by Dennis Crouch
The America Invents Act of 2011 brought about sweeping changes to the US Patent System — most dramatic of these was the creation of the administrative trials: especially Inter Parties Review (IPR) and Covered Business Method Review (CBM).
But if initiation of the AIA Trial system has been dramatic, the potential outcome of Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC (Supreme Court 2017) is even more so. Oil States is asking the Supreme Court to find the IPR system unconstitutional and thus order the system dismantled.
Earlier in 2017, the Supreme Court agreed to hear the Oil States case on the following 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.
Oil States has now filed its very well written opening merits brief. Briefing will continue over the next few months, and I expect substantial amicus filing on both sides of the case, as well as input from President Trump’s Department of Justice.
The patent at issue in the case is U.S. Patent No. 6,179,053 that covers a lockdown mechanism for well tools. After being sued for infringement, Green filed the IPR petition with the USPTO and the agency eventually found the challenged claims unpatentable on a broad claim construction (after first rejecting the district court’s claim construction). The Federal Circuit then affirmed the case without opinion (R.36). The implication here: Oil States believes its patent is valid when properly construed.
The argument in this case begins with a focuses on history — for centuries, patent infringement and validity disputes have been decided in courts. “Article III promises a court to these litigants, and the Seventh Amendment promises a jury.” The America Invents Act (AIA) shifts the approach – to having an administrative agency handle the “trial proceedings.”
With this background, Oil States argument is straightforward:
As this Court has long held, “Congress may not ‘withdraw from judicial cognizance any matter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty.’ ” Stern v. Marshall, 564 U.S. 462 (2011) (quoting Murray’s Lessee v. Hoboken Land & Improvement Co., 18 How. 272 (1855)). That is just what Congress has done with inter partes review, which wrests patent-validity cases from federal courts and entrusts them to administrative-agency employees, who decide questions of law that Article III reserves to judges and questions of fact that the Seventh Amendment reserves to juries. Neither Article III nor the Seventh Amendment tolerates this circumvention. . . . “When a suit is made of ‘the stuff of the traditional actions at common law tried by the courts at Westminster in 1789,’ * * * the responsibility for deciding that suit rests with Article III judges in Article III courts.” Stern (quoting N. Pipeline Constr. Co. v. Marathon Pipe Line Co., 458 U.S. 50, 90 (1982)).
The brief does an excellent job of demarcating a justiciable line for the Court. According to the briefs, the problem with IPR isn’t really that the PTO is invalidating patents, but instead that the IPR regime is set-up as a full-on adversarial judicial proceeding to invalidate patents that is designed to promote a different outcome and without the Article III protections of district courts. That wholesale replacement of the Article III court and Jury rights is simply not allowed.
One way that the court could rule against Oil States is by ruling that the IPR cancellation process involves “public rights” rather than private property rights. To do so, however, would come in fairly directly conflict with the court’s recent statements in Stern.
More to come on this interseting ! Top-side amici briefs are due in 7-days.
Read the Brief: Oil States Energy Services 082417 AS FILED
The Federal Circuit rejected many of these arguments in MCM. Read the court’s decision here.
No Article III judge would construe mechanical lockdown to include hydraulic, when the inventor was perfectly clear that the invention was an improvement on the old hydraulic device.
Yet Cuozzo says it is okay to misconstrue the term in the PTAB in order to read on the prior art.
This is utter chaos. There cannot be dual interpretations of the metes and bounds of the grant.
Multiple interpretations and corresponding conflicting findings of validity requires that one branch acquiesce to the other, right?
Invention rights, I totally agree with this – that the use of BRI is unconstitutional. But BRI is only in a rule. We have to remember that.
Also recall that Judge Michel argued that BRI and court construction were essentially the same in the end. Why did he make that argument but to preserve BRI?
BRI and the taking of the stick in the bundle of property rights of the clear and convincing level of presumption of validity occur at a very particular (and independent subsequent examination/trial back in the executive agency Article I forum.
Do you at least recognize that, Ned?
