Right to a Jury Trial in Patent Validity / Revocation

by Dennis Crouch

Oil States Energy Services, LLC, v. Greene’s Energy Group, LLC., now pending before the Supreme Court raises one important question:

Issue: Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

In June 2017, the Supreme Court granted certiorari and briefing is expected to continue through November 2017.

One amicus group did not wait till their filing deadline but instead has preemptively filed a brief “in support of neither party” even before any of the party briefs have been filed. Professor Tomás Gómez-Arostegui has focused on IP legal history for the past decade joined with British legal history scholar Sean Bottomley to establish several basic historical points:

Records from the 18th century are unequivocal and demonstrate that juries decided validity questions (including novelty) at several stages of the life of a patent. Juries were tasked with determining validity during infringement litigation, whether initiated at law or in equity; during court proceedings for revoking patents; and sometimes during patent prosecution. For a time, the Privy Council could also revoke patents, but it last did so in 1779. . . .

[READ THE BRIEF: 16-0712 ac H Tomas Gomez-Arostegui]

A primary thrust of the brief is to challenge the conclusions made by Mark Lemley in his article, Why Do Juries Decide if Patents are Valid?, 99 Virginia L. Rev. 1673 (2013).  The brief “corrects recent misconceptions on the subject, including those
appearing in [the Lemley] article relied upon by the parties.”

Fairly silly way to conduct business, but the constitutional permissiblity of the AIA Trial regime will depend upon whether revocation of patent rights were handled by jury trials in England around the time the Bill of Rights was adopted.  As the Supreme Court has repeatedly affirmed, “The right of trial by jury thus preserved is the right which existed under the English common law when the Amendment was adopted.” Balt. & Carolina Line, Inc. v. Redman, 295 U.S. 654 (1935).  Although its fairly complex, the basic questions are (1) is revocation a common-law question (as opposed to one of equity) and if so (2) was it handled by a jury?   This is where Prof. Gómez-Arostegui steps in, writing:

  • In infringement actions: “the validity of a patent (if contested) was always decided at law, regardless of where the plaintiff initially filed. Moreover, the law courts would always try the case before a jury unless the parties had [otherwise] stipulated.”
  • In injunction actions filed in the Court of Chancery, the court would generally force the parties to file a separate common law action in order to permit the jury to resolve validity.
  • “[J]uries regularly decided the following issues related to validity: (1) whether the invention was new; (2) whether the patentee was the actual inventor of the purported invention; (3) whether the invention was useful; (4) whether the specification accurately described the claimed invention; and (5) whether the specification enabled a person working in the relevant art to construct the item described in it.”
  • “In a recent article, Professor Lemley argues that an ultimate or overarching issue of validity existed in the late 18th century that was ‘not itself a question
    of fact,’ but was instead a question of law. . . . Given the significance of this assertion, and the fact the Respondent has already relied upon it, it requires close inspection. In short, Lemley is incorrect and he cites no authorities that support the proposition.”
  • Patent revocation via writ of scire facias did operate via the Court of Chancery.  However, according to the brief here, “The Court of Chancery always sat as a law court in these instances and always sent issues of fact related to validity to the King’s Bench for a jury trial.” “Notably, scire facias did not require fraud or inequitable conduct, as the Federal Circuit claims [in Lockwood].”

One big gap for Gómez-Arostegui is with regard to the Privy Counsel who “could also revoke patents” including when “not new.”  The last revocation in this manner was 1779 on an issue of national security.  There are, however, no records of any petitions filed after 1780 and contemporary writing suggest that the revocation process moved entirely to scire facias.   The brief suggests that, if it were available, parties would have continued to push through the Privy Counsel because scire facias was so expensive and complicated.

= = = =

Now, lets say that the Supreme Court buys the notion that patent validity was a question of law requiring a jury trial, there is still another line of important Supreme Court precedent saying that “the Seventh Amendment is generally inapplicable in administrative proceedings, where jury trials would be incompatible with the whole concept of administrative adjudication and would substantially interfere with the . . . . [agency’s] role in the statutory scheme.” Curtis v. Loether, 415 U.S. 189, 194-95 (1974), quoted in Greg Reilly, The Constitutionality of Administrative Patent Cancellation (2017).

187 thoughts on “Right to a Jury Trial in Patent Validity / Revocation

  1. 22

    I have typed up the record of Bynner v. The Queen, a case decided in the Court of Queen’s Bench, in the Exchequer Chamber (which at that date functioned as a court of appeal for cases originating in the three common law courts of Queen’s Bench, Exchequer of Pleas and Common Pleas).

    I have made this transcription of the account in the Law Journal Reports for the Year 1846 available here:

    link to distantperspective.blogspot.com

    As Prof. Gomez-Arostegui and Dr. Bottomley point out, on pages 31 and 32 of their brief, Prof. Lemley cites Bynner v. The Queen as authority, in his article Why do Juries decide if Patents are Valid?, in note 50 on page 1685, together with unrelated authorities on equity practice, for his statement that “The Chancellor remained responsible for rendering judgment, though how much power the court had to ignore the jury remained unclear until well into the nineteenth century”. Prof. Gomez-Arostegui and Dr. Bottomley refute this statement in their amicus brief.

    I would just add that, as a non-lawyer, and a non-expert, I cannot see anything, in the arguments of counsel for both sides, or in the opinion of the court, that would give any color whatsoever to the suggestion that the Lord Chancellor’s jurisdiction might have been equitable, not legal, or to the suggestion that the Lord Chancellor had any discretion whatsoever to address substantive questions in rendering judgment in scire facias cases sent to the Court of King’s (or Queen’s) Bench because the require a jury trial on issues of fact.

    I have already moved on to Jeffreson v. Morton, a 17th century case from the reign of Charles II, reported very extensively in Sir Nicholas Saunders’s reports, which determined that, where a scire facias commences in chancery, but involves issues of fact, the entire record was tried in the Court of King’s Bench, in other words, not only the issues of fact needing to be tried by a jury, but also the demurrers involving only questions of law.

    1. 22.1

      Distant, Lemley’s confusion is consistent with the general confusion in the American bar that the Chancellor was using his equitable powers in Chancery and that the jury was advisory — consistent with the English and American practice for equity cases post 1800.

      There does not seem to be any clear understanding that a scire facias was a legal remedy, start to finish.

      More, there is a reason the Chancellor, acting in his equitable capacity, could not decide issues of law. A very good reason. That was the exclusive province of the common law courts.

      Justice Story of the US Supreme Court got it right in ex parte Wood & Brundage: “JUDGMENT. … that the said Judge do award a process, in the nature of a scire facias, to the patentees, to show cause why the said patent should not be repealed, with costs of suit: that upon the return of such process, as duly served, the said Judge do proceed to try the cause upon the pleadings filed by the parties, and the issue joined thereon; and that if the issue be an issue of fact, the trial thereof be by a jury; if an issue of law then by the Court, as in other cases.”

      1. 22.1.1

        Ned, you and Distant Perspective ought to submit an article for publication in the ABA magazine, where it may have more effect than just one of so many amicus briefs in this case. Suggested title, e.g.,: What does the Constitution’s adoption of English common law mean?”


          Paul, what really would be interesting is if the Courts would address the issues and arguments presented to them for decision. I raised the Seventh Amendment at the IPR stage, and my brief to the Federal Circuit had the procedure on scire facias correct. Ditto to the Supreme Court, twice now. Why? Because I relied on English treatises as opposed to American, who ever seem lost in agendas.

    2. 22.2

      Attempting some sort of analysis of Bynner v. The Queen, to make it clear what was, and, more significantly for Oil States, what was not argued.

      The name of counsel for the patentee is given as Webster. I would presume that this was Thomas Webster, a noted patent lawyer who compiled Webster’s Patent Cases. The Court conceded that he had an arguable case, and authorities that supported his side, but the Crown had conflicting authorities, and the Court determined that the balance of authorities lay on the side of the Crown.

      To rescue his client’s case, Webster, as counsel for the patentee, had to prove that the patent had not been extinguished by the judgment pronounced at the conclusion of the jury trial in the Court of Queens’s Bench. It was therefore essential for him to make the case the the judges of the Court of Queen’s Bench had no authority to pronounce judgment using the form of words that actually cancelled and annulled the patent.

      The proposition that Webster sought to establish was the following: the authority of the Lord Chancellor to pronounce judgment in the form of words (“quod prædictæ literæ patentes dicti domini regis revocentur, concellentur, evacuentur, adnullentur, et vacuæ et invalidæ, pro nullo penitus habeantur et teneantur; ac etiam quo irrotulamentum eorundem cancelletur, cassetur et adnihiletur:”, translating into a direction that the patent be cancelled, annulled, derived of all force and effect etc.) was vested in the Lord Chancellor by virtue of his office as Lord Keeper of the Great Seal, and therefore this was a judgment that he alone could pronounce, and in particular, he argued, this was not a judgment that the Court of Queen’s Bench could lawfully have delivered. Therefore, Webster argued, scire facias proceedings to annul letters patent were an exception to the general rule, decided in the 17th century case Jeffreson v. Morton that, where scire facias proceedings commence in the High Court of Chancery but are transmitted to the Court of King’s Bench for trial, the case stays in the Court of King’s Bench and final judgment on all issues is given there.

      Note that Sir Edward Coke (4 Inst. 80) had written that, in the case of scire facias proceedings for a variety of purposes including repeal of letters patent that commence in the High Court of Chancery, “f the parties descend to issue, this court cannot try it to a jury, but the lord chancelour or lord keeper delivereth the record by his proper hands into the kings bench to be tried there; because for that purpose both courts are accounted but one, and after triall had to be remanded back into the chancery, and there judgement be given. But if there be a demurrer in law, it shall be argued and adjudged in this court.” But the courts had long ago determined, in Jeffreson v. Morton, that Sir Edward Coke had been mistaken in saying that the case had to be remanded back to the High Court of Chancery for judgment.

      Webster also appealed to the authority of Sir Edward Coke (4 Inst. 88) for the following: “Hereof our lord chancelour of England (for forein chancelours, it may be, have not like authority) is called cancellarius, à cancellando, i. à digniori parte, being the highest point of his jurisdiction to cancell the kings letters patents under the great seale, and damming the inrolment thereof, by drawing strikes through it like a lettice.” Note though that Coke did not say, in so many words, that the other common law justices did not have authority to pronounce judgment in a form of words with the effect of cancelling and annulling the patent: it seems that Webster (counsel for the patentee) relied on other authorities in this regard.

      Webster conceded that, under the common law as it stood prior to the Letters Patent for Invention Act of 1835. the judgment of the Court of Queen’s Bench damning the patent would have been final: “The Queen’s Bench have no power to cancel the Queen’s grant: that appertains solely to the Lord Chancellor virtute officii, who may, notwithstanding this judgment, refuse to cancel the letters. At common law the judgment of the Queen’s Bench, that the patent was void for want of novelty, was final; but by 5 & 6 Will. 4. c. 83. s. 11. the patentee may now cure a defect in his specification by disclaimer, and the patent would not then be wholly void; this may be done after judgment is given on the sci. fa.; and it would be an injustice if, in such cases, the Queen’s Bench could repeal the patent, which, after all, the Lord Chancellor might refuse to carry into full effect.”.

