MCM v. HP Briefs

by Dennis Crouch

Petition:

  • MCM-Petition-and-Appendix: (1) Whether inter partes review (IPR) violates Article III of the Constitution; and (2) whether IPR violates the Seventh Amendment to the Constitution.
  • Response Due June 30, 2016.

Amici in Support of Grant

  • MCM_INTERDIGITAL_TESSERA (“Characterizing something as a public right comes with certain consequences. By incorrectly holding that patents are public rights, the Federal Circuit’s decision has far-reaching and wholly implausible consequences that the Federal Circuit never grappled with and that have ‘nothing to do with the text or tradition of Article III.'”)
  • MCM_NYIPLA (“The public rights doctrine is a complex issue that requires this court’s resolution.”)
  • MCM_Mossoff (“[T]his Court has long recognized and secured the constitutional protection of patents as private property rights reaching back to the early American Republic.”) (Signed by Profs Mossoff (Scalia Law), Cahoy (Penn State), Claeys (Scalia Law), Dolin (Baltimore), Ely (Vandy), Epstein (NYU & Chicago), Harrington (Montreal), Holte (SIU), Hurwitz (Nebraska), Manta (Hofstra), O’Connor (UW), Osenga (Richmond), Schultz (SIU)).
  • MCM_UNM (“[T]he threat of IPR devalues university patents.”)
  • MCM_LAUDER (“Amici agree with Petitioner that the IPR procedure was beyond Congress’s power to impose, and its underpinning rationale—that patents are a matter of administrative largesse, rather than a constitutionally protected property right—is constitutionally infirm.”)
  • MCM_HoustonInvestors (“Congress has exceeded its authority to undermine patents to give “patent pirates” encouragement to infringe patents in the well supported historical expectation that the IPR is likely to invalidate the patents.”
  • MCM_SECURITYPEOPLE (“As noted in McCormick Harvesting Co. v. Aultman, 169 U.S. 606 (1898), once a patent is issued, it can only be cancelled or invalidated by an Article III court, not the executive branch. Similarly, as taught in Granfinanciera, S.A. v. Nordberg, 492 U.S. 33 (1989), Congress cannot conjure away the Seventh Amendment fact-finding process employed in Article III courts by mandating that traditional legal claims be tried to an administrative tribunal.”)
  • MCM_IEEE-USA (“This bizarre state of affairs merits the close scrutiny of this Court. All issued U.S. patents deserve the same constitutional protections and legal standards in invalidation proceedings as those available in Article III courts.”) * UPDATE: The brief was filed by IEEE-USA (a division of IEEE).

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

237 thoughts on “MCM v. HP Briefs

  1. Ned reports that IPR is egregious because it “eats at term” and that patents need to be enforceable from straight after filing. I question what he writes.

    Under the EPC, you can ask the court to enjoin, as from the date of issue. At the EPO, regardless whether you are biotech, pharma or engineering, hardly anybody seeks swift grant. With a right to compensation for infringing acts running from the 18 month A publication, with PACE to give you a fast track to issue whenever you ask for it, and with pre-issue pendency giving you the chance to write claims covering the competitor’s new on the market infringing embodiment, and (until issue) to file endless divisionals, in unlimited numbers of generations, who wants early issue as the default?

    1. What happens at the EPO – under its set of sovereign laws – is NOT quite analogous to what happens in the US under OUR set of sovereign laws.

      A blanket post such as MaxDrei’s here that jumps at a direct comparison without noting the key differences is not helpful.

    2. Maybe the answer is to take the patent judges and create them as Art. III judges with limited jurisdiction for patents and let them do all the patent trials.

      You know there are bigger issues here. In MA they created courts for complex business issues because the judges needed to have advanced business training to understand the issues. Same issue here. Few judges want to have anything to do with a patent case and feel they are unqualified to handle it.

      1. While you are at it (with Congress making those judges into Article III judges), throw in there for Congress to employ their Constitutional power of jurisdiction stripping and remove patent appeals from the Supreme Court.

  2. My Comment #8 got a lively reaction, so here goes with another pro-IPR comment.

    Experience at the EPO with post-issue inter partes disputed opposition proceedings is that it is inadvisable to have a pop at an issued patent unless you are going to be able to wipe it out. What doesn’t extinguish instead makes stronger.

    What’s the experience thus far, with IPR? Any signs yet, of the sky-fallers’ predictions, of vindictive bullying “serial” assaults by Goliath, on meritorious patents of David? Or is it thus far actually working out much like at the EPO, that bad patents get culled while good ones don’t get attacked at all?

    1. It is far too early to say with any meaningful confidence. The fact that the EPO’s opposition system has not appreciably destroyed innovation should make us sanguine, however.

        1. Ned can you enlarge on that please. Does your favourite economist know more about oppositions at the EPO than I do? Or does he know more than the patent attorneys on Patently-O about the effects that the brand new IPR provisions of the AIA have had, on the level of innovation in the USA?

          What exactly is it that convinces you that he knows the answer to “that question” even when nobody here does?

          For my part, I think it might be hard to isolate any IPR effect from a dampening effect of recent Supreme Court decisions on those with a business model of investment in business method patents (and other subject matter of doubtful eligibility).

          1. For my part, I think it might be hard to isolate any IPR effect from a dampening effect of recent Supreme Court decisions

            Both you and Greg have made this statement.

            Which makes any call for a “give me evidence” a bit suspect.

            After all, this is a blog, and we do not have evidence gathering powers to begin with – so throw in the given supposition that “surely other things necessarily conflate any results we see,” the retreat to “give me evidence” can be seen as an empty rhetorical tactic (rather convenient to NOT employ critical thinking on any topic).

          2. Max, on Choate, I know the man and trust him. That is all I need to know.

            But, since I am not privy to the raw data upon which his conclusions are based, I cannot cite chapter and verse.

            But we know that oppositions are critical when one has a system like Germany’s where validity is not considered by the same court that considers infringement and issues injunctions. But England and the US are not like Germany. Validity is always a defense. One cannot successfully enforce an invalid patent. There is no need for an opposition at all.

            There may be a need for the patent owner to have his patent narrowed based on later-discover prior art. But that is the prerogative of the patent owner whether to seek narrowed claims.

            1. Bang on, Ned. Germans file more than 60% of all oppositions at the EPO, indeed suggesting that bifurcating infringement and validity is what necessitates an opposition Section in the Statute.

              Me, I think of the USA as a “strong patent” jurisdiction like Germany, that (for all practical purposes) bifurcates the issues. District courts do infringement, while the USPTO takes care of validity.

      1. What would be sanguine would be to understand the differences in sovereign laws that apply (and not merely ‘jump’ at any ‘direct’ comparison).

    2. Max, if and when you have an analogous procedure in the EPO, I think your views might change.

      However, from the American point of view, the mere existence of oppositions is harmful, just as the mere existences of PGRs and IPRs. They allow the big pockets player to raise the cost of obtaining an enforceable patent so that only the wealthy can truly participate in the patent system. As a corollary, only the wealth can participate in inventing new products and services.

      Patent examination needs to be a resource to the inventor to confine his patent to enforceable claims that his patent might be better enforced. There is a tradeoff between quality and expense. Asking for highest-quality can only be achieved at the greatest expense. Such is not in the interest of every patent owner or applicant.

      1. Well yes, Ned. I have wondered for many years about the contradiction between the myth and the reality, in patent law in the USA. It is manifestly clear that it is a game where only deep pockets can use it effectively. Nevertheless, the fantasy is peddled, that it is all to help the Little Guy fend off the mega player.

        On these pages I have read so often that the provisions of the AIA are deliberately skewed to favour Big Corp. Perhaps that is indeed the case, in particular with the IPR provisions.

        1. Actually, if the estoppel provisions of the AIA were actually enforced, IPRs would be a real boon to the small inventor. You get a streamlined system with minimal discovery where you can settle all anticipation/obviousness contentions at once in a very short span of time. This would prevent well-funded entities from dragging litigation on and running up discovery costs so as to bleed the patentee dry.

          Unfortunately, the CAFC has been very reluctant to apply the estoppel provisions to their intended purpose. That is a failing, but not one inherent to the statutory scheme that Congress intended.

          1. Good to know, Greg. In Europe, of course, with IPR under the EPC, there is no discovery and no appeal beyond the EPO Appeal Board, which does settle all substantive questions of written description/eligibility/patentability/enablement/sufficiency and of priority as between rival filers. It doesn’t do derivation/theft (inventor named not the real one) cases, but they are so few and far between in practice that doesn’t matter.

            So I guess that makes the EPC a real boon for small inventors. That’s nice.

        2. MaxDrei, you belie your bias by attempting to color the reality as somehow being myth.

          It is no myth – and quite part and parcel of the traditional strong US patent system that our structure was meant to be geared so that it was NOT a sport of kings.

          Of course, since you do not truly approach a strong US system with a mind willing to understand, your bias is rather unsurprising.

          (Check your history – the US is founded on the revulsion of the “old world” feudal mindset).

  3. Someone might have answered this question before and I apologize if I missed the answer. It’s one of those hypotheticals that judges sometimes ask.

    Let’s say that tomorrow, as a result of rank incompetence or a computer glitch, the PTO grants two hundred thousand invalid patents, including thousands of broad claims that, taken together, are infringed by tens of thousands of companies across the spectrum. Everybody rushes to pay the issue fee and “the deed is done”, so to speak.

    Is it the position of the “IPRs are unconstitutional” crowd that, absent the government attempting to buy back all the improvidently granted invalid patents, the only Constitutional way to remove the cloud hanging over the “infringers” is two hundred thousand jury trials?

    Just curious.

    1. Truly a parade of horribles of the Oh Noes variety that would never happen….

      For a variety of reasons. Including the fact that an issue fee acceptance is a one by one thing.

      1. Truly a parade of horribles of the Oh Noes variety that would never happen….

        I’m sure Justice Breyer will love that answer, particularly when the question is presented as a hypothetical directed specifically to the party claiming to be certain that his/her super important “Constitutional rights” are at stake.

        Maybe take a deep breath and just answer the question. It should be straightforward right? Just follow the precedent …

          1. I did answer it: your hypothetical is bogus.

            What’s bogus about it? Let’s say instead of incompetence leading to two hundred thousand junk patents in one day, it’s incompetence leading to a million junk patents in five years. Does your answer change? The only way to eliminate that incompetently created cloud over our society “constitutionally” is to hold a million jury trials? Because of something a “Privy Council” said in England in 1753?

            Seriously? I dunno. Seems kinda silly to me.

            1. Move the goalposts back from your desire to re-evalaute the historical context to the recognition that what happened then is how our system was formulated.

              Your hypothetical remains bogus.

    2. This a fallacy of limited choices. There are plenty of ways that have been proposed to enable efficient disposal of suits based on patents that are likely invalid. For instance, shifting of fees, sanctions, discovery revisions, etc. Do the research, there have been plenty of proposals. A new cause of action could be passed to allow for damages based on vague threat letters. The Constitution isn’t supposed to flex to provide ideal economic outcomes or convenient solutions. We should violate the right to a jury trial whenever it would be convenient?

      1. HoPB: There are plenty of ways that have been proposed to enable efficient disposal of suits based on patents that are likely invalid. For instance, shifting of fees, sanctions, discovery revisions, etc. Do the research, there have been plenty of proposals. A new cause of action could be passed to allow for damages based on vague threat letters.

        So your answer is apparently: “Yes, the only constitutional way to get rid of those junk patents is by jury trial. But we can make it really, really, really hard and risky — way more difficult and risky than it is now — to assert every patent and everybody will be totally on board with that! There have been all kinds of proposals! So many proposals. Nobody is going to challenge those proposals as unconstitutional. Nope.”

        We should violate the right to a jury trial whenever it would be convenient?

        You’re assuming your conclusion.

        1. The (wrong and twisted) paraphrase followed by the “you are assuming your conclusion….

          Classic AccuseOthersOfThatWhichMalcolmDoes.

          Yay ecosystem!

  4. To me it seems self-evident that ex parte filing and prosecution will result in wrongly issued patents. Such patents do great mischief, especially in a jurisdiction that prides itself on having “strong” patent system.

