Cert petition granted in Oil States

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.

Dennis Crouch

About Dennis Crouch

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

259 thoughts on “Cert petition granted in Oil States

  1. 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

    1. Paul, thanks for the link. Clearly the author knows very little about what went on in England prior to 1791.

  2. 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.

  3. 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.

    1. 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).

      😉

    2. I agree with anon, here, Paul. The court found the statute unconstitutional. That is the salient point.

  4. 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”…?

      1. 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?

    1. 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.

          1. 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…? ( 😉 )

    2. 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.

      1. 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.

        1. [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).

      2. 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!).

        1. 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.

          1. 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?

          2. 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.

        2. 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.

  5. 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.)

    1. 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.”

      1. 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.

        1. 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.

          1. 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.

            1. 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.”

        2. 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?

          1. 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.

            1. 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.

              1. 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.

                1. ..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.

                2. “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.

                3. 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.

          2. [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.

              1. 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.

                1. 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.

                2. 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.

                3. 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.

                4. Again, the Takings Clause is only about eminent domain, not about due process, Article III or the Seventh Amendment.

                5. 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.

                6. 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.

      2. 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.

        1. 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.

          1. 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.

    2. Tell us, Tim Buck, what did Parson v. Bedford say about the Seventh Amendment? Something about legal rights litigated in the common law courts?

  6. 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?

    1. 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.

      1. 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?

        1. 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]”

        2. 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.

          1. 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?

            ===

            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.)

            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.

            2. 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.

  7. 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.

    1. 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.

  8. 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.

  9. Well, one has to at least give credit to Prof. Lemley for his recognizing that this was a hot enough topic worth his researching and writing an article about more than 31/2 years ago. It was noted in a Dennis blog at the time.

    1. How very odd:

      worth his researching and writing an article about

      An overt – and fully unjustified – glorification of an avowed anti-patentist.

    2. Lemley.

      Consider his discussion of ex parte Wood & Brundage (1824) and Polk’s Lessee v. Wendell (1815) at n.’s 109 and 110.

      Wood held that a patentee had a right to jury trial in scire facias actions to repeal a patent “for invalidity.” Lemley described the case is about “fraud” – inequitable conduct – when the Supreme Court actually said it was about invalidity.

      “A motion was made, on a former day of this term, in behalf of the patentees, for a rule upon the district Judge, to show cause why a mandamus should not issue from this Court, directing him to make a record of the proceedings in the cause, and to issue a scire facias, for the purpose of trying the validity of the patent. The rule having been granted, and due service had, the case has since been argued by counsel, for and against the rule; and the opinion of this Court is now to be delivered.”

      Wood at 60,

      Then he said that Polk’s Lessee, decided 1815, cast doubt on this decision because allegedly Polk’s Lessee allegedly held that actions to revoke land patents should be conducted in equity. But that is not accurate. Polk’s lessee held that when two parties were contesting competing titles in the same land, that the action should be conducted in equity so that the relative rights of the parties could be weighed and adjusted by equitable orders and conditions. But the court concluded with this, and this is important to the whole argument that Lemley is trying to make,

      “But there are cases in which a grant is absolutely void; as where the state has no title to the thing granted; or where the officer had no authority to issue the grant. In such cases, the validity of the grant is necessarily examinable at law.”

      Polk’s Lessee at 101.

      Thus in one of the most critical passages of his tome, Lemley is either extremely sloppy or something worse. One can decide which based upon one’s consideration of his agenda. But, take it to the bank, one cannot trust Lemley’s article to to accurately and completely discuss the authority he cites.

      1. But, take it to the bank, one cannot trust Lemley’s article to to accurately and completely discuss the authority he cites.

        This has been a nigh constant refrain for Lemley’s articles (exasperated of course by the mountains of self (or circular) referencing and other “creative” license taken in order to pursue his desired Ends).

  10. So guys if they blow the whole AIA up over the IPR provisions does that mean all the old 102 lawls and 103 lawl will come back into force or what happens there?

    1. You know, I was looking for an answer to that question myself some time ago, and I really have not found any authoritative answer. I have read a lot of people who say that in the (uniquely improbable) event that the entire AIA were ruled unconstitutional, that the result would be that we simply snap back to the version of title 35 that existed immediately previous to the AIA.

      This is not a foregone conclusion, however. One could equally well imagine that the result is that the whole patent act is thrown out, and we simply have no patent act in this country until the Congress re-enacts one. I cannot actually find any cases on this point, but I would be glad to read some if anyone knows of such.

      1. The law that would be thrown out would not be the whole of patent law, but instead would be the offending law that patched in (in places) and changed wholesale (other places) the prior law that is not under attack for Constitutional reasons.

        Not every tenant of law is going to have a “judicial cite” to throw at it (nor need there be any such dependency on the judicial branch).

      2. One could equally well imagine that the result is that the whole patent act is thrown out,

        How that?

        (my other comment remains stuck in purgatory…)

        1. To abstract away, for a moment, from the particularities of the AIA, the broader question here is: where there is a law, and Congress decides that it does not like that law, so it wants to supplant the pre-existing law with a new (but ultimately unconstitutional law), what happens when the courts ultimately pronounce the new law to be unconstitutional. To be clear, the old law no longer exists. It was superseded.

          So, if the new law is effaced from the statute books, does the old law (which has already been effaced from the statute books) pop back up? Or do we simply end up with nothing on the statute books?

          I would like to think that there have been cases on this point, but my (admittedly limited) efforts to find such cases have not turned anything up.

          1. I think this is why lawmakers often use a huge “amendment” to an existing law rather than just making a whole new law. That way if the new version is deemed unconstitutional or whatever then only the amendment would go bye bye (maybe). And then you’d just be left with the old law. Not sure what all happened in the formal written up version of the AIA.

  11. Quasar 18, scire facias actions could alternatively be filed in Kings Bench or in the Petty Bag court of Chancery. The Petty Bag court was a common law court, in the Chancellor was both a judge of equity and a common law judge by virtue is being a judge over both courts. If there were no disputed facts, the Chancellor could hold a patent invalid. But if there were disputed facts, the case was moved to Kings Bench or trial was conducted before a jury, and judgment rendered on the verdict by the common law judge. It was then registered with the clerk of the Petty Bag in the case was over.

    1. Right. So if scope and validity is a pure question of law, there is nothing prohibiting an agency or judge from finding invalidity without the case going to a jury.

      Markman allows a court to determine scope, and only then once the scope of the property right is established, can a jury find infringement. If scope can be determined by an Article III judge without a jury, what is stopping an agency from doing so?

      Based on my read of the recent cases on public rights, the concern appears to be with taking traditional equity cases away from JURIES and into the hands of agencies. It seems this concern is less warranted given that judges already decide patent scope.

      Separation of powers is also strangely absent from this discussion on here. All of this Pre-revolution England talk disregards Congress’s broad Article I section 8 powers. To say that all patent validity matters post-issuance are the sole province of the judicial appears to me to be a massive judicial overreach.