      In other words, Webster was arguing that, in the new situation created by the act of 1835, the Lord Chancellor had powers, not previously available to him, to allow disclaimers by the patentee that might have saved the patent, and, in those circumstances, he could have refused to annul the patent.

      But, in the context of Oil States, it is important to note that Webster also stated that, under the law as it stood before 1835, the judgment of the Queen’s Bench that the patent was void would have been a final judgment. Thus Bynner v. The Queen cannot be cited as authority for any proposition that, prior to this 1846 case, it was unclear how much discretion the Lord Chancellor had to overrule a jury verdict.

      Summarizing the remainder of the case, the Crown presented other authorities and legal argument contradicting Webster’s authorities, and they made a search of medieval court records held in the Tower of London, locating records of scire facias actions to annul letters patent where the Court of King’s Bench had given judgment cancelling the patent, the record being then obtained by the Chancery using the mechanism of writ of certiorari.

      The case therefore went against the patentee.

  2. 21

    Belatedly commenting on this posting concerning amicus brief by Tomas Gomez-Arostegui and Sean Bottomley in the forthcoming Oil States SCOTUS case. Specifically, I want to focus on the discuss of Rex v. Arkwright in II.B.ii. of that brief, on pages 21, 22 of the brief (and the authorities cited in note 68).

    In brief, the authorities bear out Gomez-Arostegui and Bottomley in their analysis of a claim made by Lemley that validity was a question of law based on fact, Moreover I can provide another citation. freely available, consistent with the summary of Gomez-Arostegui and Bottomley.

    First I observe that there is a verbatim transcript of Rex. v. Arkwright that is behind a paywall, but may be viewable by others besides myself. This is the authority entitled The Trial of a Cause Instituted by Richard Pepper Arden, Esq, his Majesty’s Attorney General, by writ of scire facias, to repeal a patent granted… (1785) listed as an authority on page ix of the amicus brief by Gomez-Arostegui and Bottomley. This is viewable on the library website in my home institution, in Eighteenth Century Collections Online (digital collection including digitized versions of books in the British Library, and published by Gale / CENGAGE Learning), with Gale Document Number CW3324391078. The relevant portion of the trial transcript is on pages 30 to 33 of that publication, as cited by Gomez-Arostegui and Bottomley, in note 68 of their amicus brief.

    As Gomez-Arostegui and Bottomley point out, on page 21 on their brief, Lemley has combined, with an ellipsis, quotes from John Dyer Collier’s treatise relating to two cases separated by nearly three centuries (Rex v. Arkwright, and Darcy v. Allen).

    John Dyer Collier’s treatise of 1803 is freely available online in Google Books, here

    link to books.google.com

    The relevant quotes are on page 124. All the information that John Dyer Collier provides about the relevant point in Rex v. Arkwright is in the following two paragraphs:

    “On a scire facias to repeal a patent issue was joined; that the patent was inconvenient to his majesty’s subjects in general.

    “On this occasion Buller J. held, that this issue was merely a consequential one; it stated no fact which could be tried by a jury, or which the defendant could come prepared to answer; and therefore refused to hear any evidence on this part of the case.”

    There is brief mention in Thomas Webster’s Patent Cases, and of course the verbatim transcript I have have already mentioned in this comment: see note 68 of the brief by Gomez-Arostegui and Bottomley.


    So now I come to what I want to add. Another authority is John Davies’s A Collection of the most important cases respecting Patents of Invention and Rights of Patentees (1816). (This authority is listed and quoted in the Alliacense amicus brief authored by Ned Heller, but is not included in Gomez-Arostegui and Bottomley’s list of authorities, so far as I can see.) This Collection is freely available on Google books here:

    link to books.google.ie

    Of course one can go to the trial transcript, as Gomez-Arostegui and Bottomley have obviously done. But I would point out here that John Davies produced a summary which bears out the description of Justice Buller’s handling of the issue in their amicus brief. I quote from page 79 on John Davies:

    “Mr. JUSTICE BULLER did not permit the counsel to call any evidence with respect to the first issue, upon the ground of its being merely a consequential issue. It is a question of law, whether it is prejudicial or not? When the facts were stated, therefore, if it was thought necessary to attack the patent on those general words of the act of parliament, it should have been stated in what respect it was so, and the fact would have been put in issue. This was such a surprise upon the party, he could never come prepared to answer it.”

    Looking at the trial transcript available through the institutional library website, I note that John Davies is here quoting the first assertion made by Justice Buller in an exchange with counsel set out on three pages of the transcript.


    Going to the trial transcript itself, on page 31, there is this further exchange:

    Mr. Justice Buller. Then you should state the fact on record, then he knows what he comes to answer. Whether you attack it on the one ground, or on the other, as to the inconvenience to the public, it is impossible for a man to come to answer that.

    Mr. Sergeant Bolton. This is taken upon the words of the patent; they are the words of the law, requiring such and such qualities, he has joined issue generally upon it, he might have demurred, and have said, I will not join in that issue.

    Mr. Bearcroft. Is it not too much to determine at Nisi prius, that it is an immaterial issue?

    Mr. Justice Buller. It is necessary to settle that, it must be the rule to direct yourselves by, it must be determined, whether the issue is to be laid before the jury.

    [Jumping over about a page of the transcript, to p.33.]

    Mr. Wilson. Provided it is not contrary to law, or a general inconvenience, that is an issue in law.

    Mr. Justice Buller. Therefore they should state those facts that they think prove the general inconvenience, and it will be for the jury to decide upon the truth or falshood of those facts; if once established by the jury, such facts existed, then it would be a question of law, whether this was an inconvenience.


    Note that the extracts I have quoted above, substantiate the point, made by Gomez-Arostegui and Bottomley in their own words concerning Buller J. on p.22 of their brief as follows:

    “He also noted that if inconvenience had been pleaded properly, it would be for a jury to adjudicate the truth of the facts, and if the facts in the writ were found proven, then it would be up to the judge to decide whether those facts as found met the inconvenience standard as a matter of law.”

    1. 21.1

      Distant, thanks again for this analysis. It really helps.

      Recall a point you made in a post some time ago that the courts are generally misinformed about English procedure prior to 1800 regarding patent validity and scire facias actions. The historians brief, and my own I hope, have attempted to paint a clear picture of the English procedures and the issues tried to juries. Unfortunately, from my reading of the amicus briefs filed after by own, they continue to misunderstand this history and therefore misrepresent it to the Supreme Court. I do not know exactly why this is, but there has been considerable misinformation published in American law review articles over time that continue to cause confusion.

      I cannot say how grateful I am personally for your postings here on Patently-O trying to set the record straight.

      For anybody’s information, my brief includes a verbatim copy of Judge Buller’s instructions to the jury in Rex v. Arkwright. Buller’s instructions clearly summarize the issues presented to the jury for their decision. The only issues presented were prior art, prior invention, and insufficient specification. The jury issued its verdict for the crown. After Arkwright petition for a retrial, Lord Mansfield denied the petition, and entered final judgment ordering the patent canceled.

      There were no subsequent proceedings in Chancery. The case was over.

    2. 21.2

      I have now reproduced, on a blogging site, an extract from the trial transcript in Rex v. Arkwright. The extract covers in full the exchange between the trial judge, Mr. Justice Buller, and the Counsel for the Crown, that led Mr. Justice Buller to rule that, because the issue as to whether or not the patent grant was prejudicial and injurious to His Majesty’s subjects had not been pleaded with particularity, so as to allow the defendant the opportunity to prepare his defense, therefore the Crown could not present evidence on that particular issue.

      This matter is discussed on page 22 of the amicus brief by Gomez-Arostegui and Bottomley.

      The extract that I have typed up from the trial transcript is available here:

      link to distantperspective.blogspot.com

      1. 21.2.2

        I have now found a large part of this exchange between Mr. Justice Buller and Counsel for the Crown in Rex v. Arkwright printed in note (h) on pages 192-194 of Richard Godson, A Practical Treatise on the Law of Patents for Inventions and of copyright (London, Saunders and Benning, 1832).

        It looks as though this is a reprint of an earlier edition, plus a couple of supplements.

        This treatise is freely available on Google Books at the following URL:

        link to books.google.com


        There is significant discussion on the following pages of the procedure for scire facias actions to annul letters patent.

        According to the treatise, if there were both matters of law and matters of fact to be decided, these were decided in the Court of King’s Bench:

        Indeed on page 199 of Godson’s treatise:

        “If there be a demurrer to part and issue on the residue, the whole record is sent by the Lord Chancellor to the court of common law; and judgment is given ther upon the demurrer as well as upon the issue. (g)

        “(g) Latch. 3. 1 Eq. Cas. Abr. 128.”

        Next it seems that the Court of King’s Bench usually gave final judgment without remanding the case back to the High Court of Chancery. On page 200 of Godson’s treatise:

        “It is said that after trial the record is to be remanded into chancery, and judgment to be there given; yet the practice has been to give the judgment in common law courts.

        “If the verdict be for the King, the court adjudges that the letters patent be revoked, and the inrolment be cancelled; if it be for the defendant, then the judgment will be that the letters patent are valid.

        “This judgment is final. No writ of error, no appeal to another tribunal, can be made. The very nature of the proceedings precludes it.”


        Of course these observations contradict the following statements on page 2043 of Prof. Lemley’s law review article Why do Juries decide if Patents are Valid?, where Prof. Lemley writes first that “The procedure in such a case was to have the Lord Chancellor deliver the record to the King’s Bench for a jury trial and return the verdict to the Chancellor for consideration and judgment.” and later “The Chancellor remained responsible for rendering judgment, though how much power the court had to ignore the jury verdict remained unclear until well into the nineteenth century.” (In Rex v. Arkwright, the Court of King’s Bench, not the Lord Chancellor, gave judgment to cancel the letters patent.)


          Regarding Godson’s Practical Treatise that I linked to in 21.2.2, and the observation in it, that I quoted, to the effect that, “It is said that after trial the record is to be remanded into chancery, and judgment to be there given; yet the practice has been to give the judgment in common law courts.”, see the brief by Gomez-Arostegui and Bottomley, p.31, note 101.

          [I only just noticed this footnote five minutes ago.]


            As I said, there a large number of briefs filed even in this case on the get English procedure regarding scire facias wrong. The confusion is of a long standing nature that goes back at least to the mid 1800s in the US. The confusion is caused, I believe, by the fact that scire facias actions were filed in Chancery. The general assumption by the courts at that time and by most modern lawyers is that all cases filed in Chancery were equitable in nature. Despite the Historians Brief, not a single brief, not one, save my own brief, described the procedure for scire facias correctly. This is downright bizarre given the importance of the issue in this case.

            American lawyers seem content to study the American cases (that got it wrong) and law review articles (that also got it wrong). They seem unwilling to actually read the cases themselves, or to conduct the in depth research that you do in cases like Rex v. Arkwright.

