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.

216 thoughts on “Cert petition granted in Oil States

  1. 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.

  2. 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.

  3. 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. anon, have you read Murray’s Lessee yourself?

      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?

    2. 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 OCPD. Never change anon. Never change. At least you make it ez to spot on occasion.

          So predictable.

          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…? ( 😉 )

    3. That might actually be one good reason why the Supremes took this case?

  4. 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.)

  5. 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. Still a private right. Why wouldn’t it be?

      1. That is just one of the issues in the question they took cert on.

        1. I do not understand your answer to anony, Paul.

    2. 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, 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.

  6. 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.

  7. 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.

    1. Thanks for the update, Ned. This is useful to know.

  8. 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).

  9. 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. Superseded you say….

            You do know that such was NOT the case with patent law, right?

            BOTH sets are in place right now.

            1. Superseded as to new applications, then.

          2. 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.

    2. See all the comments re severability in response to number 5 below.

  10. 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. Ned, I read Murray’s Lessee. Have you read Crowell v. Benson?

          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. Due Process (or lack thereof) comes back around with the intersection of takings law and what happens at the initiation decision point of IPRs….

              3. 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.

  11. Is this the same as a legal article cited below on this specific subject, or another one?

    link to papers.ssrn.com

  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. Salvage re-re-attempt:

              You dismissed the pregnancy analogy improvidently, and thus you misapply the bundle of sticks analogy.

              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. You c/l/o/w/n/s will say anything.

          So, tell it to the judge.

          Or in this case, all 9 of them.

        3. 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. You are conflating “legal versus factual” with property (private) versus public right.

          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.

        4. 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.

    2. MM: missing citation. Plz correct or start your points with “I think that…”

    3. Thinking an issued patent is a public right rather than a private right/property is a mental illness.

    4. The Seventh Amendment so remotely suggests.

    5. 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. Says the guy who refused to take any of the previous comments seriously…

      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.”

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

      1. The Accuse Others meme in work (again)…

        :-)

    3. 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.

    1. Who cares about separation of powers…

      Juicy indeed.

      😉

  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. Ouch. The truth hurts.

      2. “Peer review” is rather meaningless in and of itself.

        A den of thieves will still promote thievery.

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

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

          1. The star wars humor response blocked, it remains.

        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?

        1. Nope.

          I am not Mike.

          Plenty of brother and sister “anons” out there.

          😉

    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

    1. iwasthere will then be 1000000% on the trump train. lol.

  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. Maybe in patent cases. I don’t think that is a trend in, say 4th amendment cases or free speech cases.

        1. I expect that you are right about that.

      2. 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. What an unethical paid propagandist you are MM.

        3. 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.

        4. Your view of “aberration” just does not hold up to scrutiny.

      3. Think Myriad.

    2. How would the item of “limiting Markman” even make it into a holding on this case?

      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.

    3. 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

    4. 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. Just offering some suggestions, nothing more.

          2. “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. Why not also under §185?

        2. All seems reasonable to me. Except you have to fit an appeal into the 1 yr.

        3. 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.

      1. LOL.

        You must have missed my last comment on this topic.

    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. Pure B$ on the “p00r form” comments Greg.

          1. No it isn’t. At least Greg posts under his name, something neither you nor Mooney do. Nor yours truly.

            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.

        2. 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. Should read: Maybe I need to find another blog where people debate rather than promote PROFESSIONAL agendas all the time.

            1. You must be new here. This place is a hissing, hissing snake pit.

              Enter at your own risk.

            2. I think either of “personal” or “professional” agendas are commonly shown here, so either works fine.

              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).

        3. “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.

        4. 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?

    5. I’m capable of being wrong.

      Fortunately, this is the first time in 2017, so I’m running ahead on my quota. :-)

      1. Same here. :)

      2. 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. My only question is whether Lemely’s brief will be honest.

      1. Check his twitter feed. He is already in meltdown mode.

        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. How about: nauseatingly obvious CYA.

        2. Meltdown? That tells me a lot about his ethics. Situational.

          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. The blind squirrel found a nut.

    2. I don’t know what DIGed means but SCOTUS can issue an order that cert was improvidently granted.

      1. DIG=”dismiss as improvidently granted”

        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?

  29. Hey MM,

    LOLOLOLOLOLOLOLOL.

    Cert granted.

    1. Hey anony: so what?

    2. 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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