More Briefs in Support of ending IPRs

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.

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.

196 thoughts on “More Briefs in Support of ending IPRs

  1. 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.

    1. 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.)

    2. 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.

      1. 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.]

  2. 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

    1. 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?

  3. 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?

  4. 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

    1. 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.)

      1. 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.

    2. 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.

      1. 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.

        1. 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…

          1. 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.

          2. 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.

          3. 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.

            1. 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.

              1. anon, your comment shows you really do not understand the point.

                1. 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.

                2. 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.

  5. 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.

    1. 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.

      1. “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.

        1. 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.“)

  6. 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.

    1. 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).

    2. 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.

  7. 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.

    1. 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.

      1. 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

        1. 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.

  8. 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.

    1. 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

  9. 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

    1. 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.”

      1. 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.

    2. 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.

  10. Digging through the briefs. Some have some interesting perspective and different arguments. The fee generating arguments of Unisone – priceless.

    1. 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.

      1. 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.

        1. 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.

          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?]

            1. Paul, you forget compulsory counterclaims. The filing of DJ action forces the patent owner to file an infringement action else it is gone.

              1. 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.

                1. Paul, I think you are too wrapped up in form and really fail to address the substance. Karshtedt addresses substance.

                2. 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.

                3. 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.

                4. 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.

                5. 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.

                6. 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.

                7. 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.

                8. 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

                9. 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.

                10. 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?

                11. 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).

                12. 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.

            2. would also be unconstitutional on that Karchtedt basis?

              You quite miss the point, Paul. read my post below at 10.1.

        2. 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.

          1. “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.

      2. 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).

        1. Nobody cares what you think about anything, “anon.”

          1. Funny then how it is that you are always tr011ing what I white about…

        2. Tam immediately jumps to mind…

          Speaking of incoherency.

          LOL

          Yes, please keep putting lots of weight on Tam!

          1. Do you have a legal argument to make about Tam?

            Or you you just bloviating like usual…?

      3. 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.

        1. Paul, “or” and “are” are often misrecognized for me by Dragon — and I do not see the mistake on review.

  11. 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?

    1. 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.

      1. Ned, at least one of these briefs also relies on citations of Sup. Ct. U.S. government patent “taking” decisions.

  12. Anyone else read many of the Amici Briefs and find them persuasive? The Supreme Court has a history of slapping down the imperious CAFC (which has no peer courts to shame its poor reasoning). My money is on Oil States.

    1. True, but this requires slapping down a highly bi-partisan act of Congress, not just some Fed. Cir. panel decision.

      1. I am not sure (at all) that the fact of the AIA being “highly bi-partisan” as any merit in the determination of whether or not the law so created passes Constitutional muster or not.

        (yes, I realize that this might make you actually provide a comment based on Con law for which you would rather snipe from the sidelines, but THAT is the question that the Court itself decided to take)

        1. I had responded by pointing out Constitutional law principles expressed in Sup. Ct. decisions on the constitutional importance of Sup. Ct. self-restraint in actually overruling as unconstitutional Federal statutes enacted by Congress. [A self-restraint level not applicable to most other Sup. Ct. decisions.] But my note never escaped the filter.

          1. The filter truly blows.

            It stops actual attempts at dialogue while encouraging the drive-by blight that so typifies certain sAme ones here.

            And that’s on top of an uneven and subjective application of who gets to say how much (different counts for different folks).

            Even the DISQUS system was better (at least in an objective sense) than what is now going on.

            oh well, say “La Vee.”

      2. this requires slapping down a highly bi-partisan act of Congress

        And an eminently sensible one at that. The particular feature at issue here is not one that many people — including most patent attorneys — find objectionable, at least conceptually.

        And it’s just going to replaced with something that makes the maximalists even more sad.

        1. Said MM : the Google shill !

          The New Google’s slogan – Don’t be evil. That’s our job.!

        2. Salvaged from “Your comment is awaiting moderation.”

          September 2, 2017 at 12:41 pm

          And an eminently sensible one at that.

          You mean, besides either the Constitutional infirmities or the fact that the AIA is widely recognized as being perhaps the worst EVER written piece of patent legislation in the entire world?

          Methinks that you are merely caught up (again) in your Ends justify the Means thinking….

      3. You mean Google Funding both sides of the aisle with $$$ to get unconstitutional AIA passed : That Bi-Partisan ship ???

        Also Google having more than 250 folks from Google inside the Obama Administration ?

      4. Well there was overwhelming congressional support for appointing themselves to the board of the Washington Airports Authority – and they even sort of ‘bribed’ SCOTUS with private parking spaces at National. But, in the end SCOTUS did the right thing.

    2. Amicus briefs make some different points and it is a cumulative and devastating portrait of the PTAB.

      But the brief of Oil States (attorney Allyson Ho) is just outstanding.

    3. Paul, the confusion about the procedure in England has lasted a long time but is exasperated by the recent Lemley Seventh Amendment article which itself did not seem to fully understand that procedure. The brief by the historians Bottomley and Gomez-Arostegui is, I predict, going to be the authority the Supreme Court ultimately relies on because they point out Lemley’s errors. It is surprising though at the vast majority of amici simply filed arguments about what went on in England without having any awareness of the historians brief or its criticism of Lemley’s article, and thus repeated Lemley’s errors and misunderstandings.

      We all of course look forward to Lemley’s amicus brief on behalf of the infringer, because undoubtedly he will further engagement in a debate with the historians brief on these points.

  13. Ned, your observation above that: “Confusion reigns among most amici. This is not going to help the court” is what I had predicted would happen in an earlier discussion on this case. The ancient English history quagmire may also steer the Court toward your other observation – that the case may be decided [more simply] on a public rights versus private rights basis?

