Oil States v. Greene’s Energy (Supreme Court 2017)
Briefing continues in the Oil States constitutional challenge to the IPR System. Amicus briefs supporting either the petitioner or neither party were due August 31 with at least 31 filings – Respondents’ brief (both Greene’s Energy and USPTO) will be due October 23 with supporting amicus shortly thereafter.
- Petitioner Merits Brief [Brief][Discussion of Brief]
- Amicus in Support of Petitioner
- Alliacense (N.Heller) [Brief][Discussion of Brief]
- Grass Root Inventors (R.Greenspoon) [Brief]
- 27 Law Professors (Mossoff) [Brief]
- CATO Institute [Brief]
- Affected Patent Owners [Brief]
- Eagle Forum [Brief]
- Unisone Strategic IP [Brief]
- Security People [Brief]
- Abbvie [Brief]
- BIO and AUTM [Brief]
- Blackwell [Brief]
- Karshtedt [Brief]
- Evolutionary Intelligence [Brief]
- Gary Lauder [Brief]
- IEEE-USA [Brief]
- InterDigital [Brief]
- Liquid Power [Brief]
- Pacific Legal and Private Property Interest Groups [Brief]
- PhRMA [Brief]
- Prof. Ely [Brief]
- UNM [Brief]
- Amicus in Support of Neither Party
- Gomez-Arostegui [Brief][Discussion of Brief]
- Association of Amicus Cousel [Brief]
- NYU Civil Jury Project [Brief] (Important Brief by Chemerinsky)
- IPO [Brief] (Patents are private rights)
- Shire Pharma [Brief] (IPRs harm the biotech industry)
- 3M [Brief] (ending IPRs won’t harm the patent system)
- AIPLA [Brief] (IPR system is OK; although property, patents are public rights for the Article III analysis)
- BPLA (Boston) [Brief] (IPRs serve an important goal)
- PTAB Assn [Brief] (IPR “Benefits all parties”)
- IPLAC (Chicago) [Brief] (Patents issued after AIA might be treated differently than those issued before-hand)
- Petitions-stage Briefs
I have not reviewed all of these these briefs, yet, but have a few notes above. As expected, the vast majority of these top-side briefs support the petitioner. I have highlighted above the few briefs, including that by AIPLA, that support keeping the current system.
Attempting to summarize (to the extent that I am able to summarize anything) the way my thoughts are going on the Oil States question.
First of all a statement of “disinterest”: I have lived virtually the whole of my life in common law jurisdictions outside the United States, where any perceived “right” to trial by jury in the majority of civil cases disappeared sometime in the 19th century. I am not aware that there is anyone in those jurisdictions has seriously suggested that justice suffered thereby. Nor have I noticed a groundswell of opinion claiming that rights to jury trials in such cases should be reestablished in those jurisdictions.
But the states of Colonial America did ratify the US Constitution with Article III and the Seventh Amendment, and this surely has consequences today that surely might at least be perceived to be interesting. And clearly there are those today in the US who attach particular importance to the rights preserved by the Seventh Amendment.
===
Some have surely noticed a developing obsession, in my recent posts, with discussion of letters patent. I posit that grants made through the issuance of letters patent are of fundamental importance in common law, from the development of common law in medieval times prior to the enactment of statutes, down to the present day. The issuance of valid letters patent was the mechanism by which rights were granted. The grantor had to be one authorized to grant the specified rights (e.g., the King of England, the Duke of Lancaster, from the time of John of Gaunt, later the President of the United States, or the Secretary of State for Commerce). The grant had to be lawful, otherwise it could be invalidated in law by scire facias actions until well into the 19th century. And letters patent typically contained provisos with which the grantee had to comply in the exercise of the granted rights.
And the rights could always be asserted, challenged and vindicated in courts of common law. Therefore, I suggest, they were without question legal rights. And if, say, a King wished to annul such rights, then either proceedings had to be instituted in courts of common law, or else the supreme authority of the king in parliament (in the UK) had to be invoked through the passing of an act quashing the rights previously granted. (Thus, for example, acts of parliament were needed to enable railways to be built across private land.)
What were the rights granted to Richard Arkwright in 1775. First of all, that “he the said Richard his executors, administrators, and assigns, should at any time agree with, and no others, from time to time, and at all times thereafter, during the term of years therein expressed, should and lawfully might make, use, exercise, and vend his said invention, within that part of our kingdom of Great Britain, called England, our dominion of Wales, and town of Berwick upon Tweed; and also in our colonies and plantations abroad, in such manner as to him the said Richard Arkwright, his executors, administrators or assigns, or any of them should, in their discretions seem meet.”
OK, the affirmative rights to “make, use, exercise and vend”.
Then the exclusive rights: the King required of his subjects in England, Wales, Berwick-upon-Tweed and the Colonies and Plantations “that neither they nor any of them at any time during the continuance of the said term of fourteen years, thereby granted, either directly or indirectly, should make, use or put in practice the said invention, or any part of the same so attained unto by the said Richard Arkwright, as aforesaid; nor in any wise counterfeit, imitate, or resemble the same, nor should make or cause to be made any addition thereunto, or substraction from the same, whereby to pretend himself or themselves the inventor or inventors, devisor or devisors thereof, without the licence, consent or agreement of the said Richard Arkwright, his executors, administrators and assigns, in writing, under his or their hands and seals, first had and obtained in that behalf, upon such pains and penalties as could or might be justly inflicted on such offenders for their contempt of that his said Majesty’s royal command.”
