Oil States Energy Services v. Greene’s Energy Group

The Supreme Court has asked for the USPTO’s input on whether it should hear the pending dispute Oil States Energy Services v. Greene’s Energy Group (Supreme Court 2017).  The case again raises constitutional questions as to the power of an executive agency (the USPTO) to cancel issued patent rights. [petition][opposition][reply]

Questions presented:

1. Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

2. Whether the amendment process implemented by the PTO in interpartes review conflicts with this Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), and congressional direction.

3. Whether the “broadest reasonable interpretation” of patent claims–upheld in Cuozzo for use in inter partes review–requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent’s specification.

The request for the USPTO’s input in the case is not, however as amicus but instead as respondent.  In December, the USPTO waived its right to respond to the action.  USPTO’s brief is due March 29, 2017.

So far, no amicus briefs have been filed in the case and the deadline had been long past to support petitioner.  However, the Supreme Court’s new request for response from the PTO resets the timeline. Under Supreme Court rules, briefs in support of petitioner (or neither party) can be filed within 30 days from the February 27, 2017 request.

The Patent at issue in the case is U.S. Patent No. 6,179,053 that covers a lockdown mechanism for well tools.

About Dennis Crouch

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

131 thoughts on “Oil States Energy Services v. Greene’s Energy Group

  1. The Oil States briefs, particularly the reply, gets something seriously wrong. Scire facias actions to revoke a patent for invalidity were alternatively filed at Kings Bench or were filed in the Petty Bag court of Chancery, which was a common law court. Validity was tied to a jury regardless. Scire facies actions were not “filed in equity.”

    Jones, W. J., An Introduction to Petty Bag Proceedings in the Reign of Elizabeth I

    Also, see, n.38 of Hazard, Geoffrey C., and Myron Moskovitz. “An Historical and Critical Analysis of Interpleader.” California Law Review (1964): 706-763.

    “[A]t least until the mid-eighteenth century, Chancery continued the practice of remanding contested issues of fact to the common law courts for trial to a jury, a practice that dated certainly from the time of Elizabeth and most probably back to the late
    medieval times. See Earl of Thanet v. Paterson, 3 Barn. 247, 252-54, 27 Eng. Rep. 632, 634 (1738), discussed at text accompanying note 41, infra. Cf. Jones, Introduction to Petty Bag
    Proceedings in the Reign of Elizabeth 1, 51 CALIF. L. REV. 882, 887 (1963). Nothing in the reports reveals a disturbance of this procedure until East India Co. v. Bazett, Jac. 91, 93, 37 Eng. Rep. 784, 785 (Ch. 1821), when Lord Eldon had occasion to say that the Chancellor was not bound to accept the jury’s verdict on a motion for a new trial: “There is this difference between a motion for a new trial in a court of law and in a court of equity. In a court of law, if the jury find the fact, although the judge may think differently, yet it is permitted to stand, for the finding the fact is the province of the jury; but here the verdict is something more than the verdict of the jury; it must be such as to satisfy the Court, that it can make that its own declaration of the fact, which the jury have made theirs.”

    The relevance of this practice, to say nothing of the interesting nuances of Eldon’s disquisition, seems not to have been appreciated in the determination of the proper scope
    of the right to jury trial under the sixth amendment to the Constitution. Cf. Beacon Theatres, Inc. v. Westover, 359 U.S. 500 (1959); Note, 47 CALF. L. REv. 760 (1959).”

    1. Good on you Ned. I must admit, it’s a study to understanding the English common law and our early jurisprudence, but it’s absolution vital to have a grasp of the interplay between the law and equity when they were separate courts, and very importantly our 7th Amendment. Story on Equity, is about the best I have ever found, and one would think SCOTUS would have a set!

  2. The old pre AIA ReExaminations have been around for decades which invalidated granted patents. Was there a challenge to it’s constitutionality? If there was and it was constitutionality was validated, how can IPR not be also? Other than we change our minds or we going to guess again.

    1. phineas,

      Various differences between the item you bring up and the current IPR have already been discussed in detail.

    2. Phineas, Patlex v. Mossinghoff.

      However, Patlex upheld the constitutionality of re-examinations because in the opinion of the Federal Circuit patents are public rights – and they are public rights because they are created by statute. That reasoning was reaffirmed in the most recent case of MCM Portfolio LLC.

