Federal Circuit: The IPR System is Constitutional

by Dennis Crouch

In a precedential opinion, the Federal Circuit has rejected MCM’s foundational challenges against the Inter Partes Review (IPR) system implemented as a result of the America Invents Act of 2011 (AIA).

MCM Portfolio v. HP (Fed. Cir. 2015) (MCM.decision)

In particular, the court held that the IPR system does not violate Article III of the U.S. Constitution nor does it violate the Seventh Amendment of the U.S. Constitution.  On the merits, the court then affirmed the PTAB’s decision cancelling MCM’s challenged claims as obvious.  The court writes:

The teachings of the Supreme Court in Thomas, Schor, and Stern compel the conclusion that assigning review of patent validity to the PTO is consistent with Article III. . . . . [Furthermore we] are bound by prior Federal Circuit precedent. . . . We see no basis to distinguish the reexamination proceeding in Patlex from inter partes review. . . .

Because patent rights are public rights, and their validity susceptible to review by an administrative agency, the Seventh Amendment poses no barrier to agency adjudication without a jury.

The decision here also essentially forecloses Carl Cooper’s parallel proceedings. However, both parties are likely to request rehearing en banc followed by petitions for writ of certiorari.

285 thoughts on “Federal Circuit: The IPR System is Constitutional

  1. 27

    Chief Justice Roberts, writing for the Court, noted the long history of private property being secured against uncompensated takings by the government, beginning with the Magna Carta some 800 years ago. In further support, Roberts cited a Supreme Court opinion from the late nineteenth century:

    Nothing in this history suggests that personal property was any less protected against physical appropriation than real property. As this Court summed up in James v. Campbell, 104 U.S. 356, 358 (1882), a case concerning the alleged appropriation of a patent by the Government:

    The Federal Circuit case you cite has been preempted by the U.S. Supreme Court’s Horne v Department of Agriculture

    See link to supremecourt.gov

    Chief Justice Roberts, writing for the Court, noted the long history of private property being secured against uncompensated takings by the government, beginning with the Magna Carta some 800 years ago. In further support, Roberts cited a Supreme Court opinion from the late nineteenth century:

    “[A patent] confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser.”

    1. 27.2

      Ray, the holding that a patent is property is seeming undisputed. This alone should be enough to spike the Federal Circuit’s idea that a patent is a public right. But it did not, which means that the Federal Circuit does not see the conflict.

      But the more cynical view is that it is fully aware of the conflict.

      1. 27.2.1

        Ned,

        I do not see ANY views that do not pose some extremely serious questions as to the judicial actions.

        (Do you remember one of my initial comments to your oral argument? that you left out the property aspect?)

        1. 27.2.1.1

          I argued Marbury at oral argument. That was all about legal rights — property.

          The determination of their validity is a judicial functional, one for the courts.

          Taking is a different issue. The patent is valid, but is used by the government for governmental purposes. This is known as a taking by the government; and the Supreme Court has held many types that such taking must be compensated under the Constitution.

          1. 27.2.1.1.1

            A regulatory taking includes the removal of sticks out of the bundle of property rights.

            Guess what the AIA does at the initiation of the IPR…

            1. 27.2.1.1.1.1

              anon, but now you are talking about limiting the legal remedies. There is a difference between remedy and validity.

              1. 27.2.1.1.1.1.1

                I am doing no such thing Ned.

                And while there is a difference between remedy and validity, I am talking about sticks in the bundle of property rights that a granted patent has.

                This is not difficult to follow along with.

  2. 26

    All you boys and girls just remember that the might Night Writer predicted another outcome correctly. Again, and again, I have predicted the outcomes of these cases.

    1. 26.1

      With all due respect, this outcome was not very difficult to predict if you had been reading modern case law and weren’t financially invested in the case directly or indirectly.

      1. 26.1.1

        (Sticky y key).

        I agree. I am merely taunting the other commentators. They regularly refuse to predict the outcome of the cases and compete with me. To my mind the ultimate test is your ability to predict the outcome of these cases.

        I’ve been doing it for years and haven’t missed one yet. The others refuse to compete (except 6.)

      2. 26.1.2

        It is no secret that the CAFC is wed to the interests of the USPTO. My guess is the litigants did not expect relief before the CAFC – hence Cooper’s attempt to stick this into the 4th Circuit.

        This challenge has likely always been SCOTUS or bust.

        If certiorari is granted, watch out. The MCM decision didn’t even come close to articulating the relevant rule, let alone harmonizing this delegation of power with it.

        1. 26.1.2.1

          And, I predict no en banc rehearing and no Certiorari. The SCOTUS can sit on it and pick it up in 10 years if they feel like it.

          (See, I put my rep out on the line with real predictions.)

            1. 26.1.2.1.1.1

              Ryan,

              How many jaywalking cases do they have?

              In other words, your attempt at “perspective” itself lacks perspective.

              If you want to discuss things other than patent law, there are plenty of places that you can go to.

              1. 26.1.2.1.1.1.1

                Anon. I am just saying that among the other issues the court is dealing with, this is probably not high on the list.

                1. It should be.

                  True, this is not a “life and death” matter, but when you consider the implications here and compare them to the implications in a mere Justice of the Peace commission case, well, this does seem a mite important, eh?

                2. What implications?

                  The implications of eliminating IPRs and all reexaminations since the 80s are far worse than refusing to tear the system down via judicial edict.

                3. Ryan,

                  There are several important implications.

                  Implications for patent law.
                  Implications for the relative power of the three branches of government.

                  It is NOT so much the parade of horribles of eliminating IPRs and all reexamiantions as you would have it.

                  The government IS allowed to engage in takings – think eminent domain.

                  It is that such takings MUST still comport with constitutional limitations.

                  Further, the notion that “refusing to tear the system down via judicial edict” is a false one, as you would seem to imply that the tearing down is a whimsical one based on nothing more than what a judge (or Justice – in appropriate numbers) would “feel” like doing, as opposed to a more directed reasoning that some aspect is just NOT in accord with our constitution, and MUST be stopped.

                  You seem to seek options where no options exist.

                4. Academic…?

                  I have no idea what you mean (or what you think that you mean) with the phrase in this context.

                  Maybe I can get a grant from Google and Microsoft, and write an “academic” paper on that…

                5. Ryan, not all, only those since 2011 when de novo review was removed and then only for those who actually asserted their jury trial and Article III rights. See, Wellness v Sharif.

                  That brings it down to just 3, MCM, Cooper and one other.

            2. 26.1.2.1.1.2

              The Supreme Court might be very interested in Congress streamlining civil litigation by shunting a certain amount of the work to Article I courts instead of Article III courts. That patent is the subject matter of the first bite on that apple is coincidence. Like the well-pleaded complaint rule. It just happened to be a patent case, but the importance was not about patent law.

              1. 26.1.2.1.1.2.1

                Erik, indeed. If IPRs were had only an insignificant impact, they could ignore the issue. But IPRs were designed to replace validity litigation, and in that, they have been very successful.

        2. 26.1.2.2

          David,

          You are not getting any argument from me on this (so your crack below with the Malcolm conflation sticks out as you holding some odd sort of grudge), but I do draw your attention to a select group of (regular) contributors here only F A R too eager to think the decision here to be a “great” piece of jurisprudence when it is so obviously not.

          The Ends by whatever Means mindset so displayed is – I put to you – just as, if not more so, “bad” than the poor jurisprudence itself.

          1. 26.1.2.2.1

            Night,

            On the one hand, you are certainly playing the odds. On the other, we are talking about an astronomical delegation of Article III power where the authorizing Court of Appeals aggressively declined to either address or apply the governing legal standard. Additionally, that same Court of Appeals mischaracterized the SCOTUS precedent precluding the precise thing that IPR does today.

            Further, that same Court of Appeals made very clear to the nation in a precedential opinion that per the designation as a public right, the patent validity cause of action may be removed entirely from the Article III courts. In other words, per this holding, a vested property right may be resolved exclusively by an Article I administrator susceptible to the whims of the legislative branch. Of course, this is not the current law, but it could be after this ruling – which, to put it bluntly, is simply just un-American.

            Where the SCOTUS at times remarks that one of its loftiness responsibilities is to enforce and to protect the separation of powers, this case seems destined to end up before it. Of course, these predictions are hard to make.

            Anon – I see your point. However, if certiorari is granted, the pragmatics v rule of law argument will toothless.

            1. 26.1.2.2.1.1

              David, I am not playing the odds (nice slight.) I am playing the politics. The SCOTUS is not going to touch this with a 12 foot pole right now because it would so disruptive. There are many excuses they could give, e.g. not ripe enough, let other circuits look at this issue or similar issues, etc.

              I think there is merit to your arguments, but the SCOTUS can just put this one away for 5 or 10 years before dealing with it, and the Fed. Cir. is —like or not—been appointed with the consent of Google. They are not going to hear this en banc.

            2. 26.1.2.2.1.2

              I think an interesting thing to do would be to assert Alice arguments in an IPR. Get the IPR instituted but the 101 argument (some claims would have to survive) dismissed by the PTAB. Then appeal to the Fed. Cir. saying that a Constitutional issue can be raised at the PTAB and the holding of Alice is that the grant of the claims was Unconstitutional.

              Might work.

            3. 26.1.2.2.1.3

              David, I assume you are on board for an amicus brief (at least). Let me know privately. I really appreciate your support here.

              Also, please contact me privately if you or your client would like to support further court review in some fashion (en banc, cert).

              1. 26.1.2.2.1.3.1

                Ned,

                If resources are low, you should contemplate supporting Cooper as amicus in whatever he does next.

      3. 26.1.3

        Ryan,

        Your “reading modern case law” ig nores the fact that the scoreboard is broken.

        That’s a rather important (and hence recurring) theme.

          1. 26.1.3.1.1

            The “scoreboard is broken” message has to do with the mistaken (and dangerously so) notion that the Supreme Court simply “cannot” be wrong when it comes to constitutional matters.

            It is pernicious notion that the Supreme Court itself is somehow above the law and has no real checks and balances when it comes to our tri-partitie form of government.

            It also is directly tied to EVERY attorney and EACH attorney’s state oath, which is NOT geared to unrelenting fealty to the Court, but rather, to the Constitution. It is absolutely critical to understand and recognize that this distinction necessarily means that the Court is NEITHER “the weakest branch” NOR has unlimited power to mould the law to its desired Ends.

            I would recommend you to read the Federalist and anti-federalist exchange between Publius and Brutus and realize that the power balance between the branches is NOT static. The danger of giving too much power to any one branch is a very real and imminent danger.

              1. 26.1.3.1.1.1.1

                Twice in short order you have used that word, and both times you have decided to actually NOT talk directly to the point that I provided.

                Seems like a code word of yours for evasion.

                Whether or not you “feel” this is “academic” is entirely besides the point of the discussion.

                I invite you to stop evading and to return to that discussion.
                …or if I were to join you in your diversion, perhaps you and Prof. Contreras might offer some “insight” as to why the Executive Office STILL has not addressed the propaganda nature of the “TR011” issue that Ron Katznelson has requested (maybe that’s “human” enough for you…).

        1. 26.1.4.1

          Ned,

          I read all the cases. I read your brief and the reply brief. I read the decision.

          Just because somebody disagrees does not mean that they don’t understand.

          Have you ever considered that you may just be wrong on this issue?

          1. 26.1.4.1.1

            Ryan, of course.

            But there are a significant number of people who disagree with the Federal Circuit on this issue. It is not just me.

  3. 25

    MM writes:

    At the end of the day, a doctrine that forbids a rights-granting agency like the PTO from re-evaluating its own shoddy work and removing restrictions on public freedom is a nonsense doctrine. Take that as a prediction of what will happen should the Supreme Court grant cert here (which I doubt they will given the reasonableness of what the CAFC just wrote).

    If the PTO has been doing such a shoddy job in issuing patents, the last way to fix the resulting problem is giving it the opportunity to reevaluate its own work and to revoke patents.

    Logically we should assume that it will simply do a shoddy job in revoking patents. Until the rotten apples among the examiners and the APJs are terminated,* a special Article III tribunal needs to tasked with cleaning up the patent mess if the existing Article III tribunals are not sufficient.

    * I personally am tired of puzzling through office actions that are incomprehensible because the examiner does not have sufficient command of English.

    1. 25.1

      Sorry, I meant the following.

      MM writes:

      At the end of the day, a doctrine that forbids a rights-granting agency like the PTO from re-evaluating its own shoddy work and removing restrictions on public freedom is a nonsense doctrine. Take that as a prediction of what will happen should the Supreme Court grant cert here (which I doubt they will given the reasonableness of what the CAFC just wrote).

      If the PTO has been doing such a shoddy job in issuing patents, the last way to fix the resulting problem is giving it the opportunity to reevaluate its own work and to revoke patents.

