Patentlyo Bits and Bytes by Anthony McCain

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Anthony McCain

About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering. anthony.mccain@patentlyo.com

57 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. Distant, the feigned procedure was not required for an action filed in the Petty Bag.

    Chesnin, Harold, and Geoffrey C. Hazard. “Chancery Procedure and the Seventh Amendment: Jury Trial of Issues in Equity Cases Before 1791.” The Yale Law Journal 83.5 (1974): 999-1021.

    1. Petty Bag, as we both know, was common law, not equity.

      Indeed I seem to recall reading, probably from Coke, that the Lord Chancellor’s common law jurisdiction and the King’s Bench together constituted a single court, coram domino rege (translated in Black’s Law Dictionary as “before our lord the King”, with the King’s Bench “division” being denominated coram domino rege apud Westmonasterium and the Lord Chancellor’s “division” being denominated coram domino rege in cancelleria.

      The Lord Chancellor’s equity jurisdiction was a separate jurisdiction. Where remedies for injustice were not available in common law, the King could still order people around, ordering them to do things, not to do things, not to bring complaints before common law courts etc., and would consult Lords Chancellor. In the fullness of time, the Lord Chancellor could sit in equity representing “the conscience of the King”, and petitioners would address their complaints directly to the Lord Chancellor, who would sit in equity to dispense equitable remedies in the name of the King.

      Thus the dividing line between common law and equity lay within the Chancery, not between the King’s Bench and the Chancery.

      (This is why briefs misinforming SCOTUS get it wrong, when they quote law review article for the assertion that, because scire facias actions were taken in Chancery in 18th century and early 19th century England, therefore they were suits in equity.)

      Moreover, though the Lord Chancellor sitting in equity could not empanel a jury, he, unlike the common law courts, had the power to compel discovery of relevant documents. I recall that is was for that reason that many patent cases were commenced in Chancery, in equity, seeking injunctions against future infringement. Once discovery was complete, a parallel suit could be taken in common law if damages were sought.

      But, on the basis of what I read in an early 19th century treatise, if the Chancellor was sitting in equity (not necessarily in a patent case), and if some factual matter arose where a jury verdict was desirable, then an issue triable at common law would be feigned (e.g., the wager where the gambling debt was due in the event of the fact being established), and the trial of the common law issue would take place, maybe in some assize court away from London where witnesses were located, and the result of the trial would noticed by the Lord Chancellor.

      1. Thanks, Distant.

        I agree with you that briefs that argue that scire facias actions were in equity simply because they were filed in Chancery are misinforming. Hopefully, in the upcoming briefing to the Supreme Court, those misinforming the court will be called out.

        1. Ned,

          Your comment about “being called out” struck a chord with me.

          Of what good would any such “calling out” achieve?

          It is the current system of amicus briefing that contains NO accountability for misinforming the Court that is problematic.

          1. anon, interesting question indeed.

            If one is shown to intentionally misinform the court, you think there will be no consequences?

            1. If one is shown to intentionally misinform the court, you think there will be no consequences?

              There is apparently no such consequences now, why (and how) would that change?

      2. I wouldn’t be surprised if the Justices wanted to go deep into English procedure in Chancery. The parties will really need to be up to speed.

      3. Distant, in terms of nomenclature, many commentators speak of the common law side of Chancery as the Petty Bag, when it actually is the Chancery division of King’s Bench, the Petty Bag being located in Chancery and the place where some records are kept, including patent records.

    2. I will try here to summarize the scire facias procedure, documented in more detail in comments to earlier posts on this blog. The Attorney General (or a lawyer representing him) would prosecute a scire facias action to invalidate a patent. The writ was presented to the Petty Bag Office of Chancery, which handled the common law jurisdiction of the Lord Chancellor. The patent rolls were maintained in the Chancery. The Lord Chancellor had very limited jurisdiction in common law (the most significant being scire facias actions to repeal letters patent, and also habeas corpus, allowing the latter to be considered outside the terms when the law courts sat). Moreover the Lord Chancellor had no authority to empanel a jury to decide questions of fact. Accordingly the record, including the terms of the letters patent and the associated specification, was made up in Chancery, and delivered to the Court of King’s Bench for trial. In the event that the jury verdict deemed the letters patent to be invalid, the letters patent could be voided either in the Court of King’s Bench (e.g., by the Lord Chief Justice), or else by the Lord Chancellor in the Petty Bag Office. To conclude the proceedings, the Lord Chancellor would cancel the record of the letters patent in the patent rolls by scoring lines across it. The entire proceedings took place at common law.