            Distant, you should also recognize that the Historians brief is itself not correct on the issue before the court in Atty. General v. Vernon, nor its resolution. The issue, and its resolution is of great, great importance to the present case and helps explain why the Chancellor could never, acting in his equitable capacity, decide the validity of a patent against the will of the patent owner: The reason being that an adequate remedy at law existed.

            It is a shame.


          Distant, It seems quite apparent that Lemley never actually read any of the scire facias decisions themselves where it is apparent that King’s Bench rendered final judgment on the jury verdict. That is why I attached Rex v. Arkwright to my brief so that the court would not have to hunt it down to verify the facts. Lord Mansfield, Chief Justice of King’s Bench, entered final judgment after he denied a request for a new trial.

          Many are confusing scire facias procedures with bills in equity for injunctions that were filed in Chancery. Here, the trial of validity occurred at law, but the record was returned to Chancery for further proceedings on the equitable relief. With scire facias, there were no further proceedings.

  3. 20

    Why is the “where the value in controversy shall exceed twenty dollars” clause being summarily ignored? A controversy over patent validity may be worth more than twenty dollars, but no money is actually in controversy because an IPR will never award a money judgment. To the extent that this clause has any meaning, the right to jury a trial was not preserved in all cases. In Balt. & Carolina Line, Inc. v. Redman, 295 U.S. 654 (1935) there was no doubt that more than twenty dollars was in controversy, so the failure to qualify its broad language regarding “the right which existed under the English common law” doesn’t mean that twenty dollars wasn’t still a requirement for the right to a jury trial.

    1. 20.1

      Also, I want to clarify that an IPR proceeding will not award anything of value including money.

      1. 20.1.1

        Non sequitur, the value of the patent itself, one considering its validity for revocation purposes, gives the amount in controversy. Again, this issue was discussed in ex parte Wood.

    2. 20.3

      There are probably a hundred different ways to attack this “IPRs are unconstitutional!” silliness because — like most of the patent maximalist “arguments” — it starts from the conclusion (WE DESERVE THE WORLD!) and works backwards.

    3. 20.4

      Non sequitur, the issue of $20 and the seventh amendment was addressed in ex parte Wood & Brundage. Since the Supreme Court ordered a jury trial, I think you know what they thought of the $20 limitation.

      1. 20.4.1

        [T]he issue of $20 and the seventh amendment was addressed in ex parte Wood & Brundage.

        That does not seem quite accurate to me. The words “20 dollars” appear once in the opinion, and the Court never really addresses the issue at all, except to note (22 U.S. 602, 608) that “[t]he inventor has… a property in his inventions; a property which is often of very great value, and of which the law intended to give him the absolute enjoyment and possession,” (o.k., often of great value, but is it of $20 value in this case?). I think that Non Sequitur has a very good point here. No one in Wood & Brundage raised the $20-threshold point, and therefore the Court did not actually decide that issue. Now that it is being raised, what is there to be said on the subject?


          Does “raising it” necessarily involve a case by case evaluation?

          But to put it out of its misery, would not a starting point be at least the amount of fees paid to process the item?

          I am not sure that quibbling here over $20 as some type of meaningful “keep out” is anything but spurious.


            [W]ould not a starting point be at least the amount of fees paid to process the item?

            Definitely not! The cost in fees to obtain a patent are not an “amount in controversy.” If Mr X crashes into Ms Y’s car, and Ms Y sues Mr X for $19 in damages, then $19 is the amount in controversy. It does not matter that Ms Y paid $8000 for the car on the day before the crash. If the damage costs $19 to repair, then $19 are in controversy.

            What amount is in controversy in an IPR? Nothing.


                An IPR squarely places the value of the patent itself “in controversy.”

                You may be thinking of something different – like an actual Article III court case where the value of infringement might be the aim of the case of controversy.

                Not so with IPRs – it is the patent itself (and thus,the value thereof) that is the focal point.


                I see the “no-dialogue ‘count’ editorial controls remain tripped….

                Pardon the Potential 9re)Post…

                An IPR squarely places the value of the patent itself “in controversy.”

                You may be thinking of something different – like an actual Article III court case where the value of infringement might be the aim of the case of controversy.

                Not so with IPRs – it is the patent itself (and thus,the value thereof) that is the focal point.


          Greg, why do you stop the quote where you do? The passage reads,

          “The inventor has, during this period, a property in his inventions; a property which is often of very great value, and of which the law intended to give him the absolute enjoyment and possession. In suits at common law, where the value in controversy exceeds 20 dollars, the constitution has secured to the citizens a trial by jury.”

          You quote in response to my point is actually a misquote for a purpose. It is intended to suggest that what I was saying was not true, when in fact it was your rejoined that has that taint.


            I stopped the quote where I stopped it because that is where the period comes at the end of the sentence. If you think that the next sentence if valuable to understanding the opinion, fair enough, but from where I am standing, it does not make much difference. Justice Story never actually addresses the $20 threshold question. He just passes over it.


          Greg, $20 in 1791 is equal to about $8000 today using the unskilled wage method of comparison. And yet the court in ex parte Wood believed the patent that valuable. The sentence talking about the value of a patent and the $20 required for a Seventh Amendment right are back to back. That cannot be happenstance.

  4. 19

    This is totally off-topic to IPRs, but I notice that the amici here list enablement as a jury question. This seems to me like the basis for a cert petition next time the CAFC sides with an appellant and rules a claim invalid for lack of enablement, after a jury had found it enabled. Right now the CAFC treats enablement as a matter of law, subject to de novo review.

  5. 17

    One big gap for Gómez-Arostegui is with regard to the Privy Counsel who “could also revoke patents” including when “not new… .” The brief suggests that, if it were available, parties would have continued to push through the Privy Counsel because scire facias was so expensive and complicated.

    Indeed, this is a big gap. This gets at a question that has been nagging me ever since Ned raised the VII amendment question a few years ago: what do we do with questions where the documentary evidence is too scant for certain answer?

    The standard for VII amendment protection is whether a given question belonged to a jury in England back in 1791, because the VII amendment purports only to “preserve” the right to a jury—i.e/, to freeze in place the legal dispensation that existed relative to the English common law at the time of the amendment’s adoption. Thompson v. Utah, 170 U.S. 343, 350 (1898). But this assumes that we have some clear sense of what was going on in England in 1791, and that the evidence is fairly univocal. This will be common enough in cases of concerning common matters (contract disputes, burglary trials, etc), but matters that arise less frequently will necessarily leave less evidence.

    In instances where the evidence is too thin, or too equivocal to say with certainty “this was or was not a jury question” in England in 1791, what is the default stance? Do we assume that a question is not for the jury, unless it can be proven to be so, or do we assume that a question is for the jury, unless it can be proven not to have been? Who wins in the case of an evidentiary tie?

    I would like to think that the Court has already given an answer to this question, but I do not know the answer. Does anyone here know the answer, and would you be so good as to cite me the relevant case(s)?

    1. 17.1

      Greg, the evidence is clear that the Privy Council did not decide contested issues of fact involving validity of a patent after 1753. The Privy Council did retain jurisdiction to revoke a patent in the cases of national security and the like, as was done in 1779 because the cannon patent was interfering with the war on the American rebels.

      Given that this is issue by issue, and the reason for revocation is important, what is you verdict?

      1. 17.1.1

        Why is the reason for revocation important to the VII amendment analysis? I suppose that I am not following your argument here.

  6. 16

    Judge Sleet, who has issued more (if not the most) opinions invalidating patents under 101 in the country spoke at the USPTO this spring and talked about this very issue. It was an event hosted by UT law. He had a growing concern about invalidating patents without a right to jury trial. He noted to the panel that this was weighing on him greatly.

    I’m sure his comments are available if anyone is interested.

  7. 15

    >>by Mark Lemley in his article, Why Do Juries Decide if Patents are Valid?, 99 Virginia L. Rev. 1673 (2013).

    Let’s make it clear that this is nothing but an opinion by Mark Lemley with no ethical constraints as to what Mark Lemley publishes. A law journal articles should be read within the context that there is no peer review. No substantive review of the cites. And, no recourse if a reader believes the author has acted unethically in writing the journal article.

    A law journal article should be viewed as carrying no more weight than a blog comment.

    1. 15.1

      Night – the usual course is to write a reply article or essay and publish it. If you write it well, I’ll be happy to publish on Patently-O if UVA Law Review doesn’t accept it.

      1. 15.1.1

        I will posit that “the usual course” is a far cry from the type of ethical constraints that would be fitting to those with both a close association with the law and with actual attempts to influence the creation or modification of the law.

        The world of academia is an ethical cessp00l when it comes to “peer review,” so I think that even Night Writers call for that is misplaced.

        An analogue to the attorney bar organization would be a good start – but as I have noted, law professors should be held to even tighter ethical standards given their proximity and activity with the law as well as the shaping of minds of attorneys who are then held to the attorney bar organization ethics standards.

      2. 15.1.2

        Well, the usual course was followed here, in a way, by the historians, including a Brit, who seem motivated by correcting the errors in Lemley’s article about English history.

        Most Americans, including me, publishing a rebuttal would not be taken all that seriously if we pointed out that Lemley’s article included numerous errors and that readers should check his cites. They would say we had an agenda, and go merrily on citing Lemley’s article as it were not filled with errors.

    2. 15.2

      Considering that much of Mark Lemley’s personal wealth is initially related to:
      1) the Google stock options his wife received as the General Counsel of Google for the years in which it went public; and
      2) the research grants he indirectly receives (via Stanford) from the mobile industry (and other large corporate infringers) to support his supporting gospel of “efficient infringement”; and
      3) his law firm partnership which uses him as an “expert” witness in many key industry disputes always supporting the ‘alleged’ infringer’s position
      4) being the seminal FOUNDER of Lex Machina (the IP analytics firm which is actively being used to try and HIDE the fact that the PTAB is indeed a ‘patent death squad’ by framing the argument away from the fact that most contested claims at the PTAB are ultimately being canceled…even it if takes a dozen attempts to do so)

      …one would need to closely question whether Dr. Lemley’s research isn’t highly biased by the interest in Google to create a weak patent system. Google’s previous exposure to patent lawsuits came from the industry-wide belief that infringement by its Android operating system under the previous (pre-“efficient infringement”) system (where injunctions could be obtained, burdens of proof favored patent holders rather than infringers, damages were based on the entire merchandise sold etc.) would have torpedo’d the growth of the vast mobile industry outside of Apple itself.


          What are the Errors in VG’s post Dennis ? Are you aware of some non-public financial information about Lamley.

          Dennis : Can you answer a simple question on the record :

          Are you benefiting from efficient infringement lobby ?

          For example are you , your wife, your kids receive any monetary value from Google or those funded by google ?

          For example : Are your research grants or conferences funded by efficient infringement lobbying companies ?