      But subsequent to Patlex, the Federal Circuit also held that patent owners had a right to a trial by jury when their patents were challenged for being invalid. In re Lockwood. In the dissent to en banc, Judge Nies and two other Federal Circuit judges noted that one cannot both have a right to a trial by jury and have no right to a trial by jury for the same issue: patent validity. Thus by holding that patent owners had a right to a trial by jury for patent validity, the Federal Circuit necessarily overturned Patlex which held the opposite.

      Anyway, as it stands today, the Federal Circuit has held that patent owners both have a right to a trial by jury and do not have a right to a trial by jury for validity.

      1. Ned, my argument would be that at the time of Patlex, 35 usc 145 (i think i am right here), was sub silento the Constitutional relief valve as it were, as it required, if demanded, a trial de novo in District Court, in which PTO would essentially be just another Art III challenger to validity, with all the protections of the Fed.R.Evid, cross examination of witnesses ect. afforded by adversarial proceedings in the Art III division. There is a subtile issue concerning sovereign immunity to obviated the jury and place the trial with the bench however. Since 35 USC 145 has since been repealed, there is an excellent case to be made that Patlex if bought again, would be a case of first impression. Although, I think there was a case brought by H. Wagner an related issue under 35 USC 145 – the right to sue out a patent – that might be on point here.

        1. iwasthere, the problem with this is that the government does not have standing to contest validity of an issued patent in court. So there is no adverse party in the appeal or in the trial de novo.

          Just take a look a McCormick Harvesting. Subsequent case directly ruled that the Government has no standing in an Article III court except if it is sued for infringement or if the patent owner committed fraud.

    3. If IPR is unconstitutional, so is reexamination, as well as any other form of post grant review (outside of consent or district court enforcement). Anyone who tells you otherwise doesn’t know what they are talking about (there is a lot of that going on around here).

      1. anony, I fully agree. That is why I have had endless arguments with anyone who tries to make distinctions between reexaminations and IPRs as if that were important. Even so, since our focus was always on IPRs, we thought it best to say that IPRs were unambiguously trials of validity and had a 7th Amendment right.

        Ultimately, I think re-examinations are similarly trials where the government is represented by an examiner. Essentially the examiner establishes a case for unpatentability and the PTAB then assesses whether the examiner has carried his burden.

        The whole structure does not make sense however because on appeal from the PTAB, whether to the Federal Circuit or to the District Court, the government does not have standing. The Supreme Court has numbers of times held that the US government does not have standing to challenge the validity of a patent in court. So how can they have standing in a court of law to defend their own judgment that a patent is invalid?

        As I said, we live in interesting times and patent lawyers do not seem to be representing their clients very well. Either that, or they are cowered from representing their clients in this area of the law very forcefully because if they do, they will be shunned by their other clients who have big prosecution bucks and who like such things as re-examinations.

        But, given a chance, I will raise the constitutionality of reexaminations. Anyone who brings a reexamination against one of my clients has got to know this.

        1. Agree that these are interesting times. The shameless rewriting of cases (in the name of policy) such as McCormick, Am Bell, and Stern – just to name the obvious examples – by upper echelon DOJ lawyers, agency heads, academics, and high ranking judicial officials has been both disheartening and sad. Where’d the real lawyers go?

        2. Below is a citation of in re Lockwood:
          “[…] we are asked to evaluate the petitioner’s right to a jury trial on the factual questions relating to patent validity, a right that is protected by the Seventh Amendment when those questions arise in a paradigmatic patent infringement suit.”
          How do Ex Parte reexamination arise in a paradigmatic patent infringement suit?

          1. Pika, how do you think the Supreme Court would decide the following question: can a constitutionally protected right be abrogated by Congress?

            1. Ned,

              Your question is not near complete enough.

              For example, the answer of eminent domain fully provides an answer of the Supreme Court saying “sure,” – on the question as you put it.

              1. My answer is complete enough, anon. The Federal Circuit is a farce of a court, either that, or the right to a trial by jury is no right at all.

                1. I do not see any reasoned reply to the notion of eminent domain.

                  Can your give it another try? (seeing as your feelings cannot make the CAFC responsible for eminent domain, can they?)

                2. Anon, to be fair you are both making a good point. But taking law is just such a dead letter (the regulatory state). Much better chance with the 7th. We all know the AIA is a Constitutional abomination but beating Ned up all the time over the 5th? and 14th? is getting tiresome.