    To me then, it seems self-evident that there has to be a practicable and clean, quick and efficient way to correct such administrative errors. Going each time to the CAFC strikes me as less than practicable or realistic or reasonable.

    Ned, or others, does it matter or not, that there are wrongly issued patents. If it does, what would you espouse as an efficient solution that makes proportionate use of precious and limited resources, if you are going to do away with IPR?

    1. To me it seems self-evident that ex parte filing and prosecution will result in wrongly issued patents

      You seem to have a fundamental complaint with the process and seek to depend on some ex post grant bandaid to achieve an Ends without regard to the means to that Ends.

      Love how you also slide in there a jab at “strong patents” AS IF being strong is “bad.”

      Quite to the contrary, being strong is good.

      Being weak is what encourages disrespect for the patent system and invites “efficient infringement.”

      But you already know this – because I have already informed you of this.

      1. Nobody’s perfect, are they anon. No PTO Examiner can know all the decisive facts. It is inherent in an ex parte procedure where the Office hears only one side of the argument, that stuff will get through to issue which didn’t ought to have. So a correction mechanism is needed. It stands to reason.

        The “stronger” the patent system, the greater the amount of mischief can be done by the owner of a wrongly issued patent. That’s what you want, isn’t it? So, the stronger the system, the more important a correction mechanism is.

        Only a one-eyed patent maximalist could deny these things.

        1. …says the one-eyed patent minimalist…

          The presumption is that the Office does its Fn job.

          Your whine here of “b-b-but some will slip through” is NOT best answered with either post-grant band-aids NOR making all patents weaker.

          You forgot to address the (far worse) scourge of weak patents that promote efficient breach.

          And once again, your paean against ex parte” is a fundamental “concern” – one that would be better served with a discussion of changing that fundamental aspect. Otherwise what you will obtain is a biased and corrupt system being run by Big Corp with their established monies and desire to avoid disruptive innovation.

          1. The presumption is that the Office does its… job.

            Right, and the IPR process is just part of the Office doing that job.

            1. Sorry Greg – your comment is a non sequitur and an obfuscation of the critical point (as I have already posted, it is simply the wrong question to ask – or indicate as you do here – whether the Office is “doing its job.”

              Your reply is just not helpful.

              1. Your reply is just not helpful.

                Fair enough. I was being cheeky, not helpful.

                By way of more substantive response to your earlier post…

                Your whine here of “b-b-but some will slip through” is NOT best answered with either post-grant band-aids NOR making all patents weaker.

                Why? I see an assertion here, but not an argument. From where I am standing, the “band-aid” of IPR is a good way of dealing with the problem of improvidently granted claims. It puts the burden of clearing them off the landscape (which is a benefit for all of us) on those best able to afford it, but reduces the transaction cost to make it easier for the would-be challenger to bring the challenge.

                Nor does it make “all patents weaker.” If your claims are already novel and nonobvious over the entire state of the art, you have nothing to fear from IPR.

                Mind you, this is only true so long as the CAFC actually gives some teeth to the estoppel provisions of § 315, which they have not been doing so far. This, however, is more the fault of the CAFC than of Congress, who drafted the estoppel clearly enough.

                You forgot to address the (far worse) scourge of weak patents that promote efficient breach.

                Huh? This is an empirical claim, so you might do us the favor of adducing the evidence behind it instead of tossing off such assertions so blithely. If you do not care to make the argument for your assertion, you can hardly be surprised if no one takes it seriously.

                1. Greg: If your claims are already novel and nonobvious over the entire state of the art, you have nothing to fear from IPR.

                  This. And the fact is that applicants are still filing applications at record rates and patents are still being licensed left and right. Are licensing rates lower? Maybe. That’s not a constitutional problem. The government never promised patentees that their patents would never be subject to ex parte challenge. On the contrary.

                  Ideally, of course, the IPR regime will be expanded to include subject matter eligibility challenges, given that those challenges are inextricably linked to the state of the art.

                2. The “you have nothing to fear” is CR@P and ignores the costs and possibly endless serial attacks.

                  It is nothing more than hand waving because the ends are desired.

                  (The parallel to the criminal world and abandoning any proper search and seizure protections because “the innocent have nothing to fear” should be painfully obvious)

                3. I agree with you about the serial attacks. That is why I said elsewhere on this thread that it distressing how weakly the CAFC are applying the estoppel provisions of § 315.

                  As for the analogy to criminal law and the IV amendment, not only is the “parallel” not “painfully obvious,” this is just about the most silly and strained analogy you could possibly have attempted. To be subject to an IPR is nothing like being subject to criminal trial, and having a claim declared unpatentable is several, several degrees shy of being sent down to Sing Sing.

                4. Now you are not only being “cheeky” but downright silly in closing your eyes to the parallels – of course there are differences and of course those differences are, well, different – but you clench tight your eyes to the parallels (or seek to diminish them) without even a meaningful pause.

                  Sorry Greg – you are losing your “reasonableness” and I suspect that it is because you are aligning too closely with a desired Ends and starting to realize that the existing means really do have some serious issues.

                5. “anon” — The parallel to the criminal world and abandoning any proper search and seizure protections because “the innocent have nothing to fear” should be painfully obvious

                  Except that in the case of IPR’s there’s been no “abandonment of protections”. Not even close. We’ve already been through that.

                  If the PTO is acting arbitrarily, they can be sued.

                  As for innocent people being afraid, those fears have already been taken into consideration. That’s why IPRs were created in the first place. You know, reams upon reams of junk patents being asserted in East Texas against hundreds of disparate defendants. Somehow you’d forgotten all of that? How convenient for you.

                6. Not forgotten A just not buying the Big Corp manufactured “OhNoesTr011s” propaganda.

                7. there’s been no “abandonment of protections”. Not even close. We’ve already been through that.

                  We’ve been through the fact that you are wrong on what happens with IPR.

                8. IPR’s are political star chamber proceedings. And since a certain class of patent owners are treated differently than the favored class – it also violates equal protection.

              2. Bother, I see that I failed to close my blockquote. Let’s try that again.

                You forgot to address the (far worse) scourge of weak patents that promote efficient breach.

                Huh? This is an empirical claim, so you might do us the favor of adducing the evidence behind it instead of tossing off such assertions so blithely. If you do not care to make the argument for your assertion, you can hardly be surprised if no one takes it seriously.

                1. Snagged in the “moderation” filter:

                  An “empirical claim”…?

                  0pen your eyes s0n – the active trend is all around you.

                  (For evidence, just look at the AIA and which types of entities promoted that CR@P legislation)

          2. The presumption is that the Office does its Fn job.

            The evidentiary burden remains on the challenger to prove invalidity. IPRs change nothing with respect to the legal fiction of that “presumption.”

            the (far worse) scourge of weak patents that promote efficient breach.

            Wow. Wait a minute … what?

            You’re suggesting that a system where likely invalid patents — held by a tiny tiny tiny fraction of the populace — are ignored by the public is worsefar worse — than a system where it’s a taken for a granted that you’ll be dragged into East Texas and forced to spend millions to defend yourself against some junk that should never have been granted? Really?

            The patent maximalist script just got a lot more interesting. Tell us more about this “scourage” of “weak patents”, “anon.” It sounds really awful. How many patent owners have applied for food stamps in the past year? Surely you have the data.

            a biased and corrupt system being run by Big Corp with their established monies and desire to avoid disruptive innovation

            Class warfare! Class warfare! LOL

            Seriously, if Q and his disciples had been complaining when Dave “Big Corp” Kappos was burning the system to the ground you might have some credibility left. But you were cheering the bias and corruption then. And we all know why.

            1. I did not get past the very basic and incontrovertible error of:

              IPRs change nothing with respect to the legal fiction of that “presumption.”

              1. I did not get past the very basic and incontrovertible error of: “IPRs change nothing with respect to the legal fiction of that “presumption.”

                That’s not an error. Before IPRs we had ex parte re-examination and the “presumption” was dealt with identically, i.e., IPRs changed nothing with respect to the legal fiction of the “presumption.”

        2. Nobody’s perfect… No PTO Examiner can know all the decisive facts.

          Exactly. That is why the IPR process is a salutary part of the overall patent system. The PTO simply does not have the resources to search all the art as thoroughly as is really necessary to be certain that a claim is both novel and nonobvious. So we put the burden of finding the most relevant art on private actors, who have more resources than the PTO and more motivation to do it right, and we let them do the searching. Then we bring that new art back to the PTO, and let them take another knock at it in light of the superior quality search that has just been done.

          This, of course, only serves to establish that IPR is eminently sensible, not necessarily that it accords with our U.S. constitution. There is no necessary connection between “X is a good idea” and “the Constitution permits X.” Still and all, things are presumed constitutional until they are shown to be otherwise, and so far the case presented here and in the linked briefs for unconstitutional is only plausible, not ironclad (except that, for aught I know, Ned could be 100% correct about the VII amendment aspect; I would not know if he is or is not).

          I think that there are ways that the Court could construe the AIA that are unconstitutional, but my hope is that the Court construes the AIA in a way that preserves its constitutional validity. It would be a shame to see IPRs thrown out of the system.

          1. … or eminently captured by those interests who ALREADY have a large supply of cash.

            You omit a very real asymmetry in your “band-aid.”

            Oops Greg – you are getting sloppy in your eagerness to achieve a desired ends

            1. You omit a very real asymmetry in your “band-aid.”

              I do not see how IPRs are asymmetric. It may be (for aught I know) that IPRs are being used by wealthy corporations to attack smaller companies, but the reverse is also true. Consumer Watchdog is hardly the face of the Fortune 500.

              Oops Greg – you are getting sloppy in your eagerness to achieve a desired ends

              Ad hominems do not suit you. You are better than that.

              1. It was not an ad hominem.

                You aregetting sloppy and it is more than apparent that your desire for a specific Ends is driving your desire to “not see” the problems with the means.

                Sorry that you took the statement as an ad hominem, as it clearly is not. I am sorry because this means that you will not stop and think about what you are doing and reflect the veracity of my observation.

              2. You don’t see….?

                Again…?

                Sport of Kings – base any aspect on a “who has the money to do” and you slant the playing field.

                An exception may exist – but that’s an exception that proves the rule as they say.

          2. Greg, the PTO could simply issue unexamined patents and offer the patent owner the opportunity to have his patent examined post grant so that it might be better enforced. But patent term is measured from filing, and all this PTO procedure simply eats at term. Patents need to be enforceable almost from filing, and patent owners need to get out from the PTO quagmire as quickly as possible.

            Going into court with a patent that is not clearly valid, not clearly infringed has got to result in some sort of sanctions. That is why the PTO is there as a resource to the patent applicant to help him clarify exactly what it is that is novel.

            Now, as you know, once a patent owner accuses anyone of infringement, that party can bring them to court. If the patent owner is not prepared to defend validity or assert infringement, he or she is going to lose, be sanctioned an otherwise be made certain they made a mistake.

            IPRs are harmful to the patent system because they can be brought by anyone. No standing is required. Big boys threaten and actually do file IPRs not only on patents they are accused of infringing, but on whole portfolios of the small fry. The mere existence of the IPR procedure is by itself all but killing the US patent system.

            You might want to ask any university what they think of IPRs. link to ipwatchdog.com

            1. The mere existence of the IPR procedure is by itself all but killing the US patent system.

              This is an empirical claim, and it is just way too early in the process to have the sort of data on hand to establish it.

              My support for IPRs is predicated on a theory of how the patent system works and/or should work, and I am quite willing to believe that my theory is inconsistent with actual lived experience. Lots of theories are.

              But I will actually need to see the data before I am convinced that my theory is wrong, and you simply do not have the data to back up your assertion. No one has, because IPRs only came on the scene a few years ago now.

              If by (e.g.) 2018, some measurable index of innovation is way down, I will be happy to reconsider my support for IPRs. Until then, however, claims that it is “killing” the system are just so much empty hyperbole.

            2. Ned: Going into court with a patent that is not clearly valid … has got to result in some sort of sanctions.

              All well and good.

              Except that granted patents are “presumed valid” until declared otherwise by a court or the PTO. And you know as well as I do that most of the same folks who are dying to see IPRs deemed unconstitutional will never, ever advocate for the removal of that presumption. In fact, they’ve repeatedly relied on the existence of that presumption both to argue for the unconstitutionality of IPRs and to defend the worst tr0lling behavior out there.

