Not Eligible: Supreme Court Denies All Pending Subject Matter Eligibility Petitions

The Supreme Court has greatly simplified the patent docket by denying certiorari in 10+ cases.  Gone are GEA Process (IPR termination decision), Amphastar (scope of 271.e safe harbor) , Commil (appellate disregard of factual evidence), MacDermid (obvious combination), Jericho (Abstract Idea) , Trading Technologies (mandamus challenging CBM initiation), Tobinick (interference), Neev (arbitrator autonomy), Genetic Tech (eligibility), Essociate (eligibility), Dreissen, and Pactiv (ex parte reexamination procedure).   Notably, all of the eligibility petitions have been denied.

The constitutional challenges of MCM and Cooper are the only cases that particularly survived the Court’s latest culling. Those cases have been relisted for consideration at the next conference (October 7). However, there is some chance that the court is simply waiting for Square’s responsive brief due October 12.  Meanwhile, on October 11, the court will hear oral arguments in Samsung v. Apple.

139 thoughts on “Not Eligible: Supreme Court Denies All Pending Subject Matter Eligibility Petitions

  1. 8

    The second oral arguments re 101 in the wake of McRo today. McRo was not discussed by the panel at all.

    link to

    The “highlight” of the arguments, I suppose, was that Judge Newman again revealed the habitual willful ignorance engaged in by certain judges on the CAFC. She asserts with absolutely no basis (because there can be no basis) that 15 years ago “technology did not exist” to combine basic, generically stated and functionally claimed logical steps and computers. That wasn’t the case 15 years ago, and it wasn’t the case 50 years ago.

    There is a gigantic legal gulf between between “technical problems” and “commercially feasibility”. The fact that, at the time of the patent filing, “nobody” had built a computer that could, e.g., handle a million requests per minute from different computers, doesn’t mean that computers couldn’t communicate with one another. The lack of a commercially popular computerized platform to use for shipping stuff was not a “technical problem” that logicians were incapable of addressing. It was an investor vision problem. The solution to this latter problem is not to grant a million functional junky logic claims on, e.g., “translate this data with a translator, in this context, on a computer.”

    The patentee managed to liken his claims to Enfish, McRo and BASCOM in the space of thirty seconds. Nobody could have predicted that! The response from the panel was pretty much all crickets, except for Newman’s desperate coddling.

    Here’s the claim:

    1. A system for creating

    booking requests pertaining to information relating to the transport of a container, said information including at least one of a carrier name, departure date, departure time, departure location, arrival date, arrival time, arrival location, origin, and destination, [<– content descriptive junk]

    the system comprising:

    a plurality of entities registered [LOL] with the system, each entity having a computer storage, each of the entities configured to communicate with users over a first communication pathway

    to establish a shipping rate pertaining to the shipment of containers using a given entity and generate a contract reference [<–more content descriptive junk]; and

    a server at a second entity that is configured to

    [take a deep breath before inhaling this toxic g@rbage]

    receive information from said computer storage of said plurality of entities over a second communication pathway and provide a computer user interface for display on a user's computer over a third communication pathway, the computer user interface including a field configured to receive the contract reference, said server configured to receive from a user over the third communication pathway an electronic booking request including the information relating to the transport of a container, said server including a storage configured to store templates of electronic booking requests and provide one of said templates based on a search of templates performed by said user, said electronic booking request received over the third communication pathway having been created from one of said stored templates,

    said server further configured to transmit said electronic booking request including the contract reference to at least a first entity of said plurality of entities over the second communication pathway, wherein the contract reference pertains to the established shipping rate between at least the first entity and the user.

    Does anybody see in this claim the “technical solution” to this sooper dooper “technical” problem of translating data from different computers? Me neither. I see the term “configured to do this thing” over and over and over but I don’t see the structure of this magical “configuration”. Guess what’s in the spec? “Rectangle 105 translates stuff”.

    Maybe the super secret sauce to eligibility is “shipping.” Because that changes everything. Shipping data is totally different from other types of data that needs to be “translated”.

    Great job by the defendant’s attorney here, by the way. He made a couple of pointless admissions but he did a great job responding to Newman’s “born yesterday” shpeel.

    GT Nexus, Inc. v. INTTRA, Inc.

    Judges:  Newman, Lourie, & Dyk

    This might end up as an actual opinion with a worthless Newman dissent (unless she decides it’s not worth it). But INTRTA’s patents will remain tanked.

  2. 7

    Relist Watch
    John Elwood reviews Monday’s relisted cases.

    link to

    These next relists show that commentators who were grumbling that the divided court was just going to take a bunch of patent cases were all dead wrong. No, that’s not it. It shows they were totally right! The petitioners in both MCM Portfolio LLC v. Hewlett-Packard Co., 15-1130, and Cooper v. Lee, 15-955, are patent owners questioning the constitutionality of a proceeding called inter partes review. Established in 2011, IPR is a new, adversarial, adjudicatory proceeding that allows third parties to challenge the validity of granted patents before a panel of administrative judges (the Patent Trial and Appeal Board) rather than an Article III court. The Federal Circuit rejected petitioners’ arguments that the IPR violates Article III (because it vests the judicial power outside the judicial branch) and the Seventh Amendment (because it permits the government to extinguish valuable and vested private property rights without a jury trial). MCM (supported by eight amicus briefs) seeks to challenge both of those holdings; Carl Cooper (supported by two amicus briefs) raises only the Article III issue. The issues are necessarily splitless, because the Federal Circuit has exclusive jurisdiction over PTAB cases, but it is obviously important to an enormous slice of the economy.

