond that, you aren’t making the right arguments. Further to “Drop By’s” question, J. Newman in Patlex (758 F.2d 594) acknowledged McCormick (and by implication, Am. Bell) and its holding that patent validity must be resolved by an Article III court. Nonetheless, and in her view, because the claim of patent validity fell within the public rights exception, reexamination did not represent an unconstitutional allocation of Article III power.

              American Bell, McCormick, Stone (69 U.S. 525), Cammeyer
              (94 U.S. 225), Iron Silver (135 U.S. 286) (and others) all say what they say – an 8-1 SCOTUS appears to have them in mind – the only question is whether the CAFC properly characterized the claim of patent validity as a public right.

              The question isn’t whether a “patent” is a public right, or the “grant” is a public right; it is the cause of action, no matter what the CAFC said about the issue.

              This is the intersection of Stern v Marshall, Crowell v Benson, and Granfinanciera (and others) – highly important sep of powers SCOTUS decisional law, with the CAFC’s very questionable Patlex and Joy decisions.

              Where this particular cause of action was historically resolved at law or equity, the CAFC has put itself directly at odds with core SCOTUS rule of law wrt Article III.

              1. Your reading of American Bell is intellectually disingenuous.

                No, it’s not. It’s just a different reading than your reading. Nothing that I wrote is inconsistent with what’s written in Bell.

                Once again: Congress is authorized by the Constitution to create a patent system that promotes progress in the useful arts. If Congress decides that that “patent rights” are re-examinable rights, then that is what patent rights are

                The folks who dislike IPRs are, almost to a person, the same folks who dislike any and every “weakening” of their precious “patent rights. You seem to operate as if “patent rights” have some existence and meaning outside of the patent statute. They don’t.

                If it wanted to, Congress could create a system where instead of a “patent right” you get a “zibzab right”. The “zibzab right” is kind of like “patent rights” but, as set forth in the statute, any guy off the street can go to the Zibzab and Trademark Office that grants the zibzab rights and pay the ZTO five cents and ask for the zibzab to be re-examined and invalidated without any participation by the owner of the zizab. There’s nothing in the Constitution that says Congress can’t do that.

                So other than keeping endless reams of junk patents floating out there a wee bit longer, what is it you think you’re achieving here?

                1. Nice rant, but substantively devoid.

                  Again, you do not understand the issue:

                  Per SCOTUS decisional law, on what basis, if any, is the claim of patent validity properly identified as a public right?

                  It’s a tough question – the DOJ will tell you that.

                2. My mistake – the complete Am Bell opinion may be read here:

                  link to law.cornell.edu

                  In relevant part:

                  “Recurring to the constitution itself the great source of all power in the United States, whether executive, legislative, or judicial, there is a striking similarity in the language of that instrument conferring the power upon the government under which patents are issued for inventions and patents are issued for lands. It is declared in article 1, § 8, par. 8, that ‘the congress shall have power * * * 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.’ It is by virtue of this clause that congress has passed the laws under which the patents of the defendant in this case were issued. Article 4, § 3, par. 2, declares that ‘the congress shall have power to dispose of and make all needful rules and regulations respecting the territory or other property belonging to the United States.’ It is under this clause that congress has passed laws by which title to public lands is conveyed to individuals, by instruments also called patents. The power, therefore, to issue a patent for an invention, and the authority to issue such an instrument for a grant of land, emanate from the same source; and, although exercised by different bureaus or officers under the government, are of the same nature, character, and validity, and imply in each case the exercise of the power of the government according to modes regulated by acts of congress.”

                  . . .

                  “Whenever a patent on application is refused, either by the commissioner of patents or by the supreme court of the District of Columbia upon appeal from the commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear.’ It is then further provided that, if the adjudication be in favor of the applicant, it shall authorize the commissioner of patents to issue such patent upon the applicant’s filing in the patent-office a copy of the adjudication. These provisions, while they do not in express terms confer upon the courts of equity of the United States the power to annul or vacate a patent, show very clearly the sense of congress that, if such power is to be exercised anywhere, it should be in the equity jurisdiction of those courts. The only authority competent to set a patent aside, or to annual it, or to correct it, for any reason whatever, is vested in the judicial department of the government, and this can only be effected by proper proceedings taken in the courts of the United States.”

                  This is a tough opinion for the CAFC.

                3. See also (Am Bell):

                  “But whatever may have been the course of procedure usual or requisite in the English jurisprudence, to enable the king to repeal, revoke, or nulify his own patents, issued under his prerogative right, it can have but little force in limiting or restricting the measures by which the government of the United States shall have a remedy for an imposition upon it or its officers in the procurement or issue of a patent. We have no king in this country; we have here no prerogative right of the crown; and letters patent, whether for inventions or for grants of land, issue not from the president but from the United States. The president has no prerogative in the matter. He has no right to issue a patent, and, though it is the custom for patents for lands to be signed by him, they are of no avail until the proper seal of the government is affixed to them. Indeed, a recent act of congress authorizes the appointment of a clerk for the special purpose of signing the president’s name to patents of that character; and, so far as patents for inventions are concerned, whatever may have been the case formerly, since the act of July 8, 1870, they are issued without his signature, and without his name or his style of office being mentioned in them. The authority for this procedure is embodied in the following language of the Revised Statutes: ‘Sec. 4883. All patents shall be issued in the name of the United States of America, under the seal of the patent-office, and shall be signed by the secretary of the interior, and countersigned by the commissioner of patents, and they shall be recorded, together with the specifications, in the patent-office, in books to be kept for that purpose.’ This only expresses the necessary effect of the acts of congress. The authority by which the patent issues is that of the United States of America. The seal which is used is the seal of the patent-office, and that was created by congressional enactment. It is signed by the secretary of the interior, and the commissioner of patents, who also countersigns it, is an officer of that department. The patent, then, is not the exercise of any prerogative power or discretion by the president, or by any other officer of the government, but it is the result of a course of proceeding quasi judicial in its character, and is not subject to be repealed or revoked by the president, the secretary of the interior, or the commissioner of patents, when once issued. See U. S. v. Schurz, 102 U. S. 378.”

