Pending Supreme Court Patent Cases 2016 (January 12 Update)

45 thoughts on “Pending Supreme Court Patent Cases 2016 (January 12 Update)”

1. 9

   […] January 12, 2016 […]
2. 8

   As I said, Mike, you are making a lot of sense. The US Supreme Court is not going to intervene on this issue in Cuozzo; and it is not going to even take up Ethicon here. It might take up Achates on the 315(b)/314(d) issue. But absent a success in MCM or Cooper, those who are trying to fix IPRs, to level the playing field, to provide for real due process, to end collateral attacks by the same party, etc., etc., etc., are running out of horses to ride.

   Money talks and Congress is not going to fix IPRs. Big Corp likes them the way they are, with a lower standard of proof and BRI. They like that juries do not get involved. They like biased judges.

   There remains only two champions of the idea that patents are property rights still in the field, and they are MCM and Cooper.

   And, I do not agree that if IPRs go down that the AIA as a whole goes down, or that thousands of decisions prior in IPRs or reexaminations are undone. Wellness v. Sharif this last term decided these rights are “personal” so that they can be waived. So, all those prior decisions in reexaminations and IPRs will stand.
   1. 8.1

      Curtis v. Loether, 415 U.S. 189, 94 S. Ct. 1005, 39 L. Ed. 2d 260 (1974) held that

      [w]hatever doubt may have existed should now be dispelled. The Seventh Amendment does apply to actions enforcing statutory rights, and requires a jury trial upon demand, if the statute creates legal rights and remedies, enforceable in an action for damages in the ordinary courts of law.
   2. 8.2

      Help me out with two things Ned:

      1) “that thousands of decisions prior in IPRs or reexaminations are undone.”

      I have not seen any discussions on retro-activity. Where is this comment coming from (who are you responding to)…?

      2) “ I do not agree that if IPRs go down that the AIA as a whole goes down”

      I know that I have asked before, but I am STILL waiting for a credible, legal argument regarding how the Court can EFFECTIVELY rewrite statutory law and include something that Congress expressly rejected for this law called the AIA.

      Thanks for providing more than a feeling (with a hat tip to the band Boston).
      1. 8.2.1

         Anon, others have expressed the idea that one of the reasons that the courts would be reluctant to find in our favor is that it might undo thousands of prior reexaminations and IPRs. I do not think so for the reason stated.

         Regarding the entire statute going down, I certainly have not raised that issue, and if the rights are waivable, one can essentially consent to the jurisdiction of the PTAB by not asking for a jury trial or a trial in an Article III court.
         1. 8.2.1.1

            Thanks Ned.

            While indeed polite, you have not answered either question.

            1) who are these “others” and what forum do you see this discussion on? I have not seen anything like this.

            2) waivable rights have nothing to do with whether or not the statute as a whole can be treated by the courts so as to effectively rewrite this particular statute and include something that Congress expressly rejected. The courts have lots of power in “interpretations,” but this is just not one of them. Paul Morgan is desperate to fight against losing his “beloved” IPR t001, and thinks that somehow (yet he remains strangely silent as to just how), if a constitutional hole is blown below the waterline of the good ship USS AIA Titanic, that somehow the non-bulkhead ship remains afloat.

            To this day there has not been a single cogent legal explanation that has stood up to even the most minor of scrutiny. I even pointed out the irony in one of your recent quotes as to why THIS particular Act, being written deliberately by Congress to be a chaebol-like “too big to fail” gambit, will – when it does spring a leak – go down in one piece.

            Perhaps you have that “magical” explanation of how a court can insert into THIS law an item that Congress explicitly considered and rejected….
         2. 8.2.1.2

            Funny how yet again when I am inviting comments and WANTING people to talk about the substantive matters, the inconvenience of it all reveals itself in silence…

            😉
3. 7

   Ethicon Endo- Surgery v. Coviden, IPR appeal,
   link to cafc.uscourts.gov

   The Federal Circuit held that it was not a violation of due process for the same panel that decided to institute to make the final decision in an IPR.
   1. 7.1

      Newman makes a good point that the statute provides that the Director make the decision to institute and that the PTAB conduct the trial and make the final decision.