But the grant of these rights was accompanied by a series of provisos. Compliance with those provisos ensured that the patent grant was consistent with the Statute of Monopolies and other legislation, and required the patentee to deposit for inrolment an adequate specification. The question for the jury in the scire facias proceedings (The King v. Arkwright) was whether or not the provisos had been complied with, and in particular whether the “invention&rduo; was truly novel and properly described in the specification.
Now, I suggest, statutes and other legislation determined the terms on which grants of this nature could lawfully be made. But I would suggest that rights such as the exclusive rights to make, use and vend were not rights created by statute. There were, I suggest, typical of rights recognized in common law. After all medieval cities had guilds, markets, and the like, and the establishment of these required grants of rights to make and vend, together with exclusive rights to prevent others making and vending articles of manufacture. Thus the rights enumerated in the texts of patents of invention were rights litigated in common law courts for centuries before 1791.
===
I have noticed that a number of SCOTUS cases developing its more recent Seventh Amendment jurisprudence seem concerned with bankruptcy proceedings. In this connection I note that bankruptcy proceedings in 18th century England seem to have involved common law courts, the High Court of Chancery sitting in equity, and “commissioners of bankruptcy”. I assume that lawyers have had a field day disentangling the Seventh Amendment implications of all this.
But I would suggest that the wording of the “test” enunciated in Granfinanciera was designed so as to apply to “rights” and associated causes of action unknown to the subjects of King George III, and that the traditional exclusive rights to make, use and vend cannot be characterized in such terms.
Developing the argument further.
Commentators such as Blackstone seem to say little about commercial law, such as it was back up to the latter half of the 18th century. Also I noticed on amicus brief for the petitioner arguing against describing the patent rights as a “franchise”. Nevertheless, in the language of medieval and early modern times, I would suggest that patent rights for inventions constitute a “franchise”, and that infringement of the patent is a “disturbance” of that franchise. See Blackstone’s commentaries, Book 3, Chapter 16, Of Disturbance. In particular there seems to me to be an analogy between patent rights and the common law surrounding markets. For a discussion of the law concerning markets, see
Sic semper Monopoliis: modernising the law of markets and fairs, available here:
link to barcouncil.org.uk
Also I would look to the text of the English Statute of Monopolies of 1623:
link to ipmall.info
On a close reading, it seems to me that the first section outlaws monopolies that are unlawful or contrary to statute:
“BE IT ENACTED, that all monopolies and all commissions, grants, licenses, charters, and letters patents heretofore made or granted, or hereafter to be made or granted to any person or persons, bodies politic or corporate whatsoever, of or for the sole buying, selling, making, working, or using of anything within this realm or the dominion of Wales, or of any other monopolies, or of power, liberty, or faculty, to dispense with any others, or to give licence or toleration to do, use, or exercise anything against the tenor or purport of any law or statute;
[…], are altogether contrary to the laws of this realm, and so are and shall be utterly void and of none effect, and in
no wise to be put in use or execution.”
(My italics.)
In summary, unlawful monopolies, including those granted contrary to statute, are and shall be utterly void.
Thus the law can regulate the granting of monopolies by letters patent etc., and law can be developed through the passage of statutes.
But, by implication, there could be lawful monopolies. And succeeding sections of the Statute of Monopolies of 1623 provide examples of monopolies whose lawfulness cannot be impugned by reference to that statute. These include fourteen-year monopolies granted by patents for inventions.
Section 7 of the Statute of Monopolies of 1623 makes this clear: “Provided also, that this act or anything therein contained shall not in any wise extend or be prejudicial to any grant or privilege, power, or authority whatsoever heretofore made, granted, allowed, or confirmed by any act of parliament now in force, so long as the same shall so continue in force.“
Also section 9 ensures that typical rights granted by royal charters are also excepted: “ Provided also, that this act or anything therein contained shall not in any wise extend or be prejudicial unto the city of London, or to any city, borough, or town corporate within this realm, for or concerning any grants, charters, or letters patent to them, or any of them made or granted, or for or concerning any custom or customs used by or within them or any of them; or unto any corporations, companies, or fellowships of any art, trade, occupation, or mystery, or to any companies, or societies of merchants within this realm erected for the maintenance, enlargement, or ordering of any trade or merchandise; but that the same charters, customs, corporations, companies, fellowships, and societies, and their liberties, privileges, powers, and immunities, shall be and continue of such force and effect as they were before the making of this act, and of none other; anything before in this act not contained to the contrary in any wise notwithstanding.”
From all this, I would draw the proposition that the Statute of Limitations explicitly recognizes that letters patent had been lawfully and validly issued “for the sole buying, selling, making, working, or using of anything”
Thus those rights were, in the 17th century and before, legal rights that could be asserted, challenged and vindicated in the common law courts. See especially Section 2 of the Statute of Monopolies.
Furthermore, such rights were, to the best of my knowledge and belief, not rights created by statute. Surely such exclusive rights had been lawfully and validly granted by the Crown in medieval and early modern England through exercise of the royal prerogative, not on the basis of explicit statutory authorization.
Thus, prior to 1791, such rights were very much the subject matter of suits at common law.
And because modern patent law concerns the grant, by letters patent, of a bundle of rights of the same nature as those that were routinely granted in the 18th century, the rights granted by a modern patent, I would argue, are not the creature of Title 35 of the US Code.
(Suppose that you own a parcel of land in fee simple. Does the nature of our property right depend on whether you title descends from a grant by a king to a royal favorite, or alternatively from a grant under a Homestead Act? Surely the nature of the property right, and its legal consequences, is exactly the same in both cases.)