      1. Quasar18,

        Can you provide a definition of “public rights”…?

        Also, the issue is not one of judge versus jury, as it is Executive branch versus Judicial branch.

        And you are correct – the absence of separation of powers is indeed noticeable (Congress’s powers do not include violating other Constitutional protections afforded property). Odd though that you think the items belonging in the judicial branch are a judicial overreach though….

      2. Q, just to clarify, please read 4th Part, Coke Inst., Cap. 8, 79 — available on Google Books.

        The writ scire facias was filed on the common law side of Chancery, but jury trials were conducted at King’s Bench. For the purposes of conducting jury trials, the two courts were considered one.

        Chancery also had an equity side, but that side had nothing to do with writ scire facias.

        On “broad powers,” read Murray’s Lessee first, then come back to discuss further.

          1. How do you think that Crowell helps your views?

            There appear to be plenty of distinguishing facts with the particular administrative agency of the USPTO and its relation vis a vis the AIA with the “final” Article III authority (and the reflections of such in the case of Crowell).

          2. q, Crowell did not involve a right or remedy litigated in the courts of England at common law.

            That is the point, here. I want you to fully understand it.

            1. I get your point.

              Enforcement of a valid patent against a private party was clearly and still is a matter of law.

              Determination of the scope/validity of said right already has been held by Markman to not require a jury.

              Crowell v. Benson held that an agency could decide certain matters related to an admiralty dispute between private parties. That seems pretty on point here.

              Crowell v. Benson is also a foundational case that establishes that agencies can afford due process.

              This is important because, if scope and validity are not entitled to a jury trial, then the only protection left is due process, which Crowell makes clear can be satsfied by non-article I courts.

              See also Granfinanciera, which held that existence of a jury trial is also determinative of whether an agency can ajudicate.

              Also worth noting that recent cases have abandoned the distinction in favor of weighing the government’s (namely congress and executive) interest against the fairness issues resulting from dispensing with Article III adjudication. This is where the Art. I patent power would come into play. Also comparing the fairness of the PTAB to other administrative “courts” will probably not garner a lot of sympathy from the Court if you know anything about how ICE and SSA do their business.

              1. On the other hand, in the context of Crowell v. Benson, if the Article III could would be sitting in admiralty to decide the issue then, to the best of my knowledge, there would be no right to a jury trial within the scope of the 7th amendment. Maritime law in England, certainly well into the 19th century, and presumably to the present day, was distinct from both common law and equity, following principles of civil law derived from ancient Roman law.

              2. Quasar 18, just to clarify, Markman did not hold that validity did not have a right to a trial by jury. It held that claim construction, which the Supreme Court analogized to the construction of contracts, was a matter for the court.

                Regarding the balancing act and Article III, that was the position of the dissent in Stern v. Marshall. The majority continue to rely on the principles of Murray’s Lessee. The majority was fairly clear that if a matter was litigated in the courts of England at common law, it must still be litigated in the courts of England at common law. However, as was the situation in Wellness v. Sharif, a follow-on case to Stern v. Marshall, the holder of the right can waive it intentionally.

                As noted by Distant Perspective, a cause of action in Admiralty never had a right to a trial by jury. Parsons v. Bedford, 28 U.S. (3 Pet.) 433, 446-447 (1830).

                Crowell was about a new private right created by Congress. Again, the emphasis has to be placed upon the word “new.”

                Patents are not new in the sense that patents, patent remedies, and patent validity all were litigated in the courts of England prior to the founding of this country.

  12. By definition a “patent” is a conditional right that is subject to revocation by the granting agency after a showing of a likelihood of agency error. There is nothing in the Constitution that remotely suggests that such a system is forbidden.

    1. Except for the fact that you are ignoring other Constitutional protections of property that inure under previous portions of law (and those previous portions remain unchanged)…

      You should know better Malcolm.

      1. Someone on this board (I forget who) gave a great analysis of the public/private dichotomy a while ago. This explanation makes complete sense and resolves the whole issue. Here’s the correct way to look at it (forgive me for paraphrasing):

        Ownership of the patent is a private right. Who owns the rights to this particular patent. Changing that entails the usual private right protections.

        Validity / scope of the patent is a public right. Changing the scope of the patent – what it covers – can be done by administrative action. The scope may be reduced to nothing if the patent is invalidated, but that doesn’t change who owns the rights to that empty scope.

        IPRs do not affect who owns the rights to a particular patent. They only determine the proper scope of the patent. The same as if a surveyor measures your land and determines your property boundaries are smaller than you thought they were. Your ownership of the land has not changed. Your boundaries have.

        Thus IPRs and validity determinations do not interfere with the Constitutional protections on private property. Patents are both public rights and private rights. IPRs only adjudicate the public rights portion. There is no Constitutional issue. It’s just a red herring caused by improper analysis that conflates scope with ownership. You still own the rights to an invalidated patent, and nothing in an IPR ever changes that.

        1. Except such a “little bit pregnant” analysis fails at the start because it is the whole bundle of sticks in a patent that is deemed property.

          And certainly, revocation most definitively affects one’s rights (that same person you want to credit – Greg – wanted us to believe that the piece of paper [physical patent] still had value after being deemed invalid).

          It’s just a red herring caused by improper analysis that conflates

          That is what describes your “little bit pregnant” attempt.

          1. The pregnant analogy is inapposite. But let’s consider the bundle of sticks (rights) metaphor.

            The bundle defines what you can do with your patent. It does not define what the scope of the patent is. After examination, the scope is beyond the owner’s control. You can argue to a court what the scope should be, but you can not change the scope itself. It is what it is when the patent issues.

            IPRs reinterpret the scope in light of unconsidered prior art. If that prior art reduces the scope, then the patent never had the broader scope the owner thought it did in the first place. None of that changes the bundle of rights you have to the patent itself. You are free to sell it, license it, do whatever you want. Even if the scope is reduced to nothing.

            You seem to think that examiners are perfect and make omniscient decisions in prosecution. At least that’s the implication of saying issued patents are inviolable absent a jury finding (don’t get me started on trusting technically illiterate laymen over technical experts). People in the real world make mistakes. Your attitude of “well the examiner said so, that makes it all mine” is at odds with reality. But don’t believe me. Wait for court to show you.

              1. You dismissed the pregnancy analogy improvidently…

                Nothing convinces like bald assertion.

                Honestly, if you think that there is something to the analogy, then it should be possible to explain that something in plain prose, without the veil of the analogy. It would be worth trying that explanation sometime.

                1. [Y]ou cannot have it both ways.

                  Simple enough for you?

                  Simple, yes. Accurate, no.

                  Obviously you can have ownership and infringement remain the exclusive province of Art. III courts, and validity be amenable to administrative determination. There is no logical inconsistency there, nor is there any obvious impractical consequence that would result from that arrangement. Therefore, the assertion ‘you cannot have it both ways’ simply is not accurate in this circumstance. You can have it both ways (or at least you can have it one way for one aspect of patents and another way for another aspect).

