Oil States: Government Explains Its Position – A Patent is not Property but Merely a Limited Franchise

Responsive merits briefs have been filed in Oil States v. Greene’s Energy:

The Government presents the question as follows:

Whether inter partes review comports with Article III and the Seventh Amendment.

Rather than seeing a patent right as property, the Government brief identifies patents as simply “revocable privileges” or “governmentally-conferred franchises” whose creation are not associated with any natural right of an inventor but instead are simply tools of public policy designed to “benefit the public by providing an incentive to innovate.”

For the government and patent challengers, it is important to distinguish patents on inventions from traditional “land patents” since those may not be revoked administratively.  According to the government, the distinguishing point is that the government previously owned title to land, but patent rights are a government creation:

The government in issuing a patent [for invention] does not (as with a land patent) convey title to something it previously owned, but instead grants a limited franchise whose scope and contours are wholly defined by the government itself.

Regarding the 7th Amendment challenge – the Government writes that the 7th amendment right does not apply to situations where resolution of a conflict is properly assigned to an administrative (non-Article-III) resolution.

As Greene’s Energy writes – and all parties appear to agree: “The nature of U.S. patent rights … is at the core of the constitutional question before the Court.”    What I think may be the decisive is buried in Greene’s FN4: “At the very least, patents are quasi-private rights, that is, ‘statutory entitlements * * * bestowed by the government on individuals.'”  quoting B & B Hardware v. Hargis Indus., 135 S. Ct. 1293 (2015) (Thomas concurring in trademark context).

= = = =

I’ll note here that to make its policy-case that there are too many patent applications for the PTO to properly handle, the Government perpetuated the USPTO’s false statement that “In 2015, the USPTO received more than 600,000 applications—more than three times as many as it had received two decades earlier.”  That statement includes 273,000 192,000 requests for continued examination (RCEs) as “applications.”

141 thoughts on “Oil States: Government Explains Its Position – A Patent is not Property but Merely a Limited Franchise

  1. Distant Perspective: P.S., Robert Richard Rankin (loc. cit. on parent comment), pp. 104-5:
    “The courts of equity will grant an injunction against the invader of a patent and compel him to account for profits.
    “The facts of validity and infringement, if disputed, must be tried at law; but, in the mean time, an injunction may be obtained.”
    Yet Greene’s Energy are still parroting the bogus assertion that “Claims for annulment or cancellation of a patent—entirely different from the question of patent infringement—were traditionally brought before courts of equity, not resolved by juries”, on the dubious authority of Mowry v. Whitney!

    Mowry cited Stone for the proposition that in the US the bill in equity was a more convenient remedy: “In England this was originally done by scire facias, but a bill in chancery is found a more convenient remedy.” Both Mowry and Stone seem to assume that because the writ was filed in Chancery, it was an equitable remedy and a that a bill was more convenient form of proceeding in this country:

    “These were, of course, returnable into some court; and it appears to have been the practice to do this in the Court of King’s Bench, or in the Court of Chancery, where the record of the patent always remained in what was called the petty bag office. If the latter mode is to be considered a proceeding in chancery which, under our adoption of the methods and jurisdiction of the High Court of Chancery in England, would fall within the province of a chancery court in this country, then the precedent for the exercise of this jurisdiction by a Court of Chancery is clear and undoubted.”

    American Bell (1888) at 360.

    However, none of these courts cited ex parte Wood & Brundage that held that proceedings in the nature of a writ scire facias, a common law writ, had a right to a jury trial based on English practice. Nor did they show any awareness that the English court of chancery had both common law and equitable jurisdictions.

    I made a point of explaining all this to the Federal Circuit in MCM Portfolio. They seemed to understood the point I was making at oral argument. But the court substantially side-stepped the whole issue in its opinion in MCM Portfolio, footnoting ex parte Wood.

    I attempted to do it again in my brief in this case. Oil States main brief also made this same point:

    “But the Court of Chancery still treated these proceedings
    as actions at law, and sat as a court of law, as
    Blackstone noted that Chancery always did for actions
    instituted by writs of scire facias. 3 WILLIAM BLACKSTONE,
    COMMENTARIES 47. In this dual court—“the one
    ordinary, being a court of common law; the other extraordinary
    being a court of equity,” ibid., scire facias
    writs were heard by the former. Ibid. “The ordinary
    legal court [of Chancery] is much more ancient than
    the court of equity. It’s [sic] jurisdiction is to hold
    plea[s] upon a scire facias to repeal and cancel the
    king’s letters patent, when made against law, or upon
    untrue suggestions.” Ibid.”

    Both Green Energy and the United States Government have read Oil States and my briefs, but do not engage on the issue and continue to assert a falsehood based on prior confusion of the Supreme Court in the mid-1800s.

    I can only hope Oil States hammers them strongly in its reply brief because by now these folks should know better and should know that they are misleading the court.

    1. Ned, thanks for the reply!

      I have now found The Queen against Aires. The report of the case is on Google Books here:

      link to books.google.com

      I have made a transcription here:

      link to distantperspective.blogspot.com

      It seems to me highly ironic that, on page 53 of their brief, counsel for Greene’s Energy cite a footnote of Professor Lemley including R. v. Aires to make the point that the petitioner “fails to acknowledge that chancery courts would only refer disputed subsidiary issues of fact. Pet. Br. 51-53“and continues with “See Lemley, supra, at 1688 n.60 (listing cases affirming scire facias revocations by chancery court without a jury). Because, as the report shows, The Queen v. Aires is a case that was decided on foot of a jury verdict!

      Thomas Aires had been issued with letters patent giving him the right to hold fairs in a town in Derbyshire on certain days of the year. Prior to the issuance of writ, an enquiry had been made under a writ of ad quod damnum and a jury had decided that no harm would be caused to anyone by the grant to Thomas Aires of the right to hold these fairs. However the enquiry had been held “clandestinely”, and the grant damaged the interests of the Earl of Rutland, who held fairs four miles away. So a writ of scire facias was issued, in the name of Queen Anne, issue of fact was joined in the High Court of Chancery, and a write of venire facias was issued to summon a jury for a trial in the Court of King’s Bench. A jury trial was accordingly held in that (common law) court, and the jury reached a verdict that the writ was “ad grave damnum of the Earl of Rutland. Judgment was therefore given in the Court of King’s Bench against the patentee.

      I presume, rightly or wrongly, that the reported proceedings in the Court of King’s Bench were on foot of a writ of error coram nobis, appealing the jury verdict.

      The first exception by counsel for the patentee was that the queen had in the meantime passed away, and accordingly the scire facias passed away with her.

      The second exception was that the writ of venire facias should have issued from the Court of King’s Bench, not the High Court of Chancery.

      The third exception was on the merits, and the Attorney General responded that it was a matter for the jury to evaluate the evidence presented.

      The fourth exception was that scire facias was improper, and the Earl of Rutland should have sought damages instead.

      The fifth exception went to the title of the Earl of Rutland for his fair.

      And, sixthly, counsel for the patentee argued that judgment should not have been given in the Court of King’s Bench, but the record should have been remanded to the High Court of Chancery for judgment by the Lord Chancellor. This of course is the very same argument that was made by “Webster” (presumably Thomas Webster, compiler of the eponymous patent cases) in Bynner v. The Queen in 1846. However the Court of King’s Bench, in 1717, gave very short shrift indeed to this argument:

      But the Court said, this point had been so firmly settled, in the case of Jeffreson that they would not suffer it to be debated.

      Judgment was subsequently given for the king, and thus against the patentee.

      ==

      Now note that Butler and R v. Aires are the only two pre-1797 cases cited by name by Lemley in his footnote which, according to him substantiate the proposition that “The House of Lords affirmed a number of scire facias revocations by the chancery court in the period before 1791 without finding a jury necessary.“ Well, as documented elsewhere in these comment, a jury trial wasn’t necessary in Butler because Sir Oliver Butler admitted that matters of fact to enter a demurrer on issues of law, and the reports reference here show that an orthodox jury trial did take place in R. v. Aires.

      And of course counsel for Greene’s Energy in the Oil States appeal cite Lemley’s footnote as “listing cases affirming scire facias revocations by chancery court without a jury”

      1. One has to question whether Lemley ever read the cases he cites because they consistently stand for the opposite of the proposition for which he cites them.

        As we all know, by now, Lemley’s Seventh Amendment article is entirely unreliable should not be citable as authority.

        1. He is a professor.

          Of course he reads the cases he cites.

          And as a professor of law, shaping the minds of attorneys (who must abide by such ethical standards), AND is also active in trying to shape the law directly, he is of course acting under the heightened ethical guidelines that any such double impact access to the process of law mandates.

          Oh wait.

          There is NO such strenuous ethical standard controlling the efforts of those who not only teach law to young (imperssionable) soon-to-be attorneys AND those who also attempt to influence the law directly.

          The “Alfred E. Neuman” standard of “What, me worry?” takes care of that.

      2. Returning to the fray with more stuff on Sir Oliver Butler’s Case. Specifically two blog postings elsewhere.

        The first posting incorporates short paragraphs from The Journals of the House of Lords, volumes 13 and 14, taken from the transcription made by British History Online, tracking the progress of the appeal of Sir Oliver Butler (or Boteler) against the judgment in Chancery. This is available here:

        link to distantperspective.blogspot.com

        The second posting is a transcription of Sir Creswell Levinz’s report of the case (3 Lev. 220). That posting is here:

        link to distantperspective.blogspot.com

        For completeness I add that I had posted Sir Peyton Ventris’s report of the case in Chancery (2 Ventr. 344) here:

        link to distantperspective.blogspot.com

        ===

        When he delivered the opinion of the Supreme Court of the United States in United States v. American Bell Telephone Co. (128 U.S. 315, 1888), Mr. Justice Miller devoted a couple of paragraphs (pp. 361, 362) to The King v. Butler. Perhaps Justice Miller inadvertently misled later commentators by not referring at all to the subject matter of the patent: the letters patent do not convey the grant of a patent of invention, but instead grant the right to hold a market on certain days of the year in the town of Chatham, Kent.

        It seems that the justices of the U.S. Supreme Court did not fully grasp the reasoning of English justices. Justice Miller wrote as follows:

        The whole text of the answers of the judges in this case seems to imply that a jury was not necessary, but that the existence of the record in the Court of Chancery was a sufficient foundation for the proceeding there, though it might be brought in some other court when the King had declared the patent forfeited or when there had been office found. The judgment of the Court of Chancery was therefore affirmed.

        Nevertheless Justice Levinz included in his report, not just once but three times, the reason why a jury trial was not necessary:

        And at last all the said Judges agreed, that by the Demurrer in this Case it is confessed, that the ad quod dampnum was deceitfully executed, and that the Patent was ad dampnum & depauperationem of Rochester and their Market; and therefore the Judgment in Chancery ought to be affirmed, which the Lords in Parliament did accordingly.

        Basically, Sir Oliver Butler had demurred, admitting the facts pleaded against him in order to fight the case on points of law. When the Lord Chancellor ruled against him on the legal points, Sir Oliver lost the case, since he had admitted the facts pleaded against him by entering a demurrer. At the pleading stage, it would have been open to him to “put himself on the country”, thereby obtaining a jury trial in the Court of King’s Bench with regard to the facts of the case. But he had not done so.

        ===

        Finally, to rescind a point made in earlier comments. I had earlier claimed that the fact that Sir Oliver demurred in itself showed that the proceedings in Chancery were in common law. In logic that conclusion could only be drawn if one could not demur in a suit in equity. And web searches seem to indicate that demurrer is applicable to both law and equity.

        Nevertheless, looking at Justice Levinz’s report, note that the quotations from the pleadings are in Latin. Recall that the common law side of Chancery was referred to as the Latin side, where as the equity side was referred to as the English side, because proceedings were conducted in English, using English writs. Also see the objection alleging that the proceedings in Chancery were not founded on a record, with the response that the patent record held in Chancery was sufficient: I understand that it was a characteristic of suits of this nature in common law that they must be founded on a record.