                4. Short version of the 11:58 Am Bell cite:

                  “The president can’t do this and the president can’t do that. But Congress can. Congress has the power to create an agency to grant instruments to promote progress, which it did. That instrument, therefore, is not the exercise of any prerogative power or discretion by any officer of the government.”

                  The huge gaping hole in the reasoning will seem pretty obvious to most people, I think.

                5. As repeatedly held by the SCOTUS, Congress does NOT have the unilateral power per the Article to remove the validity (land or IP) cause of action from the judiciary.

                  On this point, it is clear as day.

                  If this was the hole, the CAFC would have driven through it long ago.

                  Again, for the third time:

                  On what basis is the claim of patent validity properly classified as a public right per the SCOTUS’s decisional law on the subject?

                  See Stern; Crowell; Granfinanciera; Northern Pipeline; Jicarilla.

                  You are avoiding the question for the same reason the DOJ shortcites the standard.

                6. David: Per SCOTUS decisional law, on what basis, if any, is the claim of patent validity properly identified as a public right?

                  “Per SCOTUS decisional law”, the term “public right” can mean pretty much whatever the SCOTUS wants it to mean.

                  you do not understand the issue:

                  I do understand “the issue”. The fact that we disagree or that I’m not quoting from these vapid Supreme Court decisions that you love so much doesn’t mean that “I don’t understand.”

                  It’s a tough question – the DOJ will tell you that

                  Whether patent re-exams are Constitutional really isn’t a “tough question.” They are Constitutional because Congress was expressly given the power to create a system to promote progress and there is nothing in the Constitution that suggests that Congress can’t put reasonable (due process complying) limits and strings on the instruments it designs to achieve that purpose.

                  That said, addressing all the b.s. being thrown around is certainly time-consuming, as is wading through the Supreme Court’s incoherent decisions on “public rights” and the mindless dicta out there like that in Am Bell.

                  For cripessake if you take all the dicta in Am Bell seriously than the PTO isn’t Constitutionally permitted to correct any mistake that might have been made in a patent, “for whatever reason”. That’s absurd. Other than the folks directly invested in eliminating IPRs because they own junk patents, who on earth doesn’t find that absurd?

                  Ridiculous language like that in Am Bell is exactly why the Supreme Court is permitted to “do it over.” Sometimes the Court just doesn’t have a clue or it’s blinded by some special feeling for the petitioner. Presumably the Court is mindful of a few differences between the system Congress created 150 years ago (both its statutory and practical aspects) and the system we have now.

                7. “addressing all the b.s. being thrown around is certainly time-consuming, as is wading through the Supreme Court’s incoherent decisions on “public rights” and the mindless dicta out there like that in Am Bell. ”

                  c.o.w.a.r.d.

                  You have become a case study in why stringent Art III barriers are required.

              2. David: J. Newman in Patlex (758 F.2d 594) acknowledged McCormick (and by implication, Am. Bell) and its holding that patent validity must be resolved by an Article III court. Nonetheless, and in her view, because the claim of patent validity fell within the public rights exception, reexamination did not represent an unconstitutional allocation of Article III power.

                Short version: patent validity doesnt need to be resolved by an Article III court.

                And the best part about that conclusion: the Constitution isn’t offended and you end up with a patent system that works far better than the alternative.

                It’d be interesting if the Supreme Court suddenly decided not to care about curtailing the radical and pernicious expansion of the US patent system because of some overriding desire to handicap Congress’ expressly granted power to promote progress in the useful arts (and gosh knows what else). This would certainly be a transparent and immediately impacting (on the public) way to make the Court’s desires known. I wonder if they realize what they’ll be stepping into?

                1. “patent validity doesnt need to be resolved by an Article III court”

                  That is correct, and the DOJ has repeatedly said as much during briefing on this issue.

                  This question implicates tremendous power. If the Article III courts (affirm, and) tell the legislative and executive branches that they can take it, they will. It’s just how the system works.

                  There is a lot of ivory tower complicity going on – either the patent academics don’t understand this, or if they do, they don’t want you to know about it.

                2. David: If the Article III courts (affirm, and) tell the legislative and executive branches that they can take it, they will. It’s just how the system works.

                  The PTO will have the awesome power to fix its own screw-ups! Wow! What a privilege.

                3. David: There is a lot of ivory tower complicity going on – either the patent academics don’t understand this, or if they do, they don’t want you to know about it.

                  Oooh, it’s like some big conspiracy. Probably there are communists involved.

                4. I’m convinced that you are anon. You write the same way; you think the same way – albeit with conveniently diametric viewpoints.

                  I can’t argue substance with someone who is only interested in policy.

                5. David: “I’m convinced that you are anon. You write the same way; you think the same way – albeit with conveniently diametric viewpoints.

                  I can’t argue substance with someone who is only interested in policy.

                  You don’t even get a gentlemen’s D- for that.

                  You get a straight F. U should really learn to pay attention, as I have explicated the differences quite clearly.

                  I don’t peddle straight up “feelings/opinions/philosophies” as if that is how the law IS.

                  I DO understand the law, the Rule of Law, facts, and policies.

                  And while we both use ad hominem, he uses it in a blind and unconnected manner, while I wield it deftly (and yes, per the proper manner according to the art of rhetoric).

                  Let me throw a little John Maynard Keynes at you (again):

                  “Words ought to be a little wild, for they are the Assault of thought on the unthinking.” (emphasis added). You may not like the @ssault that you have received from me, but that is merely because in those (surely rare) instances, you have simply tried to skate by in an unthinking manner (like trying to have me come up with citations for your arguments).