                2. There is no logical inconsistency there, nor is there any obvious impractical consequence that would result from that arrangement

                  Except for the fact that you cannot be a little bit pregnant…

                  So, there IS logical inconsistency there. That you want to chose not to see it, is, well, your choice, but you clenching tight your eyes will not make it go away.

                3. Except for the fact that you cannot be a little bit pregnant…

                  And here we go again. Somehow I expected that when it was shown that your argument lacked any logical force, that you would drag it back behind the veil of the pregnancy analogy. That is the only way the argument works—if it is obscured from the view of logical examination.

        2. Know-buddy, assuming, arguendo, that patent validity had a Seventh Amendment right to a trial by jury, would not assigning the trial of that right to either a court of equity or to administrative tribunal where no jury trial is available violate the patent owner’s right to a Seventh Amendment right to a trial by jury?

          1. That’s the question the S Ct will answer. The most sensible analysis I’ve seen is the above: that patents consist of both public and private rights, and that separating the questions of ownership (private rights) from scope/validity (public rights) disentangles a lot of these existential debates about the nature of patent rights. We’ll see if the S Ct agrees.

            We know that scope (Markman) does not have a right to trial by jury. Validity and scope are inextricably linked. You are only entitled to the scope not covered by prior art. If the prior art covers your entire scope, then your scope is nothing and the patent is invalid. I don’t see the court granting a jury right to one and not the other.

            1. Know Buddy, I think you are arguing that patent validity does not have a right to a trial by jury. I agree, the holding of the Federal Circuit in MCM Portfolio is to that effect. But what I asked you is slightly different. I said assume, arguendo, that patent owners have a Seventh Amendment right to a trial by jury. You seem to agree that if they do have that right, then the denial of that right by assigning the adjudication of patent validity to a tribunal without access to a jury would violate the patent owner’s Seventh Amendment rights.

              The Federal Circuit seems to be operating under the theory that patent owners can both have a right to a trial by jury with respect to patent validity and not have a right to a trial by jury with respect to patent validity. In Lockwood, the Federal Circuit held that patent validity had a right to a trial by jury. Even though that decision was vacated as moot by the Supreme Court when Lockwood withdrew his jury trial request, the Federal Circuit continues to follow it.

              Lockwood based its decision on historical analysis – that patent validity was tried to a jury at common law. Thus under the historical analysis, patent owners have a Seventh Amendment right to a trial by jury.

              So how in the world can that right be abrogated simply by labeling patent validity a public right? Congress does not have that authority. It cannot override constitutional rights by playing word games.

              But of course, when the big boys demand their IPRs, Congress obeys and to …. with the rights of patent owners.

              1. If you mean “Assuming patent owners have a 7th amendment right to jury trial on validity, then IPRs on validity violate that right”, then I give you a firm “maybe”. :) Not to be difficult – at first glance it seems like a tautology and the answer should be yes. But after seeing some of the law articles, I’m not sure whether admin law would trump that right or not, or the nature of public vs private rights in your hypothetical. I’d have to dig deeper.

                Regardless, we disagree on whether they actually have that right. Your starting assumption is not valid. The right to jury trial covers infringement, not validity. They are separate issues, like the title to land and the boundaries of that land. Having a right to jury trial on infringement does not create a right to jury trial on validity. One is a private right, the other is not.

                1. Knowbuddy, there are those like Lemely who dispute whether patent validity has a right to a trial by jury in the first place. However, the Federal Circuit has already held that it does, in re Lockwood, and the Supreme Court has as well in ex parte Wood & Brundage. The MCM Court cited to both in its fn. 2.

                2. [T]he Federal Circuit has already held… in… Lockwood…

                  Lockwood was vacated by the SCotUS (515 U.S. 1182). It has no precedential effect, either on the CAFC itself or any other court. Why should anyone care what Lockwood holds? I agree with you that Wood & Brundage looks like a good case for Oil States and a bad case for people like me, but Lockwood is simply beside the point.

                3. Greg, no doubt Lockwood in not binding on the Federal Circuit, it remains the only case that has ever conducted the historical analysis required by Partsons v. Bedford. There is a reason the Federal Circuit continues to cite it and follow it.

              2. Bingo. “Public rights” is just a label applied when someone wants to deny the aggrieved a full and fair trial. Peeling away the 18 layers of legal sophistry lays bare a raw power grab. The sort of thing the Supreme Court has often endorsed…

          2. Ned, were not patent suits tried in courts of equity, with no right to a jury, for both validity and infringement, for most of the U.S. history of patent cases, until the merger of the two systems?

            1. Paul, for much of the time, IIRC, if invalidity was raised, that issue had to be tried in the common law courts first, just as in England.

              Later, the judge wore two hats, and could rule on validity in his common law capacity. But if only an equitable remedy was sought, and the patent owner did not demand a jury trial, then the court could decide validity.

              Even today, jury trials are optional and must be demanded. If not, one’s right to jury trial is waived.

        3. So, you own your house (private right), but an agency decides that you only own up to one foot off the ground (public right).

          What a joke of an argument. The validity of the ownership and the scope of the ownership are either part of the private right or there is no private right.

        4. Rationally, it is possible to argue that IPRs are about validity and scope. What these types of technical arguments, however, fail to account for, is the big picture. If you step back and view what the PTO does as a whole, IPRs are deeply troubling.

          The very agency that was commissioned to issue valid patents turn around and aid in annihilating the same rights that they were supposed to have doled out. But what corporation that you know offers valuable product of service later works against the value of its own product and services the way US PTO does?

          The irony here is rich.

    2. Going back to McCormick, SCOTUS drew an analogy to real property. The Court used the example that a piece of land (call it Greenacre) passed from the Land Department, an Article III court was needed to decide property issues.
      Intellectual property is not a direct analogy. Patent claims can only exist if there is first an invention. Correspondingly, if patent claims are invalid, the corresponding situation for real property would be that Greenacre does not actually exist.
      The Patent Office is not deciding property rights in the patent itself. The Patent Office is only deciding that no patentable claims existed in the first place and there is nothing to give to a patent applicant since the patent applicant did not “… invent[s] or discover[s] any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, … subject to the conditions and requirements of this title.

  13. Re some of the comments below* about academic legal articles:
    If anything, the subject of the constitutionality of IPRs [plus, of course, CBMs, PGRs and modern reexaminations] seems to have, before now, not even been taken seriously by most legal academics or even many patent litigation attorneys. Presumably, now that this issue is directly before the Sup. Ct., far more will now be getting busy doing such legal research for amicus briefs?
    *Even if one disagrees with the assumptions or conclusions of legal articles, their case law citations can obviously be of interest.

      1. No one is going to take mere unsupported personal blog comments of patent scriveners on Constitutional law attacks on Acts of Congress seriously.
        Now is everyone’s opportunity to “put up [in an amicus brief] or shut up.”

        1. Weak sauce reply Paul, self-serving nonsense.

          If you are not going to take dialogue seriously (anonymous posters or otherwise), please vacate the forum yourself.