Distant, in my view, whether a patent owner had a right to a trial by jury for validity in an infringement action, a bill in equity, or in an ITC action for an exclusion order is hardly at issue in Oil States for none of those kinds of actions are involved in an IPR. An IPR seeks to cancel a patent. The only action at common law that is pertinent to the constitutionality of IPR is the writ scire facias whose single object was the cancellation of a patent for invalidity, among other grounds.
It is remarkable that among all the briefs filed to date before the Supreme Court, just one recognizes this important fact.
Several briefs discuss the actions of the Crown and the Privy Council in revoking patents for invalidity — a practice that ended in 1753. But now you raise a separate issue, the right of Parliament to “acquire” land by statute for railroads. Can you give us more on this, because what you describe is very much like our eminent domain where the courts do retain the exclusive power to determine the value of the land acquired.
Ned, I had difficulty in finding what I was looking for.
I looked for the first of the Bridgewater Canal acts, passed in 1759 to enable the construction of that canal (in Lancashire). I found the citation 32 Geo. III, c. 2. R. A., and the title of the act in the Statutes at Large. But, presumably because this was a private act, the text of the act was not printed. But, from secondary sources, it seemed that this act set the precedent for compulsory purchase provisions for constructing transport infrastructure. See Bridgewater, the Canal Duke, 1736—1803, by Hugh Malet, which has a Google Books page opening at page 45 here:
link to books.google.ie
Nevertheless, the following link seems to serve the purpose of finding the provisions of a relevant act of parliament. (It concerns a different “Bridgewater”, the town of Bridgewater in Somerset, England.)
link to books.google.ie
From The London Gazette, Part 5.
“Chard Canal and Railway Company, Extension of a Railway from Ilminster to Chard, and Amalgamation with the Bridgewater and Taunton Canal and Stolford Railway and Harbour Company.
“Notice is hereby given, that application is intended to be made ot Parliament in the next session, for leave to bring in a Bill to alter, amend, and enlarge the powers and provisions of the several Acts following,[…]
[…]
“And notice is hereby further given, that it is intended in the said Bill to apply for powers for the compulsory purchase of lands, houses, hereditaments, and property, and to vary or extinguish all rights and privileges in any manner connected with the lands, houses, hereditaments, and property proposed to be purchased and taken for the purposes aforesaid, and also to levy tolls, rates or duties, upon or in respect of the said branch or extension railway and works, and to alter existing tolls, rates, or duties, and to confer, vary, or extinguish exemptions from the payment of tolls, rates, and duties, and other rights and privileges.”
[And so on and so forth.]
More background reading?
William L. Letwin, The English Common Law concerning Monopolies, The University of Chicago Law Review, Vol 21 (1954), 355—385.
link to chicagounbound.uchicago.edu
Posted 9/13/17 on the Patents Post Grant blog are quotes from other Fed. Cir. decisions and Cuozzo as to an IPR “trial” NOT being like any actual trial or other common law proceeding, which is indicated as relevant to this Sup. Ct. case:
link to patentspostgrant.com
Paul, are the differences cited in Cuzzo material given McCormick Harvesting that focused solely on the remedy, not the procedures or parties or whether the proceeding in the PTO was anything like a trial?
Since we have been flogged to death on this blog with a “bundle of sticks” argument without any citations, here are some I cut & pasted: “The bundle of power and privileges to which we give the name of ownership is not constant through the ages. The faggots must be put together and rebound from time to time.” (Cardozo 1928, 129). Kaiser Aetna v. United States, 444 U.S. 164 (1979, 176) referring to “sticks in the bundle of rights that are commonly characterized as property”; United States v. Craft, 535 U.S. 274 (2002, 278) “A common idiom
describes property as a ‘bundle of sticks’…”.
Do they support a theory that the removal of one stick destroys the entire bundle, or the opposite?
I am posting here a link to more stuff from the trial transcript in Rex v. Arkwright, a very well-documented lawsuit in England in 1785 to annul letters patent granted to Richard Arkwright using a writ of scire facias. In accordance with procedures revived in England around that time, proceedings began in the High Court of Chancery, where the pleadings took place. The issues were then sent for jury trial in the Court of King’s Bench.
The procedure applicable in scire facias actions to annul letters patent has been summarized by Coke, Blackstone, and many others. It involves the common law jurisdiction of the High Court of Chancery. Proceedings began in Chancery, but if there was no demurrer (where one party assented to the facts pleaded by the opposing party but disputed the issues on legal grounds), the case was sent to the Court of King’s Bench for jury trial. In this case the Lord Chancellor was required to deliver the record developed in the High Court of Chancery, with his own hands, to the Court of King’s Bench.
What I have typed out and made available in the link below is the text of the record that the Lord Chancellor presented to the Court of King’s Bench in Rex v. Arkwright, which I have taken from the trial transcript published by printers Hughes and Walsh in 1785. Whilst there are copious reports of the trial, including opening statements of counsel, examination and cross examination of witnesses, and the summing up by the trial judge, I have not, to the best of my recollection, come across these pleadings in any law report that I have so far seen.
Note the multiple levels of quotation: the report developed in the Court of King’s Bench incorporated verbatim the text of the report developed in the High Court of Chancery, which in turn incorporated the text of the writ of scire facias which in turn incorporated the provisions of the letters patent, and also incorporated verbatim the text of Arkwright’s specification enrolled in the Chancery!
(The trial transcript is available in Eighteenth Century Collections Online, a database containing digitized publications made available by Thomson Gale.)
The pleadings in Rex v. Arkwright should accordingly be available as typed up by me here:
link to distantperspective.blogspot.com
Having posted a link to the pleadings in Rex v. Arkwright, I aim to start commenting.