    1. Paul, the government and Federal Circuit MCM Portfolio push the proposition that patent rights are public rights because they are created by statute. MM has strongly echoed this in his arguments over the years: Since Congress can create the rights, they can control how they are litigated.

      But that is not how the public rights doctrine actually works. Simply being created by a federal statute is only a starting point. What really counts is whether the cause of action/remedy created is one that must be tried in the courts. The answer to that question in the case of rights is whether similar actions were tried in the courts prior to 1789. If they were, the analysis stops. If they were not, the analysis continues and this is where the Federal Circuit’s analysis becomes relevant.

      But the Federal Circuit never conducted the historical analysis. That is a central failing of the Federal Circuit analysis. I am sorry to say, that a proper public rights analysis must look to what happened in England prior to 1789 or prior to 1791 in the case of the seventh amendment.

      1. he answer to that question in the case of rights is whether similar actions were tried in the courts prior to 1789.

        Is it just “the actions”? Was it just “the actions” that compelled courts “prior to 1789” to make the decisions they did about where/how to try the issue?

        Or were there other considerations?

        There is no question that the “rights” we’re talking about today are defined completley differently from the “the rights” that existed then. On top of that, the underlying system of governance and the facts on the ground are completely different from what existed then.

        Would these differences have made a difference to the people in 1789? Gosh, I would hope so.

        1. I’m sorry MM, but it is quite apparent you have not read my brief.

          The grounds for invalidity were the same — prior art, prior invention, insufficient specification.

          True, with the advent of claims, we get other issues such as scope, definiteness, abstractness, etc.

          The trial was in a court of law and to a jury. Judgment was given on the verdict. In the case of scire facias, the judge of the common law court ordered the patent cancelled.

          Regarding the underlying system, England had the Magna Carta that guaranteed a right to a trial by jury in a court of law before one’s property could be deprived. That applied in spades to patents.

          The only exception that I could find was the case of Atty. Gen. v. Vernon, a fraud case, that involved sale of land for money and other land. Patents were involved only because the land sold was carved out of a larger estate owned by the crown via patent. So this case’s applicability to patent revocation is a bit suspect.

        2. Said MM : the Google paid shill !

          Paid blogger who works from the bay area from 10:00 AM – 5:00 PM Monday – Fridays.

          The New Google’s slogan – Don’t be evil. That’s our job.!

          Google we hire people to shill for us and if they decide to write anything we don’t like : we fire them.

    2. Paul, comment 12.3 4 reply to your post.

  14. Prof. Karshtedt’s brief is going to be very influential.

    It includes hosts of points in rebuttal of MCM Portfolio and of the government briefs to date, but he argues that IPR decide the validity defense in infringement cases — essentially allowing the PTAB to direct a verdict in a private dispute.

    At the end of the brief, the professor describes that political interference abounded in the RIM case where the mega parties, RIM and Microsoft, met with the director and got him to order a reexamination, and kept interfering even after, in order to pull the rug out from the district court case. (Patently O is cited here.)

    As I have noted before, reexaminations were and are subject to abuse in response to politics given that the director can order a reexamination. The director also is using this same power in IPR to arrange a preferred outcome on a rehearing of a decision it does not like.

    1. On the contrary, Ned, at first blush I find the Karshtedt brief to be excessively weak.

      The major fault – and it IS a major fault – is in conditioning validity as merely a defense to a charge of infringement.

      This goes hand in hand with your repeated mistakes of viewing what has happened in the AIA in that you continue to NOT give credit to the purposeful action of Congress in setting up a system that does not require standing for (at least) the first part of the two-part IPR dance – that first part being in an administrative agency forum that simply does not have the Article III standing requirement.

      It is a plain logical and legal error to put the horse before the cart as Prof. Karshtedt has done and rest the entire strength of his argument on validity as only properly being raised as a defense to a “proper” Article III challenge of patent infringement.

      I guarantee you that the Court will NOT accept that legal view.

      Unfortunately, any other points attempted by Karshtedt will not be heard because of that prime clanging error. Those “hosts of points” cannot rise above the din of the mistake of making validity a mere defense item. That is simply not the law as written by Congress that is either at issue or before the Court.

    2. He was very kind to RIMM in the mischief they were up to with PTO in the collateral attack on validity. In the subsequent FOIA of PTO, on their communications with third party RIMM, PTO actually claimed a ‘joint defense’ work-product privilege over their communications. Indeed, PTO was faxing Office Actions to RIMM before they were mailed to the patent owner! PTO must have a loose definition of ex parte.

  15. The Interdigital brief is infuriating. PTAB running roughshod over Article III judges and juries. Supreme Court must end the insanity.

    1. Well, they don’t pull any punches, which will make some bloggers happy even if it doesn’t impress the 9 that count. But their bolded “Overruling” and “Nullification of Final Judgments” section arguments are not supported by a cite to any such final decision and even admits that “Under current Federal Circuit precedent, so long as ancillary proceedings of any sort are pending in court [i.e., NOT a final judgment] an IPR has the potential to negate the effect of a prior Article III judgment..”

      1. Check Professor Karshtedt’s brief. He is strong on this point.

      2. Paul, you are cruel. They are not punching, not the aggressors. They are crying, pleading for justice. They invented something, received their patents, and proved their case. All at great expense.

        In a sane world, the order of the district judge or findings of a jury is final, unless there is a legal error.

        They cite many cases, including their own. There was no legal error in the district court, yet they lost their exclusive rights. Lost the absurd “race to final judgment”. A race where the contestant is bound hand and foot and beaten with sticks by a mob, miraculously hops across the finish line first, only to find the course was rerouted mid-race.