I am not saying BRI is unconstitutional. Cuozzo settled that. I am saying the PTAB is permitted to misconstrue the metes and bounds of the patent. They can say that mechanical lockdown includes hydraulic. That is not the correct construction, as Oil States unequivocally disclaimed hydraulic sealing. This scenario is a significant contributor to conflict between the branches. That conflict must be resolved by the Supreme Court. Either the Constitution permits the Article III courts to be overruled by the PTAB, or the PTAB is unconstitutional.
Your “either -or” itself raises Constitutional infirmities, IR.
What does Oil States mean by “the Board is not supervised by an Article III court in any way?” Why is the Board not “supervised” by the Federal Circuit?
The Board is supervised by the Director of the administrative agency of the United States patent office.
They are talking about the district courts having zero oversight or power over the PTAB.
I know that – I merely answered PiKa’s question by giving him the answer as to WHO does have supervisory power over the Board.
(it is a rather important point to keep in mind nowadays)
On the whole, it was a dynamite brief.
Anony, please help me here. When the only action at common law to revoke a patent for invalidity was between the government and the patent owner, and when Oil States argues that when the action is between the Government and the patent owner that there is no constitutional violation, how is this brief dynamite?
Ned government as a party is different from government as a participant.
It’s sovereign immunity, and what waiver of sovereign immunity means for Article III.
Good start, anony. The rejoinder then is that when the government is suing, it is acting as a private party.
Yes, so? Its remedy was at law or in equity.
It’s not sovereign immunity that triggers Article I.
Trying to follow along, anony, but what do you mean by:
“It’s not sovereign immunity that triggers Article I.”
I am not seeing a “trigger” for Article I that is dispositive to any issues here.
Why the focus switch then from Article III back to Article I?
(further, this appears to circle back to the previous discussion concerning the impropriety of Congress attempting to create a pass into Article III land with a law that has the two forums of Article I and Article III – I am not sure that is where you are leading, and hesitate to apply that understanding to your words – can you clarify?)
…and the “let’s not have a dialogue trigger has been reached, so
Please Pardon the Potential (re)Post
Trying to follow along, anony, but what do you mean by:
“It’s not sovereign immunity that triggers Article I.”
I am not seeing a “trigger” for Article I that is dispositive to any issues here.
Why the focus switch then from Article III back to Article I?
(further, this appears to circle back to the previous discussion concerning the impropriety of Congress attempting to create a pass into Article III land with a law that has the two forums of Article I and Article III – I am not sure that is where you are leading, and hesitate to apply that understanding to your words – can you clarify?)
I think that was a typo. Waiver of sovereign immunity triggers Article I.
Someone who understands can explain why.
Anony,
Typo or otherwise – I am still not seeing the point that you are trying to make.
Why are you even bringing up Article I at all?
Brother Anon. Glug glug.
That’s not helping.
Did you have a point?
Also, anony, despite Oil State’s argument, a defense of invalidity is not an “action.”
Moreover, the defense of invaldity is a right of the accused infringer, not a right of the patent owner otherwise a patent owner would have a DJ action against an infringer of patent validity. Think Magna Carta. Due process, a trial by jury, is accorded those who life, liberty or property are at stake. If the accused infringer instead chooses to litigate that right in the PTO, he is entitled to — he can waive his right to a trial by jury.
What is different today from before 1791 in England is collateral estoppel. This puts the patent at risk in infringement cases, thereby giving the patent owner a clear jury trial right today. But not so before 1791.
There was only one “action” that could revoke a patent for invalidity, scire facias. As provided by the Magna Carta, the patent owner had a due process right to a trial by jury.
But, again, the action was by the government, and never by the private party. So, how are IPRs like scire facias?
It all gets a bit confused if you exclude government actions from the mix. IPR are exactly like scire facias actions — the action is initiated on petition just like scire facias is initiated by the petition to the Attorney General. Note also, that the government has a right to intervene in the IPR (on appeal) making the government a party to the action.