      Logically we should assume that it will simply do a shoddy job in revoking patents. Until the rotten apples among the examiners and the APJs are terminated,* a special Article III tribunal needs to tasked with cleaning up the patent mess if the existing Article III tribunals are not sufficient.

      * I personally am tired of puzzling through office actions that are incomprehensible because the examiner does not have sufficient command of English.

    2. 25.2

      JM: If the PTO has been doing such a shoddy job in issuing patents, the last way to fix the resulting problem is giving it the opportunity to reevaluate its own work and to revoke patents.

      Except that this time around there is a third party holding the PTO’s hand. That’s an important difference.

      Logically we should assume that it will simply do a shoddy job in revoking patents.

      See above. Logically, instead of making an assumption, you should look to see what patents are actually being invalidated in IPR proceedings and how/why that’s occurring.. What you’ll find is that the system is fair and its working. If you’ve got evidence to the contrary, let’s hear it.

      Listen to the oral arguments of cases arising out of IPRs sometime. Most of the cases being appealed to the CAFC from the PTO aren’t even close (and, as far as I can tell, most result in Rule 36 affirmances). That should tell you something about the cases that aren’t being appealed.

      1. 25.2.1

        It tells me that there is an utter lack of faith in the CAFC to perform its role as watchdog of the federal bureaucracy.

        1. 25.2.1.1

          I hope the FBI and the SEC are monitoring very closely.

          Even more important the current laws and the organization of the PTO are a setup for a major corruption scandal far worse than Teapot Dome. (I have consulted off and on for a long time in the financial industry.)

          I think we all remember the RIM NTP litigation in which there were ex parte discussions between the RIM legal team and examiners or possibly other PTO officials in violation of 37 CFR 1.560(a) [“requests that reexamination requesters participate in interviews with examiners will not be granted”] and of 37 CFR 1.955 [“interviews prohibited in inter partes reexamination proceedings”].

          Was this case the first such incident? Is such behavior ongoing?

          With the combination of:

          post-GATT patent application publication and patent term rules,

          AIA IPRs,

          secret “QA” programs like SAWS or Second Look,

          the revolving door between the PTO and big corporations,

          the opening of satellite PTO offices in major tech centers,

          the tremendous transfers of money that can hinge on granting, stalling, or canceling patents,

          the uncertainties created by two different claim construction procedures,

          the ease of checking patents or patent applications online, and

          the statutory limitations on relief from PTO abuses,

          I would surprised if there is not already secret black market on revoking claims or on stalling patent prosecution.

          The financial disaster that was occasioned by the repeal of Glass Steagall was an object lesson that if it’s possible to make money by criminal behavior, some will try.

          Decisions to institute IPRs, forthcoming claim cancellations, rejections of patent application claims, efforts to slow down prosecutions under a secret “quality assurance” program like SAWS or Second Look are all valuable insider info that can affect equity value. If private entities are receiving ex parte access to such info, it is a violation of insider trading law because such information gives tremendous advantages in timing when to sell or to hold various financial instruments.

          Section 9 (b) of the STOCK act — unfortunately passed after the above incident — is quite clear that executive branch employees are subject to the same strictures on passing insider information as those in private industry.

          Those APJs, examiners, and other PTO personnel involved in the conspiracy to pass insider info to RIM really belong in jail with Wall Street crooks.

          BTW, it is not impossible that the issuance of crap patents was encouraged in a long term plan by a few insiders to use the PTO as a money machine by peddling revocations or prosecution stalling. Strategies comparable to the preceding hypothesis are executed all the time on Wall Street (e.g., Goldman Sachs and Paul Johnson). If Wall Streeters like Kyle Bass can come up with legal plans to use the PTO to make money in securities trading, why can’t insiders at the PTO come up with illegal plans to do exactly the same thing?

          1. 25.2.1.1.1

            why can’t insiders at the PTO come up with illegal plans to do exactly the same thing?

            Have you heard of this guy Dave Kappos?

      2. 25.2.2

        LOL – Malcolm and his “third party”…..

        Sort of like Mr. Bass….

        Oops, wait, he’s one of those prime G-g-grifters, isn’t he?

        1. 25.2.2.1

          Malcolm and his “third party”….. Sort of like Mr. Bass….

          Sort of. If Mr. Bass is actually helping to remove improvidently granted patents from the system, good for him.

          If he’s just playing games because he’s a greedy rich entitled pile of toxic waste, then I hope he gets his comeuppance soon.

          1. 25.2.2.1.1

            More one way editing…

            Time and time again, the one way C R P is the outcome of the editing here.

            And the good prof wonders why he has an ec(h)osystem issue….

  4. 24

    Does a patent benefit the inventor or the public?

    The CAFC vests further control over the deteriorating US position as a technology leader in the hands of an unelected board of practitioners who, until they accepted positions that pay 25% of what a skilled practitioner might otherwise make, were routinely wrong 90% of the time in the eyes of the CAFC, and who instantaneously switch to being right 90% of the time once they cross over to the other side of the PTAB bar. Not only that, but these same unelected bureaucrats can regulate their own workload by rejecting expensive petitions, and those decisions cannot be reviewed. Not that it would matter, because as we have seen they are right 90% of the time. Its a good thing that we have the CAFC watching closely over this patent star chamber.

    1. 24.1

      Grinch: who instantaneously switch to being right 90% of the time once they cross over to the other side of the PTAB bar.

      You’ve conveniently forgotten that a third party is very actively assisting the PTO in an IPR proceeding. Huge difference.

  5. 23

    A little off point, but have you considered that the holding in Alice is that it was unconstitutional to grant the claims. I know that is not verbatim what they said, but that is the holding.

    That means that Alice attacks should be able to be made in an IPR. (Not that I like this, but I think it is a real argument.)

    1. 23.1

      Curious re the argument that Alice was a Constitutional holding. Not from the Alice case itself. Where can one get that from the long history of defining what is patentable subject matter that Alice relies on? E.g., the Supreme Court many years earlier in Diamond v. Chakrabarty specifically stated that: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). ”
      Did any of those earlier Sup.Ct. decisions rely on limitations in the patent clause of the Constitution?

      1. 23.1.1

        Post 1952 cases carefully tied themselves to the non-constitutional statutory text.

        That is why we talk about exceptions to 101 (as opposed to a better fit with 112, least wise in some aspects).

        At first the Court was more careful because there was a greater awareness that Congress had revoked a previously granted common law power to set the meaning of the word “invention.”

        That changed in 1952, of course.

        There is – and should be abundantly well understood – a clear difference between statutory and common law.

        Further, the constitutional portion that you all wish to “reach” to was merely the grant of proper authority as to which branch. There was NO substantive patent law (with the particularity say of statutory categories) in that constitutional grant from which the Court could even attempt to use for its own re-write.

        ANY such “law” is ultra vires and truly without force.

  6. 22

    Why wasn’t the 5th Amendment/Takings issue raised or considered?? Has his issue been raised in the 4th Circuit appeal by Carl Cooper? Does anyone know??

      1. 22.1.1

        SCOTUS, June 2015:

        “Nothing in this history suggests that personal property was any less protected against physical appropriation than real property. As this Court summed up in James v. Campbell, 104 U.S. 356, 358 (1882), a case concerning the alleged appropriation of a patent by the Government:

        ‘[A patent] confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can it can appropriate or use without compensation land which has been patented by a private purchaser.'”

  7. 21

    MM writes:

    At the end of the day, a doctrine that forbids a rights-granting agency like the PTO from re-evaluating its own shoddy work and removing restrictions on public freedom is a nonsense doctrine. Take that as a prediction of what will happen should the Supreme Court grant cert here (which I doubt they will given the reasonableness of what the CAFC just wrote).

    If the PTO has been doing such a shoddy job in issuing patents, the last way to fix the resulting problem is giving it the opportunity to reevaluate its own work and to revoke patents.

    Logically we should assume that it will simply do a shoddy job in revoking patents. Until the rotten apples among the examiners and the APJs are terminated,* a special Article III tribunal needs to tasked with cleaning up the patent mess if the existing Article III tribunals are not sufficient.

    Even more important the current laws and the organization of the PTO are a setup for a major corruption scandal far worse than Teapot Dome. (I have consulted off and on for a long time in the financial industry.)

    I think we all remember the RIM NTP litigation. Here is a description (from Wiki) of the violation that took place.

    During the litigation, RIM found previously unconsidered prior art that “raised a substantial new question of patentability” of the NTP patents. RIM filed 12 “requests for a reexamination” in the US Patent and Trademark Office (USPTO) from December 2002 to May 2005. A team of senior patent examiners at the USPTO was assigned to the cases and the cases were granted “special” status. Special status means that the proceedings are accelerated.

    NTP became suspicious of contacts between RIM and the PTO, prompting the company to file FOIA requests which revealed attempts by RIM attorney David Stewart to obtain off-the-record interviews with PTO examiners,[16] though such interviews are prohibited by federal regulations (e.g., 37 CFR 1.560(a), stating that “requests that reexamination requesters participate in interviews with examiners will not be granted”[17] and 37 CFR 1.955 stating that “interviews prohibited in inter partes reexamination proceedings”[18]).

    RIM and NTP filed thousands of pages of documentation and expert opinions to support their respective positions. Some of the cases have been examined and some of the patents were rejected. In two of the cases, the rejections were made final.

    NTP has appealed the final rejections to the USPTO’s Board of Patent Appeals and Interferences (BPAI). A key issue is whether certain documents found in a Norwegian library should be considered “publications” and would therefore anticipate the claims of the patents. These documents are known as the “Telenor” documents.[19]

    The BPAI affirmed the rejection and NTP appealed the decision the US Court of Appeals for the Federal Circuit (CAFC).[19] On August 1, 2011, the CAFC vacated in part, reversed in part, and remanded the case back to the USPTO. The CAFC agreed that the Telenor documents were a valid reference, but that the USPTO had given the phrase “electronic email [message]” an overly broad interpretation in its rejection of the claims.[20]

    Was this case the first such incident? Are such incidents ongoing?

    With the combination of:

    post-GATT patent application publication and patent term rules,

    AIA IPRs,

    secret “QA” programs like SAWS or Second Look,

    the revolving door between the PTO and big corporations,

    the opening of satellite PTO offices in major tech centers,

    the tremendous transfers of money that can hinge on granting, stalling, or canceling patents,

    the uncertainties created by two different claim construction procedures,

    the ease of checking patents or patent applications online, and

    the statutory limitations on relief from PTO abuses,

    I would surprised if there is not already secret black market on revoking claims or on stalling patent prosecution.

    The financial disaster that was occasioned by the repeal of Glass Steagall was an object lesson that if it’s possible to make money by criminal behavior, some will try.

    Decisions to institute IPRs, forthcoming claim cancellations, rejections of patent application claims, efforts to slow down prosecutions under a secret “quality assurance” program like SAWS or Second Look are all valuable insider info that can affect equity value. If private entities are receiving ex parte access to such info, it is a violation of insider trading law, for such information gives tremendous advantages in timing when to sell or to hold various financial instruments.

    Section 9 (b) of the STOCK act — unfortunately passed after the above incident — is quite clear that executive branch employees are subject to the same strictures on passing insider information as those in private industry.

    Those APJs, examiners, and other PTO personnel involved in the conspiracy to pass insider info to RIM really belong in jail with the Wall Street crooks.

    BTW, it is not impossible that the issuance of crap patents was encouraged in a long term plan by a few insiders to use the PTO as a money machine by peddling revocations or prosecution stalling. It happens all the time on Wall Street (e.g., Goldman Sachs and Paul Johnson). If Wall Streeters like Kyle Bass can come up with legal plans to use the PTO to make money in securities trading, why can’t insiders at the PTO come up with illegal plans to do exactly the same thing?

    As I have observed previously, the SAWS documents were actually quite brazen that public trading status info should be passed up the chain of command.

    Home SPE Review and SAWS Report Preparation. The home SPE should discuss the sensitive nature of the application with the Examiner. The SPE should use their judgment and be liberal in SAWS application identification, but should screen out cases that are clearly of a
    routine nature. in cases where the SPE is not certain if the application encompasses SAWS subject matter, the SPE should consult the SAWS POC and/or SAWS QAS.

    Upon agreement that the application should be reported as SAWS, the home SPE must complete the SAWS report in the detail required by the attached template. The Impact Statement can be prepared by performing an lntemet search to find external information indicating the sensitivity of the subject matter. One way to do this is via a Google search of the invention. the inventors, and owner or assignee. Such information may include, but is not limited to, financially important subject matter (Is the stock of the invention’s owner publicly traded? Have there been press releases about the invention?), politically charged subject matter, and subject matter which may raise legal or ethical objections.

    * I personally am tired of puzzling through office actions that are incomprehensible because the examiner does not have sufficient command of English.

    1. 21.1

      The financial disaster that was occasioned by the repeal of Glass Steagall was an object lesson that if it’s possible to make money by criminal behavior, some will try.

      Some of those “G-g-grifters” caught up in the ensuing scandals…?