        It is appalling that you and AIPLA types are so callous to the blatant injustice and abuse of patent owners.

        1. Not just cruel – but somewhat misleading.

          Compare and contrast Paul’s view here with a mirror discussion on another blog: link to ipwatchdog.com

          It’s as if Paul wants to kick dirt over the extent of the problem by making a somewhat banal statement that while perhaps generally true, is also not touching on the degree of the problem at hand with what he notoriously cheer leads for.

        2. They invented something, received their patents,

          This kind of hackery/ clu elessness / intentional obfuscation is exactly why we have IPRs. It’s literally to keep a foot close to your face so when you start blabbing the sole can find its target quickly.

      3. Paul : How much do you get paid from the infringement lobby ?

        1. Not a penny from anyone Brian.
          How much personal income potential increase do you have riding on this decision?

          1. Absolutely LOVE the different return question, Paul.

            Maybe that was the question that you should have been asked.

            1. My answer,as you already knew, is the same for both said questions, and I had also answered your other question already.

              1. Your answer of “being the same” for the second question of potential increase is simply not believable.

                Paul, you no longer practice prosecution. This leaves only a limited sphere of interaction. It is beyond clear THAT you cheer lead for the IPR system – regardless of ANY infirmities in that system.

                It is only logical that you have some driver for that “enthusiasm” that overcomes any appreciation for the actual arguments (and discussion, which you still do not engage on point).

          2. You tell me Paul. I am just an inventor with more than 15 patents to my name.

  16. Aargh!

    Amicus brief for Lauder, Morinville et al. confounds scire facias actions commencing in the Court of Chancery with “equity”, despite the fact that they cite the Gomez-Arostegui brief.

    See the following in the amicus brief for Lauder, Morinville et al.

    “Chancery’s sole role was to consider the pleadings and decide whether equitable relief was appopriate” (on page 7)

    What equitable relief? According to a case discussed in Gomez-Arostegui and Bottomley, “equitable” was granted in a case where there was no remedy under a scire facias common law proceeding. In theory there would be no need for a jury trial if the patentee “demurred”, admitting any facts pleaded, but disputing the legal outcome alleged to follow from those facts. Gomez-Arostegui and Bottomley point out that such demurrers were not common.

    Then, later on p.8, ”Thus in England, while courts in equity could decide certain matters in scire facias proceedings, such as whether to award injunctive relief…”

    But scire facias proceedings were common law through and through. The Lord Chancellor was involved as a common law judge with jurisdiction quite separate from his “extraordinary” equitable jurisdiction. Presumably if there were some from of equitable relief that could be granted, the plaintiff would surely have to bring a suit before the Lord Chancellor sitting in equity.

    1. Distant, it is good of you to point out errors in these amicus briefs that at least the counsel for Oil States can be aware that this sort of misunderstanding exists in the American patent community filing briefs in their support.

      As I noted before, you have expressed your exasperation that the American courts have not been given a accurate picture of English procedure regarding Chancery, particularly when it comes to patent validity or to scire facias actions. For example, not one brief that I have read, including that of Oil States, even seems to know that only the King (Attorney General) might have brought a scire facias. Such was a feature of the writ dating from a time before Coke wrote his treatise. But no one seems to know about it, even after reading Mowry v. Whitney, an American case that held that only the government might bring a scire facias or bill in equity to revoke a patent, relying on the English procedure.

      Thus, when the Privy Council stopped revoking patents for invalidity, it did not surrender that privilege to the common man to unilaterally invoke the authority of the common law court. It remained a privilege only of the King to pursue or not pursue such an action as he saw fit, and decision was generally made by the Attorney General (Solicitor General) upon petition filed in the Petty Bag.

      “Additionally, if the Council had remained available
      at the end of the 18th century, one would have
      expected petitioners to use it instead of scire facias,
      which was a much more complicated and expensive
      procedure. In order to obtain the Attorney General’s
      fiat, for example, prosecutors had to post a
      bond of £500 in which they promised to pay the patentee’s
      costs should the action fail. And prosecutors
      bore all the expenses of scire facias, both in the
      Chancery and King’s Bench, despite the action
      being brought in the name of the Crown and nominally
      for its benefit.117 Importantly, a victorious
      prosecutor could not recover those expenses, as the
      Crown could not obtain costs at common law.118”

      Brief of H. TOMÁS GÓMEZ-AROSTEGUI
      AND SEAN BOTTOMLEY at 36.

      1. Ned, I find that I have misattributed to Gomez-Arostegui and Bottomley a discussion that I found set out in detail in your Alliacense brief. Both briefs very good, IMHO! Basically I had in mind Attorney General v. Vernon. It is mentioned in a footnote in the brief Gomez-Arostegui and Bottomley. But what I remembered were the opinions of the lords justices to the effect that a scire facias would not reach the “deceit”. (Looking back at your brief, that I have just re-read, I am wondering as to the forum for the “full rehearing” in Vernon. The Court of Exchequer Chamber perhaps? Suggesting this, in view of reading Blackstone, Book III, Chap 4, section IX, particularly in view of the fact that the Lord Chancellor participated in the discussion you quoted.)

        It seems to me that another thing to note in Vernon is the remedy, which seems to be specific performance, in that case surrender of the patent. To me there appears to be a fundamental distinction between common law and equity: the common law typically concerns rights, trespasses and torts, and the typical remedy would be award of damages. Equitable remedies seem to be about ordering people around (either ordering them to do things, or else prohibiting them from doing things). Thus it would seem to me that a court sitting in equity would have no jurisdiction to determine that a patent was invalid. (Nevertheless, in considering whether or not to award a preliminary injunction, the Lord Chancellor would no doubt base his order on an assessment of the likelihood of the patentee prevailing in a court of law.) It would seem to me that a court sitting in equity could only provide a legal remedy in a case like Vernon by ordering Vernon to surrender the patent for cancellation, not by giving a ruling that the patent was invalid.

