Oil States: Engaging with History, Private Property, and the Privy Council

I invited Prof. Dmitry Karshtedt to provide this discussion of today’s oral arguments in Oil States. Note, Prof. Karshtedt  filed an amicus brief in the case supporting the petitioner.  Read the transcript here. – DC

By Prof. Dmitry Karshtedt

This morning’s argument in Oil States v. Greene’s Energy saw a highly engaged bench. The wide-ranging argument covered everything from the expected topics of the public-private right divide and the significance of the Privy Council’s adjudications of patent rights to perhaps more surprising angles involving government takings and even disputes between travelers and airlines over lost bags.

Some of the main themes of the argument:

  • Does the PTAB in the IPR exercise judicial power at all?
  • How, if at all, are IPRs are different from reexams?
  • What about the patentees’ settled expectations? Do they justify some form of heightened judicial review before an issued patent in existence for some time can be taken away?
  • Are Due Process issues fundamentally tied to the Article III question raised in this case, or should “power” and “process” be distinguished?
  • Can the PTAB adjudicate infringement?
  • Do Federal Circuit appeals represent constitutionally adequate Article III supervision of the PTAB?

Allyson Ho, Oil States’ counsel, lead with the argument that Inter Partes Reviews (IPRs) embody an unconstitutional transfer of judicial power to decide claims of private right between private parties without party consent or adequate Article III supervision. Justice Ginsburg asked almost immediately whether IPRs merely allow for correction of the PTO’s own errors. Ms. Ho then made an important strategic decision in conceding that, while ex parte and inter partes reexams (though a closer case) present permissible, examination-like error-correcting proceedings, IPRs differ from those earlier mechanisms because they more closely resemble an adjudication of a private-party dispute in which the PTO acts as an arbiter. Justice Kagan and Chief Justice Roberts questioned whether there is really a salient difference between IPRs and reexaminations, as the latter too allow for a process by which a third party informs the PTO that particular prior art may render an issued patent unpatentable after all. Ms. Ho, in response, stressed the high degree of third party involvement and the trial-like nature of the proceedings. In addition, she argued that in case of settlement, the PTAB generally does not complete the IPR.

The argument then moved toward the role of Congress in creating the patent right. Surely, suggested Justice Kennedy, Congress can validly limit the patent term and perhaps even shorten the patent term after issuance, so why not IPR? The response appeared to be that a grant of a patent cannot be conditioned on giving up structural rights, harkening to the discussion of the unconstitutional conditions doctrine in the petitioner’s reply brief. Even though Congress can create rights, there is a constitutional limits on how those rights can be restricted. The Chief Justice then mentioned the law of takings, suggesting that the government can take actions that devalue the right, with the Fifth Amendment sometimes entitling the aggrieved rights-holder to compensation.

The discussion then moved on to topics that have been particularly well-aired in party and amicus briefs. First, Justice Ginsburg continued to press the error correction point, pointing out that IPRs are relatively narrow in scope in that only issues of novelty and non-obviousness with specific types of prior art can be resolved in those proceedings. Ms. Ho responded that, be that as it may, 80% of IPRs also involve concurrent district court litigation, with infringement actions getting dismissed when PTAB invalidates the patent at issue. Second, Justice Gorsuch brought up the McCormick Harvesting case and its possible constitutional basis, a point which Ms. Ho embraced, but Justice Kagan then suggested that McCormick, rather, was resolved on statutory grounds. There was no further discussion of McCormick.

Ms. Ho then returned to the line between IPRs and reexams, and the earlier point that the former are really about deciding a cause between parties in a trial-like proceeding. Justice Breyer, at this point, suggested that, even if this were so, non-Article III tribunals do this all the time anyhow, as when resolving disputes between travelers and airlines over lost luggage. In addition, Justice Breyer suggested, doesn’t the Patent Act’s phrase “subject to the provisions of this title” puts patentees on notice that post-issuance non-Article III patentability determinations are possible? A point was repeated that IPRs are about an agency figuring out whether it made a mistake, with third party-input, as frequently happens in many administrative proceeding.  Moreover, Ms. Ho was questioned as to how much third-party participation is needed to make a process unconstitutional. She returned to the idea of significant third party-control.

Justice Gorsuch then brought up the point that, if patents are private rights, no non-Article III adjudication of any sort is permissible. A question then arose whether analysis would change if the IPRs existed since 1790, the year that the first Patent Act was passed, and the discussion then moved to the Privy Council. Justice Kagan observed that the role of the Privy Council in adjudging patentability over time waned but was not eliminated. Before reserving time for rebuttal, Ms. Ho made the point that the patent laws were closely intertwined with the common law from the time of the Statute of Monopolies.

Mr. Christopher Kise, arguing for Greene’s Energy, argued that IPRs simply reexamine the propriety of the original patent grant, which is not a judicial function. The action is not to extinguish the patent but simply to decide that it should not issue. In addition, argued Mr. Kise, even if the Court had to get to the public-private right distinction, it should readily conclude that patents are public rights that can be adjudicated outside Article III tribunals. At this point, an interesting question came from Justice Breyer – what about settled expectations of the patentee after some time from issuance goes by? What about investments and reliance interests? The implication seemed to be that, while of course patents can always be invalidated by courts, perhaps heightened judicial review is needed to take patents away after some time in their existence.

The Chief Justice then raised the point of Due Process and PTAB panel-stacking, and whether Congress’ power to take away patents can allow patent validity to become a pure policy tool of the executive branch. Mr. Kise contended that Due Process problems, if any, should be considered on a case-by-case basis. Justice Sotomayor brought up the point of judicial review of PTAB determinations at the Federal Circuit, to which Justice Gorsuch responded that the PTAB is not an adjunct of the district courts and can issue self-executing judgments. He also brought up the issue of vested rights in land grands. To that, Mr. Kise responded that land is core property interest in the way that patents are not, because the latter depend on the federal statute and exist for an instrumental purpose of promoting the progress of useful arts. He also contended that process issues should be separated from power issues.

As Malcolm Stewart began arguing for the government, the Chief Justice framed the point of “bitter versus the sweet” – whether the government can condition the grant of a patent on anything it likes, including stacking of the deck in PTAB proceedings. Mr. Stewart responded that, even if there were a Due Process problem, Due Process does not require Article III, as public employee tenure protection cases show. He also mentioned that expanded panels are not unlike en banc panels in the federal circuit courts, and exist principally to correct panels that diverged from precedents. Justice Breyer then brought up the issue that the IPR statute is applied retroactively to the patent at issue in this case. Mr. Stewart’s response was that patents could be reexamined since 1980 and could be invalidated in certain proceedings before then, and they could always be invalidated by courts.

