First Data Corp. and Frank Bisignano v. Eric Inselberg and Inselberg Interactive (Fed. Cir. 2017).
Interesting tale: Back in 2010 Frank Bisignano loaned Inselberg Interactive (Interactive) $500,000 – a loan personally guaranteed by the company’s owner Eric Inselberg as well as by a security interest in the patents owned by Interactive at the time.
By 2011, the federal authorities were after Inselberg and charged him with criminal sports memorabilia fraud. Those charges were later dropped after witnesses recanted Inselberg convinced prosecutors that the witnesses had lied. [UPdate By that time, however, Interactive had defaulted on the loan to Bisignano. As a consequence, “Inselberg and Bisignano entered into an agreement that purported to convey Interactive’s patent portfolio to Bisignano.” [USPTO Assignment Records]
Bisignano later became CEO at First Data and First Data (arguably) began to make use of some of the patents in Inselberg’s former portfolio. Inselberg then approached Bisignano and requested that First Data pay a license fee (and also claiming that the prior assignment was invalid). After being threatened with a lawsuit, Bisignano and First Data filed for declaratory judgment in Federal Court upholding the assignment and thus denying infringement. Inselberg responded with a New Jersey state court action asserting that – under N.J. State Law – that the assignment was invalid. In the state court case, Bisignano asserted non-infringement as a counter claim and then removed that case to federal court as well.
The two federal cases were both docketed before Judge McNulty who dismissed them both — finding no federal cause of action. McNulty wrote:
Inselberg and Interactive acknowledge that they are not now the owners of the patents. They agree that they do not currently possess standing to sue for infringement. [Rather, they seek] a declaratory judgment that the assignment was invalid under state law.
Thus, according to the district court, the only issue truly at hand now is who owns the patents (with a side issue of whether the assignment included further duties). Since transfer of patents is a matter of state law – there is no federal cause of action. [Inselberg District Court Dismissal].
On appeal, the Federal Circuit has affirmed the dismissal – following its prior Jim Arnold decision. Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 F.3d 1567 (Fed. Cir. 1997).
[In Jim Arnold], the plaintiff attempted to assert an infringement claim, but that claim was contingent on the success of the plaintiff’s state law claim that its prior assignment of the patents was void. We concluded that the district court did not have jurisdiction over the infringement claim . . . until ownership is restored in the assignor.
The approach here then is for the State Court to first figure out ownership. Then, if it decides that Interactive is the owner, an infringement case can return to Federal Court.
Brian Brooks founder of Clinton Brooks represented the prevailing party Inselberg while William Adams led the Quinn Emanuel team on the other side.
Ned, since you repeatedly cite a sentence from the 19th century Sup. Ct. McCormick Harvesting decision out of context, and now claim it is on reexaminations, it is time for a reality check:
This was not a Constitutional decision. The word Constitution never appears. It was not a reexamination in any modern usage of that term. No reexamination statute was in existence then. It was about a REISSUE proceeding and in particular a decison on reissue practice as to whether or not the reissue applicant who’s claims were rejected while pending is allowed to take back the patent and sue on the original claims before the reissue is concluded:
“The object of a patentee applying for a reissue is not to reopen the question of the validity of the original patent, but to rectify any error which may have been found to have arisen from his inadvertence or mistake. But until the amended patent shall have been issued the original stand precisely as if a reissue had never been applied for (Allen v. Culp, 166 U.S. 501, 505 , 17 S. Sup. Ct. 644), and must be returned to the owner upon demand.”
[As you have noted before, a reissue application waves Article III rights, and as you note below, the “Supreme Court held in Wellness v. Sharif that Article III rights are waivable just as are Seventh Amendment rights.”]
The context of the decision though is plain, is it not Paul?
Patents are property – not public rights.
If you are going to harangue Ned, at the very least, note that important take-away.
Even if McCormick Harvesting actually ever said that it would be dicta.
No, it was not.
Maybe understand the case that you want to dis someone with…
The context of the decision though is plain, is it not Paul? Patents are property – not public rights.
