One Last Try: Is the Inter Partes Review system Unconstitutional?

Cooper v. Square is the final pending constitutional challenge to the inter partes and post grant review proceedings created by Congress in the America Invents Act of 2011 and briefing in the case is now complete.

In the final reply brief in the petition process, Cooper explains how this case is a good vehicle for the challenge:

This case is the only one left of three that raised a facial constitutional challenge to inter partes review (IPR). This Court relisted in Cooper v. Lee, No. 15-955, and MCM Portfolio v. HP, No. 15-1330, before denying cert on October 11, 2016. This case is distinct from both of those, and far more amenable to adjudication by this Court. This case does not have the vehicle problem identified by the federal respondent in Cooper v. Lee (since this case arises directly from an agency final decision, whereas Cooper v. Lee arose from a collateral proceeding). And this case does not seek the extreme constitutional remedies of the petitioner in MCM Portfolio (since this case seeks relief in the form of making IPR outcomes advisory, not in the form of annihilating an entire section of a federal agency).

In its responsive brief Square argued that Cooper waived his constitutional argument by not repeatedly raising the issue.  The Cooper brief does a nice job of explaining the errors in that conclusion.

Patent Academic Ray Mercado also took advantage of the request for a responsive brief to file an amicus brief. Mercado argues that patents should be seen as “private rights” and therefore cannot be administratively cancelled.  He writes: “Once the historical uniqueness of patent law is taken into account, it is clear that patents are ‘private rights’ for purposes of this Court’s separation of powers jurisprudence, and their validity must be decided by Article III courts.”

139 thoughts on “One Last Try: Is the Inter Partes Review system Unconstitutional?

  1. 11

    No. 16-76
    J. Carl Cooper, Petitioner
    Square, Inc.
    Docketed: July 15, 2016
    Lower Ct: United States Court of Appeals for the Federal Circuit
    Case Nos.: (2015-1925, 2015-1942, 2015-1943)
    Decision Date: April 14, 2016

    ~~~Date~~~ ~~~~~~~Proceedings and Orders~~~~~~~~~~~~~~~~~~~~~
    Jul 13 2016 Petition for a writ of certiorari filed. (Response due August 15, 2016)
    Aug 12 2016 Waiver of right of respondent Square, Inc. to respond filed.
    Aug 24 2016 DISTRIBUTED for Conference of September 26, 2016.
    Sep 9 2016 Response Requested . (Due October 11, 2016)
    Sep 30 2016 Consent to the filing of amicus curiae briefs, in support of either party or of neither party, received from counsel for petitioner.
    Oct 11 2016 Brief amicus curiae of Raymond A. Mercado, PH.D. filed.
    Oct 11 2016 Brief of respondent Square, Inc. in opposition filed.
    Oct 19 2016 Reply of petitioner J. Carl Cooper filed.
    Oct 25 2016 DISTRIBUTED for Conference of November 10, 2016.



            Since when is making any particular law firm “look bad” pertinent to covering what is happening on the SCOTUS docket…?

            (I do recognize the “professional” link, but we are talking about a Peabody award winning blog here…)

            If anything, the better path would be to admit upfront any seeming “deficiency” and clear the air about even the appearance of bias.

  2. 10

    Imagine that the SCotUS were to hold IPRs unconstitutional on either separation of powers or VII amendment grounds (or both). So now it is back to the drawing board for Congress.

    It seems to me that there are essentially three aspects of IPRs that make them so worthwhile an addition to the system: (1) limited discovery (so that they are not too expensive); (2) an 18-month statutory maximum (so that they can be resolved in time to simplify a lawsuit); and (3) no Art. III standing requirements, so that anyone can file one.

    What if Congress were to replace the (in my hypothetical) now-destroyed IPR system with a special set of Art. III district courts. The judges, like all Art. III judges, would be appointed for life, subject only to removal by impeachment and with a salary that can never be diminished. These courts would have jurisdiction to hear only cases challenging the validity of a patent claim. They would have exclusive jurisdiction on that point. That is to say, if a defendant in an infringement suit were to raise invalidity as a defense, the trial judge in that infringement suit would have to transfer that part of the case to the special-purpose Art. III court I am describing. These courts would be empowered to hear all invalidity actions—not just §§ 102/103 actions over patents and printed publications, but also § 101, § 112, ODP, etc. Appeals from these special-purpose district courts would lie in the CAFC, and could be taken immediately after the validity-verdict, even if the corresponding infringement suit were still pending in another district court.

    The special purpose validity courts would also have a statutory mandate to reach a final judgment in 18 months. There would, accordingly, be only limited discovery permitted for either side in these courts (FRCP would be amended accordingly to reflect as much). If the validity trial were an off-shoot from an infringement trial, than any validity-relevant evidence discovered in the course of the infringement trial discovery could be part of the validity trial. To facilitate the 18 month deadline, the challenger would have to pick the best two arguments for invalidity, and the trial would be limited to those two. In other words, you do not get to challenge on §101, and §102, and §112, and ODP (etc.). You pick your best two arguments, and if you cannot win on those, you are done. The special-purpose Art. III court (unlike the PTAB) would have no discretion about which of those two to hear. The challenger gets to choose and the judge has to hear those arguments (although if the challenger chooses two defenses that really cannot be successfully presented in a year, then it is the challenger’s own fault if the judge is not convinced).