          Otherwise all that you are doing is monologueing and attempting to “shout down” the other side with your own ad hominem.

          Engage on this forum – THAT is the time to “put up.”

    1. There’s a great reason for not taking the patent maximalists seriously. Also great reasons for pointing at them and laughing.

    2. I forgot to mention that the vast majority of PTO interferences are, and have been for many years, initiated by applicants against claims of issued patents of others, and regularly decide patent claim invalidity motions before even conducting invention priority trials. Thus, how would a decision of IPR unconstitutionality not apply to interferences as well as CBMs, PGRs and reexaminations? 35 USC 146 is not a normal jury trial, e.g., “The testimony and exhibits of the record in the Patent and Trademark Office when admitted*shall have the same effect as if originally taken and produced in the suit.”
      *It must be admitted on motion of either party

      1. You (obviously) have not been paying attention.

        Maybe instead of the usual snide shots from the sidelines, you might actually deign to join the dialogues before it gets to the point of a granted cert….

      2. It does apply to interferences and the others. This is specifically addressed in the article cited by Judge O’Malley in her dissent in Cascades Projection. Reexaminations and Patlex v. Mossinghoff are also alleged in a footnote in the petition papers as being overruled by the 2011 Supreme Court opinion in Stern v. Marshall.

      3. Paul, it may well be that ultimately application-patent interferences may be held unconstitutional as well, but a losing patent holder still has recourse to a trial de novo in District Court. The ruling of the PTAB is not final unless the patent owner does not exercise his statutory rights.

        1. This was changed by the AIA as interpreted by Federal Circuit’s decision in Biogen v Japanese Foundation for Cancer Research. PTAB interferences decisions are now final and go directly to the Federal Circuit.

          1. Sunny B, well if that is the case, then a complaining patent owner might have a constitutional argument against PTO interferences after the Supreme Court decides Oil States.

        2. Ned, the last sentence of 2.3 was written in anticipation of your 12.3.3 – discussing why 35 USC 146 is not a full or true trial de novo of a PTAB interference decision.

          1. Paul, you might want to read Executive Benefits, a follow-on case to Stern v. Marshall. On appeal to the District Court, the District Court entered summary judgment on the record from the bankruptcy court. The Supreme Court had no problem with this even while noting that the patent owner had a right to a trial by jury.

            To get to a jury, there have to be facts in dispute that will prevent a summary judgment.

            Furthermore, there has never been a decision that I know of where a patent owner in a case involving a de novo review of an interference has ever asked for trial by jury. Seventh Amendment rights are waivable. One must actually request a trial by jury or else it is waived.

            1. Ned, the last I heard there were still something like 100 interference proceedings still in the works, and since there are still so many non-AIA patents and applications, there will be more. None of your above points would save the normal [application v.patent] interference system from being unconstitutional if IPRs are.

      4. 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.

  14. A “patent” by definition is something that can be invalidated by the PTO upon a showing that the patent was likely to have been improvidently granted. That’s how Congress defined it. There is absolutely nothing in the Constitution that says otherwise. The Constitution permits Congress to set up whatever system it wishes to set up, or Congress is permitted to set up no system none at all.

  15. Probably of interest to all is this bit from Duffy’s write-up yesterday re the Sandoz decision (Supreme Court):

    link to scotusblog.com

    Breyer did not find a way to get the FDA to issue some regulations first, but his concurrence speculated that “if [the FDA], after greater experience administering this statute, determines that a different interpretation would better serve the statute’s objectives, it may well have authority to depart from, or to modify, today’s interpretation.” Breyer supported that suggestion with a citation to National Cable & Telecommunications Assn. v. Brand X Internet Services, which authorizes agencies to use their rulemaking powers to overturn (in effect) judicial decisions. That’s an interesting possibility, and it provides the justices with an escape hatch if this decision has unintended consequences.

    Juicy.

  16. This is not a new issue at all. The same constitutional challenge was made in the 1990s against the ex parte reexamination regime, as it raises precisely the same issue of revoking issued patent rights in an Article I proceeding without a jury. Only in that case, the Federal Circuit resolved the issue in Patlex v. Mossinghoff (Fed. Cir. 1985), and it never reached the Supreme Court.

    What’s remarkable about this case, and something I’m surprised Dennis hasn’t jumped on, is that the Oil States decision by the CAFC was a Rule 36 judgment without opinion, affirming a non-precedential (unreported) PTAB decision. The CAFC decision here thus seems to be another case where they used Rule 36, not for a simple and straightforward case, but to avoid addressing novel and complex constitutional issues. Maybe they thought the issue was already decided in Patlex, but the fact that cert was granted strongly suggests that the use of Rule 36 was not inappropriate here.

    But this makes me suspect that the likely outcome here isn’t necessarily reversal, as it is in most cases where cert is granted (except in notable cases like i4i, Alice, etc.) If the CAFC had issued a detailed decision on this issue, the grant of certiorari might have suggested that the Supreme Court disagreed with the CAFC and intended to reverse.

    But having no opinion whatsoever to review (except for a lowly unreported PTAB opinion that carries no weight), on the other hand, suggests that the Court simply thought the underlying issues were sufficiently interesting and important to address. The question of whether patents fall within the type of “public rights” (like bankruptcy, immigration, tax, etc.) under Atlas Roofing, that Congress can assign to an Article I court without a jury, has never been addressed by the Supreme Court.

    And there are a number of ways the Court could go. My speculation is that the Court will ultimately uphold the AIA trial regime, but will probably rely on the limited nature of the relief available (invalidity only) to justify it, because the relief is essentially declaratory and equitable in nature, and being equitable, wouldn’t have been subject to a Seventh Amendment right to a jury trial. They most likely won’t make any sweeping pronouncement that all patent matters fall within the “public rights” exception of Atlas Roofing, or suggest that infringement cases could be heard before Article I courts.

  17. Probably of interest to all is this bit from Duffy’s write-up yesterday re the Sandoz decision (Supreme Court):

    link to scotusblog.com

    Breyer did not find a way to get the FDA to issue some regulations first, but his concurrence speculated that “if [the FDA], after greater experience administering this statute, determines that a different interpretation would better serve the statute’s objectives, it may well have authority to depart from, or to modify, today’s interpretation.” Breyer supported that suggestion with a citation to National Cable & Telecommunications Assn. v. Brand X Internet Services, which authorizes agencies to use their rulemaking powers to overturn (in effect) judicial decisions. That’s an interesting possibility, and it provides the justices with an escape hatch if this decision has unintended consequences.

    Juicy.

  18. Ned said

    “Suppose the court holds that a patent owner has a right to have the validity of his patent tried in an Art. III court and to a jury at his option, the validity of his patent being a legal issue. That would make IPRs unconstitutional only to the extent that they proceed without the consent of the patent owner.”

    Question that is interesting to me (and maybe others, or maybe no one, so feel free to comment or ignore):

    What if every subsequent Issue Fee notification included a statement to the effect of payment of the issue fee is consent to participation in any later filed IPR against the patent? Sort of like when you charge something with a new credit card and find out you have thus waived the ability to sue and have instead consented to arbitration.