                  By the way, the Rule of Law is NOT that the Supreme Court is above the Law. There, both Malcolm and I are correct in that decisions by the Court can – in fact (and law) – be wrong.

                  Over on the Hricik side of the blog way back when was an excellent (actual) discussion on how often the Supreme Court is in fact wrong and the number of different paths available to correct the mistakes of that Court.

                  But that’s about the extent of Malcolm “being right” as he clearly continues to exalt in an Ends Justifies the Means mantra (where any decent attorney worth their salt knows that in law – especially law – it is critical to use the proper means to whatever desired ends is finally reached.

                  SOOOO much of what Malcolm posts is soooo wrong, that a separate and dedicated post might not be enough – but with the C R P fest of his spewed ALL over this thread, a single post would probably be most efficient.

                6. Your pure B$ of “If this were true, you would have found my two cases a long time ago, sport.” was already noted, “sport”…

                  Let me repeat it: (like trying to have me come up with citations for your arguments).

                  That conversation, in case you forgot, was you attempting to claim some point in law and my challenging you.

                  It is beyond L AM E to ask me to supply the very thing that I challenged you upon.

                  That you then get your knickers all twisted, well, that is most definitely a “you” problem.

                7. Child?

                  LOL – you engage in the empty “You have been boxed in… Doubling down, tripling down, whatever – it was not a smart play.” when you have offered NOTHING to “box me in.” Feel free at any time to actually show where I am wrong in the law and in my views.

                  As I clearly pointed out: it was your own shortcoming that I called out. And it is still your own shortcoming, no matter how badly you want me to help you out and make your argument for you.

                  Wise up son, and lose the “internet tough guy” Someone is going to put you out of your misery

                  Man up and do it yourself – with the proper t001s of law and rhetoric (and yes, son rhetoric does include ad hominem).

                  I think that the I am enjoying it NOW.

                8. You see, c.l.o.w.n., when you argue that the AIA will collapse per a re-classification of the claim of patent validity as a private right, and I clearly tell you – hints and all – that the SCOTUS has at least twice established relatively simple mechanisms by which this result can be avoided – the onus is on you, the original “the AIA will fail” claimant, to discover, and distinguish, the obvious authority. It’s a foundational question of credibility, and your inability to complete step 1 make this just a silly game.

                  You can pull out all the neat tricks you learned in your soph. year phil. class, but at the end of the day, you still aren’t a lawyer; and you can’t find obvious case law. D-, child.

                9. It is NOT just the re-classification as a private right…

                  1) It already is a private right per the words of Congress (which predate the AIA)

                  2) The law itself (and NOT a “reclassification”) is what is unconstitutional.

                  The mechanistic things you merely hint at (and refuse to bring forward for a full critical review) are just not pertinent to the situation as I have described (e.g., THIS law, with its explicit rejection of separability).

                  There is NO onus on me to explain and overcome what clearly is the result. It is on you to show otherwise.

                  Your attempt at “foundational question of credibility” is just like your sad “boxed in”: the onus and the question of credibility is on you, no matter how hard you try to get me to make your argument for you.

                  Your argument just has not been made.

                  Still.

                  The Silly game is your pretending otherwise because I called out your lack of foundation, and you wanted me to make your case for you.

                  You still need to make your case in the first instance. You said that you knew of law that would support your view, but we have yet to see it.

                  “Child” – you still get a solid F. U still need to do your part (and not whine that I am not doing your part for you).

              3. The Supremes in some ancient case that never contemplated an incompetent PTO granting a zillion patents a year:

                It is under this clause that congress has passed laws by which title to public lands is conveyed to individuals, by instruments also called patents. The power, therefore, to issue a patent for an invention, and the authority to issue such an instrument for a grant of land, emanate from the same source; and, although exercised by different bureaus or officers under the government, are of the same nature, character, and validity, and imply in each case the exercise of the power of the government according to modes regulated by acts of congress.”

                Got that, folks? Land grants and patent grants are of the “same nature and validity” because — wait for it! — someone once used the same word to describe both of them! Wow, that’s deep.

                Never mind that the word “patent” doesn’t appear in the Constitution at all so the term can mean whatever Congress wants it to mean.

                1. “Got that, folks? Land grants and patent grants are of the ‘same nature and validity’ because — wait for it! — someone once used the same word to describe both of them! Wow, that’s deep.”

                  Hah what utter contempt for SCOTUS rule of law. I see where the CAFC gets it from.

                2. David: what utter contempt for SCOTUS rule of law.

                  It’s contempt for incoherency, David, and contempt for taking unsupportable language from an ancient opinion addressing a distinct set of facts and using that language to punch a hole in Congress’ rational effort to create a system that the Constitution expressly grants Congress the power to create.

                  And, just as a general reminder, it’s very easy to respect the rule of law and simultaneously believe that a particular Supreme Court decision (or set of decisions) is completely wrong and needs to be reversed. The Supreme Court will change its tune if its errors — mainly errors in its assumptions regarding the underlying facts — are pointed out to it. That’s a good thing. Indeed, it becomes a necessary thing when we have a major political party in this country that routinely tries to shut down an entire branch of government to protect the shrinking minority it represents. All this is part of that “balancing of powers” that we hear about.

              4. David: As repeatedly held by the SCOTUS, Congress does NOT have the unilateral power per the Article to remove the validity (land or IP) cause of action from the judiciary.

                On this point, it is clear as day.

                The SCOTUS has held lots of things for completely ridiculous and incoherent reasons. Their decisions stating what Congress can and can’t do when it creates instruments to promote progress are classic examples of that — at least as you are trying to read them.

                If this was the hole, the CAFC would have driven through it long ago.

                Why? After all, they would be ceding “power” to Congress. That’s not how “the system works” (according to you, anyway).

                1. “at least as you are trying to read them” – I think what you meant to say is “at least as how they are written.”

                  “The SCOTUS has held lots of things for completely ridiculous and incoherent reasons.”

