A Constitutional Challenge to Inter Partes Review

by Dennis Crouch

The America Invents Act (AIA) created a set of new administrative review procedures (IPR, PGR, CPR) that allow third-parties to challenge already issued patents.  This new approach takes a power that was previously held by courts and gives it instead to the USPTO. From a separation-of-powers perspective, the new law shifts power from the Article III courts in favor of the Article I executive-controlled agency.

After losing on the merits of the inter partes review brought by HP, patentee MCM has now appealed to the Federal Circuit — asking the court to find the inter partes review statute unconstitutional for violation of the Seventh Amendment right to a jury trial.

Question Presented:

Whether actions to cancel or revoke a patent must be tried in Article III Courts with access to a jury under the Seventh Amendment to the United States Constitution.

Ned Heller, author of the brief, reaches back to Marbury v. Madison, 5 U.S. 137 (1803), for the standard and accepted principle that “the question whether a property right may be revoked lies within the exclusive province of the Courts.” In 1893 the court explained further that:

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.

McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606 (1898).

The largest hurdle for MCM is that the Federal Circuit decided the parallel issue with regard to reexaminations in Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985). In Patlex, the Federal Circuit found that rexaminations did not violate Seventh Amendment.  In response, MCM argues (1) Patlex is wrongly decided; and (2) Patlex was effectively overruled by the Supreme Court in Stern v. Marshall, 564 U.S. 2 (2011) (although bankruptcy judge had statutory authority, it lacked Constitutional authority).


  • Read the BriefMCMBrief
  • In the Alternative: MCM also argues its case on the merits of obviousness and that the case is time–barred under 35 U.S.C. 315(b) since one of HP’s affiliates (Pandigital) was served with an infringement complaint more than one year before the IPR request was filed. Thus, it is possible that the court will rule in MCM’s favor without reaching the Constitutional question.
  • The patent at issue is US Patent No. 7,162,549 that broadly claims a controller chip for interfacing with a flash memory card used in many devices, such as digital photo frames.  More than 100 companies have been sued for infringement over the past six years, but no court has yet found the claims invalid.


197 thoughts on “A Constitutional Challenge to Inter Partes Review

  1. 26

    OK Ned, here is another question. Was not the 35 USC 145 civil action appeal option eliminated for reexaminations, IPRs and other post-grant proceedings back on September 16, 2012? Why does that not under your theory of unconstitutionality for PTO [non-Article III-court] fact-finding absent 35 USC 145 or 146 availability, make all the hundreds of claims rejected by the PTO since then, in all subsequently decided ex parte reexaminations, IPRs and CBMs, invalid claim rejections that sprint all those claims back to life?
    Not even to mention that we are talking about a government-granted right being reexamined by the same agency that grants those rights. An intangible property right which is solely a right to sue and others for patent infringement, if there is any.

    1. 26.1

      P.S. Ned, I’m doing you a favor here, as you are asking this Court to do something that Courts are extremely reluctant to do – to hold a validly enacted statute, passed by a large bi-partisan vote, unconstitutional.
      Telling a judge asking you questions like this in your oral argument to “go read my brief” is not an option. You will need very short and effective answers.

      1. 26.1.1

        Paul, the Federal Circuit judges will have read the briefs. All that I ask is that you do so as well.


          Paul appears to be more than just a bit confused.

          I think that he is beginning to realize the danger that the AIA is facing (He has been one of the strongest singers of praise of the post grant procedures).

          Paul, may I suggest that you head to one of the few lifeboats…

    2. 26.2

      “Not even to mention that we are talking about a government-granted right being reexamined by the same agency that grants those rights. An intangible property right which is solely a right to sue and others for patent infringement, if there is any.”

      And why do we have a 7th Amendment? A: It is a structural safeguard. It prevents one commissioner from granting a right, having an election and having a new commissioner decide – he does not like certain of the old grants to his political opposition – so he argues ‘administrative mistake’ and revokes the prior grants – and thereby rewards and friends and punishes his foes. Here, under the AIA, see 35 USC sect 6 (who sits on the Art I ‘court’), the political appointees of the President can do exactly that.

      1. 26.2.1

        Re: “having a new commissioner decide – he does not like certain of the old grants to his political opposition – so he argues ‘administrative mistake’ and revokes the prior grants.”
        However that is of course not what happens in an IPR, where “administrative mistake” is not an allegation and claims get rejected only after a trial by APJs on new prior art patents or publications – prior art that was never considered by any examiner in the application stage – and any alleged arbitrariness would get rejected by the Fed. Cir. on appeal.


          Paul, if something can be abused, it will be abused. Moreover, the Supreme Court itself has already decided that the PTO has no constitutional authority to reexamine patents. Just how the Federal Circuit could overrule the Supreme Court without a constitutional amendment is just a bit bizarre, don’t you think?

          But the issue here is not reexaminations, but IPRs.


          “… The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board…” 35 USC Sect 6.

          It is called a facial challenge – the statute is unconstitutional on its face – and it does not need to be abused to be unlawful. The AIA should have been challenged in the same jurisdictional posture as Patlex – years ago.

          Frankly, its disturbing you don’t see the issue with a statute like this.


            In the construction of the good ship AIA, someone thought “Hey, maybe we should put in bulkhead dividers, you know, if we strike an iceberg and develop a hole below the waterline.” Someone else shot back “No, we will make this thing so big that no one would dare try to sink it.”


    3. 26.3


      1. One needs standing to challenge IPRs on constitutional grounds. As far as I know, we are the first party having standing to challenge the constitutionality of IPRs. The fact that this is 2015 and not 2012 is of no consequence to the argument.

      2. As to prior patents having their claims cancelled without their raising the issue of constitutional jurisdiction, their objections on this ground may be deemed waived. They voluntarily consented to jurisdiction and reexamination, and the cancellation of their claims stands. Cf., McCormick which noted this distinction. To the same effect, Stern v. Marshall where it is noted that one can waive their constitutional rights if not asserted.

      3. That said, they might argue that their claims are restored even though they did not object. That is an issue that does not have to be decided now.

      4. As to pending IPRs, congress can provide a fix if they they follow Stern v. Marshall and Executive Benefits. The FWD does not result in revocation until a district court decides, unless the patent owner waives his right to trial in an Article III court and appeals directly to the Federal Circuit.

      1. 26.3.1

        Also, Paul, consistent with the waiver argument, any patent owner who had not, to date, raised constitutional objections, has arguably waived their constitutional rights and will be bound, per Stern v. Marshall, by the outcome regardless of what happens in MCM’s appeal.


          Waiver as means for curing a separation of powers defect has never received the complete blessing of the SCOTUS. Scalia joined the majority only in part for this express reason. This notion is discussed in Schor – the private litigant cannot be expected to protect institutional safeguards (i.e., separation of powers).


            qwerty, good point there. From a constitutional point of view, there is a difference between having a real choice of forum (Schor) and having no choice, but not asserting a defense (waiver).


            qwerty, what do you make of fn. 4 from Executive Benefits, 134 S. Ct. 2165 (2014)?

            “Because we conclude that EBIA received the de novo review and entry of judgment to which it claims constitutional entitlement, see Part IV-B, infra, this case does not require us to address whether EBIA in fact consented to the Bankruptcy Court’s adjudication of a Stern claim and whether Article III permits a bankruptcy court, with the consent of the parties, to enter final judgment on a Stern claim. We reserve that question for another day.”



              Without reading the case – and perhaps I’m not understanding it correctly – this quote appears to comport with preexisting public rights jurisprudence – that is, de novo review of the art I judgment spares the Court from determining whether an individual claim may be resolved by an art I tribunal where the individual consents to the art I tribunal’s jurisdiction.

              This dovetails with traditional notions governing when an art I tribunal may assist an art iii court – i.e., as a limited fact finding adjunct subject with findings subject to de novo review.