    1. If one can be forced back into the patent office until the patent has been expired for six years to undergo reevaluation, does one truly have an exclusive right for a limited period of time?

  19. Linking here to a lengthy article concerned with agency adjudication of public and private rights, and judicial review of such adjudication. I suggest the article has relevance: the word patent however does not seem to occur anywhere within its text. (I suggest that that the absence of specific reference to patent law is maybe helpful, in that the analysis is not dictated by entrenched positions regarding patent law issues.)

    Mila Sohoni, “Agency Adjudication and judicial nondelegation: an Article III Canon”, Northwestern University Law Review, Vol. 107, No. 4 (2013), pp. 1569-1626.

    Here is the URL:

    link to scholarlycommons.law.northwestern.edu

    This non-lawyer respectfully suggests that SCOTUS may have granted certiorari to Oil States to give proper consideration to the issues, without necessarily intending at the outset either to affirm or reverse the CAFC.

    I did try to read up on the distinction “public” versus “private” rights. I did not get a clear idea as to how this distinction would fall out in the case of patent rights. The thought has occurred to me that it is the adjudication of the IPR by the USPTO that affects the patent owner, particularly in cases where the patent owner has no standing to sue the IPR petitioner directly, because the latter is not infringing, and may not be preparing to infringe. The patent statute provides for judicial review of the cancellation of patent claims following IPR adjudication in an Article III court, namely the CAFC. The constitutionality of IPR proceedings would then turn on whether sovereign immunity trumps 7th amendment rights.

    But, at any event, it seems that I am maybe not alone in struggling to understand the nuances of the distinctions between public, quasi-private and private rights. In particular, footnote 8 of the law review article by Mila Sohoni cited above in turn cites a law review article by Paul M. Bator for the following wonderful quote: “The Supreme Court opinions devoted to the subject of the validity of legislative and administrative tribunals are as troubled, arcane, confused and confusing as could be imagined. It seems obvious that the Court has struggled with the subject, and the impression is strong that it is the subject, not the Court, that has won.”

    If this perception is more generally shared, then that in itself should constitute a good reason why SCOTUS should grant certiorari in Oil States.

    1. This non-lawyer respectfully suggests that SCOTUS may have granted certiorari to Oil States to give proper consideration to the issues, without necessarily intending at the outset either to affirm or reverse the CAFC.

      Your naïveté is interesting.

      The patent statute provides for judicial review of the cancellation of patent claims following IPR adjudication in an Article III court, namely the CAFC

      Alas, Distant Perspective, there is a takings that is NOT available for judicial review at a different legal point of the IPR proceedings.

      struggling to understand the nuances of the distinctions between public, quasi-private and private rights

      quasi-private….? Funny, Congress never set out the patent right as a “quasi-private” right. Seems like you want to introduce a condition of “just a little bit” pregnant…

      Make no mistake, Distant Perspective, it is the very nature of the patent right itself that is in the cross-hairs here. Any answer of “a little bit pregnant” will be evidence of the judicial branch (once again) writing statutory law (since patent law – in the sovereign of the US – has had its authority to write dedicated to only one of the three branches).

    2. There are no scholarly law journals. Law journals are equivalent to the vanity press where the articles are not peer reviewed and not policed for ethical violations. A law journal articles should be given no more credibility than a blog post by an anonymous poster. Just read some of Mark Lemley’s articles for good examples for clear ethical violations that are not policed.

      So, a better description is a vanity press article by a law professor who is likely either on the take or has a secret agenda.

        1. Seriously? Experts agree that “the legal world cannot function without law review articles.”(1)

          (1) Yoda, Made-Up Law Review Article (2017).

        2. Peer review is meaningless and often worse than no review. Let’s say your “peers” believe the sun rotates around the earth, and you want to publish an article saying the earth rotates around the sun. What are your chances of having your article published?

          Let’s say instead of that article, you want to publish a negative result, eg, you ran experiments and cannot prove the sun rotates around the earth. Negative results don’t make headlines, so your chances of getting negative results published are nil. This is especially important for drugs, as if a drug study indicates there’s no benefit for a drug, that should be published. Many times, it is not.

    3. That article is not relevant. Specific analysis to patents, one of the few property rights specifically enumerated in the Constitution, is necessary.
      If you want to get some education on the subject, read the patent-specific article cited by Judge O’Malley in her dissent from the denial of en banc review in Cascades Projection. That explains why patents can’t be taken away by a government agency in the same way as social security or welfare benefits. Judge Reyna’s dissent is also a worthy read.

      1. That explains why patents can’t be taken away by a government agency in the same way as social security or welfare benefits.

        Deep deep stuff here, folks.

        LOL

    4. Two important factors that several of the SC cases have considered is whether the parties consent to the non article III forum and whether a federal court is able to oversee the actions of the non-article III form. In bankruptcy proceedings, the dispute is sometime adjudicated by a non-article III magistrate. However, the magistrate works directly with a district court and the district court is free to disagree with the magistrate’s decision. In IPR however this is clearly not the case as the district court is not free to disagree or overrule a determination of the PTAB regarding the invalidity of a claim. The only way a patent owner can redress the invalidity of claim is to appeal to the Federal Circuit. Moreover, in IPR, the patent owner does not consent to the forum.

      1. Wait a minute, why is Mike’s picture appearing over anon’s byline? Has someone just let the sockpuppet mask slip?

    5. Distant, approaching this issue from the point of view of determining whether patents are public rights is a red herring. Patent validity has a Seventh Amendment right to a trial by jury. Anything issue that has a right to a trial by jury cannot be assigned by Congress for trial before a court of equity or by an administrative agency.

  20. “Well I’ll be” – that’s a punch line of a civil war era joke. If it’s 5-4 then #MAGA

  21. In McCormick, SCOTUS drew an analogy to real property. Once title to Greenacre passed from the Land Department, an Article III court was needed to decide property issues.
    Intellectual property is not a direct analogy. Patent claims can only exist if there is first an invention. By analogy, if patent claims are invalid, the corresponding situation for real property would be that Greenacre does not actually exist.
    The Patent Office is not deciding property rights in the patent itself. The Patent Office is only deciding that no patentable claims existed in the first place and there is nothing to give to a patent applicant since the patent applicant did not “… invent[s] or discover[s] any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, … subject to the conditions and requirements of this title.

    1. Greenacre, just for the sake of argument:

      Consider the land patent. Can congress constitutionally authorize the granting authority the right to review the grant for mistake? If not, why not?

      1. In the land patent, since the land actually exists, any mistakes made would be related to the title of the land. For example, the government may not have had clear title to convey.
        Since the issue is ownership of who has title, the issue would need to be adjudicated in an Article III court. So congress could not grant authority to an agency to review.

        If the determination of whether claims are patentable is a legal question that can only be adjudicated by an Article III court, then the USPTO lacks any authority to make a legal determination of patentability. Only an Article III court could then finally reject patent claims. This calls into question to validity of all existing patent claims.