      Ivy League academics.

      Go Figure.

        1. 21.1.1.1

          BTW, you might find it interesting to look at the biography of Summer’s protégé Andrei Shleifer and then revisit my comment on Glass-Steagall. It applies to academics as much as to Wall Streeters.

  8. 20

    I’m pretty sure that Ned isn’t part of this quest, but there can be no question that there is a tiny but loud group of “patent monetizers” out there who dream primarily of two things: (1) eliminating agency review/modification/revocation of defective patents; (2) reversal of Prometheus v. Mayo; (3) reversal of KSR.

    With respect to (1) and (2) the CAFC indicated pretty plainly today that they don’t wish to play a significant part in seeing this dream become a reality. Good for them.

      1. 20.1.1

        Must be a different cohort -maybe it’s those Amish 1 percenters that make up Malcolm’s client base…

    1. 19.2

      A new way to form a new form/phase of diamond being claimed seems ok. And a new form/phase of diamond itself might also be eligible if it is solely artificial and not made in nature (he does mention the possibility of it being found in cores of planets so prob not eligible pending some evidence regarding this).

      1. 19.2.1

        6: a new form/phase of diamond itself might also be eligible if it is solely artificial and not made in nature

        Hopefully the claim will provide a bit more structural detail. ;)

    2. 19.3

      Playing this “eligible or not” game without claims and a thorough prior art review is an exercise in futility.

  9. 18

    I enjoyed the Federal Circuit’s discussion of the history of the cause of action at law and equity.

    1. 18.1

      David, What bothers me most about the opinion is that it cites Stern for the proposition that Vicki’s state law claim was found not to be subject to adjudication in a legislative tribunal because it was not wholly dependent upon federal law. This is equivalent to the same argument advanced by the government and by the Federal Circuit in Patlex that a patent was a public right because it is a creature of statute.

      In other words, the Federal Circuit reads Stern as limiting Article III and inferentially, Jury Trial rights to state law causes of action (or to criminal cases).

      The implications are enormous.

      I also do not understand how they could distinguish Markman and ex parte Wood & Brundage.

      1. 18.1.1

        Ned,

        My original post was intended as tongue in cheek. Where was the Federal Circuit’s analysis of the primary element of the public rights exception? That is, where the claim current exists at federal statute, does it have historical analogue at law or equity? This foundational proposition was not even mentioned.

        This might be the worst precedential Article III Court of Appeals decision I have seen. It is irresponsible, and broadly dilutes the separation of powers.

        I think a lot of people are curious to see what the SCOTUS does with this trainwreck.

        1. 18.1.1.1

          Dave,

          A lot of people (the sA</bmeones here on this blog) think this is anything but a trainwreck.

          The really interesting thing about this case is that this case places Ned in opposition to his usual assortment of Echoes here.

          Maybe Ned (and you) need to “get with reality” now that this decision is in the books, all “fully vetted” and all (leastwise per our pal Mr. Morgan).

          1. 18.1.1.1.1

            Manon,

            “People” as in those who respect Article III of the U.S. Constitution, and have an interest in preserving a strong judiciary.

            1. 18.1.1.1.1.1

              David,

              How about those people who do NOT want an overly strong judiciary and ALSO respect ALL of the U.S.Constitution…?

              You know (as I have posted), the separation of powers doctrine and other constitutional aspects that do NOT place any one branch (even – or especially – the judiciary) above the Constitution.

              (and you can leave out the petty Malcolm-anon combination, as I have explicitly differentiated myself from Malcolm, unless you want to be known as Davcolm…)

        2. 18.1.1.2

          Dave, why don’t you post here a hypothetical “question presented” for the Supreme Court to decide? I think it really has to do with whether the Murray’s Lessee/Granfinanciera/Stern exception to public rights (stuff litigated in the courts of England prior to 1789 (1792 for jury trial rights) is limited only to “state law” rights/actions/remedies.

            1. 18.1.1.2.1.1

              It should have nothing to do with it.

              But see Scalia’s concurrence in Granfinancieara

              The notion that the power to adjudicate a legal controversy between two private parties may be assigned to a non-Article III, yet federal, tribunal is entirely inconsistent with the origins of the public rights doctrine. The language of Article III itself, of course, admits of no exceptions; it directs unambiguously that the “judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish.”

              It is clear that what we meant by public rights were not rights important to the public, or rights created by the public, but rights of the public — that is, rights pertaining to claims brought by or against the United States.

              We thus held in Thomas, for the first time, that a purely private federally created action did not require Article III courts.”

              Thus the whole point of Judge Dyk’s opinion is, as was Patlex, focused on the fact that a patent is a right created by Federal Statute. It was and is critical and essential to the result.

              But, as I said at oral argument, if this reasoning is valid, there is no right to a trial in court for a Federally created legal right — and no right to a trial by jury. Which means that Markman, Feltner and Beacon Theaters were wrongly decided.

              1. 18.1.1.2.1.1.1

                Scalia’s concurrence in no way supports the integration of federalism into the public rights exception.

                You are seeing tremendous smoke screen in Dyk’s opinion; you have to be able to differentiate between what is real and what is just fluff in that order.

                Consider Dyk’s proposed rule: any right put at federal statute is susceptible to complete resolution by an administrative court. What is left of Article III to protect?

                I assure you, at least wrt the public rights rule of law, this precedential Court of Appeals opinion is an anomaly–did the CAFC even cite the governing rule?–and Dyk is **daring** the SCOTUS to do something about it.

                1. David,

                  Anomaly or not – it now controls (or does it? can a panel decision overturn “higher” law?)

                  Anywho, unless Ned continues the battle, this case will add to the wreckage of US patent dominance.

              2. 18.1.1.2.1.1.2

                It would have taken incredible courage for the panel to acknowledge this reductio ad absurdum and follow it to its logical conclusion. I mean you would have been asking a federal circuit panel to not only invalidate a portion of Congress’s most recent patent legislation, but to do so with a holding that potentially calls into question a large number of existing article I tribunals, contra Supreme Court precedent. That’s a huge ask. This line of argument realistically only has a chance at the en banc or supreme stage, and even then it’s still a huge ask. That being said, the potential concern that a nebulous standard is simply unacceptable in a separation of powers context really does have a chance to be the type of concern that trumps extensive pragmatic concerns.

                1. acknowledge this reductio ad absurdum and follow it to its logical conclusion

                  The absurd is already there (in case you have not noticed).

                  Following things to their logical conclusion should not be as arduous nor as “daring” as you seem to want to suppose.

                  The plain fact that the law of the AIA was expressly built in the chaebol effect of “we dare you to stop us,” well, no one said doing the right thing was supposed to be easy all the time.

            1. 18.1.1.2.2.1

              Actually I may not agree, but still need more time to compose. I am more intrigued by the separation of powers concern that the exception for federally created rights not only is not justified by the original rationale for a public rights exception (sovereign immunity), but also threatens to swallow the rule that is article iii jurisdiction. Various supreme justices seem to have been similarly concerned in their own way, and threading these concerns together seems to produce this overarching concern that is grounded in something unquestionably fundamentally important (separation of powers).

              1. 18.1.1.2.2.1.1

                The holding of the court is that patent rights are public rights because they are created by Federal Statutes such that Congress may, under Murray’s Lessee and subsequent public rights cases, assign adjudication of such rights to any forum it chooses. This effectively limits the jurisdiction of the federal courts to hear cases and controversies involving rights created by federal statutes to authorization from Congress, not from the Constitution.

                As you note, this holding, if not overturned, is potentially revolutionary in its nature.

                1. But Ned – and perhaps stating the obvious – it is in direct tension with virtually every SCOTUS public rights case.

                2. David, are inventions a public resource being regulated? Is examination a regulatory program of some public resource? Do patents affect the public generally, or only those who use the invention patented?

                  The answer to the questions seem obvious too.

                  Patent validity as a general matter is of public concern. But with a particular patent is it is not.

                3. Ned,

                  You are really getting into the weeds regarding the broader elements of the subjective factors articulated in, e..g., Schor.

                  Stick with Granfinanciera and Stern: the right currently exists at federal statute; therefore, evaluate whether historical antecedent at law or equity. Then evaluate whether the cause of action is truly a novel creation of the executive or legislative branches — notions of public concern, regulatory schemes, and the like tie into this latter point.

                  The fact that the CAFC declined to do this tells you everything you need to know about the constitutionality of the PTAB scheme relative to the SCOTUS’s governing rule.

                4. David, it does. But there is something really wrong with their declaring McCormick not an Article III case when it expressly says otherwise, and with it declaring a patent a public right in the way it did — the result of a “regulatory program.”

                5. Ned,

                  My apologies again for playing catch up here, but have you, or anyone else working on a similar appeal, looked into an argument that, even under the Thomas Court’s expansion of the public rights doctrine, Article III review must still be available for jurisdictional issues? The prohibition of review of institution of an IPR would seem to run afoul of this. (Notably, this also would seem to be relevant in your case, since you allege institution was based on an improper Section 315 analysis.)

                  In expanding the public rights doctrine in Thomas v. Union Carbide, the Court relied upon Crowell, asserting that “Crowell[] expressly rejected a formalistic or abstract Article III inquiry”. 473 U.S. 586. As the Court characterized it, “Crowell held that Congress could replace a seaman’s traditional negligence action in admiralty with a statutory scheme of strict liability.” 473 U.S. 586. The Court elaborated that “‘[t]he findings of the deputy commissioner, supported by evidence and within the scope of his authority’ were final with respect to injuries to employees within the purview of the statute.” 473 U.S. 586. The Court continued that “[a]lthough such findings clearly concern obligations among private parties, this fact did not make the scheme invalid under Article III.” 473 U.S. 587.

                  Notably, though, the Court in Crowell made very clear that initial jurisdictional questions must remain subject to determination by an Article III court for constitutional reasons. The Court noted that “[e]ven where the subject lies within the general authority of the Congress, the propriety of a challenge by judicial proceedings of the determinations of fact deemed to be jurisdictional, as underlying the authority of executive officers, has been recognized.” 285 U.S. 58. The Court made clear that precedent has established that “matters of this kind, disclosing a want of jurisdiction, may be considered by a court of law.”

                  In addressing the question before it, the Crowell court characterized it thusly: “[t]he question in the instant case is not whether the deputy commissioner has acted improperly or arbitrarily as shown by the record of his proceedings in the course of administration in cases contemplated by the statute, but whether he has acted in a case to which the statute is inapplicable.” 285 U.S. 63.

                  The Court characterized this question as “one of the constitutional authority of the deputy commissioner as an administrative agency” (285 U.S. 64), because if he acted in a case in which the statute was inapplicable, then he acted outside of any authority granted by Congress, which would make his actions an unconstitutional overreach of the executive branch. The Court explained this noting that “if … the court is satisfied that the deputy commissioner had no jurisdiction of the proceedings before him, that determination will deprive them of their effectiveness for any purpose”. 285 U.S. 64.

                  The Court in Thomas acknowledged this in their opinion when they quoted Crowell’s language that “‘[t]he findings of the deputy commissioner, supported by evidence and [b]within the scope of his authority[b]’ were final” (emphasis added).

                  The Court in Crowell interpreted the statute at issue in that case in such a manner that jurisdictional questions were reviewable by an Article III court so as to avoid finding the statute unconstitutional, but with respect to inter partes review, such an interpretation does not seem possible, as 35 U.S.C. 314 asserts that the decision whether to institute an inter partes review (seemingly including jurisdictional questions) is final and non-reviewable. This would seem, by itself, to be sufficient grounds to strike down inter partes review. Section 314 would seem to be attempting to disallow Article III review of whether an executive officer “acted in a case to which the statute is inapplicable”, in contravention of the Crowell Court’s clear statement that “matters of this kind, disclosing a want of jurisdiction, may be considered by a court of law”. The Crowell Court clearly felt this was important, noting that “the essential independence of the exercise of the judicial power of the United States in the enforcement of constitutional rights requires that the federal court should determine such an issue upon its own record and the facts elicited before it”. 285 U.S. 64.

                  I quickly reviewed the case law surrounding challenges to the non-reviewability of IPR initiation, but was surprised to see only statutory construction discussion and no discussion of the potential constitutional issues implicated by disallowing Article III review of jurisdictional issues. I may well have missed it, but I thought I would mention it just to see if this issue has been or is being raised anywhere.

                6. My very rough, initial thoughts on potential issues:

                  I. Whether the CAFC panel’s refusal to review the decision to institute an IPR is based on an improper construction of 35 U.S.C. 314 which fails to interpret the statute in such way that it allows for the required jurisdictional review by an Article III court*, per the Court’s holding in Crowell v. Benson, 285 U.S. 22 (1932), of whether an executive officer has acted outside of the authority granted by the statute so as to exceed his constitutional authority.