  3. 6

    The first 101 case argued since McRo and IV v. Symantec was heard yesterday. The case is Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC (16-1112)

    Panel: Lourie, Dyk, & O’Malley

    District court decision here: link to

    You can listen to the oral arguments here: link to

    The claims are directed to receiving information using pre-existing technology and then “automatically” “processing” that information and returning some information back. The super dooper “innovative” context (yes, there’s always a context!) is “snowplows.”

    The patentee’s primary argument boiled down to: “But this data is snowplow data.”

    Let’s repeat that argument so it can sink it: “But this data is snowplow data.”

    This is our patent system, f0lks.

    There was, of course, a pre-emption argument but it fell on deaf ears. The argument was “You could send data back and forth between snowplow and a server without infringing our claim, therefore no pre-emption.” [crickets]

    This will end up as Rule 36 affirmation of the District Court’s finding of ineligibility, probably to be published on Friday.

  4. 5

    PB getting rid of patents for “programmed computers” would be devastating.

    It would be “devastating” to a swath of patent litigators and patent prosecutors but pretty much nobody else.

    Patent on software aren’t needed to promote “better software.” And they never were.

    They definitely are needed, however, to keep the junk patent litigation and junk patent prosecution gravy train rolling. 101 and IPRs is why patent litigation is slowing down. And that’s why the howls from the same self-interested group of attorneys are getting more and more shrill.

    All this was predicted by the way.

    1. 5.1

      …and what is it with you and your ego that you feel that it is “ok” to reply out of the comment stream just so that your post is “on top”….?

      Are you really that insecure in the strength (?) of your “arguments”?

      1. 5.1.1

        It has nothing to do with my “ego”, “anon.”

        Your statements are being highlighted. If you’re ashamed of them, don’t make them.


          Where in the world would you get this “if you are ashamed” B$…?

          Just more of the same old tired Malcolm spin…

          Yay ecosystem


          If you “jumping to the top” has nothing to do with your ego, why then do you do it so excessively?

          You do know that it is extremely unhelpful to any actual dialogue, right?

          Are you that self-centered so as to not care to put your comments in the normal order?

          Whatever reason can you have for your excessive “look-at-me look-at-me” posting at the top of the page? It cannot be laziness, because you actually have to do more work to scroll outside of the comment you are responding to and all the way to the bottom of the page in order to post on top.

          (this appears to be another item – like the DISQUS “extra” security that the use of Occam’s razor cuts like a knife)

  5. 4

    “anon” This concurrence is more than just wrong

    Exactly what’s wrong about it? Other than you don’t like the conclusion.

    it is repugnant and a breach of the role of the judge in applying the statutory law as written by Congress. The rest of the court should not sit idly by and let this frolic go unpunished,

    Well, I guarantee you nothing is going to happen to Mayer. Maybe you should call your Congressional representative. Let us know how that goes.

    1. 4.1

      What’s wrong with it?


      It is factually incorrect, legally incorrect and totally based on the anti-software patent propaganda.

      1. 4.1.1

        Other than your feelings, can you point to some specific statements that are wrong? Or are you waiting for your mentor to provide you with a script?

      2. 4.1.2

        getting rid of patents for “programmed computers” would be devastating.

        Like this isn’t “propaganda.”

        Also, I’m always happy to talk about the “factual correctness” of treating functionally claimed data massaging methods and flowcharts as physical structures if you’re up for that.


          Lol – you and your 0bsess10n with “objective physical structure” is not bleeding over into another argument not of my making (you never did answer me about your attempt to make Ned of all people one of my “cohorts”)

          “Go figure Folks”


            Still waiting for you to identify all the specific incorrect statements that Mayer has made in his concurrence.

            C’mon, man. You’re all about the substance and not the “drive by”. Step up.


              Each of his sound bytes that reflect the anti-software propaganda machine.

              Software is like a language….

              Heck, as I said – everything he had to say.

              I could be “all about the substance” for you – and still am – but the list of points is already present in his concurrence.

              If you have a specific one out of the entire list that you want to discuss in particular, just let me know which one and I would be happy to discuss it with you.


                Each of his sound bytes that reflect the anti-software propaganda machine.

                That’s not evidence for your statement, that’s just a restatement of your opinion.

                Software is like a language….

                This is a fact. It’s why skilled artisans (and everyone else) refers all the time to different software languages. Or did you think that was just a coincidence?

                as I said – everything he had to say.

                This is all you got? Seriously? Wow. Thank goodness you’re not all about just spewing insults without substance to back you up. You’re totally not a hypocrite!

                And I’m so mean for pointing this out. Right, Dennis?

                1. Evidence for my statement…?

                  You are desperately reaching.

                  Are your p00r p00r widdle feelings hurt from your CRPfest smackdown this morning?

                  Get a puppy.

                2. Evidence for my statement…? You are desperately reaching.

                  There’s no “desperation” whatsover on my part. You’re the one who said Kevin Collins was clueless about “the Art” (whatever that means), not me.

                  You were asked to provide some basis for statement. Thus far you have failed miserably in that regard.