By confusing these issues and making no distinctions between actions, defenses, and the role of the government, Oil States has created a mess.
Ned again government as a party isn’t a factor here. Did the writ invalidate a government patent or the patent of a private party? If the former, sovereign immunity applies which means Article I claims. If the latter, did juries resolve questions of disputed fact? Was the ultimate legal question at law or in equity?
The meta details aren’t important here.
It’s a dynamite brief.
anony, do you concede that Oil States has conceded that the government may cancel claims from an issued patent without allowing the patent owner a day in court?
That is what reexams do.
That is what IPR do as well.
Your turn.
I will concede this:
There is a conflict in their argument. They argue the public rights cases brilliantly, but then argue that the USPTO can invalidate patent claims during reexamination because the process is “interactive.”
This concession, plus Cuozzo, puts them in checkmate. Dennis was all over it, and expect the USPTO to follow suit.
Though less clear, they also seem to argue that the USPTO can cancel patent claims during interference because an appeal to district court is possible. They drop the enforcement requirement however.
Patent owners need to come to terms with the fact that reexamination is constitutionally flawed just like IPR is.
anony, you and I are in agreement.
Pika, the degree of independence from the political branches is an important factor. Look at Breyer’s dissent in Stern.
Thanks Ned.
I see the Board as making factual findings (in place of the jury, and there, I can see a problem) and making conclusions of law, reviewed de novo by an Article III court (the CAFC) anytime the patent owner wishes to do so. I still have issues adopting this article III argument of unconstitionality as my own, because the IPR system ensure that, unless the patent owner decides not to appeal, the legal conclusions will be made by an article III court.
Pika, it is also critically important who decides the facts all the way along a case, including jurisdictional facts, and facts on the merits. The trier of fact must be independent and that is why we have an independent court system. It is not just the right to a jury trial.
The facts found by the PTAB are binding on the Federal Circuit to the same degree as facts found by a jury. So the real control over the result in any case is by the PTAB in substantially unreviewable form.
Facts are just facts.
Focusing on facts misses the important dynamic of the level of the presumption of validity that inures with the transition from mere inchoate right to full legal (property) right at the time of grant.
It is that context that differs between the first time that “just facts” are being applied and the second time that “just facts” are being applied.
If you have the wrong focus, if you pay no heed to the context, you will miss the taking that occurs at the legally distinct point of the initiation decision point.
Whether or not a secondary (and second) examination of the “just facts” is appealable, and the treatment at that later point of the “just facts” is just that: secondary.
Focus on the primary – and the issue of taking that occurs at that distinct legal point. What is occurring at that initial initiation decision point is very much a change in context within which those “just facts” are being viewed.
Greg, an idea.
1. Provide no presumption of validity until the patent has been tested in court. After that, C&C.
2. Allow parties that otherwise have standing to join in the first case using some sort of special appearance that prevents counterclaims. All will, however, be bound by the outcome on validity.
3. Try validity first — stay discovery on infringement and damages.
4. Require special juries composed of people who have the ordinary skills identified for the relevant art, but no more. Locate trials where such jurors might be found, but who otherwise would have no connection to the parties. Allow patent examiners to be such jurors.
Interesting idea – but not workable int he details lacking.
Who would pay for such a patent, having no presumption of validity? Or are you also suggesting that payment be eliminated in kind (you know, in a quid pro quo manner?). What then do you have but a registration system (or even better asked, why would not a registration system, costing pennies on the dollar not be a better way to implement your idea?)
anon, then make the first trial the last trial on validity.
Does not address my questionNed.
Who would pay for a patent that remains in effect worthless until a later court says it is valid?
How much would anyone pay for such?
These are drivers to what would be – in effect, if not in practice – a registration system.
Quid Pro Quo remains (justly) the driver here, and your tinkering just does not account for it.
anon, yes.
“anon, yes”
Not helpful Ned – is that a “yes” to my statement that you have nto addressed my question?
Such a statement does nothing.
I would much rather see you take the time and address what I have put in front of you.