                  II. Whether the CAFC panel’s holding that Congress may delegate to an executive officer adjudication of an action to invalidate a patent is in error because it fails to appreciate that an action to invalidate a patent is from its nature “subject to ‘a suit at common law or in equity or admiralty’” so as to “lie at the ‘protected core’ of Article III judicial power”, making such delegation unconstitutional.

                  III. Whether the CAFC panel’s holding that Congress may delegate to an executive officer adjudication of an action to invalidate a patent is in error because it is premised on expansion of the public rights doctrine in a manner unsupported by the original rationale for the doctrine that undermines Article III protections.

                  * One argument would be that, just as with Crowell, because the statute should be interpreted in a manner in which it is not unconstitutional, the provision that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable” should only be interpreted to mean that the determination as to whether “the information presented … shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”. The jurisdictional question of whether inter partes review is barred by a civil action under 35 U.S.C. 214 should still be reviewable. You could also present an “in the alternative” argument regarding invalidity, but support in the case record might be harder to marshal.

                7. For what it’s worth, I would probably be most optimistic about the first issue, because it allows for Article III review without significantly upsetting existing case law and legislation. In looking at Crowell, it really does seem like jurisdictional issues have to be reviewable in an Article III court for constitutional reasons, regardless of what Congress intended. Whether this means interpreting 314(d) to still allow for review of whether institution of an IPR was barred by a civil action, or simply striking 314(d) as unconstitutional, I don’t see how it can stand in the long run. Even under the line of cases expanding public rights, jurisdictional questions still have to be reviewable by an Article III court to ensure that an executive officer hasn’t operated without Congressional authority.

                8. or simply striking 314(d) as unconstitutional,

                  JCD, as I have pointed out, this option is simply just not available.

                  Not for this law (the AIA). This flows directly from the fact that Congress considered – and rejected – the option of severability. The Court simply cannot effectively rewrite law to be that which was firmly and objectively rejected by Congress.

                  For whatever reason, Congress built this law in a chaebol like manner. The good ship AIA Titanic is built with a single hull design, and no court can rebuild it to have separate water-tight compartments.

                9. That’s why I think there is a greater chance at success arguing that 314(d) can’t be interpreted as a bar to jurisdictional review.

                10. 314(d) can’t be interpreted as a bar to jurisdictional review.

                  JCD, that just doesn’t help you.

                  To argue that is ALSO to rewrite the words of Congress.

                  Cannot – and will not – happen.

                  Not here.
                  Not with this law.

                  As I said – Congress opted for the single hull AIA Titanic design. I really do not know why they did that (I did contact all of my congressmen during that time period, warning of this very danger, btw).

                11. JCD, As we demonstrated in our brief, McCormick Harvesting found its authority in the line of cases tracing directly back to Marbury v. Madison. That case made it unambiguous that the issue was one of separation of powers, not one of lack of statutory authority.

                  The Federal Circuit is so off-the-mark here is interpretation I almost feel the obligation to allow it to correct its error before we bring the issue to the Supreme Court.

                  “The question whether a right has vested or not, is, in its nature, judicial, and must be tried by the judicial authority. If, for example, Mr. Marbury had taken the oaths of a magistrate, and proceeded to act as one; in consequence of which a suit had been instituted against him, in which his defence had depended on his being a magistrate, the validity of his appointment must have been determined by judicial authority.”

                  Marbury at 166. link to scholar.google.com

                12. Ned – are you kidding me? J. Dyk is a very smart guy; he knows exactly what that case and the related authority says – he has no interest in following it as written. The CAFC either as a 3 judge panel or sitting en banc will protect the interests of the PTAB.

                  You will not obtain relief by taking this to CAFC en banc. Stop wasting everyone’s time, and get to work on the petition for writ of certiorari.

  10. 17

    Professor Crouch: “In a prededential [sic] opinion, . . .

    Is this an example of a portmanteau (“predatory” and “precedential”) and a parapraxis (assuming you have strong feelings about the CAFC’s findings)?

    We can call it a “portmanpraxis”. =)

    Or maybe not.

  11. 16

    But today’s action is of a piece with a broader bid afoot to essentially banish juries from patent cases altogether. If it succeeds juries will be relegated, in those few cases where they have any presence at all, to rubber stamps, their verdicts preordained by “legal” and “equitable” determinations that brook only one “reasonable” result. Indeed, this movement would vest authority over patent disputes in legislative courts, unconstrained by Article III and the Seventh Amendment. See In re Lockwood, 50 F.3d 966, 970 (Fed.Cir.1995) (opinion dissenting from order denying rehearing in banc) (“A constitutional jury right to determine validity of a patent does not attach to this public grant. Congress could place the issue of validity entirely in the hands of an Article I trial court with particular expertise if it chose to do so.”). Declaiming that the jury is a “black box” incapable of a “reasoned decision”, several judges of the court have already advised that they are aboard this campaign. Id., at 990. The quest to free patent litigation from the “unpredictability” of jury verdicts, and generalist judges, results from insular dogmatism inspired by unwarrantable elitism; it is unconstitutional.

    MAYER, Circuit Judge, concurring in the judgment.
    Markman v. Westview Instruments, Inc., 52 F. 3d 967, 989 – Court of Appeals, Federal Circuit 1995 link to scholar.google.com

    1. 16.1

      Judge Mayer wanted claim construction to be performed by a jury? Talk about beng on the wrong side of history.

      The quest to free patent litigation from the “unpredictability” of jury verdicts, and generalist judges, results from insular dogmatism inspired by unwarrantable elitism;

      It was more of a quest to reduce the frequency of absurd results obtained by enormously expensive untrained citizens who, to put it gently, were plainly not up to the task.

      But there certainly was another patent-related quest resulting from “insular dogmatism inspired by unwarrantable elitism.” That’s the quest to patent logic and information. It’s ongoing.

      1. 16.1.1

        Well, Mayer was wrong on claim construction but right on his prediction that

        “Indeed, this movement would vest authority over patent disputes in legislative courts, unconstrained by Article III and the Seventh Amendment. See In re Lockwood, 50 F.3d 966, 970 (Fed.Cir.1995) (opinion dissenting from order denying rehearing in banc) (“A constitutional jury right to determine validity of a patent does not attach to this public grant. Congress could place the issue of validity entirely in the hands of an Article I trial court with particular expertise if it chose to do so.”). “

        1. 16.1.1.1

          My fond hopes that the real world judicial decision would finally end the “trial by personal arguments” endlessly clogging up these blog comments seems doomed to unending continuation.

          1. 16.1.1.1.1

            Maybe “hope” that no need for en banc or Supreme Court certs was not such a “good” thing to aim for…

  12. 15

    ON Page 14 of the opinon it says

    ” We are bound by prior Federal Circuit precedent “un-less relieved of that obligation by an en banc order of the court or a decision of the Supreme Court.” Deckers Corp. v. United States, 752 F.3d 949, 959 (Fed. Cir. 2014). We see no basis to distinguish the reexamination proceeding in Patlex from inter partes review. ”

    Question 1 :

    Is the CAFC saying they cannot go againstst Platex unless supreme or en-banc decides otherwise ? Are they inderectly telling MCM that their hands are tied ? and MCM should go ask for en banc and then supreme ?

    Question 2 :

    Robert Greenspoon’s whole appeal is based on that IPR is different from re-examination ? I am guessing those issues were not raised in MCM ? were they ?

    The Cert should ask a simple question : Is patent a public right or private property ?

    1. 15.1

      Is patent a public right or private property ?

      A “patent right” could fall somewhere in between. That sort of result isn’t uncommon when dealing with an abstraction like “a right”.

        1. 15.1.1.1

          Yep, because personal property is just soooo abstract.

          Maybe we should just ban it altogether….

          Just imagine (with all due respect to Mr. Lennon)

          /off sardonic bemusement

          1. 15.1.1.1.1

            Maybe we should just ban it altogether….

            Just imagine (with all due respect to Mr. Lennon)

            We’re coming for you, Billy! How’s your gun stockpile looking these days? I’m sure it’s really big and strong, like you.

            LOL

            1. 15.1.1.1.1.1

              Who is this Billy why are they coming for him what is up with the stockpile oh wait a minute you’re just mixing memes and using short cut short script type things in a rather random ad hoc fashion

              gotcha

    2. 15.2

      BS, while I think the Federal Circuit is wrong on declaring a patent to be a public right, I do not believe the resolution of that issue entirely solves the question of whether Congress can revoke a patent administratively. According to Granfinanciera, that question is resolved in the same way one determines whether there is a right to a jury trial on a particular issue. One looks at the remedy.

      It turns out that the remedy of revocation of patents was actually litigated in the courts of England at common law and had a right to a trial by jury. The Supreme Court United States has already held that actions in the United States have a right to a trial by jury. Thus under controlling Supreme Court precedent, particularly Granfinanciera, patents revocation actions must be tried in Article III courts and to a jury.

      Neither Congress nor the courts can legislatively abrogate constitutional rights simply by declaring patents to be public rights or that particular remedies are “new,” when in point of fact they are not new.

      1. 15.2.1

        Neither Congress nor the courts can legislatively abrogate constitutional rights simply by…

        I have heard that before…

        ;-)

  13. 14

    I always find thinking about this topic so interesting: intellectual property owners are interested in protecting their works [copyright] and inventions [patents].

    But each sub-group approaches it differently. Copyright owners, consistently and with little disagreement, have persuaded Congress to strength, time and again, their IP. True, their recent attempts have been tempered by stronger public rights organizations but Micky Mouse’s copyright will expire soon. I wonder how many organizations will join Disney in lobbying Congress?

    On the other hand, patent owners are a fractured lot.

    Anyway, the court’s opinion on the constitutional issue is rather unengaging. You read the Supreme Court cases and it is not really clear what they mean by the language used. Heck, Scalia bristles at the untidiness of it all:

    The sheer surfeit of factors that the Court was required to consider in this case should arouse the suspicion that something is seriously amiss with our jurisprudence in this area. I count at least seven different reasons given in the Court’s opinion for concluding that an Article III judge was required to adjudicate this lawsuit: that it was one “under state common law” which was “not a matter that can be pursued only by grace of the other branches,” ante, at 2614; that it was “not `completely dependent upon’ adjudication of a claim created by federal law,” ibid.; that “Pierce did not truly consent to resolution of Vickie’s claim in the bankruptcy court proceedings,” ibid.; that “the asserted authority to decide Vickie’s claim is not limited to a `particularized area of the law,'” ante, at 2615; that “there was never any reason to believe that the process of adjudicating Pierce’s proof of claim would necessarily resolve Vickie’s counterclaim,” ante, at 2617; that the trustee was not “asserting a right of recovery created by federal bankruptcy law,” ante, at 2618; and that the Bankruptcy Judge “ha[d] the power to enter `appropriate orders and judgments’—including final judgments—subject to review only if a party chooses to appeal,” ante, at 2619.

    Stern v. Marshall, 131 S.Ct. 2594, 2621 (2011) (Scalia, J. concurring).

    1. 14.1

      I wonder how many organizations will join Disney in lobbying Congress?

      It doesn’t really matter because that term is never going to be exteneded again.

    2. 14.2

      I think the confusion arises because the Supreme Court never really defines its terms clearly. We learned about that in Bilski with abstract, did we not?

      But the Court has been strong on one point — that if a remedy has a right to a jury trial, it must be litigated in Article III Courts. Granfinanciera.

      Patent revocations actions have a right to a jury trial. ex parte Wood & Brundage.

      1. 14.2.1

        While on the surface it might seem simple to classify rights private or public, for reasons that can only be guessed at from the emergence of administrative agencies as such powerful forces in the government, there is not only the constitutional and the statutory, but also the regulatory. So a constitutional officer (president) or one of his agents might take your property pursuant to statute, regulation or a constitutionally granted power.

        One problem is, he might leave you with some restricted version of your property. That is called regulatory takings. Sorry, you can have your property, just not drain the swamp on it. No, not a taking, no money for you! (not sure if that is the swamp law for now, it was at one time)

        When a regulatory taking happens, what you thought of as a purely private right appears now to have public dimensions in the view of what the law has developed into. So instead you have a bundle of private and public rights. Or maybe they are all public. I don’t know. Even if your family has owned that clod of dirt/water since the Louisiana purchase.

        Patents, social security payments, rights to data for toxicity of pesticides, etc. pose many problems all of which have to fall under the same general categories. The MCM case gives the impression that all the cases in the private/public Article I/Article III court arena are majority opinions. My recollection is that many of them are plurality opinions. And the area is like quicksand, changing with the justices. Opinions are written to sound definitive. It takes courage to walk on the quicksand of this area.

        1. 14.2.1.1

          It’s not the taking (per se) that is the issue. Think eminent domain. It is the taking without recourse and recompense.

          Think also New York state mandated “electrical boxes” on rooftops as a form of taking.

          Then remember that the personal property that is the patent right is actually a bundle of sticks, and that one of those sticks is indeed taken – without recourse or recompense – at the initiation of the IPR, quite apart from any final determination on the merits.