              The mere existence of the IPR procedure is by itself all but killing the US patent system.

              That is ridiculous.

              You might want to ask any university what they think of IPRs.

              Did someone take a poll of all U.S. universities and ask them what they think about IPRs? If so, I’d love to see the question that was asked and the results.

              1. MM, good point on the presumption.

                Regarding IPR procedures — it is killing the patent system for small inventors, startups and universities. You might want to visit the other patent blog for a moment and read Chris Gallagher’s piece that U R&D is being negatively impacted by a number of factors, but post-grant invalidation is prominent.

                link to ipwatchdog.com

                1. You might want to visit the other patent blog for a moment and read Chris Gallagher’s piece that U R&D is being negatively impacted by a number of factors, but post-grant invalidation is prominent.

                  Ah, so a substantial portion of university research was being driven by the licensing of invalid patents.

                  That’s really fascinating.

                2. Why of course, MM, the lowering of the standard of proof demonstrates that the patents were invalid all along.

                3. I read the linked piece. Two responses:

                  1) Almost nothing was said about IPRs & PGRs. I am not sure why this article is supposedly relevant to the present discussion.

                  2) One would have to look really hard to find anything in there that might be called “evidence” for the author’s conclusion. It was long on buzzwords, but rather short on facts.

            3. You might want to ask any university what they think of IPRs.

              Assuming that there is a consensus view among universities, I am not sure what this proves. We do not have a patent system merely to amuse universities, or any other set of patent holders. We have a patent system to incentivize innovation.

              If a given aspect of the system incentivizes innovation, it is a good aspect. If a given aspect gets in the way of innovation, it is a bad aspect.

              It is really as simple as that. How parties feel about various aspects of the system is really beside the point, except to the extent that it impacts their incentive to innovate.

              If there is evidence that universities (or anyone else) is doing less R&D because of IPRs, I would be very glad to see that evidence, and that would seriously shake my belief in their value.

              Mind you, it will be hard to tease out the incentive effects of IPRs because they came on the scene roughly contemporaneously with Mayo/Myriad/Alice. I am convinced that those cases have done quite a lot of damage to the innovator’s incentives, so if there is a steep drop in R&D after IPRs started, it will be important to see how we might tease out the effect of IPRs compared to the effect of appallingly bad SCotUS precedents.

              1. Greg: it will be hard to tease out the incentive effects of IPRs because they came on the scene roughly contemporaneously with Mayo/Myriad/Alice. I am convinced that those cases have done quite a lot of damage to the innovator’s incentives,

                Is there any evidence that universities are doing less research because of those cases?

              2. Greg, “We have a patent system to incentivize innovation.”

                Agreed.

                So, why is that you have a hard time equating the cost of obtaining a patent that can be enforced in court with the incentive to innovate?

                1. I do not have a hard time imagining the connection between cost to enforce and incentive to innovate. But I also do not have a hard time imagining a connection between expense of removing a blocking patent and incentive to innovate.

                  Which of these two competing forces wins out in the real world? This is an empirical question. Show me the data (once we have had enough time to acquire a meaningful data set) and I will happily change my mind that IPRs are beneficial on balance. Right now, we have no data, so I have only my Bayesian priors, so to speak.

                2. “Removing a blocking patent.”

                  Two points here.

                  1. It is well understood that patents actually spur innovation by forcing design arounds.

                  2. There one can always take a license and still challenge the validity of a patent. One is not blocked.

                  The concept you are proposing is really is this and it is advanced by the West Coast: patents hinder the introduction of new products and services, so it is better to ignore them and then deal with the patents of others after the fact, but where the patent holder gets only a small royalty at best. This is called, “efficient infringement.” It is modeled on the idea of “efficient breach,” which is also being advocated by the West Coast.

                3. Ned: The concept you are proposing is really is this….: patents hinder the introduction of new products and services, so it is better to ignore them

                  That’s not it all.

                  The concept is: there are reams and reams of junk patents out there right now. It’s incredible, unbelievable ridiculous junk and it’s existence is the fault of the PTO and the CAFC being utterly asleep at the wheel. The idea of allowing an industry of b0ttom-feeding lawyers and their clients to continue to siphon money out of the economy and into their pockets by threatening people with that junk is disgusting.

                  That’s “the concept.”

                  Now if you want to claim that without even more junk patents that are even more difficult to invalidate that nobody is going to write new software or create an “app” that allows me to “automatically” determine whether I need to eat less candy bars, then prove it. Prove it with evidence.

                4. 1. It is well understood that patents actually spur innovation by forcing design arounds.

                  Sure, sometimes. I am all in favor of design arounds (except where my clients’ claims are concerned). I am skeptical, however, that IPRs constitute much of a disincentive to design arounds. I work mostly in the pharma industry, and when my clients encounter a blocking patent, they ask themselves “design around or invalidate?”. The answer is almost always “both.”

                  2. There one can always take a license and still challenge the validity of a patent. One is not blocked.

                  Maybe this is how it works in your industry, but not in mine. “Take a license” is rarely an option in pharma, because the patentee is only rarely willing to give a license.

                  The concept you are proposing is really is this…: patents hinder the introduction of new products and services, so it is better to ignore them and then deal with the patents of others after the fact…

                  Definitely not. If there is one thing my clients do not do, it is just to ignore patents. The likelihood of litigation is too high, the costs of litigation are too steep, and the potential damages too ruinous to launch any new venture until we are sure that every obstacle has first been cleared from our way.

                5. Greg’s ratehr bizarre throwback (right from the Infringer’s handbook) of

                  But I also do not have a hard time imagining a connection between expense of removing a blocking patent and incentive to innovate.

                  is met with the proper reply from Ned of:

                  1. It is well understood that patents actually spur innovation by forcing design arounds.

                  Greg – this is basic knowledge. You are sounding more and more like a script reader.

                6. Ah, I see now that Greg’s post has cleared the moderation buffer that he works in Pharma.

                  Without any snark, that explains quite a bit.

              3. MM, no doubt there are junk patents – mainly if not exclusively of the “computer implemented” variety.

                But efficient infringement is a doctrine that simply allows infringement without any penalty. In the words of Story, in such a system, the patentee will soon be exhausted. See, Pierson v. Eagle Screw Co., 3 Story 402 (1844)(also reported at Curtis (’67), Section 338, p. 343-5, n.7). Story argued, as did many others, that infringement damages needed to include the cost of enforcement.

                1. Ned,

                  Malcolm is just turning to his trite tactic of denial.

                  He really wants others to believe that the patent system is NOT under attack from the ideologies of the Left and the Right.

                  We’ve been over this many times now.

        3. Max, I think we need to accept that there is legitimate concern about both “trolling” with weak/invalid parents and “reverse trolling” to harass legitimate inventors who simply lack the resources to protect their rights against so many bites at the apple to attack their patents however valid they are.

          The status quo is a sport of kings, where essentially licensing from non-wealthy inventors is all but obsolete and “efficient infringement” runs rampant in the midst of no willful damages and the backdrop of IPR costing seven figures for a patentee.

          The pendulum needs to swing back at least somewhat. Two wrongs don’t make a right.

          1. Ken: The status quo is a sport of kings, where essentially licensing from non-wealthy inventors is all but obsolete

            When has that not been the case? Serious question.

            How many “non-wealthy” inventors that deserve to be zillionaires are we talking about here? Ten? Thirteen?

            “efficient infringement” runs rampant

            Can we see some evidence of this fantastic change?

            There’s plenty of evidence showing a lot other aspects of the system “running rampant”, as everyone knows very well.

            there is legitimate concern about …. “reverse trolling” to harass legitimate inventors who simply lack the resources to protect their rights

            Please name these “legitimate inventors” who have been “reverse trolled” and who “lacked the resources” to defend themselves.

            1. Where is the evidence of your accusations?

              Oh wait, only others need to follow such things as “rules” or “providing evidence” – Malcolm does not deign to follow the rules that apply to others.

              Happy Decade of Decadence.

    2. Max, if the patent is invalid, the patent owner has the right to file a reissue. If he attempts to enforce it, there is always summary judgment, sanctions and the award of costs and attorneys fees.

      Invalid patents are not a menace in the US.

      What bugs the big boys is that small fry can sue them and win.

      1. Invalid patents are not a menace in the US.

        This seems stronger than the evidence will support. I commend to your attention the recent paper by Cohen et al. (2016) Science 352:521–22.

        1. “Menace” is clearly a relative term and it is beyond a doubt that the “Tr011” scare tactic propaganda has been (and continues to be) blown WAY out of proportion.

          Sorry to see Greg apparently believing the propaganda.

          1. the “Tr011” scare tactic propaganda has been (and continues to be) blown WAY out of proportion.

            Says the totally credible guy who has habitually defended the worst of the worst patents and the worst of the worst patentees since forever.

            But nobody remembers any of that! We were all born yesterday.

          2. You did notice (I hope) that they actually have data in that paper. Do you care to address those data? It is fine to say “‘[t]ro11’ scare tactic propaganda… [is] blown WAY out of proportion,” but they show exactly what the proportion is. Simply ignoring that by shouting “propaganda” is not particularly helpful, or engaged with the actual terms of debate.

            1. Cannot access the paper – but suffice to say that “numbers in a mere paper” – especially ones from academics with an agenda – have been shown to be wildly F A L S E.

              Greg – you are mouthing sound bytes and seem to have NOT been paying attention over the last few years on this topic of “Tr011” propaganda.

        2. Looks like that article is behind a paywall. But the summary

          “NPEs—in particular, large patent aggregators—on average, act as “patent trolls,” suing cash-rich firms seemingly irrespective of actual patent infringement.”

          is a statement that on its face is all but ludicrous. No one sues anyone any more without a good case for infringement — at least not since Octane Fitness and the change to Form 18 pleading.

      2. Ned: If he attempts to enforce [an invalid patent], there is always summary judgment, sanctions and the award of costs and attorneys fees.

        I think you meant to say “occasionally” instead of always. What also happens quite often is the owner of the invalid patent is rewarded with license fees. That’s what patent tr0lling is all about (for example). That’s why b0tt0m-feeders like Rust and Niro and Spangenberg and Gross got into the action. Easy money. You just puff yourself up and push your junk at your targets until they cough up. Then you pat yourself on the back and laugh as you deposit the money.

        Invalid patents are not a menace in the US.

        Well, you lost that debate (unsurprisingly). You lost that debate mainly because so many people on your side of the fence are entitled t0xic blowhards who could use a few years in jail.

        1. Except the facts do not support your views – see the Katznelson request and the subsequent White House “changes.”

          The propaganda of the “Oh Noes Tr011s” was pushed by Big Corp (the very worst of the ‘G-g-g-grifters’) – funny how Malcolm is caught in yet another dichotomy when it comes to real ‘grifters’ (just like his duplicity in being against the form of innovation MOST accessible by the NOT-1%ers).

          “Go figure Folks”

  5. As noted by the NYIPLA, the Supreme Court needs to take this case because both issues are important and this is the last case that the lower courts decide thorough and reasoned opinion discussing both issues.

    After the Cuozzo oral argument, it is clear that the Supreme Court now understand IPRs. They promptly deferred Cooper and will continue to defer Cooper unit MCM is briefed. It appears they fully intend to take this case because of the very important constitutional issues involved: Separation of powers and the right to jury trial for validity. On the latter issue, they have taken every serious jury trial issue for a very long time. Every one. They took Lockwood in 1995. That case decided that validity had a right to trial by jury.

    Because of the seriousness of the issue, and the interface with the growing power of the administrative state, expect a lot of amici from outside usual suspects in patent law. Professors who are genuinely interested in the bigger issues are interested in this case. It has the potential to be a landmark case to the extent it lays down new markers on separation of powers and on what kind of actions at common law are entitled to jury trials today.

    1. On the other hand, if cert is denied, you will have provided the executive and legislative branches with carte blanche to take control over patent validity challenges via the PTAB.

      1. carte blanche to take control

        And not JUST for validity – but for all of patent law.