          Dennis….I apologize for the tone however…

          1) Lemley wife, Rose Hagen, was the general trademark counsel of Google while she was employed by Google from 2004-2010. (I believe she is now an artist of some local fame.) She was heavily involved with all Google litigation in the timeframe in which Google went from practically $0 revenue to $10B in annual revenue. She was key to the Google Book Search settlement, preventing the term “googling” from being legally considered synonymous with ” internet search” even if everyone believes it is, defending the paid ad squatting (paying Google for ads on counterfeit/midleading/misspelled web site) from European anti-trust officials, and helping initially defend the nascent Android operating system from infringement claims. As an early key Google employee…she may have enjoyed the fruits of the 2004 IPO but certainly benefited from subsequent restricted stock or employee options during the price appreciation through 2010.

          2) His 2002 law article “Intellectual Property Rights and
          Standard-Setting Organizations” was funded by Oracle and ANSI (American National Standards Institute)…both of which had a direct interest at the time of promoting a system which strengthened the powers of standard setting organizations (SSOs) in establishing various industry competition-limiting TRUSTs with the power to limit potential patent royalties from infringement by the standards while escaping any legal responsibility over its standard setting and keeping anti-trust regulators at bay. His article espoused a practice of ignoring the actual contract wording the SSO’s were required to adopt (to prevent charges of anti-trust under U.S. law) in favor of a ” ‘practical’ considerations” which turned contract law on its head by re-inventing the expectations of the parties to be only what the SSO wanted them to be (rather than what the patent owner believed them to be when the verbal contract was made). His seminal paper (co-authored with Carl Shapiro) espousing efficient infringement and the patent troll meme…Patent Holdup & Royalty Stacking…was funded by a direct grant from Apple Computer, Cisco Systems, Intel, Micron Technology, Microsoft, and SAP…all of which were more interested in direct (and typically free) cross-licensing patents (which touched any standards) and speeding time to market for their products adhering to any of those standards rather than making any revenue from the patents themselves.

          3) As partner of Durie Tangri LLP, he has been paid directly to represent Google’s interested in various legal cases including the Google Book Search Settlement. That is just ONE of many cases he has been an expert for. (See the firm’s webpage for others.) Sure he occasionally will be expert for a smaller player versus a large player per his client’s interests…but generally his expertise is related to his ability to UNDERMINE patents of others.

          4) Dr. Lemley was key to the creation of Lex Machina at Stanford as the IP Litigation Clearinghouse project in 2006 (the year after Jerry Yang…co-founder of Yahoo!..joined the Stanford Board of Regents)
          link to lexmachina.com
          Many more pro-patent owner observers (like myself… but not only me…see IPWatchdog.com articles for other critical articles of its methodology) have criticized the methodology Lex Machina uses in counting each claim multiple times if multiple IPRs are initiated against the same patent…as it dilutes the actual percentage of challenged claims being killed by the PTAB. (It only takes one of multiple challenges to succeed to kill a claim…so the fact that 60% of IPRs against a particular claim weren’t successful means nothing if any ONE of the other 40% on which IPR is initiated is successful).

          To be clear…I don’t have any particular personal beef with Dr. Lemley other than the fact I believe he has an underlying agenda of weakening patent rights in whatever manner he can. I am not accusing him of being unethical…since his disclosures of his interests are publicly available and complete if people bother to look. He is just VERY good at re-framing the equation and argument about patents to support HIS agenda (which I clearly don’t agree with). I even understand that his support of a weak patent system comes from the vast public benefits of faster innovation…but I believe his dependence on the public benefit overwhelming the private good is killing the individual inventors and small companies in the U.S. My view is that patent owners should be able to use competition to derive FULL benefit from their gov’t sanctioned and CONTRACTED (i.e. patented) inventions. Without the RIGHT to EXCLUDE…a patent is worthless at the end of the day.

          Because most readers aren’t familiar with these potential conflicts and because Dr. Lemley is considered by the media to be one of the most knowledgeable minds on patent law in the country, I will occasionally speak up to counteract his influence so that patent law doesn’t get buried so deep it can’t self-correct.


            There was a movie I saw not that long ago where the question of whether an historian was fabricating a vision of the history or whether, as contended by the historian in his own defense , he was only making errors. The attorney for the party opposing the historian, and trying to prove that there was fabrication, made this argument:

            “The learned professor states that his errors are unintentional. But if his errors are unintentional, why are they not not randomly for or against the proposition in relatively equal proportions? Why are they instead always errors in one direction and that in favor of the proposition? Can we can then not infer that the so-called errors are not errors, but fabrications.”


            Valuation Guy,

            Maybe you could try “the usual course [of writing] a reply article or essay and publish it.”

            That will certainly “counteract his influence.”

            Because, you know, your written replies and articles see and are cited as much as Lemley’s work in either the real world of the academic den of circular self-promotion.

            I also heard that you are interested in some prime ocean front property near the U of Missouri….

      1. 15.2.2

        This kind of comment is why people like you and Night Writer (the Alex Jones of the patent world) bother me. If Lemley is wrong, refute him on the merits of the argument. This sort of comment strongly suggests that you cannot do so.

        In short, put up or shut up.


          What is so offensive about your post Ordinary is that it does not address the substance of my post. I am pointing out that Law Journal Articles should carry no more weight than a comment in a blog. Please address that substantive point.



          You being bothered is definitely highly selective. There are F A R worse offenders on these blogs here.


          Given my post was specifically about what I believed was Dr. Lemley’s bias, I think I supported it with specific examples pretty well in my subsequent reply to Dennis.

          I’m not an academic or a lawyer (both of which Dr Lemley effectively is (in the patent area at least) even if he hasn’t gotten a formal law degree)…thought I have made a decent study of patent law and history due to my work interests. As an analyst by training….I look for patterns instead. As such, I’m not going to write a law journal treatise challenging Dr. Lemley’s legal arguments by playing to HIS STRENGTHS and MY WEAKNESSES. Instead I’m going to utilize my own strengths and vector against what I perceived to be his weaknesses.

          My training allowed me to key in on what I see as his theme in most of his legal papers…and I don’t argue that his theme isn’t entirely logical and valid IF you believe like he evidently does that the PUBLIC GOOD trumps the PRIVATE RIGHT. I however don’t feel that way….and I believe his theme has led patent law in a direction which provides for a short-term gain by the public (quicker, cheaper access to innovations made by others) with much of the potential revenue from the patented innovations flowing to certain dominant companies in highly concentrated industries as profit (avoided cost) rather than revenue to the patent owner and innovator…at the expense of the long-term good (incentive for individual and small companies to drive innovation in a pervasive environment of strong patent rights…many of which are currently starved for capital without an reasonably enforceable patent).

          Large mobile companies are making billions in profits utilizing patented innovations which were generated by other companies but which are unlicensed in part because much of Mark’s body of often quoted academic research has focused on encouraging changes to the U.S. patent and legal system which make patent enforcement harder and successful infringement easier via easily undermining patent validity. In the legal world….the credibility of the witness is key…and Dr. Lemley has so many connections (both personally via his wife’s source of wealth and professionally via his law firm partnership, his past research funds, etc) to parties with an underlying agenda of weakening the patent system in order to maximize their own profits…that it deserved attention in my view.

          Do you think any law journal is going to publish an article covering the potential biases influencing Dr. Lemley’s academic research? I kinda doubt it….especially considering how prolific he is in writing and the competition between those journals to get highly influential academics to submit article to their journal.


            Val, after this historian’s brief, a prudent litigator would want to check Lemley’s cites to see if his statement/s arguments are actually supported.

            I recall that Lemley cited no cases on point prior to ’52 for his argument that a method claim could only be infringed by one actor. For example, while there must be direct infringement, must only one actor do all the steps? General tort law recognizes that multiple actors may contribute to the direct infringement, making each jointly and severally liable to the extent that they violated a legal duty to the injured party.

            Lemley filed an amicus brief in the case (the name of which eludes me), and Rader and the Federal Circuit adopted his views, again, citing nothing to support the rule. You know where that led. Years of confusion that had to be resolved by Supreme Court reversal and remand.

  8. 14

    Because the PTO mistakenly granted a patent claim that was specifically written by my competitor to target my business, I lost the investor money I needed and my business failed.

    I’m pretty sure I have a right to be free from irrational government actions that specifically target my freedom to pursue an honest legal occupation in the manner of my choosing. So … where’s my right to a jury trial to address this wrong? I can’t even sue the PTO for the irreparable harm that was done to me.

    I guess this problem just isn’t as important. Must because there are so few mistakenly granted patents and a relatively overwhelming number of post-grant proceedings eliminating them. <— yes, this is sarcasm

  9. 13

    Bluejay: if the Executive can take from you a property right without a jury trial, then unconstitutional.

    How many assumptions and misrepresentations are baked into this bizarre proposition? Nobody is “taking a property right” from anyone when a patent is invalidated. What is being determined by the granting agency (an agency that is self-evidently also unconstitutional on its own terms) is that a “patent right” — a conditional right — was mistakenly granted. That determination is only made after (1) a showing that the agency was likely to have made a mistake and (2) an opportunity is given to the patentee to defend its conditional right (all due process concerns taken into account). The determination isn’t final until the patentee has been given a chance to appeal the decision to an Article III court.

    Again, it can’t be stated often enough that this so-called “patent right” is a conditional right and its revokability upon a showing of error has been built into the “right” itself, i.e., the “right” is defined by Congress, per the Constitution, and the definition is the patent statute which clearly sets forth its revokability by the granting agency (among other limitations).

    To be triply clear: the so-called “patent right” is not a fundamental right nor is it some hallowed right given special status by the Constitution like (LOL) “right” to own a hand-held missile launcher or a rifle that shoots ten thousand cyanide tipped bullets a second. According to the Constitution, the “patent right” (setting aside the fact that the term “patent” appears nowhere in the document) is expressly an optional entitlement that Congress may not bother itself with at all.

    And it’s upon that foundation that the patent maximalists are going to destroy the adminstrative state so … what do they think happens next? I’d love someone to step up and tell everyone what happens next. Because we all know you guys are the deepest thinkers on the planet. And very principled, too! Oh, so principled and serious.

    Patents are a federal property right.

    LOL Far more accurately, patent rights are created by a Federal agency in a manner established by Congress. The Constitution does indeed set forth that Congress has the option to create a system to promote progress in the useful arts. In the sense that these “patent rights” can be bought and sold and licensed (with restrictions — probably “unconstitutional” restrictions under your deep theories) these rights have aspects associated with “traditional” property rights.

    The PTAB judges are at-will employees of the Executive.

    Many, many, many people who make determinations that affect everyone are “at will” employees of the Executive, or Congresspersons, or Judges. It’s a pretty big country, you know. So tell everyone: what is your point? “At-will employees” of elected officials or appointed officials are unconstitutional? Be clear. Which ones are constitutional and which ones aren’t?

    I take Alexander Hamilton over Pat Leahy

    Just for everyone’s consideration:

    Hamilton was among those dissatisfied with the weak national government…. Hamilton became the leading cabinet member [note: appointed, not elected] in the new government under President Washington. He was a nationalist who emphasized strong central government…

    Difficult to see how this squares with your other positions. And then there’s this:

    Early in the Convention he made a speech proposing a President-for-Life;The hereditary interest of the king was so interwoven with that of the nation, and his personal emoluments so great, that he was placed above the danger of being corrupted from abroad

    Wow. A very deep thinker indeed! Incredibly advanced and not short-sighted or delusional at all. We should all be very very impressed and hush ourselves whenever his name is invoked, unlike that rascally scoundrel Pat Leahy.