          1. 14.2.1.1.1

            anon, the issue has nothing to do with “taking.” Taking is using, like infringement. Revocation destroys the right.

            1. 14.2.1.1.1.1

              Taking very much is at issue Ned.

              It is something that you left out, but that does not make it an important issue.

    3. 14.3

      The differences stem from the fact that, with copyright, you don’t have to worry about accidentally creating the same work someone else already created and getting sued over it.

      1. 14.3.1

        JCD,

        While recognizing that difference – and other crucial ones such as aspects of protection – your reply does NOT reach the distinction pointed out by “drop by.”

        Maybe you provide more detail to that nexus that you think is there…?

        1. 14.3.1.1

          drop by said:

          “Copyright owners, consistently and with little disagreement, have persuaded Congress to strength[en], time and again, their IP. … On the other hand, patent owners are a fractured lot.”

          With respect to copyright, it is relatively easy to proceed in a manner in which you will not infringe anyone’s copyright. Simply don’t copy anyone else’s works of authorship. As a result of this, anyone who is a copyright owner is generally in favor of increasing copyright protection. There is no real risk of running afoul of another’s copyright protection without intentionally doing so.

          With respect to patents, the situation is completely different. Manufacturing a phone will almost invariably cause you to infringe a plurality of patents. Writing a large software application may similarly cause you to infringe multiple patents. Creating an e-commerce platform will almost certainly risk infringing someone’s patent. As a result of this, if you are a large company that doesn’t rely on patents for your market share, then the downside risk of getting hit with a patent infringement suit may severely outweigh the upside of being able to protect your intellectual property with patents.

          Additionally, with respect to works of authorship protected by copyright, it is generally much easier to copy them than patented articles. Anyone can set up a website which offers downloads of music, videos, and ebooks. It takes a lot more resources to manufacture and bring to market a patented device such as a phone.

          The result of all of this is that, for copyright, the interests of small copyright owners and large copyright owners are generally aligned in strengthening copyright protection. For patents, however, while most small patent owners might need the patent system to protect their innovations, many large patent owners recognize that they have other competitive advantages that would allow them to continue to flourish even without any patent protection, so if they are constantly being subjected to suits for patent infringement, then the patent system itself may be more of a negative than a positive for them.

  14. 13

    With Prost and Dyk on the panel, was the outcome ever in doubt? Newman will vote to grant cert but will be outvoted by her colleagues.

  15. 12

    While this whole ordeal has been fascinating, it was futile from the start.

    Ned, many warned you here that while you “had a point,” for policy reasons, courts just aren’t going to touch this.

    Prediction: en banc review denied. cert denied.

    Suggestion: give up.

  16. 11

    “the Court recognized that ‘there are matters, involving public rights, which may be presented in such form that the judicial power is capable of acting on them . . . but which congress may or may not bring within the cognizance of the courts of the United States, as it may deem proper. That is Congress has the power to delegate disputes over public rights to non-Article III courts.”

    If the SCOTUS does not intervene, patent validity could become a purely administrative claim.

    1. 11.1

      If the SCOTUS does not intervene, patent validity could become a purely administrative claim.

      Golly maybe Congress would put the granting of patents entirely into the hands of a (gasp) government agency.

      1. 11.1.1

        You do realize that you are being nothing but an arse by purposefully mixing the pre-grant and post-grant aspects, right Malcolm?

    2. 11.2

      RE: “patent validity could become a purely administrative claim.”

      Let’s limit the hyperbole with a further reality check. There is no proposed legislation to further expand PTO post-grant proceedings. AIA CBMs automatically “sunset” in only a few years. As predicted, there has been almost no use of AIA PGRs or Supplemental Examinations. IPRs and reexaminations are limited to only 102 and 103 issues based solely on prior art patents or publications. Approximately 80% of IPRs are only filed in response to being sued, filed by only a minority of those being sued annually meeting a strict one year time limit running the date of service of the complaint, and a currently a substantial number of petitions for IPRs are being rejected.

        1. 11.2.1.1

          anony You are confident that Congress won’t eventually take that power?

          The Constitution gives Congress “the power” to pull the plug on the entire patent system if it wishes to do so.

          I don’t see any indication of that happening in our lifetimes.

          On the other hand, I do see plenty of additional changes coming, directly primarily at the most deserving targets, i.e., the same folks who jumped on the “de@th panel” bus and who consistently cheerlead on behalf of the worst patents ever granted by any patent system in human history.

          1. 11.2.1.1.1

            ‘The Constitution gives Congress “the power” to pull the plug on the entire patent system if it wishes to do so.’

            Thank you for this point. It appears to be lost on many who comment here.

            1. 11.2.1.1.1.1

              But much like voting rights – once established, Congress cannot do “whatever they want.”

              Ryan – please stop being such a naysayer.

          2. 11.2.1.1.2

            MM, indeed it does have the power to pull the plug on the entire patent system. The question is whether Congress has the power to allocate adjudication of all federally created rights entirely to legislative tribunals leaving the courts in the position only to litigate criminal cases where there is an unambiguous right to a jury trial, or to litigate state law claims where there is otherwise jurisdiction to do so.

            How do you explain, MM, Beacon Theaters, Feltner and Markman that all recognized rights to jury trials to federal created intellectual property rights including respectively trademarks, copyrights and patents?

            1. 11.2.1.1.2.1

              Ned: The question is whether Congress has the power to allocate adjudication of all federally created rights entirely to legislative tribunals leaving the courts in the position only to litigate criminal cases where there is an unambiguous right to a jury trial, or to litigate state law claims where there is otherwise jurisdiction to do so.

              That is a question but it’s definitely not the question presented by this particular grantee of a “patent right” in 2015.

              How do you explain, MM, Beacon Theaters, Feltner and Markman that all recognized rights to jury trials to federal created intellectual property rights

              The “right” to a jury trial applies only to plaintiffs’ court proceedings, not to agency proceedings brought by third parties or by the plaintiff itself. Even in court that “right” is limited by the merits of the plaintiff’s claims. For example, just because you file a patent lawsuit doesn’t mean you have an unimpeachable “right” to a jury trial. Those cases you listed don’t come close to suggesting such a thing. A judge can toss your case out on summary judgment and your “rights” to a jury trial get tossed right along with it.

              1. 11.2.1.1.2.1.1

                MM, if there is a right to jury trial on an issue, there is a right to a jury trial on an issue. Congress cannot abrogate that right simply by moving the trial to an agency.

                1. Ned: if there is a right to jury trial on an issue, there is a right to a jury trial on an issue.

                  Well I guess that settles it.

      1. 11.2.2

        Paul, if patents are public rights, then there is no right to a trial in an Article III court or to a jury trial even for patent infringement actions.

        From the case, quoting Murray’s Lessee:

        As early as in Murray’s Lessee v. Hoboken Land &
        Improvement Co., 59 U.S. 272, 284 (1855), the Court
        recognized that “there are matters, involving public
        rights, which may be presented in such form that the
        judicial power is capable of acting on them . . . but which
        congress may or may not bring within the cognizance of
        the courts of the United States, as it may deem proper.”
        Id. at 281; see also Crowell v. Benson, 285 U.S. 22, 50
        (1932). That is, Congress has the power to delegate disputes
        over public rights to non-Article III courts.

        1. 11.2.2.1

          “Paul, if patents are public rights, then there is no right to a trial in an Article III court or to a jury trial even for patent infringement actions.”

          This couldn’t be more wrong. There is a right to trial in an article III court because Congress created an Article III cause of action through 35 USC 271. If Congress wanted to repeal 271 and make patents completely unenforceable, it could do so.

          There is nothing preventing Congress from allowing public rights to be litigated in the courts if it so chooses.

        2. 11.2.2.2

          Ned, even if such an ex treme proposal was ever actually proposed by anyone with any influence in Congress,* by now, especially after this Fed. Cir. decision, you should be less enamored with trying to extrapolate words out of ancient Supreme Court decisions to issues they were not actually deciding. [You made a thorough effort, and now its back to reality.]

          *No regular commentators on this blog, and even most of the guest authors, have any more influence on Congress than a dust mite on an elephant.

          1. 11.2.2.2.1

            Paul, do you recognize that there are a lot of jury trials going on all the time? This has nothing to do with Congress.

            If a matter is a public right, there is no right to a jury trial.

            Period.

            Judge Nies recognized this in her dissent to en banc in Lockwood.

            1. 11.2.2.2.1.1

              Ned: If a matter is a public right, there is no right to a jury trial. Period.

              There are no “periods” in Supreme Court jurisprudence, particularly when the issue in question is one that the judiciary created for itself.

              That’s especially true of the so-called “public rights doctrine.” It means whatever the Court says it means when it applies the doctrine to the particular “right” presented to it under a particular set of facts. Another right, another set of facts, it’ll mean something else. With luck, it’ll all make sense. If some of it doesn’t make sense, the Court can do everyone a courtesy by rejecting the nonsense it wrote earlier.

              At the end of the day, a doctrine that forbids a rights-granting agency like the PTO from re-evaluating its own shoddy work and removing restrictions on public freedom is a nonsense doctrine. Take that as a prediction of what will happen should the Supreme Court grant cert here (which I doubt they will given the reasonableness of what the CAFC just wrote).

              1. 11.2.2.2.1.1.1

                MM, we went through this before. I think the patent owner must have a period of exclusive rights where his patent cannot be hailed back into the PTO.

                The way it is, obtaining a patent is like buying an IPR. Who needs that?

                1. The way it is, obtaining a patent is like buying an IPR. Who needs that?

                  Entities with patent-worthy innovations.

                  They are still plenty of them out there.

                  Once again because its so easy to forget:

                  some terrible decisions were made by the Federal Circuit and the PTO. As a direct and predictable result of those decisions, Congress was forced to take actions which devalue the patents of everybody using the system.

                  Until the problematic patents are expunged from the system, additional changes are going to necessarily be made which continue to have this effect.

                  Don’t like it? It’s pretty clear what needs to be done.

                  The absolute worse solution is to remove the tools that are working best so far, i.e., IPRs. Everybody knows this.

          2. 11.2.2.2.2

            This dust mite at least can predict the outcome of these cases. I chalk this one up as another major case I predicted correctly. I bet I could have written an outline of that opinion in less than a day (before they wrote it.)

            What is going on here? It is easy to understand. The courts don’t want these cases. The courts are massively overloaded and they will bend and contort the law to get the result they want. How many patent judges are there? Do you really think the federal courts want all that work to come back into the federal courts?

            The courts are broken and that is the big picture. Plus, the SCOTUS would never touch this as they can just ignore it and if they feel like looking at it in 10 years, then they can take the next one. Sound familiar? That is what they did with 101.

    3. 11.3

      I am stunned by this outcome. The Constitution’s patent clause is being weakened; the strength/value of U.S. patents is being gutted. Our patent system is dying in a spectacular way.

      1. 11.3.1

        To clarify: not stunned that IPRs were held to be constitutional, but rather stunned by the verbosity of the opinion (all but gives full license to kill patents by admin. agencies at will). IPRs and Alice, what is going on.

  17. 10

    We have been subjected what seems and endless stream of bad advice and wistful thinking in comments on this blog that IPRs and all other post-grant proceedings and their decisions [and even the entire AIA] are going to all go away as unconstitutional. In MCM Portfolio v. HP that issue has now been fully briefed, fully argued, and quickly fully decided in detail in a full formal opinion of a Fed. Cir. panel. None of the judges supported the unconstitutional arguments. The cited case law arguments were fully rebutted in the decision.
    There is no dissenting opinion. Hence, the normally worse than 100 to one odds of getting Fed. Cir. en banc review and the normally worse than 300 to one odds against a cert grant by the Sup. Ct. are increased. Those odds are further worsened by the long standing case law aversion to overruling acts of Congress, and the obvious highly adverse commercial impact on the many decided post grant cases for doing so on this issue.
    So, the immediate question is whether this losing client is going to pay for one or both such further appeal attempts IF properly advised as to the odds, or, is Ned is going to pay for one or both them out of his own pocket? Those who have verbally supporting this effort on this and other blogs should financially contribute if they ever honestly believed in this effort rather than just doing hostility venting.

    1. 10.2

      If it look at the comments, I was on record saying this had ZERO chance. I will say now that it has ZERO chance of en banc rehearing and it has ZERO chance of Certiorari.

      I wish it were otherwise, but you know, how in the world would the dist. courts every be able to handle the flood? (That is the driving force here. The SCOTUS wouldn’t touch this with a 12 foot pole.)

      1. 10.2.1

        Night, don’t be so down in the mouth, friend. We have lots of supporters who believe we are right.

    2. 10.3

      Paul, I was surprised by and welcomed the thoughtful opinion of the court here. They could have simply said that we have decided this issue before and said no more. But they actually put in a good effort — and I would agree with them but for what I believe is the fact that patent revocation proceeding were litigated in the courts of England at common law and had a right to a trial by jury.