    Finally, the nature of this court would be such that the challenger would sue the government to have the patent declared invalid, and then the patent owner would be joined as a party on the government’s side. The owner could direct the defense of the patent, or leave to the government lawyers to defend, however, the patent owner preferred. Because this would stand as a suit brought against the government, sovereign immunity principles would preclude the application of the VII amendment jury trial right.

    In other words, this scheme I am describing above would satisfy (I believe) the Art. III and VII amendment issues presently at stake, while still retaining two of the three great advantages of IPRs. I cannot see a way that the system could be structured to avoid Art. III standing requirements, short of amending the constitution. Still and all, two out of three isn’t bad.

    Some people might say that I have missed a fourth advantage of IPRs: (4) the “preponderance of the evidence” instead of “clear and convincing” standard for proving invalidity. This is not a point about which I care greatly, but on the assumption that Congress really wants this aspect of IPRs to persist, they could also revise §§ 273 & 282 accordingly.

    Can anyone spot a flaw in the idea that I am proposing? If so, do you regard that flaw as insuperable, or is there a refinement on the proposed scheme that could solve the flaw?

    1. 10.1

      How would “suing the government” work with the existing notion that patents are personal property?


          (as well as turns the typical sovereignty stand on its head)

          You are doing some rather major changes here – not sure that you really want to squeeze those elephants into that mouse hole….


            …and you are (or should be) aware that limited discovery favors quite naturally the infringer, right?

            The more I think about your suggestion, Greg, the worse it gets.


              (that is not to say that you have not put some thought into it: at first glance, your suggestions did appear to be somewhat reasonable, and you do appear to at least address some of the counter points raised in the various discussions concerning frailty of the overall IPR system)

    2. 10.2

      Can anyone spot a flaw in the idea that I am proposing?

      Other than the fact that the patent maximalists will do everything in their shrinking power to prevent it from ever happening (but they’re all about “patent quality”!), it doesn’t seem unreasonable.

      These “Article III” judges, I assume, would be paid less than other Article III judges, given the limited scope of issues on their docket …

      1. 10.2.1

        You have an odd (and untirely unfounded) view that what you call “patent maximalists” are necessarily against patent quality.

        This is simply not so – and you have NO standing to postulate otherwise.

        Stop your dissembling please.

  3. 9

    Note to Dennis: I know you have your reasons, but pretending that “Congress” isn’t composed of people belonging to parties with very widely disseminated and divergently opposed views about the role of the Federal government is, in my humble opinion, a thoughtless game to play with your readers.

    Grown ups have to learn to accept their choices. That includes Republicans who consider themselves to be grown-ups. Everybody is free to vote for Congresspeople who don’t want to do whatever they can to starve and undermine the Federal government. Election day is coming up.

    Feel free to delete this comment as well.


  4. 8

    If Cooper argues “the straightforward reading of the statute would be unconstitutional, so please construe the statute in a different manner that makes the PTAB decisions merely advisory,” it is at least possible that the Court could come away with the conclusions that (1) the straightforward reading of the statute is unconstitutional, but (2) the narrower construction proposed by Cooper is untenable. In that case, is the Court still free to say “we therefore strike down this statute as unconstitutional,” or is the Court constrained to say merely “we deny the petitioner the relief he seeks” because Cooper did not ask for “strike it down”?

    1. 8.1

      In case it is not clear in the above, I am not making an argument here. I am only asking a question, because I do not know the answer.

      1. 8.1.1

        The answer is: If SCOTUS grants cert. it can do anything it wants with 5 votes. There is no doctrine that will constrain them if they have the votes. That’s just a fact.

        If SCOTUS wants to save the AIA, by the new rewrite power, they would (1) hold the board opinions as advisory and (2) engraft the ‘well known’ Fed.R.Civ.P 81(b) Writ of Scire Facias and provide that either party may plead his defenses to the opinions of the board. Just like magic, Constitutional.


          I suspect that this is correct. I suppose, however, what I really should have asked above is “does anyone know of a case where the SCotUS said, ‘despite the fact that petitioner did not ask for this relief, we are giving it anyway’?”.


              The majority of modern cases? Roe v. Wade, trimester test leaps to mind.

              How many cases has the Supreme Court decided since “modern times began”? Let’s say “modern times” began in 1970.

              I’m pretty sure one case doesn’t constitute a “majority” or even a “substantial minority.” More like a dew drop on the back of an elephant.


          Jeffrey Toobin tells a story in The Nine about how Justice Brennan used to ask all of his new clerks “what is the most important law in the United States?” The invariable response was a quizzical look, at which point he would answer his own question “The law of five! If you have five votes, you can do anything.”