What possible reason do you have for not doing so?
DC: One way that the court could rule against Oil States is by ruling that the IPR cancellation process involves “public rights” rather than private property rights. To do so, however, would come in fairly directly conflict with the court’s recent statements in Stern.
Refresh my memory, please. Where did Stern say that “patent rights” are “private property rights”?
More specifically, where does Stern say that mistakenly granted “patent rights” — i.e., claims that describe the prior art — are “private property rights”?
It’s a baffling, to say the least, that the Constitution permits a Federal agency to take public property and put it into private hands but, at the same time, it doesn’t permit the agency to undo its error when its error is pointed out to it. What’s the rationale behind that? Patents are just that incredibly awesome? That doesn’t seem consistent with what is indisputably written in the Constitution about Congress’ power when it comes to “promoting progress.”
MM – You are correct that Stern does not particularly address patent rights.
Regarding eminent domain – Although gov’t has power to take, the case goes to court.
Regarding eminent domain – Although gov’t has power to take, the case goes to court.
I’m not sure that taking property that belongs to the public and giving it to a private individual for their exclusive use qualifies as “eminent domain.”
This highlights a big part “problem” that pops up immediately if the public is denied the ability to petition the granting agency after grant. We’ve discussed this before but the Federal courts have created standing requirements — allegedly based on the Constitution — that greatly benefit patentees who, in many cases (nearly all cases in certain art units), have already benefitted from lopsided agency rules and systemic agency error.
*If* the Constitution mandates that private parties who have mistakenly been handed a right that belongs to the public must be taken to Federal court to reverse that error, how can it be the case that I (as a member of the public) have to prove that I’m being threatened with a lawsuit before I can ask that same Federal court to fix the agency’s mistake? It’s ridiculous. My right was taken away by the agency and given to someone else for their exclusive use. If I can show that, why do I have to show more (other than possibly a statement that I’d like to practice the patent)? What Constitutional principle justifies that restriction?
What part of presumption of validity (and that, to a clear and convincing standard) are you not understanding?
MM
How does Kyle Bass have standing to challenge pharma and biotech patents? Is that just because he is short the stocks?
I can cite a number of cases where rights were created because they were “allegedly” based on the constitution. That’s what federal courts do.
Do we need to recycle the whole “two different forums are involved in the single law that is the AIA” dialogue again?
>>I’m not sure that taking property that belongs to the public and giving it to a private individual for their exclusive use qualifies as “eminent domain.”
Rader always responded to this point by saying that the invention is new. It wasn’t there before it was invented.
Night Writer,
Malcolm continues to post in known fallacy mode even after he is appraised of his errors.
He makes it a premise of his view that the taking of property is perfectly alright because that property “belongs to the public,” but he merely ASSumes this to be the case and gives no weight at all to the legal fact of the matter that upon grant, the level of presumption in the exact opposite direction is clear and convincing.
It remains the point to be proven that he wants to ASSume as his starting point.
What other person, avowed to be in the profession of obtaining and protecting rights for patentees, behaves in such a consistent anti-patent mode?
That he makes his liberal left feelings known abounds (even as such posts with zero connection to patent law are expunged time and again).
Clearly, cognitive dissonance reverberates within Malcolm, to a point that he cannot control himself. For all of his “Accuse Others” meme and spin, for all of his “grown -up” talk, he acts least grown up of all.
And has acted in this very same manner for more than 11 years now.
Also quite clearly – for the larger conversation here – the impact point (legally) is the act of the grant.
It is AT the act of grant that an inchoate right is made into a full legal right.
Once that happens, other Constitutional protections inure.
ALL discussions on the matter simply must take this legal point into consideration.
On the difference between the grant of a patent and the grant of a land patent, you might want to consider the Supreme Courts views as set forth in US v. Am. Bell (1897). In the one case, property of the government, the public, is taken and given to one. In the other, the property of of the one is given to the public but with a short delay.
Semi-recent electromagnetic spectrum sales comes to mind…
😉
MM, where does it say in Stern that an invalid grant of public lands is not a private property dispute?