      I think they put in the effort they did because the court too seems to expect a petition to the Supreme Court to follow.

      As to odds that the Supreme Court will take the case? They have take number of public rights cases in recent years — and the court itself has raised the issue of public rights in two recent IP right cases, Teva and B&B Hardware. This seems to suggest that this is a hot issue at the Court.

      1. 10.3.1

        Ned,

        There is definitely an air of “C R P, we three are just not going to get into this and cause the entire AIA to sink.”

        It remains quite opposite what our friend Paul wants to think.

        Further, even IF your torpedo does not hit the good ship AIA Titanic, that ship remains a single hull vessel lollygagging in the iceberg lanes.

        Everyone though is wondering if you are going to reload and fire again.

      2. 10.3.2

        ” I would agree with them but for what I believe is the fact that patent revocation proceeding were litigated in the courts of England at common law and had a right to a trial by jury.”

        Ned, that’s the link I have been missing. Where is your cite for that? I must have just missed it.

        1. 10.3.2.1

          JCD,Would you believe that that was our principal argument on appeal and was not even discussed by the Federal Circuit?

          Anyway, the best source on this is Lemely’s article on Jury Trials. Also see all the other citations in our brief. Also see ex parte Wood & Brundage.

    3. 10.4

      The chief bad advice and wistful thinking that I see here is your idea that no em banc consideration or appeals up to the Supreme Court are ever necessary

      As for “fully vetted,” while Ned gave it a college try, he surely did NOT use all the right arguments and he court did NOT pass judgement on all those right arguments.

      Your “it’s over” pronouncement is far too premature.

      1. 10.4.1

        “As for “fully vetted,” while Ned gave it a college try, he surely did NOT use all the right arguments and he court did NOT pass judgement on all those right arguments.”

        In anon’s mind we’re just waiting around for some genioos to make “the right argument”.

      2. 10.4.2

        Anon, one wouldn’t even know what our arguments were from the opinion. The court simply ignored them.

  18. 9

    Important points in the decision:

    1. Even though the Supreme Court in McCormick appeared to hold that only a court could revoke a patent, the Federal Circuit as effectively held that it is Congress that has that power and may assign its adjudication either to a court or to a legislative tribunal; and that at the time of the McCormick decision, Congress had not granted that power to the PTO in the reissue statute.

    2. The Article III limitation on the public rights doctrine per Stern had been extended only to “state law” type rights and actions. The Federal Circuit does not believe it extend the federally created rights such as patents.

    Clearly, the issue of statutory authority was not before the court in McCormick.

    It is also true that the Supreme Court has never considered the interface between the public rights doctrine and patent rights.

    But Granfinanciera did hold that the analysis that one takes for the determination of jury trial rights is the same as for Article III rights, with the only distinction being whether the particular cause of action was legal or equitable to determine whether there was a right to jury trial. It is important to note that the Supreme Court has held there to be right to jury trial in patent revocation actions. See, fn. 2 and Ex Parte Wood & Brundage.

    1. 9.1

      Just curious, are you of the opinion that re-exam is similarly improper?

      I also wanted to comment and briefly say that from reading the opinion, and without further investigation, the obviousness case seemed weak. It sounded like there were some clear reasons why the obviousness determination was likely erroneous that weren’t before the court. Obviously, I wouldn’t expect you to comment on this on here, however.

      1. 9.1.1

        JCD, the case on appeal (merits) was primarily procedural. You might want to read our brief for more detail on this.

        1. 9.1.1.1

          Why can’t you just answer the question directly?

          Also. One would think that the bench asked you this exact question during oral argument. Did they? How did they respond? Did you just tell them to read your brief?

    2. 9.2

      “1. Even though the Supreme Court in McCormick appeared to hold that only a court could revoke a patent, the Federal Circuit as effectively held that it is Congress that has that power and may assign its adjudication either to a court or to a legislative tribunal; and that at the time of the McCormick decision, Congress had not granted that power to the PTO in the reissue statute.”

      Yeah that was basically what I told you like a year ago. Not to rub it in.

      1. 9.2.1

        6, I would think the same thing until I actually read the cases and realized that the Supreme Court really was talking about separation of powers.

        The panel here has effectively overruled Patlex in this regard, since Patlex recognized that McCormick was not based on the lack of a statute, but on the basis of separation of powers.

        1. 9.2.1.1

          “6, I would think the same thing until I actually read the cases and realized that the Supreme Court really was talking about separation of powers.”

          Mmmm, yeah nah bro. I mean, that would be cool and all, but nah.

    3. 9.3

      Amazingly, I dug through all of this, and have some thoughts, although I obviously have not spent nearly as much time studying it and thinking it through as you have, so you may have to bear with me.

      My initial impression is that you need one more link to cement your argument. I may just be missing something, but when I try to construct the argument logically, I am always left with a gap.

      (1) It seems hard to argue that the panel’s interpretation of McCormick is clearly in error. Although the Court in McCormick may have been of the opinion that Congress could not vest patent revocation power in the executive branch, nothing in McCormick seems to be inconsistent with the interpretation that the Court in McCormick was merely basing its decision on a lack of statutory authority. More concisely: it is not clear whether the Court was saying that Congress *cannot* vest such power, or was merely saying that Congress *has not* vested such power. If either interpretation is consistent with the decision, then it potentially offers an interesting question for consideration, but I’m not sure it gives you any support for the proposition that a decision must be in your favor.

      (2) Granfinanciera makes clear that, with respect to the seventh amendment right to a jury trial, the phrase “[s]uits at common law” only applies to “suits in which legal rights were to be ascertained and determined, in contradistinction to those where equitable rights alone were recognized, and equitable remedies were administered.” What is your theory for why a patent revocation proceeding can be characterized as at law so as to trigger seventh amendment protection? Is it the theory espoused by the court in Lockwood, that a jury right should attach to an action to invalidate a patent brought by a defendant because it would apply to the converse situation of an action for infringement brought by a patentee? Is it maybe a slightly more refined formulation focusing on the potential for a patentee to be deprived of his seventh amendment right simply by being beat to the punch?

      (3) Ex Parte Wood & Brundage could arguably be characterized as a case about statutory interpretation, rather than a case about seventh amendment protections. Again, that doesn’t mean it definitely should be read this way, but I’m not sure it gives you any support for the proposition that a decision must be in your favor.

      (4) Lockwood is a great opinion for you, but the procedural circumstances surrounding it cast an unfortunate shadow over it. The panel (in your case) seems to distinguish it based on the distinction between an action before an administrative agency and an action before an article III court. This is possibly because the panel finds the reasoning in Lockwood to be conditioned on the ability to bring an infringement suit in the article III court, but the panel doesn’t really fully flesh out its reasoning.

      (5) Judge Nies’ dissent in Lockwood is incredibly thorough and makes some great points. If English common law allowed for invalidation of patents at equity without a jury, why would a right to a jury attach under the seventh amendment? What of the argument that a right to a jury is not available on issues of law and validity of a patent is an issue of law?

      (6) Your arguments seem like they might potentially implicate other adjudicative proceedings. What is your stance on ITC suits and re-exam proceedings?

      1. 9.3.1

        JCD,

        (1) It seems hard to argue that the panel’s interpretation of McCormick is clearly in error. Although the Court in McCormick may have been of the opinion that Congress could not vest patent revocation power in the executive branch, nothing in McCormick seems to be inconsistent with the interpretation that the Court in McCormick was merely basing its decision on a lack of statutory authority. More concisely: it is not clear whether the Court was saying that Congress *cannot* vest such power, or was merely saying that Congress *has not* vested such power. If either interpretation is consistent with the decision, then it potentially offers an interesting question for consideration, but I’m not sure it gives you any support for the proposition that a decision must be in your favor.

        I do not disagree. Which is why I did not discuss McCormick during oral argument. I think the court spent a great deal of time on McCormick because of the Cooper appeal.

        Still the Supreme Court might be interested in McCormick because it is a direct descendent of Marbury v. Madison.

        1. 9.3.1.1

          Ned,

          I believe that Cooper’s point was more nuanced; McCormick is read in light of American Bell, which very clearly links IP patents to land patents. I also recall that Cooper discussed the rights inherent to land patents as applied to the separation of powers.

          This is how you establish clear error.

          McCormick should not be read opportunistically in a vacuum.

          1. 9.3.1.1.1

            I the Federal Circuit’s reading of McCormick is just a bit off the mark. However, it is also true that the Supreme Court did not in McCormick and its related cases consider the issue of Congress’s power in this area. That is why the public rights aspect, which does address the power of Congress, is critical.

            Also, how in the world can Congress grant the PTO the power to revoke a patent when the Supreme Court has repeatedly ruled the government doesn’t even have standing in court to complain about validity?

              1. 9.3.1.1.1.2.1

                David,

                Does Ned not need to go through the en banc phase first?

                Not that he would succeed there (like Night Writer, I just don’t see that happening), but should he approach that phase with a clear view of “setting the table” for the Supreme Court to (again) smack down the CAFC?

            1. 9.3.1.1.1.3

              People (including this court) are acting as if anything written by Congress must be “OK.”

              This is just not so.

              Not even in the domain of patents, notwithstanding the Constitutional grant of authority.

              Bottom line “folks” is that the legislative branch (in addition to the executive and judicial branches) is just not above the law.

      2. 9.3.2

        JCD
        (2) Granfinanciera makes clear that, with respect to the seventh amendment right to a jury trial, the phrase “[s]uits at common law” only applies to “suits in which legal rights were to be ascertained and determined, in contradistinction to those where equitable rights alone were recognized, and equitable remedies were administered.” What is your theory for why a patent revocation proceeding can be characterized as at law so as to trigger seventh amendment protection? Is it the theory espoused by the court in Lockwood, that a jury right should attach to an action to invalidate a patent brought by a defendant because it would apply to the converse situation of an action for infringement brought by a patentee? Is it maybe a slightly more refined formulation focusing on the potential for a patentee to be deprived of his seventh amendment right simply by being beat to the punch?

        The important point here is that the analysis for whether there is an Article III right or a right to a jury trial is the same with the only difference being whether the particular cause of action was tried at equity or at law to finally determine whether there was a right to a jury trial. But in either case, if a cause of action (think remedy) were tried in the courts of England at common law, such an action (remedy) cannot constitutionally be removed from the courts and assigned to a legislative tribunal.

        The remedy at issue here, and which the court did not even mention, but which we argued extensively in the briefs and at exclusively oral argument, was the right to revoke a patent for invalidity that was actually tried in the courts of England at common law. As such, such a remedy cannot be removed by Congress and assigned to a non-Article III courts.

        Lockwood is interesting but not exactly on point because it’s focus was entirely on the right to a jury trial and not on Article III. It also did not directly involve an action to revoke a patent for invalidity, which is what an IPR is.

        1. 9.3.2.1

          There are a ton of issues here that are tough to muddle through. As it often the case, I think your biggest challenge is figuring out how to present them in a clear and concise way to make sure everyone understands your argument. I personally have spent a good bit of time reviewing everything you’ve pointed to, and I think you’ve done an incredible job of pulling together an argument in some incredibly complicated areas of law, but I thought I would share some of the things that would have helped me to grasp your argument quicker.

          For example, your brief offers that “[i]In Granfinanciera, SA v. Nordberg, 492 U.S. 33, 53-55 (1989), the Supreme Court held that a right which had been adjudicated in either the Law Court, the Equity Court, or the Admiralty Court in England prior to 1791 was not a public right”. Your Opening Brief, p. 53.

          To me the money quote which supports your argument here is “matters from their nature subject to ‘a suit at common law or in equity or admiralty’ lie at the ‘protected core’ of Article III judicial power” 492 U.S. 56.

          Combine that with an argument for why patent invalidation actions are from their nature subject to a suit at common law or in equity, and I believe you have a strong argument.

          At first, I felt that you were introducing a ton of confusion and not necessarily buying yourself anything with your arguments regarding the right to a trial by jury. For example, in your brief you argue that “Congress authorized the transfer of patent validity adjudications from Article III Courts to the USPTO, thereby denying Patent Owners access to a jury trial in violation of the Seventh Amendment.” Your brief, p. 53.

          This seemed irrelevant to me for the longest time. Granfinanciera makes clear that “our decisions point to the conclusion that, if a statutory cause of action is legal in nature, the question whether the Seventh Amendment permits Congress to assign its adjudication to a tribunal that does not employ juries as factfinders requires the same answer as the question whether Article III allows Congress to assign adjudication of that cause of action to a non-Article III tribunal” 492 U.S. 53.

          Under this logic, if patent validity adjudications aren’t legal, the seventh amendment is irrelevant. If patent validity adjudications are legal, then the question of whether Congress can assign the adjudication to a tribunal that does not employ juries as factfinders requires the same answer as whether Article III allows Congress to assign adjudication to a non-Article III tribunal. If you win on the Article III issue, then the seventh amendment issue becomes moot (for this controversy), but you can only win on the seventh amendment issue if you can also win on the Article III issue. So it doesn’t initially seem like there is much reason to raise the seventh amendment issue.