LOLOLOLOLOLOLOLOOLOLOOL
As if. “The context of the decision … is plain” <— ROTFLMAO
The "context."
What is the matter with these people? Glibertarians have legal minds smaller than the tiniest peppercorns.
Malcolm,
I notice that you refused to comment directly on the McCormick case (when I put that case directly in front of you).
Now, here, all you do is snipe from the sidelines with empty insults that do nothing to advance the conversation.
This blight is the typical Malcolm blight – eleven and half years now.
Great “ecosystem,” eh?
So, the words “deprive the applicant of his property without due process” or “invasion of the judicial branch of the government” do not appear in the case?
The reissue statute then, as now, requires the examiner to reexamine the claims that appear in the patent. The examiner did so and rejected them. The patent owner then abandoned the application, took his patent and sued. The question of the validity of the issued claims was certified to the Supreme Court.
The Supreme Court held that if the examiner had attempted to cancel the claims in the issued patent without the consent of the patent owner that it would in fact be a violation of due process and of the judiciary. But that is exactly what happens in a reexamination, does it not? Cancel claims without consent of the patent owner?
But, you say, all this is fixed by statute? Really? Why didn’t the Supreme Court say that then? The violation would be that the examiner exceeded his statutory authority. But that is not what the Supreme Court said, is it?
RE: “all this is fixed by statute? Really? Why didn’t the Supreme Court say that then?”
I have no idea what you mean by that Ned. Nothing was being “fixed” here, the reissue practice did not require surrender of the original patent until issue of the reissue and thus could be taken back before then, as the Court confirmed. The reexamination statute was not enacted until more than a hundred years later.
BTW, as you know, this is still the case:
MPEP “1416 No Physical Surrender of Original Patent [R-11.2013]
37 CFR 1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent…”
Paul, well it was not clear until McCormick Harvesting that the examination in a reissue application would have no effect on the issued patent.
Paul, the Federal Circuit in MCM Portfolio seemed to suggest that the problem with an examiner cancelling claims in an issued patent was lack of statutory authority that was granted the statutes such as the reexamination statute and the AIA.
Yes it was a problem BEFORE Congress exercised its Constitutional authority over patents with those new statutes.
Of course patent owners have “private” property rights, especially the sole right to sue for infringement, but that does not answer the question of how and from whom the rights arise, or whether they can be eliminated by non-payment of fees, or narrowed by anti-trust laws or inequitable conduct, or narrowed by specific statutes like that for atomic energy, surgery, prior invention by another, or certain prior art in a PTO statutory proceeding.
It is NOT a matter that a takings may occur (think eminent domain).
It IS a matter that the proper MEANS to any such taking have been followed.
At the initiation decision point, those Means for proper takings are simply not in place.
anon, stop it with your taking’s theories. The Supreme Court in McCormick Harvesting identified “due process” as the constitutional violation when the PTO cancels the claims in an issued patent. Takings essentially means the US government is taking property for public use, for which it owes compensation. But invalidating a patent is hardly a taking for public use.
Good point, except for characterizing McCormick Harvesting as “the PTO cancels the claims in an issued patent.” The PTO only cancelled claims in the patent owner’s reissue application, which reissue the patent owner then bailed out of to sue on the original patent claims of the original patent [which was not surrendered at that point].
Takings though is exactly what happens at the initiation decision point, Ned,
You keep on wanting to look at the takings law through a rather crabbed – and incorrect lens.
This is exactly why I think that you were NOT chosen as a champion of the “Patents as Property” fight.
The Supreme Court in McCormick Harvesting identified “due process” as the constitutional violation when the PTO cancels the claims in an issued patent.
LOL
No.
Tell me Malcolm, what DID the Court do in McCormick Harvesting?
the proper MEANS
As in the “due process.” Which is there is an abundance of in post-grant proceedings.