        Applying similar principles to modern patent law, there seem to be those who have argued that the Doctrine of Equivalents is an equitable doctrine, including CAFC judges. But it seems to me that the question as to whether or not someone infringes a patent can only be a legal question: the determination of whether or not the patent infringes is a determination of the scope of the patent right.

        1. Distant, Coke reported that the Chancellor would consult with others from time to time to make a decision — probably on a novel issue of first impression. This was not an appeal, but the full hearing.

          I agree with you that the Chancellor had to use his equitable powers to restore everyone to their position prior to the exchange. Vernon got his money back. The crown got its lands back by cancellation of the patent.

          Scire facias could not provide an adequate remedy. Simply revoking the patent would not have been sufficient.

          Thus, Vernon is not good authority at all for the proposition equity has jurisdiction to revoke a patent for fraud on the issuing authority where revocation via scire facias could provide a complete remedy.

          1. Got it!

            link to books.google.com

            Cases Argued and Adjudged in the HIgh Court of Chancery [1680 – 1719]

            At “page” originally numbered 370, which is on page 510 of a 709 page PDF.

            I note that on “pages” 383–4 it was argued, on behalf of the King that “it was not fitting, that it should be left in the power of the King’s officers by their connivance to put his Majesty without relief in the case of a fraud and surprize: and though there was no precedent of any such suit, yet all precedents had a beginning; and there was scarce any precedent of such a fraud and surprize: and as the remedy was proper, so in this case there was sufficient ground for a decree, there being all the badges of fraud and surprize imaginable. 1st. In the passing of the grant, no warrant to the auditor to make out particulars; no warrant to the surveyor to return an estimate… and here the petition, proposal, the Chancellor’s report, and warrant for the grant, are all of the hand-writing of Woolley, the defendant Vernon’s man…”

            The Lord Chancellor’s decree (on “page” 392): “the patent to be delivered up and cancelled, and that Colonel Vernon should procure his trustees to reconvey; and said, care would be taken that the money should be repaid: but that matter would be most proper upon a petition to the King.”

            This seems clearly an exceptional remedy in an exceptional case, not a run-of-the-mill revocation of an improvidently granted patent.

            1. Distant, you and I agree on this. I am sure anyone who actually reads the full case will agree as well.

  17. Cato’s brief is full of interesting little nuggets of historical case law. I am struck by their citation from Murray’s Lessee on pg. 11 of the brief: “Before the government may be sued, it must consent to waive its sovereign immunity. Because the “United States… may yield this consent upon such terms and under such restrictions as it may think just,” id., the government may insist that suits against it proceed in non-Article III courts.”

    This gives me an idea for a third way that the Congress can cure a constitutional defect if the Court finds one in the IPR statutes. Instead of having a process where one party files a petition asking the PTO to adjudicate its dispute with another party, the process can start with the petitioner challenging the PTO itself, demanding that the PTO cancel the patent. The PTO can then give the patent owner leave to join the proceeding, where the PTO and the owner together defend the patent from the challenger’s attack. Because the government must consent to this attack on its previous decision, it can predicate such consent on a willingness of the petitioner to adjudicate the dispute in the PTO’s own Art. I forum. From there on out, everything else proceeds exactly as IPRs currently proceed, except that the PTO would need to assign an in-house “defender of the patent” to each case.

    1. You are trying W A Y too hard to save the post-grant mechanism.

      1. How so? What about the effort is excessive?

        1. In your hurry to save “IPR,” you have quite forgotten that the item under consideration that you would have someone challenging the government upon, remains a granted property right.

          I know that you “feel” that IPR’s are worth saving and play some “must” role, but you make the same types of mistakes in your efforts to find some “safe” Constitutional ground to attack personal property.

          1. Look, something either is constitutional or it is not. If we can rejigger IPRs to retain the essential benefits but lose the unconstitutional aspects, what is the problem? Merely pounding the table and shouting “property” is no answer to that question.

            1. Merely pounding the table and shouting “property” is no answer to that question.

              Do you really think that is what I am doing?

              If so, then the problem is you and the fact that you still cannot see why the FACT that a patent is property rains on your efforts.

              I am not the one doing the raining – the very essence of property is what is doing the raining.

              If you cannot grasp that, then ALL of your attempted “rejiggering” will FAIL – for the very reason that you are not paying attention to WHY the FACT that property is involved is important.

              1. [T]he problem is… that you still cannot see why the FACT that a patent is property rains on your efforts.

                Ok, then I am not trying too hard. By your account, there remains a constitutional problem with my suggestion, in which case I am not trying hard enough.

                1. Meh – not trying hard enough in one dimension is caused by trying TOO hard in another.

                  I think you get the point though (at least, I hope you do).

          2. I know that you “feel” that IPR’s are worth saving

            Other than a tiny tiny tiny handful of rich white entitled people like yourself, are there significant numbers of educated people who feel otherwise?

            Answer: nope.

            That will be a hard fact to swallow. Maybe you want to share that fact with your readers, Dennis?

            1. “rich white entitled”….

              How in the F is this appropriate?

            2. Actually the CBC – was very receptive to the inherent inequality and prejudice in the ‘patent troll’ name calling – as a class of owners underserving of the full patent right – equal treatment under the law. It’s like dropping the N-bomb and demanding a prejudiced procedure.

            3. Tell us MM :

              Are you white ni && er who likes free sh &t

              OR

              Are you a white cu -ck who likes his mo -m & wi-fe to be treated a public property ?