    1. 13.1

      Forgot to add: if the “patent right” was mistakenly granted in the first place, there is no “right” being improperly taken from anybody. In that case, it’s the public’s rights to act freely, to conduct business freely, to communicate freely, to program freely, to store and access information freely, etc that were taken away “without a jury trial.”

    2. 13.2

      You keep on repeating the same mistake – as if you don’t understand what a property is under the law.

      At grant – other Constitutional protections (for property) inure.

      Try to grasp this fact of law.

    3. 13.3

      if the Executive can take from you a property right without a jury trial, then unconstitutional.

      The Executive cannot “take” from you that which you do not have in the first place.

      If I apply for a claim that reads on the wheel, and the PTO improvidently grants it, that does not mean that I genuinely have the right to exclude my fellow Americans from making, using, or selling wheels. My “right” to exclude the good people of the United States from making, using, and selling wheels is entirely illusory. If the PTO realizes its mistake and the Director sua sponte summons me back into ex parte re-exam, nothing is “taken” from me when my improvidently granted claim is canceled, because I never “had” that claim in the first place.

      1. 13.3.1

        Your view begs the question and is not in accord with what a property right – even one granted in error – means.


              What a sad exchange. Greg’s point is absolutely clear. Nothing magic happens at the moment of grant that means it can never be examined again. Why should it? This ain’t the NFL when you get the next play off in time….


                Nothing magic happens at the moment of grant

                Absolutely incorrect.

                Come man, at least get the basics correct.

                1. Absolutely incorrect.

                  On the one hand, he offer literally no evidence or reasoning to substantiate his assertion.

                  On the other, he did use the word “absolutely” in front of his assertion, and that seems very forceful.

                  I guess, on balance, that means that this must be a convincing rebuttal. Who can stand against such convincing arguments?

                2. The basics. What a laugh. We clearly have a system where a patent is examined in a non-adversarial proceeding, then granted, and if it then turns out to be valuable, tested in court; an adversarial proceeding designed to protect the public at every turn. The real value of the grant is not in the invention, which may or may not have long term value, but in the awesome power to haul people into federal court. You know how the game is played, you just never talk about it, for obvious reasons.

                3. I wonder if Greg and Martin GET why we have a patent system (or the notion that a strong patent system with BOTH a carrot and stick approach) is what engendered the most innovative culture in the world – for a time (until legislative capture by the Efficient Infringer crowd and broken clock pronouncements sought to diminish that strong system).

                  Greg, you should be aware that Martin’s “just leave me alone”‘ is to the detriment of the purpose of the patent system, as he would have it that NOT sharing gets one a free pass.

                  His story goes back quite a bit (and actually was initially shared on another blog).

                4. Greg, you should be aware that Martin’s “just leave me alone”‘ is to the detriment of the purpose of the patent system…

                  As you already know, I do not carry any sort of brief for Mr. Snyder’s ideas about the ideal patent system. For one thing, I think that software claims should be broadly eligible. My only point is, given Martin’s well-known perspectives on the patent system, it seems odd to suppose that he would be pleased by a reinstatement of writs scire facias as a way of culling wrongly granted patents from the system.


                Martin, I think you would be happy with a renewed scire facias in the US. That procedure started with the an aggrieved party filing a draft writ in the Petty Bag, which was then forwarded to the Attorney General. If the AG was satisfied, the AG filed the writ and pursued the action against the patent in court. But in court — where the patent owner had a right to a jury trial.

                The point here is that the aggrieved party only had to pay his attorney to draft the writ. He also had to post bond to pay the attorneys fees of the patent owner if the patent owner prevailed.

                1. I am somewhat unclear as to why Martin—a party who would simply like to be left alone and not involved with patents—would be expected to be happy with a state of affairs in which—after the patent office makes a mistake and grants a patent that reads on an unpatentable invention—he is personally expected to pay not only for an attorney to lodge a writ to get that improvidently granted patent rescinded, but also for the patent owner’s costs in defending against that rescission. The attractions of this system to Martin (and similarly situated individuals) seem rather less than obvious to me.

                2. Greg, the patent owner would have to prevail to collect against the bond.

                  Also, it is the English system where the losing party has to pay the attorneys fees of the prevailing party.

                3. Of course Greg. I also see the folly in thinking that a non-adversarial examination process should be the last word before enforcement of a patent right. Many information inventions are essentially impossible to examine because the close art is not in the patent corpus or even available to be reliably surfaced.

                4. …and yet, with the patent system, ALL OF A SUDDEN that “close art” IS being catalogued in a searchable form….

                  Or would you still want that “independent creation” idea as a defense?

                  How would that “promote” (in the other sense of that word is legally used – as in ‘advertising promotion’ contrasted with the notion of linear scientific advance)…?

  10. 12


    And you need to read Phillip Hamburger’s important book on the unconstitutionally of administrative law first before you render an opinion. That book will be cited by the majority in Oil States.

    Get right on it! You can read on Saturdays because your football team is so lousy.

    1. 12.1

      Thanks – it will be interesting to see if the conservatives on the court take this as an opportunity. It will be especially interesting to see the SG’s brief in this case by Jeff Wall who was a student of Hamburger.

      1. 12.1.1

        Dennis, I wonder if Wall will continue to insist that there is no right to a jury try for scire facias actions because they were filed in Chancery. After the filing of this brief, that position cannot be maintained with any credibility.


          I take no position on whether this brief conclusively establishes that scire facias actions carried with them a right to a jury. It may be that these amici are addressing all relevant evidence, or it may be that they are selectively presenting on the cases that support their thesis. I could not know which without doing a lot of research for which I am ill equipped (not having access to the case reports). I would also note that a lot of 18th century English legal authority is only poorly indexed and not easily searchable, so it is hard to rule out the possibility that some future scholar could discover an unindexed volume of law reports that unsettles their conclusions. They may be correct, or they may be wrong. It seems to me that it is hard even for an expert to know, and I am not an expert, so I can do no more than gratefully acknowledge the amici‘s work here, which was interesting.

          I wonder, however, after reading their brief, how relevant any of it is. It seems to me that the question of whether juries were involved in late XVIII century English patent litigation might be, on the amici‘s own description, largely irrelevant to the question of IPRs. The amici note (pg. 24 of the brief) that “a verdict of invalidity [did not] permanently nullify the patent.” Therefore, these trials with juries are not really analogous to IPRs, where the PTAB’s decision (and subsequent certificate of correction appended to the patent) has lasting effects that extend beyond the PTAB proceeding itself. Similarly, the amici note (pg. 24 of the brief) that a scire facias action could “revoke and ‘cancel’ a patent—i.e., to have the sealed patent surrendered and the enrollment struck…” Once again, this is totally unlike an IPR, where the patent owner merely receives a certificate of correction to add to the patent. The patentee does not need to surrender back the ribbon copy at the end of an adverse PTAB proceeding.

          In other words, in the context on which everyone’s eyes are focused—the scire facias—the legal effect of the proceeding is very different from the modern IPR. At the beginning of a scire facias trial, the patentee held something (a tangible letter), and at the end of an adverse proceeding the patentee lost that tangible letter. In other words, a genuine and indisputable property right was very definitely at stake here. By contrast, in an IPR the patentee owns the patent at the start of the proceeding and will own the same patent at the end. The only thing that changes through the course of the proceeding is that at the end, a little bit of extra writing is added to the tangible letter.

          To be sure, that little bit of extra righting can have substantial legal effects, but no ownership is ever at stake. Unlike in the scire facias—where one can own something at the start and nothing at the end—the patent owner in an IPR owns the same patent at the beginning and the end of the process. Nor does the patentee even lose the right to exclude during the course of the IPR. The PTAB panel merely determines whether the right to exclude written in the existing patent is actually accurate, but if it is inaccurate, it is not as if the patentee ever “had” the right to exclude from the improvidently granted scope.

          In other words, the nature of the proceeding in scire facias is so different from the nature of the proceeding in IPR, that it is not clear to me that the analogy between one and the other is all that apposite. If not, then the amici‘s brief here, however interesting as an academic matter, is simply beside the point to deciding Oil States.


              What happens to a United States Patent if all the claims are cancelled?

              At the risk of belaboring the obvious, if all the claims are cancelled, then the patent gets a certificate of correction appended at the end noting that all of the claims are cancelled. What happens, beyond that, is largely up to the patent owner. The owner can seek a reissue (if there is any unclaimed-but-patentable subject matter disclosed in the patent). Or the owner can simply stick the ribbon copy in a drawer and try to forget the whole experience.

              The patent, however, does not wink out of existence. It is still a real, genuinely issued U.S. patent, and the owner still owns it.


              Forgive an answer you were not expecting and may find Hokie, but the patent owner with all claims clipped in an IPR could still file a reissue with narrower claims.


                Paul, but those claims cannot be obvious variants of the claims lost. Effectively, reissue will be directed to a different invention.

                1. IF a different invention is in the application as filed and IF the respective timeframe is observed.

                  And people want to hold that out as somehow NOT totalling the car…

                2. IF a different invention is in the application as filed…

                  Hm, “different” seems an unhelpful term here. It is good to be precise. Surely you meant “patentably distinct.” If I lose a claim to a genus, but then pursue a claim to a species in the reissue, we can quibble over whether the invention claimed in the granted reissue is “different,” but it will necessarily be “patentably distinct” from the lost claim.

                  … and IF the respective timeframe is observed.

                  Well, yes, the reissue will need to be filed within the patent’s remaining term. Of course, the patent itself can only operate within its remaining term, so that is scarcely a loss to the patentee.

                  And people want to hold that out as somehow NOT totalling the car…

                  Correct. People do say that, and rightly so. If I claim the wheel in my patent, then I have claimed more than I am rightly able to claim under the laws of the United States. If someone should shoot down my claim to the wheel, they have done me no harm, because they have not taken from me anything that the U.S. law permits me to have. If, at that point, it turns out that I still rightly have a claim to a particular wheel—made out of particular materials and/or fashioned in particular dimensions—then the laws of the U.S. still permit me to claim that wheel, and the claim to that wheel is all of the value that I might ever have reasonably expected from my application. In other words, the whole process of cancellation and reissue has cost me nothing to which I was ever rightly entitled. My patent still has all of the value that it ever ought to have had, under the applicable law.


            “… that little bit of extra righting can…”

            Er, pardon. “… that little bit of extra writing can…”


            Greg, scire facias actions were only tried to juries even from 1600. They were tried to juries in the late 1800s.

            But more importantly, equity had no jurisdiction to try validity for two reasons: The Statute of Monopolies and because there was an adequate remedy at law.


              Greg, scire facias actions were… tried to juries even from 1600… to… the late 1800s.

              Fine, but that is kind of irrelevant to the point I am making. My point is that legal effect of scire facias is so different from the legal effect of IPR, that it is not clear to me that historical evidence from the one can inform a VII amendment analysis about the other. Nailing down the time interval during which scire facias had a jury in Britain—no matter how certainly these dates are established—is never going to carry the day in a VII amendment challenge if the scire facias is not actually analogous to an IPR.