Returning to the public-private rights debate, Chief Justice Roberts discussed the Schor test and whether the multi-factor analysis of Schor is conducive to investment backed-expectations. Mr. Stewart contended that, whatever the test, PTAB adjudicates private rights because liability for past money damages are not involved. The question then came up whether the PTAB can adjudicate infringement, to which Mr. Stewart responded that probably not because money damages are involved. Justice Gorsuch then asked whether the PTAB can perhaps declare non-infringement, to which Mr. Stewart responded that there is no tradition of the PTO’s making that determination. Justice Gorsuch asked about the PTO’s tradition of cancelling patents, and Mr. Stewart’s response was that the issue is really about deciding patentability, which the PTO has been doing since 1836.

In rebuttal, Ms. Ho reiterated her point that Congress cannot condition a grant of a patent on taking away litigants’ structural rights and reinforced the point that appeals are not a sufficient form of Article III supervision. She ended with the point that, again, IPRs resolve disputes between two private parties.

193 thoughts on “Oil States: Engaging with History, Private Property, and the Privy Council

  1. It’s been very quiet here over the past few days! I suppose everyone (bar myself) has moved on.

    I spent time over the weekend studying the Court’s Article III separation of powers cases.

    If there is a reason for posting after the case has been submitted, surely it is to make predictions, before judgment is delivered.

    For what it is worth, I suggest that there would probably only be an opinion of the Court if the five ”conservative-leaning” justices (Roberts, Kennedy, Thomas, Alito and Gorsuch) continue to adhere to the principles set out in Chief Justice Roberts’s opinion in Stern v. Marshall and favor the petitioner.

    I would predict that if any of the “liberal-leaning” favors the petitioner, then this would result in a separate opinion concurring in judgment.

    Similarly if any of the conservative-leaning justices favors the respondents, then such justices would not join the opinion of liberal-leaning justices, but would write their own opinion.

    I predict the above on the basis that it seems to me that, based on the oral argument, the Court may well regard this case as the sequel to Stern v. Marshall, where the Court divided on the classic ideological split, with Roberts’s opinion for the Court, and Breyer’s dissent presenting fundamentally divergent readings of the SCOTUS jurisprudence on the jurisdiction of legislative courts and administrative agencies to decide matters that had historically been the preserve of the Article III courts.

    Before the 1980’s there were two regularly cited cases: Murray’s Lessee and Crowell v. Benson. A narrow reading of the first is to be found in the late Justice Scalia’s concurrence in Granfinanciera. In Crowell, a narrow reading notes that, for those working on boats on navigable waters of the United States, Congress provided a compensation scheme, to replace liability suits sounding in admiralty (where, for “historical” reasons, there was no constitutional guarantee of a jury trial), with a “commissioner” determining questions of fact as an adjunct to a district court and under the supervision of that court. Then in the 1980’s there were two divergent lines of SCOTUS cases. The jurisdiction of legislative courts in traditional matters of tort and contract claims etc. was construed narrowly in Northern Pipeline and Granfinanciera, but more broadly in Thomas and Stern. Justice Brennan wrote the plurality opinion in the narrow cases, consistently joined by Justice Marshall, but the two of them were consistently in dissent in Thomas and Schor. Justice O’Connor signed onto Rehnquist’s concurrence in Northern Pipeline, delived the opinion of the Court in Thomas and Schor, but signed onto a dissent in Granfinanciera. Justice White dissented in Northern Pipeline (joined by Chief Justice Burger and Justice Powell). Justices Kennedy was on the Court for Granfinanciera and joined the opinion of the Court Scalia concurred in the judgment and in most of the opinion, but dissented from the discussion of public versus private rights.

    Chief Justice Roberts’s opinion for the Court in Stern basically follows the much of the logic of the Northern Plurality and Granfinanciera, basically founded on standard separation of powers arguments, historical practice and 19th century precedent, including this from Murray’s Lessee. Chief Justice Roberts (possibly picking up on a point made by counsel in oral argument) observes that six justices in Northern Pipeline were at least in agreement on the following.

    That is why we have long recognized that, in general, Congress may not “withdraw from judicial cognizance any matter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty.” Murray’s Lessee v. Hoboken Land & Improvement Co., 18 How. 272, 284 (1856). When a suit is made of “the stuff of the traditional actions at common law tried by the courts at Westminster in 1789,” Northern Pipeline, 458 U. S., at 90 (Rehnquist, J., concurring in judgment), and is brought within the bounds of federal jurisdiction, the responsibility for deciding that suit rests with Article III judges in Article III courts.

    (Apologies for the repetition of the quotation.)

    Roberts then sets out to cabin Thomas v. Union Carbide and CTFC v. Schor. Well, a compensation scheme for disclosure by an agency of the safety and enviromental impact data of pesticides is hardly “the stuff of the traditional actions … at Westminster in 1789”, and in Schor both parties had consented to resolve their differences in the Article I forum, and indeed the disgruntled loser appealing on constitutional grounds had pressed his claim through that forum, and it was the other party that dropped the suit in the district court.

    Justice Breyer, on the other hand, in his dissent in Stern read Crowell broadly as a “watershed opinion widely thought to demonstrate the constitutional basis for the current authority of administrative agencies to adjudicate private disputes” and argued that Article III constitutional law should follow Thomas and Schor, where, on his analysis ”the Court took a more pragmatic approach to the constitutional question. It sought to determine whether, in the particular instance, the challenged delegation of adjudicatory authority posed a genuine and serious threat that one branch of Government sought to aggrandize its own constitutionally delegated authority by encroaching upon a field of authority that the Constitution assigns exclusively to another branch.”

    Justice Breyer, in his dissent, offered a five-factor test, deriving from his analysis of Schor. (Chief Justice Roberts, in his opinion for the Court, set out a different collection of five factors as being the basis of Schor.) Presumably Justice Breyer the liberal-leaning justices who signed on to Justice Breyer’s dissent will seek to develop their analysis, whether in a concurrence or a dissent, as the case may be.

    1. Distant, agreed. Here is the Breyer five factor test:

      “(1) [T]he nature of the claim to be adjudicated; (2) the nature of the non-Article III tribunal; (3) the extent to which Article III courts exercise control over the proceeding; (4) the presence or absence of the parties’ consent; and (5) the nature and importance of the legislative purpose served by the grant of adjudicatory authority to a tribunal with judges who lack Article III’s tenure and compensation protections. The presence of “private rights” does not automatically determine the outcome of the question but requires a more “searching” examination of the relevant factors.”