        1. Since the issue is ownership of who has title, the issue would need to be adjudicated in an Article III court. So congress could not grant authority to an agency to review.

          Why is this? What part of the constitution commands this and why?

  22. My $$ is on them limiting Markman, not ruling IPRs unconstitutional.

    Public–Private rights is a messy area of law with far-reaching consequences for benefit recipients.

    A lot easier to say Markman only holds that patent infringement must be decided by a jury and that patent invalidity is a question of law that can be dealt with by a judge or an agency.

    1. The idea that the SCotUS might be reluctant to create “mess[es]… with far-reaching consequences” strikes me as unrealistic. To my eye they often take a positive pleasure in upsetting settled expectations (see, e.g., the recent Lexmark decision) with a sort of what-are-you-going-to-do-about-it,-we’re-the-Supreme-Court swagger.

      1. Re “swagger” and “trends”, just a friendly reminder here:

        link to uspto.gov

        link to patentlyo.com

        Note that the graph at the second link begins shortly before take-off.

        The recent history of patents is largely a CAFC-created aberration, with Internet and data processing “technology” representing most of the gasoline tossed onto the fire. Also useful to recognize that without KSR/Bilski/Mayo/Alice we’d be looking at a legal swamp 1000 times more ridiculous than the current one.

        1. Except when you normalize these numbers by removing foreign filings and adjusting for the number of patents per $1 B of GDP generated by technology, then patent filings are falling.

          But, gee, MM would look at a graph of the number of colds from 1900 and compare it with the number of colds today and not normalize it for population growth and conclude there is a raging epidemic.

        2. MM – I can’t say the exact number, but an awful lot of patent filings are driven by tax arbitrages that take advantage of tax credits for transferring ownership of a US patent to a foreign entity. There are companies filing 1000’s of patent applications per year just to take advantage of these tax strategies.

      1. Because Markman is being taken by the petition to imply that patent infringment requires a trial by jury and this somehow means that patent invalidity must be determined by an article III court.

        1. I do not think that THAT argument solely relies on Markman, and thus limiting the Markman case itself gets you where you think it gets you.

    2. Quasar18, did you know that patent validity was uniformly tried in courts of law and to a jury prior to 1792. How can you say that patent validity does not have both Article III and Seventh Amendment rights?

      1. There is conflicting historical evidence.

        In England there were scire facias actions where patents could be cancelled before a court.

        Also, there is the fact that juries decide questions of fact, not law generally and that is why there is no right to a jury on claim construction.

        1. And yet claim construction necessarily requires evidence of meaning. The whole law / fact distinction is a ruse. Reality is more complicated.

          I like how examination is a technical process conducted between experts. But according to some, invalidity should only be judged by a jury. So only non-technical lay people can correct the technical experts? What a messed up system that would be.

          1. I think that your “setting”misconstrues the desired end result (which accompanies BOTH the fact that a presumption inures at patent grant AND that that level is clear and convincing).

            We (the Royal we) want to give deference to “the experts” and any post grant “corrections” should be at such a strict measure such that it needs to be evident to common man that the “correction” is warranted.

            In other words, this was meant to be an even tougher hurdle to “unquiet” the property ‘title.’

            It only appears twisted because of all the “patents are bad” Kool-aid being served.

            1. any post grant “corrections” should be at such a strict measure such that it needs to be evident to common man that the “correction” is warranted.

              I don’t disagree that IPRs could use some tweaking. But I wholeheartedly reject this “common man” standard. Nothing is evident to the common man. Juries are as likely to decide based on what tie the attorney is wearing or how he talks about his mother as the technical facts which they are unable to comprehend.

              Your standard is a recipe for less predictable, evidence based results, not more. “Common man” is a much lower hurdle than “technical experts”.

              1. possibly freed:

                That may be – but that was not “my” design (I was only explaining what the design is).

                The overturning part is what was supposed to be difficult, and I can very well agree with you that juries may be swayed by most anything other than facts and evidence, but that too is how our system is set up and your complaint rings out across the board (well beyond just patent law) as to the jury system itself.

                1. I can very well agree with you that juries may be swayed by most anything other than facts and evidence, but that too is how our system is set up and your complaint rings out across the board (well beyond just patent law) as to the jury system itself.

                  That’s another discussion for another time. :) Here, we’ve been given a better system with expert determination in the form of IPR proceedings. That is a huge improvement over juries and we should be grateful for it. Yet some people just want to tear it down.

                  Yes, yes, I know. BRI this, amendments that. It’s not perfect. But no reason to toss out the whole thing. Work on improving it instead of tearing it down.

                2. Still in purgatory, let’s see if this works:

                  Your comment is awaiting moderation.

                  June 15, 2017 at 5:35 am

                  Let’s try again: (typo corrected)

                  That’s another discussion for another time. :) Here, we’ve been given a better system with expert determination in the form of IPR proceedings.

                  Your argument does not wash as that same “expert” you now want to present as “better” is exactly the same “expert” whose job it was in the first place.

                  Secondly, you are engaging in an (attempted) Ends justify the Means.

                  But no reason to toss out the whole thing.

                  Unless of course, those means run afoul of the Constitution and other protections that this thing called property gets.

                  That is more than just a little important.

        2. The historical evidence is unquestionable.

          Scire facias actions could be filed either at Kings Bench or in the Petty Bag of Chancellery. The Petty Bag was a common law court. The trial of disputed facts was to a jury — normally conducted at Kings Bench.

          The issue of validity was and always was legal — not equitable. A patent is not invalidated because of some moral lapse by the patent holder, or superior rights of another. A patent is invalid if was in public use or known prior to filing by the inventor, or if the alleged inventor is not the first and true inventor.

          There were NO exceptions to the above. None.

          In ex parte Wood & Brundage, Story, for the Supreme Court, held that Section 10 of the patent act that allowed for revocation of patents on action by private party to be a proceeding in the nature of a writ scrie facias. For THAT reason, and because the Seventh Amendment required it, he ordered that disputed facts be tried to a jury

    3. What? Markman would to me dictate the result – no IPR, but if IPR can exist (doubtful) then comity and deference must be given full collateral estopple (administrative estoppel) effect. Basically PTO has overreached (actually usurped) and now comes the downside.

      1. Basically PTO has overreached (actually usurped)

        No.
        Absolutely no.

        You are asking the wrong question, iwasthere.

        Aiming for the PTO has been shown to be NOT the right question to be asking, as the PTO is acting fully within the authority as granted by Congress.

        Instead, you must aim AT Congress and evaluate what Congress has done.

  23. Suppose the court holds that a patent owner has a right to have the validity of his patent tried in an Art. III court and to a jury at his option, the validity of his patent being a legal issue. That would make IPRs unconstitutional only to the extent that they proceed without the consent of the patent owner.

    Congress could make that fix — but as we all know, the way IPRs are structured, no sane patent owner would now consent to an IPR.

    Any way you see it, IPRs are doomed in their present form.