      2. post-grant mechanism

        There doesn’t have to be a ‘post-grant’ mechanism, you know.

        The government could conditionally lease the “right to sue” but never “grant” anything.

        Or do you think that would be “unconstitutional” too?

        1. ?

          Under such a scheme, the inchoate right never matures.

          That is NOT what the patent clause provides authority for.

          So, your last sentence is a bit crabbed, but basically, in some sense, “unconstitutional” is indeed what it would be.

          1. the inchoate right never matures

            The term “inchoate right” and the ter “inchoate right matures” do not appear in the Constitution. You’re a very serious person, though! Super deep.

            That is NOT what the patent clause provides authority for.

            LOL The term “patent” also does NOT (<–all caps! LOL) appear in the Constitution.

            We both know what the clause says, "anon." If you have an argument that any regulatory system created by Congress to promote progress in the useful arts must include the term "grant" in it and the grant must be a private property right (as opposed to, e.g., a non-transferrable right to sue), then go ahead and make the argument.

            Congress could also create a system where inventors have an "exclusive" non-transferrable "right" to sue for one minute, after which the right reverts to the Federal government for leasing on a conditional basis, subject to agency revocation. Are you going to suggest that the Constitution prohibits that, too? What's the argument?

            Let's hear it, "anon." You're a very serious person! A truly deep and wise Constitutional scholar and an "expert" in statutory interpretation. LOLOLOLOLOL

            1. do not appear in the Constitution. You’re a very serious person, though! Super deep.

              What kind of argument is that?

              Do you even understand what “appearing in the Constitution” means?

              Do you get – at all – that the arguments that I am presenting do NOT include a compelte re-write of ALL of the pertinent laws? – INCLUDING, by the way, the other Constitutional protections that inure at the point that something does become property.

              You seem to want to argue something that you really have not established. You seem to want to argue some alternative future law set that Congress sets out and instead of a property right, creates some non-property right in its stead for the Constitutional patent clause (and yes, while “patent” is not a word in that clause, you really should pull your head out and understand the historical context and that it was beyond clear that patents were what was being discussed there).

              Your ham-fisted attempt then rests not only on NOT taking any sense of historical context into view, but also creating some other mythical legal system – across MORE THAN just the patent clause, and THEN trying to ascribe some type of view to me that you can then attack (without YOU actually setting any type of competent setting for such an alternative reality discussion).

              As it is, my responses to date have already sufficiently addressed your rather lackluster efforts at setting some alternative reality. Your new “hypo” of a one minute, then revert to the Government is beyond banal. The word “sham” in its proper legal context nullifies your odd alternative reality, even as that odd alternative reality is so divorced from historical contexts as to raise serious doubts as to your understanding of basic patent law principles.

          2. Under such a scheme, the inchoate right never matures.

            Sure it does. One day you have no right to sue an infringer, the jext day you do. That is what it means for the inchoate right to mature.

            1. That is NOT what it means – no grant, no maturity (yes, it is that simple).

              1. (btw, the patent grant merely as a “right to sue” is NOT the proper view of the topic here – do not fall for Malcolm’s odd mischaracterizations)

            2. The right to sue, or the right to exclude?

              I can see why the PTO and AIPLA believes it is the former. They are vultures.

              If the patent grant or verdicts meant something, they couldn’t keep billing to prosecute, enforce, and defend the same patent for two decades.

    2. Greg, if the Supremes declare IPRs unconstitutional (which I still doubt is going to happen) the “answer” is to dismantle the system and start from scratch.

      To the extent that there is a viable argument out there that Congress lacks the power to promote progress with any highly limited, highly circumscribed, very conditional and agency-revocable right to sue infringers (and I’m not aware of such an argument), then we’re looking at a worthless Constitution.

      1. Your feelings are noted.

        As is your continued pretending that upon grant, a property right inures other Constitutional protections for which even Congress may not disregard.

        1. (As is your continued pretending that you do not know that upon grant….)

      2. That worthless constitution is worth billions of time more that the $ wh -o- re who you came ou t off

        Here is loo k ing at y ou

  18. I have not read IPLAC (Chicago)’s brief, but if their point really is that one should distinguish IPRs of AIA from pre-AIA patents, I guess that strikes me as intuitively plausible, but the problem is that the statute makes no such distinction. It strikes me as hard to swallow that you would be “giving effect to the will of Congress” by giving the statute a reading that Congress surely did not intend, as evidenced by AIA § 18 (CBMs).

    1. The Constitution could recognize a distinction, theoretically at least.

      1. What words (in the Constitution) would possibly do that – theoretically or otherwise?

        😉

  19. Dennis it would be helpful to link the petition briefing as well.

  20. The NYU Civil Jury Project could have saved themselves a lot of time by just slapping a cover on Lysander Spooner’s book about jury nullification and submitting that. It would have been just as (un)convincing and (ir)relevant to the case being litigated here.

  21. Thank goodness these amici are all totally unbiased and objective.

  22. The AIPLA brief is easily one of the most embarrassing pieces of rubbish actually submitted to a court that I have ever read.

    I have no idea who “blessed” this brief or how it was formulated, but I assure you: it is most definitely NOT representative of members of the AIPLA.

    to finally end the constant blog speculations.

    Your chicken sh_t stance is noted. Your “conspiracy” aspersion simply has NO place here Paul, as that aspersion attaches to ALL those seeking merely one side that you happen to cheer lead against.

    Notably, YOU refused to ever actually engage on the merits of comments made in these blogs, which makes your (incessant) call for them to stop extremely dubious.

    Rather than trying to “hush” the child telling the emperor that he has no clothes, the better path would be to engage in the substantive points.