              One of the unique attributes of stern v marshall is that only 4 of the 5 majority justices identified waiver as a means of curing sep of powers defects. As mentioned, Scalia joined in part to expressly note that perhaps historical practice allowed for the consideration of defamation before the art I bankruptcy court. The justices are deathly afraid of any potential bright line rules in this area of the law.


                The reason I bring it up, qwerty, was because of our discussion of whether prior participants in reexaminations and IPRs who did not object to jurisdiction waived their rights to implicitly consent to adjudication and final judgment of an Article I court such that it is binding on the parties regardless that the statute is later declared unconstitutional.

                Well this appears to be very close to the question reserved in Executive Benefits.

                1. I see. In terms of whether it would cure any potential retroactive effect of a reclassification of patent validity / public rights, I have no idea.

    4. 26.4

      On the “policy argument,” IPRs are not reexaminations, but validity trials.

      The IPR judges are not Article III judges. They are people with legal AND scientific expertise. Nothing more.

      Congress could require that Article III judges handling patent cases have an engineering or science degree.

      1. 26.4.1

        Great brief Ned. Hope you and your client prevail.

        Aren’t CBMs and PGRs unconstitutional for the same reasons?


          Zack O, probably.

          The form of action is hardly the point — it is the result: the revoking of the patent that the Executive does not have the constitutional power to do.

          Can you imagine the Supreme Court saying that Marbury v. Madison was wrongly decided? Hardly.

  2. 25

    Although IPL associations and academics do not seem to be taking this case* very seriously, should it not at least draw an amicus brief response?
    *MCM Portfolio Company v. Hewlett Packard Company – Fed. Cir. Case No. 15-1091 filed 1/21/15
    There is always a small risk that two Fed. Cir. judges hostile to IPRs and reexaminations (like Judge Newman) might be on the panel. Most importantly, this same alleged unconstitutionality basis for all IPRs would equally apply to all past, as well as present, PTO interferences and reexaminations which have removed thousands of issued patent claims. [The alleged lack of a requisite Article III court decisions for all those patent claims is jurisdictional, and thus presumably retroactive.] That would lead to an economic Armageddon of thousands of formerly dead patent claims arising from the grave, an issue conveniently ignored by these Appellants which needs to be pointed out. [Not even to mention various other federal agency administrative decisions, including the ITC, impacting alleged property rights.]


    1. 25.1

      Paul, check post 2.2.2.

      The Supreme Court has approved of access to trial de novo in district courts as a way of rescuing so-called “Stern claims.”

      Until the AIA, reexaminations were subject to trial a trial de novo.

      Interferences are also subject to a trial de novo.

      The potential remedy is at hand. All one has to do is follow Stern v. Marshall. That means, I suggest, that people trying to rescue the situation actually read that case and follow it.

      1. 25.1.1

        Thanks Ned, I appreciate that explanation of your argument, but doesn’t that mean you are arguing that no federal agency can make any fact findings affecting anyone’s property unless the losing party is provided with a de novo trial in a D.C.?


          Paul, that is hardly the argument. You might want to start by reading the brief and Stern v. Marshall.


          Paul, let me explain further. I think the courts will look to see if the cause of action, or an analogous cause of action, was tried in the courts of England prior to 1789. If it was, then it must be tried in Article III courts today. Further, if the cause of action required a trial by jury with respect to disputed facts, it must be tried to a jury.

          This basically is the analysis of Granfinaciera.

    2. 25.2

      Paul the ITC does not affect either the right of the respondent, or of the patent holder, to his day in court by reason of their decisions having no collateral estoppel effect.

      Re: court of claims. If its judgments on validity were to have an effect in Article I courts by collateral estoppel, then the patent owner would have a right in the first place to access to a court and a jury.

      The simple remedy there would be to deny collateral estoppel effect.

      Re: Hatch Waxman, invalidity counterclaims clearly have a constitutional right to a trial by jury because they would have collateral estoppel effect.

  3. 24

    The brief requests, and thus seems to effectively concede, that Patlex Corp. v. Mossinghoff would have to be overruled. But the stare decisis rules of the Fed. Cir. do not allow a panel to overrule a prior panel decision. Thus, unless the majority that is on this panel ignores that, it would require an en banc decision.

    1. 24.1

      P.S. Is not the Sup. Ct. In re Zurko decision also relevant here? That decision directly supports fact-findings by the PTAB. If that was actually unconstitutional [for not being done by an Article III court as argued here] it should have controlled that case, because judicial jurisdictional issues are not waived.

      1. 24.1.1

        Paul, Zurko was a appeal from an ex parte examination. All such appeals have a right to a trial de novo and therefor do not have an obvious constitutional problem.

        Crowell v. Benson set forth the blueprint – as limited by Stern. Provide a trial de novo and the right of access to an Article III court is partially solved. There then is the question of whether there is a trial by jury, but that might be considered later.

    2. 24.2

      Ned can correct me, but I believe that his view is that subsequent decisions to Patlex do allow this panel to over rule the prior panel decision, and thus an en banc panel is not required.

      Also – it not mere fact finding that is implicated in the Teva/Zurko exchange – but the type of fact finding (extrinsic-intrinsic).

    3. 24.3

      According to Troy v. Samson, a panel can decide that a prior decision of its own circuit has been overruled by intervening controlling authority.

      It does appear that you have not read the brief.

      1. 24.3.1

        You see Ned – sometimes we do agree.

        Now if I can ‘cure’ you of your dogmatic curse-ades against business methods and software…


          anon, you might say something on that score that eventually I might agree with. But do not hold your breadth.

          But it does appear that you have read the brief and have understood it. Paul obviously has not read the brief.

  4. 23

    Under what standard are the PTAB findings involving questions of fact reviewed by the CAFC? Are they reviewed like a JMOL by a district court, or with deference to the PTAB?

  5. 22


    I haven’t completely digested all the sources cited in your brief yet. But, I’m assuming that you are right, and IPRs are unconstitutional because fact issues in a 102/103 analysis have to be decided by a jury under the 7th Amendment.

    How about for covered business method reviews that find a patent invalid, say under section 112 for being indefinite? I think you might be able to argue that under the Supreme Court’s analysis in Markman, juries didn’t decide the issue of indefiniteness in 1791 because there were no claims in patents at the time. Then if you go through the Markman analysis, I would think the same analysis would apply since claim construction and indefiniteness are arguably two sides of the same coin.

    Probably messing up this analysis somewhere. I guess it would have an even bigger effect on litigation.

    1. 22.1

      Anonymous, you might want to read the brief a second or third time. It may take some time to sink in. As anon noted below, the PTO’s entire house of cards depends on patents being public rights, otherwise the PTO has no “constitutional” jurisdiction to revoke a patent for any reason.

      1. 22.1.1

        “the PTO’s entire house of cards depends on patents being public rights, ”

        Nah bro, the entire house of cards depends on the right to bring an IPR being a public right. There’s a difference.


          That’s an interesting angle, 6.

          But a bit of a red herring, given as no one has even brought up the “right of petitioning the government for redress” in ANY of the discussion points being advanced.

          The “what” of your point – however – does remain constrained by the “how” of the enactment. This is analogous to the “takings” discussion in Constitutional law, in that the government is not forbidden to undertake a takings (the “what”), but is constrained as to the “how” with certain legislative acts having been deemed unconstitutional in that the legislated “how” was insufficient.

          That determination on insufficiency very much reached back to the discussion points at hand that you are trying NOT to address.

          So, “Bro,” even as you cannot help yourself from saying “Bro,” you also appear not to be able to help yourself get to the underlying point of law pertinent to the discussion here. Very much like “that” Rob Lowe talking about “that” picture (self portrait on the wall) and “that” sound (lunkhead grunt).