      Clearly, point 1 goes against IPR as patent validity historically was tried only in the common law courts.

      Point 2 goes against as well. Clearly, APJ do the bidding of the Director and the White House. In contrast, Bankruptcy judges were independent of political control. “[T]he tribunal is made up of judges who enjoy considerable protection from improper political influence. … [T]he federal courts of appeals appoint federal bankruptcy judges…. Bankruptcy judges are removable by the circuit judicial counsel (made up of federal court of appeals and district court judges) and only for cause. § 152(e). Their salaries are pegged to those of federal district court judges, § 153(a), and the cost of their courthouses and other work-related expenses are paid by the Judiciary, § 156.”

      3. The judiciary does not control the IPR proceedings.

      4. There is no consent.

      5. The purpose is to put patent validity into the hands of experts in patent law.

      Only the last point favors IPR. That should be enough, should it not, for even the liberals to oppose IPR?

      1. The last point puts this back into the hands of the people who originally issued the patent.

        The difference here is clear: this is basically a(n expensive) OUTSOURCING of the examination (post grant at that) to those that can most “afford it” – that is, established third parties who MOST BENEFIT from competition outside of innovation factors.

        Anyone who pretends to not see the conflict of interest with why we have a patent system in the first place is simply not being inte11eectually honest.

        (and this does not even tread into the fallacy of the proposition of post grant error correction, as noted in detail by Ron Katznelson).

  2. Don’t care for Gorsuch, how he got to the Court, or his judicial philosophy, but he seemed very sharp and most in tune with the fundamental aspects of fairness that bear on the issue.

    1. the fundamental aspects of fairness

      Because it’s so “fundamentally” “fair” for the PTO to turn the spigots up to 11 and dump millions of junk patents on the public, each of which needs to be taken to Federal Court in order to be tanked.

      Spare me.

    2. the fundamental aspects of fairness

      Because it’s so “fundamentally” “fair” for the PTO to turn the spigots up to 11 and dump millions of junk patents on the public, each of which needs to be taken to Federal Court in order to be tanked.

      Spare me.

      1. I feel your pain MM, but that’s the way the entitlement program is setup.

        IMO, either it has to be fundamentally recreated from scratch practically or its got to just keep on a truckin’ till it collapses in a heap of public outcry.

        1. either it has to be fundamentally recreated from scratch practically or its got to just keep on a truckin’ till it collapses in a heap of public outcry.

          Even if this false dichotomy were correct, it wouldn’t preclude Congress from taking intermediate steps to address past and ongoing e f f ups.

          My point above is that “fundamental fairness” requires looking at the entire system, as it exists in reality, and that includes the reams of junk that the PTO rubber stamped because every time it saw the word “computer” it rolled over and pretended to be born yesterday. None of this happening in a vacuum and none of the players are naive about what’s going on, and that includes Gorsuch.

          1. ” it wouldn’t preclude Congress from taking intermediate steps to address past and ongoing e f f ups.”

            It might. Due to age old fundamental problems in the setup of the system that dates from like 200 years ago when everyone lived on a farm and the whole country was 13 states large. And depending on the intermediate steps they wish to take (short of constitutional amendin’).

            “My point above is that “fundamental fairness” requires looking at the entire system, as it exists in reality, and that includes the reams of junk that the PTO rubber stamped because every time it saw the word “computer” it rolled over and pretended to be born yesterday. None of this happening in a vacuum and none of the players are naive about what’s going on, and that includes Gorsuch.”

            I do hear you from that perspective, but there are actual limits to powers granted by the constitution. I’m not sure where “fairness” or fundamental fairness enters the equation. This is the white cis hetero christian patriarchy we’re talking about, according to your media, and occasionally you, it isn’t fair at all.

            1. “Steps” precluded include those that would violate other Constitutional protections.

              Of course, Malcolm already knows that and just likes to pretend otherwise.

            2. there are actual limits to powers granted by the constitution.

              Not so sure what “actual” adds here.

              I am sure that there’s nothing in the Constitution that says that, for the purpose of promoting progress, Congress can’t create a limited conditional right that is revokable by the granting agency upon showing of agency error. Why on earth would anyone put something that id i 0tic in a Constitution?

              1. I see that you dropped the “and due process” line from your reply here…

              2. “I am sure that there’s nothing in the Constitution that says that, for the purpose of promoting progress, Congress can’t create a limited conditional right that is revokable by the granting agency upon showing of agency error. Why on earth would anyone put something that id i 0tic in a Constitution?”

                They might could hypothetically create such a thing, but currently that’s not what we have. You know that, I know that, anon knows that, all the judges know that etc. etc. Thus that is a question for a time when congress attempts to do such a thing, likely in the far future.

                “Why on earth would anyone put something that id i 0tic in a Constitution?””

                Because they were a bunch of white cis hetero christian capitalist patriarchs that were building a society that was good for THEM (and their posterity who generally get mind controlled more or less the same or similar as them while growing up) and which would be limited to being that society forever. As mounds of your leftist literature makes clear, it was not made to be good for “the other”/”the collectivist” or any other sort of person on the face of the planet. Your liberal media tells you this literally every single day, yet you don’t seem to grasp the everyday implications. This is why academics go on and on about “the muh constitution is raycyst/sexist/homophonbic/etc!”. They’re right, to a degree and in a pointy hat sort of way. The constitution was, and largely still is, not designed for anyone who hasn’t been mind controlled into white cis hetero christian patriarchial capitalistic ways, and has only been amended throughout the ages to make meh scale changes to help “the other” and very little has been done to help “the collectivist”.

  3. Ronald Mann’s write up from a blog I am loathe to link to:

    Given the Supreme Court’s track record of sharply divided decisions in cases that explore the minimum requirements of Article III adjudication, it would be astonishing if the justices found a ready consensus here. My sense, though, is that there will be a strong majority to uphold the statute. The justices well might write with caution – and they might spend several months doing it – but I think it most unlikely that this case will lead the court to take as bold a step as invalidating a major congressional initiative like the inter partes review process.

    1. My bet a few weeks ago on FantasyScotus was 8-1, with Gorsuch in dissent.

      He would prefer no executive branch adjudication in any form, and he is a zealot, and this is a perfect vehicle to express it safely.

      Mark it, Dude.