        Ned is alarmed at the prospect of what this fully means: that the Supreme Court itself could be cut off entirely of its addiction to shove its fingers into the wax nose of 101.

        To Ned, it would be simply UN-American if you could not have the Supremes having their common law writing impact on the statutory law that is patent law.

  6. Does anyone else think the Supreme Court’s denial of cert. in the initial Zoltek appeal gives us some insight into the Court’s thinking on this issue? As I recall, the first Zoltek decision found that patents were not property within the meaning of the Fifth Amendment. I seem to recall that patents were characterized as a “creature of statute” which allowed the government to infringe under 271(g) without consequence (because of the way 28 USC 1498(c) was drafted). If the Supreme Court were eager to declare that patents are a private right, wasn’t Zoltek an excellent vehicle for doing so?

    Also, this public/private right distinction doesn’t seem to play nice with the Court of Federal Claims patent jurisdiction granted under Section 1498. As I recall, a patent can be invalidated in the Court of Federal Claims (an Article I court) just as it can be invalidated in an Article III district court. There is no right to a jury trial in the Court of Federal Claims. So, if a patent is truly a private right, does that create Constitutional problems for the Court of Federal Claims’ jurisdiction? Or, does the fact that these cases arise in the context of a waiver of sovereign immunity play a role here? Or, perhaps the review of the decision by an Article III court cures the constitutional issue?

    Really tough issue in which every side of it seems to have both significant merit and some serious weaknesses.

    1. I had not considered the point about the Court of Federal Claims, but that is a really good point.

    2. JustaDude, the ITC also can hold a patent invalid, but its ruling are not res judicata or collateral estoppel. I will assume that if the patent owner has a right to jury trial on validity, that he cannot be forced to give up that right simply because he must sue for compensation for a taking of his patent by the government. The Federal Claims court scheme works only if the ruling of the claims court does not have collateral estoppel effect.

      You need to read Wellness v. Sharif from last year. The Supreme Court held that rights to a trial in an Article III court can be waived just as much as can the right to a jury trial. But under Granfinaciera, one cannot be forced into equity or an adiministrative court against his will to litigate a legal claim.

      1. under Granfinaciera, one cannot be forced into equity or an adiministrative court against his will to litigate a legal claim.

        There would seem to be a pretty big difference between the right to assert a valid patent in court, on one hand (which nobody is challenging), and defending the validity of an improvidently granted patent on the other hand.

        Refresh my memory: did Granfinaciera concern a granting agency’s reconsideration of a granted “right”, where that “right” was granted with the caveat that the granting agency can and would reconsider that “right” upon a proper showing of infirmity?

        Kind of an important “nuance.”

        1. MM, until 1902, British patents were issued with a provision that allowed their revocation for “inconvenience.” However, when validity was at issue, the Privy Council granted the exclusive authority to the common law courts to consider the issue of validity. That was done in 1753. From that date, until 1980, the patent owner had a right to have the validity of his patent tried to a jury in common law actions and in actions to revoke his patent.

          The idea that patent owners did not have a right to a trial by jury is a recent assertion. No court has ever held that there was no right to a trial by jury for patent validity except for the Federal Circuit in Patlex and now again in MCM. Inconsistently the same court held that there was a right to a trial by jury for patent validity in Lockwood. At least Judge Nies knew that Lockwood and Patlex could not be reconciled.

          1. Ned: when validity was at issue, the Privy Council granted the exclusive authority to the common law courts to consider the issue of validity.

            And why did the “Privy Council” do that?

            Presumably they had a really great reason that makes total sense, even given the wildly different facts we are faced with in a completely different country more than 250 years later.

            So what was the Privy Council’s awesome reasoning?

            1. Not surprisingly, Malcolm seeks to kick up dust and clench tight his eyes to the point of history (conversion at our country’s founding) with an obsequious 0bsess10n with “what were the facts then”…

              The point here Malcolm – the simple point – is that OUR legal structure is built in a certain historical way.

              Don’t like it?

              You have several options:

              Speak to your Congressman and seek a formal change.

              Leave.

              Either one is fine – but what you are doing here, dissembling and qvetching is just not a great choice – for anyone.

              1. OUR legal structure is built in a certain historical way. Don’t like it? You have several options: Speak to your Congressman and seek a formal change. Leave.

                Or you can leave.

                After all, there’s a “scourge” of “weak patents” out there. There being efficiently breached!

                The horror, the horror …

                1. Thanks but no thanks – I would rather stay and have the law structure recognized for what it actually is.

      2. [T]he ITC also can hold a patent invalid, but its ruling are not res judicata or collateral estoppel.

        Hm, I know that is what Tandon Corp. v. U.S.I.T.C., 831 F.2d 1017, 1018 (Fed. Cir. 1987) held, but I am not sure this is still true in view of B&B Hardware.

        1. Greg,

          Thanks for pointing out B&B Hardware and that decision’s impact on issue estoppel (as opposed to collateral estoppel), but that only makes the proper focus even more important.

          That proper focus (the right question) needs to be on the separate initiation decision which does NOT have ANY reviewability nor does it provide for ANY recompense for any sticks in the bundle of property rights of a granted patent.

          Malcolm likes to pretend that “due process” is fully satisfied, but it is not. Just because some “standard” has been announced does NOT “due process” bring. The decision to initiate is very much a purely discretionary executive branch agent decision for which there need be no “record of reasoning,” certainly – as designed by Congress** – no judicial branch review, and certainly no recompense for the very real differences in property attributes that immediately happen upon initiation.

          That point just is not like the case that you cite.

          1. ** – this points the way to the right question, and centers not on the actions of the Office, but on whether or not Congress can write a law that affects property rights that those existing property rights enjoy other Constitutional protections.

          2. issue estoppel (as opposed to collateral estoppel)

            This is a small point, but I am not sure what you mean here. “Issue estoppel” is just the British term for “collateral estoppel” (which is now called “issue preclusion”). In other words, “issue estoppel” and “collateral estoppel” are the same thing. U.S. v. Kashamu, 656 F.3d 679, 684 (7th Cir. 2011).

            You are definitely correct, however, that B&B only concerns issue preclusion. It does not necessarily reach to claim preclusion (once called res judicata).

            That proper focus (the right question) needs to be on the separate initiation decision which does NOT have ANY reviewability nor does it provide for ANY recompense for any sticks in the bundle of property rights of a granted patent.

            But the decision to institute does not take any sticks from one’s bundle. Imagine I sue you for infringement. In your answer, you must plead any affirmative defenses that you intend to raise, including invalidity. If you actually pursue those defenses, you must prove them by clear and convincing evidence, as required by § 273(b).

            Now imagine that, after serving me with your answer, you petition for IPR of my patent, and imagine that the PTAB grants. What is the effect of that grant on your burden in our ongoing lawsuit? No effect at all. You still must prove your defenses in the lawsuit by clear & convincing evidence, and my claims in the lawsuit will still be construed under Philips. In other words, the PTAB’s grant has not made one iota of difference to the bundle of sticks that I am asserting in my lawsuit.

            If no sticks have been taken (and as my hypo shows, they have not), then why should there be recompense? You cannot have a “taking” where nothing has been taken.

            1. Thanks Greg – I did mean “claim” instead of “collateral.”

              As to the sticks, sorry but you are wrong for reasons that I have already posted.

              1. “anon” As to the sticks, sorry but you are wrong for reasons that I have already posted.

                No, he’s absolutely correct.

                The “attributes” you describe are not “sticks”, nor are they being “taken” when an IPR is initiated. The “attributes” of a patent were determined by Congress and none of those “attributes” are changed by IPR proceedings.

                It’s been a while but shall we point out again that it’s more than a bit odd that someone who allegedly is s00per d00per concerned about “patent quality” is habitually inclined to make the silliest arguments denigrating the aspect of the system that is most successful at eliminating the worst patents. What’s that all about, I wonder? It’s a real conundrum.

          3. the very real differences in property attributes that immediately happen upon initiation.

            First of all, “property attributes” aren’t “bundles of sticks”, unless you want to render the metaphor trivial and pointless. Certain “attributes” of your property are absolutely subject to being changed and there’s nothing you can do about that. For instance, the value of your patent and/or the ease with which you can license it can be diminished (or increased! yay!) based on all kinds of government-initiated events. Generally speaking, the Constitution doesn’t protect you from changes in those kinds of “attributes”.

            In contrast, in the patent context the “bundles of sticks” refers to the right to assert your patent, license it, sell it, or otherwise transfer it.

            The decision to initiate is very much a purely discretionary executive branch agent decision for which there need be no “record of reasoning,

            No, it’s not “purely discretionary” and all it takes is one glance at the requirements for a petition to understand that.

            In fact, there has to be a rational basis for inititation and if the basis for initiating is not rational — i.e., if it’s irrational, arbitrary, or worse — then the agency is acting outside the permitted bounds of any government agency. Hello, lawsuit.

            Do you believe that that the PTO has “pure discretion” to initiate an IPR based on a submission by a petitioner that simply identified a patent by its number and included nothing else except a blank sheet of paper? You think the PTO is immunized from a lawsuit in that instance?

            nor does it provide for ANY recompense or any sticks in the bundle of property rights of a granted patent.

            What “recompense” is the due to the owner of an invalid patent? Seems to me that the owner of a patent should be compensating the public, or at least the owner should pay back the people who took licenses to the junk because they couldn’t afford the lawsuit.

            Oh, but I forgot: those people don’t matter. They don’t make the world go round, unlike the super important people who sit around “innovate” “new” methods of using, e.g., a proxy computer to test stuff or using a computer to send a text that lets you know when the cat’s box is full.

            1. Whether or not “insulated” from a lawsuit is simply not on point.

              Read what Congress wrote – the initiation point aspect is clear and simple.

              1. Whether or not “insulated” from a lawsuit is simply not on point.

                Of course it’s “the point”. You made it the point when you suggested — as you repeatedly do — that the PTO is unconstitutionally taking “property” from people by initiating an IPR based on “pure discretion.”

                In reality, none of what you suggest is happening is actually happening. It’s true that the PTO can’t be challenged under the Patent Act for exercising its “pure” discretion (as opposed to impure discretion, I guess), but it can certainly be challenged for failing to exercise any discretion. And that’s why there’s no due process problem.

                1. A “lawsuit” as YOU put it is NOT on point.

                  You attempt to spin this as my saying something when it is your saying something that is not on point.

        2. Greg, the CAFC holding’s is based on Congressional intent.

          But, assuming that B&B Hardware has overruled these prior Fed Circuit cases, then the use of collateral estoppel for a ITC ruling on either infringement or validity will certainly deny both the petitioner and the respondent a right to trial by jury.

          Now Shor/Wellness says that if one can pursue his remedy in alternative fora, one, an administrative court, another, an Article III court, the choice of the administrative court effectively acts as a waiver of one’s constitutional rights to a trial in an Article III court and, by implication to a trial by jury. But when there is no alternative remedy, such as with respect to the ITC that has exclusive jurisdiction with respect to exclusion orders, neither a patent owner nor a respondent can be said to have voluntarily chosen the ITC and waived his constitutional rights.

          The same can be said with respect to Federal Court of Claims actions where there is no alternative forum in which to pursue actions against the government. One cannot be said to have waived one’s constitutional rights by choice of such a forum because there is no alternative. Under these circumstances, waiver of constitutional rights cannot be implied.

      3. Thanks Ned.

        I am unaware of authority that says a patent invalidated at the Court of Federal Claims is not invalidated elsewhere. I would imagine that once the Federal Circuit affirms such a finding, it has a preclusive effect, no?

        I have not read Wellness, but I’m not sure the holding you describe is on point here. When you seek redress in the Court of Federal Claims, you are not waiving your jury trial right. The Court of Federal Claims is your only option for seeking compensation from the federal government for infringement, so you technically never have a jury trial right to wave in the first place. In effect (and apparently contrary to Granfinaciera), by requiring claims against the government be brought in an Article I court, you are being forced into an administrative court against your will to litigate a legal claim.

        I think the arguments presented in the MCM brief are excellent. The question that I would guess the justices will struggle with is this: Is we find IPRs unconstitutional, isn’t a whole lot of other stuff called into question as well?