Going first right to the end of the record of transmitted to the Court of King’s Bench by the Lord Chancellor, we find the actual pleadings on the four issues joined.
And we find that both parties agreed that the four issues were issues of fact, to be determined by a jury verdict. The form of words follows that set out in Book III, Chapter 21 of Blackstone’s Commentaries. (see comment 15.1 below).
Take, for example, the pleadings on the second of the four issues joined:
“And the said Richard Arkwright further says, that the said invention, at the time of the granting of the said letters patent, was a new invention as to the public use and exercise thereof within that part of Great Britain called England, and of this he also puts himself upon the country, &c. and the said Richard Pepper Arden, who prosecutes as aforesaid, doth so likewise.”
Translated, Richard Arkwright (represented by his attorney, present on his behalf) disputes the allegation that the said invention was not a new invention, as to the public use and exercise thereof and demands a jury trial, with the verdict of the jury resolving the issue. (According to Blackstone, the words “put himself on his country” are used when a party demands a jury trial.) The Attorney General, Richard Pepper Arden, agrees that this issue should be decided by the jury. The parties have therefore joined the issue as an issue of fact.
The same form of words is employed for the other three issues. As a result, the parties have agreed in their pleadings that all four issues are issues of fact for a jury to decide. (Thus the verdict of the jury should suffice to decide the outcome of the trial.)
Distant, from the transcript of Judge Buller’s jury instructions, we see that the issues tried to a jury were prior use, prior invention, and insufficient specification. However, we also see from the record transfer of Chancery that “inconvenience” was intended to be tried as well. But it was not tried. One can infer that at some point after transfer and for trial that the issue of inconvenience dropped out of the trial. Confirming this inference, you have posted actual trial transcript demonstrating this to be the case.
Next, some thoughts as to the reasons why scire facias actions to annul letters patent were commenced in the High Court of Chancery. The short answer given is that the patent rolls were kept there. Indeed they were kept in the Rolls Chapel within the Chancery.
The following are speculations that have occurred to me, as a non-expert and non-lawyer.
The writ of scire facias purports to recite verbatim the conditions of the patent grant, and to reproduce verbatim the text of the specification that Arkwright supplied to the Chancery to be enrolled. These documents are the basis for the trial, and of course the patent rolls need to have been accurately transcribed if justice is to be done.
Now the defendant is required to plead for each of the issues raised. Now there were safeguards. Defendants had the right to inspect documents upon which the case against them was based. To quote from Blackstone’s Commentaries:
“There are also many other previous steps which may be taken by a defendant before he puts in his plea. He may, in real actions, demand a view of the thing in question, in order to ascertain it’s identity and other circumstances. He may crave oyer of the writ, or of the bond, or other speciality upon which the action is brought; that is to hear it read to him; the generality of defendants in the times of antient simplicity being supposed incapable to read it themselves: whereupon the whole is entered verbatim upon the record, and the defendant may take advantage of any condition or other part of it, not stated in the plaintiff’s declaration.”
(Blackstone’s Commentaries, 7th edition of 1775, Book III, Chapter 20, page 299.)
As one who is a non-expert and non-lawyer, I would conclude from this that any relevant documents would need to be available for inspection in the court where the pleadings were recorded. Thus, in proceedings for repeal of a patent, the patent rolls would need to be available for inspection, if the defendant insisted on inspecting them before giving his plea. Thus it would make sense, on procedural grounds, for the case to commence in the High Court of Chancery.
What seems surprising to me, Distant, is that they did not print patents in those days. If the point of the patent was to inform the public of how to make and use the invention, this seems odd.
I recall some similar difficulties in United States about how to publish the patent. I think there was a proposal in the initial statutes that the patentee put a copy of the patent in every district court.
It would be interesting to know when somebody made a decision either in United Kingdom or in America that we had to print patents in order to fill an essential purpose for the grant.
Not a decision, but I have come across this,
link to books.google.com
See page 59 (64 out of 271 if the PDF).
===
Veneris, 22o die Maii, 1829.
Mr. Francis Abbott, again called in; and Examined.
Do you think it would be advisable to print the specifications of existing patents for public use, in order to publish them? – I have generally considered it would be prejudicial to the interest of the country, by their getting abroad, I am speaking of it in a national point of view, sending many valuable discoveries abroad; many of those things perhaps would be bought from English manufacturers, but if the specifications all go abroad they would be more likely to be made there than they would be if the information was not so circulated.
Do you think that it would be advisable, that copies of the specifications should be entered in the different manufacturing counties, so as to be accessible to the public there? – Any person wanting that information, and residing near a country town where the specifications are entered, would certainly get it much cheaper if he could go and inspect it there, than by coming up to London to inspect it, or writing to someone to procure him a copy.
You are aware that titles of patents and sometimes the specifications are published in public journals? – I am aware that there are different periodical publications that contain several of them, but not all; they have a regular list of all the patents, but they generally have a limited number only of the specifications…
Ibid. pp. 155-60. Expert witness of Thomas Aspinall, Consul of the United States of America, resident in London, to the Select Committee (of the UK House of Commons), describing the US patent system.
Also, in the report of the Select Committee, linked to above, Appendix B, a list of English patent cases that had been reported, with observations on them by expert witness John Farey.
Appendix A is a list of acts of parliament (and failed attempts to secure acts) relating to patents of invention.
Also appendices with the patent laws of various countries, e.g., France, Spain, Austria.
Distant, I get it. England wanted full disclosure of how to make and use the invention, but also wanted that know how limited to Englishmen if that were possible.
Solution, do not publish.
Second solution, limit access to the records to Englishmen who have a proven need to know. (I made this up, but would have helped with Solution I.)