                Greg, scire facias actions to revoke patents for prior public use, which included prior publications, prior inventions, and insufficient specifications. That IPRs limit the scope to one aspect of the broader scope of scire facias actions does not change the fact that they both revoke patents for the same reason.

                There can be no doubt that an IPR is directed to particular claims as opposed to the entire patent. But that is because each of the claims stand independently of the other claims by statute. Effectively, each claim is a patent unto itself.

                I therefore do not understand your point that the proceedings are different. Different in what respect?

                1. That IPRs limit the scope to one aspect of the broader scope of scire facias actions does not change the fact that they both revoke patents for the same reason.

                  But that is just my point—they do not both “revoke” patents. Only scire facias had the power to revoke a patent (i.e., make you surrender your letter patent). IPRs have only the power to add a certificate of correction to the end of a patent. The PTAB cannot make you to hand over your ribbon copy.

                  These are very different outcomes, one affecting ownership and the other not. A proceeding that affects ownership treads much more obviously on the domain of the common-law courts, but such is not the case with IPRs. Therefore, it is not clear to me that the analogy to scire facias really bakes much bread.

                2. Greg, serious question: Do you think it was legal error for PTAB/Federal Circuit not to first determine whether IPR were like scire facias actions. I argued that point extensively to both. They both blew right by it.

                3. Greg, serious question: Do you think it was legal error for PTAB/Federal Circuit not to first determine whether IPR were like scire facias actions.

                  I do not think that it was legal error for the PTAB to ignore it, for the simple reason that the PTAB has no authority to pass on constitutional questions. As for the CAFC, I am not certain, in all sincerity, what is the standard for “legal error” here. The CAFC has made clear that agencies are “not require[d]… to address every argument raised by a party or explain every possible reason supporting its conclusion.” Synopsys Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016). Presumably, if that is true for the agency, it is also true for the CAFC itself, so it is not clear to me that it quite rises to the level of “legal error” that the CAFC did not explicitly walk through the analysis about scire facias

                  I will say, however, that Judge Dyk’s MCM opinion is not all that convincing as an argument for the constitutional sustainability of IPRs. I am less convinced than you are that the MCM court arrived at the wrong outcome, but my conclusions to that effect are more despite Judge Dyk’s opinion, rather than because of it.

                4. And, Greg, considering that we today allow multiple claims in a patent that some might survive prior art in court, why do you suppose that the remedy of IPR is different if the challenger only challenges some of the claims and not all?

                  The point of the revocation at common law was the the patent was on an invention and it effectively had only one claim. We could do the same thing today and provide separate patents for each claim, because that is the way 35 USC 288 treats each claim. That way, the remedies would be the same between IPR and scire facias.

                5. [C]onsidering that we today allow multiple claims in a patent that some might survive prior art in court, why do you suppose that the remedy of IPR is different if the challenger only challenges some of the claims and not all?… We could… provide separate patents for each claim… That way, the remedies would be the same between IPR and scire facias.

                  Fine. I have prosecuted patents that have only one claim. Imagine someone were to take one of those patents to IPR. This would be about as analogous to scire facias as possible within the context of modern U.S. law.

                  My point is that in scire facias, if the patent owner lost, the patentee had to surrender the letter patent, and all records of the patent were expunged from the official records. By contrast, if one of my single-claim patents were to lose an IPR, the patent owner does not have to surrender back the ribbon copy, and the record books continue to show (e.g.) US 1,111,111 as a U.S. patent. These are meaningfully different outcomes when it comes to the constitutional protections of property (in one case, the owner is left with no property, while in the other the owner is left with some property). Precisely because of those materially different outcomes, it seems to me that the analogy between scire facias and IPRs is not germane to the IPR/VII amendment question.

                6. Greg, a patent with no claims is no patent at all. Exclusive rights, and thereby property rights, track claims, not specifications.

                  If the patent owner lost his patent because his claim was over broad, at times it was reissued and limited to that which he invented. The events surrounding the Mansell patent are instructive. The original patent claimed furnaces for making glass. But furnaces for making glass were old. On investigation by none other than Coke, it was reported that Mansell had invented a way of using sea coal with furnaces for making glass. The patent was reissued with a more limited scope. 1 WPC 27. (1624)

                  Thus it often was, the inventor who had over-claimed was rescued by a reissue.

                  Same as today.

                7. If the patent owner lost his patent because his claim was over broad, at times it was reissued and limited to that which he invented. The… Mansell patent… was reissued with a more limited scope. 1 WPC 27. (1624)

                  Hm, that is an interesting point, Ned. I did not realize that scire facias actions could result in a reissue (the category “things I do not know about common law writs” could fill a large volume). I concede that this point significantly weakens the force of my argument. Perhaps scire facias is a better analogy than I had quite appreciated.


            So….argumento…are you are claiming that the gov’t can take an equivalent land patent….and essentially re-write it to take away half of the land parcel originally granted….with no requirement of full due process (i.e. Article III jury trial)….just because at the end of the process, a (now diminished) land patent still exists?

            Not logical in my opinion. I concede that land patents are IP patents aren’t exactly the same…but continuity of thought is fairly important in legal circles.

            Looking at the definition of scire facias…I note the following is cited by West’s Encyclopedia of American Law (Edition 2, 2008)
            (link to legal-dictionary.thefreedictionary.com):

            “”The scire facias writ originated in England, and its use was adopted by the American colonists. In eighteenth-century England, the writ was used to repeal letters patent. Letters patent were letters written by the king or queen that granted inventors exclusive patent rights over their inventions. Any person who thought a patent was invalid based on false information or the existence of a prior invention could ask the royal Court of Chancery to request the presence of the patent holder to justify the patent. If there was a genuine dispute about the validity of the patent, the patent holder could request a trial before a jury in the Court of King’s Bench. The jury resolved any issues of fact, and then the case was sent back to the Chancery. The chancellor made the final judgment on whether to revoke the patent.
            The scire facias writ did not survive in patent law. Under modern law, only a person with a case or controversy with respect to a particular patent may challenge the patent. Also, a claim of patent invalidity is not tried before a royal court but a federal patent court. However, the issue of patent validity may be tried before a jury, much like the old scire facias writ.”

            While the new AIA has subsequently allowed ANYONE standing to challenge patents via IPR…it appears that historically the disputed facts were ALWAYS established by a JURY even in a scire facias action.


              [A]re you are claiming that the gov’t can take an equivalent land patent….and essentially re-write it to take away half of the land parcel originally granted….with no requirement of full due process (i.e. Article III jury trial)….just because at the end of the process, a (now diminished) land patent still exists?

              As a preliminary, let me say that, no, I am not claiming that. The reason I am not claiming that, however, has little to do with your analogy. I think, on initial reflection, that your analogy is basically sound. However, land titles are matters of state law, not federal law, and Art. III and the VII amendment do not apply to state law matters, so that that is why I am saying that a federal agency cannot redraw the boundaries of a deed. It is not that I think your analogy off base, it is just that there are no federal agencies that are permitted to redraw deed boundaries, so the issue raised in your analogy will never have the chance to be tried and tested in a federal court.

              I wonder, though, whether the analogy you raise really constitutes the sort of reductio ad absurdum that you suppose. Imagine I genuinely own a piece of real property, but I deface my deed to read on a tract of my neighbor’s land in addition to my own. I then go down to the recorder of deeds office and record my (fraudulent) deed. Is is entirely clear that the record of deeds must take me to court before correcting the deed?

              Would it violate some constitutional principle if the recorder summoned me and my neighbor to appear before her and explain the situation, and then when (in view of the other land records) it was clear that the information on my deed was not correct, she simply corrected the fraudulent information on my deed, and recorded that information, without taking me to court? If so, what constitutional provision is implicated?

              Not logical in my opinion. I concede that land patents are IP patents aren’t exactly the same…but continuity of thought is fairly important in legal circles.

              Land and IP are similar in some respects and not similar in others. Much mischief is wrought in the philosophy of IP by ignoring the differences and trying to hard to reason by analogy to real estate. For whatever little my opinion is worth, I think that the analogy to land is particularly inapt when it comes to IPRs.

              If my land deed includes an incorrect description of the boundaries, the practical effect of this will reach only to the persons who come into geographic proximity to my boundaries, which will necessarily be a very small percentage of the broader U.S. population. By contrast, if the boundaries of my patent claim are wrong, this potentially affects every single U.S. resident and a variety of ex-U.S. commercial entities as well. In other words, the stakes for getting the boundaries wrong are a lot lower in the land case, so the mechanisms for ensuring that the boundaries are correct in the land case are correspondingly less important.


                Your argument about defacing the (land) patent seems ridiculous to me as you are using an example of actual provable fraud…to justify the registrar’s ‘administrative corrections’.

                In the real world….if the registrar actually recorded your fraudulent deed in the county roles….yes, your action created an actionable dispute on the actual owner of the property….meaning the other parcel owner CAN sue you to correct the record and any subsequent damages the confusion caused.

                The ability of the registrar to correct “administrative mistakes” like this is analogous to the PTO’s historical power to correct minor issues related to the patent issuance…BUT ONLY AT THE PATENT OWNERS BEHEST. (I.E. The patent owner is agreeing to the correction.) The legal community used this very limited, minor exception (intended to reduce the legal burden on the PTO) to widen the door to the point where administrative re-examination was allowed….even AGAINST the patent owner’s express wishes. Prior to using this exception to authorize re-examination by the PTO, the only way to “correct” a patent against the wishes of the patent owner was through a district court action.

                If a patent holder has committed a similar “fraud” (before the PTO) as your example described, any party with standing (the gov’t or anyone potentially infringing it) can challenge it in federal court and get it invalidated.

                1. In the real world….if the registrar actually recorded your fraudulent deed… the other parcel owner CAN sue you to correct the record and any subsequent damages the confusion caused.

                  Sure, no one doubts that a party aggrieved by the incorrect boundary has a remedy in court. The question, however, is whether that is the only remedy constitutionally permissible, or whether it is possible to create a remedy in the executive agency (in this instance, the recorder’s office) parallel to the remedy in court. Merely noting that there is a remedy in court does not really speak to the issue in debate.

                  [T]he PTO’s historical power to correct minor issues related to the patent issuance…BUT ONLY AT THE PATENT OWNERS BEHEST.

                  Sure, but once again, you are talking past the issue here. I agree that if I file an inaccurate deed, it makes sense that I should be able to correct it, and if I receive a grant on an unpatentable claim, it makes analogous good sense that I should be able to correct that. As you note, however, in both instances my mistake does not affect only myself. The question, then, is whether it makes sense (in the case of the deed and the recorder’s office) to allow my neighbor a chance to correct my wrongful recording in the recorder’s office. I agree 100% that my neighbor has an adequate remedy against my fraud in the courts, but is there any constitutionally binding reason why the recorder could not create and parallel (and likely shorter and less expensive) administrative remedy in the recorder’s office itself? That is the question at issue here, and I still do not see anything on this thread to suggest that the answer to that question is “no.”