There are disputes between private property owners, between one owner and the next about this or that, and all that falls under common law litigation. But there are disputes about the original grants as well. Historically, the Supreme Court has said that these must be resolved in court. The Supreme Court has also said that the same must be done with respect to patents of invention because they too are property just as much as are land patents.
So, given the above history, do you think Stern v. Marshall was only talking about common law disputes?
I’m waiting for MM to file his amicus brief. Surely it will be the BEST. Oil States might as well just quit now.
Bluejay,
A mild reproach (saved from the “do not have dialogues filter”):
August 26, 2017 at 9:48 am
I disdain calls for “0ut1ng,” even of Malcolm.
Anonymous and pseudonymous posting has a long and hallowed tradition in this country.
Let’s focus differently please.
I suppose it is ill advised of me to offer thoughts on a subject after reading only one side’s brief, but when have I ever let considerations of what is wise constrain me in this forum: I find Oil States’ VII amendment arguments as week as Ned finds them, but I find their Art. III arguments surprisingly convincing.
I think that I have been wrong to say that patent validity questions can fit into a public rights framing. Certainly Oil States addresses all of the points that I have raised in favor of the public rights framing in ways that I find convincing and hard to rebut. I concede that I have been mistaken.
Of course, if this is the case, then the logical conclusion is that IPRs are unconstitutional. That is regrettable as a matter of public policy, but sometimes the ends cannot justify the means. One cannot tear down the Art. I/III separation of powers simply because it might be convenient in one limited circumstance for one limited purpose.
If this is the case, then it seems to me that the next question that one should ask is “how can one achieve the same purpose as IPRs are meant to serve, but do so in a constitutionally sustainable manner?” Based on what I have just read, I see two ways forward on that score:
(1) Congress could create a special section of Art. III district courts with the exclusive jurisdiction to hear §102/§103 issues. That is to say, if §102/§103 issues are raised in an infringement suit, the infringement district court would have to refer those issues to the specialty court for hearing there. This court should have a statutory mandate to appoint only science-trained judges. Just as in IPRs, the specialized invalidity court could be statutorily mandated to reach a final decision in one year (18 months for good cause shown). The FRCP could be amended to simplify discovery in these particular courts, to help along that one year limit. Congress would do well to specify (1) the standard of proof (I really do not care whether it is preponderance or clear-&-convincing, although the fact that Congress chose preponderance in IPRs suggests that they would choose preponderance here as well) and (2) claim construction standard (I can see no real justification in this circumstance for BRI, but it is not a point I really care about anyway, so long as Congress is clear, so that there is no room to complain about/litigate this point). This Art. III court would, because of its short duration and limited discovery, achieve much of the cost/time savings that IPRs were mean to accomplish, but because it is an Art. III court, there could be no question of a separation of powers problem. Naturally, this court would also have Art. III standing requirements.
(2) The Congress could, after the IPR scheme is struck down, re-enact the exact same scheme, but with the requirement that the IPR scheme would only have jurisdiction over patents that are filed after the new IPR scheme comes into force. In the same statutory amendment, Congress could require that language be inserted into all patent applications, whereby the applicant acknowledges and agrees that any patent granted on this application be amenable to post-grant challenge in the PTAB. That is to say, it seems to me from Oil States brief that there is no problem if the patentee consents to PTO adjudication, so one could simply make consent to such adjudication as prerequisite to patent applications, and the whole problem is cleared up.
As between the two, I have a slight preference for #2 (it is easier), but I suppose that #1 is the more constitutionally ironclad (#2 might run up against the unconstitutional conditions doctrine).
Something has to be done and Congress has to do it. They did it before with bankruptcy law. At least the bankruptcy judges are employed by the Judiciary and not the Executive.
Oil States addresses all of the points that I have raised in favor of the public rights framing in ways that I find convincing and hard to rebut. I
LOL I’m glad you’re not my attorney. Wow.
