Constitutional Separation of Powers

The structure of the US Constitutional is designed to separate governmental powers. In patent law, separation of powers issues continue to arise – largely because the executive branch (PTO) and the judicial branch (Federal Courts)* decide many of the same patent law issues. Post-grant procedures such as reexamination and reissue complicate the scene because those avenues allow for parallel decisionmaking by the two bodies. Notably, most inter partes reexaminations involve parallel patent infringement litigation. Usually, a district court will reach its result before the PTO, and questions then arise as to the PTO’s subsequent power to affirm or deny patentability.

Although it appears to be more of a statutory construction issue, BlackBoard recently sued the USPTO (Dudas) in a case involving these issues. Originally, BlackBoard sued Desire2Learn for patent infringement and Desire2Learn subsequently requested inter partes reexamination of the asserted patent. In February 2008, a Texas jury found the asserted claims valid** and infringed. (**i.e., not invalid). The District Court did not issue its final judgment until May 2008. That case is pending appeal at the Federal Circuit. In the meantime, in March 2008, the PTO issued an initial rejection of the claims and has, more recently, refused to end the reexamination.

Under 35 U.S.C. §317(b), an inter partes reexamination must be stopped by the PTO if the requestor’s invalidity argument is rejected in a civil action and a “final decision has been entered.”

FINAL DECISION – Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit … [then] an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings. 35 U.S.C. §317(b)

BlackBoard argues that the final decision by the Federal Court in Texas strips the PTO of authority to maintain the inter partes reexamination. The PTO, on the other hand, maintains that the litigation is not really final until Desire2Learn exhausts all appeals.


  • In addition to the PTO and Courts, the International Trade Commission (ITC) is a third decisionmaking body that is considered a quasi-judicial governmental agency. There are some cases where the same patent and same parties have been simultaneously involved in disputes in all three forums.
  • BlackBoard complaint
  • Desire2Learn Patent Infringement Blog
  • As a work-around, Desire2Learn has its servers located Canada. The only valid BlackBoard claims are “method” claims, and, under RIM v. NTP, a method claim is only infringed if each step of the method is performed in the USA.

6 thoughts on “Constitutional Separation of Powers

  1. 6

    I think the USPTO is on shaky ground here. In a recent opinion, SCOTUS seemed to conflate “final decision” and “final judgment.” See Riley v. Kennedy, 128 S.Ct. 1970, 1981 (2008). And I think if 35 U.S.C. 317 used the term of art “final judgment” there wouldn’t be any doubt that the District Court’s entry of judgment (after all, an appealable order!) would act to remove jurisdiction from the USPTO.

  2. 5

    Having nothing to do with inter partes reexamination, but perhaps something to do with Separation of Powers (and the ethics thread)…

    Anyone else see an issue with the discipline process that begins with the OED Director, moves to a Hearing Officer, and is appealed…
    to the USPTO Director?

    Would the Director ever recuse himself for conflict of interest?

  3. 4

    Res judicata and collateral estoppel – under the common law, attaches at the final judgment of a district court. Not at the end of ‘all appeals.’ But see the code that allows interlocatory appeal to CAFC w/o a final accounting ( yet another goofy hangover statute IMHO). Sounds like another excellent opportunity for CAFC to start making “right angles” on separation of powers issues. Unfortunately if past is prolog – CAFC will once again get wrapped around the intellectual axel – and figure some exception, see translogics. And then SCOTUS won’t fix it b/c SCOTUS sees patent law as an ugly step child. But one can hope.

  4. 3

    The current controversy is unique to inter partes reexams. Swanson is about an ex parte re-exam.

  5. 2

    If the PTO was not regularly blatently violating its statutory requirement to handle reexaminations with “special dispatch” the subject claims would (as Congress intended) either be reconfirmed as patentable or removed from the patent BEFORE any jury trial, rather than long after. Then these situations would not occur.
    In any case, hasn’t the CAFC already decided this issue this September in In re Swanson?

  6. 1

    Useful topic Dennis, and a nice change from software patenting. Article 61(1) EPC provides for transfer of a pending EPO case, but only after a “final decision” on ownership in the competent jurisdiction (often the USA). When might that be. How much would it take, I’ve sometimes wondered, to get to 35 USC’s “final” or Mr Dudas’s “really final” or to the Spice Girls’ “really really” final Decision.

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