                3. iwasther,

                  Thanks for trying to be accommodating to both sides.

                  Pleas note that I am not dissing the 7th Amendment route.

                  as to “But taking law is just such a dead letter (the regulatory state).

                  Such is only a ‘dead letter’ if you sit back and do nothing. The Constitution was not amended, and therefore, is still controlling (even if the Supreme Court is treated with untowards fealty).

                  As to beating up Ned – that’s really his choice. Since he wants to be an out spoken champion of the property aspect, he really should “get” what all is involved with the property angle.

                  For some odd reason, he consistently chooses not to.

                  Takings law is NOT just about a takings in gross, and the real damage in the patents takings scenario occurs at the separate initiation decision point – quite aside from any later adjudication on the merits, and no matter what else may transpire at the later point in time.

                  Remember as well, that it is the initiation decision point, a point in time controlled only by the (recoginzed political) executive branch, and drafted by Congress to omit review of that self same initiation decision by an Article III court, and that has a now-proven seriously adverse affect on the entirety of the property value, that lines up exceptionally well for a classic post-hoc Constitutional violation scenario.

                1. While those are two different sets of branches/protections being referred to, anony, his statement (misstated or not) is more in line with the question to be asked.

                  to wit:

                  Your view of what he wanted to say involves the executive branch v the judicial branch.

                  As he actually stated though, what he said involves the legislative branch v protections afforded an item that the executive branch has made into a property right.

            2. I think the 7th amendment issue is the most serious challenge to IPRs (when initiated after a law suit). I am a little surprised that this reasonable challenge gets mixed with other ones, that I personally find weaker.

              1. PiKa,

                I just don’t see your rationale, so it is rather difficult to see what or why you think anything is weaker than anything else.

                Do you care to flesh that out at all?

                1. A patentee filing an infringement law suit could decide if the facts involved in the invalidity defense are to be tried by a jury. In effect, some provisions in the statute relegated to IPR deprive the patentee of this right (possibility of a stay). I do not see how the constitutionality of these particular provisions can be sustained.
                  However, the general proposition that the validity of a patent claim must be adjudicated by the legislative branch seems to me to be on shakier grounds. So I do not think that the Supreme Court can strike down all the provisions related to IPRs.

                2. However, the general proposition that the validity of a patent claim must be adjudicated by the legislative branch seems to me to be on shakier ground

                  Who has advanced this general proposition?

                  How is this related to “weaker than anything else“?

                  How do you feel about the other Constitutional protections of property, that once created, inure and prevent even Congress from writing a subsequent law that violates those other protections?

                3. Regarding the constitutional protection of property, I am not convinced that issuing a patent creates property rights to the subject matter covered by the claims. Claims have a notice function of what the inventor regards as the invention. As such, the patentee is prevented to argue that a design falling outside the scope of the claims infringe the patent. However, I don’t see why what is inside the scope of the claims is the property of the patentee. I think it is clear that you disagree with that.

                  My previous post should read “must be adjudicated by the judiciary branch” instead of the “legislative branch.” Thank you for noticing.

                4. Regarding the constitutional protection of property, I am not convinced that issuing a patent creates property rights to the subject matter covered by the claims

                  Why are you “not convinced.”

                  And yes, I do view it otherwise – based on law, the history of law, and the very underpinnings of the patent system itself.

                  As to “must be adjudicated by the judicial branch, you are free to “feel otherwise, but then you have to deal with your feelings that in essence seek to overturn Marbury.

                  I am not sure that your feelings are up to that challenge, my friend.

                5. I am not convinced because 112 only says that patent claims describe what the applicant “regards” as the invention, because 282 only says that claims are “presumed” valid, because 282 says that invalidity of a claim is a defense to infringement. All this tells me that Congress wanted that the subject matter of some issued claims not to be property of the patentee and did not intend the prosecution of application to define “the invention.”
                  Add to this that no statute says that the subject matter of an issued claim is the property of the patentee.
                  Add to this that Congress is only authorized to grant right for a limited time to “inventions.” If Congress had derived a patent system granting rights to subject matter that is not inventive, it would be acting beyond its authority.

                6. Your statements have zero intersection with property or what property means, PiKa.

                  You would be just as well off as picking random parts of patent law to support what you want to believe.