    But to those who have not asserted their rights before, they are waived. Prior adverse judgement and cancellations stand. I wish the alternative were true, because MCM did assert its rights, and lost. It would be odd indeed that everyone else had his patent restored, but not MCM.

    1. Deep deep thinker Ned Heller: as we all know, the way IPRs are structured, no sane patent owner would now consent to an IPR.

      How could IPRs be “structured” so a patent owner would consent to them?

      Realistically speaking.

      This ought to be good.

      1. One aspect that certainly could not hurt would be to make amendments a matter of right (and not just being able to ask for permission to make an amendment).

        Another would be to eliminate BRI.

        Maybe you should pay better attention…

        1. Oh, so if “BRI” was eliminated (pretty much zero evidence that it makes much difference to the outcome) and amendments “as a matter of right” were provided (also doesn’t make much difference as long as written description requirements are adhered to), then you’d advise your clients to consent (?!) to having their patents thrown into re-exam?

          Call me skeptical …

          1. “pretty much zero evidence that it makes much difference to the outcome”

            It’s not hard to gather such evidence. I’m actually fairly sure it’s played a role.

      2. “How could IPRs be “structured” so a patent owner would consent to them?”

        Actually if it were set up in some way as to be considered truly fair by patent owners, I could see some of them consenting in situations when they believed they had a strong enough case that it could serve as an expedient way to strengthen their position going forward (e.g. in settlements or litigation).

        Sort of like how some patent owners sometimes do ex parte reviews on themselves, for the so called “gold plating” effect, etc…

      3. 1. Make the judges Art. III judges, provide for a jury.
        2. Require standing, thus eliminating any need for a petition. The infringer simply files a complaint.
        3. Require C&C standard.
        4. Provide for a claim construction hearing.

        Now, limit the proceedings to patents and printed publications, but no more than 10. Limit the number of claims involved to 3 unless it is shown that due processes requires more than 3.

        Require the proceedings be completed in 1 year from the service of the complaint.

        Limit the proceedings to validity of the patent under 101/102/103/112/251.

        1. Ned, if Oil States wins this appeal, I will spend the rest of my career telling people that I first heard the argument from you, during your oral argument before the Federal Circuit in (some case I don’t remember).

          I found your explanation cogent and compelling – and I don’t recall either the opposing counsel or the Federal Circuit having a good legal argument in response.

  24. This is good news, as the cert petition is attacking AIA IPRs on three different grounds, and if this settles all them it will save a lot of further cert petitions and comments on this blog, one way or another.
    But would not the Sup. Ct. decision need to consider what should happen to hundreds of already decided IPRs and CBMs that had parallel lawsuits if there is an unconstitutionality decision? Plus, on that same basis, what about thousands of previously decided interference decisions against patents, ITC patent proceedings, patent reexaminations, etc.?

    1. Paul, we have gone over this before. The Supreme Court has already decided that both Article III and Seventh Amendment rights are waivable. Those who do not assert them, lose them.

  25. An even more interesting outcome — the AIA has no severability clause (even though the issue was debated). If IPR/PGR is invalidated, then the entire AIA is invalid.

    1. Not this again. Don’t get anon started.

      The Court has options available to it that don’t entail striking down the AIA.

    2. Gosh, that seems rather too simplistic. As the Court explained in Alaska Airlines, Inc. v. Brock, 480 U.S. 678, 684 (1987)

      A court should refrain from invalidating more of the statute than is necessary. Whenever an act of Congress contains unobjectionable provisions separable from those found to be unconstitutional, it is the duty of this court to so declare, and to maintain the act in so far as it is valid. The standard for determining the severability of an unconstitutional provision is well established: Unless it is evident that the Legislature would not have enacted those provisions which are within its power, independently of that which is not, the invalid part may be dropped if what is left is fully operative as a law.

      (internal quotations and citations omitted).

      Incidentally, if you actually read the AIA text, most of it consists of mark-up order (e.g., “§ 3… Section 100 of title 35, United States Code, is amended in subsection (e), by striking “or inter partes reexamination under section 311”…). Given that Title 35 already contains a severability clause, and the AIA is mostly just making revisions to the pre-existing Title 35 text, it seems to me that a second AIA severability clause is largely redundant. The AIA simply takes the effect of the pre-existing severability clause of the text into which the AIA edits are being made.

    3. I briefly researched that issue awhile back. In lengthy statutes with various different features it is not absolutely essential to have an express severability clause to avoid dumping the entire rest of the statute and all the patent decisions based thereon when the rest is clearly severable [unrelated] and not in issue, e.g., the extensive changes to 102, etc. in the AIA. If you have Sup. Ct. authority to the contrary let us know.
      But if what you suggest is true, would it not make it even more difficult [and objectionable to Congress] to decided for unconstitutionality of the entirety of widely bi-partisan Federal legislation [which is rare in modern times, e.g., the Obamacare cases] than usual?

    4. This is a ridiculous comment on so many levels

      1. The AIA is not a new law but rather an amendment to the 1952 act
      2. IPRs are in a separate chapter from the other amendments made in the AIA, so at most they would strike down the whole chapter 300 or whatever
      3. Even striking down the whole chapter would require the court to review questions that are not before it (like whether PGR and CBMs are unconstitutional).
      4. This would mean that every statute that does not contain an express severability clause can be struck-down because of one unconstitutional subsection.

      I could go on and on but I would begin to lose my mind. I haven’t even touched the case law cited below because it is not necessary to do legal research to debunk your suggestion that the whole AIA could be severed.

      The fact that this can be seriously suggested by a practicing attorney is mind boggling to me. I understand wishful thinking but there should be a limit to how much a seemingly intelligent and experienced attorney like yourself can rationalize without losing credibility.

      1. The fact that this can be seriously suggested by a practicing attorney is mind boggling to me.

        I also disagree with Mr. Boundy’s thesis in #5 above, but I think you are making more of this than it deserves. We all make a mistake once in a while.

        Incidentally, it is poor form to make anonymous criticism against someone who is not using a pseudonym. Would you feel comfortable making the same comments if Mr. Boundy could answer you in person?

        If not, then one really ought not to make the comment.

        If so, then why not make the remarks under one’s real name?

            1. As I said, the point is a bogus one.

              There is zero correlation with posting under your own name and ANY limitation as to commenting on others’ posts.

              Zero.

        1. My comment was probably unnecessarily harsh, I probably should have toned it down a little, or a lot.

          However, the wishful thinking that some engage in on here is often extremely frustrating to those like myself who want to debate the law without personal agendas getting in the way.

          It appears that Mr. Boundy does not like the AIA and that this dislike is clouding his opinion of this case. This is far from the first example of this behavior by a commenter, but it is the worst example I have seen thus far from a featured poster.

          I would rather not get into a debate about the value and ethics of pseudonyms on this thread, but my belief in them relates to the above. I like having a place to debate the law without it having my personal views on what the law ought to be have any bearing on my practice and clients.

          Maybe I need to find another blog where people debate rather than promote personal agendas all the time.

