IPR Challenge Moves Forward with One Step Back

by Dennis Crouch

In a non-precedential order, the Federal Circuit has rejected Carl Cooper’s challenge to constitutional propriety of the inter partes review (IPR) system as implemented by the USPTO.  The identical issues had already been decided in MCM v. HP (Fed. Cir. 2015). In that case, the Federal Circuit held that the IPR system does not violate Article III of the U.S. Constitution nor does it violate the Seventh Amendment of the U.S. Constitution.  As I wrote in December, the MCM decision “essentially forecloses Carl Cooper’s parallel proceedings.”

Cooper had originally filed his appeal in the 4th Circuit Court of Appeals, but that court bumped the case to the Federal Circuit.

Of interest, Cooper himself motioned for summary affirmance, but has reserved his right to raise the appeal. In his filing on Cooper’s behalf, Rob Greenspoon wrote:

While Appellants strongly disagree with the Court’s decision in MCM Portfolio that IPR proceedings are constitutional, Appellants concede that because the issues in this appeal are closely related to those in MCM Portfolio, summary affirmance is appropriate. See United States v. Fortner, 455 F.3d 752, 754 (7th Cir. 2006) (“[S]ummary affirmance may be appropriate when a recent appellate decision directly resolves the appeal.”) (citing United States v. Young, 115 F.3d 834, 836 (11th Cir.1997) (per curiam)). In the interests of preserving the Court’s and the parties’ resources, Appellants respectfully request that this Court grant summary affirmance of the district court’s judgment. In making this request, Appellants preserve all rights to subsequent review.

Next stop appears to be en banc petition or petition for writ of certiorari.


About Dennis Crouch

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

43 thoughts on “IPR Challenge Moves Forward with One Step Back

  1. The reality is that Alice is unconstitutional if IPRs are. Alice removes your chance at a jury for 103/102/112 by stuffing it all into 101. Imagine if they did that in criminal law. Passed a new law. Illegal to think thoughts that lead to a criminal. Then they put all the elements of each crime into a two part analysis. 1) Did you think the thoughts of committing the acts of the crime. 2) Did you commit the crime. Just bundle it all together and let the judge on SJ decide to lock you away or not.

    1. Night, IPRs deny a right to a trial by jury on disputed facts involved in validity. The Federal Circuit, in note 2, acknowledge there was a right to a trial by jury for validity. So how could the do that?

      Magic dust.

      1. I agree with you Ned. My point is that Alice’s “something more” is nothing more than a validity test under 103. And at least two retired Fed. Cir. judges said the same thing. That makes Alice unconstitutional if IPRs are unconstitutional. (Of course, the cult of the scientifically illiterate justices will never find fault with their own thoughts.)

  2. 35 USC

    PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter.

    TIMING.—The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311….

    At this point, is there doubt in anybody’s mind that the decision “whether to institute” is made under “this chapter?”

    (d) NO APPEAL.—The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

    Does anybody dispute that section 314(d) has different language about the institution decision than either of the other two sections? Is this difference in language to be ignored?

  3. In a way, the opinion in MCM was intended to address to the arguments presented by Cooper who mainly relied on McCormick Harvesting.

  4. Just curious, why couldn’t this be a precedential opinion? It might not be an important case, but I am just so curious why the Federal Circuit never wants to be held accountable to past decisions, even simple ones like this one.

    1. Not sure what you mean by “held accountable” ? The only body that the Fed. Cir. is accountable to is the Sup. Ct., and they certainly can hold the the Fed. Cir. accountable for summary non-precedential decisions. Note, for example, that the Sup. Ct. KSR decision was a reversal of one of those numerous summary non-precedential Fed. Cir. decisions.

      1. Paul:

        He might mean “accountable” as in published at large [in F.3d] such that the public can scrutinize; but, that has lost water as an argument because everything is posted online.

    2. I thought, traditionally (you know before computers made it possible to word search every case ever, precedential opinions had a value, e.g., signal to community that this was a case of importance (whether novel legal issue, a long-awaited resolution to a legal issue, conflicting with another court, application of settled law to new facts, etc); cases that did none of these things (e.g., a case that applies settled law to settled facts) had no value to the corpus of citable law (as regulated by court rules on what can be cited for legal precedent).

      Arcane? Yes. But, also, useful as a signal.