                  But maybe Dennis disagrees! Dennis, what do you think? Am I being too “mean” here asking for Mr. Highhorse to back up his insult of Kevin Collins? Let everyone know.

                  Or you can just delete this thread and we’ll pretend that “anon” really is a saintlike actor entitled to smear everyone with impunity while he claims the high ground for himself.

                  Tough choices.

                3. Oh, I see I got “anon”s baseless insults of Judge Mayer mixed up with his baseless insults of Kevin Collins. My bad!

                  Just swap the names. Same difference.

                4. LOL “same difference”

                  Excpet for the fact that you so routinely engage in

                  that you missed the fact of just what you happened to be accusing me of.

                  It’s rather disturbing that you don;t even realize your modus operandi and when you flub that up. You just keep on steaming out the CRP.

                  As for the “insult” of Collins – I already answered you that such simply was not an insult. You have jumped and twisted things now into requiring some basis for something that does not exist.

                  Must be that frenetic-ism….


                5. Everything as “all I got”….

                  LOL – you want more than everything…?

                  How desperate are you ?

                6. you want more than everything

                  Merely asserting that “everything supports my insult of Kevin Collins” doesn’t make it so. Kinda strange that I have to point that out, but there you go.

                  What do you think, Dennis? Am I being too “mean” to “anon” here?

                7. And yet again – you assume that something was an insult that wasn’t and are pouting something fierce about it.

                  Your p00r p00r widdle feelings must be soooo bruised from your CRPfest being flushed.

                8. Your “fact” about software languages is exactly like your “logic” of the Big Box of Protons, Neutrons and Electrons.

                  And yet, you stumble and bumble on and on, not “getting” it.

                  And yes – there are languages for software, but software itself – as claimed and as understood by PHOSITA is not “like a language.”

                  Maybe you want to pay a litttlr more attention to the thing that you are “celebrating”….

                9. Your “fact” about software languages is exactly like your “logic” of the Big Box of Protons, Neutrons and Electrons

                  Dennis, can you tell everyone what “anon” is talking about here?

                  It would make me sad if I were to suggest that he was just spouting gibberish. Because it’s probably just my fault for not understanding!

                  Can you help explain it to everyone? I’m sure you can, Dennis.

                10. You are aware that i have explained the “Big Box” to you several times now, right?

                  You may not like the fact that I have crafted a clever phrase that epitomizes your “logic” and that you keep on walking straight into my invoking the phrase to tell you that you are using that p1ssp00r “logic” yet again, but that would be something enitrely within YOU to stop.

  6. 3

    MCM/Cooper getting relisted is a pretty good sign that cert will get granted. That’s been the tradition of the Court over the past 2-3 terms. And this is the kind of case that generally piques their interest – separation of powers, Seventh Amendment, serious impact on the legal system.

    1. 3.1

      If they grant cert and even abolish IPR we still have a stacked Federal Circuit that will continue to invalidate at a high rate. Alice will continue to be an issue. Seems like the NPEs created this anti-patent culture but innovators (start-ups) are being punished for it.

      1. 3.1.1

        Seems like the NPEs created this anti-patent culture

        Another Kool-Aid drinker…

        Guess who coined the term “patent tr011” and more importantly, why.

        Hint: it was Big Corp and it was not for the public’s benefit.

        One HUGE (and to date, hugely successful) pr0paganda job.


          Lol – “worst behavior” that just happens to be in the way of the truly Biggest G-g-g-grifters of Big Corp and in the way of the small guy…

          Yeah Malcolm, it really is to see the duplicitous one here is you.

    2. 3.2

      It would be nice if the Supremes would take up these IPR [and inherently other PTO post-grant proceeding] constitutionality challenges.* If they do, there will then be no excuse for anyone continuing to fail to submit their various unconstitutionality arguments in amicus briefs, rather than merely endlessly repeating allegations without support on blog sites. Nor would there be any further excuse for the lack of IPL association and legal academic input.
      * [However, as all the cert petition denials noted above demonstrate, cert petitions are 300 to one or worse long shots, much less federal statute unconstitutionality challenges.]

      1. 3.2.1

        LOL – Paul, do you realize how badly your whining comes across?

        Especially as you have not even bothered to engage in any of the Constitutional discussions (either attempting to belittle them, or say they were premature, or some other excuse that my large Vegas friend would end up cursing as my bet that you would not engage would win time and time again).

        With all due respect, maybe you will stop your evasions and actually engage the discussions.


          What first amendment problem is there in an individual filtering out viruses from digital data bound for the individual or with an individual subscribing for such a service? Moreover, what difference does it make that the method used to filter out a virus is patented or not?


            That’s a nice question, Les.

            But guess what? Finding some fact pattern that might lie on the margins doesn’t address the much larger issue of the reams of patents that are nowhere near the margins.

            When you’ve acquired the maturity to discuss that issue, let everybody know. Or you can address it now. Are you ready to address it? Just say so and I’ll post a comment that’ll tee you up in the spotlight for everybody. Ready?


              Malcolm asking when someone else will “find the maturity” to discuss something…



                Not waving anything away Malcolm.

                It is just not the problem that you think it is, so the “0h n0es” calamity you want to engage in is simply off.

                You assume that you are correct and that I therefore must be “missing something.”

                All that we have though is that you are wrong yet again.