      3. To bookend my trawl through the cases mentioned in note 60 of Prof. Lemley’s law review article, I note, having just read through the brief that I have worked through the territory of subsection II.B.ii of the amicus brief authored by
        H. Tomás Gómez-Arostegui and Sean Bottomley.

        In particular, on page 20 of their amicus brief, Gómez-Arostegui and Bottomley write as follows:

        The single House of Lords case cited for this proposition dealt with a patent for a market. On a scire facias to repeal it, the Crown alleged that the patent was deceitfully obtained and damaged a nearby market. The patentee demurred. Both the Court of Chancery in the first instance and the House of Lords on a writ of error concurred that the patentee, by demurring, had confessed the aforesaid allegations and thus judgment repealing the patent was appropriate as a matter of law.

        This is an accurate summary of Sir Oliver Butler’s Case, that I have mentioned extensively here.

        For good measure, Gómez-Arostegui and Bottomley include the following in their footnote 63:

        None of the other cases cited in Lemley’s footnote 60 supports his proposition. None deal with inventions, no others are from the House of Lords, and some were decided in 1820 and 1853.

        Again, absolutely spot on!

        And yet counsel for Greene’s Energy quote the discussion and footnote in Prof. Lemley’s law review article so comprehensively refuted by Gómez-Arostegui and Bottomley as substantiating their own attempted refutation of amici for Oil States.

    2. Aha!

      United States v. American Bell Telephone Co. (128 U.S. 315, 1888) on page 362.

      At this point in Mr. Justice Miller’s delivery of the opinion of the the Court, he has traversed Attorney General v. Vernon and moved on to Sir Oliver Butler’s Case. It seems from his discussion that SCOTUS had only seen the reports of proceedings in the House of Lords, but noted that the case came from the High Court of Chancery. The Justices seem to have jumped to the conclusion that a jury trial had not taken place, but they had not clearly referred to the Reports of Sir Peyton Ventris that include the report of the proceedings in Chancery. Therefore they would not have known that Sir Oliver Butler demurred.

      Then Justice Miller moves on from Butler to … Queen v. Ailes, Queen v. Eastern Archipelago Co. and Cumming v. Forrester.

      And this is precisely the list of cases that Prof. Lemley gives in note 60 of his law review article Why do juries decide if patents are valid? 99 Va. L. Rev. 1673 (2013), on page 1688. One could purchase a printed report of R. v. E. Archipelago Co. here:

      link to jet.com

      The full title seems to be

      The Queen on the Prosecution of Sir James Brooke, K.C.B. against the Eastern Archipelago Company

      To begin with, it appears that Sir James Brooke was Rajah of Sarawak. He fell out with the Eastern Archipelago Company, determined that its charter had been obtained fraudulently, and “prosecuted” a scire facias action in the name of the queen to have the charter annulled. The case therefore does not concern patents of invention. Also it was tried in the Court of King’s Bench (which of course had no jurisdiction in equity), and there an appeal on a writ of error to the Court of Exchequer Chamber. Thus this case was not a chancery case, though the writ may have issued out of chancery. (I have come across an account of the formalities conducted in the Petty Bag Office following judgment.)

      Cumming v. Forrester is here:

      link to books.google.ie

      It does not concern patents of invention, but probate, property inheritance and trusts, but does involve letters patent granting escheated property to relatives of the deceased. Here is the syllabus:

      “A. & B. join in a petition to the crown, representing an estate to have escheated, and procure a grant of it to be made to them. Held, that A. could not afterwards set up a claim to one part under a prior title in himself, while taking the benefit of the grant as to the rest.”

      Why those cases, unless for the reason that Justice Miller had cited them, and the citations were accordingly picked up from the SCOTUS judgment?

      1. Postscript to the description of R. v. E. Archipelago Company (1853).

        To document the fact that there was a jury trial in this 1853 scire facias case, the prosecutor, Sir James Brooke, and Henry Drummond published A Vindication of his Character and Proceedings, when the former came in for criticism on many grounds. This included a discussion by Sir James of his role in the case. The Company had been required to endorse its royal charter with a certificate that sufficient funds had been subscribed, and a sufficient fraction had been paird up. On pages 30-31 of the book, available on archive.org, we find the following:

        “Whether this condition had been complied with was the main issue in the Queen’s Bench, and in June last, the verdict given by the special jury was to the effect that five of the Directors had given a false certificate to the Board of Trade, knowing it to be false

        Thus this case is not an example of a case decided by the High Court of Chancery without a jury trial. URL of the book on archive.org is here:

        link to archive.org

      2. More on the following scire facias case discussed briefly above:

        The QUEEN, on the prosecution of Sir JAMES BROOKE, v. THE EASTERN ARCHIPELAGO COMPANY

        cited by Prof. Lemley, in note 60 on page 1688 of his article Why do juries decide if patents are valid?.

        The citation he gives is as follows:

        “R v. E. Archipelago Co., (1853) 118 Eng. Rep. 452 (K.B.) 452; 1 EL. & BL. 310, 310;”

        I looked at the report in vol. 118 of The English Reports in a nearby law library earlier today.

        I have found an online copy of the nominate report from which the case is taken, specifically from volume 1 of Ellis and Blackburn’s Queen’s Bench Reports. Here is a link to the report of the case on Google Books here:

        link to books.google.com

        (There is another online digitized version on archive.org but the report there is missing a few pages.)

        “Scire facias to repeal a charter given under the Great Seal.” The royal charter had been granted to the Eastern Archipelago Company in accordance with 19th century legislative requirements. The writ of scire facias recited the following proviso:

        And We did further direct that the sum of 100,000l., at the least, being one-half of the said aforesaid capital of the said Corporation, should be subscribed for within twelve calendar months from the date of Our said letters patent, and that the sum of 50,000l., at the least, should be paid up within such period.”

        [Various requirements are then set out in the letters patent, including the following;]

        And We did thereby further direct that the said partnership should not begin business until it hsould have been certified to the President of the said Board of Trade, by at least three of the Directors of the said Company, that at least one-half of the capital before mentioned had been subscribed for, and the said sum of 50,000l., at the least, paid up, such certificate of the said Directors to be endorsed on this Our said royal charter, and to be sufficient evidence for […]”

        [Then further on there is a revocation clause, as to the consequences of which, there was lengthy legal argument following the jury verdicts where the Justices of the Queen’s Bench were equally divided:]

        or in case the said Corporation should not comply with any other the directions and conditions in Our said letters patent contained; it should be lawful for Us, Our heirs and successors, by any writing under the great seal or under the sign manual of Us, Our heirs or successors, to revoke and make void Our said royal charter, and every clause, matter, and thing therein contained, either absolutely, or under such terms and conditions as We or they should think fit. Provided always that, notwithstanding anything therein contained, it should be lawful for Us, Our heirs and successors, either under the great seal or by writing under the sign manual of Us, Our heirs and successors, at any period after the expiration of twenty-one years from the date of Our said letters patent, to revoke and make void Our said royal charter, and every clause, matter, and think contained therein, or to add such modifications, conditions, or provisions thereto as We, Our heirs or successors, should think fit.

        It was claimed by the prosecution that the directors of the company had falsely certified that the necessary capital had been subscribed, though it had not been.

        There was a jury trial in the Court of Queen’s Bench, with 13 issues to be decided. The verdicts went for the prosecution on the 5th, 10th and 13th issues, and for the defense on the other issues.

        Thus, in particular this case cannot be cited, as in note 60 of the law review article referred to above, and indirectly in briefs for the respondents in Oil States to substantiate the proposition that patent cases were determined in Chancery without jury trials.

        A rule nisi was obtained to arrest the judgment. Essentially this meant that the defendants argued their case on matters of law before the Justices of the Queen’s Bench.

        A lot of discussion, and disagreement, centered on whether the express revocation clauses in the text of the letters patent supplemented or superceded the implied conditions under which grants of letters patent could be revoked by writs of scire facias. The Justices divided equally on this point, and as a result the judgment went for the Crown.

        Moving past the first two opinions delivered, we come to Justice Coleridge’s opinion. He sets out the point under contention:

        But then the defendants allege, in arrest of judgment, that the scire facias is defective, because it contains no allegation that Her Majesty by writing under the great seal, or under her sign manual, had revoked or avoided the charter.

        There is interesting discussion of this, particularly in the opinions of Justice Coleridge and Lord Chief Justice Campbell, who take opposite sides in lengthy opinions, and who both discuss the implications for patents for inventions. (As a result, quotes from these opinions found their way into treatises.)

        In summary, these opinions should be consulted by anyone interested in the opinions of mid nineteenth century English judges with regard to the powers of the Crown and/or Privy Council to revoke letters patent in the basis of the revocation clauses.

        1. Lord Chief Justice Campbell, in 1853, in his opinion in R. v. Eastern Archipelago Company commended this book:

          link to books.google.com

          which is

          A Treatise on the Writ of Scire Facias, by Thomas Campbell Foster (1851). The URL above should open at Book III, Chapter 2 (page 235), on
          Scire Facias to Repeal Letters Patent.

          What are, or were, letters patent in English law. According to Thomas Campbell Foster (with citations):

          “Letters patent are open grants of record, under the great seal, containing a grant of some franchise, honour, or liberty by the Crown to a subject, as of corporate rights, a manor, a fair, a market, a separate Quarter Sessions, a rectory, a ferry, a toll, an office, &c., or of some privilege to an inventor or importer of some new and useful invention, art, or manufacture. Letters patent, that is, open letters, literae patentes, are ‘so called because they are not sealed up, but exposed to open view, with the great seal pendent at the bottom, and are usually directed, or addressed by the Queen to all her subjects at large’.

          “All grants from the Crown are matters of public record, as being the deeds of the first magistrate, and are next in dignity to the acts of the state. A record in our law is defined to be a memorial of an act or proceeding of a Court of record, proceeding according to the course of the common law, entered on parchment for the preservation of it; nad is of so high a nature that no averment can be taken against it.”

  2. Ned, what do you think about this language in In re Technology Licensing Corp. (Fed. Cir. 2005) decision, written by Judge Newman:
    “Lockwood, however, did not accept the argument that the writ of scire facias was a “close eighteenth-century analog to a modern action for a declaration of patent invalidity,” as TLC contends. In fact, Lockwood stands for the opposite proposition. The court in Lockwood specifically stated that a proceeding on a writ of scire facias was not analogous to a suit for a declaration of invalidity, but was more akin to an action for inequitable conduct. See Lockwood, 50 F.3d at 974 n.9 (“The contemporary analog of the writ is thus an action for a declaration of unenforceability due to inequitable conduct, not due to invalidity.”). Although the court in Lockwood went on to explain that the result in that case would not
    have been different if the historical analogy to the writ of scire facias were valid, the court plainly stated at the outset of that discussion that it did not regard that analogy as valid. Thus, Lockwood’s treatment of the writ of scire facias does not support TLC’s claim of a right to a jury trial.”

    P.S. Greg, cert in Lockwood was withdrawn because they withdrew the jury demand, making that issue moot.

    1. The grounds for revoking a patent pursuant to the writ scire facias were enumerated by Coke in his institutes, I quote him in my brief, hand discussed in Mowry v. Whitney: invalidity, fraud, and double patenting. Helen Nies, later to be chief judge, pointed out majority was wrong in his assertion that scire facias was limited to the issue of fraud.

      Regardless, the Supreme Court is already spoken on this issue and therefore the musings of the Federal Circuit in a footnote in Lockwood should be taken with a grain of salt.

      I hope you have read the decision of Rex v. Arkwright that I reproduced in its entirety in the appendix of my brief. That scire facias was entirely about validity. The issues were sufficiency of specification, novelty and prior invention.

      1. Ned, just come across this.

        In Webster’s Reports and Notes on Cases, page 665, Queen v. Neilson (1842).

        You no doubt have a well-thumbed copy of WPC, but the URL for Google Books is here:

        link to books.google.com

        I don’t see it listed as an authority in the Alliacense brief. But you have probably come across it all the same.