                  And there is that contempt again.

                2. David: “The SCOTUS has held lots of things for completely ridiculous and incoherent reasons.”

                  And there is that contempt again.

                  I certainly did have contempt for Bowers and there’s quite a few others still out there. Lots of people had contempt for that case — including some Supreme Court Justices and other jurists — and thank goodness we didn’t shrink from explaining why when presented with silly “arguments” like “you don’t respect the rule of law.”

                3. Right, and there avenues in place to challenge SCOTUS decisions that litigants believe were wrongly decided.

                  The CAFC, however, utilized a very creative application of the PR rule of law in order to legitimize Congressional delegation of Article III power to Article I administrator.

                  Rouge advocacy of this variety by a Court of Appeals has consequences, in this case, particularly serious consequences ($PTAB enactment$; cancellation of a vested property right by an Article I administrator; potential holistic Art I resolution of that vested property right by Art I tribunals) — the SCOTUS, and not the CAFC, is the only judicial body with the authority to overturn McCormick and American Bell. That is our system, and that is how it works.

                  I think SCOTUS grants cert – the CAFC has created a historic mess – which the SCOTUS will address in a manner that the CAFC won’t forget anytime soon.

                4. cancellation of a vested property right by an Article I administrator;

                  Pretty sure that was how Congress intended this particular “right” to be canceled on occasion. It’s been going on for a long time and nearly everyone is deeply thankful for it.

                  I think SCOTUS grants cert

                  Maybe. Maybe we’ll learn more about what a “public right” is when they explain to everyone why patents are “public rights.” That’s how the SCOTUS seems to be dealing with that “doctrine.”

      2. Drop by,

        “does anyone know how the Supreme Court views this type of old precedent?”

        Of course, no one really knows – however, C.J. Roberts, on the behalf of an 8-1 majority, recently (June 2015) observed in a takings case:

        “Nothing in this history suggests that personal property was any less protected against physical appropriation than real property. As this Court summed up in James v. Campbell, 104 U. S. 356, 358 (1882), a case concerning the alleged appropriation of a patent by the Government:

        ‘[A patent] confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser.'”

        Determining the significance of this dicta relative to the pending Article III challenge is ultimately guesswork; however, James v Campbell is one of the “core” property (IP) cases, and has been linked to McCormick and American Bell. It’s unlikely that its inclusion in a raisins case was inadvertent or random, – if I’m MCM or Cooper, dicta like this is exactly what I want to see as I prepare my petitions for writ of certiorari.

        1. There would seem to be a gigantic difference between

          appropriation of a valid patent by the government, on one hand, and

          the re-evaluation of a patent by the granting agency based on a showing of likely invalidity with plenty of due process for the patentee, on the other hand.

          You can’t ignore the fact that the IPR system — unlike nearly every other aspect of our patent system — actually works to achieve its purpose. This quibbling over the “Constitutional rights” of wealthy people who, in some cases, own thousands and thousands of destructive “grants” handed to them by an incompetent agency isn’t going to benefit anyone except those people.

          If it becomes necessary, all Congress needs to do is define a patent right to make it clear (although it’s already plenty clear) that it’s an agency-revocable right provided that certain due process considerations are met. That’s how this ends. You get a bundle of sticks and you get a bundle of caveats. The Republic is saved.

          1. MM,

            I get it – the whole business realities v. law review nerd argument. Pragmatics were considered in earlier permutation’s of the SCOTUS’s public rights rule (Schor, Thomas). After Stern, however, well – good luck.

            1. I get it – the whole business realities v. law review nerd argument.

              It’s more than “business realities”.

              Also, “law review nerd” is a bit disingenous when the “nerds” in question are (1) carrying water for the wealthiest people on earth and (2) are the same “nerds” whose selective case citing seems always to work in one direction only.

              1. More empty rhetoric – the legislative branch can’t “rationalize” its way through the Article III public rights barrier just because it makes some constituent somewhere feel good. The promise of three separate branches of government would be an illusion.

                The advent of the PTAB is a perfect example of the pitfalls associated with making small concessions (in this case, ex parte reexamination) that “make sense.” Well, ex parte begets the PTAB, which begets the DOJ telling the Court of Appeals that the claim may be removed from the Article III altogether. This has become the ultimate slippery slope.

                So, for the 4th time, on what basis is the claim of patent validity properly designated a public right per, e.g., Stern?

                1. David: The advent of the PTAB is a perfect example of the pitfalls associated with making small concessions (in this case, ex parte reexamination) that “make sense.” Well, ex parte begets the PTAB, which begets the DOJ telling the Court of Appeals that the claim may be removed from the Article III altogether.

                  Not “altogether.” An Article III court is free to correct the PTAB if/when the patent/applicant chooses to appeal. Probably not a great idea to gloss over that fact, given that it’s one of those facts not in dispute (along with the fact that nearly every patent tanked in IPR should never have been granted in the first place — as has been affirmed by “an Article III court”).

                  for the 4th time, on what basis is the claim of patent validity properly designated a public right per, e.g., Stern

                  For the billionth time, there is plenty of language out there in the various “public rights” cases to support “patent validity” as falling within the exception. That’s because the “public rights” doctrine is an incoherent mess that courts use to achieve the result that seems most reasonable to them. “Reasonableness”, of course, is the last thing the proponents of “no review of validity except in a court” want to have considered.

                  So let’s look at what the King of England would have done back in 1624. Sure, that makes sense.

                2. “Not “altogether.” An Article III court is free to correct the PTAB if/when the patent/applicant chooses to appeal”

                  Right, but that is not the point, which you know.

                  The point is that the legislative branch retains the authority to remove the cause of action from the Article III courts altogether. De novo review by the CAFC is purely a byproduct of legislative discretion per the PR classification. If the classification remains, the cause of action likely becomes wholly administrative with time.

                  For some reason, the patent bar thinks that this is a good thing.