        1. JustaDude, more on waiver, see post 6.2.2.2 link to patentlyo.com

          Regarding “other stuff,” yes. Everyone has been raising this issue with me for a very long time since I first asserted the constitutional defense in 2013. Reexaminations had a right to trial de novo in a court of law until 2011 when it was removed by the AIA. That, in my view, was sufficient to cure the constitutional problem and it was so held by the district court in Patlex.

          Secondly, since then, patent owners can waive their Article III rights (as they can their jury trial rights) by not asserting them. That was the holding of Wellness v. Sharif. Thus the problem is contained to only those very few cases where patent owners have actually asserted their rights. Just a handful.

          On an ongoing basis, simply restoring the right to a trial de novo for reexaminations may be sufficient. Regarding IPRs, it might be better to provide a special Article III court that provides standing, and a right to a jury trial. Ex parte Wood was decided on a mandamus from a patent revocation trial pursuant to an early statutory procedure that was known as scire facias according to its English counterpart. The Supreme Court held that the patent owner had a right to a jury trial in such proceedings.

          1. Regarding “other stuff,” yes. Everyone has been raising this issue with me for a very long time since I first asserted the constitutional defense in 2013. Reexaminations had a right to trial de novo in a court of law until 2011 when it was removed by the AIA. That, in my view, was sufficient to cure the constitutional problem and it was so held by the district court in Patlex.

            Did you make this point in the MCM petition? I must have missed it if you did. I had not seen this point before, but that is a very strong point in your favor, and I had not realized this. Thanks for setting me straight.

      4. I wonder if you will get any securities lawyers filing amicus – apparently the SEC admin court – has been expanding it powers of criminal law – that some argue violate the 7th. and 4th. IMHO, since a 337 action is always initiated by the patent owner – availing yourself to a 337 action – is waiving your 7th right.

  7. PTO: “Thanks for your money, here’s your ‘patent’, until we say it isn’t.”

    1. What’s your point? I do not see why, as a patentee, I should be more comforted by the valediction “here’s your ‘patent’, until an Art. III court says it isn’t.” Both ways, it comes down to the fact that I may have just paid a lot of money for something that is not actually enforceable, which is just the way that it is.

      1. There are many significant differences between an administrative agency proceeding and a trial by a jury and judge. Read some of the Amici Support. The presumption of validity and standard of proof, for instance. It’s unarguably easier to invalidate a patent through an IPR, which is why they are so popular.

        The PTO and the public are receiving the same benefit as prior to the AIA – disclosure of information and receipt of fees – yet the applicant now receives less in exchange. The cost of the PTO’s failure (embarassing allowance of questionable patents) is being shifted to the entire pool of patent applicants and patentees in the form of weakened ownership rights.

        If IPRs are to remain, I suggest that the PTO eliminate Issue Fees to reflect their current right to treat the issued patent as no different than an unissued patent application.

        1. HoPB: There are many significant differences between an administrative age ncy proceeding and a trial by a jury and judge. Read some of the Amici Support. The presumption of validity and standard of proof, for instance.

          Too bad you have zero evidence that those alleged “significant differences” make any significant difference whatsoever — at least not any significant prejudicial difference that results in unfairness to the patent owner. And why don’t you have that evidence? Because it doesn’t exist.

          On the flip side, you forgot to mention that the patentee can amend his/her patent claims in an IPR, but can’t do so in trial. That’s a fairly significant difference — and it benefits the patentee.

          The PTO and the public are receiving the same benefit as prior to the AIA – disclosure of information and receipt of fees – yet the applicant now receives less in exchange.

          Boo hoo hoo! Cry everyone a river 24 hours a day and maybe it’ll start to look like a Constitutional issue. After all, you’re so very very important! Much more important than those “copyists” who get hauled into East Texas because some tr0ll wants to “monetize” a junk patent.

          The cost of the PTO’s failure (embarassing allowance of questionable patents) is being shifted to the entire pool of patent applicants and patentees in the form of weakened ownership rights.

          Which is so much worse than shifting the cost of that failure onto the public! Especially after patent attorneys and the rest of The World’s Most Imporant People got so addicted to shoving that cash into their pockets, at the public’s expense. I mean, nobody could have predicted any of this reform taking place. Just ask Dennis and Jason.

          By the way: you’ll note that the “entire pool” of patentees and patent applicants isn’t terribly troubled by IPRs, at least not from a Constitutional perspective. It’s just a tiny tiny fraction of the pool that’s bothered by that. Go figure.

          I suggest that the PTO eliminate Issue Fees to reflect their current right to treat the issued patent as no different than an unissued patent application.

          Unfortunately, issued patents remain very different from unissued patents. Thank you for your concern, though.

          1. LOL _ the “there is no difference” meme – if you really believe that, then why do you fight SO hard for the difference?

            1. you really believe that, then why do you fight SO hard for the difference?

              Who’s “fighting so hard”? Not me. It’s not very difficult to defend the status quo in this instance.

              Now, if you actually had any evidence to support your position that would be a totally different matter.

              1. Lol- says the guy who NEVER provides “evidence”….

                And the effort is not one of “difficulty” but rather one of your insistence of a certain way – if as you claim, there was NO difference, you would simply say “just go ahead and switch.”

                You clearly not only do not do that, but you throw quite the hissy fit at the mere mention of it.

                The lady doth protest too much, methinks.

                1. the guy who NEVER provides “evidence”….

                  I’m not the guy complaining that the use of so-called “BRI” or a diminished standard of review in IPRs results in some manifest unfairness to patentees. That would be you. You need that evidence. I don’t need it. I don’t think it exists. I’ve never seen anything remotely resembling that kind of evidence.

                  But I have seen some incredible shrieking about “death squads” and all kinds of other nonsense. And nearly all of it is coming from the usual crowd of entitled whiners. And that was predicted because that’s all you guys ever do.

                  I’m really interested in this nightmarish “scourge” of “weak patents” that’s being efficiently breached left and right. It sounds like the worst thing ever! Definitely “far worse” than being hauled into court across the country by some b0tt0m feeding lawyer “monetizing” a pile of junk so junky that it makes the average person throw up in his mouth.

                  Efficiently breached, you say? Man, that sounds just awful.

                2. I see nothing of substance here Malcolm – just your usual dust-kicking.

                  Are you really trying to say that the concept of efficient breach is not real?

                  Talk to i4i.

          2. Some corrections.

            Patentees do not have a _right_ to amend the claims. The only have a right to move to amend the claims. Under the PTO’s current interpretation rule of Rule 42.121, the PTAB has no limit on the reasons why a motion to amend can be denied. And the patentee is required to establish patentability of a proposed amended claim, in general, not with respect to the grounds of the IPR (never mind that the PTO already allowed the claims before the IPR). In practice the PTAB has rarely allowed amendments, which you well know.

            The right to a jury trial has nothing to do with whether IPRs are prejudicial or not. It’s a Constitutional question which hinges on the proper legal status of a granted patent.

            And, again you create a false set of limited options. Neither the public (through costs of frivolous litigation) nor patentees (through weakened patents) should bear the cost of junk patents. Those attempting to enforce them should bear the costs.

  8. Thanks. It will be interesting to see what kind of PTO and academic response there will to what seems to focus on the public vs private right issue. [I suspect it will include simply arguing that old Sup. Ct. cases can be distinguished by the fact that the PTO did not then have statutory authority to cancel patent claims, which it does now under the AIA, and has also had for many years for reexaminations and interferences? The NY Patent Law Association brief makes a good point that this may be the last opportunity to constitutionally challenge IPRs.

    I note the following combined cynical responses from the other side to this and other complaints about the several changes in patent law in recent years for entertainment purposes:
    “By all means let us return to the good old days before Congress and the Sup. Ct. wreaked our patent business. Before FRCP Form 18 was removed and we were required to gather enough facts to actually have a case before can file it, and subjected to sanctions for frivolous suits. Having to show now show specific facts in your pleading? Outrageous! Also, what was wrong with our great previous patent system, in which it cost one or two million billing bucks or more to get any decision on validity, only from a full blow D.C. jury trial on ALL issues, and a Fed. Cir. appeal, so that more than 90% of defendants would settle before trial to avoid uncontrolled discovery and other big expenses. That great system allowed even clearly invalid patents could be sued on, billed on, licensed, or otherwise made money with? [Reexaminations were so slow they rarely got done in time to stop patent litigation or its costs.]

    1. The epitome of asking the wrong question: “distinguished by the fact that the PTO did not then have statutory authority to cancel patent claims, which it does now under the AIA

      The subject is not the Office.

      1. Exactly. If, as MCM argues, the very idea of rescinding a property right without a trial in an Art. III court is unconstitutional, then I do not see how Congress amending the statutes to allow for IPRs makes any difference. Incidentally, if this position is correct, then not just IPRs, but any sort of re-exam is unconstitutional.

        To my mind MCM’s best case is McCormick Harvesting Mach.. If that case really does represent the law, then MCM has to win.

        I think that IPRs are a healthy part of the patent system, so I am not especially eager to see them thrown out as unconstitutional, but my personal preferences really have nothing to do with it. The question at hand is really “is McCormick Harvesting Mach. an accurate summary of the law?”

        I think that HP has a plausible argument that all of the most damning passages from McCormick are merely dicta. If they are not dicta, however, then the SCotUS either has to over-rule McCormick or else throw out IPRs (and all other re-exam schemes) as unconstitutional.

        I did not appreciate until I read the MCM petition how poorly the CAFC opinion in this case distinguished McCormick. I will be pleased if the SCotUS takes this case and affirms the CAFC, but if they do so, they will have to do so on other grounds than those in the CAFC opinion, which simply does not address McCormick on anything like fair and accurate terms.

          1. Maybe Paul F. Morgan will grace us with a “thoughtful analysis” of what might happen if the Supreme Court does blow a (Constitutional) hole in the bulkhead-less good ship USS AIA Titanic (that “what happens then” is a bit of an elephant in the room, and only one person has put forth a cogent legal position on that topic :-) ).

            1. what might happen if the Supreme Court does blow a (Constitutional) hole in the bulkhead-less good ship USS AIA

              Why not just share with everyone your thoughts about what’s going to happen, “anon”?

              After all, you’re a very serious person. You must have thought long and hard about this.

              Tell everyone! We’re all especially interested in the part where the patent laws get re-written. It’ll be just like 1952 again, right? Because “history repeats itself”, right?

              LOL

              Go ahead, “anon.” Share your fantasies with everyone. What’s holding you back today? Too busy campaigning for Bernie Sanders? LOLOLOLOL

              1. Asked and answered Malcolm.

                Again.

                Maybe you want to share some of your fine “logic,” and highlight your understanding of law….

                (Guffaw)

                1. In fact, I’m sure that nobody can recall hearing how you would rewrite the defective 1952 patent act (I know I can’t), much less the more important question: how do you think the current Congress will rewrite it (because they don’t care what you think about anything)?

                  Go ahead. Answer the question. Start with the subject matter eligibility statute, as that one seems to a major focus of yours. What does it look like when the contemporary Congress rewrites it?

                2. Nice – now move the goal posts back – NO ONE was talking about the Act of 1952 as being defective.

                3. Start with the subject matter eligibility statute, as that one seems to a major focus of yours. What does it look like when the contemporary Congress rewrites it?

                  No need to rewrite it – it is written fine – as long as the Court does not mash the nose of wax.

                  It has all that 101 needs: the broadly interpreted statutory categories and the utility (within the Useful Arts).

                  It is only when the true openness is sough to be artificially constrained that we run into problems.

                4. [101] is written fine

                  Right. You’d just turn the clock back to State Street and Judge Rich’s completely discredited nutsanity. That’s not a suprise, but thanks for the express admission.

                  But I asked you a very different question. I asked a question that requires you to put down the crack pipe. Here it is again: “[H]ow do you think the current Congress will rewrite 101”?

                  Give that one a shot.

                5. No such thing – nothing in my statements reflect on State Street.

                  They do however reflect on the words that Congress itself used.

                  “Go figure Folks.”

                6. Here it is again: “[H]ow do you think the current Congress will rewrite 101”?

                  It’s unclear why this is such a difficult one for you to answer. What’s your excuse this time?

                7. Here it is again

                  My answer was clear the first time.