    Perhaps you will claim that you lack the knowledge of Con law to do so. But such an admission would carry with it the notion that you are in no position to lay judgement (as you do).

    1. The AIPLA brief is easily one of the most embarrassing pieces of rubbish actually submitted to a court that I have ever read.

      Regrettably, I have to agree. Consider pg. 14: “Patent law is plainly ‘a federal regulatory scheme,’ considering not only the exclusively federal source of the patent right and the exclusive adjudicatory authority
      over the enforcement of those rights.”

      Huh? So every federal statutory right, enforceable in a federal court is ipso facto a “regulatory scheme”? Are social security survivor’s benefits a “regulatory scheme”? Who uses words like this?

      Also pg. 14: “It is also plain that patent law includes an extensive regulatory
      program designed to achieve ‘a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition…'”

      Have they mistaken the PTO for the FTC? It seems strange to call the PTO a “regulatory” agency. Can you really be a “regulator” if you do not have authority to bring criminal charges—or even levy monetary fines—for violations?

      After reading AIPLA’s brief, one is left with the impression of people just throwing words at a page, with little thought for the cogency of the argument.

      1. You are objecting to the description of the patent system as a regulatory scheme? Really?

        That’s what it is.

        1. Who is being regulated? Where can we look in the law to find the regulatory objectives?

          1. EPA Says: TO get a permit to pollute, you need to do X, Y, and Z. Purpose is to reduce pollution.
            PTO Says: To get a patent, you must do X, Y, and Z. Purpose is to Promote the Progress in the Useful Arts.

            1. In the case of EPA, doing X, Y & Z really does reduce pollution.

              What are the X, Y, & Z that the PTO requires, and whose compliance “Promotes the Progress in the Useful Arts”?

            1. So something is a “public right” if it is tied to a “federal regulatory scheme,” and it is tied to a federal regulatory scheme so long as any aspect of the thing is governed by some provision in the CFR? That seems like a definition of “public rights” so broad as to swallow literally every aspect of our legal system.

              1. I expect that this is an endless debate because the general definition of “regulatory” seems to include anything that influence behavior – certainly the patent laws fit within this definition. However, it is reasonable to have a more narrow definition when talking about these issues.

                1. Dennis, agreed. The other side (the pro-patent side) could also say that an applicant has a statutory right to a patent for a novel and unobvious invention and that the PTO does not have the discretion to deny a patent to such as the applicant has a statutory right of appeal to a court of law, and it, not the PTO, has the final say.

                  Thus, the PTO regulates nothing. It is just a glorified search service.

                2. I do not think that “discretion” can be the signal feature of a regulator, Ned. If the Congress specifies that 100 ppm airborne Hg emission is a hard limit, the EP has no discretion to permit more Hg emissions, but EPA is definitely “regulating” all the same.

                  To my mind, the distinction is that the EPA’s role is very forward looking. The EPA cares not just that your Hg emissions are under the statutory limit today, but also that they stay under tomorrow.

                  By contrast, the PTO is not insisting that your invention be novel tomorrow. The PTO’s review is always backward looking, never prospective. It seems an awkward use of the word “regulate” when one’s powers of control are so entirely focused on the past.

                3. Regulate: look at Crowell v. Benson’s list.

                  “Regulate” has a meaning under the constitution. It means some statute whereby Congress exercises its power under the commerce clause, or other such clauses, that include the term “regulate.”

                4. Dennis, is not the general definition to regulate that is important to the Supreme Court here. Regulate is a power that Congress has the regulate something – commerce is one example.

                  Thus an agency created pursuant to the commerce clause has regulatory powers.

                5. DC it is reasonable to have a more narrow definition when talking about these issues.

                  ? No idea what this is supposed to mean.

                6. [U]nder the constitution… [‘regulate’] means… Congress exercises its power under the commerce clause, or other such clauses, that include the term ‘regulate.’

                  So any time Congress exercises its commerce clause powers, this creates a “public right” that permits the matter to be withdrawn from the purview of the Art III courts? I am hardly an expert on the separation of powers jurisprudence, but that sounds to me like an insupportably capacious understanding of “public rights.”

                7. Greg: So any time Congress exercises its commerce clause powers, this creates a “public right” that permits the matter to be withdrawn from the purview of the Art III courts? I am hardly an expert on the separation of powers jurisprudence, but that sounds to me like an insupportably capacious understanding of “public rights.”

                  I think there’s more to the analysis than “does the right relate to a regulatory scheme.” The point at issue here is whether the PTO is fairly characterized as a “regulatory agency.” I think it’s hard to argue that it’s not absent some special pleading regarding the meaning of “regulatory” which is what Dennis seems to be driving at.

              2. I suggest the following.

                In order that an agency regulate, it must be awarded some degree of autonomous rule-making authority.

                Suppose that a pharmaceutical cannot be sold and pharmacies, or used in hospitals etc., without a license from a regulatory body. One would surely expect that the agency would employ its expertise to determine the degree and nature of testing that the manufacturer must carry out in order to receive a license. One surely cannot look simply to the text of legislation, and the decisions of the courts, and determine on the basis of the legislation, as interpreted by the courts, whether or not the manufacturer is entitled to a license to distribute the pharmaceutical? Surely the detailed regulations are determined within the agency? Surely legislators in Congress, and/or Federal appelate judges, do not have the expertise to specify in detail themselves the tests that should be carried out to ensure that 1-2-3-splasploditol can be safely released onto the market?

