By Dennis Crouch
[Update – Read the Complaint Here]
MadStad & Mark Stadnyk v. USPTO, 12-cv-1589 (M.D. Florida 2012)
The small motorcycle engineering company MadStad recently filed suit against the US Government asking a federal court to reject the Leahy-Smith America Invents Act of 2011 (AIA) as an unconstitutional degradation of inventor rights. Steve Lohr (NYTimes) covers several aspects of the story and includes quotes from both Professor Mark Lemley and Professor Arti Rai that identify the challenge as Quixotic. I agree with Lemley and Rai on this point – especially after the Supreme Court’s Golan decision last year. Of course, I also thought that Myriad case would go nowhere.
Stadnyk’s basic argument is that when the US Constitution speaks of exclusive rights for “inventors” it should be interpreted to mean “first and true inventor.” The AIA fails because it purposefully rewards the first-to-file a patent application rather than the first-to-invent. The complaint argues:
A second ‘inventor’ is an oxymoron; that person merely rediscovers that which was already discovered by the first inventor. Thomas Jefferson, James Madison, and John Marshall all shared this understanding. . . . Congress is not authorized to award patents to the winners of races to file to the PTO. . . . Under the AIA, there is no effective statutory requirement that the applicant be an ‘inventor’ for a patent to be valid.
MadStat has also requested a preliminary injunction blocking implementation of the first-to-file provisions of the Act.
In his recent law review article, Senate Counsel Joe Matal played down the merits of the Constitutional question. Joe Matal, A Guide to the Legislative History of the America Invents Act: Part I of II, 21 Fed. Circuit B.J. 435 (2011). In his article, Matal points to the 1850 case of Gayler v. Wilder. Gayler is interesting because the Supreme Court created a subjective test for the requirement of inventorship – asking whether the patentee believed himself to be the original inventor. In that case, the actual first inventor had failed to pursue patent rights and the Supreme Court agreed that the second inventor (who originally believed himself to be the first inventor) was then properly awarded rights.