                  Add to this that no statute says that the subject matter of an issued claim is the property of the patentee.

                  Rather wrong at that.

                  Add to this that Congress is only authorized to grant right for a limited time to “inventions.” If Congress had derived a patent system granting rights to subject matter that is not inventive, it would be acting beyond its authority.

                  You do realize that this last comment is a complete non sequitur, right?

                7. My statements are not about what property is. My statements are about what is owned by a patentee. You say that the subject matter covered by any allowed claim is owned by the patentee. I say “the invention” is owned by the patentee, and “the invention” is different from the subject matter of any granted claim.

                8. What you say is in-congruent with the topic of patents as property – and that fact that your reply is as it is shows that you are pretty much c1ue1es on the topic.

                  Try understanding what you are expressing your opinion about please.

              2. I agree. My oral argument focused exclusively on the 7th Amendment. The Feds ignored it, as anything they said would on get them into trouble.

                The Oil States brief criticizes the Feds for taking the issues backwards, Article III, then 7th Amendment. The Answer says the Feds were correct. The Oil States reply goes off the deep end and basically ruins their whole argument by almost agreeing that there was no 7th Amendment right involved.

                Sad.

                1. Whether cause of action was litigated in law or equity is important for the discussion of Article III, but saying that scire facias actions were filed in equity is plainly wrong and implicates the Seventh Amendment argument, which is by far the strongest argument we have.

                2. It clearly is NOT by far the strongest argument, Ned.

                  Do not mistake that which you are most familiar with as being the most strongest. That would be an prideful error of self-inducement.

                3. Annoy, The 7A is more than law, it is supreme law, just as high as the Constitution itself. I haven’t read the briefs, but if they are making an Art III argument, it will boil down to a structural protection argument, and that Hayburn’s case – not Marbury (as so many cite around here).

                4. iwasthere,

                  Marbury is cited for a different reason – if a mere Justice of the Peace (executive) grant is property, how much more so then is the grant of patent?

                  There are those that would rather wallow in the mistaken belief that patents are not property (to what Ends…?), but when push comes to shove, the entire patent system is predicated on patents being property.

                  I have peppered threads for the last few months with the assortment of related doctrines (for example, exhaustion) that would have to be radically updated if indeed patents are deemed to be NOT property.

                  One cannot be “a little bit pregnant” on this matter. Patents are property or they are not property. The fallout of “not property” is far larger than those seeking such a status than they have contemplated.

                1. Respectfully both can be reached for different but close reasons. The Art III question is reached structurally and facially under Hayburn’s case (an Art III judgment can’t be subject to even ancillary review by the Executive department). The 7th is reached on the question of whether Congress can pass a law that could make the patent right a pure Administrative state matter (i think no, but no one knows). And whether, as under our current system, you can have dual Art III and Executive jurisdiction – certainly no.

              3. Well the 7th is the touch stone as to whether Congess could make the patent scheme totally administrative. I think the answer is no. But most certainly no, if the patent is going to be a right in which Art III has jurisdiction. That’s Hayburn’s case.

                1. That is also Marbury’s case, iwasthere…

                  (as noted elsewhere on this thread, if the Executive grant of a mere Justice of the Peace is enough property to invoke the other protections of property under the Constitution, then only so much more would be the patent grant)

        3. Well, this gets into the argument about In re Perne and wickardy(spelling). Mossinghoff, was treading very lightly with the new reexamination statute – and giving full deference and comity to the Art III courts – explicitly engrafting administrative estoppel into the statute – by publishing and making on the record policy with the Perne and Wickedly decisions, (‘the reexamination procedure with act in harmony with the courts’). IPR’s with adversarial witnesses, very limited discovery, etc, etc. are a very weak tea to the protections afforded by Fed.R.Civ.Pro and Fed.R.Evid and the ‘anvil of cross examination.’ To be sure, the AIA is crafted to take you one more slippery step down the erosion path. And you know my conduct arguments. But, it is axiomatic that congress cannot conjure away the 7th Amendment. Unfortunately, there are a lot of patent attorneys cashing in on the new try the case in both the courts and again at PTO structure. Integrity and fealty to your Constitution is what’s missing. Maybe many don’t know any better, but it’s sad to think such an important part of our rights as citizens is going down the drain because of the apparently poor understanding of the role of an attorney.