      1. I think Thomas will join because Thomas and Gorsuch are bursting with their shared love for everybody’s favorite deceased momma’s boy Justice “Next Thing You Know The Gays Will Want to Marry Each Other!” Scalia.

        1. I was thinking 8-2 but I think Thomas is a conservative in the actual sense; et ceteris paribus he does not like to unwind settled practice

        2. “Justice “Next Thing You Know The Gays Will Want to Marry Each Other!” Scalia.”

          Sounds like a prophet. Don’t saintin’/deify him just yet.

          1. Sounds like a prophet.

            Right, just like the guy who said that the sun is going to rise in the east tomorrow.

            The main difference is the sun predictor wasn’t a toxic pile of shirt with one foot in the grave like Tony Scalia. Good riddance.

          2. Sounds like a prophet.

            Right, just like the guy who said that the sun is going to rise in the east tomorrow.

            The main difference is the sun predictor wasn’t a toxic pile of dominionist shirt with one foot in the grave like Tony Scalia. Good riddance.

      2. Fair enough, as long as we are placing bets, I bet 5/4 for Oil States, either with Kennedy either authoring the majority opinion or with the Chief writing for a plurality and Kennedy writing a separate concurrence (possibly joined by Thomas) that gives a majority for reversal.

  4. Returning to the historical argument, based on English history.

    At least, this is, for once, consistent with the title of the blog posting.

    I suggest that any jurisdiction that the Privy Council might have had to examine the validity of patents of invention in the 18th century could only have been derived from the defeasance clause explicitly inserted into the letters patent when it issued, allowing the king to order that the patent be annulled on certification by any six members of his Privy Council, under their hands, that the requirements for annulment had been met.

    It should be denoted that, as I have documented elsewhere, at least in the 18th century cases of Hamblin’s, James’s and Wilkinson’s patent, the committees that examined that patent included serving or retired justices of the common law courts. Moreover the meetings that determined the validity of these patents also advised the King on various appeals made to the King in Council from decisions of the law courts in Jersey, Guernsey and His Majesty’s Colonies. I suggest, prima facie evidence of a conciliar court advising the King on the exercise of his judicial powers.

    Next to note, the act of parliament of 1641 entitled

    An act for the regulating of the Privy Council, and for taking away the court commonly called the star-chamber.

    The text is on this website:

    link to lonang.com

    and on many other websites.

    Here is the text of Article 5 of that act of 1641:

    V. Be it likewise declared and enacted by authority of this present parliament, That neither his Majesty, nor his privy council, have or ought to have any jurisdiction, power or authority, by English bill, petition, articles, libel or any other arbitrary way whatsoever, to examine or draw into question, determine or dispose of the lands, tenements, hereditaments, goods or chattels of any the subjects of this kingdom, but that the same ought to be tried and determined in the ordinary courts of justice, and by the ordinary course of the law.

    Next question, are letters patent granting a legal monopoly to an inventor a hereditament?

    First note that “honours, liberties and franchises” (in the medieval sense of those terms) are regularly included with “castles, manors, mesuages…” in lists, in charters etc. in lists that conclude with “and other hereditaments”.

    I am not a lawyer, but dictionaries etc. seem to esablish that hereditaments are property, corporeal or incorporeal, that can pass by inheritance.

    In 18th century England, could patent grants pass by inheritance, if the inventor died within the fourteen year duration of the grant?

    In the standard boilerplate text of the letters patent, to be found in John Dyer Collier and many other sources:

    “Know ye therefore, that we, of our especial grace, certain knowledge and mere motion, have given and granted, and by these presents for us, our heirs and successors, Do give and grant unto the said A. B. his executors, administrators and assigns, our especial licence, full power, sole privilege and authority, that he the said A. B. his executors, administrators and assigns,…”

    I suggest that the presence of the words “executors, administrators and assigns”, repeated many times in the document, prove that such letters patent were (incorporeal) property that could pass by inheritance or assignments, and therefore were indeed hereditaments.

    1. I hope you realize that you sound like a lunatic.

      Seriously.

      1. And no one seems to really care too much about what the Crown did. We did have a revolution over it and all…

        1. Ray, but the issue (of what went on in England) is actually central to the outcome of Oil States.

          1. I respectfully disagree. One or two Justice’s may have the view that if it is a private right then any administrative action is too much. However, from reading the transcript, I get that many don’t close the door on the issue if they find it is a private property right. For those, the issue is how much is tolerable before it is an invasion of the VII amendment.

            In my humble opinion, focusing too much of the private/public issue misses the bigger picture several of the Justice’s are concerned about.

            As a few commentators have suggested, this isn’t a “patent” case – it is an administrative powers case.

          2. Not exactly, Ned – as I have reminded our diligent friend Distant Perspective. There are some things that the US wanted differently than our Monarch-driven former overlords.

      2. No doubt.

        Nevertheless SCOTUS applied the “historical test” in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and the judgment by Justice Souter seems been based in large part on scrutiny of law reports of English patent cases in the late 18th century or early 19th century. Also, for the historical test, Justice Souter cited not only United States v. Wonson, 28 F. Cas. 745, 750 (No. 16,750) (CC Mass. 1812), but also Baltimore & Carolina Line, Inc. v. Redman, 295 U. S. 654, 657 (1935) and Tull v. United States, 481 U. S. 412, 417 (1987).

        Obviously SCOTUS are the supreme court of the U.S. and are not therefore bound by stare decisis, and can abrogate their precedent any time they choose. Nevertheless Markman was decided by a unanimous court, which seems to have included Justices Thomas, Kennedy, Ginsburg and Breyer.

        ===

        Then onto the Article III question. Chief Justice Roberts in the opinion for the Court in Stern v. Marshall 564 U.S. 462 (2011) included the following in III A of that opinion:

        “Article III could neither serve its purpose in the system of checks and balances nor preserve the integrity of judicial decisionmaking if the other branches of the Federal Government could confer the Government’s “judicial Power” on entities outside Article III. That is why we have long recognized that, in general, Congress may not “withdraw from judicial cognizance any matter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty.” Murray’s Lessee v. Hoboken Land & Improvement Co., 18 How. 272, 284 (1856). When a suit is made of “the stuff of the traditional actions at common law tried by the courts at Westminster in 1789,” Northern Pipeline, 458 U. S., at 90 (Rehnquist, J., concurring in judgment), and is brought within the bounds of federal jurisdiction, the responsibility for deciding that suit rests with Article III judges in Article III courts.”