Remember: the only reason you miserable b0 tt0 m feeders want to make this into a “Constitutional” issue is because you’re junk has been devalued and your monetization schemes aren’t working as niftily as they used to. But that’s not because of a lack of “due process.” That’s because your patents are mostly junk.
You say “plenty” and yet have refused to consider the details presented in the past that quite clearly says the opposite.
You then here want to make this into some Ends justify the Means scenario, pulling your typical number one meme of Accuse Others and BLAME the other side for “wanting a certain ends.”
Your “logic” is beyond stale.
Stultifying even.
You say “plenty” and yet have refused to consider the details presented in the past that quite clearly says the opposite.
There have been no “details” presented that “say the opposite” of the following: “There is sufficient due process given to the patentee, by statute, in post-grant proceedings to ensure that any of the patentee’s alleged rights to the granted claims are not being taken away unjustly.”
None. But if you have some “details” to present, go ahead and present them now. Let’s see those “details”, along with your evidence. And don’t forget that patentees have the right to appeal to the CAFC and the Supreme Court.
The games you play Malcolm….
Pretend that I have said nothing, then want a full (RE)telling in order to try to pry some perhaps misstatement in the retelling….
Oh Brier Rabbit, I say thee nay.
But you might pay attention (given your INCORRECT statement of “And don’t forget that patentees have the right to appeal to the CAFC and the Supreme Court.” that the separate legal event of the initiation decision point is expressly NOT appealable and it is at that point that certain sticks in the bundle of property rights are taken without recompense of ANY kind.
Please pay better attention to the ongoing conversations. It will help you tremendously if you resist your initial urges to simply v0m1t forth baseless ad hominem and pay attention to what is actually being said.
Paul, why do you think that even from the first days of this republic the Supreme Court has consistently held, with no exceptions, that the validity of a property right must be decided by a court of law? Cf., Marbury v. Madison, 5 U.S (1 Cranch) 137, 167 (1803).
“The question whether a right has vested or not, is, in its nature, judicial, and must be tried by the judicial authority. If, for example, Mr. Marbury had taken the oaths of a magistrate, and proceeded to act as one; in consequence of which a suit had been instituted against him, in which his defence had depended on his being a magistrate, the validity of his appointment must have been determined by judicial authority.”
Could it possible be that is was so because the validity of legal rights were so determined in England? And if this be true, and its is, does it not follow that it must remains so per Article III and the Seventh Amendment?
Ned, Marbury v. Madison was about a Presidential lame duck appointment, a Federal statute, and the right of the Sup. Ct. to challenge that statute as unconstitutional. Not about private property rights.
Like pulling teeth.
Marbury: “In order to determine whether he is entitled to this commission, it becomes necessary to inquire whether he has been appointed to the office. For if he has been appointed, the law continues him in office for five years, and he is entitled to the possession of those evidences of office, which, being completed, became his property.” Id. at 154.
It is a bit amusing to see Ned lecture Paul about aspects of property (and then turn around and get other aspects so incorrect).
Could it possible be that is was so because the validity of legal rights were so determined in England? And if this be true, and its is, does it not follow that it must remains so per Article III and the Seventh Amendment?
Yawn. This “look into the minds of the powdery wig guys and figure out what they would have done then” cr @p is just as ridiculous and silly now as it was when your first squatted over the punch bowl. And that’s never going to change.
Name calling instead of recognizing how our legal system works….
How Fn typical.
recognizing how our legal system works….
Right. I’m recognizing that our legal system often “works” like an easily manipulated entitled program for the already wealthy and powerful, with utter disregard for what makes sense, what is practical and what is fair.
Going back 250 years to try to figure out what some people brought up in a vastly different society would have thought about the reexamination of “patent rights” that that were granted under a completely different statutory system is an absurdity and a travesty.
“with utter disregard for what makes sense, what is practical and what is fair.”
That’s not recognizing how the legal system works – that is you whining.
You REALLY should understand the difference.