      Note that there is copious documentation of scire facias proceedings in Rex v. Arkwright (1785).

      Also, the mere fact that the writ of scire facias, like quo warranto or habeas corpus has a Latin name should, in itself, alert an informed lawyer that it is an action at common law. Indeed the common law side of Chancery was also referred to as the Latin side, whereas the equitable jurisdiction represented the English side of the Court of Chancery.

      1. A quick reminder. Presumably lawyers with high profile cases can afford to arrange for the viewing of public records. Accordingly, if a researcher in London, England wishes to consult the government records in the National Archives relating to scire facias actions to invalidate patents of invention, the records are catalogued here:

        link to discovery.nationalarchives.gov.uk

    3. I thought I might do a web search to see if I could locate patent cases in the English Court of Chancery, with the Lord Chancellor sitting in equity.

      Prior expectation: such cases should involve decisions on equitable remedies (only), particularly injunctions and recovery of profits.

      This seems borne out by the first case I have found (two related cases in fact): Bacon v. Spottiswoode and Bacon v. Jones (1839). The plaintiff sought an injunction against infringement of his patent on an improvement in gas burners. Maybe later than 1891, but there would have been on significant change in the applicable law as far as I am aware. Report below.

      Reports of cases decided in the High Court of Chancery, Vol 17, pp. 382–390. Google books URL here:

      link to books.google.com

      Apparently the normal practice would have been for the patentee to seek the equitable remedy of a preliminary injunction, before a hearing on the merits, on the basis of likelihood of success of an action for infringement in a common law court. A permanent injunction might issue subsequently if the patentee established his title in a court of (common) law. In this case the patentee did not seek such a preliminary injunction at the outset. He later sought an injunction at a later stage. According to the Master of the Rolls, this might have been possible if the patentee had proved his title by clear and unexceptional evidence in the hearing in the Court of Chancery. But the Master of the Rolls judged that the plaintiff in this case did not make out a prima facie in this respect. Accordinly, on account of laches on the part of the plaintiff in not taking actions open to him to vindicate his patent rights at the outset, the Master of the Rolls declined to grant an injunction whilst the patentee established his title through infringement proceedings in a law court. Establishment of title would be a prerequisite required for issuance of a permanent injunction.

      Something to take away from this case is that infringement and invalidity proceedings would need to be conducted in the law courts. A quote from the Master of the Rolls:

      “I apprehend that the plaintiff must show his title clearly: and if he fails in that, and has not previously obtained an injunction, he will not be allowed to use the facts proved in the cause, as evidence of a prima facia case, giving him a right to further delay, for the purpose of enabling him to establish, more satisfactorily, the legal title, upon which alone his equity is founded.”

      In conclusion, to drive the point home, it was not the business of the High Court of Chancery, sitting in equity, to make a definitive ruling on the legal title to the patent. Such questions of validity are the prerogative of the common law courts.

    4. A little nugget concerning scire facias for what it is worth. At least it highlights a differen
      ce in conception between scire facias and proceedings arising out of IPRSs. Source follows.

      Sir Francis Buller, An introduction to the law relating to trials at nisi prius (1775), p.285.

      (N.B., Justice Buller was the trial judge in the scire facias case Rex v. Arkwright (1785).

      URL is here:

      link to books.google.ie

      To quote:

      “A Scire Facias action was brought by the King to avoid a Patent, and Exception was taken to the Witness, because he was Deputy to the Persons that would avoid it, and the Exception was disallowed, because the Scire Facias is in the King’s Name, and therefore it cannot be presumed that the Interest is in another, which would destroy the very being of the Scire Facias, but the Proof of that ought to come on the Defendant’s Side, to destroy the Proceedings.”