                3. The point is that the legislative branch retains the authority to remove the cause of action from the Article III courts altogether.

                  Just to be clear about our respective positions: I’m not advocating for an “anything goes” type scenario where cases are removed from Article III courts on the eve of trial or afterwards by the filing of review actions at the PTO by either the patentee or the defendant. There should be limits in place (and I believe there are — correct me if I’m wrong) that prevent game playing and waste of resources (both agency resources and judicial resources).

                  If the classification remains, the cause of action likely becomes wholly administrative with time.

                  Which would be better than no cause of action at all (another Constitutionally permitted outcome, as you know).

                  But I don’t see “the cause of action” becoming “wholly administrative with time.”

                  Just because so very many computer-implemented patents and business method patents are unsalvagable junk, it doesn’t mean that all patents are so easily tanked. Defendants can certainly waste time and money trying to tank well-vetted patents in IPRs but the smart ones will focus their efforts on other defenses at trial. You might even be able to get your fees paid that way.

                4. “But I don’t see “the cause of action” becoming “wholly administrative with time.””

                  But what you predict is ultimately irrelevant to whether congress, as you acknowledged earlier, does or does not take that power.

                  C.J. Roberts has noted several times this year the congressional propensity to take whatever power the judiciary is willing to give it.

                5. That’s just Malcolm wanting a “logic” but being unwilling to embrace exactly what that “logic” means.

                  It’s like he just does not get that my “big box of electrons, protons and neutrons” is nothing more than a SLAM on his own wanting of a particular “logic.”

                  It’s as if once HIS ends are met, then – and only then – the “WHATEVER” means cannot be allowed.

                  A maximum hypocrite – that is Malcolm.
                  Nine years and running.

              2. cry me a river ..

                MM is trying to protect the poor people like Larry and Sergei from Google.

                Oh the poor larry and sergei and their peons like michele lee and MM …

                all MM wants is 2 square meals for poor larry and sergei ..

                he is fighting day and night on this blog on behalf of poor larry and sergei ..

                1. Malcolm refuses to even acknowledge the dichotomy (really, purposeful dissembling) that at the same time he wants to rail against some Uber Elite monied interests, he is de@d set against the single most easily accessible form of innovation.

                  And note, (with some not small irony) that Ned picks up on one of (if not THE most) expensive and LEAST accessible forms of innovation that Malcolm and Ned would consider constraining the patent system to.

      3. The Supreme Court has varied a lot since the Warren Court on invasions of the Judicial Power by administrative courts. The cases usually revolve around a plurality decision, and vary across court composition based on justices views of the scope and purpose of the judicial power versus the administrative power. Some justices are more judicial supremacists than others, who tend to defer more to the politically accountable branches. The difference has more to do with the degree of clarity required for reversal of the politically accountable branches than case-decisional rules being assigned because of the temperament difference. Patents would appear to be clearer in their nature as property than things that have been asserted to be property to the Court in recent decades, such as chemical safety data. It is a messy, messy area.

        1. Erik, if a patent is a public right because it a creature of statute and because it affects the public (monopolies) such that its validity is a public concern, why not trademarks or copyrights as well?

          Of course, if something is a public right, there is no right to a trial in an Article III court and no right to a trial by jury. Thus a holding that a patent is a public right for the reasons advanced by the government would potentially apply to all intellectual property rights. Cases that had previously held there to be a right to a trial by jury would necessarily be overruled because there is no right to a trial by jury when with respect to a public right. Thus Beacon Theaters, Felton and Markman would be overruled to the extent they recognized a right to a trial by jury with respect to trademarks, copyrights and patents respectively.

          There is something fundamentally wrong with the theory of the government regarding public rights with respect to intellectual property rights where the Supreme Court has already recognized there to be a right to a trial by jury.

            1. FYI, thanks for the link.

              Now one for you,

              link to scholar.google.com

              The panel asserts that prior to the Declaratory Judgment Act in 1934, “[v]alidity simply was not litigated in isolation from an infringement claim.” In fact it was in England at the time the Seventh Amendment was adopted. A separate nullification action, similar to the present day declaratory judgment action, could be brought before the English equity court. In England, prior to 1791, anyone could challenge a patent’s validity by a scire facias writ in equity. See Mowry v. Whitney, 81 U.S. (14 Wall) 434, 439-40, 20 L.Ed. 858 (1871); United States v. Stone, 69 U.S. (2 Wall) 525, 535, 17 L.Ed. 765 (1864). “The scire facias to repeal a patent was brought in chancery where the patent was of record. And though in this country the writ of scire facias is not in use as a chancery proceeding, the nature of the chancery jurisdiction and its mode of proceeding have established it as the appropriate tribunal for the annulling of a grant of patent from the government.” Mowry, 81 U.S. (14 Wall) at 440.[7]

              985*985 The panel acknowledges only one of the three situations in which a writ of scire facias was grantable. Majority op. at 974-75 n. 9. Contrary to the panel’s view, a scire facias could issue for the following reasons:

              1. A previous patent had issued on the invention [There was no administrative examination before issuance];

              2. Fraud [Inequitable conduct];

              3. Unlawful grant [Invalid patent].

              Mowry, 81 U.S. (14 Wall.) at 439; Stone, 69 U.S. (2 Wall.) at 535; 2 William C. Robinson, The Law of Patents, § 726 (1890).

              The panel also declares that, even if a writ of scire facias is the closest 18th Century analog, a party to such a suit could demand a jury trial in a court of equity as a matter of right. Majority op. at 975 n. 9. [omitted is Nies citation to authority that has been shown by Lemley to be inaccurate.]

              Underlying the concept of “public rights” is the power of Congress to define a public grant which need not include a jury right to determination of its efficacy.