        The question was whether the Lord Chancellor of the day should allow a scire facias action to continue when the patent itself had expired. The report contains several pages of legal argument concerning the law of scire facias actions.

        ===

        I got here because I decided to chase up the details of a note of Professor Lemley mentioned on page 53 of the Greene’s brief: “See Lemley supra at 1688 n.60.”.

        Lemley cites Sir Oliver Butler’s case as one where the High Court of Chancery decided the case without a jury trial. As already discussed by me in comments on this very posting, of course there was no jury trial, or need for a jury trial, because Sir Oliver Butler demurred !

        I was doing a web search for another case that Lemley mentions in that note: Regina v. Aires (1717, 10 Mod. 354 ). Whilst still searching for details, this also seems to turn on a point of law: it is quoted for the principle that “When an issue is joined in Chancery, that court always issues the venire.” Quote taken from Thomas Lee, A Dictionary on the Practice in Civil Actions, vol. 2 (1825), p.729, under the heading Feigned Issue, on Google Books at the following URL:

        link to books.google.com

        See also Robert Richard Rankin, An Analysis of the Law of Patents (1824), p.108:

        link to books.google.com

        So much for now.

        1. P.S., Robert Richard Rankin (loc. cit. on parent comment), pp. 104-5:

          “The courts of equity will grant an injunction against the invader of a patent and compel him to account for profits.

          “The facts of validity and infringement, if disputed, must be tried at law; but, in the mean time, an injunction may be obtained.”

          Yet Greene’s Energy are still parroting the bogus assertion that “Claims for annulment or cancellation of a patent—entirely different from the question of patent infringement—were traditionally brought before courts of equity, not resolved by juries”, on the dubious authority of Mowry v. Whitney!

          1. From Q v. Nielson, 1 WPC, 665, 668 (Chancery 1842):

            “As to the jurisdiction, this writ issues from the common law
            side of the Court of Chancery-it is returnable in Chancery;
            and being issued and returnable in that manner, the Chancellor
            has jurisdiction. In some cases, all the further proceedings are
            before the Chancellor, as, if there be a demurrer; and it is only
            when there are issues in fact that the record is sent to the Court
            of Queen’s Bench (e).

            (e) See 2 Saund. 6 a, where it is said, that in case of a demurrer and issues in fact judgment on the whole is given in the Queen’s Bench.”

            1. Re legal citation

              2 Saund. 6 a

              mentioned at the end of comment 18.1.1.1.1.

              “Saund.” rang a bell with me, with the memory that it expanded into Saunders.

              I conjectured, therefore, that this citation might take me to a case that I had already come across. And indeed it did! Checking out my collection of law report downloads, I found out “The Reports of the Most Learned Sir Edmund Saunders”, volume 2, and the case turned out to be Jeffreson v. Morton.

              This is a case that figured prominently in Bynner v. The Queen (which I transcribed not too long ago), and it was also cited in The Queen against Ailes (aka Regina v. Ailes) as establishing definitively that the Court of King’s Bench could pass judgment on a scire facias, and was not required to remand the record into Chancery for judgment.

              This adds to my impression that, with regard to the English law on letters patent, as it stood in 1793, the cases do not constitute an impenetrable morass, but that there is a fairly small suite of cases, including Jeffreson v. Morton, Sir Oliver Butler’s Case, R. v. Ailes etc., that established and/or confirmed the basic procedures and legal requirements surrounding the revocation of letters patent in general through scire facias actions, and that these were succeeded by cases such as R. v. Arkwright that read more directly on patents of invention, building a consistent body of law, that was thoroughly described in treatises in the first half of the 19th century. The first change in the law was Henry Brougham’s act of 1835, and this was succeeded by further legislation around the 1840s and thereafter.

              I am currently looking at John Coryton, A Treatise on the Law of Letters-Patent, published in 1855, which was written following mid 19th century changes in patent law, but still provided a systematic discussion of those principles of the earlier jurisprudence that still applied in his time.

              John Coryton’s Treatise is available on Google Books here:

              link to books.google.com

        2. Distant, from evidence point of view, cases from after 1789 are not all that helpful. That is why Rex v Arkwright is so important. It was a writ scire facias, initiated in Chancery, and tried at King’s Bench. Final judgment was entered by Lord Mansfield, Chief Justice (King’s Bench), who ordered the patent cancelled.

          This case is direct evidence at it puts a lie to the lies of the opposition that the writ was an equitable proceeding simply because it was initiated (at times) by returning the writ in Chancery. The writ was also returnable directly in King’s Bench. (I presume the record of the patent would still have to be transferred from the Petty Bag through some procedure.)

        3. One could make a rather intense hobby of chasing down all of the misrepresentations by Prof. Lemley.

          Then one only has to look at his “positions” on several patent law philosophies to see a consistent effort to weaken patent rights.

          Are his (multitude) of errors simply neglectful, or perhaps a case of his wanting a particular End, and thus serving narrative only to that End?

          1. Yeah, it was Lemley who originally came up with the idea, without citation to any authority, that a single party had to conduct each step of the method in order that there be direct infringement of the method. That got us into years of chaos.

            Even in the Seventh Amendment article, I and others have gone to links to show how his citations to authority not only do not support what he is saying, but actually support in many cases, the opposite position.

            Fortunately, the historians brief lends support to people like you and me showing just how negligent or deceitful Lemley is. Everything he says has to be checked because is entirely unreliable.

  3. anon, but they really have to be inadequate not just be deemed inadequate. The Courts finally decide that issue as the 7th Amendment is at issue.

    1. As hinted at previously (to which you really did not answer) – the deeming inadequate is not something that will generate from the courts – but – as here – will generate by the Legislative branch.

      I recognize that you WANT the issue of “inadequacy” to be outside of the hands of Congress, but I do not see how your WANT controls.

    2. Two further tidbits Ned:

      1) the inadequacy issue is quite separate from your 7th Amendment stance. I do not think an attempt at bootstrapping the argument that you have long practiced can carryover into the different scenario as has been fleshed out on this different take of “new public right” being separate from (albeit admittedly related) the patent right and instead being a right of challenge.

      2) your wanting the involvement of the courts seems to have preoccupied your mind far too much. Why would any new creation of a new public right necessarily be limited to something that might be created by the judicial branch? (this is a follow-on to the same thought as in my post at 17.1)

  4. Looking at the Government brief in Oil States around pages 45 and 56.

    I believe that the the brief is in error when it repeatedly refers repeatedly to the alleged “English tradition of non-judicial cancellation”

    First of all, the Privy Council was and is no mere administrative agency. It may have acted in an executive capacity at times. It has also acted in a legislative capacity at times. But it also acts in a judicial capacity. Would the US Government would claim that, when decisions of courts in Jamaica, for example, are appealed to the “Queen in Council”, that decisions of courts or law are on occasion overturned by a mere administrative agency of the Crown?

    Note that, when the proceedings of the Privy Council were reorganized in the early 19th century, a judicial committee was established – which nevertheless is not separate from the Privy Council, but reports to it. And moreover the Letters Patent Act of 1835 in the UK assigned to the Judicial Committee of the Privy Council powers and responsibilities in relating to the extension of patent terms.

    The text of that 1835 act is reproduced in a contemporary periodical available on Google Books at the following URL:

    link to books.google.com

    Next, I would maintain that the true UK analogue, in the late 18th century and early 19th century, of the administrative functions of the USPTO are the pre-grant proceedings conducted by the Attorney General and Solicitor General, both in decisions regarding whether patents should be granted, and also in “interference” proceedings under the UK pre-grant caveat system (whereby those who believed themselves to have made inventions could enter caveats requiring the office of the Attorney General to notify them of any related patent applications, so that they could “interfere” in pre-grant proceedings conducted by the Attorney General, Solicitor General or Lord Advocate.

    So pre-grant, the chambers of the Attorney General or Lord Advocate functioned as the administrative agency, or Article I court equivalent.

    But the grant was made when the Great Seal was affixed to the patent. And the story, post grant, seems to have been very different. Here is the Lord Chancellor, Lord Eldon, at the beginning of the 19th century, in Ex Parte Koops:

    It was then desired that the time, which would expire on the 17th of the next month, might be enlarged, in order that the petitioner might apply to parliament.

    Lord Eldon, C. “I cannot do that if the patent has passed; for the patent is void, if the proviso is not complied with. You should have applied to the Attorney General before the patent passed, for a longer time upon the special circumstances. I cannot take the Great Seal from a patent, and repeal it in the most essential point: it is a legal grant, with a proviso for the benefit of all the King’s subjects. You can do nothing, except by an act of parliament to enlarge the time mentioned in the proviso.”
    The petition was dismissed.

    This is quoted on a blog entry that I set up here:

    link to distantperspective.blogspot.com

    Thus the Lord Chancellor ruled that he did not have the power to amend the terms of letters patent, once the Great Seal had been affixed to them. If he did not have such power in relation to issued patents, on what grounds would, say, the Attorney General, acting for the Crown, have plenary power to alter or cancel issued patents?

  5. The Oil States Respondent (Greene’s Energy) brief, among other things, hits on Oil States for not even mentioning the recent Sup. Ct. Cuozzo decision on IPRs, which it quotes from. It attacks in detail Oil States attempted distinguishing of the constitutionality of IPRs from reexaminations, interferences, etc. [but could have do so even better post-AIA as per prior comments in blogs here.] It dismisses [Ned’s] old 19th century decisions as not being constitutional decisions but rather decisions under old patent statutes lacking Congressional authorization. It argues that “IPR Patentability Determinations Bear No Resemblance to the Claims in Stern, Granfinanciera, and Northern Pipeline.” It notes that Title 35 expressly makes patents subject to other provisions of that statute.
    [More substantive observations in other comments would be appreciated.]

    1. On the latter point, the Greene’s Energy brief states that:
      “The Act provides: “Subject to the provisions of this title [this in italics], patents shall have the attributes of personal property.” 35 U.S.C. § 261 (emphasis added). In quoting section 261, Petitioner omits this limitation that long pre-dates the application for the ’053 patent. Pet. Br. 27-28. But the phrase “subject to” is a potent modifier, expressly qualifying a patent’s “attributes of personal property.”
      [This sounds to me like it contains a suggestion that Oil States had misleadingly misquoted this statute to the Court?]

    2. Paul, st … pid and inconsistent arguments will always and certainly invite derision. It makes court uncertain about everything else the party argued.

      I fully agree that Oil States deserved to be lambasted for its brief. After reading their brief, I think it was abundantly clear that they did not understand the issues. In particular, the remedy is everything — and the Supreme Court said so both in ex parte Wood and in McCormick Harvesting, and in its Seventh Amendment cases. Only the writ scire facias provided the same remedy prior to 1789 and it, being a legal remedy, had a right to a jury trial.

      The whole idea that the Chancellor could decide validity in his equitable capacity is nonsense and shows a complete lack of understanding of the basic principles involved. Equity had no jurisdiction to provide a remedy if there was an adequate remedy at law — and there was, the writ scire facias to revoke a patent.

      1. Ned, you have a great grasp on this issue. Justice Story would be proud. Your expaliantion of law and equity is exactly on point.

      2. Ned,

        Can’t the Supreme Court just sidestep all of your historical arguments by saying that patent invalidity is a public right, because it is “closely intertwined with a federal regulatory program,” citing Stern? Seems like there’s already one vote for this in Justice Thomas, based upon his dissent in Teva. Your argument seems to be that patent invalidity is the “the stuff of the traditional actions at common law tried by the courts at Westminster in 1789.” But isn’t that ignoring a lot of 1850s Supreme Court precedent that there was no common law patent right in the American system?

        It seems like the historical evidence could be more relevant to the Seventh Amendment question. But isn’t that moot because Granfinanciera says if something can be decided by an agency, there is no Seventh Amendment right?

        The information you present on patent history is fascinating. And I haven’t completely digested most of it, since I’ve mainly read random forum posts. I’m just not following why it actually matters.