                Compare this with the issuance of patents. If the CAFC is determining whether a particular claim is nonobvious, it surely looks to how SCOTUS and the CAFC have interpreted 103, and often makes its own analysis of the patent application. When did the CAFC last look into whether the USPTO correctly applied Rule 82995, formulated by some committee within the USPTO and approved by its director, where Rule 82995 is not some attempt to codify the consequences of some CAFC opinion, but is a regulation arising within the USPTO itself, from the deliberations of its own experts, that controls whether a patent should issue?

                1. Distant, the applicant is entitled to a patent that complies with the law. The USPTO cannot deny the patent. It is not a matter of agency discretion. It is a legal question. If the USPTO decides not to grant the patent on a legal issue, the applicant has a right to a trial de novo in a district court. That court has the final decision. If it holds for the applicant, it orders the patent issued.

                  The USPTO regulates nothing.

                2. Pursuing my pharmaceutical hypothetical.

                  Suppose the agency (FDA) approves the manufacture of 1-2-3-spasploditol, granting a pharmaceutical company the “right” to place the pharmaceutical on sale. Then suppose that agency experts then have safety concerns, and permission to sell 1-2-3-spasploditol is withdrawn. The company sues for restoration of its right to sell. Should the factual issue as to whether it was proper for the agency to withdraw the license to sell be decided by a jury verdict? In some other scenario, maybe there is some sort of dispute between two potential manufacturers of 1-2-3-spasploditol. Is this the sort of situation where courts should vindicate some sort of 11th Amendment right to a jury trial?

                  I suggest that maybe this is the sort of scenario that the stuff about “public rights”, “quasi-private rights”, “federal regulatory scheme”, “expertise”, etc. is intended to address.

                  Contrast this hypothetical with a situation where federal courts can determine issues of infringement and invalidity on the basis of patent specifications and claim language, prosecution history disclaimers and expert testimony offered by the parties to the dispute, without reference to USPTO “expertise” or the necessity to interpret USPTO “regulations” determined autonomously within the USPTO.

                3. Distant, a regulatory agency is one created pursuant to a power granted Congress “to regulate.” Congress is not an expert, thus it does create expert agencies to carry out detailed regulation according to expertise. Thus, they create rules and decide matters as experts.

                  According to the law, matters committed to agency discretion cannot be reviewed and reversed by a court. Thus, the agency expertise is respected.

                  In contrast, the PTO’s call on legal and factual matters is not final. Its final ruling is subject to de novo review by a court of law, and this extends to both fact and law.

                  The PTO’s expertise is not entitled to the respect of a regulatory agency.

          2. Who is being regulated?

            People who want to monetize the right to sue but who don’t deserve that right.

      2. You have to be able to bring criminal charges to regulate? Really?

        Seems like you could regulate in lots of other ways….

        1. Yes, there are other tools that regulatory agencies can bring to bear, but when I think of the agencies that are all unambiguously regulatory agencies (FDA, FTC, FEC, FCC, etc), they all have (1) power to bring criminal charges for serious violations and (2) power to levy fines. If we set aside the PTO (whose status as a “regulatory agency” is precisely the point presently in question), can you name an agency that all reasonable persons would acknowledge to be a “regulatory” agency, but which cannot bring criminal charges or levy fines?

          1. Hmmm,

            Make patent infringement (like some copyright infringement) into a criminal offense….

            1. But the Copyright office does not prosecute criminal copyright violations. Charges are brought by the copyright holder, not the Copyright office. Similarly, even if you added criminal sanctions t the patent act, it would not be the PTO that would police infringement.

              1. Greg, those are good points to add – but I was aiming more for the fact that copyright law – coming from the same Constitutional clause – DOES have criminal aspects.

          2. can you name an agency that all reasonable persons would acknowledge to be a “regulatory” agency, but which cannot bring criminal charges or levy fines?

            Probably but I’m not even going to bother to try because your objection is so silly.

            Of course the PTO is a regulatory agency. It’s an agency that regulates commerce and competition. It uses the granting of patents to perform that regulation.

            The PTO doesn’t need to regulate with criminal charges because other agencies can pick up that aspect of regulation.

            It’s the government, Greg. The government is people. The PTO is people. It’s me and you. More accurately, it’s the millions and millions and millions of people who are affected but who will never ever ever come close to the PTO.

            1. Probably but I’m not even going to bother to try because your objection is so silly.

              Lulz.

              It’s the government, Greg. The government is people. The PTO is people. It’s me and you. More accurately, it’s the millions and millions and millions of people who are affected but who will never ever ever come close to the PTO.

              You are slipping directly back into the FAILED Lujan mode….

          3. The PTO regulates the issuance of patents not behavior like the the FDA and FTC, for example. The existence of a patent is regulated by the PTO and grants the assignee the right to regulate behavior by filing a patent infringement suit. The penalties associated with a patent infringement suit are regulated by the court system–not the PTO.

            1. The PTO regulates the issuance of patents not behavior

              Oh please give everyone a break already.

            2. NS, The PTO does not have a right to deny a patent that complies with the legal requirements set by Congress. The applicant has a right of a trial de novo in a court of law. The court may order the patent issued.

              That sir, is not PTO regulation.

      3. Even calling it a “regulatory scheme” is dubious. I mean, there’s no thing being regulated. It’s just a system of rules governing patent examination. The rules don’t “regulate” issued patents (except for IPRs). They don’t regulate patentees.

        1. The PTO regulates issued patents by eliminating them for non-payment of maintenance fees, recording assignments, allowing certificates of correction, and by removing their claims for losing interferences, reissues, reexaminations, PGRs, CBMs and IPRs, etc.

          1. Two categories there. Maintenance fees, recording assignments, certificates of correction … those aren’t really regulation of issued patents. That’s ministerial function. A patentee doesn’t have to pay a maint fee or file a cert of correction. Same with assignments; PTO just records it. They don’t make decisions about validity, they don’t regulate in a way that affects the public. They aren’t governing use of patents.