          Well, 6, not a soul that has opined on the topic has ever suggested that Patlex held anything else than that a patent was a public right. Its premise was that the “right,” the patent, could only be created by statute.

  6. 21

    “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”

    Patents are thus limited in time, and Congress has authority to decide when patents expire. Here, Congress has decided that a patent’s time is up when an administrative agency tasked with the job finds it invalid.

    I don’t see the Constitutional issue here.

    1. 21.1

      Of course not.

      It is easy not to see anything with eyes so tightly clenched.

      Maybe you want to study the law a bit and understand a bit before you trip over that soapbox (again).

  7. 20

    Mulling over what arguments might find a purchase, and thinking about universal natural justice rather than US-specific Constitutional issues, how about “legitimate expectations” and “making law retrospectively” and “changing the position of the goal, part way through the game”. What I mean is, that if I had known that my claims, post-issue, would be liable to validity challenge on an evidence preponderance basis, I would have drafted different claims to go to issue.

    But I didn’t know that, and couldn’t have known that. So I took to issue claims without a thought that they will need to be able to survive validity challenges brought on a preponderance basis. And now it’s too late to do anything to shift my legal position, making the claims more robust against validity challenges, to take account of the new law.

    That is making law retrospectively and depriving me of the legitimate expectations I had, that the claims I took to issue would see off all attacks on their validity.

    Presumably, the answer is that the petition as it stands already includes my lines of argument (or that they are futile).

    1. 20.1

      Max, the argument is not about justice. It is about law.

      Can I ask, is the distinction between “fairness” and “law” well understood in Europe?


          Would it be a fair rejoinder then to say that in Islamic nations that law (sharia) is morality?

    2. 20.2

      the claims I took to issue would see off all attacks on their validity.

      But at the same time it’s perfectly constitutional for you to recognize mistakes that you made when you wrote/prosecuted your self-serving mini-statute and ask the PTO for a do-over that screws over everybody else. Because … freedom! Or something.

      1. 20.2.1

        for a do-over that screws over everybody else. Because … freedom! Or something.

        Or something indeed.

        You need to get a better meme.

        The Thomas “analogy” was pitiful when he used it and upon further scrutiny only gets worse.

        Think about it. The analogy would permit individuals (inventors or their assigns through their representative) to WRITE law, that the Executive branch (not the Legislative branch) would then deliberate, shape, and enact. Then we have you spinning and twisting it one more step further…

        That’s just a horrible analogy. Or something.

    1. 19.1

      Steve, true. But the author did not appreciated the role of scire facias actions in the present constitutional issue. Lemely’s article thoroughly discussed scire facias actions, that they were filed on the common law side of chancery, and enjoyed a right to a trial by jury for disputed facts. (All historical authority discussing scire facias actions are to the same effect.)

      The importance is that scire facias actions were to revoke a patent because of fraud or invalidity. They began as a petition to the government, who then, if there was merit, brought the action in the name of the King. The petitioner at that time was merely an third party participant. A third form permitted the patent holder to sue to revoke a patent on the same invention issued later to another. This form did not require the government. According to our Supreme Court in Mowry v. Whitney, the first two forms of action required the government to participate to avoid harassment of the patent owner.

      Because scire facias actions were well known in the early days of our country, Congress provided by statute an action to repeal a patent. The Supreme Court in ex parte Wood held the statutory action to be in the nature of an action scire facias and ordered a trial by jury for disputed facts.

      All this is pertinent to the Art. III question because if an action has a right to a trial by jury, it must be tried in an Art. III court and cannot be assigned to an Art. I court. Granfinanciera.

      1. 19.1.1

        Ned I appreciate you laying out your views that you’ve already laid out for us in other threads. But considering this litigatin be pending it might be an excellent time to remain a tad mum.

        I mean, unless your client expressly doesn’t mind or is wanting you to rouse a rabble. I do see you calling for amicus.

  8. 17

    Merits aside, I think the reasoning offered gives the Federal Circuit an excellent opportunity to kick Congress in the nads for the huge onslaught of PTAB appellate work headed their way. If I was a Fed. Cir. judge, I would be tempted to find for the patent owner here, just so I would not have to hear the huge number of IPR appeals that Congress did nothing to facilitate my ability to manage. I imagine the backlog is growing pretty fast.

    I guess that is one more reason why I am not a Fed. Cir. judge.

  9. 16

    Go get em Ned! Really, gl bro. I mean, I’m totally on board with the position and the quotes but it just seems like they’re quotes from a time when power wasn’t vested in the executive to do these things. At least the ones D quoted you as bringing up.

    Still, gl!

    1. 16.1

      Same from me. I may disagree from Ned’s position from both a policy perspective and a legal perspective, but I’m glad that such an important case is being argued by someone I both like and respect.

  10. 15

    Setting aside for the moment the dubious merits of the underlying patent, these sort of hail mary/atom bomb type attacks on key features of the U.S. patent system inevitably raise other important questions about the patent system.

    For argument purposes, let’s assume that the atom bomb here is not a dud and re-examinations and inter-parties review of patents are deemed “unconstitutional”.

    It seems more than a bit strange (not to mention, corrupt) to have an administrative agency which, in exchange for money, (1) teams up with private self-interested entities to promulgate what are, in effect, statutes that affect the rights of every citizen in the country, without any Congressional review of those statutes; and (2) deny the agency the right to re-evaluate its own actions when a member of the public has identified a flaw in the agency’s approach.

    According to the theory of the case, is the agency also precluded from issuing advisory opinions and/or detailed apologies and explanations for its mistakes that judges could routinely adopt as their own? Or is it “constitutionally” required to sit on its hands and say nothing?

    Is a “presumption of validity” for granted patents constitutionally viable under such circumstances? What would be the rational basis for such a presumption if/when the agency that issued the patent has publically acknowledged that it screwed up and “if it were permitted by the constitution to have another chance” would reach the opposite conclusion?

    Again, I don’t think this case has legs for any number of reasons (many of which have been articulated by commenters below). I am simply curious about whether the supporters of the argument have given thought as to the ramifications of what their proposing and what “fixes” are permitted in the absence of a Constitutional amendment (because those “fixes” are inevitable and necessary, absent some other correspondingly massive change to the existing patent system). Could, for example, a statute be passed permitting a court to quickly make a finding that the patent needs to be re-reviewed by the agency?

    1. 15.1

      All good questions MM. But it is congress that went through with the tomfoolery of making patents supposedly have the properties of “property”.

      1. 15.1.2

        6: it is congress that went through with the tomfoolery of making patents supposedly have the properties of “property”.

        Right. An obvious question to be asked is whether that aspect of the patent system (to the extent it is taken seriously) is any more “constitutional” than the establishment of IPR’s.

        Let’s face it: the similarities between your statutory right to sue me for, e.g., thinking about a correlation because “the PTO said you had this right even though it realizes now that it made a huge mistake”, on one hand, and your statutory right to sue me for, e.g., burning down your grocery store, on the other hand, are pretty slim indeed.


          …because “sue me for some ‘pure thinking’ thing isn’t a ridiculous strawman at all…

          Oh wait, it IS a ridiculous strawman…


            …because “sue me for some ‘pure thinking’ thing isn’t a ridiculous

            There is no non-ridiculous distinction to be drawn between sueing someone for “pure thinking” and sueing someone for “pure thinking about data obtained using public domain methodology.” This is not only logically plain as day, it’s also the straightforward application of Mayo v. Prometheus, a 9-0 decision that will never be overturned.


              Whew, good thing that such things as machines and components of machines cannot be confused for such things as abstract thoughts…



          “Right. An obvious question to be asked is whether that aspect of the patent system (to the extent it is taken seriously) is any more “constitutional” than the establishment of IPR’s.”

          That is a good question. Especially if they’re being granted via process of entitlement. Doubly so if that process is not subject to review outside a hugely expensive court procedure.