      There are policy reasons as well (e.g., the issue has been decided – why waste limited resources? [side note: I don’t believe anyone that says the clerks or judges that write non-precedential opinions “slack” when they do so; without data and analysis, they don’t appear qualitatively worse than their sister opinions – just a little less interested in all the myriad (far-flung) legal arguments the losing side tried to distinguish their case with]

      1. And maybe this case is not at all interesting enough. But it feels like that some cases are declared non-precedential when they shouldn’t be, especially in the example of applying settled law to new facts. Besides, patent cases are more fact dependent than other kind of cases. If that’s so, there should be more precedential cases then, right?

        I’ll withhold my fire on this particular decision, but I’ll be looking to show an example of the overuse of non-precedential decisions.

          1. Well, not so much rule 36. I understand the court needs to manage its case load, and if there is nothing to do but say, “yeah, district court is right”, then I’m ok with summary affirmance.

            But if you take the time to write the opinion, then it should normally carry precedential weight.

  5. A little strange given the variance in the panels. I would have thought it would be interesting to see the arguments from another panel. It would have made the issue more ripe for an en banc hearing and the SCOTUS.

    1. The present composition of most of the Fed. Cir. has demonstrated an unwillingness to further provoke more Sup. Ct. criticism with the exception of Senior Status Judge Newman, who is apparently willing to vote for almost any attack, even constitutional, on post grant proceedings. The variance between Fed. Cir. panels these days still seems to be mainly on issues of claim interpretation/scope.
      It does not seen to be adequately appreciated how strongly legally discouraged, and rarely successful, are attacks on the constitutionality of federally enacted [especially strongly bi-partisan] legislation. It would be interesting to hear if any federal IPL legislation has ever been held unconstitutional in the entire history of the U.S.?

      1. Paul,

        “popularity” has little to do with whether or not the sufficiency of meeting constitutional safeguards have been met.

        But your non-stop “cheerleading” and attempts to “pooh-pooh” ANY discussion of the topic is noted.

        Funny that you have yet to speak up on the separability issue…

        As to the “present composition…further provoke” angle, I am reminded of the simians in a cage with the hanging bananas story.

        This is why in addition to jurisdiction stripping (removing the non-original appellate jurisdiction concerning patent appeals from the Supreme Court), a new formulation or Article III body to hear patent appeals needs to be made.

        These simians simply do not remember why reaching for the bananas is “bad,” they will just pound any new simian introduced into the cage.

        1. “popularity” has little to do with whether or not the sufficiency of meeting constitutional safeguards have been met.

          I missed the part where Paul mentioned “popularity”. Are you arguing with the voices in your fillings again?

          1. I see that you are having trouble connecting the dots (again) and missing the substantive issue here Malcolm.

            More blight from you.

            To the point then, ruminate on the meaning of “It does not seen to be adequately appreciated how strongly legally discouraged, and rarely successful, are attacks on the constitutionality of federally enacted [especially strongly bi-partisan] legislation.

            Apply yourself, man – and not just to your short script of baseless ad hominem.

        2. RE: “non-stop “cheerleading” and attempts to “pooh-pooh” ANY discussion of the topic. ”
          Besides being untrue, the actual difference is between (1) discussions for simply understanding and dealing with current patent law realities, as opposed to (2) misleading readers with unreal personal fantasies about how anything one dislikes is magically going to go away by misusing this blog for un-constructive personal hos-tilities having no influence whatsoever on Congress or any court.

          1. There is nothing in my posts on the topic that is misleading, Paul. And if misleading, it would be of ease for you to respond – as I have asked – with a cogent legal position.

            Hmm, you don’t seem able to do that, now do you?

            Sorry to burst your bubble, but it appears that any “fantasies” are of your own making, in your own head.

        1. Good point, but no patent case, and a freedom of speech issue, even for a TM registration topic, is certainly a high level constitutional issue. As noted below, there is a split between circuits that may get that one to the Supremes.

          1. Sounds like a bunch of “wah” from you with your attempt to now distinguish to a “patent” case (what constitutional matter is not a “high level”…?).

            Or is that just some of your own unresolved “ un-constructive personal hos-tilities having no influence whatsoever on Congress or any court.


      2. P.S. Even though they do seem to ignore it at times, the Fed. Circuit’s rules of stare decisis do not allow a later panel to overrule a prior panel decision on the same issue, as here. Hence, no reason for another precedental panel decision here.

        1. Good point – although as we have seen in the host of conflicting “software cases,” this “do not overrule” rule is itself a bit arbitrary and inconsistently applied.

          For example, the very first panel decision concerning software after Bilski certainly is NOT adhered to by MANY panels.