            There are some writings from about the time that this country was founded that critiqued the dangers of a court unchecked in its power.

            It is one of the reasons why even the judicial branch is of limited powers, and exactly like the other branches is not above the Constitution and is on par with the other branches and held so through the separation of powers doctrine and other checks and balances.

            That this even appears to be needed to be added to this conversation marks a sad day in legal discourse.

            That it needs to be said quite often because certain people simply want the Court to operate statutory law by judicial fiat is beyond sad – not all revolutions happen by way of the sword – some by way of the pen.


          I don’t think so. This dance has been running for 200+ years at this point. If Scotus pushes with a ruling, Congress can and has pushed back with new language followed by new cases, and a gradual, normative result is eventually arrived at.

          If Scotus dumps IPR it’s pretty doubtful Congress would go back on that same tack. The troll problem is what motivated the AIA, but that was the wrong problem and the wrong solution. The problem is information in patents. That is unaddressed as of yet.

          Scotus could well say that KSR, properly applied, is the correct means to invalidate obvious patents as both the better policy choice and legal choice.

          On the other hand, with 8 members, a politically uncertain situation, and an operating IPR system they may just take a pass on the whole thing.

      2. 8.1.2


        It’s ok to say that you are changing your mind and agreeing with anon.

        It wasn’t that painful with the Supreme Court Justices issue, now was it?

    2. 8.2

      Greg – if the latter, the Court can strike the provision and stay execution of that judgment for a period of time, allowing Congress time to amend.

      There are posters here who will refuse to acknowledge that proposition. They are, however, pushing an aggressive agenda (either the dismantling of IPR or the collapse of the AIA).

      1. 8.2.1

        It is NOT that I “refuse to acknowledge,” anony.

        Quite the opposite, as you have refused to answer my “what happens in the mean time?” question (and have put forth inapposite cases as some type of justification).

    3. 8.3

      Greg and readers, the Cooper argument is not for an “interpretation” of § 318(b). Instead, the Court’s practice when addressing an unconstitutional part of a statute is to direct that it have no effect.

      The Court did this in Free Enterprise Fund v. Pub. Co. Accounting Oversight Bd.,
130 S. Ct. 3138, 3161 (2010) (severing “problematic” portions of unconstitutional statute “while leaving the remainder intact”), and McCormick Harvesting Mach. Co. v. Aultman,
169 U.S. 606, 611-12 (1898) (directing that reissue examiner-invalidated original claims would reflect only the opinion of the examiner and would not effect invalidity) (“His opinion thereon was but his personal opinion, and however persuasive it might be, did not oust the jurisdiction of any court to which the owner might apply for an adjudication of his rights, and as the examiner had no authority to affect the claims of the original patent, no appeal was necessary from his decision.”).

      Note that at the time the Court decided McCormick Harvesting, reissue examiners acted under color of statutory authority to invalidate original patent claims during reissuance proceedings (just like IPRs today). See Patent Act of 1870, Section 46, R.S. § 4909 (providing that “any claim” – whether original or added – may be rejected twice during reissue, and rejection is final for appeal purposes)

      1. 8.3.2

        Which leads to a different question on the lack of severability of the AIA (note: this is NOT the same as what the law known as AIA was integrated into).


  5. 7

    At the risk of asking what might seem an embarrassingly stupid question, is the Court constrained by the plea of relief? That is to say, if Cooper argues “the straightforward reading of the statute would be unconstitutional, so please construe the statute in a different manner that makes the PTAB decisions merely advisory,” it is at least possible that the Court could come away with the conclusions that (1) the straightforward reading of the statute is unconstitutional, but (2) the narrower construction proposed by Cooper is untenable. In that case, is the Court still free to say “we therefore strike down this statute as unconstitutional,” or is the Court constrained to say merely “we deny the petitioner the relief he seeks” because Cooper did not ask for “strike it down”?

  6. 6

    anony if a public right, then patent validity determinations may be removed from Article III courts altogether (including the SCOTUS).

    Is this just a silly argument, or an even sillier threat?

    I’m not aware of anyone proposing to eliminate Article III courts from the patent system. L0sers at the IPR stage are perfectly free to appeal their loss (and they sometimes do).

    In fact, the only person I’m aware of who has ever suggested that the Supreme Court be stripped of its ability to review a patent invalidity determination is an anonymous “Patent Everything” commenter here whose fantasy includes wiping out the Federal Circuit and instituting Judge Rich’s utterly discredited State Street Bank decision as the law of patent land.

    I understand why the heads of a certain class of patent attorney are exploding but, seriously, you guys just need a bigger bucket to hold the mess. And you need to dial your expectations down about 100 fold.

    It’s just truly p@ thetic to hear all this talk about “the pendulum swinging back”. There is no “swinging back.” The patent system of 1990-2010 is dead, sealed up in a steel coffin, and buried under a zillion tons of granite. Get over it already.

    1. 6.1

      Sure, don’t take my word for it. Instead, I refer you to 150 years of SCOTUS public rights case law saying exactly that.