I proposed, but no one took me seriously, that we (America) keep secret that part of any specification that teaches one of ordinary skill how to make and use on the basis that a patent discloses the invention to the world but only provides protection for the country of the inventor, unless he chooses to file abroad, and at great expense. We could then provide American citizens with the need to know public access to this information either during trial in the United States, or after the patent has expired. But regardless, at no time would anybody else ever have access to this information.
In the US, we now keep some patent application secret on the basis of national security. It seems this could be extended to all American-based inventions, but only to the extent that they teach how to make and use. This would be in America’s national interests as well as in the interests of the inventor.
By treaty, we can keep this part of any application secret when Americans file abroad or when foreigners who have similar secrecy provision filed in the United States.
It is something I think we ought to consider.
Ned,
You were not taken seriously because your suggesti0n is quite frankly asinine.
The US system simply is NOT the UK system that you think (or want) it to be.
anon, your comment shows you really do not understand the point.
No Ned, Quite the opposite.
I understand – and reject – your point.
Do not take the rejection as somehow a lack of understanding. Return to the conservation in which you first floated that dead on arrival “do not publish” line of thought.
anon, you do know that this disclosure is the reason so many companies choose trade secrets over patents?
Ned,
And you do know that the OPTION of choosing trade secrets has always been there – and is EVEN MORE a reason to use both a carrot and a stick approach with strong patent systems.
Your “point” only shows my views to be more strong., while giving NO benefit to your position.
So thanks for that.
The PTAB Bar Association brief was eyebrow raising. 1. That there already exists an ‘interest’ in protecting something so new;
2. PTAB already had jurisdiction on appeal from original examination (and apparenlty couldn’t do the job right the first time either);
3. Procedure and policy concerning examination is biased to allowance (ok, so PTO needs new management, procedures and policy, e.g., assign the examiner a more ‘public advocate’ role, stronger rejections, and the PTAB it’s traditional role as administrative ‘appeal’ over origination examination.
4. Doing the job right the first time is hard work, so let PTO slide on that, because you know, we can’t possibly expect excellence from a government agency, so we need a TPAB biased to rejection -right hand, which is the same fault we foisted on PTO left hand. So two bad policies and procedures (examination and PTAB) – make a good one?
If it was PTAB’s objective to preserve their jurisdiction over issued patents – I think this brief was counter-productive, as it raises many suggestive thoughts in the reader’s mind, as to how the examination system could be improved, without creating the serious legal issues at hand. Meh, just my 2 cents.
“Procedure and policy concerning examination is biased to allowance”
Based on what?
Certainly not the reality of everyday practice.
Other than that, I 100% agree with the thrust of your point 4.
To me, therein lies BOTH the problem with any such efforts after grant and the fact that NO amount of “after the horse has left the barn” efforts will improve the quality of the original process.
It’s as if basic quality management principles have never been heard by the Office (or the pundits SOOOO desperately wanting an after grant program.
“Procedure and policy concerning examination is biased to allowance”
Well, it’s not my argument, it’s the PTAB Bar Assoc argument. They make it by diving in the count system, the rules, MPEP etc, minutia, eye’s glazing over. To me, putting myself in SCOTUS shoes, make me think: Ok, so fix the examination system – and problem solved – no need for this Constitutional overreach. I thought it undercut TPAB’s position. And the “no amount of time, money or effort”, will eliminate the need for PTAB, was not credible. We got through the invention explosion at the turn of the century with the old system – including injunctions and the old lost profits – and we have plenty of electricity, radio, radars, etc today, no PTAB required.
“ They make it by diving in the count system, the rules, MPEP etc, minutia, eye’s glazing over. ”
Thanks for that clarification.
In other words, the brief is so wildly off, given that they get the current reality of examination off, that it deserves zero credibility.
(and I will agree 100% with your “Ok, so fix the examination system – and problem solved – no need for this Constitutional overreach.“)
In view of comments below re PTO regulatory and rulemaking authority, note that [unlike the prior Dudas rulemaking attempt suit] AIA 35 USC 316(a) specifically gives the Director broad statutory rulemaking authority for various aspects of AIA post-grant proceedings.
That’s a good point Paul.
It does however, create the problem as to whether or not Congress may do so (the other constitutional protections that inure to the property right known as a patent at the time of grant).
Paul, the question is not the PTO’s authority regarding post grant, it is a question of the PTO’s discretionary authority to deny a patent in the first place based upon its expertise.
Now that we’ve established the incoherency of views and fee-fees about what was going on in the brains of wig-bedecked Englishmen in the 18th century who were dealing with a completely different system of governance and vastly different underlying facts, let’s pause for a moment and remember that the same people pushing these junk “unconstitutionality” arguments have spent years telling us that the it was impossible to understand what the term “abstract” means.
But they’re very serious people! Totally not just a bunch of entitled whiners trying to turn the clock back to 1990 so they can start “monetizing” their junk again, at everyone else’s expense.
“Now that we’ve established the incoherency of views and fee-fees”
Stultifying.
This sentence describes the rest of the post at 17 by Malcolm to a T.
He’s got that Accuse Others meme down solid.
Folks, the best part is that when “anon” is through accusing me of being “the Trump” of this blog, he’s busy high-fiving Night Wiper and MAWA 6 and mewling about “political correctness”.
But he’s totally not a whining, entitled hypocrite. Nope. He’s a super hard working patent attorney! Salt of the earth kind type, always looking out for the little guy.
LOL
Did you have a point?
That’s what I thought.
By the by, you ARE the Trump of this blog.
And PC is something I rail against because it is the non-thinking of goose-stepping to the Left.