          1. I concur, albeit with (additional) slightly different reasoning – including an odd unquestioning and overly fealty to the Supreme Court (which, in my mind, simply embraces the “quickness” of achieving Ends without regard to the Means to those Ends).

        4. Agree, the attributes of the mock trial conducted under the guise of the IPR are much more court like and therefore should be more offense to the Art III prerogative. In some regards, ex parte can be viewed as even more offensive, but were are dealing with the Art III division, that apparently holds nothing but distain for patents. And a SCOTUS bar, that is more than happy to lead the 9 into error (software is like blueprint and does nothing – anybody?).

  3. The patents rights are rights to “a patented invention.” See 35 U.S.C. 271. Claims particularly and distinctly point out the subject matter which the inventor or a joint inventor regards as the invention. See U.S.C 112. Claims are not the invention.
    Canceling a claim for encompassing subject matter that is not inventive is not estinguishing a right to an invention, because the claim did not describe an invention in the first place. Such canceling of the claim can be done by the PTO.
    In contrast, declaring a patent unenforceable because of inequitable conduct could be estinguishing a right to an invention. That would reserved to the courts.

    1. As to 271, you are seriously over-reading “patented invention” as the context there is clearly on modes of infringement.

      I don’t know where you got this Windmill Chase of yours PiKa, but you should really just let it go.

  4. I’d like to throw this theory out again: if any alterations to patent claims occurring after issuance must occur in court, then wouldn’t the PTO have to get a court order to suspend a patent for nonpayment of maintenance fees?

    1. Not sure I understand what your point is…

      Do you mean that the fees are suspended and do not have to be paid?

      1. Currently, under 37 CFR 1.20, if you don’t pay the required maintenance fees, the patent rights are suspended by the USPTO. Your local government can’t suspend your ownership of your house for property tax delinquency, at least not without going to court afaik.

        1. suspended….?

          More like abandoned.

          Plus, your attempted analogy misstates and tries place as equal a house and a patent.

          You are so far away from understanding the topic you want to discuss, that it is quite frankly rather humorous.

    2. Taxes?

      Nonpayment of taxes (or fees) can lead to foreclosure where the findings of treasury (PTO) are binding on a court of law.

      Murray’s Lessee v. Hoboken Land & Improvement Co., 59 U.S. 272, 15 L. Ed. 372, 15 L. Ed. 2d 372 (1856).

  5. Reward your friends and punish your enemies. And, without question, the IPR, AKA, the ‘star chamber’, is a means for doing just that. Indeed, the very statute creating the chamber [. . . The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. . . ] 35 USC 6, having at least 4 political appointees, in which only 3 is required for the panel, is as if, the President himself, is by decree, punishing or rewarding his enemies and friends. Oh, to be sure, some lip service is required, for the final written decision, but the results are preordained.

    1. I simply object to the current scourge of “alternative facts” and conspiracy theories invading patent law. There are legitimate objections to IPRs, but name even a single IPR decision in which any of the PTO Director, the Deputy Director, the Commissioner for Patents, or the Commissioner for Trademarks [i.e., any political appointees rather than legally protected civil servants] have ever been any member of a PTAB panel deciding an IPR, as you are missrepresenting.

      1. Well, you need to brush up on the history of the PTO ‘court.’ In re perne and wickardy(spelling?) leap to mind for one. The fact is the Board was originally an administrative court with policy functions. In other words, the director could seat themselves and others, and craft a decision as to ‘substantive law’ and have the ‘substantive law’ reviewed by a court of record – and thereby create substantive law. Other than that, the PTO has NO POWER to create substantive law. Realizing of course, this is an admin law 401 level of discussion concerning how agencies and agency courts function. The fatal flaw of the AIA, was engrafting a ‘merits’ court with a policy court. And no, I don’t have to point to a specific abuse, not that a FOIA would do you any good, because this is a FACIAL CHALLENGE. See the preamble of Patlex v. Mossinghoff for jurisdiction as to facial challenge. You’re ‘Caesar’s wife must be above suspicion’ attitude is totally beside the point.

        1. Remember folks: “anon” and his ALL CAPS-luvvin’ c0horts are about “patent quality.”

          Sure they are! They’re very serious people. Totally not tinfoil-hatted anti-s0cial l0wlifes.