      1. 6.1.1

        don’t take my word for it.

        Oh, I believe that you believe your argument. I just don’t think there’s any chance that the Supremes will believe it because, you know, they are pretty much free to

        I refer you to 150 years of SCOTUS public rights case law saying exactly that.

        Anybody who has familiarized themseles with the SCOTUS’ “public rights case law” over the past 150 years knows that there is pretty much nothing about it that is “exact”. It’s a mudpit and what a “public right” is and what it means for you or me or an Article III court on any given day depends on the latest Supreme Court decision. And that latest Supreme Court decision will always be decided by looking at the immediate and inevitable effects on whatever system is at stake.

        Here you have a situation where, a couple decades ago, some of the worst actors in the history of patent law managed to completely corrupt the system. And we’re trying to fix that mistake which resulted in a massive and historicallly unprecedented bolus of junk patents. Now, it goes without saying that those same self-interested and self-absorbed actors — mainly patent attorneys — are going to do everything possible to keep the merry go round turning and keep the junk flowing into and out of the system.

        The Supreme Court is well aware of all of this. It’s kinda been a big thing in the news for a few years now. You’ve noticed, right? Oh let me guess: the media is “rigged” against you. Sure it is.


          Without question, there is tremendous ambiguity in the public rights exception. Nonetheless, two things are clear: the law, equity, admiralty limitation, and the legal consequences from a separation of powers standpoint of designating a particular cause of action a public right.

          The analysis becomes much more difficult where dealing with a hybrid, pseudo-novel statutory claim that resembles a claim at law or equity in some respects but not others.

          Fortunately for petitioner, patent validity is about as straightforward as it gets.


            Fortunately for petitioner, patent validity is about as straightforward as it gets.

            “Straightforward” in what sense? Is it a public right or a private right? Or some “unique” hybrid thing that the Supreme Court has yet to recognize and define?

            the legal consequences from a separation of powers standpoint of designating a particular cause of action a public right.

            This gets back to my earlier point: if the framework established by Congress is that validity of a particular patent can be challenged at the agency level by the public (which makes total sense given that the patents apply to everyone and given that the agency is theoretically well-equipped to recognize and fix its own mistakes), and the patentee can appeal an invalidity finding to the CAFC and the Supremes, then what “legal consequences” should we care about? There doesn’t appear to be Due Process problem. If anything, patent applicants are given far more Due Process than the public who’s rights are being continually chewed up thanks to a combination of applicant greed and PTO incompetence.


              Straightforward in the sense that patent validity is an ancient cause of action with centuries of history at law and equity.

              As for your second paragraph, you are close, but not quite there. The IPR invalidity finding requires enforcement by a district court, with a potential appeal to follow then to the CAFC. Do that, and the constitutional problem is solved.


                “The IPR invalidity finding requires enforcement by a district court, with a potential appeal to follow then to the CAFC. Do that, and the constitutional problem is solved.”

                True, but for the 7th Amendment. That’s usually where I end up. How do you square the 7th into your procedure?

                1. That’s a perceptive question. We know that patent validity has an extensive history at law and equity. That settles the matter from an Article III perspective. But was a standalone claim resolved at law? At equity? That’s a difficult question, and the Court might want to save it for another day.

                2. We know that patent validity has an extensive history at law and equity. That settles the matter from an Article III perspective.

                  Respectfully, the terms “patent” and “patent validity” can (and do) mean virtually whatever Congress wants them to mean. This “ancient history” doesn’t settle anything, particularly when everybody knows — the Supreme Court included — that unprecedented recent history is why Congress created the IPR regime.

                  Just to be clear: I’m all for a “Constitutional” patent system. I just find it hilarious to observe that the Constitution only seems to apply to patent law when the value of the patent holder’s “property” is diminished. Maybe you’ve noticed this as well?

                  Some agency ignores reason, law and common sense and unleashes a zillion cr@p patents on the public and the same people who are complaining about their precious “Constitution” now sat by and cheerleaded every bit of junk and derided anyone who dared criticize all their marvelous “progress.” Now we try to clean up the mess and suddenly they’re all fired up about “the Constitution.”

                  Go figure.

                3. Malcolm,

                  I have explained this to you previously (even in short declarative English sentences that you so like).

                  Congress did not change the basic nature of what a patent is with the AIA.

                  Even Congress (the correct branch of the Government to write the statutory law that is patent law) cannot operate in a vacuum and just do what it pleases when such things as property are protected under other parts of the Constitution.

                  Your attempt here to say by fiat “Whatever” is simply false.

                4. Congress did not change the basic nature of what a patent is with the AIA.

                  I agree that patents have been properly subject to agency revocation for a long time.

                5. Your idea of “property” and “subject to” are not in accord with either reality or the law.

                  That’s kind of the point in stressing that the AIA did not change the basic nature of the patent right. And in mentioning that THAT right enjoys protections from other parts of the Constitution which protect it even from changes by Congress.

