Question: Whether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
The deciSion here is very big news for the IPR system because it has the potential of bringing down the entire AIA trial regime. The conventional wisdom with Supreme Court cases is that they usually reverse the path set by the Federal Circuit. Here, that results may well be a holding that PTO cancellation of issued patents is a constitutional violation.
This is a short but balanced article published by the AIPLA on this issue which is finally now at the Sup. Ct. after several prior unsuccessful cert attempts.
“Are Inter Partes Reviews Unconstitutional? Time for Some History.”
Access it for free using this link:
link to lexology.com
Paul, thanks for the link. Clearly the author knows very little about what went on in England prior to 1791.
Greg, your exegesis virtually eliminates and gives no meaning to “secure.”
You have to place “secure” in the context of the times considering the active intervention of the Privy Council into patent matters. The word certainly requires not only that patents have exclusive rights for limited times, but that they be “secure.” This certainly means, to me, that the point of Founding Fathers was to prevent the intervention of the government (Congress or the executive) into the validity of the patent after it has been granted.
Certainly the cases of the Supreme Court in 1800s are consistent with this “property” aspect of patents. Not only did the Supreme Court hold that the PTO could not re-examine and cancel claims it found unpatentable (McCormick Harvesting), it further held that the government had no standing to file his suit in court cancel a patent for any reason other than fraud.
As we know, Congress cannot grant the government standing by statute. That would be, like the statute in Marbury v. Madison, plainly unconstitutional.
Not that it means much, but re the speculations on the outcome of this Sup. Ct. case note that the latest IPL Sup. Ct. decision, in Matal v Tam, was also on a constitutional issue, and that the Sup. Ct. fully agreed with the Fed. Cir. rather than reversing it.
As previously noted – specifically to you, Paul – the “controlling law” was deemed UNConstitutional.
You tend to overlook that little morsel (in your past attempted denigrations of those bringing up Constitutional items).
So yes, noting that the CAFC was not reversed is proper. But let’s note what also happened there (and then feel free to note that my posts were deadon correct as to the legal rationals involved).
😉
I agree with anon, here, Paul. The court found the statute unconstitutional. That is the salient point.
I have asked Greg, KnowBuddy, and Quasar18 (and anyone else out there who seriously wants to dialogue on the this topic), but have yet to see an answer, so let’s try again:
Can you provide a definition of “public rights”…?
anon, have you read Murray’s Lessee yourself?
Yes I have. That does not answer the question FROM those I have asked.
There is a point of having the person wanting the opposite side to realize the answer to the question I put forth, Ned.
Do you see that point?
I can’t remember technically what it was, but seems like I saw it in one of those cases Ned or someone cited a long time ago. It was basically just any right dreamed up purely as a statutory construction of the congress (or other lawlmaking body) that could be taken advantage of by any general member of the public (subject perhaps to some restrictions, but generally anyone).
Filing bankruptcy under some chapters, filing a patent app for an entitlement, filing for an IPR, etc. etc. all of those things seems clearly public rights.
nope.
Good ol OCPD. Never change anon. Never change. At least you make it ez to spot on occasion.
So predictable.
Good ol accusation of meds/illness, 6.
Maybe instead you should just realize that your post at 26.2 is simply not correct.
And would the “so predictable” be applicable to that…? ( 😉 )
That might actually be one good reason why the Supremes took this case?
Can you provide a definition of “public rights”…?
Candidly, no, I cannot. It seems to me that whatever the Court might have meant by the words in Murray’s Lessee, the concept has drifted since then to be a sort of fudge-factor that the Court can invoke whenever it does not want to upset a regulatory scheme. It is a “public right” if the SCotUS says that it is a public right, and it is not a public right if the SCotUS says that it is not. There are no meaningful hallmarks common to all public rights that allow us to know them as such before the SCotUS tells us so.