                Your “thinking” and feelings simply are ungrounded.

                But I am “happy” for you that you like to think of yourself in the plural. Is your latest rendition of “Scooby-Don’t” there with you?



                You still are the one focusing on form rather than substance.

                You being wrong on the First Amendment issue does not change that.

                Not in the least.


              Marginal? My post at is in the wrong thread is all. It was meant for the first amendment post of October 2 (The post directly below this one on the main page -post, not comment). In that post, my comment is directly on point and not marginal in any way.


          You don’t seem to be paying attention to anything but your feelings – elsewise, you would know that I have provided substantive points to the discussion.

          But hey, you are just going to Tr011 on regardless.

          Yay ecosystem!


          Nice spin – follow the linked article on the First Amendment article.

          Try to understand what you are looking for (not your usual posts of short script and ad hominem).


            Lol – pay better attention when you read Malcolm – the linked article in the First Amendment article.

            You looked for the wrong thing on the wrong thread.

      2. 3.2.2

        The amicus briefs will come out in full force over this. The public/private rights doctrine is a morass for academics who struggle to articulate where the line is drawn. Likewise, the Seventh Amendment is similarly an area that is murky, particularly in the area of patent law. These are areas of constitutional law that are open questions, often in flux, and have a lot written about them over the years. There will be a lot of non-IP lawyers weighing in if they grant cert on the Article III issue alone.


            Point is this is the kind of case for a lot of scholarly amicus briefs about the constitutional issues rather than just industry ones about the relative merits of the IPR system.



              Thank you for that point.

              However – and this is important for you to understand – such influence on the Court through the channel of (unsubstantiated and biased) academics is part and parcel of the broken scoreboard issue that has plagued many recent Court decisions.

              Given that instead of double the ethical restraints as attorneys, this amici (especially from academia) have nearly zero effective ethical restraints.

              At this level of influence, the problem of the Emperor wearing no clothes is very real.


              You are probably right about that. One only has to look at these boards to realize that many (most?) practitioners know nothing or almost nothing about several of the relevant legal doctrines* (although, for better or worse, that does not stop us from opining on them as if we do).

              * And then, when the few among us who do know something (e.g., Ned) try to opine, the post gets caught in the filter. Go figure.

    1. 2.1

      Federal Circuit Issued its opinion on 9/13/2016
      Note: I don’t have access to Pacer at home, so I cannot see the docket.

      Generally, a party can file a cert within 90 (with up to 60 days of extension) from entry of judgment in the lower court.

      I provided the rules below.

      Has there been a petition already?

      Rule 13. Review on Certiorari: Time for Petitioning
      1. Unless otherwise provided by law, a petition for a writ of certiorari to review a judgment in any case, civil or criminal, entered by a state court of last resort or a United States court of appeals (including the United States Court of Appeals for the Armed Forces) is timely when it is filed with the Clerk of this Court within 90 days after entry of the judgment. A petition for a writ of certiorari seeking review of a judgment of a lower state court that is subject to discretionary review by the state court of last resort is timely when it is filed with the Clerk within 90 days after entry of the order denying discretionary review.
      2. The Clerk will not file any petition for a writ of certiorari that is jurisdictionally out of time. See, e. g., 28 U. S. C. §2101(c).
      3. The time to file a petition for a writ of certiorari runs from the date of entry of the judgment or order sought to be reviewed, and not from the issuance date of the mandate (or its equivalent under local practice). But if a petition for rehearing is timely filed in the lower court by any party, or if the lower court appropriately entertains an untimely petition for rehearing or sua sponte considers rehearing, the time to file the petition for a writ of certiorari for all parties (whether or not they requested rehearing or joined in the petition for rehearing) runs from the date of the denial of rehearing or, if rehearing is granted, the subsequent entry of judgment.

      and FRAP
      Federal Rule of Appellate Procedure 36
      Rule 36. Entry of Judgment; Notice
      (a) Entry. A judgment is entered when it is noted on the docket. The clerk must
      prepare, sign, and enter the judgment:
      (1) after receiving the court’s opinion—but if settlement of the judgment’s form is
      required, after final settlement; or
      (2) if a judgment is rendered without an opinion, as the court instructs.

    2. 2.2

      Assuming you meant McRO v. Bandai Namco, et al. the Fed. Cir. panel decision was only on 9/9/16. Too soon to tell if these defendants might request en banc review first and then file a cert petition, or file a cert petition. But judging just from the number of defendants in the important video animation business there would certainly appear to be ample financial reasons?

      1. 2.2.1

        McRo is a disgraceful opinion, worse even the CAFC’s opinion in Mayo.

        The repercussions are huge not just for the film industry but for everybody who uses programmed computers.


          “everybody who uses programmed computers” — you mean everyone then, since we all rely on such “computers” every day. Drive your car, you’re using a “programmed computer”. Turn the dial (if you still have one of those) on your thermostat, you’re using a “programmed computer”. By anything from Amazon, and you’re using too many “programmed computers” to count. I record TV, turn my lights on and off, cook food, refrigerate food, wash clothes, wash my dishes, use my LED lights, call or text people, read the news (including newspapers), etc., NONE of which would be possible today without “programmed computers”. So, getting rid of patents for “programmed computers” would be devastating.