                  As I have said – this was previously explained to you in short, declarative, easy to understand English sentences.

                  A “response” such as yours here and now concerning how you feel changes none of what is the actual legal picture.

                  Your feelings are noted.

                6. anony, patent validity was and is a legal question. Darcy v. Allen, Darcy v. Allen, 11 Coke 84b 77 (1602); Statute of Monopolies 1623, 21 Jac. 1, c. 3 § II (Eng.). Prior to 1789, the remedy to invalidate a patent was a legal remedy, filed on the law side of Chancery. Disputed facts were tried in a common law court to a common law jury, where judgment was rendered by a common law judge. That judgment was then registered with the clerk of the petty bag if the judgment was for invalidity.

                  There really is no serious dispute that validity has a right to a trial by jury. Even the government in MCM conceded that point.

                7. Pretty sure that Markman held that patents rights were a jury trial right covered under the 7th Amendment.

                8. anony, I cited Lemely not for his conclusions, but for his facts. He fully agreed that patent revocation actions were filed on the common law side of Chancery and that disputed facts were tried to a jury.

                  He just didn’t seem to know the procedure after the jury verdict. He seemed very confused on the role of the Judge in Chancery.

                  The revocation of a patent was never an equitable remedy – how does one decide the equities of a legal issue? It was always legal. Disputed facts were always tried to juries.

                  You might read Chesnin, Harold, and Geoffrey C. Hazard Jr. “Chancery Procedure
                  and the Seventh Amendment: Jury Trial of Issues in Equity
                  Cases Before 1791.” Yale LJ 83 (1973) and John Paxton Norman, The Law and Practice Relating to Letters Patent for Inventions (London: Butterworths, 1853) at 194

                9. Ned – all that shows is that there is a question, and a tough one at that. Also, it’s not a question that the Court needs to reach in order to resolve the Article III question.


                Except “do that” is beyond the power of any court to rewrite the legislation as would be required to “do that.”

                Seems like such a small thing, and yet, it is such an important thing.


                The IPR invalidity finding requires enforcement by a district court

                The patentee is free now to attempt to enforce his worthless piece of paper in a district court, and then appeal the inevitable failure to gain traction if he likes. Seems eminently reasonable, not to mention eminently just for the public, for Congress to bypass that step and just direct the holder of the invalid patent to the CAFC.

                1. The accused infringer would have to pursue enforcement in district court.

                  In some situations, standing might be an issue.

                2. The accused infringer would have to pursue enforcement

                  Nonsensical. There is nothing to “enforce”.

                  The patentee is holding a worthless piece of paper.

                3. The “Means” to that “End” of making that paper into a worthless piece of paper are critical.

                  You do understand at least that much, do you Malcolm ?

                4. The advisory order recommending invalidity would require enforcement by the district court.

                  Oh, you’re talking about your wish about how things will be when “the pendulum is swinging back” into deep patent luvver’s land. Whatever.

                  Kinda strange that you’d suggest only “accused infringers” would have the authority to pursue this “enforcement”. I don’t have to be “accused” of anything to know that the agency issued a junk patent, nor do I need to be accused of anything to ask the agency to fix its mistake.

    2. 6.2

      MM, here is a quote from Northern Pipeline v. Marathon Pipe Line, 458 U.S. 50, 86 n.39 (1982), rejecting that availability of appellate review alone satisfies Article III:

      Appellants suggest that Crowell and Raddatz stand for the proposition that Art. III is satisfied so long as some degree of appellate review is provided. But that suggestion is directly contrary to the text of our Constitution:

      “The Judges, both of the supreme and inferior Courts, shall hold their Offices during good Behaviour, and shall . . . receive [undiminished] Compensation.”

      Art. III, § 1 (emphasis added). Our precedents make it clear that the constitutional requirements for the exercise of the judicial power must be met at all stages of adjudication, and not only on appeal, where the court is restricted to considerations of law, as well as the nature of the case as it has been shaped at the trial level. The Court responded to a similar suggestion in Crowell by stating that to accept such a regime,

      “would be to sap the judicial power as it exists under the Federal Constitution, and to establish a government of bureaucratic character alien to our system, wherever fundamental rights depend, as not infrequently they do depend, upon the facts, and finality as to facts becomes in effect finality in law.”

      285 U.S. at 285 U. S. 57. Cf. Ward v. Village of Monroeville, 409 U. S. 57, 409 U. S. 61-62 (1972); Osborn v. Bank of the United States, 9 Wheat. 738, 22 U. S. 883 (1824).

      1. 6.2.1

        So AIA board decisions, having only an appeal to CAFC, is unconstitutional. Your Pipeline case looks exactly on point.

      2. 6.2.2

        The case makes an exception for “public rights” which are distinguished from private rights on the basis of the fact that private rights are “disputes between two private parties.”

        Invalid and otherwise mistakenly granted patents restrict the public’s right to act freely.

        It is nothing short of ins@nity to force the public to sit back and wait to be sued in a Federal Court before taking action to correct the agency’s mistake.