Basically, I agree with Invention Rights in 18.1.1.3.1.1.2 below that “public rights” is just a word that courts invoke when they do not want to give you the jury trial on which you are insisting. I gather that Invention Rights is angry about this. Unlike Invention Rights, I am indifferent to the matter. I agree with Invention Rights, however, that trying to argue “this is the definition of ‘public rights’ and case Y does not fit the definition” is a waste of time, because the Court feels very free to change the definition of “public rights” on the fly to suit Its purposes.
Greg, rather that view the issue as to what IS a public right, we should view the issue as to what cannot be a public right — the “stuff” litigated in the courts of England prior to 1789, particular such “stuff” that has a Seventh Amendment right to a jury trial.
[R]ather that view the issue as to what IS a public right, we should view the issue as to what cannot be a public right
This sounds exactly right to me, Ned. I cannot tell you what it is to be a “public right,” but I can tell you some things that definitely are not public rights. I gather that you think that the historical scholarship is clear enough to put “patent validity” into the firm not category. Consider me—as yet—unconvinced. That said, if the Court agrees with you, I will not say that they are clearly wrong.
From where I am standing, the historical scholarship is simply too thin to say one way or the other with confidence. However, some rule must be given—either pro or con—so if the rule is that patent validity requires a jury trial when invoked, that rule will at least have the virtue of being clear and administrable (albeit, to my eye, suboptimal public policy).
“Candidly no, I cannot.”
A good first step, followed by what I consider to be an extremely p00r second step, allowing the Supreme Court to treat public rights as some type of “I know it when I see it” P0rn0graphy test.
At link to ipwatchdog.com
there is at least a try for a legal definition:
The Collin’s dictionary of law puts it this way:
Public rights: rights enjoyed by persons as members of the public, as distinct from private rights attached to the personality of the individual or deriving from property owned by him. Public rights may derive from the common law (such as the right of members of the public to pass and repass along the highway) or from statute. In either case, the remedy for infringement is by indictment or in relator action for injunction.
The legal definition provided would draw a rather sharp distinction between what is private and what is public (especially as regards property, which patents are per the direct words of Congress).
If legal discussions are going to devolve into a “Supreme Court can make up whatever legal views they want to make up” AND we are going to treat that as “OK,” then why bother at all with ANY attempts at legal thinking?
First, the Supreme Court simply does not have that type of power.
Second, if you want to share your particular state attorney oath, I will show you the phrase that makes the acquiescence to a “whatever the Supreme’s want” unpalatable.
Third, in this particular issue, there certainly is NO “little bit pregnant” (and as much as others may not like that phrase, the phrase certainly fits!).
The legal definition provided would draw a rather sharp distinction between what is private and what is public (especially as regards property, which patents are per the direct words of Congress).
Sure, if the Collin’s dictionary entry were controlling law, that might well affect the outcome of the case. And if my grandmother had wheels, she would roll.
If legal discussions are going to devolve into a “Supreme Court can make up whatever legal views they want to make up” AND we are going to treat that as “OK,” then why bother at all with ANY attempts at legal thinking?
I think you are coming at this question backwards. The words “public rights” never appear in the constitution, so there is no sense asking what is the “right” construction to give those words. Rather, “public rights” is simply a phrase that the Court has contrived to refer to matters that are susceptible of judicial administration, but not necessarily committed to the exclusive care of the Art. III courts. Therefore, the category has no fixed boundaries ex ante to constrain the Court. The Court invented the category in the first instance, and the Court is quite free to move the boundaries.
I think that Ned has the right approach here. Rather than asking what is a “public right,” it is more helpful and tractable to ask what is not a public right. There are some things that clearly fit into the “not” category: guilt or innocence in a criminal proceeding; ownership of a contested property; liability for intentional torts; contract disputes between private parties.
Then there are some things that we know to be “public rights” because the Court has already told us so: freedom to move over the public highways; allocation of the electromagnetic spectrum; veterans benefits; public assistance payments.
In between these two clear poles exist a murky middle of items that may some day be classed into one or the other category. I honestly do not see how §261 or (tedious and irrelevant) analogies to pregnancy help to make that sorting either more fair or more intelligible.