        Also, is everyone focusing too much on private vs public rights? The four liberal justices in Stern didn’t think that was the test, but instead applied a balancing test. Add in that Thomas thinks patent rights are public rights, and you have yourself a plurality decision right there.

        1. Anonymous, the seminal case under the Seventh Amendment is Parsons v. Bedford written by Justice story in 1830. It made two points:

          First, the Seventh Amendment and Article III are to be read together such that in “suits at common law” and “cases at law” mean the same thing.

          Second, the phrase “suits at common law” does not mean solely common law causes of action, but cases at which legal rights are ascertained and determined.

          So by setting up a false dichotomy between common law causes of action and statutory causes of action, and according only Article III benefits to the former, the supporters of IPR are effectively arguing that not only do statutory legal causes of action not have any absolute right to be litigated in Article III courts, they have no seventh amendment right to a trial by jury even if they had that right prior to 1792.

          Assuredly, you can see the false premises and distortions at work in the other side’s arguments. Also you might want to check Scalia in his concurrence in Stern on the point that the court has never held that Article III rights do not extend to anything other than common law causes of action.

          Then there is the intentional sewing of confusion of exactly what a legal cause of action is. Assuredly, such a cause of action is of the type that was litigated in the common law courts prior to 1789. Such an action includes the writ scire facias, the common law cause of action, litigated exclusively in the common law courts and used primarily to revoke patents for fraud, invalidity and double patenting.

          1. Ned,

            That is very helpful, and something I will look out for as I read the briefs in more detail.

            Although, you can’t say that the writ of scire facias was the only way invalidity was dealt with. From this blog, it seems like that cause of action didn’t even exist until the mid-1750s and the Privy Council continued to revoke patents (although not very often) after scire facias existed.

            1. anonymous, the writ existed from the 1200’s and was in use in the early 1600’s to revoke patents. See, Coke, 4 Institutes (1644) at 79-80. I describe the events where King Charles I ordered (through his Privy Council) that all common law monopoly revocation actions cease. That took place in 1626, just after the Statute of Monopolies (1624), signed by King James VI and I, became law, a statute that required that all revocation actions be by and according to common law. There is a confrontation with the courts in 1753 while William Murray, later Lord Mansfield, was Solicitor Gen. On recommendation (insistence) of Murray as reported by Hulme, the privy Council thereafter referred all petitioner’s seeking to cancel an invention patent for invalidity to the common law courts. However, because there was no collateral estoppel in those days, when a patent owner continue to assert his patent even though losing on validity against others, it became necessary to revoke the patent through the writ. Rex v. Arkwright was one of the very first of this kind. A coalition of cotton manufacturers petition the Atty. Gen. and had the patent canceled in 1785.

        2. Anonymous, a prime example of this lack of understanding of Article III and the Seventh Amendment is set forth here in the brief of “Public Knowledge:”

          Actions such as patent cancellation are thus not “the
          stuff of the traditional actions at common law tried by the
          courts at Westminster in 1789,” Stern v. Marshall, 564
          U.S. 462, 484 (2011) (quoting N. Pipeline Constr. Co. v.
          Marathon Pipe Line Co., 458 U.S. 50, 90 (1982) (Rehnquist,
          J., concurring in judgment)), because patents are
          not the stuff of the common law. Instead, to the Framers,
          patents were monopolies, upon which Congress was to
          place conditions in service of the public good.

          Br. at 17.

            1. Paul, the Supreme Court has never addressed, as far as I know, the public rights issue in the context of a statutory right where the statutory right existed in England prior to 1789. But as Scalia observed in his concurrence, the Supreme Court has never held that constitutional reservation of power in the federal courts (cases and controversies in Law and equity or admiralty) is limited only to common-law causes of action. In fact such an idea is contrary to Parsons v. Bedford, which is held exactly the opposite.

              I presume this holding of the Supreme Court will continue to be followed by the Supreme Court unless expressly overruled. A contrary ruling would affect virtually eviscerate the court system as an independent branch because Congress could assign all statutorily created causes of action to administrative tribunals for trial on the theory that they are not common law causes of action.

  6. “Rather than seeing a patent right as property, the Government brief identifies patents as simply “revocable privileges” or “governmentally-conferred franchises” whose creation are not associated with any natural right of an inventor but instead are simply tools of public policy designed to “benefit the public by providing an incentive to innovate.””

    Whew idk about that.

  7. RE: “600,000 applications—more than three times as many as it had received two decades earlier.” But 192,000 RCE are indicated to be part of those 600,000 applications. Yes, the PTO now often counts RCEs as “applications” and Wikipedia says there were no RCEs prior to June 8, 1995, citing 37 CFR 1.114.
    But before RCEs there were other ways to ALSO continue prosecution on the same specifications that were ALSO counted as “applications” by the PTO, including far more continuations [as well as CIPs and divisionals]. But the usage of continuations dropped considerably when RCEs became available [because they require less paperwork], so for a valid comparison that would have to be taken into consideration.

    1. P.S. the DOJ responsive merits brief is 54 pages long plus a plural page appendix, and Green’s brief is 55 pages – there are a lot of other arguments to cover.

  8. Can you believe that the government neither cites or attempts to distinguish ex parte Wood & Brundage, the case that held that a patent owner has a right to a jury trial in actions to revoke patents?

    That is controlling law.

    1. Moreover, it is entire discussion of the holdings of American Bell I and II is beyond reproach. They twist the holdings of the cases to make the cases seem to have held exactly the opposite of what they actually did hold.

      What American Bell I acknowledged was that scire facias actions were the normal mode of revoking patents in England (they were tried at King’s Bench), but that a bill in equity would lie if the allegation was that the patent was procured by fraud relying on the English case of Atty. Gen. v. Vernon, but the citation is only to a preliminary ruling on a plea to transfer action to the Duchy court. However, as I point out in my brief, the full Ct. in Attorney General v. Vernon made it clear that in equitable remedy would be available only if the writ scire facias, an action at law, did not provide a complete and adequate remedy. In that particular case, the rule was that the legal remedy did not provide a complete and adequate remedy because the transaction was an exchange of property, and simply revoking a patent of one of the parties did not restore the parties to their status quo ante.

      The citation to American Bell II is also completely disingenuous. The court made it clear that the government was not bestowing any benefit on the inventor. It was the inventor who was giving the public the benefit of the disclosure of his invention in exchange for exclusive rights for limited time. American Bell II is entirely against the position being argued today by the federal government.

      1. It was the inventor who was giving the public the benefit of the disclosure of his invention in exchange for exclusive rights for limited time

        Of course, in the modern era, you disclose and in exchange you receive a limited, agency-revocable right to sue. It’s spelled right out in black and white in the statute that Congress wrote. Congress was given the power to bestow limited “rights” for the purpose of promoting progress in exchange for inventions. And that’s what they did.

        The idea that you can disclose a pile of ga rb age to the PTO and get some “right” that only a jury can take away is literally so i n s a n e that only a patent maximalist could dream it up. But we know already that you guys will do and say literally anything if you don’t get your way. Been there, done that.

        I can’t think of a single instance of a court case or Congressional act that limited patent rights or devalued them in some manner which wasn’t greeted by screeching from tinny wealthy men that the Kernstertershun was somehow being soiled. That’s usually followed by a sob story about Edison, Einstein, the Wright Brothers or (LOL) Abe Lincoln.

        It’s p@ thet ic but you guys will never change. Just get really old and die already.

      2. Ned,

        I don’t have enough familiarity with these complex issues to be as firm in my statements (or outrage), but I think I would mostly agree if I had the time to review everything. Even from a brief review, the government brief’s characterization of American Bell I (United States v. Bell Telephone Co., 128 U.S. 315, 360 (1888)) seems very misleading.

        Judge Newman found occasion to discuss American Bell I in her dissent in In re Technology Licensing Corp., 423 F.3d 1286 (Fed. Cir. 2005), and noted that “[t]he Court stated that the United States can bring suit to cancel a fraudulently obtained patent in a court of equity, but must bring a suit for invalidity by reason of unpatentability in a court of law.” Technology Licensing Corp., 423 F.3d at 1294 (Newman, P., dissenting) (citing American Bell I, 128 U.S. at 365).

        Judge Newman was basing this on the Court’s clear statement in American Bell I that “[p]atents are sometimes issued unadvisedly or by mistake, where the officer has no authority in law to grant them, or where another party has a higher equity and should have received the patent” and “[i]n such cases courts of law will pronounce them void.” American Bell I, 128 U.S. at 365.

        The government brief’s characterization of American Bell I as “affirming authority of the government to bring a bill in equity to cancel a patent” (Gov’t brief, p. 53 (citing American Bell I, 128 U.S. at 360) seems misleading because it fails to note the distinction that “the United States can bring suit to cancel a fraudulently obtained patent in a court of equity, but must bring a suit for invalidity by reason of unpatentability in a court of law.” Technology Licensing Corp., 423 F.3d at 1294 (Newman, P., dissenting) (citing American Bell I, 128 U.S. at 365).

        The government brief’s further characterization of American Bell I as “rejecting the argument that the proper remedy ‘is in the common-law courts, and not in a court of equity’” seems equally misleading. Gov’t brief, p. 53 (citing American Bell I, 128 U.S. at 360).

        In American Bell I, the defendant argued that “the appropriate remedy, if any exists, is in the common-law courts, and not in a court of equity, and that in the ancient proceedings of our English ancestors, in regard to patents, the only remedy for relief against them, when they were improvidently issued, was by a scire facias in the name of the king, or by his express and personal revocation of them.” American Bell I, 128 U.S. at 359-360. The Court, in addressing this argument, discussed the English use of writs of scire facias to revoke patents.

        You have a way better understanding of this area than I do, but even I am not entirely sure that the Court entirely got it right in the first place. It seems like there’s a possibility that the Court just didn’t appreciate that Chancery had a law side, as you outlined very well in your amicus brief.

        Regardless, the Court still recognized that Vernon I “establishe[d] the doctrine that in a case of fraud in the obtaining of a patent, a Court of Chancery, by virtue of that fact, has jurisdiction to repeal or revoke it.” American Bell I, 128 U.S. at 361. This statement makes clear that the Chancery jurisdiction was by virtue of the fact of fraud.

        The government brief’s characterization of American Bell I as “rejecting the argument that the proper remedy ‘is in the common-law courts, and not in a court of equity’” seems misleading because it again fails to note the distinction between a suit to cancel a fraudulently obtained patent and a suit for invalidity by reason of unpatentability.

        The government brief seems to attempt to generalize American Bell I to apply outside of a fraud context by omitting any reference to that context. This seems misleading, and seems to overlook the importance of that context to the holding, and to the government’s argument.

        JCD

        1. JCD, I can only hope that Oil States reply holds the government to task for misleading the court. The Oil States lawyers really need to read and understand my brief and to read Atty. Gen. v. Vernon on full hearing.

          1. It is incredibly frustrating to be demonstrably right about an important point where the issue is simple, but it is complex to explain why your position is demonstrably right. I hope that is not your lot here Ned. I am sure that the Oil States attorneys are incredibly sharp, but unfortunately for you that doesn’t necessarily mean that they will choose to highlight the same issues that may most sharply draw your focus.

            You took the time to present your thoughts in an amicus brief, so you’ve done what you could. When I was looking at the government’s characterization of American Bell I I realized that if I was responding I would probably be citing your brief for the proposition that scire facias actions were filed on the law side of Chancery and the Chancellor considered the writ with his ordinary (law) powers. Even if the Oil States attorneys don’t choose to highlight this, the Court will likely still catch it in your brief.

            What import it is given will likely depend on the path that arguments go, but you did what you could to shed light on important points. You highlighted issues in MCM and you took the time to put together an amicus brief here, which is more than most have done (although in fairness, many of us simply are not members of the Supreme Court bar), so you did what you could. Hopefully it will have the impact you’re hoping for, but even if not, there’s nothing to second guess where you did everything you could. I will be curious to see Oil States’ reply, however.