            I believe the thinking behind this is that the innovations in software will happen anyway and are not “worthy” of being awarded patent rights.

            The problem of course with that thinking is that nothing in patent law supports such a “feeling”/opinion/philosophy/desire.

            This is also the problem with the stated “ubiquity”/too many patents line of reasoning.

            We have moved to a wholesale categorical removal of the presumption of validity (and what that means) based on nothin more than “feelings” rather than any actual law.

            The fact of the matter that innovation has moved – and moved strongly – in the area of software is being used as the pretext that this type of innovation does not deserve protection.

            The other assertions by Judge Mayer are simply not grounded in any factual basis.

            This concurrence is more than just wrong – it is repugnant and a breach of the role of the judge in applying the statutory law as written by Congress.

            The rest of the court should not sit idly by and let this frolic go unpunished, let alone unnoticed.

  7. 1

    It’s not constitutional Dennis. There is a body of SCOTUS case law that says so. Make peace with what is coming.

    1. 1.3

      MM, the attitude of the socialist is that property is the root of all evil. There is no doubt in my mind that many in the United States have this attitude and perhaps even some on the Supreme Court. But I have faith that the Supreme Court as a whole is more concerned about the Constitution, and the Constitution does guarantee property owners due process, which at common law included not only procedural due process but also the right to a trial by jury; and the seventh amendment guarantees the right to a trial by jury, such as it existed at common law.

      By statute, the Statute of Monopolies in 1624, patent validity was a matter be adjudged according to the common law. From 1753, England provided a direct action to revoke a patent for invalidity that was heard in the common law courts. There was, for every legal defense and cause of action, a right to a trial by jury for disputed facts.

      Now you may think that the Constitution and legal rights bend to the will of the majority as represented by Congress. I think otherwise. I also think the Supreme Court thinks otherwise. That is why I believe the court will in fact take MCM Portfolio LLC v. Hewlett-Packard.

      The issue here is a fundamental constitutional importance, especially in face of a growing administrative state administered by those of the socialist mind.


            Lol – like (only certain) G-g-g-grifters (but not those associated with the Dem party), right?

      1. 1.3.2

        A couple of responses (for whatever little they are worth):

        (1) I have to agree with anony that it looks increasingly likely to me that the Court will take these cases.

        (2) I will be very disappointed if the Court actually bites on the separation of powers issue. That argument is a non-starter, although I would be delighted to see them shoot down the CAFC’s rather sketchy public rights reasoning. IPRs do not violate separation of powers, but not for the reasons that the CAFC concluded that they do not.

        (3) Maybe there really is a VII amendment issue here. I would not know. If so, then I guess Congress needs to redraft the statute to provide for the appeal of the IPR decision to a court with a jury. If so, I hope that they also provide recourse to a specific specialty court that does nothing but IPR appeals, with an expedited docket. The whole point of the IPR is to be quick. I think that Congress would also need to make it a constructive infringement to petition for IPR, so as to provide the case-of-controversy necessary to permit any party who so desires to appeal to this district-court-with-quick-juries.

        (4) Alternatively, I hope that the Court side-steps the issue by simply interpreting the statute in a constitutional-avoidance manner. In that scenario, IPR becomes something that creates collateral estoppel, so that the PTO does not itself invalidate the property right, but merely creates a context in which the first Art III court to handle an enforcement action after the IPR does the formal work of invalidating.


          I can understand that a Petitioner has the right to a jury trial, but the Petitioner waives that right when filing an IPR. But how can a Patent Owner, who has no burden of proof in the invalidity decision, be entitled to a jury trial? I would have thought that the party having the burden of proof could be entitled to choose between convincing the jury or convincing the bench.


            Hm, I am not sure that it is correct to say that the patent owner never has a burden of proof. If the patent owner plans to argue commercial success, or invention before the filing date of the allegedly anticipating art, the patent owner has the burden of establishing those “affirmative defenses.”


            Note that where a patent suit sought Only an Injunction the Defendant Did Not Have Right to Jury Trial — Tegal Corp. v. Tokyo Electron America, Inc. [Fed. Cir.], and also there are no jury trials in a 35 USC 145 “civil action”, a 35 USC 146 case, or a 15 USC 1071(b) case.


              Hm, that is a very interesting point, Paul. Validity was at issue in Tegal Corp. v. Tokyo Electron America, 257 F.3d 1331, 1346 (Fed. Cir. 2001), and yet there was no right to a jury trial. That would suggest that the VII amendment issue is not so black-and-white.


              Paul, I am sure you are aware that both the right to a jury trial in a right to have a trial in an Article III court are rights that one can waive. One of the ways to waive those rights is by waving one’s right to damages.

              At common law, one did not have a right even the go into a court of equity without first having sued in law where the validity defense was tried. In other words by the time the the equitable remedy was chosen, validity had already been decided.


                Ned, as Greg just noted, your second paragraph historical was not the case in Tegal Corp. v. Tokyo Electron America.


          (2)…that argument is a non-starter

          I think that you are off, and based on your “logic” from the last discussion, I would not trust your conclusory statements here.