“Sure, if the Collin’s dictionary entry were controlling law, that might well affect the outcome of the case. And if my grandmother had wheels, she would roll.”
Non-sequitur and especially unhelpful, given the logical conclusion that you would rather have a discussion where NO definition could apply apriori.
“I think you are coming at this question backwards. ”
No – I am most definitely not the one coming at this backwards.
Define the word first BEFORE you attempt a legal conversation with the word. Only then will your conversation be meaningful.
Otherwise, why bother at all?
“I honestly do not see how §261 or (tedious and irrelevant) analogies to pregnancy help to make that sorting either more fair or more intelligible.”
LOL – I almost missed this bit of humor from Greg.
There is NOTHING honest in your statement here, Greg.
Your “not seeing” is entirely because you do not want to see how EITHER the element of property – which per the legal definition you also did not want to see – or the perfectly valid notion that we are talking about one item and you do not get to “split” the item to have parts to be partially one thing and other parts to be partially something else.
There is NOTHING “tedious or irrelevant” with ANY of these observations. What this is – and what this ONLY is – is you not wanting to acknowledge these items.
The problem with you “not seeing” is that you have your eyes clenched tight.
Opening your eyes solves that “problem.”
Of course, that will lead to a solution that you just don’t want.
The Court invented the category in the first instance, and the Court is quite free to move the boundaries.
To clarify what I mean by this, I think that the category of “public rights” can be likened to an oceanside city like New York or San Diego. On one side of the city, the boundaries are quite constrained by the physical barrier of the ocean. On the other sides, however, the boundaries are entirely arbitrary, and can be moved however suits the convenience and preferences of the relevant and involved communities.
The city is like the category of matters that can be lawfully entrusted to the administration of an executive agency. The ocean is like the category of matters that belonged to the English courts of common law. Those matters that belonged to the English common law courts are—in the U.S.—now exclusively the province of the Art. III courts and their sister courts of the 50 states.
Along the dimension of the ocean shore, the boundaries of the city “Public Rights” are not permitted to expand, although the city limits can (if the city government desires) contract to cede territory to the “ocean.” Along the other sides of the city limits, however, the boundaries may expand or contract however seems efficient and suitable.
I gather that Ned considers questions of patent validity to be located “off-shore” in this analogy—beyond the reach of any authority other than the Art. III courts. This is an assertion of historical fact, and considered as a matter of historical fact, I simply find the historical evidence too inconclusive. Naturally, however, I will agree with him that if the Court considers the historical evidence to be conclusive, then there is no alternative but for them to hold patent validity to be “ocean.”
In trying to decide whether something is “ocean,” “city,” or “unincorporated land,” however, there is really no enlightenment that comes from asking whether a given right is “property.” There are matters concerning “property” in the ocean, and also in the city limits. The mere observation of “property” vel non, therefore, is uninformative.
I find your own special waffling uninformative and your unwillingness to commit to some definition unhelpful.
Yelling “jury trial” suggests a bottom-of-the-first-year-class analysis. Even in jury trials, there are issues (including facts) that the Judge alone can address. The 7th amendment requires at least $20 in controversy before a jury right attaches to an issue. Given that invalidity does not involve money, there is no right to a jury trial. Moreover, a patent is a creature of statute and if one gets a patent knowing that post-grant invalidity proceedings are part of the statutory regime, one cannot claim anything is taken or that there is some non-statutory right to be exempt from the statutory limitations that came with the patent.
(I vaguely recall that the dissent from the denial to hear In Re Lockewood en banc contains a good analysis of what the 7th Amendment jury right means. Keep in mind that the Supreme Court vacated the Federal Circuit’s poorly reasoned jury-trial-yelling and remanded to the district court to continue without a jury trial.)