              [C]ongress can [not] withdraw from judicial cognizance any matter which, from its nature, is the subject of a suit at the common law…. At the same time there are matters, involving public rights, which may be presented in such form that the judicial power is capable of acting on them, and which are susceptible of judicial determination, but which congress may or may not bring within the cognizance of the courts of the United States, as it may deem proper.

              Murray’s Lessee v. Hoboken Land and Improvement Co., 59 U.S. (18 How.) 272, 284, 15 L.Ed. 372 (1856); Granfinanciera, 492 U.S. at 52, 109 S.Ct. at 2795-96;

              Moreover, Congress has placed patent validity determinations within the cognizance of both Article III and Article I trial tribunals.

              These legislative provisions are in accord with the concept of public rights.[4] They are not in accord with a constitutional right to a jury trial on the issue of validity. A litigant cannot have a constitutional right and not have a constitutional right on the same issue.

              The panel states that public rights only apply when Congress has “assigned adjudication of the legal claim concerning such public right exclusively to an administrative agency.” Majority op. at p. 972 n. 5 (emphasis added).[5] The panel’s reasoning would eliminate any problem respecting the public rights issue once a claim can be brought in an Article III court. That rationale cannot explain the Patlex case which denied the patentee litigant a right to a jury to determine validity. Patlex must be overruled under the panel’s reasoning.”

    2. MM, nice discussion between you and David.

      You raise a point that is to whether Congress can grant a thing called whatsamajigger and impose upon that grant conditions, for example that they might be re-examinable. But the power Congress has under the Constitution is only to grant to inventors “exclusive rights.” Exclusive rights are patents. Patents are exclusive rights.

      Under Marbury, such are the property of the grantee. As such, the owner of the property has the same rights as any other owner of any other property – a right to a day in court before the government can revoke that right.

      1. Ned: the power Congress has under the Constitution is only to grant to inventors “exclusive rights.” Exclusive rights are patents. Patents are exclusive rights.

        Exclusive rights for limited times. Nothing in the Constitution says or suggests that the time of exclusivity can’t be limited by, e.g., a statutorily created agency administered framework for re-evaluating the patent’s validity in light of new evidence. If it was believed to promote progress, Congress could, for example, require every “patent” (or whatever else you want to call it) to be subject to mandatory re-exam by the agency every other year, regardless of pending court cases. There’s nothing “unconstitutional” about that.

        [note: the bit about “limited times” is another distinction between the Constitutional power grants regarding “land” and “intellectual property” that severely undercuts the “reasoning” in Am Bell …]

        1. MM, I see no problem with a reexamination on renewal. But, you do seem to concede that there has to be an exclusive right for some fixed term.

          1. you do seem to concede that there has to be an exclusive right for some fixed term.

            If Congress is setting up the system, I think that’s correct except the language is “limited times” not “fixed term” (presumably the term could be “fixed” by reference to all kinds of things that provided some kind of due process compliant “certainty”). But that’s not very restricting. The Supreme Court, we know, doesn’t think there’s much restriction on the outer bounds of what constitutes a “limited time.” I doubt they’d step in to question a lower limit unless there was a good argument the lower limit was irrational.

      2. MM, nice discussion between you and David.

        Except not, since all we see from Malcolm is the same C R P and wanting an ends regardless of the means.

    3. MM, The public rights doctrine is somewhat confused as noted by Scalia in his concurring opinion in Stern v. Marshall. However, there is a constant negative condition that something cannot be a public right where the particular right was litigated in the courts of England at common law. This is virtually the same consideration involved with determining whether a particular cause of action has a right to a trial by jury. The only difference between the two analysis is that in one, the Constitution only requires that the right be litigated in the courts, while in the other, the right holder has a right to a trial by jury.

      This is why I have focused almost exclusively on the fact that patent revocation actions actually existed in the courts of England at common law. Thus they cannot be removed from the United States courts to the patent office under the Constitution.

      Moreover, the Supreme Court has already ruled that they have a right to a trial by jury.

    4. David, you constantly insist that the issue is whether patent validity is a public right when that was not the holding of Patlex and that is not the position of the government today. Rather the holding of Patlex and the position of a government is that a patent is a public right because it is a creature of statute and is invested with a public concern over validity among other things. For example the government argued in our case that patents were public rights because they create monopolies.

      Also note that the argument of Malcolm is effectively that a patent is a public right because it is a creature of statute, and, as such, Congress can impose upon that right any condition is so chooses. In fact, this is the position of virtually everybody that discusses this issue. The power to creates includes the power to impose conditions. This makes a lot of sense and is hard argue against.

      Of course validity is a public concern. So is the scope of a patent that can create monopolies. The government is right on this. Absent Murray’s Lessee, and all the public rights cases since that follow it, I have not idea how we could win.

      1. Ned,

        I understand what the CAFC held in Joy and Patlex – the point I have tried to make, however, is that the CAFC’s chosen mode has nothing to do with the SCOTUS’s rule. Of course the grant of a patent implicates some sort of amorphous public concern – but what does that even mean? The answer: nothing; it’s nonsense. Per the SCOTUS, the public rights analysis hinges on the nature of the cause of action.

        When the PTAB cancels an issued patent claim, it does so because the claim itself is “invalid.”

        The relevant cause of action is patent validity. This is the question. Arguing what the CAFC had to say about it – as opposed to the SCOTUS – only undermines your position.

        The federal statute factor is irrelevant. On this point, the SCOTUS in Granfiananciera was very clear – where a right currently exists at statute per congressional authority, then the Article III analysis looks for antecedent at law or equity.

        What do we know about the antecedent to the statutory claim in the present case?

        Well, start with American Bell, McCormick, Stone, Cammeyer, James v Campell, etc.

        Move to Tegal, Lockwood, etc.

        And then compare: what sort of claims survive the SCOTUS public rights scrutiny?

        Tortious interference? No.

        Fraudulent conveyance at federal statute? No.

        Pesticide data sharing: Yes.

        Compare: patent validity.