            The separation of powers argument proves too much. If it really does work an unconstitutional “taking” of “property” for the PTAB to declare a claim unpatentable in IPR, then the whole idea of an examinational patent system is unconstitutional. After all, the applicant acquires a bundle of sticks instantly upon filing, and yet the PTAB can extinguish those rights. The distinction between pre-grant and post-grant only makes sense if one’s “property” rights did not attach until after grant, but that is not the case. One owns a property rights in the application at the moment of filing.


              the applicant acquires a bundle of sticks instantly upon filing, and yet the PTAB can extinguish those rights.



              ? – you quite miss the point Greg that the initial examination is over and the application has left the executive branch as property.

              Take your time to compose your thoughts and try not to be so sloppy in your thinking.

              There is NOT a whole bundle gained “just by filing.”

              Some. And certainly those some are not mature (inchoate). That’s quite different than the “version” you are trying to spin here.


                There is NOT a whole bundle gained “just by filing.”

                If you mean to say that one gains even more rights upon grant than one had upon filing, I agree, but I do not see how that affects the analysis. Due process and takings law do not hinge on how many rights are impeached. A single one will do it.

                One has some rights upon filing, and those rights can be extinguished by the PTAB (with review by the CAFC). Similarly, the patentee has some other rights, and those rights can be extinguished by the PTAB (with review by the CAFC). In other words, if the IPR process presents a separation of powers problem, then the whole business of pre-grant examination is similarly problematic.

                1. …inchoate versus mature, Greg.

                  No rights are mature until the point of grant.

                  Seriously man, pick up your game.


                Take your time to compose your thoughts and try not to be so sloppy in your thinking.

                Physician, heal thyself.


                [T]hose some are not mature (inchoate).

                How is that point even relevant. Care to cite a case where due process and takings were sidestepped on the basis that the allegedly impeached rights were too “inchoate” or “immature”?

                Imagine that Abel wills Blackacre “to Ben and his heirs, but if Ben should sell alcohol on Blackacre, then and only then shall Cathryn’s children have the right to enter upon Blackacre and pick fruit from the trees growing thereon.”

                Now imagine that Ben is still alive and has not sold alcohol. Cathryn has, as yet, no children. Finally, there are no fruit trees growing on Blackacre. In other words, Cathryn’s (hypothetical) children own an unvested profit-à-prendre from a fee simple subject to executory limitation. We do not know whether they even have any rights (Ben has not yet sold alcohol), and if there is a vested right, we do not know who will own it (there are not yet any children), nor what rights there will be (will there be any fruit to pick at all, and if so will it be apples or peaches or cherries, or whatever).

                This is about as “inchoate” and “immature” a right as one can find, and yet this is still a right concerning real property and thus cannot be extinguished except by due process of law in an Art. III court or by eminent domain with adequate compensation paid.

                In other words, the “inchoate” or “immature” aspect is simply beside the point. To the extent that you want to distinguish pre-grant examination from post-grant IPR, you really cannot do so on the basis of “inchoate” or “immature,” because those considerations simply are not relevant to the analysis.

                1. The point is that you want to focus on an inchoate item as if it were equally on par with a granted patent.

                  That is simple and clear legal error.

                  What mechanism are you talking about in regards to the inchoate rights, exactly? The Congressionallly authorized examination process by which the inchoate becomes the granted?

                  Your post is sloppy.

                2. The Constitution is not concerned with the distinction between “inchoate” and “mature.” You are evading the only points that actually matter to the Constitutional analysis.

                3. By all means, educate me. I would be obliged to you for citing me some cases where the due-process or takings issue turned on the “inchoate” or “immature” nature of the right being asserted.

                4. Except it is not and attempting to say that the examination system itself is the problem completely misses the very real distinction between inchoate and matured rights because it IS the examination system that turns the inchoate into the mature.

                  Greg is off his rocker with his views here.


          so that the PTO does not itself invalidate the property right

          You want to talk about a non-starter…

          There is zero chance that the Court can rework the actual statute passed to that level of extent and call it “interpretating.”



            What is it exactly that you are giving “0%” odds? That the Court (1) can write some words in a holding, or that (2) It can do so in a manner that you find logically convincing/satisfying?

            I agree that the chances of (2) are 0%, but I put the chances of (1) a good bit north of 0%.


              The level of change required to revamp the entire PTAB to be a body that only gives advisory opinions is far beyond what the Court can do.


                “Can do” in what sense?

                The justices each have ten fingers. They can all hold a pen, and (to the best of my knowledge) they can all type at a keyboard.

                They are fully capable of writing word that amount to a holding as I describe in If they write such words, those words will have the force and effect of law.

                You might well regard the holding as poorly founded, or even (in some meaningless sense) ultra vires. Lord knows that there are plenty of cases on the books that I consider to have been either poorly reasoned or beyond the scope of the Court’s jurisdiction, but my thoughts on the matter are quite beside the point. Once the words appear in the United States reporter, they are the law.

                To complain that they “[are] far beyond what the Court can do” is nothing more than sour grapes.

                1. You really think that just because a Justice can write anything, that anything that they can write has full authority of law? That there is NO bounds on what the Court can do?

                  Maybe you want to sober up.

                  Let me know when you want to have an inte11ectually honest discussion about US law.

                2. Weren’t you up on a high horse a few minutes ago, complaining about ad hominems? I hope that you did not injure yourself when you fell.

                3. You really think that just because a Justice can write anything, that anything that they can write has full authority of law?

                  Yes, I really think that. So does every Art. III judge in the federal court system, come to that. That is why ours is a common law system, and not a civil law system.