          How can an idea be a public right? An idea is a natural right. And therefore a private personal right.


          The validity of the patent against the public is a national concern, which is why, in England, the action to invalidate was in the name of the King, authorized and prosecuted by the Attorney General – not unlike actions in the ITC are prosecuted on behalf of petitioners but in the name of the United States and against respondent importers.

          The consent of the Atty. Gen. was required in order to prevent harassment of the patent owner by the public. Accused infringers already a right to pursue invalidity in court as a defense to infringement.

          All this is a given and known. But none of this justifies simply removing a patent owner’s right to a trial in a court of law where the judge is truly independent. For one, the patent owner has already published his invention and the result of invalidating his patent is that others may use his invention without compensation.

          So comes down to a debate, I think, about whether the patent office is the proper place to decide validity. It both issues patents and invalidates them. It is subject to political pressure. The salaries of its employees are set by the Director, including the salaries of the APJs. The very jobs of the APJs depend upon providing a decisions holding invalidity at a greater rate than those of the courts. It is a fact of life that accused infringers will forum shop the venue most favorable to their interests.

          From all of the above, I think it is abundantly clear that moving validity into the patent office is fundamentally unfair to patent owners.

    3. 6.4

      Well MM, we do not have to actually talk about the future. We can talk about now. While patent validity has not been formally removed from the courts, from all practical purposes, it has already been so removed.

      Courts will routinely stay actions if there is a re-examination or an IPR that either rejects or institutes a trial with respect to a claim in suit. Defendants will always choose IPRs to litigate validity because of the lack of presumption of validity, because of broadest reasonable interpretation, and because of intervening rights with respect to new our amended claims.

      We are de facto already in the world of PTO invalidations.

      My thinking is that if the Supreme Court does not take certiorari in any of these cases, it is because they approve of this development.

      1. 6.4.1

        We are de facto already in the world of PTO invalidations.

        My thinking is that if the Supreme Court does not take certiorari in any of these cases, it is because they approve of this development.

        What’s not to like? Patent litigators don’t like it because they can’t bill up the wazoo. They’re a fantastically small part of the population, the last time I checked. Pretty much everybody else loves the IPR regime, except for the fact that it nonsensically excludes 101 challenges.


          (Everyone who H A T E S patents and loves “efficient infringement” is the translation for Malcolm’s statement.

          Anyone who understands that strong patents benefit the new and innovative; the next generation (and NOT the old landed money Big Corps) are not so blindingly accepting of the wreckage that comes from IPRs and turning personal property into the executive branch’s own trinkets to dole out to its “friend$.”

      2. 6.4.2

        Not sure that I can agree with you Ned.

        The simple fact of the matter is that IF patents are removed from the courts, then the very path that feeds the additctions of the Court for shaping patent law are also taken away.

        Once the aspect of being propery is gone, the judicial branch is on its own way out of the picture. Do you really think that a court with an addiction to putting its fingers into the 101 nose of wax would let something get in the way of that power trip?

  7. 5

    the historical uniqueness of patent law

    Now it’s “unique” again? I thought patents were just like any other property.

    I with the patent maximalists could keep their script consistent but I realize that’s too much to ask when the wheels are falling off their wagon left and right.

    1. 5.1

      Lol – your script, as short as it is, is “easy” to stay on because you simply run away from any meaningful (and inte11ectually honest) discussion that might show the weaknesses of your script.

  8. 4

    Rewriting statutory code to purport to make it Constitutional appears to be the new legal trend with the Courts. See, the ObamaCare cases and the recent DC Circuit case concerning the removal power of the CFPB director. To be sure, this is a major change of attitude from the traditional separation of powers cases wherein the Court thought it’s power was constrained to striking down the ‘statutory scheme,’ and forcing a congressional do over. This new approach will, of course, will lead to increasing ridiculous results due to the many unforeseeable consequences and the interplay of these increasing complicated statutory schemes. The case at bar, therefore, is at least making the excuse valve argument that SCOTUS appears to be favoring. Cert grant here, however, would probably be a pyrrhic victory, since the so called merely advisory ruling of PTO, would be deemed administratively correct and absent manifest fraud would be rubber stamped by the Courts. It is doubtful, that INS v. Chadha, would be decided that same way under this new Court granted rewrite authority.

      1. 4.1.1

        Where would such stop? Who would stop it?

        It’s up to brilliant “revolutionaries” like you, “anon”!

        Except that everything appears to be rigged agains your team. You know, that “broken scoreboard” you keep whining about. Boo hoo hoo hooo!

        Grab your pitchfork and scream for another ten years about the “Royal Nine”. You’re a super serious person, after all, and that strategy has been working marvelous wonders for you.

      2. 4.1.2

        If the Court is not going to protect it’s own power, i.e., the finality of judgment, the 7th Amendment, and it’s supremecay over the conjured up 4 branch of government, it probably can’t be stopped.

        I used to hold out hope that after the boomers died off the country would return to a rule of law. Not looking too well these days considering the poor education the youth are receiving.