        2. Following up on JCD in 12.1.2 above, whose comment contains the following:

          Regardless, the Court still recognized that Vernon I “establishe[d] the doctrine that in a case of fraud in the obtaining of a patent, a Court of Chancery, by virtue of that fact, has jurisdiction to repeal or revoke it.” American Bell I, 128 U.S. at 361. This statement makes clear that the Chancery jurisdiction was by virtue of the fact of fraud.

          Of course Ned is the real authority on Vernon I and II, but it seems to me that Vernon II established a more limited doctrine: not only does there have to be fraud in the obtaining of the patent, but the fraud must be apparent on the face of the patent.

          Sir Oliver Butler’s Case, discussed extensively elsewhere in these comments exemplifies the type of situation where there was fraud in the obtaining of a patent, but there was also a remedy through a scire facias in common law, and therefore Vernon II would be inapplicable. There was “deceit” in that case. An enquiry should have been made, under a writ of ad quod damnum to enquire into whether anyone would be damaged by the grant of the market, but the writ was executed on the day it was obtained, thirty miles from the proposed market, with no notice to anyone whose business might be damaged by the sought grant. But the whereas clauses that commenced the typical English patent of the time recited the fact that an inquiry had been held under an ad quod damnum, and it had been determined that the grant would not damage anybody. In this case a scire facias did lie to repeal the patent in common law proceedings.

          What was different in Vernon II, is that the alleged fraud could not be proved from the record, and indeed would not be recognized in common law. Basically the value of the patent grant had been represented with a value less than its real worth, and therefore the granting of the patent had been an act of fraud on the king, when his officials administering the Duchy of Lancaster, apparently in collusion with the patentee, parted with the king’s property on disadvantageous terms. But the text of the letters patent did not recite the consideration that the king had received in return for the grant. And as the judges pointed out, in the common law theory of the day, kings cannot be stingy. In law the king was always beneficent and bountiful in his grants, and thus, if he sought to revoke a patent grant through a writ of scire facias, it was because misrepresentations had inadvertently led him to make a grant that was to the prejudice either of a particular subject, or to his subjects in general.

      3. “entire discussion of the holdings of American Bell I and II is beyond reproach. They twist the holdings of the cases ”

        I don’t think “beyond reproach” was what you intended here.

    2. Ned, Ex Parte Wood and Brundage, 22 U.S. 9 Wheat. 603 603 (1824) was decided “Under the tenth section of the Patent Act of 21 February 1793, ch. 11,..”
      What was that statute?

      1. Paul, Section 10, 1793 Patent Act: a procedure in the nature of a scire facias to revoke a patent for fraud and invalidity. The proceeding at issue in the Mandamus raised validity below.

        Held: right to a jury trial.

        1. I am bouncing here off the quotations from the Patent Act of 1793 in 12.2.2 and 12.2.3 below.

          I was struck by the language used: “obtained surreptitiously or upon false suggestion” (my italics). Because this language rings a bell: if I am not mistaken, it is the form of language used in historical English cases and by commentators when discussing the conditions under which patents could be revoked though writs of scire facias. Indeed, quoting Coke from footnote 21 on page 16 of the Alliacense amicus brief in Oil States:

          “Secondly, when the king granteth any thing that is grantable upon false suggestion, the king by his prerogative jure regio may have a scire facias to repeal his own grant.”

          (My italics.) This put me in mind of Sir Oliver Butler’s Case H. 31 & 32 Car. 2,
          2 Vent. 344., 2 Ventr. 344. (Legal citation taken wholesale from the table of authorities in the Alliacense brief.) This case is mentioned on page 16 of the Alliacense brief, but not, so far as I can tell, discussed in its own right.

          I suggest that, in several respects, Sir Oliver Butler’s case has some bearing on Oil States, and indeed the positions put forward in the US Government brief. I transcribed it from the original report last month. The transcription is available here:

          link to distantperspective.blogspot.com

          Why is it relevant. One reason (and the reason I transcribed it) is because it is a scire facias action in the High Court of Chancery. But details of the report show that proceedings were conducted in common law. Specifically the patentee demurred. According to Blackstone, if a party to a common law case demurred, then he admitted the facts of the case, and therefore a jury trial was not necessary. But he disputed the case on a matter of law. The consequence was, that if he won on the point of law, he won the case, but if he lost on the point of law, then he lost the case, because he had already admitted the facts in order to enter the demurrer. And this is what happened to Sir Oliver Butler, as the report of the case shows. And my claim here is that the matter of the demurrer is evidence that the proceedings were being conducted in common law in the High Court of Chancery.

          But there are, I suggest, other reasons why the case is interesting. I have seen the claim made, in the context of US Federal Law, that patents are creations of statute and were unknown in the common law. I believe this position to be nonsense. A point I have repeatedly been trying to make in repeated comments on this blog is that letters patent were issued for all sorts of purposes, not merely only to grant exclusive rights to inventors for their inventors, and therefore there was a whole body of English common law developed over centuries (some of it I believe still in force) surrounding the issuance and revocation of letters patent in general (e.g., letters patent granting royal charters to institutions, universities, learned societies, cities, etc.).

          In particular there was )and I think still is) common law surrounding the granting of rights to hold markets. The king (or queen regnant) issued patents granted the right to hold a market, provided that the business of some nearby established market was not damaged. And once one had a patent granting the right to hold a market, that gave exclusive rights to hold markets in that locality.

          Thus, letters patent granting exclusive rights

          Sir Oliver Butler had been issued with letters patent granting a right to hold a market at Chatham, in Kent. His market damaged the trade of an ancient market held half a mile a way at Rochester. The legal question was, whether the king could bring a scire facias action to revoke the grant. Sir Oliver Butler argued that, as a matter of law, he had complied with the legal forms centering on a writ of Ad quod damnum, conforming to the letter of the law, and therefore the king was not entitled to bring a scire facias action to revoke the patent. The Lord Chancellor, assisted by two common law justices, ruled against the patentee.

          (I recall details not in the law report, and seem to recall reading a discussion of this case in some modern textbook, (or in some authority that I landed upon in a web search) fairly recently. What I recall is that a form of inquiry took place in the locality, but it was not properly advertised, so that those whose trade would be damaged by Sir Oliver Butler’s new market were unaware that the enquiry was taking place, and therefore had no opportunity to make their case to the enquiry.)

          Now surely the award of a right to hold a market is the award of a franchise.

          And the US Government brief in Oil States includes the following on p.39:

          “The sovereign’s authority to grant a patent was a matter of royal prerogative, and that same prerogative could be used to revoke the grant.” Edward C. Walterscheid, The Early Evolution of the
          United States Patent Law: Antecedents (Part 2), 76 J. Pat. & Trademark Off. Soc’y 849, 859 (1994).

          If this theory were valid, why were the Lord Chancellor, the Lord Chief Justice of the Common Pleas and another justice sitting in judgment to determine whether the king could lawfully bring a writ of scire facias to revoke the letters patent. After all, on the US Government theory, the letters patent granted a mere franchise (not real property rights enjoying the protection of the common law), and therefore King Charles II could surely invoke the royal prerogative to repeal the letters patent at any time of his or her choosing, and save a lot of people a lot of bother. Why go through the burdensome business of bringing a scire facias action in the law courts, when apparently (on the US Government theory) all you needed to do as king was to formally announce in some fashion that you had decided to revoke letters patent that you had granted?

          There is another question here, that might be matter for a separate comment. Even assuming, arguendo, that Good Queen Bess could revoke letters patent on her own authority without creating a constitutional crisis, nevertheless two major constitutional upheavals separate the Tudor Monarchy from the reign of that “tyrant” King George III. The appropriate question is surely, not what could Good Queen Bess get away with a couple of centuries before American Independence, but rather, what authority did the Crown have in accordance with the somewhat different constitutional principles that applied in the period from the accession of William and Mary in 1689 to the year 1793 when the US Constitution was ratified by the States.

          1. Postscript…

            I started looking at the Greene’s respondent brief. See the citation of Holdsworth at the top of page 15. I found this source in the Internet Archive. It seems, essentially, that Holdsworth is being quoted to justify the seemingly innocuous proposition that a right to institute a market are clearly neither ownership rights in real property, or ownership rights in a chattel such as a horse.

            Maybe American lawyers have some exaggerated obsession with ownership rights to real property or chattels that leads them to deny that the common law recognized in 1793, and presumably still recognizes other rights that are not such ownership rights but nevertheless are on the other hand not creatures of statute unknown to the common law?

            Wikipedia has an informative article on “Market Towns”. It is here:

            link to en.wikipedia.org

            Quoting from it:

            The English system of charters established that a new market town could not be created within a certain travelling distance of an existing one. This limit was usually a day’s worth of travelling (approximately 10 kilometres (6.2 mi)) to and from the market. If the travel time exceeded this standard, a new market town could be established in that locale.

            One thing is made absolutely clear by the dates discussed in the Wikipedia article: rights to hold markets were granted as royal charters, by exercise of the royal prerogative, and these rights predated by centuries the convening of parliaments, and thus the rights surrounding markets may have been franchises but were not creatures of statute!

            Surely there must have been litigation in common law courts in the 13th century, predating the calling of parliaments by Edward I, surrounding rights to hold markets, and to exclude others from holding markets?

          2. Indeed, Distant. Even Oren Bracha would agree that if George III tried to summarily revoke (based upon grievances) an issued patent for invention, as did Elizabeth did to so many patents in 1601, without any due process at all, there he may have provoked yet another constitutional crisis in England. The times they did change.

            Also, from Elizabeth proclamation, it appears the false suggestion had to appear on the face of the patent. This was pertinent to the issues decided in Atty. Gen. v. Vernon.

            ELIZABETH’S PROCLAMATION CONCERNING MONOPOLIES
            NOVEMBER. 28, 16o1
            Brit. Mus. Proc. Coll. (G. 6463-388.)

            By the Queen

            A proclamation for the reformation of many abuses and misdemeanors committed by patentees of certain privileges and licenses, to the general good of all her Majesty’s loving subjects.

            Whereas her most excellent Majesty having granted divers privileges and licenses (upon many suggestions unto her Highness, that the same should tend to the common good and profit of her subjects), hath since the time of those grants received divers informations of sundry grievances lighting upon many of the poorer sort of her people (by force thereof) contrary to her Majesty’s expectation at the time of those grants: All which being duly examined, by such as her Majesty hath directed to consider and report the state of such complaints as have been made in that behalf, it doth appear that some of the said grants were not only made upon false and untrue suggestions contained in her letters patents, but have been also notoriously abused, to the great loss and grievance of her loving subjects (whose public good she tendereth more than any worldly riches) :

      2. Paul,

        I believe that the below is the tenth section of that act, but I can’t verify it. It may be worth reviewing for purposes of a casual inquiry, but you’ll have to find an official copy somewhere if you want to cite it.

        SEC. 10.

        And be it further enacted, That upon oath or affirmation being made, before the judge of the district court, where the patentee, his executors, administrators or assigns reside, that any patent, which shall be issued in pursuance of this act, was obtained surreptitiously, or upon false suggestion, and motion made to the said court, within three years after issuing the said patent, but not afterwards, it shall and may be lawful for the judge of the said district court, if the matter alleged shall appear to him to be sufficient, to grant a rule, that the patentee, or his executor, administrator or assign show cause, why process should not issue against him to repeal such patent. And if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the said judge shall order process to be issued against such patentee, or his executors, administrators or assigns, with costs of suit. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by such court for the repeal of such patent; and if the party, at whose complaint, the process issued, shall have judgment given against him, he shall pay all such costs, as the defendant shall be put to, in defending the suit, to be taxed by the court, and recovered in due course of law.