          Then I realized that you may be trying to argue that the seventh amendment should potentially be interpreted in accord with its historical intent, as evinced by the statement that “the thrust of the Amendment was to preserve the right to jury trial as it existed in 1791” 492 U.S. 41-42. In this case, a historical right to a jury trial for patent invalidation actions would be relevant, but this would require an expansive interpretation of the seventh amendment.

          That being said, looking at your brief, I am left scratching my head trying to follow your connections at time. Again, I can’t quite find support for your assertion that “[i]In Granfinanciera, SA v. Nordberg, 492 U.S. 33, 53-55 (1989), the Supreme Court held that a right which had been adjudicated in either the Law Court, the Equity Court, or the Admiralty Court in England prior to 1791 was not a public right”. Your Opening Brief, p. 53. (Instead I only see a statement that “matters from their nature subject to ‘a suit at common law or in equity or admiralty’ lie at the ‘protected core’ of Article III judicial power” 492 U.S. 56.)

          You use this as a launching point for your argument that “patents cannot be public rights under Granfinanciera for at least two reasons”.

          First you state that “infringement actions must be subject to adjudication by a jury”. I do not find this compelling at all, but I may be missing something. Infringement actions seem to clearly be actions at law, and thus subject to seventh amendment protection.

          Next you note that “actions to revoke or cancel a patent were in the
          nature of a writ scire facias under which disputed facts had to be
          subject to a trial by jury”. As noted previously, I believe Ex Parte Wood & Brundage could arguably be characterized as a case about statutory interpretation, rather than a case about seventh amendment protections. Again, that doesn’t mean it definitely should be read this way, but I’m not sure it gives you any support for the proposition that a decision must be in your favor.

          That is, the holding that an action to revoke a patent requires a jury trial is relevant here only to the extent that such holding was grounded in the seventh amendment. If it was merely grounded in statutory interpretation, and did not address the question of whether Congress *could* delegate authority to a tribunal with a non-jury factfinder, then it does not seem relevant. This is still a very interesting argument, however.

          That being said, I personally find the tie back in to the public rights argument superfluous. If the case stands for the proposition that an action to revoke a patent requires a jury, then granting that power to a tribunal without a jury factfinder is inappropriate. Taking such a holding and using it to implicitly argue that this necessarily isn’t a public rights situation and thus that a right to a jury is required seems like circular logic. (I may have misapprehended your argument here.)

          Overall, the question of whether or not a patent revocation proceeding implicates merely public rights so as to allow for non-article III adjudication is really interesting. I think that Scalia’s concurrence in Granfinanciera does a great job of outlining the seeming split in the case law. This split, and Scalia’s seeming frustration with it, actually would seem to give you a non-zero chance of having cert granted should a rehearing en banc be denied.

          1. 9.3.2.1.1

            JCD, I largely agree with your analysis — which is why I focused our oral argument totally on scire facias actions — that they were legal and had a right to a trial by jury.

            Even Lemley recognized in his jury trial article that the Supreme Court has never addressed whether anything else but causes of action that asked for legal damages had a right to a trial by jury. (Other than criminal cases.)

            This issue is, I believe, one of first impression. Which is why I think the Supreme Court took cert in Lockwood.

      3. 9.3.3

        (3) Ex Parte Wood & Brundage could arguably be characterized as a case about statutory interpretation, rather than a case about seventh amendment protections. Again, that doesn’t mean it definitely should be read this way, but I’m not sure it gives you any support for the proposition that a decision must be in your favor.

        Ex parte Wood of Brundage is extremely important because it demonstrates that the Supreme Court already held that there is a right to a jury trial for statutory causes of action to revoke a patent for invalidity. As such, under Granfinanciera, such actions cannot be removed from Article III courts.

        Furthermore, if there was any question about whether scire facias actions to revoke a patent for invalidity had a right to a jury trial, this case settles that question.

      4. 9.3.4

        (4) Lockwood is a great opinion for you, but the procedural circumstances surrounding it cast an unfortunate shadow over it. The panel (in your case) seems to distinguish it based on the distinction between an action before an administrative agency and an action before an article III court. This is possibly because the panel finds the reasoning in Lockwood to be conditioned on the ability to bring an infringement suit in the article III court, but the panel doesn’t really fully flesh out its reasoning.

        As I said, Lockwood is not that important because it is the remedy that is important. Lockwood only seeks a declaration by court that a patent is invalid. But it does not actually invalidate a patent. It only effectively does that because of collateral estoppel.

        In contrast, scire facias actions and IPRs are direct actions to revoke patents for invalidity.

        It is important to note here that the principal argument we made on appeal and at oral argument was directed to scire facias actions and that remedy alone. By completely ignoring this argument, one can read through the lines that the court could not deal with it.

        1. 9.3.4.1

          By completely ignoring this argument, one can read through the lines that the court could not deal with it.” (emphasis added)

          I wonder Ned, if you agree with the suppositions that I have provided (and to which Paul Morgan while merely showing disdain has yet to bother even attempting to provide a legal rebuttal) have anything to do with this recalcitrance to fully vet that position?

          That is, if the court were to engage that argument and find in your favor, what then?.

          As I have posited (without ANY meaningful reply from anyone), this law – the AIA, was EXPLICITLY drafted in a manner that eliminates the judicial possibility of any action that would effectively write what Congress expressly rejected.

          1. 9.3.4.1.1

            anon, as many have said about courts in general, they decide the result they want and write to provide legal justification.

            All I point out here is that they did not discuss the arguments we presented about scire facias actions, etc. One does not know why the did not. But the implications are there.

              1. 9.3.4.1.1.1.1

                (it is also worth noting to our friend Paul Morgan – and his echoes – that the notion of the court “fully vetting” the topic is less than forthright given, as you point out, that the court punted on some of your key positions)

                Hmmm, rather like on these boards, when points of dialogue are put on the table and ig nored….

                ;-)

      5. 9.3.5

        (5) Judge Nies’ dissent in Lockwood is incredibly thorough and makes some great points. If English common law allowed for invalidation of patents at equity without a jury, why would a right to a jury attach under the seventh amendment? What of the argument that a right to a jury is not available on issues of law and validity of a patent is an issue of law?

        Do not get confused that the issue of whether there is an Article III right depends on whether there is a right to a jury trial. It only depends on whether a particular cause of action (read remedy) was actually litigated in the courts of England at common law. Judge Nies’s dissent clearly recognizes that actions to revoke patents for invalidity were actually litigated in the courts of England at common law. Therefore, under controlling Supreme Court precedent, such actions cannot be removed from Article III courts and assigned to legislative tribunals.

        On the jury trial issue, scire facias actions were filed in litigated on the law side of Chancery and had a right to a jury trial. Lockwood actually recognizes that there was a right to a jury trial, although they keep on saying that the action was filed in equity. That is not exactly an accurate statement. The recent Lemley article on jury trials thoroughly discusses scire facias actions and also concludes that they had a right to a jury trial. Further, ex parte Wood & Brundage recognizes that Supreme Court also agreed that scire facias actions had a right to a jury trial because that is a reason the Supreme Court in that case ordered a trial by jury in actions to revoke patents for invalidity.

      6. 9.3.6

        (6) Your arguments seem like they might potentially implicate other adjudicative proceedings. What is your stance on ITC suits and re-exam proceedings?

        ITC proceedings are exactly the kind proceedings were Congress under the commerce clause provide for new remedies were patent validity might be litigated in a legislative tribunal. When the Supreme Court talks about regulatory programs is talking about things like the ITC.

        Is important to note here that while patent validity might be litigated in the ITC proceeding, the objective of that proceeding, the remedy, is directed to imports and exports. It is not directed to revoking a patent for invalidity. Congress for specifically provided that ITC rulings on patent validity and infringement not have collateral estoppel effect.

        I also think Hatch Waxman could be moved entirely into legislative tribunals for the same reason because the remedy sought is the approval or disapproval of generic drugs. Care must be given that patent infringement and validity not have collateral estoppel effect because if they did such actions would have to be tried in Article III courts in the first place.

        1. 9.3.6.1

          Regarding reexam proceedings, what is the remedy? I think the answer to that question will tell you what I think about reexam proceedings.

    1. 8.2

      While there is plenty to “blame” Obama for (transparency or lack thereof, for example), this is NOT one them.

      Oh wait, you are trying to be “clever” again by mixing up memes of those who might be for patents.

      Too clever by half, Malcolm. You only succeed in being an arse.

      1. 8.2.1

        those who might be for patents.

        Indeed — “those” would include a certain class of entitled wingnuts who know a great grift when they see it and just can’t help reciting all the usual cliched scripts about communists, academia, Kenyan usurpers and whatever else bubbles up from the sludge ponds of the Internets and talk radio.

        1. 8.2.1.1

          Malcolm and his own Accuse0thers0fThatWhichMalcolmDoes, yet again….

          NO ONE uses more cliched scripts than you do Malcolm.

          You exemplify the very worst of the “talk radio”type here with your own Opinion/Philosophy rants.

      1. 7.1.1

        Of course, you have to follow the appropriate “flow,” but do you really think that the brow-beaten CAFC (even en banc) is going to want to touch the clear consitutional issues with any sense of the lack of finality that has been engendered by the Supremes?

        Really?

  19. 6

    I didn’t hear the f@t lady sing yet, Ned. Presumably this isn’t over …?

    In other news, Ariosa’s petition for rehearing en banc was denied, with two written concurrences by three judges and one dissent (Newman). I’m sure someone here will get around to a summation shortly …

  20. 5

    I didn’t hear the fat lady sing yet, Ned. Presumably this isn’t over …?

    In other news, Ariosa’s petition for rehearing en banc was denied, with two written concurrences by three judges and one dissent (Newman). I’m sure someone here will get around to a summation shortly …

    1. 4.1

      Yes sorry Ned. That seems mean spirited to me. No reason given and a case of first impression.

                1. actually,

                  As I have said before, I think the principle is correct that Congress, acting within its authority (enumerated powers), can create new federal rights and can allocate their adjudication to federal agencies or to the courts as Congress sees fit. The exception to this is where the particular cause of action (remedy) was litigated in the courts of England at common law.

                  Here revocation actions were so litigated and did have a right to a jury trial.

                  However, the Federal Circuit’s reading of the Supreme Court case law is that the Supreme Court recognizes Article III and Jury Trial rights only for “state law” causes of action — consistent with view that all federally created rights are public rights.

                  The court did not explain how there could be rights to jury trials for patent infringement actions and patent revocation actions (footnote 2) if patents were public rights, and how administrative revocation was consistent with the right to a jury trial in an Article III court when one’s patent was revoked as previously held by the Supreme Court. It simply stated there was no inconsistency. See footnote 2.

              1. 4.1.1.1.1.1.2

                Yes it did. Now I will first quote the Federal Circuit opinion and then what the Supreme Court said.

                “see also United States v. Am. Bell Tel. Co., 128 U.S.
                315, 364–65 (1888) (noting lack of statutory authority for
                the Patent Office to cancel patents).”

                Am. Bell.: “These provisions, while they do not in express terms confer upon the courts of equity of the United States the power to annul or vacate a patent, show very clearly the sense of Congress that if such power is to be exercised anywhere it should be in the equity jurisdiction of those courts. 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 judicial department of the government, and this can only be effected by proper proceedings taken in the courts of the United States.”

                There is a lot more to the same effect. link to scholar.google.com

                The question the Supreme Court was deciding was whether the cause of action to revoke a patent was a legal or equitable, not whether Congress could authorize the PTO to revoke a patent.

                1. This passage speaks to Congressional intent. If it was just a matter of Congressional intent (and not a matter of seventh amendment protections) then Congress could later assign that power to an administrative tribunal.

                2. Congressional intent alone simply does not – and cannot – carry the day.

                  Congress has fully intended many a law thrown out as unconstitutional.

                3. Anon,

                  My point wasn’t that congressional intent is the end of the story, but rather that the cited passage of Am. Bell is clearly discussing Congressional intent. As I’ve noted with respect to some of the other cases Ned is citing, many of these older cases can arguably be read to merely be holding that there was, at the time, no statutory (read: Congressional) authority for patent invalidation anywhere but in the Courts. This is not the same thing as saying that Congress doesn’t have the power to delegate patent invalidation to a non-Article III body. Such a reading would leave that question open (which question was then later decided, although arguably incorrectly for other reasons not based on the line of cases which might be read dealing merely with statutory support).

                4. Jcd,

                  Thank you for the clarification. I do appreciate the nuanced view that you are striving for.

                  Alas, it avails you naught.

                  The counter point I provided shows that it just does not matter whether or not there was Congressional intent.

                  The point being that even with intent, this time (but not previously), that very intent does not provide “immunity” against non-constitutionality.