                4. There is a difference – as I have discussed previously, Greg.

                  Nothing wrong with ad hominem per se.

                  But Malcolm’s are errant and baseless and that is all that he depends upon.

                  I provide more, and my ad hominem are accurate and on point.

                5. Lol – common versus civil, Greg: go back to law school and see if you can catch on to the difference between statutory law and common law.

                  Then go back to grade school and note that each branch has powers based on the notion of limited powers and checks and balances.

                  You do not seem to have a grasp on some key fundamentals.


              It has nothing to do with any sense of my “personal” satisfaction. An interesting version of ad hominem from you, but sorry, I am still talking about the law and not about how I would prefer the law to be.


                Oh, I have been ready, “Billy-Bob.”

                It is you that appears rather lost as to what the First Amendment is about.


          If there is, in fact, a Seventh Amendment right to a jury trial on patent validity, you could not draft the law to cure that defect.


            If that is so, then how are ex parte re-exams sustainable?

            As it was explained to me, there is no VII amendment problem with ex parte re-exams because you have the right to appeal an adverse PTAB holding to the ED Va, where you can take your case to a jury.

            If that makes ex parte re-exams acceptable for VII amendment purposes, why could the same not be done to save IPRs?


              Perhaps Congress could do that (but that type of legislation is beyond the courts’ power – but you seem to think that nothing is betyond the court’s power)


                For purposes of comment, I was talking about Congress providing an appeal from an adverse IPR to the ED Va.

                1. I know that you were talking about Congress at that post.

                  But this just contrasts with your other posts today on the “power” you somehow think our courts have been imbued with.

                  Heck, why bother at all with the large body of politicians, when you can have the Court just write by fiat and in a vacuum?

                  (I am glad the real world is not like your world, Greg)


              They aren’t. If you kill IPRs, you kill all post-grant review. That’s why I think the Supreme Court will ultimately uphold the constitutionality.



                Will they do so by fiat, or will they resolve the post-grant property aspect? If they resolve the post-grant property aspect as indeed personal property (as Congress has explicitly designated), will they resolve the takings issue that occurs (separately) at the institution decision point?

                1. They will say patents are a public right and their validity can be adjudicated by an agency after they are issued (and thus there’s no Article III requirement). And they will say there’s no right to a jury trial on patent validity. No Article III or Seventh Amendment issues.

                2. What “they” say is not in accord with what Congress has written.

                  That’s one of the things that we are looking for the Court to finalize.


                If you think that ex parte re-exams violate the VII amendment, I will defer to you. I really do not know enough VII amendment law to opine meaningfully on the dispute.

                That said, it strikes me as odd that there could have been a constitutional infirmity sitting there in title 35 for this long and no one has made an issue of it. Surely someone with deep pockets has lost a valuable patent to ex parte re-exam over the last couple decades. If this part of the patent code is just a sitting duck waiting to be plucked, why has no one yet taken the issue up to the Court?

                Meanwhile, I guess I am lost as to your point about why the Court will uphold IPRs. I expect that the Court will uphold IPRs because I think that IPRs pass constitutional muster (except, perhaps, for the VII amendment point, about which I express no opinion because I do not know enough to say).

                I am not clear, however, as to why you suppose that the Court would be loathe to do away with PGRs. What makes you think that the Court cares about PGRs one way or the other?

                1. I don’t know that they do. But the “1791” perspective on patents is decidedly murky, as far as I know. The scholarly research doesn’t provide much clarity which leaves a lot open for the Supreme Court to decide.

                2. Under the AIA, it is no longer possible to challenge in district court an adverse PTAB ruling regarding an ex parte reexamination; appeal to the Federal Circuit is now the only option. The removal of the availability of jury trials is therefore a very recent innovation. We shall wait and see whether ex parte reexam becomes vulnerable to a challenge based on these cases.

                3. There was never a right to a jury trial available in an appeal from the USPTO to the district court. You just got a bench trial

                4. Good point. What I should have said above is that historically one reason that you could believe ex parte re-exams to be kosher under the VII amendment was because of the right to appeal to a court with a jury. That is no longer the case, so if MCM wins its VII amendment argument, it is not just IPRs and PGRs that go down, but post-AIA ex parte re-exams as well.

                5. There was never a right to a jury trial available in an appeal from the USPTO to the district court. You just got a bench trial.

                  That’s very interesting. So really, there are only two possibilities here: (1) all the arguments about VII amendment are just so much guff; or (2) there has been an unexploded bomb sitting there in title 35 for decades now, and yet nobody on the losing end of a re-exam has ever seen fit to try to get the SCotUS to trigger that explosion.

                  Now that I know that, I have to say that my money is on #1 of those two options.

                6. Guest, Lockwood was decided in ’95 — patent validity had a right to jury trial. Nice and two others argued that Lockwood had overruled Patlex.

                  Now, if someone requested a trial by jury in a de novo review of a patent reexamination, or in the alternative, a ruling that reexaminations were unconstitutional, it would be odd indeed that a court would not grant a trial by jury.

                  Again, Patlex (district court) upheld reexaminations because of de novo review.

                7. Now, if someone requested a trial by jury in a de novo review of a patent reexamination,… it would be odd indeed that a court would not grant a trial by jury.