        I would respectfully suggest that, unless the Justices intend to abrogate their precedent, it is relevant what those bewigged gentlemen got up to in the late 18th century, and what matters were required to come before their courts of common law, and their courts of equity, and their court of admiralty, and so on.

        But, given that SCOTUS is supreme, the Justices are free to abrogate their precedent, even that which was decided by them within the past 22 years.

        ===

        Of course the Federal Respondent and significant numbers of professors of intellectual property law have informed the court that, actually there is really no need for the Justices to bother their heads with what was going on in the courts of common law and equity in England in 1792.

        And the reason for that is, that there was an administrative agency, or 18th century equivalent thereof, called the Privy Council, which went around invalidating large numbers of patents without judicial involvement right up to and past the date 1791 adopted for the “historical test”. In particular, Justice Sotomayor has learned from their briefs that the Privy Council invalidated 10 patents between 1769 and 1789. (In fact only one patent, the Wilkinson patent, was annulled by Order of Council made by King George III in person in that period, and the process involved the attorney general and solicitor general examining affidavits, meeting with counsel for both parties, and the King was advised by a committee which included Privy Councillors of whom one, Sir John Eardly Wilmot had been Chief Justice of the Court of Common Pleas from 1766 to 1771, and the other Sir Thomas Parker, had been a Justice of the Court of Common Pleas from 1740 to 1742, and Lord Chief Baron of the Court of Exchequer (a superior common law court) from 1742 to 1772.

        But of course the Federal Respondent (pages 39 to 40) states that the invalidation of patents by the Privy Council was carried out “without involving the courts” (though committees of the Privy Council have throughout its existence been “courts” exercising judicial power), and shortly afterwards state that American courts “also treated patents as privileges or franchises that could be revoked without judicial involvement”.

        Thus, even if they don’t say it in so many words, the Federal Respondent clearly meant to imply that patents were invalidated by the Privy Council “without judicial involvement”, though they appear to cite no authority for this seemingly incorrect proposition.

        The fact that respondents themselves brought the Privy Council into the picture surely indicates that they thought that how matters were dealt with in English courts at the end of the 18th century was some way relevant.

        And, in the interests of historical accuracy, at least, it seems reasonable to investigate the process by which the Privy Council invalidated patents in the 18th century, on the handful of occasions where this happened, and explore the constitutional basis for the practice.

        And of course, given that respondents make such a big deal of the fact that Queen Elizabeth I invalidated patents without so much as a by-your-leave, it is perhaps worth pointing out that she died long before the famous Act of Parliament of 1641 limiting both the royal prerogative and the powers of the Privy Council, and that a civil war, an execution of a king, and a revolution intervened between the reign of Good Queen Bess and the time at which the U.S. constitution was ratified.

        ===

        But, as I said before, SCOTUS is perfectly free to ignore its precedent, not only 19th century precedent but precedent from recent decades. It is up to them.

        1. Be aware of – and wary of – that “doing whatever they want” line of thinking.

          1. Be aware of – and wary of – that “doing whatever they want” line of thinking.

            Because “anon” is totally concerned about authoritarian @ h0les.

            Sure he is!

            1. Stultifying – coming from this blog’s single most “authoritarian @ h0les.

              You trying to do that “one bucket” thing of yours again?

        2. Nevertheless SCOTUS applied the “historical test” in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and the judgment by Justice Souter seems been based in large part on scrutiny of law reports of English patent cases in the late 18th century or early 19th century.

          The judgment was based on evaluating the pros and cons of the alternatives, using reasoning and logic.

          Looking back at what was done “historically” can be informative, for obvious reasons. But looking back at was done “historically” and then looking at nothing else is something that only a complete id i 0t does. Yes, there are people like that on the Supreme Court. In one case, the id i0 t was put there by a pat th0 l0gical l i a r and r@ cist. Ned Heller voted for him — surprise.

    2. Distant, again thanks for this. It only proves once again that the privy Council had no constitutional authority to examine the validity of an issue patent against the will and consent of the patent owner.

      But then we have the issue of the defeasance clause. It remained in patents even after 1753 and presumably permitted the privy Council to consider the validity of an issue patent. It turns out though that the Council refused to do so from that time. After a while, petitions dwindled to nothing.

      1. IMHO, you don’t need to reach the 7th Amendment issue to invalid the IPR ‘court’ and could leave the issue open and give congress another try. Repeal of 35 USC 145, now puts the IPR Star Chamber in the business of obviating Art III final judgments. That’s enough.

      2. Ned, have you ever visited the website of the Judicial Committee of the Privy Council? It has a page on its history here:

        link to jcpc.uk

        This discusses the history of the Privy Council, acting in its judicial capacity, from medieval times to the present day, a history which includes the committees that, in the 18th century, considered those petitions seeking to invalidate patents according to the defeasance clause.

        Note that, although it discusses the formation of the Star Chamber, it glosses over the horrors of that court. This is perhaps hardly surprising, given that the video is intended to promote the current JCPC as a supreme court with international jurisdiction.

        Note that the Court happens to be located in the same building as the Supreme Court of the UK, and its members, or “justices” as they describe themseves, consist of the President of the Supreme Court, the Deputy President of the Supreme Court and ten Justices of the Supreme Court.

        ===

        The current cases are from those parts of the world, notably the Channel Islands (Jersey and Guernsey), and various places in the West Indies, from which the appeals came back in the 18th century that were handled by the ancestor of the present committee in the same meetings that discussed the patent cases. (In particular, I noticed that, today, they were hearing an appeal from Guernsey.)

        ==

        In terms of superiority, this court would be on a level with that of the House of Lords. In both cases the judgment would be an act, either of the King in Council or the King in Parliament, so there would be no possibility of an appeal. The equivalent situation in the U.S. to that of the Privy Council handling patent matters would be one in which the Supreme Court of the United States had original jurisdiction over patent cases.

        Probably time to become somewhat less diligent.

      3. Aiming to clear up a few loose ends.

        With regard to the Privy Council in England acting on petitions to apply the defeasance clause in letters patent for inventions: I would incline to the view that under the “unwritten” constitutional principles that applied in England in the 18th century, it would have been considered lawful, in that the defeasance clause explicitly inserted as a proviso in the letters patent would have over-ridden any requirement from the 1641 act for the validity of the patent to have been tried at common law first. It may well be that, no court in England at the time would have had the jurisdiction to consider questions relating the lawfulness of the Orders of the King in Council, where the king acted on the advice of his Privy Council. In any case it seems that cases did not come before the courts of England at the time that might have clarified the legal position.

