Supreme Court Denies Appeal on Constitutionality of First-to-File Patent System

by Dennis Crouch

The Supreme Court has denied MadStad Engineering’s petition for writ of certiorari in its case arguing that the first-to-file patent system is unconstitutional because the new law awards rights for the filing of a patent application and no longer requires invention.

Rather than reaching the merits, the district court found that MadStad lacked standing to file the lawsuit because the plaintiff could not prove any particular injury due to the law’s enactment. That decision was then affirmed by the Federal Circuit.  The denial of certiorari here appears to end this particular lawsuit. However, I expect that another party – perhaps one whose patent application has been rejected under the new law – will take-up the mantle and force a court to address the real issue.

37 thoughts on “Supreme Court Denies Appeal on Constitutionality of First-to-File Patent System

  1. 5

    If Congress (by some quirk of fate) were to enact a law which directly contravened the right to life, explicitly purported to take away the individual right to life of every citizen, would someone be able to argue that the purported removal or explicit repudiation of an individual’s right is in itself a form of harm/injury…

    or does some particular individual need to actually die or be severely injured in order for the threshold to be met?

      1. 5.1.1

        Ha. Touche.

        Just wondering in the jurisprudence it has ever been ruled that invalid repudiation of rights itself as a form of harm/injury or whether some actual event or consequence in reality (resulting from the repudiation) always has to occur for standing.


          Again, there is a middle ground. An “imminent” injury can be enough. See Lujan v. Defenders of Wildlife.

          No, I don’t think it’s ever been ruled that a hypothetical invasion of a right is enough to confer standing. Again, see Lujan v. Defenders of Wildlife.


            So to have the right or standing necessary to challenge the law one need not pay the price of actual suffering only the risk of imminent suffering.

            Good to know where the law stands…


              … only the risk of imminent suffering

              If the imminent suffering is likely to be serious, as in your hypothetical, I think you could probably get a temporary injunction while your case is being heard…


            How about injury of a purely subjective and future based conjectural “might tend to impede innovation” of others – with such innovation of others not even present?

            Does that type of “injury” have standing? Impute authority for an Article III Court?

  2. 4

    One thing I wonder is whether the SCOTUS will take a big out by saying that patents could be issued as part of another section of the Constitution.


          Not really anon. The point is that Ned is trying to use the interpretation of “patent” from common law when the Constitution was written. If “patent” in the patent statutes is being granted based on different section of the Constitution, then Ned’s arguments are out the window.


            Really Night Writer.

            It is either a rose or it is not a rose – no matter the label you stick on it.

            If you want to fantasize about a new thing (perhaps from the commerce clause, ala a “functional” trademark), then all if the “patent” rules would be off the table (for example, the new right lasting forever), and you really are not talking about patents anymore.

            You cannot be halfway pregnant.


              That’s the point isn’t it? I agree with Ned actually. But, I see that the SCOTUS has decided that they can just interpret “patent” without regard to its meaning at the time the Constitution was written.

              I think Ned is right that this is a greatly overlooked part of the SCOTUS jurisprudence.

    1. 4.2

      Night, this is an interesting question because Hatch-Waxman seems to grant exclusive rights for simply challenging the validity or infringement of drug patent regulated by the FDA.

      Where does congress get that authority?

      1. 4.2.1

        I think you are actually on to something Ned. I think the SCOTUS / Congress do not have the right to just re-define the patent right. That is what they have done, but on what basis? They seem to ignore the “patent” right at the time of the Constitution and think a patent is just anything they decide it to be.


          When the Supreme Court can do their magic waive [sic] and take something given by both parties as fully being in a statutory category and make that thing into an idea (and an undefined “abstract” idea at that) through their (non-limited) “Gist/Abstract” sword, the word “patent” itself is no shield to the cleaving power of the sword.

          Yes, we have repeated history and are back in the day of “the only valid patent is one that has not yet appeared before the court” (if the court feels like invalidating the patent, the court WILL invalidate the patent).


            Newman’s dissent in Bilski tells us why “abstract idea” is a strange sword to be using. Engineering tells us if there is a way to walk up and down the ladder and get real work done, then it is not abstract if the components to walk up and down the ladder are part of the invention.

            But, this takes more than 10 seconds to understand so the vast majority of people will never understand it.


              And yet well over 95% of claims of any value routinely employ that technique…

              The rare absolute picture claims including 3D orientation making up that small small small other percent. You know, the ones that utilize that optional form of claim drafting that certain posters routinely seem to want to misconstrue as being the only form of claim…

  3. 2

    Paul, good observation about 131 affidavits.

    As soon as someone tried to overcome a prior art rejection with a 131 and is denied…

    1. 2.1

      Ned, I don’t see how it could occur that way, since a Rule 131 declaration in any AIA-subject application would be rejected simply on the basis that Rule 131 and 102(g) both simply no longer exist for such patent applications. That would not ever even arise to a Constitutional issue.
      Nor is the Sup. Ct. ever going to agree that the current forms of Rule 131 and 102(g) are the only and Constitutionally immutable ways that Congress can decide what is prior art and who gets patent rights between different applicants. Since you are a student of ancient patent cases, you must be aware of earlier definitions and systems for that?