And you are the whining entitled Leftist hypocrite.
And yes, we both know that.
Dozens of reasons for SCOTUS to abolish IPR. It failed to reduce the expense and duration of litigation. It is entirely redundant. There is no downside to undoing it. In deciding the threshold question of whether Congress exceeded its authority, the safe answer is yes.
LOL
Very, very serious stuff.
IPR. It failed to reduce the expense and duration of litigation.
LOL
It is entirely redundant.
LOL
There is no downside to undoing it.
LOLOLOLOLOLOL
whether Congress exceeded its authority
Well, it’s already a given that if anything happens anywhere that diminishes the value of a granted patent, then somebody must have “exceeded their authority.” The patent maximalists are never to blame for anything, after all. They’re just the nicest and smartest people out there and if everyone would just be quiet and pay them the ridiculous licensing fees for their junk patents then we would haven’t all these problems.
LOLOLOLOLOLOLOLOLOL
There are many references, in amici briefs, to Sir William Blackstone’s Commentaries on the Laws of England. This prompted me to check out the original text in an 18th century edition. I have found Blackstone very rewarding to read. With a view to providing the source for potential future comments, I have made a full transcription of Blackstone’s account of the High Court of Chancery, in Book III, Chapter IV, Section VIII. It is available on a rather sporadic blog at the following URL:
link to distantperspective.blogspot.com
The transcription has been made from a digitized version of the 7th Edition of Blackstone’s Commentaries on the Laws of England, freely available on Google books at the following URL:
link to books.google.com
Eighteenth century sources relevant to English common law make frequent use of terms such as issue, demurrer and nonsuited. Whilst definitions of such terms can easily be found on the Web, it seemed to me that there might be some advantage in having such terminology explained in the ipsissima verba of Sir William Blackstone. Accordingly I have set up a blog posting with extracts from Chapter 21 of Book III of Blackstone’s Commentaries.
link to distantperspective.blogspot.com
The succeeding two chapters of Blackstone discuss fact finding in common law courts. It would be a mistake hastily to assume that all fact-finding was assigned to juries. Chapter 23 of Book III discusses trial by jury. However in Chapter 22, Blackstone writes as follows:
“The species of trials in civil cases are seven: by record; by inspection, or examination; by certificate; by witnesses; by wager of battel; by wager of law; and by jury.”
It would be a mistake hastily to assume that all fact-finding was assigned to juries.
No kidding.
I thought that every legal issue relating to the “proper” rule of juries for all time and under every possible set of societal circumstances was established beyond any question by those powdery wig guys back in the 19th century. You know, the same guys who were totally comfortable with the idea of all-male juries as the foundational rule. Because super enlightened.
Now for some analysis.
A multitude of sources besides Blackstone can be used to establish that, in late eighteenth century England, scire facias actions to invalidate letters patent proceeded entirely in common law, and that fact finding was through trial by jury.
But now let us note what Blackstone had to say in Book III, Chapter 4, Section VIII of his commentaries.
This concluding the first paragraph of the discussion:
“And all this, over and above the vast and extensive jurisdiction which he exercises in his judicial capacity in the court of chancery; wherein, as in the exchequer, there are two distinct tribunals: the one ordinary, being a court of common law; the other extraordinary, being a court of equity.”
Then, regarding the “ordinary” (common-law) tribunal:
“The ordinary legal court is much more antient than the court of equity. It’s jurisdiction is to hold plea upon a scire facias to repeal and cancel the king’s patent, when made against law, or upon untrue suggestions;…”
(Blackstone continues by listing various matters besides repeal of letters patent that also come within the jurisdiction of the High Court of Chancery, when sitting in common law.)
At the end of this second paragraph, Blackstone writes as follows:
“But if any cause comes to issue in this court, that is, if any fact be disputed between the parties, the chancellor cannot try it, having no power to summon a jury; but must deliver the record propria manu into the court of king’s bench, where it shall be tried by the country, and judgment shall there be given thereon. And when judgment is given in chancery upon demurrer or the like, a writ of error, in nature of an appeal, lies out of this ordinary court into the court of king’s bench: though so little is usually done on the common law side of the court, that I have met with no traces of any writ of error being actually brought, since the fourteenth year of queen Elizabeth, A. D. 1572.”
Thus if there are facts in dispute, the issue has to go to the Court of King’s Bench for a trial by jury. But if one party admits to the facts pleaded by the opposing party, but disputes the legal consequences alleged to flow from these facts, then the first party can demur, and, provided that the second party joins the demurrer, the Lord Chancellor can hear legal argument and decide the case as a matter of law. (Note of course that nothing here concerns “equitable remedies“ – Blackstone is discussing the common law jurisdiction of the High Court of Chancery.)
The next point to notice is that, according to Blackstone, in its “ordinary” jurisdiction, the High Court of Chancery was inferior to the Court of King’s Bench, in that judgments of the former could be appealed to the latter, though this had not occurred since the reign of Queen Elizabeth.
Furthermore, the use of the term “writ of error” seems to confirm (if such confirmation were needed) that, following demurrer, the Chancellor would rule as a matter of common law. Indeed, later in Blackstone’s account of the High Court of Chancery, he discusses appeals to the House of Lords. As he explains, the term “writ of error” was used when the losing party appeals from a decision of a common law court, whereas the term “appeal” was used for appeals from courts in equity. In Blackstone’s words:
“From this court of equity in chancery, as from the other superior courts, an appeal lies to the house of peers. But there are these differences between appeals from a court of equity, and writs of error from a court of law: 1. That the former may be brought upon any interlocutory matter, the latter on nothing but only a definitive judgment. 2. That on writs of error the house of lords pronounces the judgment, on appeals it gives direction to the court below to rectify it’s own decree.”