        2. Because there were later Supreme Court cases on 101 after Bilski that might have effectively overruled the decision after Bilski. Good grief anon, stare decisis doesn’t apply if a superior court overrules the basis of past decisions.

          One could argue that the decisions after Bilksi by the CAFC were examples of judicial noncompliance. Why would those cases still control.

          1. J,

            Respectfully, you need to go back and review your history and maintain focus on what the actual point there was.

            The point was NOT whether another Supreme Court decision coming down the pike changed things. The point was how a panel decision of the CAFC cannot overrule another CAFC panel decision.

            That’s it.

            And the view of “One could argue that the decisions after Bilksi by the CAFC were examples of judicial noncompliance.” – that’s pure B$. Bilski was explicit about letting the CAFC set the contours. Those contours – at the panel level – were set with the FIRST panel decision, and the subsequent panel decisions simply did NOT respect that first panel decision.

            This is historical fact.

            1. So you were not complaining on how the CAFC is currently handling Bilski decisions? Ah, ok.

              In fairness to those inconsistent panel decisions that came one after another, the best way to handle a disagreement is to hear them en banc, rather than just defer to the panel that happened to issue an opinion first.

                1. If someone else can step in here and referee, I thought that CAFC panels are not necessarily bound by other panel decisions. They cannot overrule, but are not controlled either.

              1. I was addressing the immediate point at hand of panels of the CAFC NOT respecting the decisions of previous panels.

                I used a pertinent example that is factually accurate.

                I think that you and Paul have very different views of “stare decisis.” See post 1.1.3.

                Do you feel that ALL panels should have such freedom of ig noring previous panels and that the rule (as presented by Paul) should be eliminated? Do you feel that courts should “make things up” at their discretion and ig nore the rules when it is inconvenient for them to apply stare decisis?

                I am trying to see how the use of your term “In fairness applies here…

                I think that “in fairness” courts should follow the established rules of properly regarding hierarchy. The CAFC is NOT a “multi-district” court, with a district-per-panel make-up. IF it were formed that way, and IF those were the rules, then your “notion” of fairness would apply.

                It is not.
                Yours does not.

      3. Paul, can you possibly imagine why post grant proceeding that revoke patents for invalidity have now been challenged three times?

        The Supreme Court keeps saying, cf, Granfinanciera* that if one has a constitutional right to jury trial for a type of case, that that right cannot be denied by assigning the case for adjudication to an administrative agency. Even Helen Nies, you remember her, Judge Archer another former chief judge, and Plager all agreed that administrative revocation for invalidity was inconsistent with their holding in Lockwood that validity had a right to trial by jury.

        “A litigant cannot have a constitutional right and not have a constitutional right on the same issue.”

        Lockwood at 983.
        link to scholar.google.com

        *”[L]egal claims are not magically converted into equitable issues by their presentation to a court of equity,” Ross v. Bernhard, 396 U. S. 531, 538 (1970), nor can Congress conjure away the Seventh Amendment by mandating that traditional legal claims be brought there or taken to an administrative tribunal.

        Granfinanciera, SA v. Nordberg, 492 U.S. 33, 52, 109 S. Ct. 2782, 106 L. Ed. 2d 26 (1989).

        Just because a legal right is created by statute do not change this analysis.

        “Whatever doubt may have existed should now be dispelled. The Seventh Amendment does apply to actions enforcing statutory rights, and requires a jury trial upon demand, if the statute creates legal rights and remedies, enforceable in an action for damages in the ordinary courts of law.”

        Curtis v. Loether, 415 U.S. 189, 194, 94 S. Ct. 1005, 39 L. Ed. 2d 260 (1974).

        1. Ned,

          I am curious as to whether Cooper’s pullout has an impact on how your case will proceed.

          It appears that he has placed the ball (solely) in your court (to play on that phrase 😉 )

          1. anon, is that really your take?

            The MCM panel went out of their way to address McCormick Harvesting. All Cooper could say was that the MCM panel was wrong, but he has to say this on an en banc petition.

            1. That is true, Ned.

              However, his move will likely come after yours.

              Are you willing to let the importance of this IPR-property thing be decided by default by not taking action and hoping that Cooper does take action later?

              (I am rooting for you, btw)

        2. I think you are right Ned about IPRs, but then Alice is clearly unconstitutional too by the same reasoning. The SCOTUS cannot take away your right to a jury (103) by incorporating the test into another test 101 where do not have a right to a jury.

          1. Night, if there is any dispute about fact, IMHO, it requires a trial by jury to resolve that fact. Smart folks defending against summary disposition under 101 need to focus on disputed facts, if there are any.

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