Congress could, [if] the IPR scheme is struck down, re-enact the exact same scheme, but with the requirement that the IPR scheme would only have jurisdiction over patents that are filed after the new IPR scheme comes into force
For what it’s worth, Oil States distinguish between IPR and the pre-existing inter partes re-exam, because there isn’t any distinction to be made.
Congress could require that language be inserted into all patent applications, whereby the applicant acknowledges and agrees that any patent granted on this application be amenable to post-grant challenge in the PTAB
The statute already defines the “patent right” as a conditional “right” subject to recovation by the granting agency and it has done so for many many years (before the AIA). This language adds nothing and the idea that the Constitution (LOL) mandates such langage appear on the printed document because “patent” is beyond silly.
All that said aside, the main point of your comment stands: if the existing IPR system falls because the Supreme Court blows this case, what happens next is going to be despised by the patent maximalists just as much as they despise IPRs. I laughed out loud when I read DC’s comment (“According to the briefs, the problem with IPR isn’t really that the PTO is invalidating patents” <— LOLOLOLOLOLOLOLOLOL As if).
I mean, what's the alternative? The PTO has been running white hot and churning out junk like there's no tomorrow for decades. That’s why the IPR proceedings were created in the first place. There’s no returning to “the status quo” because the status quo wasn’t acceptable.
Ooops, self-edit here: Oil States doesn’t distinguish between IPR and the pre-existing inter partes re-exam, because there isn’t any distinction to be made.
I’m glad you’re not my attorney.
So am I.
Oil States distinguish [sic between IPR and the pre-existing inter partes re-exam, because there isn’t any distinction to be made.
Not true. A party dissatisfied with the outcome in an inter partes reexam could appeal to the ED Va, and have a do-over of the whole process in an Art. III district court. This meant that the inter partes reexam was never going to arrive a different outcome than one might get in district court, because if ever it did arrive at such an outcome, one could always just transfer the proceeding to a district court. Not so for the AIA’s IPR scheme.
There’s no returning to “the status quo” because the status quo wasn’t acceptable.
Here is the part where you and I agree. The fact that Congress was motivated to take steps to create the IPR system tells me that they are not satisfied with the way things were working pre-AIA. If the current IPR system is tanked, I have to expect that its replacement will be coming down the pike in short order.
This meant that the inter partes reexam was never going to arrive a different outcome than one might get in district court
“Different outcomes” is not the problem with IPRs. There is no evidence that IPRs are systematically invalidating patents that shouldn’t be invalidated. None at all.
have a do-over of the whole process in an Art. III district court.
The “whole process”? No estoppel? I don’t think so. Also, applicants may already appeal every aspect of the PTAB’s decision-making process to the CAFC — an Art. III district court. So what’s the problem?
If the current IPR system is tanked, I have to expect that its replacement will be coming down the pike in short order.
The same people complainng about “oh-so-unfair” IPRs will fight tooth and nail to prevent anything from “coming down the pike” that will make it easier to invalidate junk patents. You can bet your life on that
But they’re all about “patent quality.” Sure they are! After all, they told us so. And they’re very serious people. The most important people ever! The world revolves around them and the public just needs to step aside and let them “monetize” their junk because that’s the way the Founders wanted it.
“Different outcomes” is not the problem with IPRs. There is no evidence that IPRs are systematically invalidating patents that shouldn’t be invalidated. None at all.
Sure. I do not disagree. Still and all, there is a substantive procedural difference between pre-AIA reexams and the new AIA IPRs. I agree that in practice the two come to the same outcome, but when the whole lawsuit is about procedural protections for patentee rights, you cannot just ignore that the patentee had rights under the pre-AIA scheme that the patentee does not have under the AIA scheme.
No estoppel? I don’t think so.
Correct, no estoppel. The district court in appeals from the PTO was not estopped by findings or holdings of the PTO. The district court was allowed to find new or contradictory facts opposed to those found by the BPAI.
Also, applicants may already appeal every aspect of the PTAB’s decision-making process to the CAFC — an Art. III district court.