  2. Paul, Polk’s Lessee v. Wendal, 13 U.S. (9 Cranch) 87, 3 L. Ed. 665 (1815) has the complete answer to interferences.

    Disputes between two claimants to the same property are best resolved in courts of equity for the reasons stated in the opinion. But validity is decided in a court of law — which includes a right to a trial by jury.

    Thus the patent owner losing on validity of his patent would have a right to trial de novo and to a jury.

    Posted here only because of the filter.

  3. I would like to post this in the Oil States thread, but once again, the filter got me.

    Many of us against IPRs pound the “patents are property” table as if it were self-evident that that argument was by itself a constitutional argument that would prevent validity trials in the patent office. But why? The only constitutional provision that the status of property directly affects is the Takings Clause. Simply being property does not prevent Congress from regulating property rights, given the literally thousands of cases that illustrate that point. Congress can assign the regulation of property rights to administrative agencies without any constitutional violation. MCM Portfolio LLC v. Hewlett-Packard, the Federal Circuit cited numbers of examples in support of its opinion.

    I know that McCormick Harvesting rested its holding on the fact that patents were property and should be treated like other property. Thus the Supreme Court has consistently held that the validity of land patents has to be tried in courts of law. But why? Why cannot Congress assign the Land Office the determination of whether a land patent was issued by mistake? What constitutional provision prevents this?

    I know the answer, but I want you guys to think about it.

    1. That is a good question, Ned. I suppose because fools rush in where angels fear to tread, I will venture the response that the prohibition against assigning historically judicial tasks to administrative tribunals inheres in the separation that the constitution creates between Art. III and Art. I.

      Art. III judges are endowed with particular job protections (serve for life, compensation may never be diminished) that are intended to insulate them from political pressure, and thus ensure their neutrality. If judicial functions could be reassigned out of the hands of Art. III judges and into the hands of political appointees in administrative agencies created by congress, then this would sap the force of all of those insulating safe-guards that Art. III creates for the judiciary.

      1. Greg – you need one more item: the focus is on land (property).

        Make patents into a non-property, and the repercussions must unfold…..

              1. Just not so, Ned.

                See the definition provided for “public right” on another thread.

                Feel free to first define the term before you use the term in a legal discussion. And by define, I do not mean to say “what a public right is not.”

                Once you grasp what the affirmative definition entails, the (purposeful) muckery is greatly reduced.

                Should we not be aiming for clarity in our legal discussions?

      2. Greg, Yes. And the case is Murray’s Lessee that so holds.

        Patent and land validity were uniformly tried in courts of law and to juries in England prior to 1790.

  4. Trump, for months, has bristled almost daily about the ongoing probes. He has sometimes, without prompting, injected. “I’m not under investigation” into conversations with associates and allies.

    Sure, that’s normal.

    This guy was clearly an incompetent ment @l case long before the election. He’s like the old a-h0le uncle who does nothing but watch FOX and sports and yell at the TV whenever one of those “colored” people everywhere to ruin his dream.

    Thank goodness, though, for “anon’s” “protest vote”. Very serious stuff. Because it’s not life people’s lives are at stake or anything.

  5. Re Oil States:

    Unconstitutionality rulings often result in at least a modicum of “chaos.”

    Nothing new or unexpected there; merely one of the necessary byproducts of righting a wrong in our American system of justice.

    And a great byproduct is that once the corrective effects have worked their way through the system, the burdensome IPR/CBM/PGR weight is removed from the backs of the overworked CAFC Judges and their staff.

    And that’s a very good result indeed.

    1. Because “independent inventor” really really cares about “overworked” Federal employees.

      LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

  6. “I do want to put some of [the blame for the shooting in Alexandria] at the feet of Barack Obama,” said King [Republikkkan – Iowa]

    Good grief, Jason, I hope you didn’t vote for this incredible piece of shxt. But I’m sure you know some people who did. Iowa needs to get its collective head examined and dig this t0xic shxthead’s political grave deep and wide.