    2. 15.2

      The “Thomas” “mini-statute” meme failed to garner but one vote in the Teva case.

      It’s re-use here is even less compelling.

      1. 15.2.1

        “anon”: The “Thomas” “mini-statute” meme failed to garner but one vote in the Teva case.

        Breyer’s dissent in the refusal to grant cert in Metabolite Labs failed to garner but two votes. And then look what happened.

        Judges write dissents for many reasons. One of those reasons is to give the public some ideas about how an issue might be framed properly to achieve a more rigorous discussion and a better result (“better”, at least, in the eyes of the dissent).


          You act like the judicial activism and running roughshod over the separation of powers doctrine is a good thing…

          Just more of that “hah, whatever to get my ends for me and the means don’t matter” pitifullness.


            You act like the judicial activism and running roughshod over the separation of powers doctrine is a good thing…

            And you act like judicial activism is awesome only when it benefits you.


            “You act like the judicial activism and running roughshod over the separation of powers doctrine is a good thing…”

            Anon man, the government has three branches. They all work together to do this new thing called “governing”. When there is overreach, or potential/arguable overreach by one branch, sometimes the other does this new thing called “making corrective action”. That’s the whole point of having 3 branches, as well as separated powers.


              Statutory law and the constitution allocating authority to WRITE law is not divied up like you think (or rather, like you lack of think).

              Have you watched the move The Paper Chase at the hour six minute mark?

              You might go back to School House Rock and try to grasp the different functions of each branch (you seem way to eager to just gloss over that)

    3. 15.3

      MM, you might want to read Executive Benefits Ins. Agency v. Arkison, 134 S. Ct. 2165 – Supreme Court 2014 link to scholar.google.com.

      Apparently, if the statute has a severability clause, its constitutional parts will be upheld. Thus in this case, a prior ruling by a bankruptcy judge who had statutory authority to hear a claim, but not constitutional authority, was treated by an Article III court as proposed findings of fact and conclusions of law in a de novo review. I suspect that prior IPR decisions could be given the same weight in Article III courts in DJ actions to declare a patent invalid.


            anon, congress would have to re-enact the AIA, and reconsider IPRs.

            There has to be a way to get the expertise of the office into court proceedings. But I would not use the Board as an expert. I would use very senior examiners that are examining in the art of the patent in question. What one wants from the PTO is not legal expertise, but technical expertise. The PTO would, I think, be neutral between the patent owner and DJ plaintiff. Their expertise would help.

            Actually, I think reexaminations began just this way, by courts referring questions of validity over prior art to the PTO for their expert opinion.

  11. 14

    If you look at the underlying brief, the constitutional challenge is a throwaway argument tucked in the back of the brief, and presented in a way that’s unworthy of the attention it is getting.

    The biggest obstacle to the argument, really, is the “public rights” doctrine. Under Atlas Roofing v. OSHA, 430 U.S. 442 (1977), the Supreme Court directly held that “[w]hen Congress creates new statutory ‘public rights,’ it may assign their adjudication to an administrative agency with which a jury trial would be incompatible, without violating the Seventh Amendment’s injunction that jury trial is to be ‘preserved’ in ‘suits at common law.'”

    The brief tries to argue that “public rights” deal only with situations where the government is acting in executive authority, like tax collection. But even Atlas Roofing debunks that–that case was about occupational safety claims which didn’t even exist before OSHA was passed in 1970. The Atlas case also cited NLRB v. Jones & Laughlin Steel, 301 U.S. 1 (1937), that held that Congress could appropriately unfair labor practice claims to the NLRB.

    It’s hard to imagine anything that’s as much a “public right” than patents. The only thing that separates it from the others is its long historical pedigree, but that doesn’t change the fact that patents do not exist at common law in America. Their existence and enforcement ability is purely a creature of statute.

    Stern v. Marshall (2011) is simply not on point; that case dealt with whether an Article I court (a bankruptcy court) could adjudicate a state law contract claim. That case didn’t involve a Congressionally-created “public right,” like patents.

  12. 13

    First of all, Ned: good luck! I mean that sincerely.

    I also think you’ll need it and I think your client is making a huge mistake by going forward with this case. Of course, we all know why they are going forward with the challenge: they have nothing at all to lose.

    Here’s the representative claim:

    7. A method comprising:

    using a controller chip to interface a flash storage system with or without a controller to a computing device, the controller chip comprising a flash adapter, wherein the flash storage system comprises a flash section and at least a medium ID;

    determining whether the flash storage system includes a controller for error correction.

    in an event where the flash storage system does not have a controller for error correction, using firmware in the flash adapter to perform operations to manage error correction of the flash section, including bad block mapping of the flash section in the flash storage system that is coupled to the flash adapter section.

    Because of the conditional language, the method is infringed by the following steps:

    1) “interfacing” a “flash storage system” to a “computing device” via a “computer chip”, wherein said “flash storage system” comprises a “flash section” and at least a “medium ID”;

    2) “determining” whether said “flash storage system” includes a “controller for error correction.”

    That’s it. Those two steps (“interfacing” and “determining”) are all that are required for infringement of claim 7 and, therefore, all that is required for anticipation/obviousness of claim 7 (I’m ignoring lurking eligibility issues for the moment).

    There is discussion in the brief about one of the references (Kobayashi) failing to disclose “a controller chip that manages bad block mapping of the flash card in the event that a flash card does not have a controller for error correction.” With respect to claim 7, at least, such disclosure is not necessary because that step isn’t required to infringe the method of claim 7.

    There is an attempt to bootstrap some “structure” (using that term very loosely) from claim 11 into claim 7 but claim 7 is clear about the steps required. The only necessry “structures” required for infringement (and therefore anticipatoin/obviousness) of claim 7 are “a computer chip” and a “flash storage system”.

      1. 13.1.1

        Does claim 7, a method claim, “need” “structure” “Malcolm”?

        Claim 7 requires the use of a “computer chip” for “interfacing”. Presumably that “chip” has a structure of some sort, albeit a structure that extremely poorly defined.


          That’s nice.

          It is also not on point as to a method claim “needing” structure, now is it, “Malcolm?”


            It is also not on point

            If you say so. I made my point quite plainly.

            If you want to make a different point about what “method claims” in general might or might not “need”, then go right ahead and make your point. Try a declarative sentence for a change.


                Again: There is an attempt to bootstrap some “structure” (using that term very loosely) from claim 11 into claim 7 but claim 7 is clear about the steps required. The only necessry “structures” required for infringement (and therefore anticipatoin/obviousness) of claim 7 are “a computer chip” and a “flash storage system”.

                Note repeated references to “claim 7.” Note focus on what steps and structures and required for infringement of claim 7. Note absence of generalized statements about method claims.

                1. You don’t explain the “need” for structure (bootstrapped or otherwise) in the method claim…

                  It just appears to be a drive-by insult…

                  Still waiting for some on point statement…

    1. 13.2

      MM, thanks for your comments.

      You are aware that the structure is claimed in claim 11 and that was held to be unpatentable as well?

      Also, the flash adapter is a part of the controller chip, and firmware certainly defines programming that is embodied in the chip.

      1. 13.2.1

        You are aware that the structure is claimed in claim 11

        I’m not sure what you mean by “the structure” here. Claim 7 is a independent method claim and contains no reference to claim 11.

        the flash adapter is a part of the controller chip

        Right. But for infringement (and therefore also for obviousness/anticipation) claim 7 requires no action by the “flash adapter” and requires no action upon the “flash adapter.”

    2. 13.3

      Here is how I would probably have written claim 7 to fix the dangling modifiers and improper usages (even by the standards of patentese). I would probably substitute “implements” for “comprises” in red and “provides” for “comprises” in violet.

      link to drive.google.com

      To tell the truth, I am not really happy with this rewrite, but then I don’t think much of the patent.