      “At the first stage, the Director determines whether
      the review is to be instituted. 35 U.S.C. § 314(a) (“The
      Director may not authorize an inter partes review to be
      instituted unless the Director determines…

      …

      “If instituted by the Director, the Board then conducts
      a trial on the merits. 35 U.S.C. § 316(c) (“The Patent
      Trial and Appeal Board shall, in accordance with section
      6, conduct each inter partes review instituted…”

      The Federal Circuit merely held that the Director could delegate the decision to institute anybody within the PTO he or she chose.
   2. 7.2

      CAFC: it was not a violation of due process for the same panel that decided to institute to make the final decision in an IPR

      That seems like an easy one. Judges make similar calls all the time (e.g., whether to dismiss the case on the pleadings as well as the final decision) and it’s been a long time (I’m guessing) since a due process challenge was mounted against that practice.
      1. 7.2.1

         MM, it may pass “due process” precisely for the reason that courts do this all the time.
   3. 7.3

      I was wondering what in-house counsel paid for this “hail Mary” pass, but then I saw on p. 1 “PHILIP STATON JOHNSON, Johnson & Johnson, New
      Brunswick, NJ, argued for appellant. “
   4. 7.4

      My discussion of the case is here: link to patentlyo.com
4. 6

   Ned: [D]o you think the issue of whether a patent is property is subject to the discretion of Congress?

   The answer would seem to defend on how you define “patent”.
   1. 6.1

      What did Congress say about that?
   2. 6.2

      MM, it seems that it involves the authority of Congress under Art. I, Section 8. If they have no discretion but to grant exclusive rights, then when they do authorize patents, they are property.

      If, however, Congress has complete discretion on whether to grant exclusive rights at all if they do intend to protect inventions, then certainly a patent is not property, but a privilege and a “public right.”
      1. 6.2.1

         You are mucking this up Ned, and being distracted by what Congress could do and not noticing what Congress did do.
         1. 6.2.1.1

            Anon, it seems interesting to me whether Congress can create a legal right, the property of its owner and also say that such property is not really property at all, but a public right, a mere privilege.

            I think the issue was really decided in Marbury v. Madison that did recognize that if Congress can dispose of a grant at will (of course with due process), the possessor of the grant does not have property. But if the grant is a legal right for fixed term, then it is the property of the owner and it cannot be withdrawn or canceled except by a court, and, of course with a right to a trial by jury with respect to disputed facts.
   3. 6.3

      What is interesting here to is if a patent is a public right, it is not a legal right. For this reason, there is no right to a trial by jury before it can be revoked, even in a court of law. For this reason also, there is no constitutional right to a trial by jury for damages because under common law damages were accorded for an invasion of a legal right.

      Indeed, if a patent is a public right, Congress could put even the issue of “compensation” into an administrative tribunal.
5. 5

   NED THAT IS SUCH BS. A PATENT IS COVERED IN THE US CONSTITUTION. LICENSE TO DRIVE IS A PRIVILEGE. TO HAVE A BANK ACCOUNT IS A PRIVILIGE. TO PUT YOURSELF ON SOMEONE ELSES BAMK ACCOUNT .. THAT’S A CRIME NED.
   1. 5.1

      doobydoobydoo,
      (your Caps Lock is on)

      🙂
      1. 5.1.1

         BECAUSE I TALK LOUD ANON.AND NED A PATENT IS PERSONAL PROPERTY. I HAVE THE RIGHT TO PRODUCE OR NOT FOR 20 YEARS. TROLLING BREAKS THAT RIGHT WHICH CAUSES OURT CASES.
         1. 5.1.1.1

            You talk loud like an empty wagon…
   2. 5.2

      doob, I agree with you, but that begs the question. The Federal Circuit has three times now ruled that a patent is a public right. Public rights are not private rights, Not legal rights. Not property.

      Unless MCM Portfolio v. HP is reversed by the Supreme Court, your thinking is wrong.
6. 4

   […] sign of that changing as SCOTUS has just declined to hear three patent cases, including, based on this detailed listing, Allvoice Developments US, LLC v. Microsoft Corp. which we covered here […]
7. 3

   Is it too late to trademark “Ineligible Business Methods, Inc.”?
   1. 3.1

      Maybe they could also file materials science patents without ever disclosing relevant prior art, which is out there, because they attempt to patent what academic groups have previously published.
8. 2

   I think the question of whether an agency acted within its statutory authority In conducting an investigation or proceeding should always be reviewable.

   Agency decisions specifically committed to their discretion, which are typically the case when an agency decides to institute or not institute a proceeding, are typically not reviewable. But if the facts are clear such that the departure from the statutory authority is unmistakable, judicial review should be available.

   Also in my view, the question presented to the PTAB under § 315(b) are not committed to the agency’s discretion, but are required by law. The whole point of non-institution if the patent owner sues and serves more than a year prior is to protect the patent owner from harassment. If the institution decision is wrong on the merits, it must be reviewable because the patent owner is harmed by the review itself in violation of the statute.
   1. 2.1

      Ned, we have been through this before. Yes, whether the PTO exceeded its statutory authority is reviewable. It is clear that the Fed. Cir. knows that. But the Fed. Cir. has yet to rule in any case so far that such exceeding of statutory authority has happened under the rulemaking authority granted to the PTO for IPRs, et al, in the AIA.
      Cases in which the IPR subject claims were held invalid over prior art on the merits as the challenged IPR proceeded, and that Board invalidity decision was sustained by the Fed. Cir., do not make for appealing [pun intended] cert petitions unless it can be shown why the end result must have been different if the same invalidity issue had been tried in an Article III court. That is harder for IPR decisions based only on the contents of patents and publications, and not on contested testimony where the “clear and convincing evidence” requirement in a court patent proceeding is far more important.