Not to put too fine a point on it, but the CAFC is not a district court. It is a circuit court of appeals. The CAFC can review conclusions of law de novo, but it can only review findings of fact for clear error. By contrast, the district court is allowed to review both law and fact de novo. This is a meaningful difference.
The same people complainng about “oh-so-unfair” IPRs will fight tooth and nail to prevent anything from “coming down the pike” that will make it easier to invalidate junk patents. You can bet your life on that
Once again, on this we agree. Many of the voices cheering on Oil States do not really care a fig about the separation of powers or the right to a jury trial. They just want to see the hated IPR system destroyed, and any lance that can kill that dragon is good enough as far as they are concerned. They will be sorely disappointed when they see that a SCotUS reversal is not the last word on this subject.
The district court in appeals from the PTO was not estopped by findings or holdings of the PTO.
That’s not the “estoppel” I was referring to.
And the CAFC is also not estopped from finding that the PTAB made an error in its “findings” or “holdings.”
the whole lawsuit is about procedural protections for patentee rights
There are no “procedures” that are absent from IPRs or inter partes re-exams that result in any unfairness to the patentees. That’s the point. If there’s been unfairness, the patentee can appeal.
The argument by the patentee here is not about “procedural protections”. It’s about whether the entire system needs to be biased in a facially absurd fashion towards the patentee even when the administrative agency (which, according to the patentee’s own arguments, is surely also “unconstitutional”) totally messed up.
Again, if we assume the positions adopted by the patentee, if a patent is property than a mistakenly granted patent is stolen property. It’s property stolen from me by the agency and handed to the patentee. And somehow I don’t have a Constitutional right to have that property returned to me? I have to first wait to be sued or threatened with a lawsuit? That’s ridiculous.
You need to look at this situation through the lens of the possible, not through the microscopic pinhole of this tinfoil hatted “Google stole my idea” charlatans and wealthy entitled whiners. Look at what the PTO managed to do under Kappos. Imagine the damage that could be done by the agency.
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Umm…. Judge Newman has provided at least three CAFC dissents in the past year where the PTAB has reached a final decision that a claim is invalid in exact opposition to a previous district court opinion that the claim was “not invalid” on the same prior art. (I think it was the same party in 2 of the 3 cases but I might be mistaken.) The majority CAFC opinion justified the inopposite decisions based on the differing claim construction standards and burden of proof…but that is exactly the systematic process which was deliberately set up at the PTO.
In one case they decided that even though the district court patent validity decision was sufficiently final (fully appealed and upheld though the CAFC)…a continued unresolved controversy over remanded damages (which had NO further relation to the validity decision) was sufficient to prevent estoppel at the PTAB….an issue that arisen in several cases with differing CAFC panels reaching different decisions for one reason or another.
(Just because the PTAB and district court claims constructions aren’t ALWAYS reach different decisions…doesn’t mean it isn’t systematic. It’s the system (different claim constructions, burdens of proof) that has been created which ALLOWS it to happen.)
Former CAFC Chief Judge Mitchel said it best in his article last year when he said that the BRI claim construction utilized by the PTAB for an issued patent effectively “morphs” into the same as the district court (plain & ordinary to an ORDINARY skilled practitioner of the art)….since post-issuance, the boundaries of the patent cannot be considered to be unspecific, thus, there is only ONE REASONABLE interpretation of a claim term…i.e. the plain & ordinary one used by the district court system.
“So am I.”
Truer words have never been spoken.
MM, something has to be done about both the PTO and the Federal Circuit. From 10,000 feet POV, we really didn’t have a problem about a flood of junk patents until those two got together. (Might want to extend this back just a bit to Judge Rich’s tenure on the CCPA.)
Surely, if 80-90% of the patents were rock solid as issued, having claims that were limited to the disclosed invention, were clear and definite and did not read on the prior art, I am confident that you would support providing some presumption of validity and that would allow the patent owner to step into court to enforce without undergoing any further PTO examination.