Tim Buck, From ex parte Wood & Brundage, 9 Wheat. 603 (1824)(Story, J.):
“The securing to inventors of an exclusive right to their inventions, was deemed of so much importance, as a means of promoting the progress of science and the useful arts, that the constitution has expressly delegated to Congress the power to secure such rights to them for a limited period. The inventor has, during this period, a property in his inventions; a property which is often of very great value, and of which the law intended to give him the absolute enjoyment and possession. In suits at common law, where the value in controversy exceeds 20 dollars, the constitution has secured to the citizens a trial by jury….
” Its object is to provide some means to repeal patents which have been obtained surreptitiously, or upon false suggestions; the very cases for which a scire facias issues at the common law.
…
It is not lightly to be presumed, therefore, that Congress, in a class of cases placed peculiarly within its patronage and protection, involving some of the dearest and most valuable rights which society acknowledges, and the constitution itself means to favour, would institute a new and summary process, which should finally adjudge upon those rights, without a trial by jury, …
…
“Nor are there any public mischiefs which will result from the view which the Court takes of this section. On the contrary, it will subserve the purposes of general justice. If a patent has been fraudulently obtained, or upon false suggestions, it may be repealed within three years, if a jury, 614*614 upon a trial, shall be satisfied of the fact. …
“Upon the whole, it is the opinion of the Court, that the rule ought to be made absolute, and that a peremptory mandamus issue to the Judge of the District Court, directing him to enter upon record the proceedings in this cause, antecedent to the granting of the rule, and upon which it was founded: that he award a process, in the nature of a scire facias, to the patentees, to show cause why the patent should not be repealed, with costs of suit: that upon such process being returned, 615*615 duly executed, he proceed to try the same cause, upon the pleadings filed by the parties, and the issue joined thereon; and that, if the issue so joined be an issue of fact, then the trial thereof to be by a jury; if an issue of law, then by the Court, as in other cases.”
This is a strong argument, Ned, and I do not wish to downplay its strength. That said, those of us who think that IPRs should be considered constitutionally sustainable still have room to maneuver in view of Wood & Brundage.
The statute in W&B did not just declare a given claim invalid. The statute in W&B actually wiped your patent off the rolls. In other words, on one day the patentees in W&B owned something, and the next day they owned nothing.
This is not how it works in IPRs. At the end of the IPR, the patentee owns the same patent that was owned at the start of the IPR. That patentee may have a different set of enforceable claims associated with it, but the bare fact of ownership has not changed.
In other words, it is possible to say that W&B was not about validity, but rather about ownership. No one (even partisans of IPRs like myself) argues that the PTAB can decide patent ownership. Questions of ownership really are the unique province of Art. III courts. Therefore, it is possible to acknowledge that W&B was decided correctly, and still maintain IPRs (which are materially different along a very relevant dimension) are constitutionally sustainable.
Your views on this remain odd, Gregg.
It’s like you want to pretend that an invalid patent is worth something because of the paper it was printed on may still be able to be held in your hands.
It’s like you want to pretend that an invalid patent is worth something because of the paper it was printed on may still be able to be held in your hands.
I do not need to “pretend” that it is worth something because its worth is irrelevant to the applicable analysis. The government may not deprive me of my property without just compensation and due process of law in an Art. III court. It is quite free, however, to affect the value of my property without either.
If I own a lot on which some endangered species makes its habitat, the government can impose restrictions on my use of that land without ever a day in court or a dime’s worth of compensation. That materially changes the worth of my land (i.e., what a willing buyer will pay for it), but it does not change the ownership.
That is my point. Changes in ownership against my consent require a court. Changes in worth against my consent, however, do not.
“ It is quite free, however, to affect the value of my property without either.”
Clearly you do not understand takings law – and the simple fact that the “affect” is not unlimited in your falsely idealized “thinking.”
Greg, honestly, the question is not whether one, two or all claims are revoked (taken), but whether the patent owner has a right to a trial by jury. The Supreme Court said it he did because the statutory action was clearly in the nature of a common law write scire facias, to put at issue the validity of the patent, where trial at common law was to a jury.