    1. 4.2

      I think that you are basically correct, IWT. The Court does seem more willing recently to take liberties with previously inflexible canons of statutory construction, so as to avoid constitutional issues. Perhaps this is inevitable in a world where Congress is so little able to get things done. In older days, if a statute were struck down, one could reasonably expect Congress to take up the work of fixing the constitutional infirmities and re-instate the invalid statute, but with the previous problems corrected. Now it takes all year just for them to pass a continuing resolution to keep the lights on, so they do not have time to—you know—actually legislate.

      The Court presumably figures “if we strike this down, the corrected version that should be passed will never be passed, because they are too busy bickering, so we will just ‘construe’ the statute as if it were already corrected, and save everyone the time and hassle of waiting 10 to 15 years for a corrected version to emerge.”

      This is not ideal, by any stretch of the imagination.

      1. 4.2.1

        Maybe the reason Congress refuses to legislate is because the puppets don’t want to cast votes. Because casting votes creates a record, and creating a record could get you voted out of office. In that scenario, the new Court rewrite power is just enabling our sad sad Congress. And, therefore, robs the people of the debate.

  9. 3

    The argument made – that this case is arguing for something much less drastic than the other two cases denied cert – is ignoring what the removal of any finality impact would have on both future and prior decisions in interferences [almost all involve at least one patent], reexaminations, CBMs, PGRs, and other PTO proceedings – i.e., not just thousands of IPR decisions that ended prior litigation. Nor is their any guidance as to what effect making them mere PTO “advisory” opinions [directly contrary to those several statutes] would have on a D.C. jury or judge?

    1. 3.1

      Yes, it would impact all forms of post grant review. The inverse is also true, however – if a public right, then patent validity determinations may be removed from Article III courts altogether (including the SCOTUS).

      In terms of an advisory order, district court enforcement would be required. Questions of law would be reviewed de novo; questions of fact for substantial evidence.

      Perhaps inconvenient to some. But at issue is liberty.

      1. 3.1.1

        Also at issue: the separation of powers and the shear level of legislating that the Court would need to do for your so-called (but really not at all) “narrow construction.”

        As my Boston friends would say: you cannot get there from here.


            I am right.

            Your view of “construe narrowly” does not – and cannot fit.

            There is zero question about that.

      2. 3.1.2

        But isn’t “review for substantial evidence” inconsistent with the review standards of the APA, which applies to PTO and other agency decisions?


          Substantial evidence is the constitutional “minimum.” The statue could provide for the same or de novo, but not clear and convincing.


            Thanks, and yes, I checked In re Zurco, and “Substantial evidence” does meet the APA review test for PTO fact determinations as well.

    2. 3.2

      Paul, why don’t you at least acknowledge the Supreme Court’s holding that Article III rights, just as jury trial rights, are waivable. Wellness Intern. Network, Ltd. v. Sharif, 135 S. Ct. 1932, 575 U.S., 191 L. Ed. 2d 911 (2015). link to

      1. 3.2.1

        Ned, that waiver right has never been in dispute by anyone. [If it were not, then by the same arguments would not PTO reissues cancelling patent claims also be allegedly unconstitutional?]


          The point, Paul, is that the results of prior reexaminations, IPRs, etc. that took place without constitutional authority, but with statutory authority, stand.

          Regarding pending reexaminations and IPRs, the patent owners would have to choose whether to continue or to decline.

          Regarding future reexaminations and IPRs, the patent owner would have to consent.

          All this requirement for consent could be eliminated if Congress provided the patent owner a right of a trial de novo just as it did with all appeals from the BPAI until 2011 (with the exception of inter partes reexaminations).

    1. 2.1

      Potentially. However, a number of developments suggest this petition has a chance: both Cooper v Lee and MCM v HP were relisted; Square was ordered to provide a response, due the same day the other two were ultimately rejected; C.J. Roberts apparently sold his HP shares in order to consider the MCM petition; no dissents from denial were submitted.


          C.J. Roberts was previously recused from MCM v HP due to his ownership of HP stock.

          The order list denying certiorari did not include any recusals, however.

          This means that he sold the shares.


            anony, I really do not believe that the order list will list recusals. I checked a few, and could not find any.


              Sure they do. One sees that all the time. Look, for example, at pg. 9 of the 11 Oct orders list (“MERCK & CIE, ET AL. V. GNOSIS S.P.A., ET AL. The petitions for writs of certiorari are denied. Justice Alito took no part in the consideration or decision of these


              Face it Ned – you were not picked for other reasons.

              In my humble opinion, for the reasons that I kept pointing out to you and you chose to ig nore.

                1. Well, here’s hoping that someone who appreciates that the separation of powers applies to each and every branch (including the judicial branch), and someone a little more up to speed on basic propery concepts (like sticks in a bundle) and who realizes (even as they may complain about it – as you did yet again today) that a taking occurs at the separate institution decision point regardless of any further activity or consequence of a final adjudication, someone who would truly fight for the full aspects of patents as property (as Congress itself has explicitly set forth) will be the champion for next term.