  7. You are witnessing the single greatest WITCH HUNT in American political history – led by some very bad and conflicted people!

    Remember folks: according to “anon” — a hysterical patent maximalist who bends over backwards to kiss Night Wiper’s sweet behind ever other day — I’m “the Trump of these boards.”

    LOLOLOLOLOLOL

    1. “a campaign directed against a person or group holding unorthodox or unpopular views.”

      It kind of is the single greatest witch hunt in merican political history. At least with McCarthyism there actually were sht tons of commies in the country and in the gubmit. Though the public only recently found out just how many were caught as the documents were just now declassified not long ago.

      1. It kind of is the single greatest witch hunt in merican political history.

        Thank goodness we aren’t surrounded by pimply mouth-breathing sycophants who blame “liberalism” for their inability to get laid.

    2. You are the Trump of these boards. And just like him, you just think that you can act anyway you feel and it just does not matter because somehow the “rules” don’t apply to you.

      And you are just too oblivious to even pick that up.

        1. Ned,

          That’s been his M.O. for eleven years now.

          It is not changed one iota. Sometimes though you are blinded by your “6-is-a-genius-because-he-agrees-with-me” malady

          1. anon, and there is not a soul who posts here (except perhaps me) that has anything good to say about MM even if they might occasionally agree with him. That is sad, IMHO.

            We can only hope that Trump grows up — but at his age, that is not likely. The same could be said of MM.

            1. [T]here is not a soul who posts here (except perhaps me) that has anything good to say about MM even if they might occasionally agree with him. That is sad, IMHO.

              I had not remarked this state of affairs until you mentioned it, but now that you say it, I believe that this is correct. I agree that this a sorry state of things. I tip my hat to you for holding the lamp high for Christian charity, and I will resolve to emulate your example.

            2. The same could be said of MM.

              merely could?

              11 years Ned – and only recently have you come to really “enjoy his swagger”….

              As for any sense of “christian charity,” cutting Malcolm slack because he happens to align with some of your Windmill Chases is NOT “christian charity.” That is merely the malady of “6-is-a-genius-because-he-agrees-with-me.”

  8. Greg, Stern v. Marshall split 5-4, with Scalia in the majority, holding that the ruling of the bankruptcy court was not entitled to collateral estoppel effect because it was made without constitutional authority, albeit with statutory authority, on a cause of action that had a right to a jury trial in a court of law.

    The minority, Breyer, Sotomayor, Ginsberg, Kagan, would have held there to be no constitutional violation. In doing so, they listed a number of factors guiding the decision of whether there is a constitutional violation. Important among these was the degree of insulation of the judges from improper political influence. The court noted that the bankruptcy judges are appointed by the courts and not by the political branch. Another important factor is degree of supervision by district courts. Here, the court noted that bankruptcy court rulings are subject to de novo review by district courts. An important factor was whether the parties consented to the jurisdiction of the form. The Breyer minority would have also given significant weight to the governmental purpose.

    Note that, even considering the Breyer factors, IPRs fail, and considerably fail, the points about the independence of the judges from political influence, the lack of de novo review of by a district court, and lack of consent of the parties.

    Even so, I suspect that the Breyer minority might still approve of IPRs because of the congressional purpose, discounting all other factors. That is why I believe the court did not take MCM Portfolio because without Scalia, the result would have been a 4-4 split.

  9. From the Richard Lloyd piece: Scott McKeown of Oblon pointed out[,] “The decision to take cert now… is the court recognising an oft debated/petitioned issue unlikely to go away absent high court intervention.”

    I would be delighted for Mr. McKeown to be correct about this, and I will cheerful apologize for doubting him if he proves correct, but this strikes me as so much whistling past the graveyard. It is not as if the Court was ignoring this issue in the past three cert petitions. The Court took the unusual position of soliciting the government’s input on the past petitions, and then asked for the government’s input again in Oil States (even though it had already had the government’s input on the precise question just a few months before). On top of that, even after the government reiterated multiple times that it thought that there was no need for the Court to take up the question, the Court took cert anyway.