Ned, I agree that if (1) we got rid of logic patents and (2) put a few more reasonable restrictions on how and by whom they are accumulated and asserted then most of the worst problems in the system immediately disappear and the need for IPRs would be greatly diminished.
MM the Google Paid blogger telling us what is good for Google and the infringement lobby !
[W]e really didn’t have a problem about a flood of junk patents until… Judge Rich’s tenure on the CCPA.
This does not seem like a supportable assertion. Justice Jackson was complaining back in 1949 that “[i]t would not be difficult to cite many instances of patents that have been granted, improperly I think, and without adequate tests of invention by the Patent Office.” Jungerson v. Ostby & Barton Co., 335 U.S. 560, 572 (1949). Judge Rich did not join the CCPA until 1956. Clearly people have been complaining about a plethora of low quality patents long before Judge Rich came on the scene.
Might I suggest that the problem of poor quality examination is structural, and is not going to be solved either (1) by the Court creating tighter standards of “invention” or (2) by some extra measure of training of the Examiner corps. The PTO needs fees to keep the lights on, and the fees are paid by people who want patents. If the PTO gets a reputation for being strict in its standards for granting, fee payers will decide that it is not worth their while to pay the fees. Therefore, the PTO’s incentive is to be lax. The PTO’s incentive will always be toward lax examination, no matter how tough the SCotUS makes its pronouncements about patentability, and no matter how loudly this or that interest group or Congressional investigation panel pounds the table and demands “better quality.”
Given this structural predisposition toward laxity in examination built into the PTO’s existing incentive structure, there are really only two ways to solve this problem: (1) you can either undo the incentives toward laxity on the front end (e.g., by making the PTO refund fees if a patent is later found invalid); or (2) create some after grant incentive toward stricter standards in assessment of validity (e.g., IPRs, where the fee payers are the folks who want to see a patent tanked, instead of granted). Naturally, these options are not mutually exclusive, so you could do both.
Supposing that getting rid of the CAFC would have any significant effect, however, strikes me as wishful thinking. The fact that Justice Jackson was complaining of poor quality examination back in 1949 tells me that the regional circuits were no better at incentivizing PTO quality than is the CAFC today.
MM the Google Paid blogger telling us what is good for Google and the infringement lobby !
Greg, how would such forced consent work to “clear up” the “problem”?
Can the governments role to protect individual rights under the constitution come with “conditions” which essentially abrogate those very rights? Assuming the Art III requirements are not matters only of superficial “form” but of pith and substance, how could forcing individuals to agree to give up aspects of protections/rights in order to secure them (what is left of them) be defendable?
Let us assume the constitution protects inalienable rights of persons rather than permissions granted by the state or king. If one assumes that once an inventor has created an invention to which he/she has a constitutionally protected rights therein: i.e. a property right arises by virtue of the creation of the work, not later by edict of the state. Of course afterward there is a process of the rights being recognized and validated by grant of a patent (and thereafter enforced) all of which could reasonably fall under the meaning of “secure”. I can only assume by tacking on “conditions” to the securing of the rights.. i.e. requiring the inventor to agree to give up something of the fundamental nature of the rights he is attempting to secure … that that somehow would run afoul of the same constitutional principles.
I may be way off base here… please enlighten me.
Think “inchoate” versus vested property right…
anony If one assumes that once an inventor has created an invention to which he/she has a constitutionally protected rights therein: i.e. a property right arises by virtue of the creation of the work
Oh good grief. There is absolutely nothing in the Constitution that suggests you have some sort of Constitutional “right” to an idea, i.e., that somehow the Constitution (?!) recognizes that because you thought up something first that somebody else can’t think of — and use — the identical solution afterwards without violating your imaginary “right”.
There is some language in the Constitution expressly suggesting the exact opposite, however.
Inalienable rights are not recognized by the Constitution? You’re a real piece of work.
Inalienable rights are not recognized by the Constitution?
Nice try. Better tr 0lls please.
MM the Google Paid blogger telling us what is good for Google and the infringement lobby !