      3. I think the statute is copied in the opinion.

        The statute:
        That upon oath or affirmation being made before the judge of the district court where the patentee, his executors, &c., reside, that any patent, which shall be issued in pursuance of this act was obtained surreptitiously or upon false suggestion and motion made to the said court within three years after issuing the said patent, but not afterwards, it shall and may be lawful for the judge of the said district court, if the matter alleged shall appear to him to be sufficient, to grant a rule that the patentee or his executor, &c., show cause why process should not issue against him, to repeal such patent, and if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the judge shall order process to be issued against such patentee or his executors, &c., with costs of suit. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be rendered by such court for the repeal of the said patent. And if the party at whose complaint the process issued shall have judgment given against him, he shall pay all such costs as the defendant shall be put to in defending the suit, to be taxed by the court and recovered in due course of law.

        The opinion:
        link to supreme.justia.com

  9. DC I’ll note here that to make its policy-case that there are too many patent applications for the PTO to properly handle, the Government perpetuated the USPTO’s false statement that “In 2015, the USPTO received more than 600,000 applications—more than three times as many as it had received two decades earlier.” That statement includes 192,000 requests for continued examination (RCEs) as “applications.”

    I’ll agree that this isn’t a metric I would have focused on (and whether it’s two or three fold, the point is still made). But it’s not really disputed by either party that the PTO’s incompetence/inability to deal with what was being shoved at it aligns perfectly with the opening of the gates in State Street and other intellectually bankrupt CAFC decisions that the Supremes carelessly chose to ignore for far too long.

    The problems created by logic and information patenting (and examination) are severe and by themselves they justify a robust administrative solution (particularly in this instance where the “rights” are expressly Congress’ to define), at least until the Supreme Court expresses a willingness to do the right thing and pull the plug judicially (with any luck, that willingness will be expressed in the context of this dispute, regardless of the outcome). That’s where the focus is properly placed. And that’s where most of the whining about IPRs is coming from (surprise, surprise).

    How has the number of logic patent applications increased over the past 20 years? Ten fold? Fifty fold? Presumably the Supreme Court is aware of the radical transformation in the subject matter that is being claimed in patent applications. If not, they need to be made aware of this.

    And the maximalists circular arguments about how “growth” in the need for computer programming skills somehow mandates an expansion of patent subject matter is ridiculous. First, computers were around for a long time before the bubble started expanding to protect “do it on a computer” logic patenting junk. Second, all kinds of industries have sprung up in this country without creating a massive bolus of ineligible/obvious junk surrounding them, accompanies by b 0tt 0m feeding attorneys trying to get rich themselves because the door was opened to, e.g., claiming new data processing “functionality” in functional terms. Take the film industry. A huge industry! Where were the swarms of patent attorneys screeching in trade magazines and busting down doors at the PTO trying to file on films “wherein the films comprise patterns of dye, wherein said patterns are patterns of images corresponging to struggling family images, wherein said struggling family is trying to secure available real estate” and the like? Was it just a lack of legal creativity at the time?

    1. >>The problems created by logic and information patenting (and examination) are severe

      Except the problems are no worse than other art units. I think you meant information processing patents, i.e., that covers software and electrical engineering.

      1. Except the problems are no worse than other art units.

        LOL

        False.

        News flash: I know all these people. I talk to them all the time.

    1. Are Trade Secrets property?

      The question itself is ridiculous on its face, at least as presented.

      What’s a “trade secret”? What’s “property”?

      Pay attention everyone and remember: the people who ask these bizarre questions as if they are incredibly deep and serious are the EXACT SAME people who bend over backwards to see “innovation” in a method of “granting access” based on comparing a number to a list … because “mass transit.”

      The patent bar is teaming with incompetent who will literally do and say anything if they see an angle where their pockets can be lined in exchange for scrivening word salads and pretending that sentence structure is eligible for patenting. What the he– happened? Well, we all know what happened.

    2. Even though not that relevant here, since trade secrets are not government grants, trade secrets can of course be bought and sold as if they were a form of private property. But even that form of non-governmental private property has numerous legal limitations on its scope and continued existence, so I don’t see how that supports arguments that patents free of any and all governmental re-examination?

  10. DC: Rather than seeing a patent right as property, the Government brief identifies patents as simply “revocable privileges”

    Yes, well, that’s how Congress has defined them. They are limited, conditional rights, revocable by the granting agency (and only after notice and adequate due process requirements have been met).

    There’s no way around this, Dennis, except to simply l i e about it or pretend that you were born yesterday. Congress doesn’t even have to create any “patent right” at all, you know. There’s no fundamental “right to a patent.” It’s a purely abstract creation which exists for one purpose: to promote progress in the useful arts. It’s part of the “general welfare”.

    Remember: the only reason some people are going k00 k00 b@ n@ nas over this is because it’s more difficult to monetize their patents. That’s it. These whiners could care less about “the Constitution” and “rights” otherwise. Most of them voted from Mango Hairball, for cripesake.

    1. “These whiners could care less about “the Constitution” and “rights” otherwise.”

      One day MM says this crowd lurves the constitution and rights and then the other he says they can’t care less about the constitution and rights (where he means of course the more newer fangled parts, generally read into the constitution by courts or having been added in more recent years).

  11. I’m trying not to laugh too hard but did someone below actually suggest that one of the “problems” with treating patent rights as something distinct from private property is that such a treatment would allow entities with more money to “win”? It sure looks that way.

    Man, the maximalists are a truly strange bunch. Wow.

    1. Not sure to what you are actually referring to, Malcolm, but your own (unexplained) dichotomy remains in that you are most zealous against patents of the type that are most accessible by the non-wealthy.

      You like to appoint yourself watcher over the fields of patent rye, yet also seem geared to making it so that patent protection is only available for those things that only the Uber rich corporations would pursue.

      1. patents of the type that are most accessible by the non-wealthy.

        Does anybody wonder why “anon” can never quite bring himself to everyone exactly which “type” of patents he’s talking about?

        I don’t.

        My beef has nothing at all to do with “accessibility” to a “type” of patent. It has everything to do with a massive bolus of absurdly invalid or ineligible junk that the PTO and the CAFC created and which both of those entities are still struggling to protect by any means necessary. Huge numbers those junk patents are owned by entities who earn more in a week than I and my entire extended family will earn in their lifetimes. Another huge chunk is controlled by relatively low rent (but still very wealthy) professional manipulators — lawyers who spend their entire lives looking for one sort of grift or another.

        making it so that patent protection is only available for those things that only the Uber rich corporations would pursue

        “Those things”. There you go again, “anon.”

        Limiting the patent system to compositions and apparatus that are distinguished on the basis of their structural features makes sense on its own terms, “anon.”

        If you think that poor people need a special “patent right” to protect their “new” logical steps for processing information, or to protect their method of writing instructions for a computer, or to protect specified content being transmitted between prior art devices, then ask Congress to create that right. Seriously. Just ask. Get all your friends together and ask Congress to do it. March on Washington! Power to the people!

        LOLOLOLOLOLOLOLOLOLOLOLOL

        1. Your reply is pure nonsense.

          Your feelings are not facts.

          Your “beef” is not based in anything but your feelings.

          You have NOT (still) squared the dichotomy that I presented.

          You still want to have an optional form somehow NOT be optional.

          And you still dissemble about “logic” all the while running away from “logic” having any type of intellectual property protection (different aspects under different IP laws – vis a vis copyright for the aspects of protection that THAT IP law provides and patent for aspects of protection that THAT IP law provides).

          Lastly, ALL of this requires NO new “asking Congress to create new rights. The rights are already there under the different IP laws.

        2. This is one of your more clear articulations of your position. It doesn’t mean that I agree (and I certainly disagree with some of your comments), but you draw attention to some cogent points in a compelling way.

      2. [Y]ou are most zealous against patents of the type that are most accessible by the non-wealthy.

        As you know, I do not agree with MM’s crusade against software patents, but I am not sure why the “accessib[ility of patents] by the non-wealthy” is a relevant consideration for purposes of evaluating his mis-begotten agenda. Intellectual property is intended to incentivize discovery/disclosure/dissemination.

        It is not intended as a wealth-redistribution scheme to move money from the ” have more”s to the “have less”es. Good thing, that, because the lived reality of IP is that it works in exactly the opposite manner (moving money from the “have less”es to the “have more”s).

        If we really are to evaluate IP based on its social effects on wealth redistribution, then the logical conclusion is that we should simply get rid of it. I do not favor getting rid of IP, but that is as much as to say that I also do not think it relevant to evaluate IP based on its effects on wealth redistribution. I am kind of at a loss to understand why you—also a person who does not favor getting rid of IP—would wish to encourage people to evaluate IP along this metric.

        1. It is most definitely not that I encourage along this metric – it is that I am pointing out that Malcolm aligns along this metric (and such creates a dichotomy to which he has never answered).

          Of course, the answer is that Malcolm’s feelings are incongruent with the profession that he suggests that he is a part of. On occasion, I have pointed out instances where the cognitive dissonance that this brings about for Malcolm displays itself. All in all, Malcom’s feelings wrap themselves in a consistent circle of venom and lack of appreciation of innovation (and personal property rights) that the US system generates for that innovation.

          1. Malcolm’s feelings are incongruent with the profession that he suggests that he is a part of.

            They are definitely incongruent with certain aspects of the profession.

            But I’m not responsible for those aspects. I am responsible for doing what I can to change those aspects, especially if I believe (and can explain to others) why those aspects are ultimately a net negative for everyone except a tiny handful of attorneys and the already rich.

            1. The incongruity runs deeper than what you would like to spin and goes to the heart of your Liberal Left anti-personal property philosophies.

              That you seek to apply a gloss of “undeserved” or “already rich” or the even more banal “they are attorneys” is just that: gloss.

              The level and degree of your NON-patent rants betray your animus when it comes to patents because patents are used (gasp) to make money.

              It is NOT your responsibility to anoint yourself Catcher of the Fields of patent rye – that is merely a veil of delusion that you use to NOT engage on the merits of various legal topics and instead – pretty much regardless of actual thread topic – for you to rant from your tired scripts.

              As you have been doing for eleven and a half years.

        2. Greg: It is not intended as a wealth-redistribution scheme to move money from the ” have more”s to the “have less”es. Good thing, that, because the lived reality of IP is that it works in exactly the opposite manner (moving money from the “have less”es to the “have more”s).

          Of course this is true and everybody with a shred of decency knows this and isn’t afraid to admit. Congrats to Greg.

          If we really are to evaluate IP based on its social effects on wealth redistribution, then the logical conclusion is that we should simply get rid of it.

          True enough. And like most people who are paying close attention, I’m opposed to abolishing the patent system. It serves a useful purpose, when it’s working properly.

  12. The tears of the patent maximalists are exceptionally sweet. I’m not sure we need a thousand Olympic swimming pools filled with them, however.

  13. So according to our Government, a patent exists merely ‘by-your-leave’ of the King, or in this case the Administrative State. Oh, and by the way, the Courts of the Art III department be damned too because we can void your final judgments. All hail the King!

    Hayburn’s case. Congress passed a law, that created a cause of action to prove the dates of your Revolutionary War service, after a hearing before an Art III judge, he could grant the remedy of placing the plaintiff on the ‘pensioners roll’ wherein $$ payments would be made to the RW veteran. Independent of that, however, the SOS could remove pensioners from the roll due to ‘mistake.’ J. Marshall, I recall, said we will sit as Commissioners (not judges) to perform this function, because if we sit as judges our decisions must be final (not subject to collateral ‘reversal’ by the SOS) due to ‘mistake’ or any other reason. Being on the pensioner roll – is certainly not a ‘natural right’ put a pure ‘license’ as the the Government posits in the now the case of patents. My point being, Congress might somehow create a patent administrative scheme that was purely administrative and not involve ‘judges’ of the judicial department (putting the 7th Amendment to the side for a moment) but this hybrid system of judges and administrators just cannot hold. You might even pick off Breyer with that argument. Breyer, IMHO, most certainly believes that patents are mere license subject to the Administrative State’s uber experts.

        1. there is no proof

          Right. “iwasthere” is probably some housewife in Tennessee who has just decided to take up patent maximalism as her pet cause.

          Sure. That’s possible.

          You’re a j 0 k e, “anon.” Truly.