  13. 12

    I do not understand how an IPR cancels or revokes a property right. The patent rights are defined in 35 USC 271, and no IPR changes the statute.
    The things that change in an IPR are the allowed claims, and the claims are just a description of the subject matter which the inventor or a joint inventor regards as the invention.
    What am I missing?


          Go, well the principle at issue is defined in Marbury — a commission, patent or other “title” issued by the executive for a limited time, and not revocable at will, but as a matter of legal right, is property; and actions to revoke them for any reason must be tried in the courts.


            Actually, Go, all that Marbury required is that the government make the grant to be held by the grantee for a fixed period as a matter of legal right. The reasons for the grant could be purely political, as in the case of the justice of the peace commission before the court in Marbury.


            anon, well the Madstad case make much of “inchoate.” The right to a patent is vested in the first inventor subject to formalities. Same issue as in Marbury.



              The Madstad case is deeply flawed because if its insistence on one – and only one – “true” first inventor.

              Think back to the analogy of the race – multiple runners and all.


                anon, when a right to a patent is vested in one inventor, his actions or inactions can lose that right. Such was the case in Pennock v. Dialogue.

                But, so long as that first inventor has not forfeited his vested right, no second inventor has a vested right that is superior.

      1. 12.1.2

        In Markman, the following passage caught my attention:
        Thus, patent litigation in that early period was typified by so called novelty actions, testing whether “any essential part of [the patent had been] disclosed to the public before,” Huddart v. Grimshaw, Dav. Pat. Cas. 265, 298 (K. B. 1803), and “enablement” cases, in which juries were asked to determine whether the specification described the invention well enough to allow members of the appropriate trade to reproduce it, see, e.g., Arkwright v. Nightingale, Dav. Pat. Cas. 37, 60 (C. P. 1785).
        I can’t tell for sure if these two cases were tried by a jury, but if they were, an inquiry similar to the “historical method” in Markman could answer the question about the right to a jury trial.


          PiKA, you might want to read Lemely’s article on the 7th Amendment we quoted and that was also quoted in Teva by the Supreme Court. He describes the following:

          Actions to revoke patents at common law were known and disputed facts were tried to a jury. The common law writ used was scire facias. The actions were filed in the common law side of Chancery, disputed facts were tried at Kings Bench to a jury.

          Our independent research is to the same effect.

  14. 11

    Why do you invoke the Seventh Amendment? The question, as I understand it, should be whether Article III (as interpreted through the public rights doctrine) requires that revocation and cancellation proceedings be decided by Article III courts.

    A Seventh Amendment challenge would turn on a different inquiry. Namely, whether the rights affected by an administrative cancellation more closely resemble those at issue in a pre-1791 action at common law than in a petition for a writ of scire facias in equity. Mark Lemley has an interesting article on this.

    1. 11.1

      The scire facias angle has been explored on these comment pages in the past.

      The fact that such was explicitly repealed works against the view that such was sub silento re instituted.

      And frankly, I am not compelled by what Lemley has to say on this issue (but I would be willing to hear his points out).

      1. 11.1.1

        Does the abolition of the extraordinary writs matter? As I understand it, Seventh Amendment analyses are guided by the content of the right – not the form of the action.

        In any case, the point I was (poorly) trying to make is much more simple: there might be a Seventh Amendment issue, but a successful challenge would require asking the “What would we have done in 1791?” question, which the appeal doesn’t do.


          B, of course the brief does. Cites to Markman that held there to be a right to a jury trial b/c such actions were tried to a jury.

          Cites to Wood that held that actions to revoke a patent had a right to jury trial because they were in the nature of scire facias. Scire facias actions were tried on the common law side of chancery, facts to a jury at Kings Bench, prior to 1791. We cite multiple sources including Lemley.

    2. 11.2

      Perhaps MCM has to broach the issue of jury trials, because the outcome of an IPR can be appealed to an Article III court – but only to the CAFC, which makes the argument concerning a jury trial relevant.

    3. 11.3

      B, if there is a right to a jury trial, necessarily the case or controversy must be tried in an Article III court and the matter is not a public right. So held the Supreme Cour in Granfinanciera link to scholar.google.com.

      The Supreme Court in Markman held there was a right to jury trial for patent infringement suits; and in ex parte Wood for actions to revoke or to repeal a patent for invalidity. Thus under Granfinanciera, a patent cannot be a public right and actions to revoke them must be tried in Article III courts with access to a jury.

    4. 11.4

      That is unresolved question and one that a Court would be VERY reluctant to answer because that would decide a major question of the constitution.

      Remember that there is no right to a jury trial in civil cases in England. The 7th amendment changed that, of course, but did it apply to ONLY those civil actions that were available at the time of the passage of the Constitution(, which do not include patent cases)? Or, did the 7th amendment “grow” and include subsequent civil actions?

      Yikes. I’m not sure I want that question answered.

      1. 11.4.1

        By the way, had Breyer written the Teva decision slightly different, we might have heard the answer to that question extremely quick. Let’s imagine Teva without the italicized language that meanings of terms in context of the patent is a matter of law. A party would challenge the validity of Markman hearings because how could a Court decide what a term means without a jury? Justice Ginsburg recognized this in oral argument. See Tr. 12:19. So the Court would have to decide the 7th amendment question…

        Or go a route that Justice Scalia seemed to suggest, and that is, treat fact finding by the judge as it were an evidentiary decision (which is not given to the jury). See Tr. 10:10. That would be crazy, because then the deference on what terms mean in context of the patent would receive abuse of discretion review, which means the end of patent trials after the Markman hearing.

        Anyways, end of the hypothetical. What is likely to happen is that the Federal Circuit will do what it has always done, except not give any weight to extrinsic evidence. Judges are likely to know this and not rely on extrinsic evidence to make their point. See tr. 12:1–9.


          J, well the issue of whether a patent was a public right apparently was discussed by the court in Teva. Check Thomas’s fn. 2. He did not prevail, the majority holding that a patent was a private right.



            I’m unsure of the connection between my post and your response. I know you are a busy man on this thread today, but can you explain what you mean?



              Basically, Thomas in his poorly attempted analogy wanted to portray the patent right as a public right.

              He failed.

              Thus the take-away that Ned wants you to have from the Teva case is that the patent right is a private right. Any other take-away means that Teva is necessarily overruled.

      2. 11.4.2

        J, we address your questions in our brief. Both infringement actions and actions to revoke a patent were tried to juries prior to 1791.

      3. 11.4.3

        J: Markman: right to a jury trial for infringement cases (historical analysis.)

        Wood, right to a jury trial in actions to revoke a patent: Scire facias. Scire facias actions were common law actions, albeit, filed in chancery, with facts tried to a jury before 1791.

        Both Markman and Wood are controlling Supreme Court cases.

    5. 11.5

      B, you might note that we quote Lemley’s article where he forcefully concludes that actions to revoke patents (scire facias) were litigated pre-1791 in the common law side of Chancery, and disputed facts were tried to a jury.

      Also check footnote 22, where we add,

      “See also , Chesnin, Harold, and Geoffrey C. Hazard Jr. “Chancery Procedure and the Seventh Amendment: Jury Trial of Issues in Equity Cases Before 1791.” Yale LJ 83 (1973): 999 (PDF) where the author demonstrates that prior to 1800, all issues of fact arising in Chance
      ry were tried to juries at Kings Bench.”

      1. 11.5.1

        Thanks for the response, Ned!

        I missed that when I skimmed the brief. Hopefully you’ll get a longer opinion out of the court than Joy.

  15. 10

    Ned –
    Congrats on the right up. I’m delighted to see that you recognize that cases can be wrongly decided.

    Care to take a whack at Benson, Bilski and Alice et al.?

    1. 10.1

      Les, thanks.