                2. Henry V part 1, Act. 3, sc. 1

                  GLENDOWER: I can call spirits from the vasty deep.

                  HOTSPUR: Why, so can I, or so can any man, But will they come when you do call for them?

                  In a similar manner, I have no doubt that you can posit as much. So can any man. But do you have a substantive and substantiated point to make when you do this positing?

                3. Yes, Greg – you slip into the Malcolm-mode of accusing others of that which you do.

                  Why make that accusation? Could it be that you simply do not like the point (the ON POINT point) being made?

                4. Greg, since we speak now so much of England from whence American law and traditions came, may I quote from Richard II?

                  “This royal throne of kings, this sceptered isle, This earth of majesty, this seat of Mars, This other Eden, demi-paradise, This fortress built by Nature for herself Against infection and the hand of war, This happy breed of men, this little world, This precious stone set in the silver sea, Which serves it in the office of a wall Or as a moat defensive to a house, Against the envy of less happier lands,–This blessed plot, this earth, this realm, this England.”


              ValGuy, that free dictionary is not entirely accurate nor nuanced. The writ was returnable either on the law side of Chancery or at Kings Bench. The case was tried at law. The judgment of the court holding the trial included an order that the patent be cancelled. See, e.g., Rex v. Arkwright (1785), Lord Mansfield, Chief Justice, entering judgment and ordering the patent cancelled.


                As I admitted I’m not a lawyer…so I don’t know the nuances.
                I understand that the final legal decision wasn’t made by the jury…it was only the fact finding body….which the Chancery or Kings Bench judge then applied at law. But the requirement was for the JURY to establish the facts…not the judge (or administrative court).

                Even now we have judges and appellate panels who actively twist or nullify the fact-finding of various juries to reach the judgment they desire….using previous precedential decisions in creative ways (i.e. accidentally or even deliberately misreading the the key decision they are using to justify their legal point) to show there was an entirely ‘legal’ reason to ignore the jury’s findings. So just because the final decision might be made at law…doesn’t abrogate the requirement for a jury trial. Since we are REQUIRED to use a jury for its fact-finding…why wouldn’t we using the district court system?

                Additionally, since I can’t directly reply to Greg’s reply to me….I will point out that the weak flaw in his argument above is his concept of the AIA/IPR being a “parallel remedy”. There is NOTHING “parallel” about a creating an alternate remedy procedure where the standard of proof is not the same and due process protections are not the same (just to name two major issues…there are more)…..when all the changes disfavor the patent owner who has NO SAY in which remedy procedure is selected. If the patent owner AGREED to use such a “parallel remedy” as the IPR…I have no real beef….he can take his own chances and get roasted….but to FORCE him to use such a system is manifestly UNJUST and creates more disharmony in the courts (as we are seeing played out). This is almost the same point as the exception I pointed out earlier…if a patent owner agrees with the patent office to make a minor change to a patent…there is no injustice in having a procedure to help bypass the red tape of making it happen SINCE both parties are mutually agreeable.

                1. There is NOTHING “parallel” about a creating an alternate remedy procedure where… all the changes disfavor the patent owner who has NO SAY in which remedy procedure is selected… [T]o FORCE him to use such a system is manifestly UNJUST and creates more disharmony in the courts (as we are seeing played out).

                  Er, fine, I disagree, but this is not really the point in discussion. You are objecting to IPRs on the grounds that they are unfair or imprudent. These points may be true or false, but they are orthogonal to the question of whether IPRs are constitutional.

                  From the late 1800s through 1952, the Supreme Court imposed on this country a legal scheme that was much more hostile to patents than the current IPR scheme. This legal regime was both unfair and unwise, but it was not unconstitutional. The Constitution leaves our nation broad power to make both good choices and poor choices. There are only a very few choices that the Constitution puts off limits.

                  Nothing you have said points to reason why any of those few limits might be understood to stand as an obstacle to an IPR system.

                2. “I understand that the final legal decision wasn’t made by the jury…it was only the fact finding body….which the Chancery or Kings Bench judge then applied at law. But the requirement was for the JURY to establish the facts…not the judge (or administrative court).”

                  Judgment was entered on the verdict, and if the verdict favored the crown, the common law judge ordered the patent cancelled.

      2. 12.1.2

        This case will have epic briefing. Moneywise, Oil States is might be the biggest case ever.


            MM, the Supreme Court actually remarked in its 1897 opinion in American Bell that that its 1888 American Bell case was the single largest case in its history.

            “As heretofore stated, and as is well known, Bell claimed to be the pioneer in this matter of telephonic communication. His claim was disputed, and out of that dispute came the most important, the most protracted litigation which has arisen under the patent system in this country. For years this litigation was pending in the trial courts, subsequently brought to this court, and finally decided in 1888. So great was this litigation, so immense the volume of testimony, and so important the rights involved, that it is the only case in the history of this court to which an entire volume of our reports is devoted. (126 U.S.) The argument was protracted through weeks, and the case was held under consideration for a year, and finally decided by a closely divided court.”

            United States v. American Bell Telephone Co., 167 U.S. 224, 260 (1897).


            Just curious Malcolm, what angle (besides your usual cognitive dissonance) are you pushing?


              There can be no greater “cognitive dissonance” than that created by a patent worshipper arguing that administrative agencies which determine patentability are unconstitutional.


                You are not using that phrase (cognitive dissonance) properly.

                Is that why you put it into quotes?

      3. 12.1.3

        Likely will fall to Noel Francisco by the time the government’s brief is due. It remains to be seen whether the Trump administration is catching on that holdovers in DoJ and USPTO are pushing the Google/Obama agenda to dismantle our patent system.


          holdovers in DoJ and USPTO are pushing the Google/Obama agenda to dismantle our patent system

          Quality blog, Dennis.

          Deep, deep stuff from the best and brightest.

      4. 12.1.4

        it will be interesting to see if the conservatives on the court take this as an opportunity.

        Yes! Very “interesting.”

        Thankfully it won’t impact the lives of ordinary people in any meaningful way.

        Right, Dennis? Must be nice to watch all these “interesting” stuff from your home in wonderful Missouri.

      1. 12.2.1

        I can’t condense Hamburger’s book to a comment here but if the Executive can take from you a property right without a jury trial, then unconstitutional. Patents are a federal property right. The PTAB judges are at-will employees of the Executive.

        Restated, I take Alexander Hamilton over Pat Leahy.


          BlueJay, “take?” I thought the government had an absolute right to “take,” subject to the payment of compensation.

          I cannot believe Hamburger is saying exactly this. Perhaps he is using the word “deprive” instead of “take.”

          Anywho, one might want to review Scott v. Neely.

    2. 12.3

      the unconstitutionally of administrative law

      Is that what’s being decided by this case?

      Fascinating. Where does the Constitution say that administrative agencies are unconstitutional? And why on earth would that be the case?

      Dennis, please unblock so the views of The Most Important People Ever can be addressed and — oh my goodness — questioned.

  11. 11

    “Fairly silly way to conduct business….”

    Settled law since Scalia came to the bench. Would you rather go back to picking out parts of the floor debate with lobbyist-written comments for the shill Pat Leahy?

    1. 11.1

      Would you rather go back to picking out parts of the floor debate with lobbyist-written comments for the shill Pat Leahy?

      Because those are the only two options.

      Deep serious stuff.

  12. 10

    anony” “What does the text of the US Constitution say?”

    anon “I do not understand your question.”


  13. 9

    Another thought…what’s the basis for distinguishing IPR/EPR from *PGR* (if there is one)? Is the idea basically that the PTO can put a 9-month “hold” on releasing its authority to revoke, but that such a hold simply cannot be indefinite? And if so, what’s the limit on how long the PTO can maintain such a hold? 9 months? 1 year? 10?

    Or, is PGR simply unconstitutional too – on the idea that patent “issuance” is the only possible point of no return (at least administratively)?

    1. 9.1

      what’s the basis for distinguishing IPR/EPR from *PGR* (if there is one)

      There isn’t any such basis.

      If you go back to Sherwood Forest in 1732, where all important aspects of 21st century America were predicted and planned for, and the people were undoubtedly the most enlightened and far-sighted in the history of the universe, you will discover that anything that was called a “granted patent” can only have its validity challenged in a trial conducted before a jury of males.

      The right to an all-male jury trial for patent validity cases makes so much sense its remarkable that anyone would even question it. That’s why there was such a huge controversy and many Supreme Court battles when interference practice was established in the United States.

    2. 9.2

      The point of grant is when an inchoate right becomes a personal property right.

      Prior to that, the domain is (rightfully) within the administrative agency.

      After that point, the domain may become a matter for the administrative agency, IF all provisions according to takings law are observed.

      1. 9.2.1

        The point of grant is when an inchoate right becomes a personal property right.

        Whatever kind of “right” you wish to call it, it’s a conditional right, by statute. And the statute defines the right as one that is subject to revocation by the administrative agency upon review.

        Nothing in the Constitution prohibits Congress from defining a “patent right” in this manner. Nothing. Congress isn’t obligated to protect or create any kind of “patent right”. That Constitution is crystal clear on this latter point.


          You continue to miss the point that once a property right is established that other Constitutional protections kick in that even Congress is not free to ignore. Your attempts at “conditional” do not – and cannot – provide an “escape” from those other Constitutional property protections.

          Your litany of half-truths will never become a full truth just because you repeat yourself (you MUST take into account the rest of the story).

          You are aware of what half-truths are called, right?


            once a property right is established that other Constitutional protections kick in

            If the so-called “property right” in question is conditional and its revokability is baked in by Congress, then the only relevant Constitutional protection is due process.

            You are not obliged to seek patent rights if you don’t like them. There is no guarantee of any “patent right” in the Constitution, nor is there any guarantee for the ownership of any type of property whatsoever.

            There is something in there about promoting “the general welfare” but that’s never been a concern for you or your glibertarian cohorts.


              Your rejoinder is vapor.

              You use the word “due process,” but I am not sure you know what that means.

              Are you familiar with takings law?


                Your rejoinder is vapor.

                Says the guy who “rejoins” with nothing but innuendo and silly insults.

      2. 9.2.2

        The point of grant is when an inchoate right becomes a personal property right.

        Have you any authority for this assertion, or is this just a personal theory that you are developing on this thread?


          Plenty of authority – and a long standing view.

          Feel free to post YOUR authority (if you have any) to the contrary.


            Bother! Hopefully it comes through eventually. This arbitrary embargoing of messages is a nuisance.


              While exchanges (of the unfettered back and forth immediate variety) can be a bit more sharp, those who fear not the exchanges should be appalled at the editorial decisions here.

              I am reminded of words from John Maynard Keynes:

              “Words ought to be a little wild, for they are the assault of thought on the unthinking.”

  14. 8

    The brief mentions how judges nevertheless can influence juries, and even “direct” verdicts…although it also says that juries don’t have to abide by such “direction.”

    So…what would this mean for judicial review of jury decisions? Would judges, at the trial level and/or appellate level, still be able to throw out a jury determination (of validity) by deeming it “unreasonable” or some such?