I think you are too hung up on anon’s due process theory that involves a taking. But, to anon’s benefit, the Supreme Court did hold in McCormick Harvesting that reexamining and then cancelling claims in an issued patent without the consent of the patent owner “deprived” the patent owner of property without due process of law.
Now, the skillful reply would be to point out that reexamination and IPR are not the same. But the point is not the procedure involved, but the lack of patent owner consent.
Imagine you own a patent but cannot afford 50 grand or more to respond to a reexamination or IPR. What do you do? Now, you simply give up. Your claims are cancelled.
Is that due process?
What if the petitioner is someone like United Patents that is targeting small fry in one of their members space just to clear the field that his client might enter?
Imagine you own a patent but cannot afford 50 grand or more to respond to a reexamination or IPR. What do you do? Now, you simply give up. Your claims are cancelled.
This is just as much an argument against jury trials as it is against IPRs. Litigation in front of a jury is more expensive than an IPR.
Greg, you are forgetting one simple fact — the reexamination or IPR can be filed by anybody without standing. In order for someone else to drag one into court, one has to actually accuse them of infringement, and one does not do that unless one can afford a DJ or have a contingency fee counsel lined up.
Take a look at United Patents or whatever they are called. They file IPRs for clients against little guys just to clear the path.
That is a fair point, Ned, but if you mean to say that we should pity, not all the less wealthy patent owners dragged into IPRs, but only the ones who did not bring it on themselves by starting a court case, you are now invoking our pity for quite a tiny number of folks. The overwhelming majority of IPRs concern patents with corresponding litigation. I am not convinced that we should craft public policy to convenience a handful at the expense of the many unless the injustice of the alternative is really monstrous.
..because bringing suit is somehow a “bad” thing….?
(besides which, I have previously brought up the “standing” issue, to which you replied that you understood the point – and yet again – like here – you show that you do NOT understand the standing point.
Greg, I find your comments increasingly sloppy and thus, increasingly inconsequential.
“but only the ones who did not bring it on themselves by starting a court case”
Now we’re getting back further to the root of the problem, which is really the Medimmune and STM cases, brought to us by the big D firm bar, which made it possible for every Tom Dick and Harry to DJ Peter Patent Owner if the latter so much as sent a letter asking to talk about a patent license. This “reform” resulted of course in patent owners now having to sue everyone preemptively in COURT as part of a BUSINESS dialogue. The big D bar never had it so good.
But even that was not enough to satisfy the hogs at the big D trough, so they snuck in IPR through Congress under the guise of “troll reform” making it possible to start quasi-litigation cases without ANY controversy at all. That is really what Ned is pointing out now, how far down the road to nowhere we have gone in accommodating not the real needs of innovators, but, rather, the deep pockets of big lawfirms looking for easy paychecks exploiting fears of troll boogeymen that THEY CREATED.
Well, Greg, what we have is a system that strips patent owners of their patents if they seek to enforce them. And don’t give me any bull that the patents are invalid. It all depends on the burden of proof and claim construction.
[T]he question is… whether the patent owner has a right to a trial by jury.
Right to a jury trial for what? In W&B, the outcome of the process was that the patentee’s patent was to be eliminated. One day the patentee owns something and the next nothing. I can easily agree that this is the sort of ownership issue that triggers the VII amendment. It less clear to me that a process where the property owner owns all the same property (just with a possibly lower sale value) after as before implicates the same VII amendment concerns.
Greg, why are you conflating property ownership issues with Seventh Amendment issues?
Have you ever read Parsons v. Bedford?
Ned,
Pursuant to my other comment this morning, it is NOT conflating property “ownership” that is on the table.
Instead, it is determining whether or not any aspect of patents as property can survive if one allows any “little bit pregnant” public right aspect to attach.
As soon as you allow even a little “public right,” you allow the removal of Article III and that means that you are no longer even in the domain of needing case and controversy or standing.
“Ownership” aspects are a complete red herring. The question simply is not whether aspects (of ownership, segregated from the rest of what patents are) of patents are public rights, but whether the very nature of patents as property allows for a de facto treatment of the whole of what a patent is to be switched into administrative “judicial” proceedings land based on ANY single “aspect” being determined to be “public rights.”