                  Just because you don’t like the answer does not mean that the answer is not an answer.

                  It’s unclear why this is such a difficult one for you to answer.

                  It is abundantly clear that you are just playing your usual Malcolm spin games here – as there is no difficulty for me in answering you. As I stated – the answer has been given – readily, easily, clearly, concisely.

                  You attempt to spin this as somehow “difficult” is a parlor trick.

                  No thanks.

            2. I see that Paul F. Morgan has declined to add his “thoughtful analysis,” and seems content to hide behind Malcolm’s (rather mundane and predictable) dust-kicking.

              My large friend in Vegas really dislikes your “tendency” to not share that “thoughtful analysis,” Paul.

        1. To my mind MCM’s best case is McCormick Harvesting Mach.. If that case really does represent the law, then MCM has to win.

          MCM certainly does “represent the law”, at least as applied to a specific set of facts.

          Unfortunately for the petitioners in this case, those facts are nowhere to be found in 2016.

          HP has a plausible argument that all of the most damning passages from McCormick are merely dicta.

          Right. On top of that, there’s plenty of case law that simply cuts the other way. And the Supreme Court isn’t oblivious to the fact that (1) there are massive pile of invalid junk out there corroding the system (2) that junk has been a decades-long cash cow for these oh-so-persecuted petitioners.

          1. Translation: “B-b-but look at the pretty Ends”

            Maybe instead of your cursory “Ends justify the means,” you might say something (anything) to that actual law that you suggest here that MCM has correct and lay out which “facts” you think are absent that would change the application of law to the opposite of what is already suggested…

            Chances of course that you reply with anything except ad hominem are Nill. But we both already know that, eh pumpkin?

            1. The holding of McCormick could be read as narrowly as merely “until a reissue application comes out the other side of the reissue process, it is still a duly-issued patent on which the patentee may still bring suit.” If that really is McCormick‘s holding, then all the stuff in there about IP patents being on the same constitutional footing as land patents is just so much verbal excess, because that part is not really necessary to get to what is—really—just a construction of the then-in-effect reissue statute.

              If the SCotUS chooses to read McCormick as narrowly as I propose in the immediately preceding paragraph, then there is not necessarily any sort of separation of powers problem with having an Art. I tribunal deciding that an issued claim must be “unissued” (if you will forgive the neologism).

              1. Greg – compare the bundle of sticks in that there property right.

                You are missing more than a little at the post-initiation point.

                Now instead, if there was no change in that bundle after the initiation point, your supposition might (just might) find some ground.

                Alas, it will not.

                Hence the issue.

                1. You really do not understand the differences between a granted patent right after grant and that “same” patent right after the initiation decision?

                  Come on Greg – I could tell you, but let’s see you give at least a minimal try.

                2. What “stick” is missing? I do not understand your point.

                  LOL. Welcome to the “anon”s magical mystery world, Greg! This is the part where he plays guessing games with you and then insults your intelligence when you can’t read his mind.

                  Evidently, typing certain things out in plain English is really difficult or really embarassing for him. Good luck extracting a straight answer.

                3. Malcolm – no guessing games, but no Br’er Rabbit repeat the answer a billion times games either.

                  It is really really really simple: do you have the same bundle of sticks after the initiation decision (before any decision on the merits) that you did immediately after patent grant?

                  Others above have supplied the answer (as have I MANY times in the past: the presumption of Clear and Convincing is gone; the different in fact construction standard is gone (BRI is applicable).

                  Look even at what Ned whines about concerning how a granted patent is treated in the Office (while he still whines incorrectly at the Office doing this).

                  The list of things that YOU need to give straight answers to Malcolm is beyond measure – your AccuseOthers meme in full play here, I see.

                4. the presumption of Clear and Convincing is gone; the different in fact construction standard is gone (BRI is applicable).

                  As has already been pointed out to you,”anon,” (and yes it’s odd that it would need to be pointed out), neither of those concepts are “sticks” in the patent owner’s “bundle of sticks.” Nice try, though! Maybe you can milk more credibility out of the metaphor if you try rubbing some of the “sticks” together. Go for it!

                  Moreover, even if we grant you that those concepts are “sticks” (which would be silly and it’s not going to happen) you’re still faced with the fact that the “sticks” aren’t being taken away without due process.

                5. You may have disagreed with me – but that means nothing Malcolm.

                  Those ARE sticks in the bundle of property rights.

                  Do you even know what that analogy means?

                  And once past that point, there is a violation of due process in their taking – no recompense and no appeal. Once again your “logic” and legal acumen is more than just a little short.

                6. Do you even know what that analogy means?

                  I understand now what you think it means.

                  I don’t understand (nor does anyone else, as far as I can see) why you think your “takings” analysis makes sense but there’s nothing new or surprising about that.

                7. Maybe since you now “understand” you can explain why you think that my view is not correct.

                  You know – explain what the term “really means” and why what you think that I think that it means falls short.

                  Use those short declarative sentences that you are always on about.

        2. Greg, you will note the Federal Circuit essentially held that one can revoke a patent in the PTO for invalidity without a right to jury trial, while not disagreeing that a patent owner had a right to a jury trial in court. As former Chief Judge Nies said in her dissent to en banc in Lockwood, such a position is not possible. Either validity has a right to jury trial or it does not.

          1. I confess, Ned, that I know so little about VII amendment law that I just skimmed past that part of the petition, because it would be lost on me. In other words, when I say that MCM’s best case is McCormick, what I really mean is that this is the best case for the separation-of-powers argument. It is possible that there is an even better case for the VII amendment argument, but I would not recognize it if so.

            That said, I would note that the PTO are very careful to say that they are not deciding “validity.” They are deciding “patentability.” In other words, even to hold that questions of “validity” are entitled to jury trials does not really answer the question of whether an IPR is a VII amendment violation.

            1. Greg, historically, patentability was a term used with respect to claims that had not yet issued. Validity was and is a term used with respect to claims that have issued.

              The PTO is not going to get away with saying that revoking an issued claim for patentability is constitutional when revoking an issued claim for validity is not, when they are the same thing in substance.

              1. Once again – you miss the not so subtle difference that occurs at the initiation point.

                After the initiation point – when you are BACK IN the Office with less than your full bundle, you want to ask the wrong entity “what are you doing?”

                You need to recalibrate just whom you are asking and just what you are asking that different whom.

                Chasing the PTO is chasing the wrong question.

              2. I suspect you are right about the distinction between “validity” and “unpatentability,” but I can imagine a situation in which the SCotUS reverses the CAFC and dramatically scales back the impact of IPR, without declaring the IPR proceedings to be unconstitutional, and without materially affecting the salutary effect of IPRs on the patent system.

                § 318(b) says that “the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable…” One outcome (if they were to take cert) would be for the SCotUS to say

                This certificate has no legal effect by itself. However, under our recent holding in B&B Hardware, the PTAB’s certificate has issue preclusive effect in an Art. III court. Therefore, in the same way that a plaintiff can obtain a judgment against a defendant in Florida and then sue in Georgia to enforce the Florida judgement against the defendant’s Georgia assets, so too a challenger who prevails in front of the PTAB can take the certificate and enforce it in an Art. III court.

                This would, in other words, preserve the idea that only an Art. III court can invalidate a property right. However, it would also obviate the separation of powers issue, by making the Art. III court’s role a ministerial role. The determination of when a patent claim is properly invalid would still lie with the PTAB.

                Mind you, this would solve only the separation of powers problem. To the extent that there is a VII amendment problem here (I take no position on that question), it is not clear to me that the scenario described above solves that problem.

                1. Such a “de facto” rubber stamp does NOT solve the separation of powers issue.

                  At all.

                  (You cannot move the elephant of a non-Article III court to be an Article III court in all but name.

                  You are slipping backwards Greg.

                2. You cannot move the elephant of a non-Article III court to be an Article III court in all but name.

                  You can say so, but that ship has already sailed. The Court just said in B&B hardware that an Art. I tribunal (the TTAB, as it happens) can bind the hands of an Art. III court. Once you have crossed that Rubicon, it is pointless to protest that the same cannot apply to the patent system.

                3. The de novo review discussed in B&B Hardware is only for appeals of the TTAB decision itself to the ED Va.

                  If you have both an opposition in front of the TTAB and an ordinary TM infringement case in (e.g.) the SD Fla. in which validity is an affirmative defense, the SD Fla. does not get to apply de novo review to the TTAB decision. The SD Fla. must, instead, give preclusive effect to issues that were actually litigated in front of the TTAB.

                4. Greg and Ned:

                  The institution decision IS final AND NOT appealable (and this is important: this is so at the direct words of Congress)

                  Focus guys on THAT decision point.

                5. Greg, the TTAB ruling is not final if there is a de novo review.

                  Er, o.k. Sure, for as long as an appeal is pending in the ED Va, the TTAB decision is not final, and thus has no issue preclusive effect. Once the appeal is over, or once the deadline to take the appeal has run, the TTAB decision does have preclusive effect.

                  By the same token, if you appeal the PTAB’s determination of unpatentability to the CAFC, there is no preclusive effect until the appeal is over. Afterwards, however, the determination that some claims are unpatentable is binding on other tribunals.

                6. Greg,

                  Focus on what I ask you to focus upon.

                  It is the separate Executive branch agent decision AT the initiation point that is the crux here.

                7. The more I think about this, the more I realize that the “issue preclusion” approach is not only constitutionally sound but also legally required.

                  In B&B Hardware, the Court held that when an issue is fully and fairly litigated in an Art. I tribunal, that the issues litigated are settled in a manner that precludes even an Art. III court from reconsidering them. The Art. III court must simply give effect to the decisions of the Art. I tribunal.

                  Meanwhile, in Blonder-Tongue Labs v. Univ. of Ill. Fdn., 402 U.S. 313, 350 (1971) the Court held that a previous court’s holding of invalidity is must be plead as an affirmative defense of issue preclusion. That is to say, if A sues B on a patent, and the court in A v. B declares A’s claims invalid, and then A sues C on those same claims, C must plead the invalidity in A v. B as an affirmative defense. If C neglects to plead that affirmative defense in C’s answer, then like all affirmative defenses it is waived.

                  So to, once the PTAB declares A’s claims unpatentable and issues its cancellation certificate, the certificate has no free-standing legal effect. Rather, the impact of the certificate is that an Art. I tribunal has already decided the issue of unpatentability, and now the Art. III court must give effect to that decision by the Art. I tribunal, but subject (of course) to the same considerations that motivate whether issue preclusion applies in any other case. Meanwhile, if a defendant neglects to plead the PTAB’s unpatentability determination as an affirmative defense, then the defense is waived and one goes to trial on issues of infringement, regardless of the PTAB’s decision.

                  One major consideration that might well affect whether issue preclusion applies is the difference in claim construction standards between the PTAB and the D. Ct. If there is reason to believe that the claims were unpatentable under BRI, but would not have been unpatentable under Philips, then perhaps issue preclusion will not apply in the case. In other words, once the defendant pleads the PTAB decision as an affirmative defense, there is probably room for the patentee to argue about whether this is one of those rare cases in which BRI-or-Philips makes a difference. If it is, then may issue preclusion does not apply.

                8. Greg, The Court is not a legislature. Surely they will defer to Congress to create a constitutional process that achieves the objectives of reducing costs while preserving rights.

                9. Exactly. And precisely because the Court is not a legislature, and because they prefer to avoid Constitutional issues when they can, one thing that they could do is to give § 318(b) a construction that side-steps the separation of powers issues (although, as I said above, I am really not clear one whether they can or cannot side-step the VII amendment issue).

                10. There is NO construction that sidesteps the issue of the taking AT the decision point of institution, Greg.

                11. There is NO construction that sidesteps the issue of the taking AT the decision point of institution, Greg.

                  What taking? When I asked above what “sticks” are missing from your bundle, you said that invalidity by clear & convincing evidence and BRI were the sticks. Well, those are not “taken,” properly speaking. Even after the PTAB institutes, a defendant in an infringement suit must still prove a claim invalid by clear & convincing evidence, and the claim to be invalidated is still construed under Philips. Nothing is “taken.”