Paul, you might also consider sources. This from Lemley’s infamous work on the Seventh Amendment:
“[I]n 1815, Chief Justice Marshall wrote in the analogous context of revocation of land patents that “a Court of equity appears to be a tribunal better adapted to this object than a Court of law.”110
110 Polk’s Lessee v. Wendal, 13 U.S. (9 Cranch) 87, 99 (1815).
Id. at 1696.
But, what Marshal actually said was this:
“But there are some things so essential to the validity of the contract, that the great principles of justice and of law would be violated, did there not exist some tribunal to which an injured party might appeal, and in which the means by which an elder title was acquired, might be examined. In general, a Court of equity appears to be a tribunal better adapted to this object than a Court of law. On an ejectment, the pleadings give no notice of those latent defects of which the party means to avail himself; and, should he be allowed to use them, the holder of the elder grant might often be surprized. But in equity, the specific points must be brought into view; the various circumstances connected with those points are considered; and all the testimony respecting them may be laid before the Court. The defects in the title are the particular objects of investigation; and the decision of a Court in the last resort upon them is decisive. The Court may, on a view of the whole case, annex equitable conditions to its decree, or order what may be reasonable, without absolutely avoiding a whole grant. In the general, then, a Court of equity is the more eligible tribunal for these questions; and they ought to be excluded from a Court of law. But there are cases in which a grant is absolutely void; as where the state has no title to the thing granted; or where the officer had no authority to issue the grant. In such cases, the validity of the grant is necessarily examinable at law.”
In other words, when there are two parties contending for the same land, equity is the court that may make adjustments to the titles of each. But if the patent is going to be revoked, the title is “necessarily” examined at law.
when there are two parties contending for the same land, equity is the court that may make adjustments to the titles of each. But if the patent is going to be revoked
There’s nothing at all about “patent revocation” in the text you quoted.
And patents aren’t “revoked” at the PTAB. Claims that shouldn’t been granted in the first place are examined and canceled. They can also be amended or “adjusted”.
Are you suggesting that amending claims in a post-grant proceeding is constitutional but canceling them isn’t?
And patents aren’t “revoked” at the PTAB. Claims that shouldn’t been granted in the first place are examined and canceled. They can also be amended or “adjusted”.
wrong and wrong.
There is no right to amend, There is a right to ask for an amendment (and that, heavily constrained).
I put that case directly in front of you
There is no right to amend, There is a right to ask for an amendment (and that, heavily constrained).
LOL
What is the “right to amend” “constrained by”.
Tell everyone. And be sure to explain why that constraint is oh-so-unfair.
MM, with ex parte, the applicant has a right to a patent that complies with the law that the PTO cannot deny. With IPRs, the patent owner has no right to any amended claims — just a right to, according to the rules, move to petition the PTAB “to be so kind as to allow these proposed new claims, your most gracious lords.” The PTAB has unrestrained discretion to deny the motion because the decision is not reviewable by a court of law
The PTAB has unrestrained discretion to deny the motion because the decision is not reviewable by a court of law
No, that’s false. They are constrained by admin law.
Boundy taught you this already.
I love how you ignore the lesson Boundy had for you in that same exchange, Malcolm: the Ends do not justify the Means.
As to the APA, sure, it must be met, but meeting the APA can easily STILL result in a “no amendment for you,” as the rules (and latitude for making those rules) have been FULLY given to the administrative agency and they certainly enjoy Chevron in any challenge of the roadblocks that they may decide to set up.
As to the specific roadblocks – let’s see you do just a little homework on your own. Heck, I will even spot you a case: look up Bergstrom.
MM, there is no appeal to a district court, only to the Federal Circuit. The Federal Circuit only reviews agency fact findings for substantial evidence. This is the same standard of review for a jury verdict.
Thus, absent a clear error of law by the PTAB, which are few and far between, the PTAB decision on claims stand. They are all but non reviewable, just like jury verdicts.
Only the more reason for the US to allow applicants that are independent to file in other countries like the big boys do. Level the field so the small inventors IP isn’t stolen, If the big boys can work around the system, why can’t we?