        1. David, In arguing against someone’s position, like the position of the government in MCM v. HP, by saying that their position is not correct and that it should be this other thing, and if that other thing we win, makes no sense to me. Even if the government is wrong, it is their position.

          What I am trying to say is that it is a powerful position that would prevail absent Murray’s Lessee.

          It seems to me that a public right is the government acting within its sovereign power, and this includes the powers granted to Congress under the Constitution to create new rights pursuant to the commerce clause, etc. And when Congress does create a new right it can place conditions on them.

          The only bar is that Congress cannot remove from the courts actions that were litigated in the courts of England at common law that, for example, have a right to a trial by jury. Thus Congress can create a new right that seems to be new but really is actually the same as a right that existed in the common law and that was litigated in the courts of England. As we know from Granfinanciera, that such a new statutory right is not really new so that such right still must be litigated in the courts and not in legislative tribunals.

          What we do know is that actions to revoke patents for fraud, invalidity and double patenting were actually litigated in the courts of England at common law. As such these kinds of actions cannot be removed from the courts and transferred to legislative tribunals.

          1. “What I am trying to say is that it is a powerful position that would prevail absent Murray’s Lessee.”

            Ned – and that is exactly the point that I made (Murray’s Lessee is “THE” SCOTUS case); the DOJ position contradicts the governing SCOTUS rule. Of course the CAFC created a “powerful position” that serves the interests of the USPTO – but the CAFC is inferior to the SCOTUS, so why argue the de facto overruled standard?

            “It seems to me that a public right is the government acting within its sovereign power, and this includes the powers granted to Congress under the Constitution to create new rights pursuant to the commerce clause, etc. And when Congress does create a new right it can place conditions on them.”‘

            Correct, as far as I understand it. For example, Congress could create a new law tomorrow, stating that henceforth MM’s screen name shall be “Manon.” Maybe MM doesn’t like that; maybe anon doesn’t like that either. Well, it’s a purely congressional rule, and per its status as a public right, congress could commit sole resolution of disputes arising under it (per the congressional created cause of action) to the article I Manon court of claims. Congress could determine what de novo review, if any, was available at the Art III level.

            However, Congress cannot create a parallel right at statute as a mechanism to remove that right from Article III. What would be left of the separation of powers if this were the case?

            1. David, “However, Congress cannot create a parallel right at statute as a mechanism to remove that right from Article III. What would be left of the separation of powers if this were the case?”

              100% agree. I think that was the holding of Granfinanciera in point of fact.

              1. Sadly,

                BOTH of you have yet to “come clean” regarding the separation of powers as evidenced by your desires to place the Supreme Court above the law.

                It’s really not a difficult concept guys.

                Brush up on the warnings against a too powerful judiciary in the Federalist Papers.

            2. Importantly – David – Congress can ALSO remove a set of law that is not something of original jurisdiction FROM the Supreme Court review (while fully leaving the matter in an Article III court).

              Maybe you should think about that for awhile.

            3. David: Congress could create a new law tomorrow, stating that henceforth MM’s screen name shall be “Manon.”

              Great hypo! It’s always best to use something completely absurd that will never happen when discussing this stuff. At least that what your law school apparently taught you.

              One problem: a “rule” is different from a “right”.

              If there’s Supreme Court dicta that says otherwise, that would just be another example of how incredibly incoherent your premise is.

  7. Chemical structure is “simply a means of describing a compound; it is not the invention itself.”

    Whaaaaaat?

    1. Yes, which is precisely why there are “product by process” claims for patentable chemical inventions for which a conventional structural drawing cannot be provided at the time.

      1. Thanks Paul – I am aware of product by processs patents.

        I tend to doubt though that that is what was meant there (it could be – I have not checked).

        But further than that, such clearly goes against the Malcolm-“option”-he-pretends-is-not-an-option claim format.

    2. “Chemical structure is “simply a means of describing a compound; it is not the invention itself.”

      This is a very poorly written expression of the idea that if you make a new compound and you appreciate what you’ve made, then you have invented that compound. The next step for obtaining a patent, of course, is to describe how to make and use the compund *and* to describe the compound itself such that the objective structure and — most importantly — the features that distinguish that structure from the structures in the prior art — are clear to the skilled artisan. That’s what happened in this case.

      The twist here is that the precise meaning of one of the terms used to describe a pre-existing part of the new compound — “daptomycin” — changed after the filing date. As a result, the structure of the invention changed right along with that discovery. That’s not unreasonable (but I think this was a close question and very fact specific). Note that the result could be very bad for the patentee if it had turned out that the actual structure of “datamycin” was in fact so different from what was believed at the time that the patentee’s “invention” turned out to be a re-synthesis of a pre-existing chemical. Presumably the patent would be invalid according to the same logic.

      Paul Morgan writes: [this is] precisely why there are “product by process” claims for patentable chemical inventions for which a conventional structural drawing cannot be provided at the time

      Product by process claims are limited by the process steps and will not protect a chemical manufactured by a process different than the one described. In the US, there is one glaring and expressly recognized exception to the rule requiring that the novel structure must be described in a valid chemical composition claim and that’s the so-called “antibody exception”. The continued viability of that “exception” (which comes with its own unique set of requirements) seemed dubious even a few years ago. As yet, the “antibody exception” hasn’t been formally and directly challenged in court (a far as I know) but the underlying premises have certainly taken a beating (for good reasons).

      1. MM, The twist here is that the precise meaning of one of the terms used to describe a pre-existing part of the new compound — “daptomycin” — changed after the filing date. As a result, the structure of the invention changed right along with that discovery.

        You can’t mean that “the structure” of the invention changed. What you must mean is that “the description” of the structure of the invention changed.

        1. My understanding from reading the case is that your understanding is correct, Ned. No one (including those skilled in the art) realized that the structure was other than that described until later.