      On the Benson->Alice Odyssey, I think the Supreme Court got the result right, but not always in a way that was clear. They should have adopted the reasoning of Hotel Security in cases where claims had mixed statutory and non statutory subject matter.

      1. 10.1.2

        Ned, if we end up more-or-less where Europe is, then I’ll be OK with Alice. What I disagree with is the tortured legal reasoning it takes to get there. If we had a functioning Congress, maybe they could fix the mess. As it is…


          lenehy, the real problem is Bilski. Stevens wanted to follow Hotel Security, which is simple and easy to understand. We got to the Hotel Security analysis simply way of Breyer in Mayo. Now the whole court is on board.

          Just read that case. If a claim has both statutory and non statutory subject matter, the novelty must be in the statutory. The Alice analysis is effectively the same, but calls the nonstatutory “abstract.”


          btw, that contamination of Ned’s from Bilski‘s majority-lost dissent dressed as a concurrence actually states the following:

          The rationales for those decisions sometimes varied. But there was an overarching theme, at least in dicta: Business methods are not patentable arts.” (emphasis added)

          This bit of wax nose mashing has been wrecked from a number of different angles – from the fact that such would necessarily rewrite the explicit words of Congress (as noted by the majority), to the fact that Congress could have explicitly stated “no business methods, did not do so and even provided a limited defense to business method patents (can you even have a defense to something on its face “not allowed”…?), to the fact that in a subsequent case, the number of Justices espousing this route dropped from a minority of 4 to a lesser minority of 3, to the fact (as even Ned was the one who provided the reference) that electing dicta – and here expressly lower court dicta to be some type of controlling law is simple legal error, to the ironic fact that it was Justice Stevens himself that warned of the nose of wax mashing danger himself, to the facts (as shown by a guest columnist on this very blog) that business method patents have actually been granted throughout the history of the patent office.

          It is inexplicable why the anti- business method curse-ade is clung too.

  16. 9

    Interesting brief Ned, well written too. While we don’t always agree on things, at least you have been respectful (unlike ahem numerous folks on here) and I have always respected your opinion. Good luck!

  17. 8

    Sometimes I wonder whether litigation counsel will throw in an argument raising a constitutional law question for free on behalf of clients hoping the case goes up to the Supreme Court, knowing the likelihood of winning, much less getting a decision on the merits of their argument are virtually nil. How in the world would the Federal Circuit decide that district courts are more competent to judge patent validity than the PTO? It was their failure in the first place (with something like half of all validity decisions at the trial level being reversed at the Federal Circuit) that led Congress to pass the AIA.

    On the question itself, I think it’s not a question of “revoking” a right granted to a patentee; it’s a question of whether the patent upon which the right was granted was valid in the first place. An invalid patent is worthless – you cannot successfully assert it. Therefore, there is nothing lost (no “revoking” of property right) to the patentee when the government declares it such, as it was invalid and worthless from the moment it was granted, it’s just that nobody knew that at the time.

  18. 7

    Congrats Ned on pursuing the issue front and center.

    While recognizing that you cannot leave any stone left unturned, the “out” you provide with a time-bar argument may – as pointed out – leave the constitutional question unanswered.

    That would be a pity.

    Seeing as the ability to sever was purposefully omitted from the AIA, the Federal Court (and no doubt the Supreme Court after that) opining on the sink-or-swim entirety in a more sooner-than-later manner would be beneficial for the entire innovation ecosystem. If indeed the Act is to be unwound, better not to wait to start that unwinding.

  19. 6

    The constitutional argument is interesting. I think it is an open question for patents filed after the AIA, as the underpinning for the logic that it must be tried in an Article III court is based upon a transfer of rights that may never occur. In other words, AIA patents may simply be less rights granted to the grantee – an AIA grantee takes subject to the IPR clause. For the pre-AIA grants, the argument seems to be correct, though it could easily be fixed by keeping the property rights and preventing a remedy without the office certifying.

    The argument for non-obviousness is pretty weak, imo. The patentee aggregated functionality (i.e. it made the different controller functionalities for each type of flash memory integral) and then it moved the functionality from the card itself to the interfaced computer (i.e. rearrangement of parts). Those are both exemplary rationales and there’s specific motivation anyway (it’s more efficient to have one apparatus that can work all of the devices, moving the functionality to the interface device lowers the cost of production of each card).

    1. 6.2

      Random, but the constitution does not give congress the power give revocable privileges to inventors — and that is what they are if they can be revoked by the government and not by the courts. “Limited times” cannot be ignored.

      Marbury v. Madison opined that rights granted for limited times are property and can only be revoked by the courts.

      1. 6.2.1

        It should also be noted that there is no indication that the patent right itself was so tremendously changed in the AIA. The section on treating patents as having the attributes of personal property would have been the logical place for Congress to note what Random wants to suppose has happened.

        So while an interesting supposition, I do not think the idea has any legs.


          It should also be noted that there is no indication that the patent right itself was so tremendously changed in the AIA.

          It’s pretty unambiguous that Congress intended patents to be subject to IPR.


            Don’t embarra$$ yourself by pretending that the discussion on IPR suffices for that additional discussion on the fundamental change in the nature of the patent.

            It clearly does not.

            You only weaken your case with such tactics.

      2. 6.2.2

        The constitutional argument is interesting. However, I think as was hinted to above, one can make the argument that the patent grant is not absolute (due to the broad power the constitution provides to Congress over patent term/scope) and that Congress has the right to make the grant conditional subject to outcome of IPR/PGR etc. This would not raise due process concerns.



          In addition to the replies already made to the hints, you have two very large drawbacks to your idea:

          1) Can Congress do that?
          2) Did Congress do that?

          Either of these two points suffice to end the supposition offered.

          As to 2), as noted, you appear to wish that Congress sub silento radically changed the nature of the patent right, without comment, and without the appropriate changes in the law in the associated sections that more directly discuss the nature of the patent right.

          You have offered nothing to compell me to arrive at that conclusion.

          (and that’s not even broaching the topic of whether Congress could so do)


            As to 2), as noted, you appear to wish that Congress sub silento radically changed the nature of the patent right, without comment, and without the appropriate changes in the law in the associated sections that more directly discuss the nature of the patent right.

            It had comment, and its own section is a proper place to put it, you’ll notice you won’t find maintenance fees (an analogous requirement) in 271 either.

      3. 6.2.3

        Random, but the constitution does not give congress the power give revocable privileges to inventors — and that is what they are if they can be revoked by the government and not by the courts. “Limited times” cannot be ignored.

        Limited times simply means the grant cannot be eternal as there is no utility to the public in a registration system. I’m not sure I agree with “the constitution does not give congress the power to give revocable privileges to inventors.” If that argument were true and literal, then maintenance fees are also unconstitional, because that is a means by which Congress and the administration can cause you to lose your property rights without a court. If they can force you take your grant subject to the payment of maintenance fees, then they can force you to take your grant subject to anything else. The key distinction is whether the requirement is up front or not. Maybe maintenance fees are unconstitutional, but I doubt it.

        The underpinnings of several of your citations relate land to contract law – but in each of those cases the grant was free and clear. Of course once you transfer a right you can’t turn around and take it back without the courts, but that is not the case for post-AIA filings – those grants weren’t free and clear. I think the correct ruling here is that pre-AIA cases aren’t subject to IPR, and post-AIA are.

    2. 6.3

      While I am loathe to agree with RandomGuy, non-obviousness is extremely weak if we look at the memory cards for minis and mainframes of 90s.

      A lot of the computer manufacturers provided memory cards with different capabilities for a given model of computer. The cards would identify themselves to the host computer, and different circuitry might handle the different memory card capabilities. The cards could also often be strapped for different computer models.

      To find prior art to show absence of non-obviousness under 103, I would search for memory patents

      1) that were granted in the late 80s and early 90s and

      2) that were assigned to IBM, DEC, Prime, WANG, DG, Clearpoint, DataRAM, Cambridge Memories, EMC, et al.

