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).
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.
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.”
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.
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.
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.”
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.
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
Thanks!
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.
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.
Also, I want to clarify that an IPR proceeding will not award anything of value including money.
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.
Good point!
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.
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.
[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.
Nothing?
You are about to total that car.
Your logic is off
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.
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.
link to 717madisonplace.com
This should give everyone an idea of how fair the PTAB is.
So someone else also thinks that the Ends justify the Means…
I saw that. What a joke.
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)?
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?
Why is the reason for revocation important to the VII amendment analysis? I suppose that I am not following your argument here.
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.
>>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.
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.
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.
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.
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.
VG – This would be more compelling, but every item on your list includes errors that seem designed to impugn Lemley.
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….
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.
OSitA,
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.
Risking a per se libel suit against both you and any publisher?
Paul,
Your opinion, quite frankly, is worth nil.
Are you paying attention at all?
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.
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
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.
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.”
Your anti-software meme is shining through.
Your feelings are noted.
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.
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.
Your view begs the question and is not in accord with what a property right – even one granted in error – means.
How so?
How not so?
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.
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?
The editing is SOOOO Fn wonderful.
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.
Your personal feelings are driving your views there Martin.
We both are aware of that.
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).
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.