The hilarious thing about the maximalists which can never be pointed out often enough is that for all their whining about “property rights” and the “Constitution” they don’t seem to have any problem at all with the takings that occur on a massive scale when the PTO grants hundreds of thousands of junk patents a year.
Go figure. It’s almost as if the maximalists are just a pack of entitled rich white guys who care about nothing else except filling their own pockets as quickly as possible at the expense of everyone else. And they’ll literally do and say anything to make that happen. And half their scripts are copied verbatim from the r@ cist glibertarians in the Re pu k k ke party. And they all know it.
Your comment is awaiting moderation.
September 20, 2017 at 7:26 am
rich entitled white guys….
Again with the ra c1st comments….
No one is more Trump in their tactics in this ecosystem than Malcolm….
That’s just it Malcolm, worthless IP. that pays the bills. It’s the good stuff they block if the applicant has no real strong legal help. Let me ask all you little lawyers a question? Maybe you need to get into a line of work where sales and marketing are as strong as your legal knowledge.
Enough of these horror stories will push the small guy towards a savvy lawyer with these strengths that can help the applicant into a quick sale to a company that their idea falls under. And with their quick filing of a 1 year time allowed decision with their savvy lawyer WAHLLAHH. Something to think about.
If you can’t join them, BEAT THEM!
No bad deed goes unrewarded?
Speaking of the Federal Circuit and its not following the law, the case law grows that TC Heartland was not a “change” in the law providing an exception to waiver, and that failure to object to venue or to continue to object to venue constituted a waiver. link to scholar.google.com
This tells me that might initial thoughts on this issue regarding the constitutionality of IPRs are probably going to be sustained — unless one objected and raised the constitutionality issue, it is waived. McCormick Harvesting was then and still is the law. The Federal Circuit should have followed it back in 1985 in Patlex and again in MCM Portfolio.
The Feds are going to have to eat a lot of crow not to overturn thousands IPR and other patent claim cancellations.
The Feds are going to have to eat a lot of crow not to overturn thousands IPR and other patent claim cancellations.
Oh, there will be lots of “crow eating” for sure, Ned, if those incredibly junky patents are “resurrected”.
LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
I can smell the freedom already! It smells like some entitled white guy sweating in his bed because he saw a Muslim near the gate of his community. Gotta crank up the Constitution and get those guns polished. Next thing you know we won’t be trying to read the minds of some powdered wigheads and you know what happens next? Women on juries. Can you imagine?
” near the gate of his community. ”
A lefty no doubt.
Speaking of eating crow, let’s not forget that Ned voted for the Emperor Snowflake, a senile pile of worthless path 0 l0gicall l y in g tr @sh.
Trump to ESPN: Apologize
LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
But, hey: tax breaks. And kicking poor people and brown people in the face. Totally worth it, if you’re Ned Heller.
What the H does this have to do with patent law?
What the H does this have to do with patent law?
Again: the patent maximalists and the glibertarian “white guys rulez!” faction of the US electorate are substantially overlapping. This has been the case for quite a while and will probably always be the case. It shouldn’t surprise anyone, least of all you, Mr. “PC is the worst thing ever.” It’s an utterly predictable correlation, including the ridiculously hypocritical aspects of it (i.e., “government is the problem” out of one side of the mouth and “the government needs to hand out a zillion more patents to us and make it easier to enforce them against everybody!” out of the other side).
Just own it and stop whining, my precious little snowflake. Isn’t G e ne’s place isn’t safe enough for you? You can always enjoy the echo there if you don’t like to face reality here.
Mindless insults…
Maybe spend your time on – you know – learning about patent law.
Great job Prof.
Ned, they are not analogous. With respect to TC Heartland there is no question that when venue is waived, the court has jurisdiction to resolve the infringement dispute. But even if a patent owner stipulates to having the PTO review his patents, the PTO has no authority to revoke them.
Not much different than if MM appointed himself ultimate arbitrator of patent validity, gave you 90 days to prove your patent was not a mistake, and then published a certificate of cancellation. If you wisely blew him off and took a default judgement, your patents would remain safe and sound.