Thus if, from the Lord Chancellor’s judgment following demurrer in a scire facias proceeding, a “writ of error” lies to the Court of King’s Bench (which had no jurisdiction to sit in equity), then the Lord Chancellor must have been applying the common law, and not the principles of equity.
Digging through the briefs. Some have some interesting perspective and different arguments. The fee generating arguments of Unisone – priceless.
Iwasthere, I think the Supreme Court could have a field day with this case because it has the opportunity to wax eloquently on both Article III and the Seventh Amendment. The importance of the case is highlighted by the fact that the constitutionality an act of Congress is under question. It is a rarity, I believe, that an act of Congress is ever declared unconstitutional. But this might be one of those rare occurrences.
I see from some of the amici a plea to rule narrowly that the court not upset the apple cart elsewhere. That is a common theme not only among those not generally associated with patent law, but is also theme of the briefs to protect reexaminations while having IPRs declared unconstitutional. I do not know how they make that argument with a straight face given McCormick Harvesting.
If the briefs of those supporting the infringer or anything like the AIPLA brief, the side supporting IPRs does not have a chance. It will be interesting what the government has to say, however. Its voice typically is the loudest.
Administrative agencies seek to expand their power and scope – it’s what they do. And here we have an actual financial incentive for the Agency to do just that. That’s must be an unusual situation to say the least. The Government here is really defending the indefensible – but the ‘public rights’ argument is borderline disingenuous. Karchtedt, as you noted, makes a powerful point that ‘invalidity’ itself only exists in the context of the tort of infringement. BIO, makes the practical point of reverse-trolling (a US patent has gone from asset to liability under the AIA anyone, anytime, any reason, can abstractly take in invalidity drive by on any US patent). This should be 9-0, if it’s 5-4 striking down the PTAB, then wow, elections really do have consequences. PS, I wonder what Lemley has found in Sharia law re: patent rights?, he is not going to find support in US Law and traditions.
“ Karchtedt, as you noted, makes a powerful point that ‘invalidity’ itself only exists in the context of the tort of infringement.”
As I counter note – this is an Achilles heal to that brief. See post 10.1.
So D.C. declaratory judgement suits only attacking patent validity would also be unconstitutional on that Karchtedt basis?
[Yet this appeal is asserted to be limited to only IPRs?]
Paul, you forget compulsory counterclaims. The filing of DJ action forces the patent owner to file an infringement action else it is gone.
Ned, if a D.J. invalidity suit is unconstitutional, the suit would never validly gets to the counter-claim stage, since jurisdiction has to be decided first. A counter-clam infringement suit is only compulsory if the D.J. proceeds and in the sense that the same D.J. defendant patent owner cannot sue the same D.J. plaintiff for infringement in another suit. Did Karchtedt ever consider that?
Anon at 10.1 argues a different problem with Karchtedt’s theory. No PTO consideration of validity of ANY kind or process addresses infringement or requires any infringing party.
Paul, I think you are too wrapped up in form and really fail to address the substance. Karshtedt addresses substance.
Ned,
Karshtedt misses one very glaring substantive point.
The AIA simply was not written – nor intended – to have standing as a requirement for pursuing a matter in the Article I phase of IPR.
To rely then on stating that validity is only properly challenged as a defensive item in a proper Article III matter simply is not talking about the actual law at point.
Anon, I am not missing any glaring point. I have already addressed this issue, but apparently the post was blocked in the filter.
Karshtedt addresses standing at fn. 5.
Ned,
Not so.
Footnote five address the main body point of:
“Moreover, Congress spelled out the relationship
between IPR and future infringement actions,
id. § 315(e), and provided for appellate review of the
PTAB’s decisions on the assumption that the petitioner
would, as a party facing an actual or potential
infringement suit, have standing to appeal the PTAB’s
confirmation of the patentability of the claims at issue,
id. § 319.5”
Once again, Karshtedt ASSUMES that only those with the ability to at some point challenge validity as a defense to an infringement charge are in play.
This is just not what the AIA does.
He is off – and very much so on this critical point.
That he turns around and in the footnote to that main body point of his RAISE the very issue under consideration (the Article III problem) – does NOT address that issue in the first place, nor does it excuse his INCORRECT view of what Congress has done.
THAT Congress may have written a law that cannot stand (given the attempt to confer standing in an Article III forum by fiat), simply does not cure the Achilles Heel fault in his brief.
anon, Karshtedt is arguing that congress assumed that only people was standing would employ IPRs. The structure of the statute indicates this to be the case.
In fact a lot of the structure of the statute would make no sense if there were no standing requirement at least implicitly. Just for example consider that the IPR is not final until all appeals have been exhausted. Both parties have a right to appeal. Thus how could the IPR begin without the ability of the petitioner to appeal? And if the petitioner cannot appeal or participate in the appeal because the petitioner has no standing, how can there ever be a final order? How can the claims ever be canceled?
Again, from the statutory point of view, the whole thing is set up to deal with petitioners who have standing, will have a right to a DJ action, who are accused of infringement or who have actually been sued for infringement. It makes no sense whatsoever with respect to entities that do not have standing.
“anon, Karshtedt is arguing that congress assumed that only people was standing would employ IPRs. ”
Karshtedt is DEAD WRONG on that point.
We’ve been over this MANY times now – the AIA simply does not stand for that proposition.
“The structure of the statute indicates this to be the case. ”
NO – it does not.
Repeating your error again and again does not make it any less an error.