    And if so, wouldn’t a “jury trial right” be essentially hallow? I know that jury trial rights on civil matters (even when they do exist) aren’t as strong as on the criminal side, but still…

    1. 8.1

      what would this mean for judicial review of jury decisions?

      The answer depends on how that situation was handled in Sherwood Forest in 1732.

      Because what is meant by a “patent right” now is exactly the same as what is what was meant by a “patent right” back then.

      It’s true the Constitution doesn’t even mention “patent rights” and it also treats what we call “intellectual property” as an optional exercise that Congress can ignore if it chooses. And it’s also true that Congress has defined a “patent right” as a conditional right that is subject to revocation, consistent with due process, by the administrative agency who granted the conditional right.

      But let’s set all that aside. The most important thing is more money for patent litigators and “patent monetizers”! Let’s never forget this. Everything else, and everybody else — including the ability of government agencies to do they’re tasked to do — is a secondary consideration. Because Sherwood Forest in 1732. And because some entitled whining cry b abies can never be satisfied.

      1. 8.1.1

        Do you have anything actually meaningful or on point to add, Malcolm?

        After I bush away the ad hominem, and filter out the spin (conditional right that is subject to revocation, consistent with due process” indeed), there is nothing there from you.

    1. 7.1


      I am one to normally quite readily distinguish the attempted over reach of looking at international law aspects – but you make a critical mistake here as being far too eager to dismiss, given that the the “England… LOL DOES have a direct bearing on the basis of OUR sovereign’s view of the law here.


          Where is the animosity coming from? Did you not make it through law school because of some historical facet?

          As it is, perhaps you should put your feelings aside and focus on the legal issues involved.

          Once you get past your feelings and you try some understanding, your views will likely change.

          Um, are your views open to change when you gain knowledge?

  15. 5

    One has to note that the Federal Circuits opinions on the 7th Amendment are not really all that well educated. Lockwood did seem to suggest that scire facias actions were limited to fraud, when fraud was the only type of problem for which scire facias was not available — unless the fraud was apparent on the face of the patent. One had to proceed in equity.

    1. 4.1

      Also, this is wrong

      “but the constitutional permissiblity of the AIA Trial regime will depend upon whether revocation of patent rights were handled by jury trials in England around the time the Bill of Rights was adopted.”

      Good luck selling that to the Court Dennis.


            anony, if only Article III were involved, we would not win this case. Article III is a balancing act of “considerations.” The libs put great emphasis on congressional purpose, for one.



                Recognizing that I am not answering your question, but is your question even controlling?

                Is this not a bigger issue than what merely Article III may (or may not) have to say?

                1. I do not understand your question.

                  Are you saying that all legal questions are to be answered ONLY with the ver batim text of the Constitution?

                2. anony.

                  Per your direction, cut and paste of the particular section:

                  Article III Section 2.

                  The judicial power shall extend to all cases, in law and equity, arising under this Constitution, the laws of the United States, and treaties made, or which shall be made, under their authority;–to all cases affecting ambassadors, other public ministers and consuls;–to all cases of admiralty and maritime jurisdiction;–to controversies to which the United States shall be a party;–to controversies between two or more states;–between a state and citizens of another state;–between citizens of different states;–between citizens of the same state claiming lands under grants of different states, and between a state, or the citizens thereof, and foreign states, citizens or subjects.

                  In all cases affecting ambassadors, other public ministers and consuls, and those in which a state shall be party, the Supreme Court shall have original jurisdiction. In all the other cases before mentioned, the Supreme Court shall have appellate jurisdiction, both as to law and fact, with such exceptions, and under such regulations as the Congress shall make.

                  The trial of all crimes, except in cases of impeachment, shall be by jury; and such trial shall be held in the state where the said crimes shall have been committed; but when not committed within any state, the trial shall be at such place or places as the Congress may by law have directed.

                  from link to law.cornell.edu



            Does this not still resolve around whether or not the legal right in a granted patent is a personal property right or not?

            Notwithstanding past conversations with the likes of Greg, the public right/personal property right really is a dichotomy that will resolve the question.

            IF (and it is an “IF” given how the Supreme Court so haphazardly with self-contradictory mandates) the Supreme Court decides that patents are property rights, THEN the necessary other Constitutional protections necessarily kick in, and even Congress writing laws cannot be given carte blanche (for a recent example, look at the Tam case and the law written by Congress concerning trademarks).

            IF (and given above, this too is an equally big “IF”), the Court declares patent rights to be public rights, then – again, necessarily – being public rights has ALL KINDS of ripple effects – through many other facets of patent law (for example, exhaustion principles, which are firmly ground in the view that patents are property rights).

            This really is a simple decision – no matter how big the consequences may be in either direction.

            Simple – but with those very big consequences.

            This may even be said to have (and without too much hyperbole) Marbury level consequences.


              “Does this not still resolve around whether or not the legal right in a granted patent is a personal property right or not”

              Yes, and if revoked at law or equity.

              The jury trial argument is a strawman, which Ned embraces like a prom date.

              The fact that the academics are making this about the jury trial shows defcon level 5 panic.

              I agree that if the Supremes use this case to finally clarify Article III it could go down as the most important since Marbury v Madison.


                I do not think “strawman” is the appropriate descriptor.

                A lesser argument does not a straw man make, as both will resoelve to the larger issue (unlike a true strawman, which does not so resolve).

                The fact that the academics are making this about the jury trial shows defcon level 5 panic.

                I do not recognize what point you are trying to make with this statement. If – as you indicate – this may have the import of a Marbury level result, then the reference to “defcon 5” is apt, and the perceived “they are being overblown” that associates with the word “panic” is not appropriate.

                And why would there be “panic” – what is the item (one way – or perhaps the other) that wold be inducing such a high level of panic.

                Can you clarify, anony?

                1. Article 3 and jury trial are separate questions.

                  Lemley and his band of serfs argue that they are the same question.

                  They argue that the legal issue of validity was adjudicated at equity. Hence, no jury trial, and no federal court.

                  As I said, good luck selling that to the Supreme Court.

                  The Court will say:

                  Article 3, law or equity? (Yes)

                  For jury trial, were disputed questions of fact addressed by common law juries? (Yes)

                  So Ned’s jury trial argument is very strong, and will probably win. But it is not the article 3 question.


                anony, you are aware, I hope, that there is no case, ever, prior to 1791 where equity had anything to do with revoking a patent for invention.

  16. 3

    Thanks! Keep the amicus briefs coming.
    [Judging by the prior debates between commentators on this blog, it should not be surprising that arguments will continue as to what was going on, or could have gone on, in various nearly-feudal English courts in their ancient history, centuries before modern administrative agencies became a major part of modern governments. [There must have been by now several million contested administrative trials just as to who gets Social Security or unemployment checks or not.] So yes, all this digging into obscure ancient texts does seem a strange basis on which to fully decide this issue.]

    1. 3.1

      Paul, are you actually arguing that the Supreme Court should stop following the Seventh Amendment because the law courts of England sat in a very old building, Westminster Hall?

      Btw, have you read the historian brief before you jumped in here with your sarcastic comment?

      1. 3.1.1

        Ned, that was not a sarcastic comment about your research, merely a factual observation that there has already been no shortage on this blog of those who have also dug into these ancient court practices to disagree with your conclusions.



          I see no one who has dug into the historical foundations that disagree with Ned’s view.

          Not a one.

          In fact, ALL those who have viewed the history come out on the same side.

          And that side (notable) is NOT the side that you cheer lead for.

          So no, you are NOT “just giving facts,” and you are – very much – just providing sarcastic snide shots from the sidelines.

          As usual.

    2. 3.2

      Paul, it would be instructive for you to actually read these cases dating from the time of Lord Mansfield. They are very modern, and established precedent that is still followed today on public use, prior invention, the adequacy of a specification, and the difference between claiming methods, machines and principles in the abstract. It was all there before 1800. We follow in the footsteps of giants.

    3. 3.3

      And, did you know Paul that they had full blown examination in England? That gradually gave way to an “opposition” system where parties could object to a patent. These proceedings could descend to trial.

      The degree of our lack of understanding of the English patent system is profound. We owe these professors a lot for their investment correcting the record. This brief of their will be studied and should be studied by all American patent attorneys.

      1. 3.3.1

        The degree of our lack of understanding of the English patent system [prior to the founding of the United States and the writing of its Constitution, which doesnt mention patents] is profound.

        Gee, I wonder why.

  17. 2

    The history of patent revocation via writ of scire facias is interesting, and worth noting that our Congress decided to remove that power.

  18. 1

    “fairly silly” and “buys the notion”….

    That does not sound like an objective academic viewpoint….

    (your last paragraph introducing the other line of Supreme Court precedent bags the question that such purely administrative proceedings are proper in and of themselves – that the property right of a granted patent can be dragged back into the administrative agency land (and – critically – at the point of such a decision – the initiation decision – have sticks in the bundle of property rights taken from the property owner in apparent violation of due process and other Constitutional protections of property)

    1. 1.1

      Dennis, there are also cases that holds that one cannot strip a party if his or her Seventh Amendment rights by assigning their trial to equity or an administrative tribunal. Guess which case that was?

    2. 1.2

      Unfortunately, this post — as with others here — is woefully incomplete and misguided on tone. Writing that the Supreme Court might “buy” an argument suggests that the Supreme Court will be snookered into something. Anyone who knows anything about the history of jury trials for patent litigation, in both the US and England, knows that it is a murky history with very little clarity. And Curtis v. Loether is completely inapplicable. Curtis is a civil rights case, and its discussion about “administrative administration” is limited solely to citing NLRB v. Jones & Laughlin Steel Corp., 301 U. S. 1 (1937), which deals with the NLRB and causes of action distinct from those tried in common law in the 18th century.

      1. 1.2.1

        Judge Rich, tell me, did you read the historian’s brief before you posted this?

        Also, may I ask, have you actually read the cases the brief relies on?

        I have read the cases, and what I can tell you is that the historian’s brief, while very good, is not actually strong enough on the right to a jury trial for patent validity.


          Yes, I did read the brief. It is good, but it still reveals murkiness. It’s strongest as an indictment of Lemley’s armchair historical research.

          I would suggest that you read Christopher Beauchamp’s forthcoming article about the use of scire facias in the early US.

          Do I understand that you’re read all of the original cited cases in Gomez-Arostegui’s brief? That is quite unbelievable, unless of course you are working with him. Perhaps you are Sean Bottomley.


            Judge, no, I have been working on this matter since 2013. I am the lead attorney in MCM Portfolio LLC v. Hewlett Packard.


              Well, congrats for pushing the issue forward, but the murkiness continues even with Dennis’s post today.

      2. 1.2.2

        Anyone who knows anything about the history of jury trials for patent litigation, in both the US and England, knows that it is a murky history with very little clarity.

        Contrasts with the direct takeaway from the article:

        On the validity issues discussed herein, English practice circa 1791 is clear. It is not “ambiguous.”121

        By the way, footnote 121 dismisses (again) the Lemley view of the opposite.

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