      Please indicate if and when you have filed a request for en banc review or a cert petition in your constitutional challenge to all present non-Article III post-grant proceedings, and when those time periods will expire.
      1. 2.1.1

         Paul, I think the decision in our case was clear that decisions to institute are not reviewable, and specifically that includes decisions under 315(b), which the Federal Circuit decided was procedural and not jurisdictional because “time limitations” according to the Federal Circuit are not jurisdictional.

         So whether the decision was correct or not is simply not reviewable. We do not know whether the decision by the PTAB in our case was correct because the Federal Circuit simply refused to review the decision.

         Regarding “authority,” but the Federal Circuit has decided is that they can review only decisions by the PTAB with respect to statutory interpretation. They have clearly held they cannot review the substance of any decision made at the institution stage and whether or not it was within the statutory authority.
         1. 2.1.1.1

            The institution point itself is a taking (regardless and separate from any decision on the merits).

            It is at that precise point that sticks from the bundle of property rights are taken by an Executive agency with no recompense and no review.

            Whether or not that such is exactly what Congress intended is just not the point.
      2. 2.1.2

         Paul, The time limit the file a request for en banc review is January 15, and a certiorari petition must be filed by March 2, unless there are motions to extend.
   2. 2.2

      Ned we have indeed been through this – and the question that Paul answers (and you post) – that of exceeding the statute is NOT the right question to ask.

      The right question to ask is if the statute itself survives constitutional review.
9. 1

   Very interesting re Cuozzo.

   Though apparently not briefed, the BRI issue has inseparable constitutional undertones.

   If patent validity is a public right, then Congress may establish any standard (including BRI) at the administrative level.

   The Justices would certainly understand this, particularly in light of the CAFC’s highly publicized MCM decision.

   If not a public right, but a private right, then the petitioner’s question becomes relevant.

   The constitutional solution would require that PTAB determinations become advisory as opposed to final — under this framework, BRI works. The Art III Dist. Ct. courts then would determine what significance, if any, to ascribe to the advisory admin determination on the legal question (applying disparate standards).
   1. 1.1

      Agreed. If a patent is a public right, the patent owner has no “rights” other than due process. A patent is a privilege, not property.

      So, the issue of the status of a patent is front and center anyway.
      1. 1.1.1

         “ A patent is a privilege, not property.”

         Even (especially) prior to the AIA, Congress was very clear as to what a patent was.

         Since the AIA was not addressing that aspect of law, and made no changes to that aspect of law, the plain fact that a patent IS property does indeed have an impact on the subsequent actions written into law by Congress with the AIA.

         This is expressly why the constitutionality of those later actions (written into law without a change to the property aspect) is the key question here.

         In the AIA, it is plausible that Congress could have changed the very nature of the patent.

         They did not.

         The nature of the patent remains what it was prior to the AIA. That is one elephant that is NOT hiding in a mousehole.

         That is also your starting point when considering when the changes in law that Congress did undertake violate any other constitutional protections of property.
         1. 1.1.1.1

            Anon, do you think the issue of whether a patent is property is subject to the discretion of Congress?
            1. 1.1.1.1.1

               Comment crash….

               Ned,

               Your question, while interesting, is meaningless given what I posted.

               Think of an analogy with voting. If not created, then no issue, but once created, later legislation may not violate constitutional protections.

               Since patents as property predate the AIA, and since the AIA did not directly change THAT aspect of law, the constitutional scrutiny of the section of AIA (and due to the rejection of the separability amendment, the entirety of the AIA) must be looked at through the lens of whether or not a pre-existing property right (or, as I have pointed out – sticks in the bundle or tights associated with that property right) has THAT property’s constitutional protections violated by the Act of Congress.

               If one sits back and objectively thinks about this – this is a pretty easy call. I will grant that there are massive implications from that call, but the call itself is quite clear and easy to make.
      2. 1.1.2

         It doesn’t make a ton of sense for the SCOTUS to weigh in on this issue given the public rights designation per MCM, Patlex, and Joy. I doubt that this is business as usual from the Court’s perspective, and the petitioners in Cuozzo are raising arguments such as policy, deference, and conflicts.