      If we broaden our search beyond memory technology to look for concepts that could be applied to flash memory, I would probably investigate tape and removable hard drive technologies.

      I have to point out that the independent claims are hideous even when treated as patentese and not as English. They are littered with nominative absolutes, dangling modifiers, and misuse of “wherein”. In one place, even “where” is used incorrectly.

      I have been reading claims for a long time, and there is no doubt that language abuse is becoming worse.

      Judges probably tolerate such nonsense because they have become as ignorant of prescriptive grammar as the patent prosecutors and the examiners are.

      1. 6.3.1

        A post into the vapor – how odd.

        In a nutshell then, Joachim note the post at 6.1.

        Yes, I too noted some infirmities in the claims and this then may not be the vehicle that the Supreme Court may choose to reach the constitutional issue.

        (s i g h)


          I saw Ned’s comment and read the brief after I posted that comment.

          I was responding to RandomGuy, who was not responding to Ned’s brief.

          In any case, Ned has convinced me that Inter Partes Review is out of control and probably unconstitutional. Will he convince the court?

          At this point I also believe that the attorneys representing HP could have done a better job of arguing against the charge of infringement, but in the end this failing did not seem to matter because the PTAB seems to have ignored the arguments of both parties during IPR.


            Fair enough Joachim.

            One more question of you, if I may:

            Let’s say for argument’s sake that Ned prevails on the unconstitutionality of IPR.

            What do you see as the ramifications of that (remember, the Congress explicitly rejected a severability savings clause in the AIA)…?


              “anon”: Let’s say for argument’s sake that Ned prevails on the unconstitutionality of IPR. What do you see as the ramifications of that (remember, the Congress explicitly rejected a severability savings clause in the AIA)…?

              For arguments sake, at the very worst, the entire AIA is tanked.

              Then it immediately gets passed all over again, with all the major pieces intact and a few more added, and most likely without the severability clause.

              Those are the “ramifications” I see.

              What “ramifications” do you see?


                Immediately gets passed all over again, with “all the major pieces” intact…

                Except the unconstitutional ones…?

                And you really think that such a smackdown would want to be even remotely chanced again by leaving out the several ability clause…?

                Um, sure, that’s a “nice” opinion “Malcolm”

                (Do I get “extra” points by “putting” things in “quotes,” or is that just some bizarre habit of “yours”?)

                1. Again: exactly what “ramifications” do you see, “anon”? Be clear. Use the English language and write in declarative sentences so we don’t have to guess about your beliefs (that are almost surely shared by only a tiny minority of wealthy people directly invested in the patent system).

                  Go ahead. Use that big mouth of yours to actually say something instead of just slinging innuendo and insults.

                  Good luck.

                2. Thanks Malcolm – let’s see what others have to say first with their respective “big mouths” (or was that insult just meant for me?)

                  Lol – what a doosh.


              What do you see as the ramifications of that (remember, the Congress explicitly rejected a severability savings clause in the AIA)…?

              Haha, the ramifications are that it IPR would be partially undone or fully undone. You don’t really think they’re going to declare billions of dollars worth of post-AIA patent grants illegal by finding the whole of the AIA unconstitutional, do you?


            Inter Partes Review is out of control

            Because a patent that you admit is terrible has survived IPR twice?


              Because a patent that you admit is terrible has survived IPR twice?

              To which patent are you referring?


                Joachim — my bad: Ned wrote that the patent survived two “ITC proceedings” and I read that as “IPR proceedings.”

                This patent has failed one IPR proceeding (the proceeding giving rise to this challenge).

                Still, given the admitted weaknesses in the patent, that surely isn’t evidence that the system is “out of control”. It shows that the IPR system is working to eliminate the worst patents that are being asserted, and is doing so in an efficient and relatively inexpensive manner — exactly what it was designed to do.

                1. MM, There is something called law, and the PTAB does not get to ignore it when HP fails to meet the burden of proof in the IPR however much the PTAB may wish to invalidate patent claims.

                  Ignoring the law is certainly evidence that the IPR is out of control.

  20. 5

    The Constitution says Congress can pass laws to give patents, i.e. give certain people rights vis-a-vis other people under certain circumstances. Congress passes such a law, establishing criteria under which a patent will be granted and setting up the PTO to administer the statutory plan, including determing whether or not a patent application meets the Congressionally-determined criteria. Why would it then be beyond the purview of that same administrative body to review its own work? In other words, if the executive branch can determine whether or not a patent application is allowable, why should only an Article III court be allowed to decide if the PTO had screwed up? Why should the executive be constitutionally barred from revisiting its own decision?

    Or to think of it another way, unlike land or money, there’s no implicit recognition in the Constitution that people are entitled to the bundle of rights we call a patent, there’s only recognition that Congress can establish such rights. So if Congress says, “you get patent rights when the PTO says you get them”, why should there be a constitutional problem with Congress further saying “and there’s no finality to the PTO’s decision, the PTO can reverse itself later if convinced that it made a mistake in the first instance”?

    1. 5.1

      So if Congress says, “you get patent rights when the PTO says you get them”, why should there be a constitutional problem with Congress further saying “and there’s no finality to the PTO’s decision, the PTO can reverse itself later if convinced that it made a mistake in the first instance”?

      I think they can do this, and they HAVE done it with respect to ACA grants.

      What they cannot do is grant a patent with no such reservation (i.e. the pre-ACA grants) and then turn around and deprive them of the property later. I also think they can properly diminish the market value of the property (i.e. remove or modify the remedy for a violation of the rights) at any time, but they did not do that here.

      1. 5.1.1

        Random, but, if the government (read, executive and legislative branches) can at any time revoke a patent, how is this consistent with the constitutional grant of power congress to grant inventors exclusive rights for limited times?


          Perhaps a different way of looking at Random’s point would be to ask if Congress hid the elephant of re instituting scire facies in the mouse hole of setting up the executive branch and Article I to do what nominally required an Article III court to do.

          The reply then would be that Congress itself does not have an unlimited reign to set the rules of the game, even as they are the proper branch of the government to set the rules of the game. Constitutionality must still be maintained even if it is the legislative branch doing the law writing.


            Anon, you are correct. I really don’t think the government will argue the shell game gambit that Random thinks might be pertinent. But it is certainly a different argument than the Federal Circuit gave in Patlex, and has the charm of meeting Marbury square on.

            What is the government to do? Say Patlex was not decided properly, but here is a better argument?

            I see that no one here is defending Patlex.

            The government brief is due March 5.


              I do try to be charming 😉

              (even as I do aim to misbehave – said in the best Malcolm Reynolds tones)


              I really don’t think the government will argue the shell game gambit that Random thinks might be pertinent.

              Of course not, their argument will be that IPR is constitutional, but I think you are right in your citations of prior law and I think to the extent there has been a transfer, there is controlling precedent.

              But the court will try to save the law if it can, and it has a means by which it can save it – it’s valid, but only for the new cases. If the court rules in your favor it would necessarily lock the judiciary into deciding every post-grant issue, as Congress would lack the power to institute an IPR regime in perpetuity. That quite ties both the court’s and congress’ hands – defending a patent case is expensive both in terms of cost and time, the former most defendants lack, the latter the court does.

              It makes a lot more logical sense to say that 15 years from now all patents in effect will be subject to IPR because it doesn’t harm quid pro quo at that point.

                1. You remain untethered to the underlying principles of the discussion here

                  No, you’re clearly the one that’s untethered.

                  Fun game!

                2. Except for the fact that I am not, you might almost have said something remotely meaningful Malcolm.

                  Try again.