        It should be remembered that the English constitution, in the 18th century, and since, did not operate according to a principle of separation of powers. The Crown served as the nexus of the executive, legislative and judicial powers of the state. The Crown, in its official business, acted on the advice of other organs of state: the law officers, the Privy Council, Parliament. Thus the King (or Queen) would sometimes have exercised the executive power (e.g., in going into battle, as King George II did at Dettingen), sometimes the legislative power (e.g., in the issuance of Orders in Council, which had the full force of law), and sometimes the judicial power. Indeed the king was the “fountain of justice”, and the whole apparatus of courts, prisons etc. was, in theory, the responsibility of the king, in whose name judgments were delivered. Ultimately the jurisdiction of all courts derived from that of the Curia Regis in early medieval times, and the Privy Council in particular certainly inherited its judicial authority from the Curia Regis (the unbroken judicial competence being exercised at the present time by the Judicial Committee of the Privy Council). The Privy Council advised the king (or queen) in official business referred to it, with the result that the King in Council exercised the executive, legislative and judicial powers of the state. In short, the Privy Council would be a body repugnant to the principle of Separation of Powers that is fundamental to the U.S. Constitution.

        Incidentally Sir John Willis, Chief Justice of the Court of Common Pleas in the time of King George II, participated in the committees that considered both the Betton and James patents. (I checked out the Privy Council records in relation to the Betton patent on the AALT website a few days ago.) Thus the committees of the Privy Council that advised the king to annul patent grants had judicial involvement at least from the early 18th century. Given that the law officers were also involved (and bearing in mind also that law officers of the Crown were traditionally appointed to senior judicial positions , as sometimes happens in recent times – consider Justice Kagan’s transition from Solicitor General to Associate Justice), it can certainly be said that the King, and members of the Privy Council, acted in accordance with professional legal advice.

        But, as anon has more than once reminded me: “different sovereigns…”

        But, assuming that letters patent under the seal of the U.S.P.T.O, do indeed “secure exclusive rights”, as implied at least by the constitutional text, where those rights correspond to rights recognized in common law in England in 1789, or 1791, then, under U.S. constitutional principles, it seems to me that the Doctrine of Unconstitutional Conditions (which brings up many results in web searches) would prevent the insertion, into the provisos of a U.S. patent of invention, of conditions that would require patentees, as a condition of grant, to waive any rights they might assert in order to have the validity of the patents tried only in Article III courts.

  5. It is surprising how many arguments on issues NOT related to the “question presented” on which cert was taken did come up in oral arguments, including “due process,” “stacking” and “taking.”
    But also interesting were expected arguments that did not come up. For example, Ned’s arguments that pre-AIA IPRs and interferences provided optional D.C. civil actions after those proceedings and before appellate reviews. And how much consideration was given to the actually “question presented” right to Jury trials? What else did you-all notice NOT being discussed?

    1. Yeah, the VII amendment issue appears to be entirely off the radar. There was some considerable discussion devoted to McCormick, but none to Wood & Brundage, despite the fact that Wood & Brundage stands much more clearly for the proposition for the necessity of jury trials in patent validity contests than McCormick stands for the proposition that invalidity challenges are uniquely the province of Art. III courts.

      1. I sense there are several members of the Court that still view the executive as having some administrative oversight to patents even they are considered private rights – just as there are limits on the 1st, 2nd, and other amendments.

        If that is their take, the issue of public vs private is not dispositive to the issue, which was was well briefed.

        The questions not answered in the briefs – especially from OS – is what amount of oversight is permissible?

        1. That very level necessarily returns the discussion back to the nature of the patent right.

          Critical (and critically missing) is the recognition that an inventor’s inchoate right (NOT any form of ‘largess’ from the state) is involved with an EQUAL Quid Pro Quo that – at the moment of grant – turns the inchoate right into a private property right.

          1. That is certainly the view of many. I suspect a few members of the Court don’t see the issue as closed if they view a patent as a private property right.

            As conceded by OS, there is some level of administrative review they view as acceptable – the question for those Justice’s remains: “how much executive review is too much” for a private property right?

            Granted, if you are in the camp that believe in strict reading of the constitution, statutes, etc, any review is too much and the argument should be around private vs. public only.

            1. How much not strict is too much when it comes to statutory law allocated by the Constitution to one particular branch (keeping in mind that property rights inure other Constitutional protections that even that one branch so allocated authority must abide by)…?

    2. You know what else did not get any mention, in either the oral argument or the briefs: the AIA Titanic theory.

      Out in the fever swamps of the internet, there is a widespread belief that if even one aspect of the AIA is declared unconstitutional, then the whole act fails. Would you believe that not even ten seconds of discussion was devoted to the subject of how much of the act fails if IPRs are found unconstitutional. Why, it is almost as if this theory is a hare-brained figment of some rather kooky imaginations.

      1. Great observation Greg. Not even a question as to what happens to thousands of patent suits ended by IPRs if they were all unconstitutional. [Not to mention inter partes reexaminations and interferences].

        1. If you read the opinion by Judge Lynn recently, it spells out what happens to cases that exhaust their appeals. They are dead dead dead and can’t be resurrected.

          Hence, no need to discuss them…

      2. My comment is still stuck in moderation…

      3. Your comment is awaiting moderation.
        November 28, 2017 at 12:58 pm
        You are correct here Greg – but only so far as the absence – as you may have noticed (or not), I have stopped posting with that view, pending my ability to find the specific attempted amendment to provide for separability.

        Be that as it may, your “summary” of those attempts is WAY out of line.

        The arguments were sound – and it is only the lack of showing that an actual amendment (consideration of adding) and that amendment being rejected WOULD indeed have created a USS AIA Titanic condition.

        hare-brained? NO
        figment? NO
        rather kooky? NO

        If one takes the premise as a given with my prior position, then the legal result would be NOT as you try to portray it.

        This type of post from you show your weakness – and not any type of strength in your legal reasoning.

        You do yourself a disservice with your added feelings here.

    3. If you view this case as a “patent” case, I can see your point. If you view this case as a larger policy case that raises issues related to the extent the administrative state can act on private rights, then I think you would not be surprised with the questions.

      The Justice’s are quite capable of reading the briefs and don’t need to ask questions that are already briefed.

    4. I’m not so sure that stacking is unrelated. That’s evidence of what can happen when there are no Article III protections. I do wish Sections 145/146 got mentioned.