Patent owners that affirmatively surrendered their patent by cancelling or amending claims in post grant proceedings are the only ones that will not benefit from a reversal in Oil States. For all other cases, the PTO revocation is ultra vires.
I messed up the analogy a bit. If you took the bait and argued before the MM tribunal just for the fun of it, you could not lose the patent for real. Just for pretend.
Invention Rights, you are aware, are you not, that Supreme Court held in Wellness v. Sharif that Article III rights are waivable just as are Seventh Amendment rights.
Here are the circumstances where I could see waiver:
1. Patent owner amends or cancels claims in IPR, thus surrenders the patent under §252.
2. Patent owner, as a result of an unfavorable PTAB decision, stipulates to a dismissal of a parallel infringement case. These infringement claims are dead, and maybe the patent as well.
Objecting in the illegal tribunal itself is not relevant to the question of waiver. Handing over your wallet to an armed thug does not mean you consent to to the mugging.
“Handing over your wallet to an armed thug does not mean you consent to to the mugging.”
Ouch.
Do you have to say to the mugger “this is not right” in order to preserve your rights to your own property?
Ned it’s a bit early for crowing about an undecided constitutional decision’s retroactivity, and that is not the same as waver of the application of a venue statute that was always on the statute books with only a Fed. Cir. panel decision incorrectly alleging that it had become moot. So far we only have some conflicting D.C. decisions, and no Fed. Cir. decision, on the latter. Who knows what the Fed. Cir. will decide, and will it perhaps depend on how far a lawsuit has actually progressed?
Paul, you are entirely correct that we are way ahead of ourselves here — but only to a degree. The Supreme Court typically does not take cases only to affirm them.
If you look at IPR from the point of view of traditional Article III case law, or Seventh Amendment case law, there may be enough differences to allow the Supreme Court to say that these are really reexaminations and not validity trials. But McCormick Harvesting was not a validity trial. It was a reexamination. Therefore, if the Supreme Court runs away from Article III and the Seventh Amendment, a runs right into McCormick Harvesting.
It is going to be very interesting to see how the Supreme Court decides this case. But if the rely on McCormick Harvesting, one can argue that the law has not changed and the cases on waiver regarding TC Heartland become highly relevant.
“there may be enough differences to allow the Supreme Court to say that these are really reexaminations and not validity trials.”
That is expressly NOT going to happen Ned.
As I have pointed out – and excepting the low hanging fruit of making a dependent claim into independent form (which no one is arguing about) – there is NO examination by the Office of other claim amendments.
Quite in fact, the courts have already recognized that the PTAB is NOT an examining body. This was point blank stated in one of the rejected-amendment cases.
I remain unsettled on the question of waiver. I do see your point that others could have challenged what is going on (and have failed to do so).
I do wonder if an added wrinkle of the Article III court (and let’s take this next comment as true for argument’s sake) NOT performing its required role when it merely rubber stamps a Rule 36 result on an appeal complicates matters. Since (again, for argument’s sake) the court has not properly “finalized” a judgment, can it be said that the period for renouncing waiver has passed?
Google now hit with sins against leftism suit.
link to finance.yahoo.com
Be google. Bend over backwards to get women in your company. The women aren’t happy because you didn’t bend completely over backwards.
Leftists always repay their own.
Guess the R&D budget can go to pay for these sins. Maybe just a little less innovatin’s will satisfy the leftists. This time.
And guess who provided equal pay — and day care for the babes? Yeah that guy. POTUS.
You’re STILL at the PTO? It figures…
Nah.
Nah? You were let go by the PTO? Wow…
Nah I went home for the day that day.
Leftists always repay their own.
Deep deep stuff.
I’m sure “anon” will be along momentarily to whine about “buckets.”
Sure he will.
He’s a very serious and unbiased person! And totally not a whining hypocrite.
?
It’s all so confusing! Relax, “anon”, nobody really thinks you’re an amazingly dense hypocrite, as far as you know.