                Random, check Executive Benefits, a Supreme Court case decided in 2014. link to scholar.google.com

                The Court coined the term “Stern claim.” Agency decisions are treated by Article III courts as recommended findings of fact and conclusions of law.


          if the government (read, executive and legislative branches) can at any time revoke a patent, how is this consistent with the constitutional grant of power congress to grant inventors exclusive rights for limited times?

          A patent invalidated in the course of an IPR proceeding was certainly granted for a “limited time” under any straightforward definition of that term.

          There’s no inconsistency there unless give “limited time” a very, very narrow, specific and strict interpretation and I don’t see any reason to do that, nor any indication that the term has ever been interpreted in that manner (on the contrary).


          Random, but, if the government (read, executive and legislative branches) can at any time revoke a patent, how is this consistent with the constitutional grant of power congress to grant inventors exclusive rights for limited times?

          Well, first, Congress does provide a means by which the patent grant can be revoked without going through the courts that is totally uncontroversial (maintenance fees).

          Second, you have the same issue in your argument that opponents of same-sex marriage have – you’re hinged upon the definition of a term necessarily having a quality that evidence suggests it has only had by custom. I don’t think a definition of a patent requires 1) any particular right (merely that rights granted be exclusive in nature) or 2) a full transfer rather than a lease.

          For example, when we (I think it was you) discussed “substantially making” here and then shipping overseas to complete – that statute came about because the Court said that substantially making a) was not a right but b) congress could make it a right and then c) congress did. The rights that can be granted by a patent are fluid. I think you would find that historically patents, like incorporation, were much closer to leases than transfers as they both took subject to the crown a) being able to take back and b) upon payment of fees and taxes. The fact that Congress has chosen to make the rights largely of a transfer variety (by leaving few means in the grant by which it can claw back) is simply a choice they’ve made, and the grant of power to Congress (to grant “patents”) does not require a particular type of transfer.

          Once you come to the conclusion that rights can be fluid, the question is what rights were actually conveyed, which gives rise to the dichotomy – Pre-AIA grants took rights subject to the maintenance requirement. Post-AIA grants took rights subject to the maintenance requirement and the IPR review clause. It’s a simple matter of contract law – Your citations are to cases where the government granted and then sought to use it’s sovereign to essentially re-write the contract; post facto. But there is no post facto issue with the post-AIA grants.



            Contract terms…

            That’s a pretty rich fantasy proposition there Random.

            Which alternate universe do you hail from?


            Random, the power to impose taxes on property was well recognized prior to 1791. Your reference to maintenance fees is inapt.

            Prior to 1791, actions to revoke a patent were tried on the common law side of chancery with disputed facts tried to a jury. The Supreme Court has already ruled that newly minted statutory rights that have common law analogs that bore a right to a trial by jury are not public rights. They must be tried in Article III courts.


          I’m thinking that neither Congress nor the Constitution give anyone any rights in an invalid patent for any period of time. I would argue that you have no property rights in a invalid patent, just as you have no property rights in contraband. Consider that people are arrested every day for possession of contraband, such as drugs, which is seized. The arrestees will never get their property back, even if they are never charged, let alone tried and convicted. Likewise, jury trials are not constitutionally required in civil forfeiture actions, and the seventh amendment is not offended. In fact, all of these procedures, including IPRs, are more like actions in rem.


            You are missing the point about the presumption of validity in any and all issued patents…

            (it’s an important bit in that the AIA did not address or affect that important portion of the law)

    2. 5.2

      Still Confused,

      One reason for your being confused is that you are focusing too much on the primacy aspect of the right involved.

      It is not at issue whether or not the right has such a primacy aspect. Rather, once the right has in fact been created, the question is – what then? The closer parallel here is with voting rights in that regard. Once the right has been created, optionality of creating that right in the first place is mooted and no longer germane.

      1. 5.2.1

        Disclaimer: Only a possible argument after a few minutes of thinking.

        I think one could argue that a valid patent is what confers rights, not just an issued patent. If an issued patent is shown to be invalid, then the rights never vested (as if the patent never issued). Thus, an IPR does not take away any rights, it just clarifies that no rights were actually every vested in the patent owner upon issuance of the patent.


          The ordinary squirrel misses the ordinary nut:

          All issued patents carry the presumption of validity.

          That is a stick in the bundle of property rights that is removed de facto at the onset of the IPR, so your conclusion here is not reached.

  21. 4

    Dennis: More than 100 companies have been sued for infringement over the past six years, but no court has yet found the claims invalid.

    Question: how many court cases were filed and how many of those cases were decided for the patentee (as opposed to settling)?

    1. 4.1

      MM, well no court decision is final. But there were two ITC proceedings involving the patent. The patent survived both.

    2. 4.2

      Because “settling” is….?

      (are you insinuating the “tr011” argument?)

      – – –

      Glancing at the claims themselves, I see not only a lot of action words in the device claim, but also an uncomfortable amount of “merely capable of” and “in the event of” optional type language…

      This is seemingly the poster child of the type of claim language routinely denigrated by a certain set of blog posters of this ecosystem.

  22. 2

    Isn’t MCM supposed to explain how Stern overrules Patlex? It seems to me that the court in Stern was quite careful to separate the evaluation of private rights from the evaluation and review of public rights, which was the same delineation that Patlex made. MCM’s sole paragraph devoted to this topic was merely conclusory.

    1. 2.1

      APoTU, We do. Just read the section of the brief addressing the con law issue.

      Briefly, Patlex justified the PTO revoking patents for invalidity rather than the court because in its view patents were public rights. Since Patlex, the Supreme Court has issued numerous decisions on public rights, including the 2011 Stern v. Marshall case that narrowly cabinned the public rights doctrine to the government acting in its sovereign capacity in areas where it traditionally acted, as in dealing with its tax collectors. See, Murray’s Lessee, the case announcing the doctrine.

      In contrast, actions to enforce and to revoke patents were both litigated in English courts prior to 1789, and thus patents cannot be public rights.

    2. 2.2

      Actually, the MCM brief does an excellent job of distinguishing Patlex.

      Patlex allowed the PTO to cancel a claim in re-examination because the patent owner had the unlimited right to amend the claim. Because the patent owner has no right to amend a claim in an AIA post-grant proceeding — and, as a practical matter the PTAB doesn’t allow claim amendments — Patlex does not control.

      In my opinion, the constitutional challenge is valid, and I would declare the AIA post-grant proceedings unconstitutional.

      1. 2.2.1


        If you don’t mind then, the same follow up question to you as posed to Joachim at post…


          Anon –

          If Congress had ensured that a patent owner had a right to amend the claims — and not the limited motion practice that the Office has created — then Patlex would apply and the AIA would be constitutional.


            That’s not the question.

            Let me guide you:

            Let’s take for argument’s sake that Congress did not and that the AIA this IS not.

            What next…?


            Also, Patlex turns on the public right/private right issue, yes? How does “the right to amend claims” change that equation?


            Jason, if the patent owner proposes and accepts an amended reexamined claim, he effectively waives his constitution rights. See, Stern v. Marshall and McCormick.

            But if he simply stands his ground and his claim is revoked against his will by the PTO, we have the same thing as a IPR.

      2. 2.2.2

        Jason, the District Court in Patlex justified the constitutionality of re-examinations against the will of the patent owner on the basis that patent owner had a statutory right to a trial de novo in an Article III court. (There should be no question that re-examinations invoked by the patent owner are constitutional.)

        If you take a look at Executive Benefits Ins. Agency v. Arkison, 134 S. Ct. 2165, 573 U.S., 189 L. Ed. 2d 83 (2014), the Supreme Court believed a trial de novo was sufficient to rescue actions tried by Article I judges. The findings of administrative judge were treated as proposed findings of fact and conclusions of law.

        The Supreme Court called these kind of actions, de novo review of decisions made by administrative judges, “Stern claims.”

        However, the AIA removed the trial de novo with respect to re-examinations thus throwing their constitutionality into question.

Comments are closed.