      1. 2.1.1

        Another issue to overcome in a constitutional attack here is how do you overcome the argument that even old 102 also excluded a huge number of inventors who were first to invent from ever getting patents, also for delaying filing their applications? Including all those who simply delayed filing more than a year after any U.S. public disclosure by anyone, even themselves?


          Paul, Pennock v. Dialog.

          But there the court ruled that the first inventor had effectively abandoned his right to a patent by publicly using and selling products embodying the invention prior to filing for a patent.

          102(b) essentially added a grace period – it did not subtract anything.

          The original statutes barred everyone but US citizens from obtaining a patent.

          The original statutes provided that use anywhere was prior art.

          And the beat goes on.

          But both in England and the US, when two inventors sought to obtain a patent, the patent went to the first inventor.

          Caveat: also in England, the writ scire facias would lie to “repeal” a second patent on the same invention. I suppose a defense in such an action would be that the second to issue patent was invented first, because first inventorship was also the rule in England.

      2. 2.1.2

        Paul, good points here. I will have to think carefully about the distinction between rules and statutes that no longer exist, and the fundamental issue of granting a patent to another on the same invention, while denying the same to the first inventor, where neither inventor is otherwise disabled by statute from obtaining a patent.

        Perhaps if you put your lawyer hat on for a second and pretended you were hired by the likes of Madstad to describe a situation where the issue of first-to-file vs. first to invent were the only dispositive issue….

        It is an interesting topic.



          Madstad had run the circuit while his case was pending and I actually had the opportunity to converse with him.

          He was unable (or unwilling) to see and understand that a first inventor only has an inchoate right – not an absolute and finalized one.

          I will remind you again of the entire “race” analogy dictates that multiple true inventors not only can, but do exist – and are a given that such exist – for the purpose of the laws of Congress to turn ANY inchoate right into the full patent right.

          There is no such thing as patent law written for a “race of one.” The “one” is the winner of the race; a race for which many may in fact be at the starting line.

          Madstad’s legal argument simply failed to account for this – failed to even recognize the pre-AIA race conditions as set by Congress to turn the inchoate “right” into an actual patent right.


            I hear you to say that increased security (his basis for standing) has little or nothing to do with the move to first to file because Madstad has no “right” to a patent that he lost to anyone.

            So, while he might have been “harmed” by the AIA, he was not harmed by the first to invent aspects of the legislation.

            Is this consistent with your argument?


              It is an interesting thought but has nothing to do with what I am saying.

              Point blank, Madstad’s view on only the very first to invent lacked an appreciation of what an inchoate right is. This f@tal flaw in Madstad’s thinking was NOT limited to his speaking out against the AIA, and would have been f@tal to his position even under pre-AIA law.


                anon, well let me agree in principle that the only clear cut way that one can get standing is if one

                first establishes a right to a patent — all other things being equal –;

                second that he is denied his patent because another filed first on the very same invention; and

                third, that he can prove prior invention, i.e., actual reduction to practice, etc., and no abandonment suppression or concealment.

    2. 2.2


      A couple days ago I posted another court action concerning a constitutional challenge that I thought that you might find of interest. It was behind a paywall, so I did not provide a link. Have you looked at it?

      The case was 1:14-cv-00672-GBL-JFA, Cooper v. Lee.

      Judge Gerald Bruce Lee shot down the attempt as being premature, but interestingly added that even if mature, the challenge “will ultimately fail.”

      For the MadStad case, as we discussed, MadStad had severe infirmities based on his not grasping the nature of an inchoate right. This nature would help Paul Morgan out in his musings at 2.1.1.

      1. 2.2.1

        Let us “muse further” [a good term] re your and Neds arguments. Many of the pre-AIA 102(b) alleged unconstitutional “takings” of patent rights from prior inventors are not even by application rejections, they are by invalidation of their issued patents, when they are asserted, when a court determines there was a 102(b) bar act from facts uncovered in discovery.

      2. 2.2.2

        anon, thanks.

        Cooper is attempting to file an amicus in our appeal. His argument is somewhat different than the argument we present.

      3. 2.2.3

        Anon – re: “will ultimately fail” – I read this as merely a reference to a fact that the CAFC has previously decided the patents / pub rights issue, not as J. Lee’s view on the potential merits of the claim.


          No qwerty, the judge’s comments were directed to the merits of the claim before him. There is no justification whatsoever to attempt to move the statement to mean something else.


            uh yes, exactly – “the judge’s comments were directed to the merits of the claim before him [that had previously been decided by the CAFC, which controls J. Lee’s determination].” cases of this variety are obviously scotus or bust.

  4. 1

    How far a party would have to go to even get over this personal injury threshold is interesting. It should require proof that one’s later-filed application claims were barred by any earlier filed application, over which one can prove a prior invention date than the invention date of the earlier applicant under the requirements of 102(g) and its Fed. Cir. case law. That is, a complete prior actual reduction to practice or prior conception plus continuous diligence. Considering how rarely a challenged Rule 131 declaration has ever held up when tested in litigation, finding such a party may not be that easy. But only then should the actual issue of constitutionality [a denial of Congressional authority to define “inventor”] be considered, unless all inventorship decisions under 102(g) are also being challenged?

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