                  Not odd at all. Joy Techs. v. Manbeck, 959 F.2d 226, 227 (Fed. Cir. 1992) explains that you do not get a jury trial when you sue the patent office to overturn a rejection, because sovereign immunity precludes a jury trial unless Congress affirmatively grants such a right under 35 U.S.C. § 145, and Congress has not done so.

                  Patlex (district court) upheld reexaminations because of de novo review.

                  Er, o.k., but de novo review is not the same thing as jury trial. The VII amendment is only concerned with juries, not the bare idea of supervision of Art. I tribunals by Art. III courts. To note that Patlex held that re-exams are kosher because of the opportunity for Art. III review does not speak to the issue of why there is supposedly a VII amendment vulnerability that has been sitting in the statute unexploited for decades.

                8. Greg, so if the US sued to revoke a patent, one has a right to jury trial, but if the US simply revokes the patent and you sue to challenged that act you do not have right to a jury trial?

                  The Supreme Court dealt with this situation before and held that Congress had no authority to assign to an administrative agency or a court of equity the trial of an issue where there was a right to a jury trial.

                  It is easy to see how one can really get confused when one puts the cart before the horse.

                9. [I]f the US sued to revoke a patent, one has a right to jury trial…

                  Er, no. That is why I cited Joy Techs. If the U.S. is a named party, you do not get a jury trial because of sovereign immunity.

                  The Supreme Court dealt with this situation before and held that Congress had no authority to assign to an administrative agency or a court of equity the trial of an issue where there was a right to a jury trial.

                  I do not agree that the Court held that Congress had no authority to do so. The Court said in McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606, 608–09 1898 that:

                  [W]hen a patent has received the signature of the Secretary of the Interior, countersigned by the Commissioner of Patents, and has had affixed to it the seal of the Patent Office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or cancelled by the President, or any other officer of the Government…. ***subject to a single qualification*** in the case of a patent for an invention where the patentee, his legal representatives or assigns, find the original patent inoperative or invalid by reason of a defective or insufficient specification…

                  [internal citations omitted, internal emphasis added]

                  N.B. that “subject to a single qualification.” In other words, the Court did not hold that the Congress lacks the authority to resubmit the patent to the jurisdiction of the PTO. Rather, the court merely held that the legislation that Congress had passed at that time did not allow for the PTO to exercise any other post-grant jurisdiction over a patent.

                  The fact that the qualification was not struck down as unconstitutional shows that Congress had the authority to resubmit the patent to PTO jurisdiction. Congress simply had not done so at that time. This was not a separation of powers problem. It was merely a matter of what the statute did and did not (yet) authorize.

                10. Again, Greg, you merely state a conclusory opinion.

                  Not too helpful given that I have spelled out quite clearly why there is a takings at the point of the institution decision (regardless of anything else you want to add to that situation, you still need to take a deep breath and before you chase anything else, deal with the situation as it pertains to IPRs).

                1. It is strange, is it not, what the filter holds up and what it lets through? I have had more than one substantive response vanish into the ether, while whole meters and meters worth of vapid sniping appear without a hiccup.

      2. 1.3.3

        Cocaine is property, too. And it can be taken (is everyday) without a jury trial. What rights does a patentee have to an invalid patent?


          That is why the timing of the taking can be important. The taking at the institution point happens prior to whether or not the “validity” is determined. Since that determination is within the Office, there ARE valuable sticks in the bundle of property rights taken AT the institution point which have material effects later in the process.


          ID, the issue is who decides what issues, not whether one has a right to a patent that has already been found invalid.

          I am sure, ID, that you know a little about history. Why do you think the lords forced the King John to provide due process according to law, and juries, when the ownership of property was at issue?

          Without due process according to law, there can be no liberty. The guarantor of liberty in the US are the courts — independent of both the executive and the legislature.


              anon, it places the courts above the executive and the legislative in determining the meaning of the constitution.



                The judicial branch is a co-equal branch.

                Your view of it being above the other two branches is part and parcel of your problem in picking up the separation of powers and checks and balances points that I have shared with you.

                Since you very well may have the opportunity to be before the Supreme Court, I sincerely hope that your understanding of both the separation of powers and checks and balances AND the fact that our system was designed to have co-equal branches is improved in the interim.

                As I have previously suggested, read again the concerns expressed at the founding of this nation of a TOO-powerful court (Madison it was, iirc).

                Your views are dangerous – and also lead to the corrupting power now evident in the Court. This is also why I stress to you that the oath of the attorney does not place the court above the Constitution. We have a duty not to think that the Court can do whatever it wants merely because it is the highest court of the land.


                [T]he courts [stand] above the executive and the legislative in determining the meaning of the constitution.

                Naturally, Ned, I agree with you. However, this may be yet another practical illustration of Sinclair Lewis’s wise observation that “[i]t is difficult to get a man to understand something, when his salary depends on his not understanding it.”

                1. Er, Upton Sinclair, not Sinclair Lewis. Evidently, I need another cup of coffee still this morning.

      3. 1.3.4

        If the Article III branch will not protect the ‘finality of judgment rule’ the other two departments sure as heck will not. Holding otherwise would invite another massive expansion of Executive department power under the guise of Administrative courts and ‘expert’ decision making. They might as well hang up the black robes, because they won’t be judges anymore, but mere chancellors rendering advisory opinions. Hayburn’s case.

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