    The idea that the Court’s input is needed here is a stretch. If the Court has dismissed the Oil States petition, I doubt that anyone else would have wasted their time trying the same question again. Indeed, I doubt that Oil States would have felt it worth their while if the Court had not been so obviously interested in the petitions on which it had previously taken a pass. In other words, the Court did not need to take this case to make the question go away. They could have achieved that same outcome simply by ignoring the issue.

    Rather, it seems that the much likelier explanation as to why they passed before but took cert now is that before there was a possibility of a 4-4 tie, whereas now there is guaranteed to be at least a 5 vote majority. In other words, they likely waited until now simply because they wanted to reach a decision, and feared that without a full court, they were likely to create another one of those embarrassing tie-votes.

    If that is the case, however, then one has to imagine that Justice Gorsuch represents the fifth vote. It seems to me that the smart money has to be betting on the idea that Gorsuch is going to vote for unconstitutionality here. I think that the SCotUS took this case to reverse, just like they take most CAFC cases to reverse. Lloyd’s sources saying differently are all just overthinking this one.

    1. If the Court has dismissed the Oil States petition

      Er, sorry. “If the Court had dismissed the Oil States petition…”

    2. Greg: one has to imagine that Justice Gorsuch represents the fifth vote. It seems to me that the smart money has to be betting on the idea that Gorsuch is going to vote for unconstitutionality here

      Because Gorsuch is a hack? Or some other reason?

      I’ve yet to hear an argument for the unconstitutionality of a granting agency reviewing its own decision upon a showing that the decision was likely incorrect. And that’s after Congress expressly defined the grant in question as one that was subject to review upon a showing that the decision was likely correct.

      News flash: sometimes the Supremes take cases and affirm the lower court. Sometimes they do that because the issue keeps getting raised and it doesn’t seem to be going away in spite of the fact that the issue is a bigtime l o s e r. Sometimes there’s some aspect of the issue that the judges want to clarify, even though they have no intention of affirming the lower court and they find most of the arguments made by the petitioner ridiculous.

      Yes, it’s true. Shocking stuff, I know.

      The Supreme Court is well aware of how the patent maximalists play the game. They know that these same laughably self-described champions of “rights” and “freedom” will turn around in a second and, if they can find a way, sue everybody in the country for thinking about a new correlation while eating breakfast (a method that is “not entirely in the mind!”). Everybody knows this. That’s why IPRs were created by Congress in the first place.

      Take away IPRs and something else will come along to replace them or the entire system will be shut down. Corvettes and coke are beloved by the gold-chain festooned h0gs trading patents and real estate in Orange County and Silly C0n Valley but, fortunately for all us, the high life tends to cloud the vision of the maximalists. They also end up with their big feet in their big mouths. Watch and see.

      1. And that’s after Congress expressly defined the grant in question as one that was subject to review upon a showing that the granting decision was likely incorrect.

        Fixed my typo. Apologies.

      2. I’ve yet to hear an argument for the unconstitutionality of a granting agency reviewing its own decision upon a showing that the decision was likely incorrect.

        Take your fingers out of your ears.

      3. UK PM Theresa May craves authority. Recently she scolded “Enough is enough”. SCOTUS also craves respect and authority. I find it very credible that SCOTUS might see this issue as ripe, and seize this opportunity also to declare “Enough is enough”. For them a bit of light relief from the more technically difficult and challenging issues of eligibility, patentability, exhaustion and so on.

          1. For Theresa May it was acts of t3rr0r1sm. Not sure of the exact point when there are “enough” of them.

            For SCOTUS, and its self-imposed burden to adjudicate the issue of the moment, time will tell.

      4. I’ve yet to hear an argument for the unconstitutionality of a granting agency reviewing its own decision upon a showing that the decision was likely incorrect.

        I gather that you consider “this issue was tried in Chancery in 1798 England…” to be an argument beneath contempt, but that is the test for compliance with the seventh amendment. I do not like it any better than you do (I think that the seventh amendment was a bad idea when it was added, and has not improved over the years), but so long as VII is on the books, this is the test that the SCotUS will apply.