          1. Your alignment with anything anti-patent is…

            …stultifying.

            You don’t seem to be able to understand that true patent quality is desired – and you continue to struggle to even touch the shimmer of the edge of understanding why.

            Please get into a job that does not cause such cognitive dissonance for yourself.

      2. While indeed is such a misrepresentation, let’s not forget that those making the decisions DO receive their paychecks (and marching orders) from those same people).

        As much as you may want to object, it is just NOT an alternative fact that the judicial element of this particular administrative agency is NOT separated from the political elements, as may be found in other administrative agencies.

        That’s a real fact that simply does bear on the message that you do not like.

        1. The olden days when PTAB members were examiners rather than Administrative Patent Judges [APJs], and the only inter party cases were interferences that were handled by a separate Board, are long gone. In years of social or professional association conversations with Board members the only administrative pressure they ever mentioned was pressure to reduce the backlog [shorter case disposal times].

          1. Your reply is non-responsive and just does not touch the lack of separation between the political and judicial elements for this specific federal agency, Paul.

            There are other Federal Agencies that DO separate the political and the judicial elements.

            This is a plain fact that you just cannot speak your way out of.

          2. Yes, you already made your Caesar’s wife argument. My case cites to In re perne and wickardly (again spelling) are directly on point, as I recall Mossinghoff himself put himself and the two others on the panel. So, I think you should read those cases, before you deflect about examiners v APJs.

            The object proof that the PTO ‘court’ is political is the way it is conducting itself. Why is it that all other agency courts give full faith and credit, indeed, they even have a name for it ‘administrative estoppel’ in any claim or issue that has been adjudicated by an Art III court? And yet the PTO court is downright hostile to prior Art III adjudications? Yea, yea, BRC, ships passing in the night and other intellectually dishonest contrivances. Heck, Tax court even gives estoppel effect (of a court determination) to another tax year, when each tax year is it’s own claim in which estoppel does not apply in any other instance. So we have all the other administrative courts, acting in harmony with the Art III courts, by the doctrines of comity, full faith and credit, deference, res judicata and ‘administrative estoppel,’ and yet we have the PTO court – which I pointed out actually seats the political appointees as the ‘judges’ – giving no deference to the Art III courts whatsoever. One would at least expect that a Markman order, which is binding on the patent owner, would be the BRC for the PTO court. Nope. As someone said before: patent lawyers + con law = hilarity.

          3. Paul, the statute still reads the same as it did in the days of Alappat, which means the Director can reverse any PTAB decision by appointing himself to an enlarged panel together with his other political appointees:

            “In an Office Action mailed December 5, 1989, the Examiner finally rejected claims 15-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Alappat appealed this rejection to the Board pursuant to 35 U.S.C. § 134 (1988), and a three-member panel made up of Examiners-in-Chief Lindquist, Thomas, and Krass reversed the Examiner’s non-statutory subject matter rejection in a decision mailed June 26, 1991. The Examiner then requested reconsideration of this decision, pursuant to section 1214.04 of the Manual of Patent Examining Procedure (MPEP), stating that the panel’s decision conflicted with PTO policy. The Examiner further requested that such reconsideration be carried out by an expanded panel.

            An expanded eight-member panel, acting as the Board, granted both of the Examiner’s requests. The expanded panel was made up of PTO Commissioner Manbeck, PTO Deputy Commissioner Comer, PTO Assistant Commissioner Samuels, Board Chairman Serota, Board Vice-Chairman Calvert, and the three members of the original panel. On April 22, 1992, the five new members of the expanded panel issued the majority decision now on appeal, authored by Chairman Serota, in which they affirmed the Examiner’s § 101 rejection, thus ruling contrary to the decision of the original three-member panel. The three members of the original panel dissented on the merits for the reasons set forth in their original opinion, which they augmented in a dissenting opinion.”

            In re Alappat, 33 F.3d 1526, 1531 (Fed. Cir. 1994)(The authority of the Commissioner to do this was affirmed by the en banc court).

            1. O U C H

              Maybe Paul should not have retired his registration number and kept up to date since he appears to still like to “dabble” in this area of law.

            2. Ned, both you and Anon refer to PTAB expanded board decisions from years before IPRs were even enacted, thus are irrelevant to my point.