    1. iwasthere, the government brief cites with approval the summary revocation of patents for inconvenience by Elizabeth. There was no “due process.” There was no compensation.

      This is what the government advocates for the US patent system? That the government can simply revoke patents for “inconvenience?”

      1. Yes, and apparently a preferred class of patent owners will be treated differently – gotta get them ‘trolls.’ I can alm0st smell the fear in Malcom now, his paid blogger job for the serial infringement lobby is almost over. Take a knee MM in protest that law and order has returned.

  14. >>“In 2015, the USPTO received more than 600,000 applications—more than three times as many as it had received two decades earlier.” That statement includes 273,000 192,000 requests for continued examination (RCEs) as “applications.”

    So, again no normalization for the population growth or the growth of technological portion of our economy. Reality–fewer patent applications are being filed now than 20 years ago when normalized.

  15. Prof. Crouch’s paraphrase of:

    whose creation are not associated with any natural right of an inventor but instead are simply tools of public policy designed to “benefit the public by providing an incentive to innovate.”

    shows the government view as completely eviscerating the basis of the Quid Pro Quo.

    The view that “The justification for patents is not that an inventor has a natural right to preclude others from making or using his invention, but that pa-tent protection will ultimately benefit the public by providing an incentive to innovate.” makes a mockery of the fact that more than one entity is involved in the EXCHANGE that makes up the Quid Pro Quo.

    Yes, there is the notion that the public will ultimately benefit.
    No, the public is NOT the only entity involved in the exchange, and that without the inventor in the first place, the public does NOT benefit.

    No matter your view on Locke and natural rights, our patent system is in fact built on the basis that there ARE natural rights belonging first to the inventor.

    Those natural rights are inchoate rights.

    The inchoate rights become full property rights (personal property rights at that) by undergoing examination and being passed to grant.

    The government brief has no nexus with reality. Those signing that brief should be deeply ashamed.

    The government’s reliance on McConnell is deeply into the weeds. Members of Congress were also advised that what they were doing did NOT accord with Constitutional protections (at the very least, MY representatives were so informed by me).

      1. It’s a good thing then that MOST state attorney oaths (the single exception to date is the Commonwealth of Massachusetts) place a duty on legal advocates that does not place the Supreme Court above the Constitution.

        Madison would be rolling over in his grave if the Supreme Court were indeed treated as unquestionably Supreme.

        Reproach of the Supreme Court is not only a good thing – it is a necessary thing.

        Not a single branch of our tri-branch system is above the Constitution – not a one.

    1. The government adopts the view of Oren Bracha entirely, that patents are instruments of government policy. That may have been the case at the time of Elizabeth, but the statute of monopolies shows that even as of 1624, England (Lord Coke, who drafted the statute) recognized the value of granting patents on new manufactures brought to England. Certainly by the end of the 1700s, which is a time pertinent to the inquiry necessary for proper constitutional analysis, patents for invention had taken on a new character where the patent was viewed as an exchange – full disclosure of how to make and use the invention in exchange for the patent. One has only read the case is to understand this. Lord Mansfield was the greatest proponent of this proposition, and he single-handedly revolutionized patent law. It was Lord Mansfield who was behind the 1753 revolt of the common law courts against the privy Council in its struggle to fully implement the Statute of Monopolies where the validity of a patent was solely for the courts and not for the Council.

      What the government is intending to do here is to undo what Lord Mansfield achieved in 1753.

      The government should be ashamed of itself. Anybody associated with this brief should be ashamed of himself. It is hard to imagine that a Republican administration was behind this travesty.

    2. Indeed, why not just have a bounty system? The government can just pay you $$ in return for your disclosure and application for ‘inventor of the year’ prize money.

    3. anon

      The view that “The justification for patents is not that an inventor has a natural right to preclude others from making or using his invention, but that pa-tent protection will ultimately benefit the public by providing an incentive to innovate.” is a statement of social engineering similar to what is embraced by all variants of a class of political theories including forms of Statism and Nationalism (which did not ultimately originate in the United States). The statement has the form:

      “The purpose and justification of the permissions the State grants to individuals (such as permissions to life, the pursuit of happiness, etc.) is the encouragement of action which ultimately benefits the public good .” and in the eyes of its proponents, the “public” is the “folk” or “society” which is identical with the Nation or State, and the idea of individuals with rights and the Government’s role to protect them, is rejected.

      These political theories have been tried and are being tried in Europe, Asia, and around the globe. There are well meaning liberals who would argue that there is ample evidence and examples that these theories are wrong: Nazi Germany, Soviet Russia, Cuba, North Korea, failed economies, millions of deaths, broken regimes etc. But these arguments, although laudable by virtue of their motivation, are flawed; the very evidence submitted as the basis for their conclusion implies that were the economies to some level “acceptable” and if the deaths were avoided, or the regimes ultimately saved from destruction, then the trifling fact that under these regimes rightless individuals were essentially owned by the State, would somehow be acceptable. The implication is that if the people were distributed enough “goods” “goodies” or “good” even at the cost of everyone’s freedom then the well meaning liberal’s argument would fail.

      Implicitly the well meaning liberal accepts that in order to pass judgment on some rights violating regime or pogrom and determine whether it provides some purported public good, one has to point to some sort of societal consequence.

      The error of the well meaning liberal is found in confusing a purported means of Government with the proper ends of Government. He essentially argues that Government grants freedom or rights as the means to something, some end which the Government has adopted as proper for it to “encourage”, such as wealth or prosperity (according to some purported measure). But then this is merely a restatement of Statist social engineering, an acceptance of the logic of the Statist or the Nationalist, and an unintentional adoption by the well meaning liberal of the mind-set adopted by his opponents.

      What the well-meaning liberal forgets, is that the protection of the rights and freedoms of the individual IS the proper end of Government and that the protection of those rights and freedoms IS the greatest Public Good.

  16. What galls me is the insistence by the government that patent revocation via the writ scire facias was an equitable remedy. While the government is entitled to argue its opinion, is not entitled to misstate facts and argue based upon misrepresentations.

    I can only hope that the responsive brief hammers the government hard on this point.

  17. This is… interesting. The assertion that patents are not really property is so “out there,” so thoroughly at odds with controlling precedent (Lord knows that the SCotUS does not pay much attention to other courts’ precedents, but they do tend to care about their own precedents, and tend not to take kindly to folks ignoring or disparaging their own precedents), that one almost wonders if the government is not trying to lose this case.

    The Obama administration intervened during the CAFC trial to support the patent challenger in MCM. I remember that many people were somewhat surprised that the Trump administration did not switch sides in this fight, but rather continued to side with the patent challenger. Perhaps one ought not to have been surprised? Perhaps they only sided with the challengers so that they might sabotage and tank that side of the case?

    1. This is… interesting. The assertion that patents are not really property is so “out there,”

      There’s nothing at all “out there” about it.

      How much does a “patent right” weigh? “Rights” are abstractions. They can be imbued with “attributes” that we ascribe to “property” in terms of “rights” but at the end of the day they are just vapor. When they “expire” they cease to have any attributes only because someone says so. Nothing else in the universe changes, not one atom.

      The radical concept is that a “patent right” has some “attributes” of property beyond being a purely personal privilege. That concept was introduced by Congress (as it should be) but it was expressly limited. Very limited, in fact.

  18. The government brief is one of the worst briefs that I have ever read – there is a difference between advancing a change in law and the ethical obligation to recognize the state of controlling law.

    The brief merits sanctions with its disregard on how to approach the first and its repainting of the second.

    1. I am curious if I understand the government’s brief correctly and the ramifications on a “slippery slope” basis.

      If the government’s brief is correct and a patent is just a “license” granted and revokable by the government at will with no protections given to private property, then could Congress pass a bill stating “Patents owned by any Indian tribe are hereafter invalid” and then Indian tribes could not get the “license” since a patent is not protected “property” ?

      Under agency deference, could the USPTO issue a rule (not in contradiction to the enablement statute granting the USPTO the right to issue or revoke patents) saying “Any patent granted to a Democrat or company that contributed to a Democratic campaign are herein canceled ?” This assumes a republican controlled congress and a will to pass such a law – but in absence of another legal protection would it be an “OK” legislatively determined limitation of a license solely created by the legislature ?

      Or could the government condition the “license” by saying, any patent issued to a resident of a state that is a “sanctuary city” is herein revoked? If patents are “public rights” that a government can revoke/change at will per a statutory scheme – as opposed to a private property right, where are the limits if any?

      Could a congress passed law stating “All utility patents not owned by Google, Facebook, Apple, or anyone who didn’t contribute at least $1M annually to a presidential campaign are herein revoked” be a valid law, since really “any” limit can be applied to a licensing scheme.

      Under my reading of the government’s position, if the patent right is just a “license” or “franchise” it is revocable largely without any “property right” based constitutional/legal protections.

      I noticed that the government does not address the “presumption of validity”) conferred by law. So, any “license” condition that Congress or the Agency dreams up (in absence of the presumption) would be largely fair game.

      Thoughts ?

      1. [C]ould Congress pass a bill stating “Patents owned by any Indian tribe are hereafter invalid” and then Indian tribes could not get the “license” since a patent is not protected “property” ?

        I do not agree with the government’s position here, but even if we were to grant it ex hypothesi, that would not mean that Congress nullify patents on the basis of native tribe ownership. That would run into an equal protection clause problem.

        [C]ould the USPTO issue a rule (not in contradiction to the enablement statute granting the USPTO the right to issue or revoke patents) saying “Any patent granted to a Democrat or company that contributed to a Democratic campaign are herein canceled ?”

        First amendment problem.

        [A]ny patent issued to a resident of a state that is a “sanctuary city” is herein revoked?

        Municipalities are creatures of their respective states, so there might be a tenth amendment problem here. Besides, if this is supposed to be a horrible in a parade of horribles, however, I am not sure how much bread this one will bake. I doubt that any more than half a dozen municipalities own any patents.

        Could a congress passed law stating “All utility patents not owned by Google, Facebook, Apple, or anyone who didn’t contribute at least $1M annually to a presidential campaign are herein revoked”

        Once again, first amendment problem

        I noticed that the government does not address the “presumption of validity”) conferred by law. So, any “license” condition that Congress or the Agency dreams up (in absence of the presumption) would be largely fair game.

        The presumption of validity is a creation of Congress in any event. Congress is free to rescind it if Congress so chooses, even if we (rightly) acknowledge patents to be property. Fortunately, Congress chooses not to rescind the presumption. Nothing, however, about the presumption of validity (or its common-law requirement for clear-&-convincing evidence) is a matter of constitutional necessity.

          1. I suppose that I do not see the relevance of citing a “government speech” case with regard to a case that does not implicate the government speech doctrine.

      2. The repercussions of “not property” do not stop at any of the points that you present and in fact extends further.

        Over the course of the last several years I have taken many occasions to point out how the bedrock concept of property touches many patent doctrines – each of which would necessarily begin to unravel if the government brief were to be made to reflect actual law.

        Take for a quick example: exhaustion. Can non-property be exhausted?

        1. Can non-property be exhausted?

          Yes, of course it can. After all, if we take patents to be mere licenses or privileges, then they come with any and all conditions that Congress (or the courts) attach to them. I do not agree with the assertion that patents are not property, but if that view were to prevail, it would not necessarily change much of anything about the actual lived experience of how patents function.

            1. Two points:

              (1) The basis of exhaustion lies not in the observation that the patent is property, but rather in the observation that the patented goods sold are property. Therefore, a (crazy, totally unsupportable-in-view-of-current-precedent) decision that patents are not property would not necessarily alter exhaustion doctrines in the least.

              (2) Once again, even if patents are not property, but are rather only privileges, they are still privileges that come with any conditions that the Congress or courts attach to them. If the courts attach a condition of “first sale” exhaustion, then they have such a condition attached. There is nothing about the patent-as-property notion that is necessary to that outcome.

              1. Your (1) ignores the Means to the current Ends and then pretends that you are not ignoring those means.

                Not persuasive.