AS to standing – READ WHAT I HAVE WRITTEN. I have clearly laid out the error of Congress in writing for a two-forum system, wherein the first forum has no standing requirement.
You act as if I have not seen or understand this – trust me, I understand this BETTER THAN YOU.
anon, relying on your prior statements as authority to prove your point is hardly reliable authority —
but I note it is much done by authors of law review articles and briefs.
“relying on your prior statements as authority”
Nice misdirection.
Maybe you want to pay attention to what is IN those prior statements…
It is beyond clear that your attempted view of Congress mandating standing for its Article I portion of the IPR process is simply in error.
That is just NOT what happened in the AIA.
I am not using my own earlier statements “as authority” on this matter. I reflect that my own earlier statements (to which, YOU HAVE NEVER adequately addressed) has as the proper authority Congress itself and the AIA.
Your attempt here to kick up dust is refuted.
The point remains: Congress in the AIA purposefully set up the first part of the IPR process so as to NOT require standing.
That is a fact – even if you want to clench tight your eyes to that fact.
That fact will not go away.
That fact exposes the Achilles heal of the Karchtedt brief.
Take a moment and read (again, or for the first time) my post at 10.1
anon, no many how many times you insist this is the case without citing any evidence to support your statement other than your prior statements, then we are at an impasse.
All you have to do is cite chapter and verse from the congressional history.
So IF you seriously think that Congress intended standing to be necessary, then WHY did they set stage one in a forum that does NOT require standing?
You want “chapter and verse” when you are yourself unwilling to use basic logic.
Of what good then, would my providing such “chapter and verse” do?
anon, they put IPRs into the PTO to gain benefit of PTAB expertise in patent law. MCM PORTFOLIO LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1290 (Fed. Cir. 2015).
Ned,
Your SELF-reference does NOT address what Congress did in choosing a forum that has no standing requirement.
This is a very basic point of logic.
IF they wanted “the expertise” and NOT the lack of standing, they could have done so by opening up – by invitation of a court – the ability to provide that expertise.
That is decidedly NOT what they did.
“would also be unconstitutional on that Karchtedt basis?”
You quite miss the point, Paul. read my post below at 10.1.
Administrative agencies seek to expand their power and scope – it’s what they do.
Totally different from everybody else!
Yes, folks, the patent maximalists are very very deep people. Super serious! Totally not just whiners who perpetually complain about everything that affects their bottom lines.
Out of one side of their mouths they plead for Congress to take away the Supreme Court’s jurisdiction over patent law. Out of the other side they beg the Supreme Court to nullify a straightforward and uncontroversial (at least as far as everyone else except they are concerned) regulatory system for managing the massive pile of junk that the “power hungry” PTO unlceashed on the public because (wait for it!) that’s what the patent maximalists demanded.
But they’re totally not hypocrites who will do and say literally anything at any time if it serves their narrow self-interests. Nope. They’re very serious people! They told us so.
“Administrative agencies seek to expand their power and scope – it’s what they do.” To be sure, there is a lot packed in that statement. I suggest you apprise yourself of ‘public choice theory’ see, link to en.wikipedia.org , school of thought. And further, for a person whom, on several threads, has injected race into this debate, you sure are dismissive of the protection afforded by a jury. If you ever get called, I suggest you serve, very eye opening experience.
“It is a rarity, I believe, that an act of Congress is ever declared unconstitutional. ”
While perhaps rare, Tam immediately jumps to mind…
“anything like the AIPLA brief, the side supporting IPRs does not have a chance. It will be interesting what the government has to say, however. Its voice typically is the loudest.”
I agree with you about the take away from the AIPLA brief (a true embarrassment).
But I would say – at least in our favorite ecosystem – that the loudest voice has certainly not been the government, but instead (albeit typically sniping from the side lines), the loudest voice of pro-IPR has been Paul F. Morgan.
In fact, I would say that Paul ranks at least first and second on the list of pro-IPR posters. Others may include Malcolm and Greg.
Since I care not who Malcolm really is (and disdain calls that sound in “outing”), I don’t bother with wanting to see a brief from him. However, since both Paul and Greg are “already out there,” I do wonder if they will be submitting briefs.
I can readily see Greg doing this.
Paul, on the other hand, as much as he cheer leads for IPRs, he actually has steadfastly avoided any actual engagement on the legal points involved. For being the loudest as cheer leader, the void of actual engagement provides a deafening silence.
Maybe he is afraid that someone will call him a consp1racy theorist (or something).
Nobody cares what you think about anything, “anon.”
Funny then how it is that you are always tr011ing what I white about…
Tam immediately jumps to mind…
Speaking of incoherency.
LOL
Yes, please keep putting lots of weight on Tam!
Do you have a legal argument to make about Tam?
Or you you just bloviating like usual…?
Ned, I like your prognostications at 14.1 above, minus the penultimate sentence, in which I think you meant “are” rather than “or.” Especially your view that this case cannot be so narrowly considered and drawn as to solely impact IPRs.
Paul, “or” and “are” are often misrecognized for me by Dragon — and I do not see the mistake on review.
Ned, if “Confusion reigns among most amici. This is not going to help the court” that is what I had earlier predicted would happen with the ancient English history arguments. Who knows, it may drive the Supremes to a [simpler] decision based on public versus private rights as I believe you suggested might happen?
The only brief that raised issues that I did not raise in my brief to the Federal Circuit in MCM Portfolio LLC is that of Professor Karhstedt. The Federal Circuit simply ignored most of the arguments by conducting a very flawed Article III analysis that did not conduct any historical analysis. I think this is where the Supreme Court will focus its attention.