              1. Actually Paul, they remain germane to your point because the very same federal agency set up is in place.

                Maybe you should have known that prior to responding…

              2. Paul, are you saying that the law has changed and that the Director cannot participate in a PTAB panel? What are you saying?

                It is clear from Alappat that unless the law has changed, the Director has the right to call for a rehearing and appoint other members to the rehearing panel that she so pleases.

                1. Paul should realize (and much to iwasthere’s point) that for federal agencies, it is often the passage of law setting up the federal agency (i.e., admin law) that controls the relationship between the “political” and “judicial” elements.

                  He is trying to make a point that just is not there for him.

                  Somewhat embarrassing, and more than likely his “pride” is involved because it is “anon” that is pointing this out to him.

                2. Ned,

                  Do you note Paul’s stunned silence upon the realization that he was stone incorrect?

                  You should be able to empathize with him very well.

                  😉

      3. PM I simply object to the current scourge of “alternative facts” and conspiracy theories invading patent law.

        It’s part of the culture of the patent bar.

        It’s an infestation. And, sadly, it comes with a whole lot of other baggage.

        Look around …

          1. I could be more clear in case there’s any question: ign 0rant l0wlifes like “iwasthere”, “anon” and NWPA, as well as their mentor and script-promulgator Gene, fantasize daily about a PTO where they (or their puppets) push all the buttons at the PTO for the sole purpose of serving their own financial interests, period. Once you understand this, pretty much all the other we ird0 conspiracy theories (not to mention all their other bizarre utterances) start to make perfect sense.

            The reason this imaginary “star chamber” is so awful is not because “star chamber” but because it’s not the imaginary “star chamber” that they dream about.

            The fact is that you can search the legal profession high and low and you will never find a bigger pack of hypocrites.

  6. Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

    I am just going to throw this out for discussion, although I confess I have not thought it through completely:

    Does IPR really “extinguish” a private property right? Before an IPR is instituted, you own a patent. After the PTAB rules all challenged claims unpatentable, you still own the same patent. If you believe that there is still patentable subject matter disclosed in your patent, you—as the owner—can seek a reissue, which proves that you still own something.

    In other words, your property rights are not “extinguished.” The property you own is made less valuable, to be sure, but your ownership is still very much intact. Of course, the Court has already held that it is not an illegal “taking” for an administrative agency to depress your property value (as when the EPA says that you cannot pave over your wetlands), unless the agency vitiates the entire economic value of the property.

    1. Greg, each claim can be viewed as a private property right. If the claim is cancelled from the patent, there is no possibility of a reissue of that claim or anything materially similar.

      I have an OA in the pending reissue after we lost the IPR in MCM. The examiner will not let me pursue small amendments to the “cancelled” claims.

      “Although the amended claims 7, 11, 19, and 21 are still under the instant reissue proceeding, the reissue applicant bona fide estopped under 37 CFR § 42.73(d)(3) from pursuing the claims 7, 11, 19, and 21 since the mere addition of the word “section” to the subject matter “flash adapter” is not deemed to render those claims patentably distinct from the claims 7, 11,
      19, and 21 held unpatentable in inter partes review IPR2013-002172″

      See, 12/351,691 for a lot, lot more.

      1. [E]ach claim can be viewed as a private property right.

        I am not convinced that this is correct. I can assign patent 1 to X and patent 2 to Y, but I cannot assign claim 1 in patent 1 to X and claim 2 in patent 1 to Y. I think that the patents—not the individual claims—are the fundamental unit of property here.

                1. Interesting questions.
                  But my question was about what the rights the patentees had after obtaining a patent. I think the answer is in the constitution. They had a property right to their discoveries.
                  And I don’t think that has changed when claims were introduced. The inventors still have right to their discoveries.
                  And even cancellation of a claim does not change that. The inventors keep the right to their discoveries, the only thing that changes is that a canceled claim is found not to describe a discovery. That is it. No taking.

                2. My position is that claims were introduced in 1836 for improving the notification function of patents, but patents have always given rights to the discoveries of the inventors. Does that concede a point?

                3. But you walked back on the “no claims” bit….

                  Are you now reinserting the view that there were no claims?

                4. I have not changed my view. No claims before 1836.
                  If you want some concessions, I think there was a time when patents were not examined (1793-1836).

      2. The fact that you are finding it difficult to identify patentable subject matter in your case doesn’t mean that there is some universal rule preventing anyone from doing what Greg suggested.