Make no mistake: this is the ultimate “slippery slope” and “little bit pregnant” type of trap.
Greg has forever and a day prevaricated as to what “value” remains after a “public rights” removal of validity. This is merely more of what he has been steadfastly doing over many threads now.
Have you read McCormick Harvesting?
It held that any attempt by an examiner to cancel a claim which in his opinion was invalid after reexamination was a taking — a deprivation of property without due process of law.
Also, anon, it is not whether a patent is a public right or property it is whether patent rights are public rights such that Congress may assign validity challenges to the PTO. Their property rights aspect is still affirmed by the patent owner’s right to bring an action for damages.
Only the 7th Amendment saves the day.
Ned,
No. Your gaze is fixed on “everything is a nail” because you hold a hammer.
The “screw” here is very much whether or not a personal property right that is a patent “can be” a little bit pregnant and also be (as in, have some aspects be) a public right.
IF it is “judged” to be a public right, then THAT aspect greases the slippery slope and you have the “property” sliding into the Executive agency “adjudication” which can nullify ALL aspects of the property.
This very much revolves around takings law.
Don’t forget that takings MAY happen. Property MAY be deprived. And patents are no different in that regard.
You need to elevate your view above the “everything is a nail to your seventh amendment hammer.” The arguments in play are both more nuanced and more direct than that singular view.
Again, the Takings Clause is only about eminent domain, not about due process, Article III or the Seventh Amendment.
“Again, the Takings Clause is only about eminent domain, not about due process, Article III or the Seventh Amendment.”
No Ned.
Please review your takings law understanding. You are simply way off into the weeds here.
The Takings Clause, the last clause of the Fifth Amendment, limits the power of eminent domain by requiring that “just compensation” be paid if private property is taken for public use.
Ned – NOT just eminent domain.
Please put away your hammer.
anon, stop talking about the Takings Clause then. Please.
Ned,
Please read more carefully.
I reference takings law – not the Takings Clause.
Interjecting into the dialogue, now that it has come to life again.
I would suggest that, in England, from medieval times, through into the 18th and 19th centuries, and indeed down to the present time, letters patent have been a mechanism for granting rights, and letters patent were and are issued for all sorts of the purposes. The US context would be different because the Founding Fathers evidently did not favor a constitution in which the executive exercises the full powers of the English royal prerogative. Consider a case where letters patent are used to charter a corporation. I would presume that the rights to hold real property, engage in commerce, award degrees etc. would be rights that would be adjudicated in an Article III Court. I would expect such rights to be “private rights” to the extent that there is some meaningful categorization of types of rights. And therefore it would seem logical to me that SCOTUS would consider rights granted by letters patent, for whatever purpose, to be “private rights”, as opposed to “public rights”, assuming for the sake or argument that there is some principled logical distinction between these kinds of rights.
Next stage in the argument: where rights are granted to an inventor, to what is the right granted? Here I would suggest that maybe the right is to the “invention”. And what is the “invention”? This might be construed to be whatever in the subject matter of the specification satisfies the requirements of eligibility (including subject matter requirements), novelty and nonobviousness – what it is, falling within the bounds of eligible subject matter, that the inventor has in fact invented.
(The SCOTUS opinion in Warner-Jenkinson, I suggest, is consistent with a concept of “the invention” that is not completely defined through constructing the literal scope of the claims.)