                  Meanwhile, the revocation of a statutorily granted property right is only problematic if it is done without due process. “Due process” means notice and opportunity to be heard. Mathews v. Eldridge, 424 U.S. 319, 321 (1976). The patentee has both notice and opportunity in an IPR, so there is no due process problem.

                12. Not correct Greg, as clearly – and properly – they ARE taken.

                  One moment you have them, the next upon the mere decision of an Executive branch agent – a decision that requires NO “reasoning” put forth, offers no recompense, and is it itself NOT appealable, really does result in you having a different property bundle.

                  You mistake whether those items are available elsewhere with whether they are available in a “court” that you want to make “equal” to an Article III court. Your own B&B Hardware case must work against what you are trying to do here.

                  Further, you are STILL conflating the initiation decision point with the rest of the process in consideration of the due process OF THE INITIATION POINT.

                  That’s a simple legal error coming from a lack of focus.

                  Focus on the single initiation point – and not any further aspects of what happens after you are dragged back into the Office.

                13. Thinking more on your point Greg – that one may still sue another and in that different suit still enjoy the different sticks in the bundle of property rights….

                  I am not sure that we have seen a case on that point.

                  Aside from the point that I have already made (it does not matter in the big picture whether you have access to the sticks in some situations – since you do not have FULL access to those sticks), one must wonder whether you really do have access to those sticks at all, or if an Article III judge would merely “put you on hold” until a related IPR is completed (you know, for “judicial efficiency,” the very reason IPR’s were created in the first place).

                  To make a short story long, I don’t think that even your attempted point carries.

                14. [Y]ou are STILL conflating the initiation decision point with the rest of the process in consideration of the due process OF THE INITIATION POINT.

                  Er, o.k. I do not see how this makes a difference. One has notice and opportunity to be heard even at the iniation point. The IPR petitioner is obliged to serve the patentee with the petition (notice), and the patent owner is entitled to file a patent owner response (opportunity to be heard).

                  There just is no due process problem here, no matter how emphatically you squint to see one.

                15. [I]t does not matter in the big picture whether you have access to the sticks in some situations–-since you do not have FULL access to those sticks…

                  The right to have your opponent prove unpatentability by clear and convincing evidence in an Art. I tribunal was never a stick in your bundle in the first place. The right to have your claim construed under Philips in an Art. I tribunal was never a stick in your bundle in the first place.

                  You cannot be deprived of a stick that you never had in your bundle in the first place. All of the sticks that were ever in your bundle before the AIA are still in your bundle after the AIA.

                16. Sorry Greg, but you have defeated yourself, as your very own B&B Hardware case proves too much.

                  The stick is not as you describe, but is merely the property aspect itself – you seem to want to try TOO hard to define the stick as “being in the Office whilst…”

                  That’s just not what the stick is.

                17. “anon” The stick is … merely the property aspect itself

                  That’s empty circular nonsense. You’re welcome to try again, of course, but don’t forget that giving up and recognizing you’re wrong is always an option.

                18. Malcolm blandly quips: “That’s empty circular nonsense.

                  And is simply wrong – there is nothing circular about it and it certainly is not nonsense.

                  It is not even a nuanced point, but rather a simple and straight forward point.

                  Much like the fact that the definition of patent as personal property was not changed by Congress even with all the other changes in the AIA.

                19. Greg, no. If there is a trial de novo, the judgment of the court is collateral estoppel. ONLY if the trademark owner did not pursue his remedy in court can it be said that the TTAB ruling might have collateral estoppel effect.

                20. If the D. Ct. takes evidence and in the end summarily affirms the TTAB decision, you are saying that the TTAB decision has no issue preclusive effect? That sounds wrong to me, but I will defer to you about this, as it is not really my area of expertise.

                  In any event, my broader point still stands. If the TTAB makes a conclusion about likelihood of confusion, and the loser does not challenge, then the TTAB’s decision becomes binding on Art. III courts when they consider infringement of one of the marks in the opposition by the other mark in the opposition.

                  By the same reasoning, if the PTAB declares one or more of a patentee’s claims unpatentable, and the patentee does not get this decision reversed on appeal, then the PTAB decision has an issue preclusive effect. The PTAB has not “invalidated” the claim. Only an Art. III court can do that. But if the patentee asserts the claim in an Art III court, then the defendant can plead issue preclusion as an affirmative defense (and seek Rule 11 sanctions).

                21. Greg: In B&B Hardware, the Court held that when an issue is fully and fairly litigated in an Art. I tribunal, that the issues litigated are settled in a manner that precludes even an Art. III court from reconsidering them. The Art. III court must simply give effect to the decisions of the Art. I tribunal.

                  1. B&B did not decide the constitutional issue raise sua sponte.

                  2. Stern v. Marshal HELD that rulings of Bankruptcy courts did not have collateral estoppel effect with respect to types of actions that bankruptcy courts did not have constitutional authority to adjudicate.

                22. Stern v. Marshal HELD that rulings of Bankruptcy courts did not have collateral estoppel effect with respect to types of actions that bankruptcy courts did not have constitutional authority to adjudicate.

                  Sure, no one doubts it. There is no issue preclusion effect from the Art. I tribunal if the tribunal lacks subject matter authority to address the issue in the first place. If the TTAB were to decide damages, for example, that part of the decision would have no preclusive effect.

                  This observation, however, has no real bearing on the subject of IPRs. The determination of patentability is exactly that with which Congress has charged the PTAB, so the PTAB’s decisions on patentability are squarely within the realm of B&B Hardware and not Stern.

            2. Greg, Story (who wrote ex parte Wood & Brundage in 1824 that held that patent revocation actions had a right to jury trial) first laid down the principle of the 7th Amendment in 1830 in Parsons v. Bedford, 28 U.S. 433, 7 L. Ed. 732, 7 L. Ed. 2d 732 (1830). link to scholar.google.com

              As soon as the constitution was adopted, this right was secured by the seventh amendment of the constitution proposed by congress; and which received an assent of the people so general, as to establish its importance as a fundamental guarantee of the rights and liberties of the people. This amendment declares, that “in suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved; and no fact once tried by a jury shall be otherwise re-examinable in any court of the United States, than according to the rules of the common law.” At this time there were no states in the union, the basis of whose jurisprudence was not essentially that of the common law in its widest meaning; and probably no states were contemplated, in which it would not exist. The phrase “common law,” found in this clause, is used in contradistinction to equity, and admiralty, and maritime jurisprudence. The constitution had declared, in the third article, “that the judicial power shall extend to all cases in law and equity arising under this constitution, the laws of the United States, and treaties made or which shall be made under their authority,” &c. and to all cases of admiralty and maritime jurisdiction. It is well known, that in civil causes, in courts of equity and admiralty, juries do not intervene, and that courts of equity use the trial by jury only in extraordinary cases to inform the conscience of the court. When, therefore, we find that the amendment requires that the right of trial by jury shall be preserved in suits at common 447*447 law, the natural conclusion is, that this distinction was present to the minds of the framers of the amendment. By common law, they meant what the constitution denominated in the third article “law;” not merely suits, which the common law recognized among its old and settled proceedings, but 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; or where, as in the admiralty, a mixture of public law, and of maritime law and equity was often found in the same suit. Probably there were few, if any, states in the union, in which some new legal remedies differing from the old common law forms were not in use; but in which, however, the trial by jury intervened, and the general regulations in other respects were according to the course of the common law. Proceedings in cases of partition, and of foreign and domestic attachment, might be cited as examples variously adopted and modified. In a just sense, the amendment then may well be construed to embrace all suits which are not of equity and admiralty jurisdiction, whatever may be the peculiar form which they may assume to settle legal rights. And congress seems to have acted with reference to this exposition in the judiciary act of 1789, ch. 20, (which was contemporaneous with the proposal of this amendment); for in the ninth section it is provided, that “the trial of issues in fact in the district courts in all causes, except civil causes of admiralty and maritime jurisdiction, shall be by jury;” and in the twelfth section it is provided, that “the trial of issues in fact in the circuit courts shall in all suits, except these of equity, and of admiralty and maritime jurisdiction, be by jury;” and again, in the thirteenth section, it is provided, that “the trial of issues in fact in the supreme court in all actions at law against citizens of the United States, shall be by jury.”

              .

              It is enough to show that validity was tried in the common law courts and to a jury before 1792. Our brief shows this.

              1. It is enough to show that validity was tried in the common law courts and to a jury before 1792.

                Ah, so that’s what this is all about.

                Really serious stuff!

                LOLOLOLOLOL

                1. You play the CR@P “so serious” card so often when you have nothing meaningful to say – I wonder if you are aware of how bad a “poker face” you have in that regard?

                  Maybe instead of reaching so quickly for such empty ad hominem, you stop, think, compose a meaningful reply, and then engage the conversation in an inte11ectually honest manner.

                  Just maybe.

                  (lol, yeah, the Decade of Decadence shows how likely that will happen)

                2. engage the conversation in an inte11ectually honest manner

                  There’s nothing wrong with mocking one of the most ridiculous aspects of Supreme Court jurisprudence.

                  And the idea that the US Congress or the Supreme Court should be bound by what some “Privy Council” held 250+ years ago in another country without any close inspection of the facts and reasoning relied on by that “Privy Council” is patently (if you’ll pardon the pun) ridiculous.

                3. EMPTY mocking is what you do and there is everything wrong with that.

                  Maybe you need to try harder to understand the basic precepts of how our system is built – and the proper means of changing those basic precepts if they – for whatever reason – hurt your feelings.

          2. Either validity has a right to jury trial or it does not.

            The argument that “validity determination” of a “patent” requires a jury trial is so thin that you can fly a paper airplane through it.

            Here’s the deal: Congress created a right to sue called a “patent”. This right to sue comes with caveats. One of those caveats is that, when certain due process concerns are satisfied, the PTO — the same agency that Congress empowered to grant patents — can revoke the patent. End of analysis.

            There’s isn’t even a “requirement” for “a jury trial” to invalidate a patent in an Article III court. Patents are invalidated all the time in court and outside of courts without “a jury” ever being convened, even when the patentee has demanded a jury.

            The idea that “a jury” ever needs to be involved in a validity determination is, itself, a rather silly proposition. That’s why the suggestion that juries be removed entirely from the patent system is always on the table.

            1. MM: “Congress created a right to sue called a “patent”. ”

              Hardly. Inventions are creatures of common law and are protectable as trade secrets. One might sell the secret of the invention to another for money. The piracy of the invention can result in common law trespass or trover proceedings for damages. Even Roman Law recognized such a right to recover.

              Patents were a statutory right granted inventors at common law, and by the States prior to 1789. At the request of the States, the founders put the patent and copyright clause in the Constitution to more efficiently protect the rights of inventors and authors. The wording of the constitutional provision is that Congress may “secure” the exclusive rights of the authors and inventors. The language chosen presupposes that exclusive rights exist at common law and that is exactly what Madison argued in Federalist 43.

              If Congress chose not to exercise its power, the states could again protect inventions with patents, and perhaps could provide a 50 state compact so that patents would have a national effect. Congress does not have the power you think it has.

              1. Ned,

                As I have told you before, your echo-mate simply

                DOES
                NOT
                CARE

                about the underpinnings of law.

                Nor of the protections afforded by OTHER parts of the Constitution for this thing called “property.”

                1. anon, MM thinks like Oliver Wendell Holmes. That does not mean that he does not care.

                  I think the Government ought to seek out and hire MM so that he and I can have a real debate when the Supreme Court takes our case — not that Mark Freeman, who heads up the IP division up at Justice, is not really, really good. He is.

                  After I finished oral argument at the Federal Circuit, Freeman and the other government attorneys came up and introduced themselves. Ditto Marcia Sundeen and the HP crew. They are all good lawyers; and we all seem to respect each other.

                  On our side, we also have my co-counsel Susan Anhalt who is really sharp. But Tom Goldstein and Tejinder Singh are in a league of their own. Great lawyers. Glad to have them on our team.

                2. Oliver Wendell Holmes…?

                  Not a Fn chance.

                  You ascribe WAY too much “goodwill” to someone who is clearly anti-patent.

                  This is no doubt related to your rather dubious condition of “6-is-a-genius-because-he-agrees-with-me” and your shared anti-software patent and anti-business method patent Windmill chases.