        2. Ned: What you must mean is that “the description” of the structure of the invention changed.

          What I meant is that everybody’s “belief” about the “actual structure” of the invented compound described in the patent application was changed upon the later discovery (with the possible exception of the defendant’s beliefs … 😉

          The problem I have with your restatement is “the description” of the structure in the patent application did not change, at least not right away. The description in that drawing remained decidedly unchanged until the certificate of correction was issued to reflect everyone’s changed understanding of what “daptomycin” is (and was).

          1. If you “believe” in something that is not really there (no matter how many others have that same belief), do you possess what is actually there?

    3. The invention is…what you invented, no? If your claims encompass what you disclosed, its your invention. The problem consistently occurs when the claims pertain to undisclosed means of achieving the same result.

  8. On the fly (have not read the decision yet), but does this simply fall into an inherency position?

    If all else being equal, possession not being questioned**, is the later clarification simply a matter of what was inherently always there?

    **an interesting aside would be if possession itself rested on the difference

    1. Interestingly, they did not have possession of the “incorrect” isomer, which a component of the antibiotic but nobody knew it at the time.

      Nevertheless, after reading, your gut instinct was correct w/r/t inherency. The claimed antibiotic contained the amino acid as corrected, not as originally, disclosed. But they still had position of the antibiotic as a whole.

      It is as if somebody patented water but had HO2 in the spec by accident. (crude example but simplifies the issue here I think)

      1. YL: It is as if somebody patented water but had HO2 in the spec by accident. (crude example but simplifies the issue here I think)

        I don’t think that’s an accurate metaphor.

        Imagine that someone invented and claimed “A widget comprising additional structure X.” At the time of filing, everybody believes that widgets are made of 100% widgetium so the applicant has one description (among many others) describing the invention as “100% widgetium plus additional structure X.” Years later someone discovers that widgets are — and (importantly) have always been — 98% widgetium and 2% water. The holding here is that the patentee can “update” its patent via a certificate of correction to reflect the world’s new understanding of what a “widget” actually is (and was).

        1. MM, that is a pretty great layman’s explanation. I know of NPE’s that will pay you in contingency dollars to talk like that in front some jurors.

          All kidding aside, thanks for the analogy.

        2. There is a limit on what you can do with a correction, Malcolm, and that whatever the change is can not broaden the scope of the claimed invention.

          In the case discussed in the opinion it appeared that somebody tried to encompass within the certificate the prior compound and all other compounds that achieved the same result.

          1. No doubt, Ned. We can imagine many alternate fact scenarios where a similar change in the meaning of some term would not suffice to permit a certificate of correction. For instance, let’s say the patentee proposed (and broadly claimed) a process of synthesis that depends on the existence of a particular moeity in one of the starting materials called Material X. Everyone understood Material X to have this moiety at the time of filing but years later it was determined that there is a different moeity there. As a result, the process described in the specification does not work (you get no reaction at one of the steps). Given these facts, the patentee would not have the right to “correct” his process claim to, e.g., describe the starting material differently or insert a step to “fix” the problematic moeity.

  9. Dennis, compare a court’s equitable powers that will correct an error that is virtually self-evident. This shows that the PTO can go well beyond what a court can do using its equitable powers.

    1. Ned, hoping that the Court will correct a clearly obvious error in a patent may get the patent owner badly burned, as in the notorious Fed. Cir. “hot buns” case of CHEF AMERICA, INC., v. LAMB–WESTON, INC.

      1. Oh yeah, that was a bad one. Let’s face it, you really never know what a court is going to do, particularly the CAFC with its many judges seemingly reading from different caselaw. Ideally, you want to do the best job you can do to ensure the prosecution and/or litigation read the case the way you intended it to be read. It’s not always possible, though.

    2. Interesting point about an inferred difference. Here, there was no doubt that Lilly “possessed” the compound with the D-enantiomer. An issue in this case is the lack of focus on “what was claimed”, as distinct from what may have been disclosed. The problem was that Lilly claimed the compound with the L-enantiomer. In the past, one got what one claimed, whether intended or not:
      Radio Steel v. MTD, 221 USPQ 657 (CAFC 1984) or the “baking
      bread” case [ Chef America v. Lamb-Weston: “a nonsensical result does
      not require the court to redraft the claims of the patent.”

      In this case, Lilly intended to claim the L-enantiomer, even though that is not what Lilly possessed. If Lilly had claimed the fermentation product, rather than a chemical formula, there might not be a problem. The invention is defined by the claims, not by the disclosure.

      A related issue arose “In re ‘639 patent” as to prior art, which recited a synthetic pathway to a claimed compound [nabumetone] but which pathway contained an error [ironically because of reliance on a Lilly publication that was in error]. As another twist, the prior art disclosure actually produced [some] nabumetone.

      1. As to –later advances in science–, and the text — In this case, the original patent filing included a structural diagram of the claimed daptomycin compound that was inaccurate because it misidentified a stereoisomer of asparagine. It was only after the patent issued that researchers discovered that the compound contained the D-isomer rather than the L-isomer. To be clear, when the patent issued, scientists thought that the compound actually had the L-isomer but then later learned that it had the D-isomer. — it’s not clear “why” there was an inference that the L-enantiomer of asp was present in the daptomycin obtained from fermentation. Certainly, the identity of the enantiomer of asp could have been determined at the time of filing. If the Lilly scientists “guessed wrong” and intentionally selected what turned out to be wrong, is this the type of mistake that should be corrected by a certificate of correction? As a hypo, if the the daptomycin with L-enantiomer of asp (which exists) turned out to be more effective than that with the D-enantiomer, what would Cubist be arguing?

        Lilly chose to claim the invention in terms of a formula. Even
        though the specification may offer support for various claims, it is the issued claims that define the invention that may be enforced.
        In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 . There is no doubt that Lilly possessed the compound with the D-enantiomer, but they didn’t claim it, and didn’t bother to check which enantiomer they had. Is that a mistake that should be corrected by a certificate of correction?

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