What about the sequence of claims? One approach would be to regard these as a more dynamical part of the textual documentation associated with the patent grant. The claims represent attempts to capture, in textual form, aspects of the invention. Unlike other parts of the specification, the sequence of claims is not fixed at the time of filing. They are typically amended in prosecution, and the law provides opportunities to the inventor, through continuation patents, amendments etc. to enlarge and amend the wording of the claims and to add new claims, provided that the “invention” described in the specification is not enlarged thereby. Also cancellation of a claim is not going to invalidate the patent – whereas were the patent grant to adhere to what is covered by the precise wording of the claims, an invalid claim would surely entail an invalid patent grant, in that the Commissioner of Patents purported to grant exclusive rights in subject matter that could not lawfully be granted. It seems to me that one might argue that the inventor or assignee is estopped from pleading infringement of aspects of the “invention” that have not been claimed. But if claims can be added (e.g., in a continuation patent) a decade or more after filing or “inventing”, to the benefit of the patentee, then, if the USPTO has determined, via some formal procedure authorized by Congress, that the subject matter of certain claims is infringed by prior art, then there might be an argument that the public notice function of the sequence of claims would best be vindicated through cancellation of claims – with such claim cancellation not diminishing, by one iota, whatever “invention” is implicit in the specification text outside the claim sequence.
If the procedure could be framed in which some person or corporation petitions the government, specifically the Patent Office, to re-examine the validity of a claim in the light of alleged prior art, and the Patent Office conducts a proper examination, and deems some claim to be invalid, and “cancels” the claim through some procedure authorized by Congress, then this would create a cause of action that the patentee might assert against the Commissioner of Patents. And Congress could provide that this claim might be adjudicated in either an Article I Court or an Article III Court, without entitlement to trial by jury on account of sovereign immunity.
Against this, there would surely be an argument that, while such a re-examination system might in theory be within constitutional bounds, the current IPR process is too adversarial, and embeds the petitioner too thoroughly into the procedures, to an extent that might be deemed incompatible with a theory that sovereign immunity trumps 7th Amendment rights to a jury trial.
Distant, the 5th Amendment constitutes a waiver of sovereign immunity. The government cannot deprive one of property without due process, and that certainly requires a court of law.
“The government cannot deprive one of property without due process, and that certainly requires a court of law.”
No. That is not correct.
Ned, please review your takings law again.
The Takings Clause is the part about eminent domain, not due process.
Ned,
Just because you want to continue to hammer away, the screw does not become a nail.
Tell us, Tim Buck, what did Parson v. Bedford say about the Seventh Amendment? Something about legal rights litigated in the common law courts?
Just to stir the boiling pot here a bit, how about Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331 (Fed. Cir. 2001), finding NO right to a jury trial where equitable relief [not damages] was requested, and only affirmative defenses were raised. Were not validity issues being tried without a jury here? [No PTO proceeding decides infringement damages issues.]
P.S. Ned, you havn’t yet addressed my history question about whether juries were required for validity issues in the olden days when patent suits were handled in federal equity courts?
Still a private right. Why wouldn’t it be?
That is just one of the issues in the question they took cert on.
I do not understand your answer to anony, Paul.
Paul, I am sorry for not be able to communicate with you on a prompt basis but the filter locked me out of conversations for days. I have know why the trigger is filtered, but once it is, all further comments are excluded as well.
The Supreme Court has made it clear that Seventh Amendment rights are personal and waivable. See e.g., Wellness v. Sharif. In the case of patent owners suing only for an equitable remedy, where there is otherwise no jury, the Supreme Court is deemed that choice of forum to be a waiver of one’s right to a trial by jury.
Throughout most of the nineteenth century and that the early parts of the twentieth century, patentees preferred equitable remedies that not only gave them injunctions but accounting profits. The choice of proceeding in equity constituted a waiver.
It was only when Congress abolished the right to collect infringer’s profits that the alternative of damages became an important proof. Since juries could be demanded for the trial of damages, it was not inconvenient to also request a jury for validity.
The merger of law and equity in ’38 complicated the issues, and the Supreme Court uncomplicated them with Beacon Theaters and Dairy Queen that held that when there is a right to a trial by jury on an issue of fact common to both an equitable remedy and a legal remedy, the court could not decide the issue of fact as a matter of equity, but had the client to a jury.
Thus, became the practice of trying validity to juries.
The Supreme Court originally decided that patent validity had a right to a trial by jury in ex parte Wood & Brundage. The Federal Circuit, relying in part on this case, found there to be a right to a trial by jury in Lockwood. Even though vacated when Lockwood voluntarily withdrew his jury trial demand, the Federal Circuit still follows that case.