         In essence, the petitioners are saying (implicitly) yes, it’s a public right, yes, it’s an administrative claim, but, because for reasons grounded in, e.g., “policy,” the SCOTUS should re-write the statute to amend the BRI standard. To a degree, they are asking the SCOTUS to commit its own tit-for-tat separation of powers violation – congress per the CAFC gave the claim to the administrative courts; it’s now the SCOTUS’s turn to re-write the law. What?

         Of course, it’s important not to lose sight of the backdrop here — Am Bell and McCormick are key turn of the century SCOTUS property cases and they have been de facto overruled by the CAFC. Well, the SCOTUS just denied the Kessler petition, which featured an esoteric SCOTUS case from a similar time period (1907), where the CAFC wrote ” we must follow Kessler unless and until the Supreme Court overrules it . . .” Dated, but still binding, that’s how the system works – not to be selectively applied.

         The SCOTUS might view Cuozzo as a vehicle to address the Art III issue. Though not briefed, the consideration of BRI as “improper” necessarily requires a review of the constitutional considerations as a pre-req. If granted, Ned you might want to consider participating as amicus.
         1. 1.1.2.1

            Mike, Good idea, that, regarding an amicus.

            On BRI, the petitioners are indeed arguing policy, which is something the Supreme Court cannot touch. Law, yes. But policy, no.

            From Microsoft v. i4i

            “Where Congress has prescribed the governing standard of proof, its choice controls absent “countervailing constitutional constraints.” Steadman v. SEC, 450 U.S. 91, 95, 101 S.Ct. 999, 67 L.Ed.2d 69 (1981). The question, then, is whether Congress has made such a choice here.”

            The exceptions are where fundamental rights are at stake, like in defamation regarding political commentary on a public figure.

            316(e) says preponderance of evidence. This is lower than clear and convincing. This belies the idea that Congress intended a level playing field.
            1. 1.1.2.1.1

               Ned,

               Do you see the irony in the very quote you present?

               To wit: ““Where Congress has prescribed the governing standard of proof, its choice controls absent “countervailing constitutional constraints.”

               As I stated (and where Paul gets into the weeds with wanting to mix in a final decision on the merits), the problem is at the point of institution. REGARDLESS of any following decision on the merits, it is at the point of institution that the executive agency body performs a taking without recompense or review of one of the sticks in the bundle of property rights.

               The fact that the executive agency is following the directions as written by Congress is not the real issue.

               The problem here is that what is written by Congress is the real issue.

               Yes, while Congress is the duly authorized branch of the government to write the statutory law that is patent law (contrasting with judge-made law under the device of common law), NOT ALL of what Congress does write passes constitutional scrutiny.

               And let me remind all (including Paul Morgan), that it takes but one torpedo hit below the waterline of the good ship USS AIA Titanic to sink the entire ship, as Congress was explicit about its choice to make the ENTIRE AIA an all or nothing venture (a ship without internal bulkheads).

               I have yet to see any compelling legal response to this – and my friend the bookie in Vegas has my bet that no one will make one on this thread as well.
               1. 1.1.2.1.1.1

                  Anon, again you are assuming that a patent is property as an extensional thing, a matter of common law, or as a matter of a constitutional right. I agree with you to the extent that I believe that Congress cannot create a patent right that does not provide exclusive rights for a fixed term, which under Supreme Court precedent, are legal rights and the property of their owners.

                  Of course if they are legal rights, Congress cannot administratively revoked them.
                  1. 1.1.2.1.1.1.1

                     No assumptions whatsoever Ned – I am relying on the part of patent law that predates the AIA (and was not changed by the AIA) – the direct and unambiguous words of Congress (hence the analogy with voting…)

                     That’s kind of the point here – and one which I reminded you of the day when your oral arguments were featured on this blog. I do not know if you are precluded from adding this to your en banc (or cert) argument, or if you have waived that argument…
                     1. …

                        anon, but the issue is whether congress can both grant legal, property rights, and then also provide for administrative revocation as if they were not property rights. Congress is not bound by the Supreme Court or by its prior legislation. It can change. But it cannot violate the constitution.
            2. 1.1.2.1.2

               “Where Congress has prescribed the governing standard of proof, its choice controls absent “countervailing constitutional constraints.” Steadman v. SEC, 450 U.S. 91, 95, 101 S.Ct. 999, 67 L.Ed.2d 69 (1981).

               Provided that this applies in in the administrative context, this is a great quote, and might be precisely where the SCOTUS is headed with Cuozzo (assuming that it grants cert).

               Otherwise, the situation presents like this: an appellate court has established a particular cause of action as administrative; per this designation, Congress may remove that cause of action entirely from the Art III courts, in addition to designating any particular standards, etc. — and the SCOTUS is going to weigh in on whether the admin standard governing the admin claim in the admin court makes sense from the standpoint of policy?

               It doesn’t add up.

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