              2. If Congress chose not to exercise its power, the states could again protect inventions with patents, and perhaps could provide a 50 state compact so that patents would have a national effect. Congress does not have the power you think it has.

                I am intrigued by this comment because it is 180° the opposite of my understanding of the legal foundations of our patent system. Would you be able to point me to any authorities on which you base this assertion? I would be obliged for any information you could furnish, or toward which you could at least direct my attention.

                1. I saw you mention Federalist 43, so I read it last night. It was interesting (and admirably brief), and I thank you for putting it in front of my attention. Have you anything else to recommend?

              3. Ned: The piracy of the invention can result in common law trespass or trover proceedings for damages. Even Roman Law recognized such a right to recover.

                It sounds like your client just chose the wrong path to preserve his awesome common law “right” to get compensated for a junky idea that wasn’t good enough for a patent.

                At the request of the States, the founders put the patent and copyright clause in the Constitution to more efficiently protect the rights of inventors and authors.

                And somehow the states forgot to make it mandatory for Congress to set up the enforcement system, and they forgot to mention that the granting agency itself was powerless to revoke a fraudulently or otherwise improvidently granted patent. But nevertheless, you’re telling us, it must be so! Becasue Madison wrote something in the Federalist papers that is, apparently, too difficult to copy and paste.

                1. MM: Federalist 43:

                  “To the People of the State of New York: THE FOURTH class comprises the following miscellaneous powers:1. A power “to promote the progress of science and useful arts, by securing, for a limited time, to authors and inventors, the exclusive right to their respective writings and discoveries. “The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases, and most of them have anticipated the decision of this point, by laws passed at the instance of Congress. – See more at: link to teaparty911.com

                  Oren Bracha, Owning Idea, Chapter 1, p. 109-116 :

                  “Between independence and the Constitution no national patent system appeared in the United-States.247 Individual states granted patents during this
                  period in a fashion that was a direct continuation of the colonial patent grant tradition. 248 Still a few faint signs of change in the traditional framework of the concept and practice of patents started to appear. After a decline during
                  the revolution and the war the 1780s saw a surge of patent grants in many of the states, including some that did not grant patents during the colonial era.

                  247. The Continental Congress, despite several approaches for particularistic bills following the pattern of state patents, never granted patents, much less legislated a general patent regime. … On May 2, 1783 the Congress issued a resolution calling upon the states to legislate copyright laws. However, it made no reference to patents for invention in that resolution or on any other occasion.

                  Patents continued to be granted by ad-hoc enactments that expressed the discretionary and case-specific character of this tool. Typically, the grantee petitioned the legislature hoping to persuade it of the usefulness of
                  the invention and the desirability of a patent grant. 250 The legislature would employ discretion and make specific decision in each case. Furthermore, at least in some states where the issue arose it seems to have been assumed that
                  patents were revocable. The presumption there was that what the legislature’s discretion could award in the patent grant could also be taken away by the same power. 251 This general assumption never consolidated into, and indeed may have made redundant, a general administrative practice of inserting standard revocation clauses in the grants similar to the English ones.

                  “A lonely sign of change in this respect was a 1784 South Carolina statute that is often referred to as the first general patent act in America. This was, in fact, a provision in the newly enacted copyright law of the state or the “Act for the Encouragement of Arts and Sciences.”255 The provision created equivalence between the entitlements of authors and inventors declaring that:

                  “The Inventors of useful machines shall have a like
                  exclusive privilege of making or vending their machines
                  for the like terms of 14 years, under the same privileges and restrictions hereby granted to, and imposed on
                  authors of books.”

                  ….

                  Yet it was regarding this last feature that the strongest
                  indications of change began to appear in state patent grants. Invention was gradually changing its old meaning. In continuation to the late colonial developments, many of the grants and the discussions in state legislatures regarding patents for invention contained language that identified invention with technological innovation and the inventor as the discoverer of new ideas. Thus, when the Pennsylvania legislature granted a patent to Arthur Donaldson for his “hippopotamus” (a dredging machine used in ports and
                  docks) it declared that:

                  “it is consistent with the honor of this state to reward the
                  inventors of useful machines and the most rational and
                  just mode of such reward is and ought to be the exclusive
                  advantage resulting from the invention for a term of
                  years.

                  Invention was evidently acquiring its modern distinctive association with technological innovation. Furthermore, invention was gradually distinguished from the broader concept of introduction in practice and came to be associated exclusively with original discovery and development. Thus, a growing number of grants showed a developing concern about this new meaning of invention by incorporating clauses that voided the patent in case
                  it would be revealed that the grantee was not “the true and original” inventor.262

                  The state patent regimes were never formally abolished. When the federal system appeared, some questions of preemption arose,268 but the states’ power to grant patents was never sweepingly declared unconstitutional. In fact, some states went on to granting patents for invention through specific legislation into the early nineteenth century. States’ patents for invention gradually decayed and fell into disuse once the federal system
                  was introduced and inventors were attracted by the obvious advantages of a national patent covering a national market.

                2. Ned – Malcolm does not care – you mistook his standard “what no cut and paste” as something other than the deflection that he uses that line for.

        3. Of course, the justices in their infinite wisdom could just ignore the whole thing, which is my prediction.

            1. I often predict the outcome of these cases. “Most statistically like outcome” is not one of the criteria I look at that closely. There are lots of substantive reasons to think the justices are just going to ignore this one.

    2. Cur, it is as if you never actually read our petition. Old cases. indeed.

      Markman was in the mid ’90s.

      Feltner was in in 1998.

      Granfinanciera was 1989.

      Curtis v. Loether 1974

      Stern v. Marshall 2011

      But, Cur, you are not the first to ignore our 7th Amendment Argument.

      So tell me, Cur, just how did the Supreme Court find there to be right to a jury trial for patent cases in Markman if patents were public rights?

      Just how did the Supreme Court find that a statute that took copyright damages away from a jury was unconstitutional if copyrights are public rights?

      Civil Rights are wholly a creature of Federal Statutes. Yet the Supreme Court found they had a right to a jury trial because the remedy, damages, was a common law remedy. It is noted that actions to revoke a patent for invalidity was a common law remedy.

      If patents are public rights, there is no right to trial in an Article III court for any issue. Any. Public rights and rights to a trial by jury in an Article III court are mutually inconsistent. Public rights are the rights of the government as a sovereign. Private rights are rights of individuals. They are two entirely different things. To be sure, the Federal Circuit is making things up, once more, in an effort to ignore the controlling authority of the Supreme Court. Their reading of the case law is a bit, let us say, unreal.

      But we shall see, shall we not, if anyone deigns to oppose certiorari for any “legal” reason.

      1. But we shall see, shall we not, if anyone deigns to oppose certiorari for any “legal” reason.

        Let’s see Malcolm’s “mighty legal logic” at work on this…

        (I won’t be holding my breath)

      2. The problem with any “public rights” argument, is that the “public rights” doctrine is defined at any moment in time by the most recent Supreme Court case that tells us what it is.

        As it stands, the doctrine is legal vapor that makes the “abstraction” test for eligibility look plain as paint and rock solid by comparison.

  9. Everyone seems to be forgetting that MCM is appealing to the judicial body that recently came down with Alice, which is IPRs on steroids and Unconstitutional.

    1. Let’s also not forget how they “webbed up” the works with the recently (admittedly bad) Brulotte rule…

      Of course, here there be a difference: as some have pointed out, if the “not private property” meme is adhered to, the Court itself could easily be taken out of the loop (and we know how much they like to stick their fingers into the wax noses of patent law).

    2. Night, we shall see.

      When the PTO files its brief, it will soon be clear that the government want patents to be public rights because they want the option to fully control patents from examination to reexamination, from validity to remedy. They want to be able to “take” a drug patent without giving the patent owner a fair price. It can do so if patents are in fact public rights and not property. One has no ownership rights that are violated if patents are public rights. Patents can be revoked for any reason, and fair compensation is not involved.

      Back in the day, the Supreme Court ruled that the Government could not take (meaning infringe) a patent without just compensation because patents are property. That goes out the window if patents are public rights.

        1. They are arguing policy right now, so you are right, they are not now arguing law. But what if it came down to a statute or regulation that took a drug patent for the benefit of the poor. Now the government has that power, but it must compensate the patent owner only if the patent is property.

          1. As I said Ned – I “see” where you are going with that (and why) – and I think that Big Pharma is just not going to go for your sound byte.

      1. the Supreme Court ruled that the Government could not take (meaning infringe) a patent without just compensation because patents are property. That goes out the window if patents are public rights.

        Because you say so?

        Even if you were correct (and I doubt you are) the nightmare scenario you are painting would seem to be one that is easily fixed with a one sentence amendment to the patent statute, i.e., “Valid patents can’t be taken or used by the government without fair compensation to the owner.” Would you expect substantial resistance to that statute? I wouldn’t.

      2. Back in the day, the Supreme Court ruled that the Government could not take (meaning infringe) a patent without just compensation because patents are property. That goes out the window if patents are public rights.

        I agree that the CAFC’s “public rights” rationale was wrong. That said, I think that a lot of the hullabaloo here about drug patents being trampled depends on an unnecessarily bifurcated view of what a patent right is. People are arguing about public rights and property rights in land/chattels as if these are the only two possible categories. I think it would make things easier if we were to acknowledge the possibility of a tertium quid, where patents simply exist outside those two categories.

        As I said above, if McCormick is correct in all its particulars (i.e., if IP patents really do stand on the same footing as land patents), then MCM has to win. However, I just do not believe that IP patents really are (or should be) treated just like land patents. Nor am I convinced that IP patents are “public rights” in the same sense as compensation for waste-water spills or suchlike. IP patents are neither of those things, although they share certain features with each. Therefore, it simply is not helpful to argue as to which of the two IP patents are more like, and try to shoehorn them into one or the other category.

        1. Where are you getting this “theory” from, Greg?

          Did you make it up all on your own?

          I think your desire NOT to “shoehorn” is itself “shoehorning” into this newly created legal fiction.

          I do not think though that you have any “authority” for such a creative addition to legal jurisprudence.

          Nor would the courts, as that would be like “legislating from the bench” on steroids (and open ANY item that may be “difficult” to be a point of creation of some new “judicial handling”).

        2. Well, Greg, all British patents did have a reservation clause that the patent could be revoked by the Privy Council (read executive branch) for “inconvenience” until 1902. All that had to do with the special British experience with the “odious” patents (patents on trade) that was part of the struggle between Parliament and the Courts, on the one hand, and the Crown, on the other, that led to the English Civil War.

          Patents can issue on existing trade. Patents can be misused to block trade in unpatented commerce. Patents can be used by so-called trolls to hold up the defenseless. But simply because patents can be misused does not require stripping all patent owners of their constitutional rights, rights they have held since the founding, and before that, accorded under English common law.

          1. [S]imply because patents can be misused does not require stripping all patent owners of their constitutional rights…

            Sure, no argument there. My only question at this point is whether IPRs do violate anyone’s constitutional rights. If they do, then there is no question that IPRs much go. I simply am not yet convinced that they do.

            Meanwhile, my point above is that if you think that the CAFC’s basis for affirming the constitutionality of IPRs is problematic, well there we agree. I just think that it is possible to obviate the problematic nature of the CAFC decision without going all the way to full equivalency between IP and real estate.

          2. simply because patents can be misused does not require stripping all patent owners of their constitutional rights, rights they have held since the founding, and before that, accorded under English common law

            You’re assuming your conclusion.

        3. Greg: I think it would make things easier if we were to acknowledge the possibility of a tertium quid, where patents simply exist outside those two categories.

          Agreed. Acknowledging reality is usually a fine way to proceed.

  10. According to article linked below, since 2010 merits-stage petitions have garnered around 10 amici briefs for both sides. The MCM petition attracted 8 urging the court to hear the case. Cuozzo drew 9. One can expect quite a few more briefs at the merits stage if the courts takes the case.

    What is striking to me is that the supporters are in the main small inventors, smaller firms, startups, R&D investors, including an university. These folks were systematically shoved to one side during the debate concerning the AIA.

    There probably were a lot more firms/organizations that would have like to file a brief in support. But there are countervailing considerations and forces.

    link to files.arnoldporter.com

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