            The second category of course begs the question of whether a patent is a public or private right. You can’t bootstrap the notion that its a public right because the PTO is unconstitutionally regulating it as such.

            1. Paul can*** and regularly does.

              ***at the least, he tries to do that. This is not the first time the “great defender of the IPR at all costs” has so attempted.

  23. With this mass of amicus briefs already, even before presentations of those for other side, the constitutionality of IPRs should now be thoroughly argued from every possible angle and citation, to finally end the constant blog speculations.

    P.S. Will conspiracy bloggers be challenged to explain why the IPO and the AIPLA are indicated here to be on opposite sides of the key issue, even though the IPO represents large companies?

    1. “P.S. Will conspiracy bloggers be challenged to explain why the IPO and the AIPLA are indicated here to be on opposite sides of the key issue, even though the IPO represents large companies?”

      Lawyers make more money with IPRs. Now you charge to prosecute, charge to litigate, and charge to defend an IPR. So lawyers (that make up the AIPLA) like it, but clients of lawyers (i.e., large companies that make up the IPO) dont like it. Is it that hard to understand?

      1. Two problems with that explanation. First, law firms make vastly more money from patent litigation than they do from IPRs – which are also cutting into their patent litigation business. Secondly, the bloggers in question have been regularly insisting that large companies created and support IPRs.

        1. Paul, I think it is a bit early to talk about the absence of argument from the IPR-supporters. I expect that there will be a good number of briefs on that side as well.

          1. Dennis, I was merely noting that in view of all these briefs it can no longer be argued that those who have been constantly attacking the constitutionality of IPRs for years have not had ample opportunity and support on legally arguable grounds to make that case to the Supreme Court.

        2. In my experience, “Big Law” firms make vastly more money from patent litigation, but mid-size, regional, and many (most?) boutique firms are likely doing better with IPR practice. IPR practice is also more amenable to “commoditization” and fixed fees or other AFAs, like prep-and-pros generally. And paying clients like cost predictability. So I would say that the forward-thinking private practitioners are pulling for IPRs.

          1. Ghost, that is an interesting and logical argument. Especially for reexaminations. But remember that more that 80% of IPRs are filed by companies already being sued for patent infringement. I assume that most of them will have hired relatively large firms for their lawsuit litigation defense? In my limited observation those firms will naturally want to keep any IPR work income in their firm unless the client tells them to go elsewhere. Firms that I have heard about as developing a reputation for IPR work are not small either. It would be interesting to see actual statistics. If this does not all become academic.

      2. Lawyers also make money getting patents issued. When patents become much less valuable because of IPRs, the services of those lawyers become less valuable. There’s two sides to the IPR coin. I have some colleagues who have seen a lot of business dry up because their areas of technical expertise are heavily undercut by the potential for invalidating IPRs.

        1. True, although attorney patent application prep and prosecution income has also been heavily, if not more so, impacted by “creative billing” aka corporation-costs-squeezing and Alice-101 unpatentability.
          But which professional organization is filing amicus briefs on behalf of prep and prosecution attorneys?

    2. Lovely editing….

      Sheesh, like labeling people “conspiracy bloggers” is somehow NOT offensive (especially from one the likes of which refused to even attempt to discuss ANY points of merit on the Constitutional issues…)

      Say: “La Vee.”

    3. Paul, excellent point here. What it tells me is that the IPO remains an organization that represents patent owners as opposed to organizations that may have patents, but whose interests are more attuned to their posture as accused infringers.

      I haven’t read the AIPLA brief, but their best argument is a policy argument (they lose on the law). The PTO has been shown as incapable of doing any reasonable job in not issuing patents that read on the prior art (including trends) and that claim results instead of structures, thereby covering the independent inventions of others. Without a properly functioning PTO on the front end, one needs the equivalent of a Privy Council where bad patents are summarily revoked.

      This was Dennis’s argument from a few posts ago.

      1. Except for the fact that within OUR sovereign, the Constitution gets in the way of such things, the “one needs” might be an End that eliminates any concerns with the Means to that End….

        Sir Thomas More and mowing down all the laws to get to the devil comes to mind…

        1. anon, truly. McCormick Harvesting is exactly on point — the Executive has no constitutional authority to revoke patents.

          And, the way that case was worded, the Supreme Court made it abundantly clear that neither did congress.

          1. FYI: link to supreme.justia.com

            Simple statements of jurisdiction sound most loudly when heard in contrast to Malcolm’s desired ends.

            In particular:

            It has been settled by repeated decisions of this Court that when a patent has received the signature of the Secretary of the Interior, countersigned by the Commissioner of Patents, and has had affixed to it the seal of the Patent Office, it has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or cancelled by the President or any other officer of the government. United States v. Schurz, 102 U. S. 378; United States v. Am. Bell Telephone Co., 128 [Page 169 U. S. 609] U.S. 315, 128 U. S. 363. It has become the property of the patentee, and as such is entitled to the same legal protection as other property. Seymour v. Osborne, 11 Wall. 516; Cammeyer v. Newton, 94 U. S. 225; United States v. Palmer, 128 U. S. 262, 128 U. S. 271, citing James v. Campbell, 104 U. S. 356.

    4. Paul, hopefully, yes. But the majority of the briefs, including the main brief by Oil States, still misunderstand and misrepresent the relevant English procedure concerning patent validity and scire facias. Almost none actually report that only the King could and did bring a scire facias, such that only validity was at issue. These were not, as some briefs argue, actions for injunctions or for damages. Nor could they be brought by private parties.

      Confusion reigns among most amici. This is not going to help the court.

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