              1. Once upon a time, the rules required all posts to be of a personal nature (which undoubtedly would eliminate the ‘paid advocacy’ concerns that mar any attempts at true dialogue).

                Heck, given the rather odd enforcement mechanisms, that may still be a rule (of course, having the rule and any sense of objectively enforcing the rules appear to be in different universes).

        2. “Incidentally, it is poor form to make anonymous criticism against [the person of] someone who is not using a pseudonym. ”

          Agree with Greg as I’ve amended his comment above.

          I.e., okay to anony criticize the statement itself, shred it if that’s what’s called for; not cool to make the anony ad hominem criticism of the statement’s author.

          1. I can mostly agree Mellow – as long as the person is not trying to “borrow authority” from his name; or to the extent that an ad hominem is not baseless.

            Properly used, the rhetorical t001 of ad hominem does have merit, and like other rhetorical items such as satire, should not be blindly or unthinkingly dismissed.

          2. After I posted my 5.4.1, I tried to respond to it and rephrase it to make the distinction you are making here, Mellow Marsher. That response is still stuck. In any event, I am obliged to you for making the relevant distinction.

        3. Would you feel comfortable making the same comments if Mr. Boundy could answer you in person?

          The ability to answer “in person” is exactly the same (barring the odd editorial controls system) that ANYONE has with anyone else on this blog.

          You miss on both over-rating “comfort” and what this forum entails.

          1. The ability to answer “in person” is exactly the same (barring the odd editorial controls system) that ANYONE has with anyone else on this blog.

            If B makes a personal attack on A, then the personal details of B are very much relevant. The attack may damage A’s reputation if B is a well respected figure in the community. If, on the other hand, B is a known scoundrel, then the attack on A will have much less untoward effect. Moreover, B is constrained against really vile slander by knowledge that if the accusations prove false, this will adversely affect B’s own reputation.

            When “A” is a known person (e.g., David Boundy), then it is very much relevant to A to know the identity of B. This knowledge can make all the difference between genuine damage to a hard-earned reputation, and blithe indifference by a public that knows better than to trust B. Where both parties are anonymous, there is no possibility of real-world reputational consequences, and therefore it is not poor form to make ad hominem remarks. Where both parties use their real names, then both can take their lumps. Where the accuser is anonymous, however, and the target is genuinely named, that is poor form.

      2. Quasar18,

        You are incorrect in all four of your points.

        1) an amendment to an existing law remains new law. Nowhere is there any edict that a new law must be a new law in total.

        2) IF it is shown that severability was considered and rejected, there is NO such “default back to” any such chapter by chapter or section by section – it would ALL go.

        3) no such “other section review” is induced. You appear to not be grasping what the concept of non-severability even means.

        4) it is only in the absence of any consideration of whether or not to insert a severability clause that the defaults of presumed severability kick in. Your statement shows a lack of understanding on this basic default working.

        That you may feel that you can “go on and on” only shows how little you understand this area of law.

        You “could” go on and on, but do you really want to go on and on showcasing your lack of understanding?

      1. Not sure (yet) that you ARE wrong here, Mr. Boundy.

        On the flip side, since I have not found that Congressional debate on whether or not “the AIA has no severability clause (even though the issue was debated),” I have put on hold my arguments regarding such.

        If that debate IS shown to have happened though, ALL of the rejoinders against you here would be legally null, as ALL of the rejoinders only apply if Congress did NOT consider (and reject) the inclusion of a severability clause. It is only in the absence of such Congressional debate that the leaning towards severability attaches.

        One does not – and cannot – re-inject inclusion of severalability if severability was considered (debated) and NOT included – no matter how big or convoluted the law in question may be (this I referred to in the past as the “Chaebol effect.”

  26. Will IP law and constitutional law professors submit amicus briefs?

    I strongly suspect Silicon Valley will.

        1. Lemley: This isn’t even a close question as a matter of history or precedent so the fact that they took the case at all might mean change is coming

          Sure, that’s a “total meltdown.”

          You see, “anony”: it’s li es like the one you just told that justify ign0ring the t0xic b@rfbags in the patent maximalist cult. You guys really are some of the s cu m mi est s c umb ags around.

          1. He is saying “I have been right all along, but if we lose, it’s because the Supreme Court is changing the rules.”

            The behavior borders on child-like.

  27. DC: The conventional wisdom with Supreme Court cases is that they usually reverse the path set by the Federal Circuit.

    That’s not “conventional wisdom” but more like a trend. And the thing with trends is … well, they’re just trends. My take on this is that the Supremes were hoping that the whiniest whiners in the history of the universe would crawl back under their rocks. But they didn’t. So why not take this case and put the issue to bed.

    the results may well be a holding that PTO cancellation of issued patents is a constitutional violation.

    Which is an absolutely e f fing ins @ne result from any number of reasonable positions. Rest assured that if IPRs go down, there will be more “results” for the patent system than just the vanishing of IPRs. It’ll be time for a complete re-boot. And the maximalists will like that re-boot a lot less than IPRs. That much is absolutely guaranteed.

    What’s funny is that at the same time we’ve got a pack of cl 0wns trying to pass legislation that would make it possible to claim drinking a cup of coffee while thinking a “new” thought about a correlation. Does anybody think the Supreme Court isn’t aware of any of this?

    LOL Not enough popcorn in the universe when it comes to watching the worst attorneys on earth celebrate the nails being put into their own c0ffins. LOLOL

  28. I have to adjust my priors in view of this cert grant. My default assumption is that if the SCotUS takes cert without a circuit split, it means to reverse. Why bother, otherwise.

    My one lingering hesitation here, however, is that it also took cert on SAS Inst. If IPRs are ruled unconstitutional, then questions about whether the PTAB can institute on fewer claims than the petitioner requests are rather beside the point. In other words, why bother taking cert on both if SAS Inst. becomes moot in view of Oil States. I guess the tell will be if SAS Inst. gets DIGed.

    1. nah, the “default assumption” of this Court, for the past decade, has always been “which outcome will disadvantage patent owners”?

      if you use this axiom, you can pretty much predict 90% of SCOTUS “patent” cases

        1. Wouldn’t the Supreme Court not dismiss SAS and hold on to it at least so that it can be vacated and remanded in light of its decision in Oil States? If Supreme Court had denied cert to SAS, wouldn’t that have been a harsher result for SAS?

          Not knowing supreme court procedure, can’t any loser in an IPR appeal now file a GVR petition that just rides the coattails of Oil States? I think there will be more than usual – dozens?

          1. Not knowing supreme court procedure…

            Honestly, I do not know any more about the relevant procedural law here than you profess to know, so I cannot give you a satisfactory answer. I will be interested to read what answers other people give you, however.

            1. I know there is 90 days from Federal Circuit final decision to deadline for seeking cert at Supreme Court and statistics say that there have been plenty of patentee losers in IPR appeals. How many have there been in the last 90 days? Is it a no brainer for them to file a short “me too – what Oil States said” petition?

    1. Mooney will keep right on trolling. That in no way diminished the fun in seeing his prediction for this case squashed.

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