    5. Ho should have had that point at the ready. It was the obvious response.

    6. Another point not addressed at all was all the prior inter partes reexaminations, which were much closer to IPRs than the ex parte reexaminations being admitted to be Constitutional by Oil States and attempted to be distinguished by Oil States from IPRs.

    7. The original aspect of patents as property – the ties to a Lockean view of the inchoate right of the inventor being turned into a legal property right at the time of grant through the Quid Pro Quo.

      Basic.
      Fundamental.
      Possibly to be obliterated (Supremely) in a broken score board move that rivals all previous broken score boards.

  6. So why was this spectrum of the kind of proceeding an important strategic decision? It’s clear that an IPR is not a court, isn’t it? Was anyone second guessing that? Why not just talk about normal stuff, like… Article III, the government gives you a property right? Who cares what the Crown did? Why are we having discussion in the SCOTUS on what the Crown would do? No body cares about Prince Harry’s relationships!!! Why did you take us here!?

    “JUSTICE BREYER: Everybody’s dead, by the way…”

    1. Because they were groping at the 7th Amendment.

    2. There’s nothing in the Constitution that says Congress can’t create a conditional right that is revokable by the granting agency upon a showing of error and a proceeding consistent with due process.

      The whole game here involves pretending that somehow 250 years later in a very different universe of facts and laws that somehow our hands are tied because of what some r@ cist mis 0gynist rich people allegedly did with some similar “instrument”. And even that evidence is flimsy.

      But Stolen Seat Neil will eat it up because he loves the way things worked back then. The best of times!

      1. and a proceeding consistent with due process.

        Repeating the same loop…

        You continue to think that THAT is a point in your favor.

        It is not.

        what some r@ cist mis 0gynist rich people

        Why the F do we have to put up with this?

  7. Why couldn’t Oil States cough out the argument in response to the many administrative hypos Q’s simply: That might be possible, putting aside the 7th amendment arguendo, but the current system of mixing Art III courts and Admin courts is not permissible? Getting wrapped around the intellectual axe of hypothetical questions and poor analogous cause of actions is not helpful.

    1. IWT, If you are suggesting getting rid of all administrative trials, that would dump hundreds of thousands of such trials, on employment and unemployment insurance issues, Social Security disputes, veterans and civil service disputes, immigration cases, etc., etc, into already overloaded, expensive, and Congressional-budget-cut Article III courts.

    2. Telling the Court that their hypos and poor analogies are not helpful – is not helpful to your client’s cause…

      They ask the questions and want direct answers to them. Avoiding them is rarely helpful and often seen as dismissive of the Court. Not a wise choice in my view.

      1. Well, I only read the transcripts, but it appeared to me that someone was not a good listener to the real issue being address by the question.

  8. Exchange with Justice Kennedy starting at p.9, l.23:

    JUSTICE KENNEDY: “Could Congress say – let’s hypothesize going forward – that we will grant you a patent on condition that you agree to this procedure – otherwise we don’t give you the patent. Could Congress do that?”

    MS. HO: “No, for – for two reasons.”

    Counsel for appellant suggests that this would conflict with articles of the Constitution, suggesting at least two such articles. But, after Justice Kennedy rules out Crowell v. Benson, she cannot suggest a specific case on point: (“Might be Northern Pipeline, or perhaps one of the bankrupcy cases”)

    Granting a right by letters patent conditioned by provisos explicitly stated within those letters patent is perfectly consistent with English practice up to 1791: the chanceries of England had been doing that for centuries.

    Any constitutional argument would have to be based on specifics of the U.S. Constitution – but Justice Kennedy’s question goes to the freedom of Congress to shape the contours of rights by attaching provisos, not the question of where patent rights as determined by current Federal law could be litigated.

    Incidentally the seventh amendment implications of bankruptcy laws would be complicated, if one had to make arguments based on English practice prior to 1891 – Bankruptcy proceedings seem to have been supervised by the Lord Chancellor sitting in equity, and involved “commissioners of bankruptcy”. On the other hand, maybe the old English law relating to bankruptcy, though perhaps seeming complicated at first sight to a layman, might come out to be more straightforward than first impressions might suggest.

    1. This specific point was touched upon by a poster in a recent thread.

      The gist, if I recall correctly is that in the US sovereign setup, this is a no-no (so your foreign view does not carry over).

      1. Well, who could fail to be convinced by this totally unsupported assertion?

        1. Was not trying to recapture the argument Greg – merely noting that (someone else) DID post a counter point to the item already.

          If it was my argument you could be certain that I would have added more details.

          1. If it was my argument you could be certain that I would have added more details.

            More?

            1. Yes, more.

              That’s an simple enough direct English statement.

    2. Page 11, lines 8 to 15.

      I presume counsel for appellant misunderstood Justice Kennedy’s question. I presume the Justice was asking, could Congress reduce the life of all issued patents by 10 years.

      Incidentally, the parliament of Great Britain could extinguish rights, even real property rights – and without being constrained by a “takings clause” – presumably the place where the U.K. doctrine of parliamentary sovereignty departs most markedly from U.S. constitutional principles. In particular, in the late 18th century, there were many “enclosure acts” passed that enclosed common land, extinguishing ancient rights, for the benefit of local landowners.

      1. Right. They talked past each other on this issue.

    3. JUSTICE KENNEDY: “Could Congress say – let’s hypothesize going forward – that we will grant you a patent on condition that you agree to this procedure – otherwise we don’t give you the patent. Could Congress do that?”

      A: Perhaps, if we put aside the issue of the 7th Amendment and private and public rights for another day. What is crystal clear is congress cannot create a dual track Art III trial right and a subsequent means for the executive branch to remove from the record the relief granted in the case. That is Hayburn’s case.

      1. What’s crystal is That’s not what’s happening here.

    4. My guess is that Ms. Ho was thinking of Schor, where the Court said that “Article III, § 1, safeguards the role of the Judicial Branch in our tripartite system by barring congressional attempts ‘to transfer jurisdiction [to non-Article III tribunals] for the purpose of emasculating’ constitutional courts” and that “[t]o the extent that this structural principle is implicated in a given case, the parties cannot by consent cure the constitutional difficulty”. CFTC v. Schor, 478 U.S. 833, 850-851 (1986) (citing Northern Pipeline v. Marathon Pipe Line, 458 U. S. 50, 58 (1982)).

  9. One possible resolution I haven’t seen mentioned that may appease many of the Justices is: ruling that the standard of review by the FedCir (high/strong deference to the fact finding) is unconstitutional and the proper review should be a much lesser standard, if not denovo. As a result, there would be a proper Article III review.