                  (the Constitutional challenges are NOT going to go away)

  10. 1


    It attempts its greatest weakness as its point of distinction.

    The Court simply cannot redraft the legislation of the AIA to make IPRs advisory.

    1. 1.1

      attempts ==> attempts to make

      Worth clarifying, this may be this term’s final shot, but certainly not the final final shot.

    2. 1.2

      The Court can either construe the statutory grant narrowly or declare unconstitutional and stay judgment for one to two years while Congress amends.

      1. 1.2.1

        Construing narrowly is not what is being asked.

        Staying until amend still means that Congress must act, and the AIA (hint: not the same as Title 35) still falls.


          anony, what do you think happens to “the machinery” upon a stayed verdict?

          Does the Office continue on its path, knowing full well that any decisions continued to be made under a law known to be unconstitutional will be for naught?

          I think that you like the idea of a “stayed verdict until Congress changes,” but I am not sure that you have thought through the consequences.


          Theoretically the Court could read 318(b) and construe it narrowly.

          In terms of the stay, business as usual until the adjustment to the statute rendering administrative determinations advisory. As handled by the Court in the past, the effect would not be retroactive.


            You assume an action that simply cannot happen – the “make this advisory” path is DOA and is not – in ANY sense – a “narrow” construction.

            Please take another shot explaining your view with this calibration applied.

            (as for the non-retroactive comment, I am not clear if that answers my point about the “it’s not kosher, but we will let it continue until Congress acts” that appears to be the “default” in your initial view. Do you see the problem with every single action taken by the Office post-decision and pre-Congress action? I hope you do.


              If the Court determines that the statutory provision is unconstitutional, then it will look to see whether the provision in question may be construed narrowly to avoid unconstitutionality. If not, then it stays its order, allowing Congress time to amend.

              This isn’t complicated.


                It also is not possible.

                You are having the Court do a massive amount of legislative writing in order to change the way that IPR’s were set up (by Congress) in order to change the entire scheme into one that makes the decisions merely advisory.

                You need to stop and think about this before you simply decree “Make it so.”

                Once you accept THAT, then you can consider the question of what does the Office do in the stretch of time between knowing that the current mechanism violates the Constitution (even if the decision is held in abeyance) and the time that Congress gets around to fixing the problem.

                There are simply HUGE complications that you are clenching tight your eyes to.

                1. It’s a matter of statutory interpretation. If the legislative intent, etc. very clearly states “finality” then the Court will leave as is and stay judgment.

                2. You keep on saying that it is a matter of “statutory interpretation” when what you want to arrive at is so obviously much much more than that.

                  This is why the “offered” path of making IPRs advisory was DOA to begin with – as stated at the time this argument was first advanced by Cooper.

                3. Lol / the Court will NOT “stay judgment” if the current mechanism fails a constitutional challenge.

                  That’s just unfounded wishful thinking.

                4. See ex parte Bakelite. The Court did exactly that.

                  Stop pushing your agenda for one moment. It undermines the legitimacy of the constitutional issue.

                5. There is no undermining and the AIA is different than the case you offer.

                  You may not like this, but that does not change the immediate considerations.

                6. See ex parte Bakelite. The Court did exactly that.

                  When you find a convenient moment, I would be obliged if you could supply a pincite.


                How does one “narrow” the clear, express and fundamental statutory language Congress repeatedly provided for all interferences, all reexaminations, and AIA post-grant proceedings, that by their final decisions all rejected claims are “deader than a door nail” in rem unless reversed on appeal by the Fed. Cir.?

                1. Paul, I think the point is that the PTO decision is not final, and there would have to be a trial de novo for the court to order the Commissioner to invalidate the patent or claims at issue.

                2. Ned,

                  Paul’s musing are a tangent to the item under discussion. Let that dust clear and settle on its own. The actual topic is that Cooper’s suggestion will not – and in truth, cannot – happen.

                  He too, just is not the proper champion.

    3. 1.3

      I don’t see the point of advisory IPRs. They are intended to relieve burdens on the courts. If the court still must rule it has accomplished nothing. There is no benefit to narrowly construing IPRs as advisory only.

      1. 1.3.1

        LOL – that too might be true, although one does not even get to the merits of your reaponse because the Court has no authority to legislate such a massive change from what Congress provided.

      2. 1.3.2

        Alex, agreed.

        Perhaps the preferred method of operation would be to have a judge refer validity of a patent to the PTAB for its views if it does not impact the trial. The PTAB can be viewed as a special master.

        And, because of this more limited role, they should have just one APJ handle the IPR.

        Having to go through an Article III judge to get to the PTAB would solve the problem of standing so that short sellers could be kept at bay.



          You do realize that Congress wanted those “short sellers,” right?

          They wanted “everyone” and for any interest to take pot shots at patents.

          Oh wait, my bad – that was what those that bought Congress wanted….

          (look at who benefits from the AIA to find the culprits: the “efficient infringement” crowd)

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