    2. Throwing out without thinking – especially given that others have done that thinking for you and put on the table of discussion the fact that at the initiation decision point (regardless of any other adjudication), sticks from the bundle of property rights of a granted patent are taken, are taken by the administrative agency within the Executive branch, are taken with an express “no appeal” of that executive decision (to an Article III body), are taken without any recompense whatsoever, and are taken in violation of due process and other Constitutional protections of sticks in a bundle of property rights…

      You are kidding, right Greg?

    3. At least where an owner possesses a full “bundle” of property rights, the destruction of one “strand” of the bundle is not a taking, because the aggregate must be viewed in its entirety.

      Andrus v. Allard, 444 U.S. 51, 66 (1979)

      1. I have reviewed the cite Greg, and you over play the Eagle feather case.

        Badly so.

        Clearly what happens to the “aggregate” once the initiation decision is made is quite different.

        You also omitted this part leading up to your quote: “But the denial of one traditional property right does not always amount to a taking.

        In context then, the implication is clear that such USUALLY does amount to a taking.

        Thank you for proving my case.

        (you gotta love sound-byte quotes that are not checked for what they really mean)

    4. My apologies for throwing open a conversation and then ducking out, but it is my custom to leave aside from blog comments during Lent. See you all again in late April.

      1. You mean that responding to blog comments is something you enjoy doing? And therefore you are giving it up for Lent?

  7. This is one of those Rule 36 cases. link to cafc.uscourts.gov

    Of the three issues presented, the Federal Circuit has issued an opinion in only 1, the constitutional question.

    Now if the Supreme Court was interested in either of the other two issues, could it simply grant, vacate and remand to the Federal Circuit to give us a tad bit more on the issue of concern?

    1. I suppose that they could (heck, the SCotUS can do nearly anything—who will stop them?), but it would be unusual to see a GVR where there is no other case to cite (“dear CAFC, please reconsider Oil States in view of our denial of cert in Cooper“?).

      1. Greg, the “other case” is MCM Portfolio. The Federal Circuit did explain itself in that case. It is just odd as all get out that the Supreme Court would not take MCM itself, but wait until a Rule 36 case is presented to them to rule on the constitutionality issue.

        1. Ned,

          As pointed out previously, you just don’t make a great champion for the property aspect, given your rather odd view of the basic “sticks in a bundle” concept for property rights.

        2. I’m sure you saw this, but the petition argues that denial of cert in MCM does not militate against grant because in MCM Supreme Court review might have made no difference to the ultimate holding “given that the validity of the patent in issue was more dubious”.

          My initial thought was that the Court is more curious as to the other two issues, but after a bit more investigation I’m left more unsure. I’ll probably look into everything a bit more.

  8. An appropriate PTO response to Question 2 could be to state that it is not ripe for Sup. Ct. review because the Fed. Cir. is now considering that issue of IPR claim amendments en banc.

    A shotgun cert petition attempting to raise three separate questions is unlikely to get all three granted, and is said to lower the usual [roughly 300 to one] odds against any cert grant.

    1. SCOTUS needs to fix this entire unconstitutional PTAB mess now. Billions at stake. CAFC is a rogue court and needs to reigned in.

      An Executive agency has no constitutional authority to judicially act and invalidate a patent; the constitution says only the courts can invalidate a patent.

      1. Glad to see more people coming around. We fought like dogs during the AIA fight. Not until you experience it, or experience it on behalf of a client, can you really feel the Consitutional abomination that is the IPR.

      1. Yes, the cert odds improve when the Sup. Ct. has requested third party input from the Solicitor General. But apparently in this case the PTO is being viewed as the substitute for the other party and ordered to make the response, presumably because the real other party to the inter partes IPR did not want to further participate either?

        1. My mistake, the “Response” to the cert petition that Dennis has now added to this blog IS by the other party – Greene’s Energy Group.

  9. Interesting that, at the end of the petition, the patentee makes an argument against Rule 36 summary affirmance, which the CAFC did in this case.

    I wonder if maybe DC will be submitting an amicus brief now with his additional data and writing on the Rule 36 issue?

    1. Throwing a dart (in order to have a name) is not the same as a voucher for any state of reality (whether or not Lee is properly still the director).

      One cannot assume the conclusion that your post suggests.

Comments are closed.