        Take away IPRs and something else will come along to replace them…

        I agree. I think that several of the voices cheering Oil States around here do not care a fig about jury trials, they just want the hated AIA trials wiped off the books. They are in for a rude surprise when they discover that Congress is not going to let this go. There will be a replacement measure enacted if the Court strikes the present system, and these same critics will not like the replacement any more than the present system.

        1. . There will be a replacement measure enacted if the Court strikes the present system, and these same critics will not like the replacement any more than the present system.

          That very much depends on facts not present, now doesn’t it Greg?

          After all, if the other Constitutional protections of property are recognized, then what do you think will be this “so scary” thing that Congress will do?

          Do you really think that Congress will revoke the property aspect of patents?

          Rude surprise? Please do substantiate yourself (or please conversely, drop the FUD).

      5. MM, you know you are talking about me when you are talking about champions of this issue; and I have never supported patents on business methods and the like, or functional claiming. In fact, I have been one of the strongest opponent of that kind of patenting, and you know it.

        However, there awful lot of people supporting the unconstitutionally of IPRs who like business method patents, functional claiming, and the whole 9 yards. They tend to be patent attorneys, not legitimate businesses who have invested in developing new technology and who cannot afford a patent system makes it so easy to invalidate patents by political body sees it as its mission to stomp out so-called trolls.

        Among these businesses that need patents, as you well know, are drug companies and the like who need patent protection, reliable patent protection, in order to justify the enormous expense they must make to develop a new product.

        1. If I was talking about you, I’d just use your name.

          IPRs aren’t negatively affecting drug development or the patenting of drugs.

      6. Because Gorsuch is a hack? Or some other reason?

        As Ned notes in #2 above, Stern v. Marshall split 5-4 with Scalia on the side against Art. I judges. This issue is by-no-means on all fours with Stern, but it is close enough that one can form one’s Bayesian priors about how Oil States will turn out by looking at the outcome in Stern. Gorsuch is enough like Scalia that one has to figure that if Scalia was against Art. I judges, then Gorsuch will also be.

        I will be delighted to be wrong about that. We do not actually know how Gorsuch will vote until he votes. I think that the prior assumption, however, has to be that he will vote like Scalia, and Scalia’s ears were known to prick up at the incantation of the phrases “property rights” and “administrative tribunal.”

    3. Greg, Stern v. Marshall split 5-4, with Scalia in the majority, holding that the ruling of the bankruptcy court was not entitled to collateral estoppel effect because it was made without constitutional authority, albeit with statutory authority, on a cause of action that had a right to a jury trial in a court of law.

      The minority, Breyer, Sotomayor, Ginsberg, Kagan, would have held there to be no constitutional violation. In doing so, they listed a number of factors guiding the decision of whether there is a constitutional violation. Important among these was the degree of insulation of the judges from improper political influence. The court noted that the bankruptcy judges are appointed by the courts and not by the political branch. Another important factor is degree of supervision by district courts. Here, the court noted that bankruptcy court rulings are subject to de novo review by district courts. An important factor was whether the parties consented to the jurisdiction of the form. The Breyer minority would have also given significant weight to the governmental purpose.

      Note that, even considering the Breyer factors, IPRs fail, and considerably fail, the points about the independence of the judges from political influence, the lack of de novo review of by a district court, and lack of consent of the parties.

      Even so, I suspect that the Breyer minority might still approve of IPRs because of the congressional purpose, discounting all other factors. That is why I believe the court did not take MCM Portfolio because without Scalia, the result would have been a 4-4 split.

    4. I am so happy that Scott McEeown is suffering a bit of disbelief and angst. After all, when we filed our appeal in MCM Portfolio LLC v. Hewlett-Packard, he said that we should be sanctioned for wasting the courts time.

      1. That’s a bit of pot and kettle there Ned, as you recently echoed a call for sanctions against certain filers (who happened not to agree with your Windmill Chases).

        Have fun picking up the shards of your former glass house…

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