                  This too is tied to why your post above (“That’s why I think there is a greater chance at success arguing that 314(d) can’t be interpreted as a bar to jurisdictional review.“) will falter. The intent of Congress is clear. I cannot see ANY “interpretation” that can reach a desired “safe” place and still fit that intent. Congress simply tried too hard (and succeeded, if you want to use that term), to make the AIA into a single block item with all of its warts. The court (or Court) simply does not have a viable option of ig noring those warts, and reaching something other than what is plainly there.

                  And what is plainly there does not survive constitutional scrutiny.

                  Oddly, the plain fact that this is not the first such law passed by (and intended to be what it was) Congress and thrown out by the Court seems to be a concept that is simply not “entertainable.”

                  Why do you think that is?

                5. JCD, the rule in American Bell telephone and in McCormick Harvesting traces directly to Marbury v. Madison where the court held that only a court could revoke a legal right (property) and patents were then identified as an example.

                  Now consider whether this was only a matter of lack of congressional authorization. This is equivalent to saying that Congress can locate the adjudication of legal rights either the court system or in legislative tribunals at its discretion. This would mean the authority of the courts over cases and controversies would not be matter granted by the Constitution to the courts but be a power of Congress.

                  The courts exist as an independent and coequal branch of government. If Congress could withdraw from its jurisdiction the adjudication of legal issues and place them in administrative agencies or courts at its discretion, then the court system will cease to function as an independent branch of government.

                6. Ned,

                  You may have to personalize that for Ryan, lest he think it just another “academic implication.”

                  ;-)

        1. 4.1.1.2

          It’s just costs, not attorney fees. Isn’t this just the default under Federal Rule of Appellate Procedure 39(a)(2)?

        2. 4.1.1.3

          Costs are normally awarded to the winning party on appeal, but the scope of allowable costs is pretty narrow. When the appellee gets costs, it’s normally just the cost of printing the red brief, which means that appellees often don’t bother to submit the form.
          link to cafc.uscourts.gov

  21. 3

    Question for lawyers that read this blog. Does this decision mean that the federal government could or could have invalidated title from land granted under the Homestead Act of 1862 purely by administrative action? If so, wouldn’t the federal government have the ability to invalidate title to any private property in the USA purely via administrative action?

    1. 3.1

      I should perhaps formulate my question more precisely. How did the US General Land Office differ legally from the US PTO?

          1. 3.1.1.1.1

            Is a patent to real property so different from a patent to intellectual property?

            Yes. To clarify, a patent (in the USPTO sense) is intellectual property. It is not a “patent to intellectual property”. Also, the meaning of the word “patent” in 1862 may not reflect the common understanding of the term. Do you remember when “literally” was distinct from “figuratively”? Definitions change.

            1. 3.1.1.1.1.1

              I just checked the USPTO website. Its documents (for example, MPEP 1416 No Physical Surrender of Original Patent [R-11.2013] use the legal term letters patent as it has been used for 100s years in English language law both in the USA and in England before the founding of the USA.

              I have to qualify that the spelling of lettres has been Americanized, but here in New England we often use the “re” spellings. My house is at the corner of Allston and Centre St.

              1. 3.1.1.1.1.1.1

                The homestead act did not use the term “letters patent” or “lettres patent”. Presumably, a “letters patent” is a class of the general term “patent”. Would you like to rephrase your question as “Is a patent to real property so different from a letters patent to intellectual property?” The answer is still yes.

                1. I am not sure what you are arguing. Both land patents and IP patents are examples of the general category of lettres or letters patent.

                  Anyway until we became sloppy we used to write specifications of letters patent and not patent specifications.

                  Search these case briefs for specification of letters patent.

                2. I was just pointing out the flaw in your argument, which was originally based on the choice of words in the Homestead Act of 1862.

                  In any case, let me be plain. A “patent” is a grant from the sovereign. The fact that the government can grant lots of different things doesn’t make those things equivalent beyond the identity of the grantor. Clearly, you recognize that there is a distinction between a “land patent” and a patent from the USPTO. The common use of the word “patent” does not make them similar beyond having the same grantor.

                3. The flaw in your own argument is that you think “personal property” is somehow different for a patent (IP) than for any other personal property.

                  It is not.

                4. you think “personal property” is somehow different for a patent (IP) than for any other personal property.

                  No, he just thinks that patents are different from other kinds of personal property.

                  And they are! The only people who think otherwise are the same old kool-aid drinkers who lose their shirts every time any decision is made which weakens their sooper dooper precious patent rights, i.e., you and your cohorts.

          2. 3.1.1.1.2

            JM It seems to be drafted in language that says a patent to property is a patent to property.

            That’s nice. The conveyable right known as a “patent” has been defined by Congress as one that is subject to forfeiture when certain conditions are met. One of those conditions is when a third party presents arguments to the granting agency that the “patent” should not have been granted because the proper prior art was not considered by the Agency.

            It really doesn’t matter what or who called anything else a “patent” 200 years ago or 1000 years ago or 10,000 years ago.

            1. 3.1.1.1.2.1

              The subject to forfeiture items you speak of are separate from the property designation.

              Once so designated, even Congress cannot pass just any law that it wants to. Even Congress has constitutional limits.

              That’s kind of the point that you don’t seem able to grasp.

              1. 3.1.1.1.2.1.1

                The subject to forfeiture items you speak of are separate from the property designation.

                No, they’re not.

    2. 3.3

      I suppose if part of the land described in the act was in Canada, and the US granted the land to someone then the federal government would invalidate the title without further ado…

      1. 3.3.2

        Question for the lawyers who read this blog: if what SR says at 3.3 is correct, does that mean the US would be obliged to wag war against Canada to protect the land described in the grant? If the answer is “no”, does this mean that a clerk for the land grant agency could have given the entirety of US territory to Canada and thereby converted every US citizen into a Canadian without the right to challenge the grant?

      2. 3.3.3

        A survey was performed before a land patent could be issued. One presumes that the survey would indicate whether the land was in the USA or Canada. If there were a dispute, the dispute would be a matter between sovereigns.

        1. 3.3.3.1

          One presumes that the survey would indicate whether the land was in the USA or Canada.

          No, someone at the agency screwed up and gave all the land to Canada. Oops!

          If there were a dispute, the dispute would be a matter between sovereigns.

          Would that happen before or after all the trespassers were evicted from Canadian land?

            1. 3.3.3.1.1.1

              it would be US land owned by the Canadian government.

              Not if the agency messed up the assignment.

    3. 3.4

      Did not the Homestead Act allow reversion of the land back to the Government if the land was not “improved” sufficiently by the residing grantee or claimant in a defined time period? A decision made by administrators?

      1. 3.4.1

        For 5 years after the grant of the letters patent it might be demonstrated to the register of the GLO that the homesteader was not truly homesteading, and the land would revert to the US government. The homesteader could appeal such a finding to an Article III court.

        Although the term did not exist at the time, I suspect Congress was trying to prevent “real estate flipping”.

        1. 3.4.1.1

          JM I suspect Congress was trying to prevent “real estate flipping”.

          I’m pretty sure Congress created the IPR regime to minimize some similarly unsavory activities.

          1. 3.4.1.1.1

            Sec. 2 explains that the patent does not actually issue until 5 years after the claim was entered at which point the patent becomes a private right.

              1. 3.4.1.1.1.1.1

                I have read 35 USC, and I just checked what the Cornell Legal Information Institute says about 35 USC 261. (Check notes tab.)

                Guess what! It says exactly what the Harvard Law School professor said about the first paragraph in the class I was sent to take in patent law too many years ago.

                The first paragraph is new but is declaratory only. The second paragraph is the same as in the corresponding section of existing statute. The third paragraph is from the existing statute, a specific reference to another statute is omitted. The fourth paragraph is the same as the existing statute but language has been changed.

                At this point if Ned goes forward, SCOTUS will decide whether to overrule the CAFC.

    1. 1.1

      A patent is not like other personal property, so it makes little sense to treat a rule applicable to patents as representative of all personal property. For example, there is a statute that grants patents the attributes of personal property. 35 U.S.C. 261 (“Subject to the provisions of this title, patents shall have the attributes of personal property. “) In contrast, a toaster does not require a statute to make it personal property. Moreover, although ownership of a toaster has associated rights, a toaster itself is not a right.

      Would Khrushchev find silliness amusing?

      1. 1.1.2

        The first paragraph of 35 U.S. Code § 261 – Ownership; assignment is declaratory only and points out that a patent to intellectual property is a private property right just like a patent to real property even though intellectual property unlike real property does not exist until the metes and bounds have been clearly ascertained that define exactly what is owned

        1. 1.1.2.1

          Are we reading the same statute?

          I was not aware that “patents shall have the attributes of personal property” means the same thing as “patents are personal property”. Moreover, “Subject to the provisions of this title” is inconsistent with your declaratory interpretation.

          Since the statute says “personal property”, from where are you getting your “just like a patent to real property” conclusion? Tangible personal property is not just like real property, so it seems peculiar to claim that intangible personal property is just like real property.

          1. 1.1.2.1.1

            IANAL, but as I understand the law in Massachusetts real property is that subset of private property which is identified by ascertained metes and bounds. SCOTUS has been telling us forever that claims to IP must have clearly defined metes and bounds just like claims to real property.

            1. 1.1.2.1.1.1

              SCOTUS has been telling us forever that claims to IP must have clearly defined metes and bounds just like claims to real property.

              So?

              1. 1.1.2.1.1.1.1

                MM, I actually think that lack of clarity of claims may deny due process to infringers.

            2. 1.1.2.1.1.2

              I am not familiar with Massachusetts law, but I doubt that “personal property” and “private property” mean exactly the same thing. In any case, it seems weird to define real property as a subset of private property. Can the government of Massachusetts not own land?

              By the way, the meaning of words depends on the context. The skin on cold chicken broth is not the same as the skin on a chicken even though they both use the word “skin” and relate to chickens. Having “metes and bounds” does not make disparate concepts identical.

              1. 1.1.2.1.1.2.1

                he meaning of words depends on the context

                Personal property means exactly that.

                It is you that is not understanding “context.”

                1. I was responding to “metes and bounds” and not “personal property”, which I observed was not used in the comment I responded to. Did you read the last sentence of the second paragraph? To be clear, having metes and bounds does not lead to the conclusion that patents are like real estate.

                  I know what “personal property” means, which I agree does not require context in this case. I also understand the concept of qualifiers, and can distinguish between “attributes of” and “is”.

        2. 1.1.2.2

          JM: 35 U.S. Code § 261 – … points out that a patent to intellectual property is a private property right just like a patent to real property

          I think you missed a rather crucial caveat. Something about “subject to the provisions”?

          I’m glad this silliness about “patent rights are just like personal property!” is being put to bed, finally. It was tiresome years ago.

          1. 1.1.2.2.1

            You are misreading that “caveat.”

            The designation is separate.

            The personal property is….

            personal property.

            Yes, it is subject to the provisions of the title – but those provisions STILL must pass all other constitutional muster.

            That’s an important understanding that you need to arrive at.

            Maybe someday, when you “get over” your animus towards the things that supposedly you work to obtain for your “clients.”

            1. 1.1.2.2.1.1

              “anon” That’s an important understanding that you need to arrive at.

              Only if I want to join you in making the system even more dysfunctional than it already is. You don’t seem to have much luck finding relevant takers these days.

              1. 1.1.2.2.1.1.1

                Eppur si muove.

                It is not “my desire” in making the system anything other than what it is.

                I simply need not find any “takers.”

      2. 1.1.3

        A patent is not like other personal property

        Yes.

        It is.

        You are not reading 35 U.S.C. 261 correctly if you think otherwise.

        1. 1.1.3.1

          Is reading pass a comma difficult for you? If I had intended to stop, there I would have. Now you know. Examples are there for a reason. Here is another one. Apples and oranges are both fruits. The fact that some apples are red does not mean that all fruits are red. Apparently, that is how you few patents in the context of personal property. Do toasters stop being personal property after a certain period of time? Does the existence of toasters depend on Congressional action? The fact that the status of a patent as having the attributes of personal property depends on 35 U.S.C. 261 makes it unlike other personal property. Yes. It is.

          I’m reading 35 U.S.C. 261 correctly. It uses the phrase “personal property”, which is a concept I’m not sure you understand.

          1. 1.1.3.1.1

            Your “logic” is merely non sequiturs (rather fitting, given your moniker).

            That being said, even an apple being red makes it no less personal property.

            That’s kind of the point that you are not getting – you want to dive down to a level unnecessary for the actual legal point here. It is you that wants to (for some reason) talk about apples and oranges, when the only thing needed is to talk about fruit.

          2. 1.1.3.1.2

            “The fact that the status of a patent as having the attributes of personal property depends on 35 U.S.C. 261 makes it unlike other personal property. Yes. It is.”

            Not if the statement is declaratory, and, therefore, an attempt to prevent anyone from arguing that patents are not personal property and, therefore, unlike personal property in law.

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