                Your (2) STILL lacks any current Means (the current Means being ground in property)

                You keep on wanting to NOT see the very basis in fact for the current setup and then want to turn around and say “I don’t see.”

                The answer: open your eyes.

                1. Your (1) ignores the Means to the current Ends and then pretends that you are not ignoring those means.

                  No, it does not. Go back and re-read any exhaustion precedent that you care to choose, and when they cite to Coke (they all end up citing to Coke, somewhere along the line), go back and re-read the portion of Coke being cited. You will see that Coke was talking about chattels as property, not patents as property. The idea of patents-as-property is not a “means” toward the end of exhaustion vis-à-vis the chattel sold.

                  The idea of patents-as-property is really totally unnecessary to the exhaustion doctrine. The fact that you think otherwise simply confirms to me again that you really do not understand exhaustion (a point repeatedly brought home to me by every word you have ever written on the subject).

                  Your (2) STILL lacks any current Means (the current Means being ground in property)

                  The “means” to exhaustion is the recognition that chattels are property. Chattels will still be property even in a world where (Heaven’s forfend!) the Court holds patents to be mere “privileges” or “licenses.”

                2. Incidentally, if you think me wrong in this contention, there is a very simple way you can prove me so. Cite me the portion in Coke where Coke discusses the status of patents as property. Failing that, cite me the portion in any exhaustion precedent you care to cite in which the Court discusses the status of patents as property on the way to its exhaustion holding.

                3. Wrong Greg – sticks in the bundle of that chattel property are the property aspects of patents.

                  You take away the current means, and you have NO current alternate means for those sticks to be affected as they are today.

                4. Wrong Greg – sticks in the bundle of that chattel property are the property aspects of patents.

                  Two points:

                  (1) What does this even mean? Sticks in the bundle of my rights concerning (e.g.) a patented chocolate bar are the “property aspects of patents”? This is incoherent nonsense.

                  (2) N.B., I have cited actual legal authority for my understanding of exhaustion. You can go and read the Court’s latest word on exhaustion (Impression Prods.), where Justice Roberts grounds exhaustion in the common-law doctrine of the alienability of chattels. Justice Roberts cites a portion of Lord Coke’s Institutes, which discusses leases for a term of years and horses, and a whole host of other chattels, without a single mention of property.

                  In other words, both the U.S. Supreme Court and the common-law authorities are capable of discussing exhaustion without ever resorting to the status of patents as property. I have already demonstrated as much.

                  If you think that there is some necessary connection between the two, you might—you know—cough up some legal authority that shows as much. Right now you have nothing but the Restatement 1st According to Anon to back you up, and that restatement has not been accorded much weight by any U.S. courts.

        2. Your concerns are well noted, anon. Some of the amici following neutral briefs pointed out the adverse consequences of a holding by the Supreme Court that patents are mere revocable privileges, government franchises. Indeed, the holding would undo the whole history of patent litigation in the United States in unforeseen ways such as you suggest, but also in other unforeseen ways that the those briefs point out.

          For example, a drug patent is raising prices? Rather than trying to invalidated the patent in court, the government could simply revoke it as “inconvenient” without any compensation whatsoever to the patentee.

          1. That should of said, “filing,” not – following –.

            The revocation clause that were contained in British patents for such a long period of time allowed government to do exactly that – some early revoke a patent for inconvenience such as by raising prices. There is no escaping what the government is looking for here. It is a nightmare scenario for the U. S. patent system. Its consequences are far beyond IPR.

      3. Thank you Greg and Anon for taking up this thread (great thoughts, Anon about the ramifications for “exhaustion” and “takings”; Great points Greg). Although my examples were intentionally extreme, the point is any “facially valid” condition would be OK to impose on a “license”, in absence of property right being afforded to patents. So rule makers (be it Congress or the Agency) could take a political goal adverse to a property right and achieve it via creative language.

        Instead of saying all patents not owned by Google/Apple/Facebook (An Unstated Goal … or other large entity that lobbies Congress by $1M or more annually), a new rule/law stating that the patent “license” is conditioned upon proving the patent granted entity reasonably possesses sufficient capital to bring the underlying idea to market, would not its face violate any constitutional protection (as being facially neutral), but would limit patent holders to large, well-capitalized entities. All other patents (without provable capitalization) are immediately invalid. This is a taking (but would not trigger the taking clause), it wouldn’t necessarily trigger the establishment, association, or free speech clauses.

        So your Thomas Edison’s and garage inventors would never be able to obtain/retain patents; and the efficient infringement lobby would “win” just by having more money. Technology is almost always “disrupted” by emergent companies lacking the deep pockets of their entrenched counterparts, which is why a strong patent system threatens existing monopolies and encourages innovation (by “upstarts”). This is why the costs of IPRs imposed on BOTH parties without any potential gain to the “rights holder” is ultimately destructive to innovation (as it clearly favors entrenched big $$$ and IP theft).

        The government’s position in Oil States fundamentally alters the balance provided by a Patent Right (as does the IPR process in general, that allows serial attacks, prevents clean title, and that practically favors those with the most $$$), which would likely destroy our patent system as an incentive for new innovations.

        1. [T]he point is any “facially valid” condition would be OK to impose on a “license”, in absence of property right being afforded to patents.

          I grant the point that you are making, but just to be scrupulously honest here, one should acknowledge that this is true even if patents are acknowledged to be property. That is to say, Congress is empowered—even in a world in which patents are acknowledged to be property—to condition the enforceability of a patent on ownership by an entity possessing $X in capital. The only difference between patents-as-property and patents-as-license is that in the former Congress can only impose such conditions prospectively, while in the latter Congress can impose such conditions retroactively. For all that, however, Congress can impose any facially valid conditions on the patent grant that Congress so chooses.

          The idea of patents-as-property is not what prevents us from enacting socially deleterious conditions on patentability or enforceability. Rather, the obstacle to the enactment of such socially deleterious conditions is the political recognition that such conditions are deleterious. The Constitution does not, however, stand as a safeguard against poor public policy choices by the political or judicial branches.

          1. Greg RE: … the only difference between patents-as-property and patents-as-license is that in the former Congress can only impose such conditions prospectively, while in the latter Congress can impose such conditions retroactively.

            This difference is HUGE. If the conditions are only prospective, this give the patent owner a chance to raise capital, to defend their rights (in the granted patent), and to emerge to fight the IP Theft. The if the change is retroactive, no $$$ or financial interest to defend the new innovation against the perpetrator of IP Theft is present. You lose at the onset of the fight (and cannot access courts/public/etc. without money) … so you can not reasonably change the public discussion or to reasonably raise the the issue to the public that a law/rule is unjust. You simply lack access, since you lack funds.

            1. This difference is HUGE.

              Agreed. I am not arguing that the Court should hold patents to be mere licenses or privileges. I just want to be precise about what are the evils attendant on a holding that patents are not property.

              You have built an argument on the basis that if patents are not property, then the Congress could attach all sorts of unsavory conditions to the patent grant. My point is that Congress can attach those conditions even if the patent is property. Therefore, we need to look a bit more carefully at what is and is not at stake in the difference between the “property” conception and the “privilege” conception.

              I agree with the the differences that you articulate in 1.1.3.1.1.

              1. You have built an argument on the basis that if patents are not property, then the Congress could attach all sorts of unsavory conditions to the patent grant. My point is that Congress can attach those conditions even if the patent is property.

                And Greg is right.

                The next question: how in the world could someone be as wrong as Brian is? This is pretty basic stuff.

        2. This is why the costs of IPRs imposed on BOTH parties without any potential gain to the “rights holder” is ultimately destructive to innovation (as it clearly favors entrenched big $$$ and IP theft).

          For the record, I do not agree with this. Nevertheless, I hope that if you really believe this, then you were also cheering on the AIA’s enactment of first-to-file. Nothing biases the system in favor of big $$$ so much as our previous first-to-invent system, with it byzantine and exorbitant system of interferences.

          1. Good point Greg – prior to the AIA there were articles showing that large companies won interferences somewhat more often than others, but that few second-to-file applicants won anyway. Also, companies even used interferences to invalidate on prior art [not prior invention] claims of some earlier-filed patents [i.e., both parties lost claims after an expensive proceeding.] Also, patents obtained by “swearing behind prior art date” declarations almost never survived litigation contesting those declarations. But the AIA change to first-inventor-to-file was strongly opposed at the time by many blog commentators anyway, few of whom ever practiced in that specialty.

      4. That is the exact issue addressed in the Land Patent case(s). A system wherein a first land commissioner grants a patent, there is an election, a new commissioner is appointed, she therein revokes said land patent due to ‘mistake’ or ‘error’ or ‘new evidence’ (insert any reason here) violates the frame work protections (an independent judicial department) afforded by the Constitution. In other words, the new commissioner is from the Chicago school – reward your political friends and punish your political foes. Said owner of said land patent, you know something really valuable like the mineral rights to the Comstock Load, gave to my political opponent – so here comes the punishment.

          1. Whether or not the property is “real property” i.e., real estate, is entirely besides the point – and you should know this Paul.

            The courts have long treated the different properties under the same general guidelines.

            1. Not true, as demonstrated by “restraints on alienation” of private property (versus numerous legal “covenants running with the land” in real property) [creating first sale patent rights exhaustion], real estate adverse possession, leases laws, mortgage laws, land “tax sales”, deeds and their possible restrictions, and numerous other differences.

              1. Same general guidelines does not mean an absence of some exceptions – especially those particularly geared to the differences, Paul.

                Be that as it may – your comment on “restraints on alienation” reminds me of the award winning (from a historical society) historical piece on the nature of the US patent system that led DIRECTLY to the notion that patents were not only property, but that the US patent system was explicitly created such that the property that was a patent was fully alienable – with NO “restraints on alienation.”

                Whatever your attempt with the distinguishing point at 1.1.4.1, the larger picture is not supportive of your IPR cheerleading efforts.

          2. Respectfully, Paul you misapprehend what these ‘land patents’ were about. They were to encourage – discovery – of minerals – and the grant was to the vein of the ore – most famously gold- that ran the Mets and bounds of the vein of the ore discovery. Indeed, as I recall, there were even ‘interference’ proceedings wherein the first in time disc0very of the vein could cancel the second in time land patent wherein proof that the second claim was a late claim to the otherwise unknown extent of the vein of the first patent grant. Indeed, the land patent cases took onto itself the invention patent scheme and its body of inf0rmative law. In other words, the land patent cases are on point and highly inf0rmative as to the nature of the right.

            1. Thanks for the explanation that you are talking about mining claims on Federal land under federal law for that IWT.
              But do you see any sign of any reliance of that analogy being presented to the Sup. Ct. in any of the Oil States briefs?
              In fact I am surprised not to see more discussion in those briefs on the important topic of the potential impact of Oil States winning on other federal administrative proceedings in general? Have I missed it – has anyone else seen it?

              1. Paul, I think the impact will be negligible because the right to a day in court and to a jury trial depends heavily if not exclusively on the fact that patent validity for nullification purposes was litigated in the common law courts and to juries prior to 1789 (’92).

                I really doubt whether the court would rule that these rights are accorded patents on the basis that they are property rights unless that notion of property is carefully defined to not include things like professorships where the Supreme Court has ruled that constitute the property of the professors thereby requiring due process.

                When congress creates new rights unknown to the common law courts of England prior to 1789, then it is free to fashion the remedies it wants.

                1. Hmmm…

                  Congress fashioning remedies…

                  Reminds me of someone saying that a new public right may be created if the existing remedies at law are deemed inadequate…

                2. The side step to the focus on patents as property (and the inherent conflict with property being a “public right”) has been fleshed out on “the other blog” and started with of all things, a statement by Ned.

                  For those interested in discussing items on the merits (obviously excluding Paul Morgan, who would rather oddly insist that blog comments are meaningless – in his own blog comments), one might want to check out how Ned’s own statement has been developed (with, gasp, blog comments) to provide a completely alternative resolution path:

                  link to ipwatchdog.com

Comments are closed.