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.
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).”
Your good buddy Mark Lemley disagrees with you.
Will you be filing a brief in order to set the record straight, Ned?
Amicus briefs will only help the cause. The more the better. File away.
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!
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.
phineas,
Various differences between the item you bring up and the current IPR have already been discussed in detail.
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.
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.
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.
Well maybe so, but has that ship not sailed? And I think the old interferences cases might undermine your argument.
But, iwasthere, there is an adverse party in an interference.
True that.
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).
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.
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?
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?
Pika, how do you think the Supreme Court would decide the following question: can a constitutionally protected right be abrogated by Congress?
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.
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.
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?)
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.
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.
He likely meant to a write a “congressional legislative court” as opposed to “congress.”
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.
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.
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?
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.
“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?
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.
“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.
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.
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?
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.
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.
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.
Ned – law, equity, or admiralty. 7A is merely law. The Oil States approach is sound.
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.
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.
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).
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.
To reach the 7A question a court must necessarily reach the Article III question. Oil States understands this nuance.
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.
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.
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)
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.
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).
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?).
Exactly.
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.
“because the claim did not describe an invention in the first place‘
read that back to me.
slowly.
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.
Interesting point.
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?
Not sure I understand what your point is…
Do you mean that the fees are suspended and do not have to be paid?
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.
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.
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).
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.
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.
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.
Nicely put.
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.
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.
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.
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].
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.
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.
Not sure where the con law comes into the present discussion, would it not be more apropos to say “patent law + admin law”….?
Well, true that.