Thanks Ned! But even if the patent owner waived a jury trial by suing in a U.S. court of equity in those old days, what if the defendant asked for a jury trial on validity? Wasn’t that denied, in spite of the 7th amendment?
Interesting Wikipedia [not mine] comment on that really old Wood patent revocation case you [and J. Newman] like to note:
“The specific statutory interpretation performed by Justice Story became obsolete when the Patent Act of 1836 took effect, Ex parte Wood has never been cited in a Supreme Court opinion. It has however resurfaced in recent debates over the jury trial right in patent cases. In the 1995 case of In re Lockwood, the Federal Circuit used it to distinguish invalidity proceedings from inequitable conduct proceedings, arguing that the proceedings under section 10 of the Patent Act of 1793 were more similar to proceedings of the inequitable conduct kind, and therefore the jury-trial right did not extend to modern invalidity proceedings.[9][10]”
Paul, I am unaware of anyone demanding a jury trial in a court of equity. In England, if validity was raised, the defendant was remanded to his common law remedy. I think the American practice may have varied.
But the salient point here is that it is the English practice that controls the resolution of the 7th Amendment issue. Parsons v. Bedford.
The following is just a guess or conjecture on my part.
Suppose that a landowner were seeking damages for trespass on land, back in 18th century England. The facts of the ownership and the trespass might need to be established by a jury, to prove the legal right of the landowner to damages.
But, for the Lord Chancellor to grant an injunction to order an alleged trespasser not to trespass in future, I would suspect that it would suffice for the Lord Chancellor to be convinced that the landowner does indeed own the land. After all the alleged trespasser is not being fined, imprisoned or deprived of property, unless she commits contempt of court.
After all, in the present day, injunctions are granted by courts to prevent, for example, newspapers publishing information about particular people or companies. One surely does not need legal proof at common law that a wrong has been committed.
Maybe, in the case of reckoning of profits, some sort of legal proof might be required?
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Also, in connection with determining facts in common law courts, I quoted from a historic source describing the typically manner in which the common law trial was set up: one of the parties would claim, and the other would concede, that a wager had been placed on the truth of some statement of fact, and the case would then be taken at common law to determine whether the first party was entitled to this feigned gambling debt. (Not exactly the sort of procedure one would adopt were courts in common law and in equity established to work in tandem with each other.)
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.
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, located in Chancery, being the place where some records are kept, including patent records.
I wouldn’t be surprised if Gorsuch was behind cert being granted in this case (and possibly in SAS as well). The Federal Circuit has traditionally given high degrees of deference to the USPTO in its rulemaking and procedures in patent matters, including the constitutional bases for its decisions. One common theme of Gorsuch’s jurisprudence on the 10th Circuit is deep skepticism of an executive branch unchecked by the judiciary. I don’t know if the Court will ultimately hold that IPR is unconstitutional.
Ultimately, this case is a fed courts question masquerading as a patent law issue. The public/private rights doctrine is one of the most confusing and complex doctrines in fed courts, and the Supreme Court has taken several cases relating to it in the context of bankruptcy in recent years. It’s hugely impactful in the patent lit context, but has a much broader impact as well.
Quite agree – and I have noted several times across the last several months where “unforeseen” consequences will (must) naturally follow if the patent right is determined to be a public right as opposed to being a property (personal) right.
All, on what happens to existing and finalized IPRs (and perhaps, CBMs, and all forms of reexaminations) is not as simple as I first thought. While Art. III rights are waivable — even by implied consent, when a party has no meaningful opportunity to not consent, there probably is no waiver. Wellness v. Sharif
Thus, decisions of the PTAB, and of the Federal Circuit based on PTAB rulings just might be voidable on motion an aggrieved party. See, Rule 60(b)(4).
This could create quite a mess — somewhat similar to the mess created by TC Heartland.
Thanks for the update, Ned. This is useful to know.