    The practical effect may be nil with the current Rule 36 procedure, but this may be an avenue for the Court to resolve the public/private right issue as well as the abuses by the PTAB.

    Just a thought on how Roberts may be able to swing a 9-0 decision somehow.

    1. I do not think that such gets you there.

    2. Ray, the Fed. Cir. review standard for IPRs is controlled by the APA statute, [not the AIA] as the Sup. Ct. unanimously held in In re Zurko. They don’t get to rewrite the APA here.

  10. The response appeared to be that a grant of a patent cannot be conditioned on giving up structural rights, harkening to the discussion of the unconstitutional conditions doctrine in the petitioner’s reply brief… Justice Breyer suggested, doesn’t the Patent Act’s phrase “subject to the provisions of this title” puts patentees on notice that post-issuance non-Article III patentability determinations are possible?

    Granting that a patent grant cannot be conditioned on giving up structural rights, does the patentee have any “structural” rights that are slighted by consenting to IPR treatment of a later granted patent? IPRs only decide questions of novelty and non-obviousness, and the patentee necessarily concedes that the PTO has the right to decide those questions as a condition of receiving a patent. If there is a “structural” right that is violated by that concession, then the whole patent examination system is necessarily unconstitutional.

    It seems to me that the real problem with IPRs is that they were made available for challenges to pre-AIA patents. If this statute is struck down, and Congress replaces it with one in which IPRs are only available for patents with a post-15 Mar 2013 effective filing date, there really is no problem.

    1. Justice Breyer suggested, doesn’t the Patent Act’s phrase “subject to the provisions of this title” puts patentees on notice that post-issuance non-Article III patentability determinations are possible?

      It certainly does.

      1. That doesn’t answer the question of whether a section of the Patent Act is Unconstitutional. Breyer’s is a lame bootstrap argument. He needs to retire (in three years, heh). What does being put on notice have to do with whether a patent is a private or public right?

    2. It seems to me that the real problem with IPRs is that they were made available for challenges to pre-AIA patents. If this statute is struck down, and Congress replaces it with one in which IPRs are only available for patents with a post-15 Mar 2013 effective filing date, there really is no problem.

      That is undoubtedly true. I also think you did a fine job of presenting some of the best arguments for distinguishing between the pre-AIA agency review paradigms versus IPRs. But I think the previous notice was still plenty sufficient. 😉

    3. Greg,

      We’ve been over this – the item you omit here is that there is a legally cognizant change from an inventor’s inchoate right to a fully enforceable legal right at the moment of grant.

      This very much is that “structural” right – just not how you are portraying it here.

      So no, your view does not accord. (same thread I indicate to MaxDrei above), this view (by another) was explicated quite well.

      1. “Your view does not accord.”

        Lol. Where did you learn to talk this? Glibertarian Boys Club?

      2. This seems to me the heart of the matter. I have just read through for a second time up to the end of the argument for the petitioner. Gorsuch on page 23 hands counsel what maybe the true response to Justice Breyer’s airline hypothetical, and the observation of Justice Kagan that administrative law adjudicates disputes all the time. (Why cannot counsel simply take what is offered to her without equivocating about Schor etc.?)

        If the patent grant confers a vested right then the airline hypothetical is distinguished. But if the patent grant did not…

        1. Distant, indeed, Ho never mentioned, which would be inconsistent with her entire argument btw, the quid-pro-quo. The inventor has disclosed. Changing the bargain after the reliance disturbs vested rights. Not possible.

          The English cases, particularly Rex v. Arkwright, discusses the fact that the disclosure is required to receive a patent. It also suggests that the reliance interest the inventor has in making such a disclosure in the first place.

          But this would make revocation the issue, the process. She would actually have to agree with Gorsuch, which, for some reason, she seemed to be categorically against.

          1. I am not so sure that she was categorically against Gorsuch’s position.

            I got the impression she was trying to say that there might be something in Schor that maybe…

            But surely she was there, before the Court to explain, from the perspective of the petitioner, how the case before them related to Stern and to Schor. She might have made an argument as to why the opinion of the Court in Stern made for the petitioner, but alternatively, if one considered the five-factor test that Justice Breyer had distilled from Schor in his dissent in Stern, it would surely be difficult to argue that those factors weighed for the constitutionality of IPR.

            Then having apparently disclaimed the argument that Justice Gorsuch presented her with, she then seemed to try to row back with “We certainly do stake our ground on that it’s a private right.”

      3. [T]he item you omit here is that there is a legally cognizant change from an inventor’s inchoate right to a fully enforceable legal right at the moment of grant.

        Well, yes, I did omit that point. It remains to be seen whether that distinction actually makes a difference. It all depends on the majority opinion deciding this case. You are certainly correct that the Court could craft an opinion that rules out the proposal I am making in #6.

        Given, however, that it appeared that the justices were taking it as settled that what the NLRB does is constitutionally acceptable, it follows that administrative adjudication is not itself unconstitutional. If administrative adjudication between two private parties is not unconstitutional, however, then it cannot be an “unconstitutional condition” to require that a patentee agree to such administrative adjudication as a condition of grant.

        Still and all, I think that the better option after IPRs are struck down in this case would be for Congress to move the whole system over to a specialize set of Art. III district courts.

        1. So you still think IPRs are going down. After that “performance.” Yikes! It was clear Gorsuch hates admin agencies, but otherwise, what’s your proposed majority?

          1. The republican appointees. There are five of them and one only needs five.

          2. I think you over value the role/importance of oral argument.

            Which Justice(s) do you believe changed their mind based on that “performance?” Why do you believe they did so?

            Appellate oral argument is an opportunity for the Court to add up concessions to give further support to their positions and act as a modern day professional flogging for arguments/positions they don’t like.

        2. This is a logical non sequitur:

          If administrative adjudication between two private parties is not unconstitutional, however, then it cannot be an “unconstitutional condition” to require that a patentee agree to such administrative adjudication as a condition of grant.

          The second does not follow from the first.

          1. Oh boy. Is this a contest to see how much logical bad faith one can pack into eight words?

            An unconstitutional condition—at the risk of belaboring the obvious—is a condition that is unconstitutional. If the condition is not unconstitutional, then it cannot be an unconstitutional condition.

            It takes rather a rare degree of obtuseness to argue that something that is, ex hypothesi, not unconstitutional can still constitute an unconstitutional condition, but I suppose that no degree of obtuseness is out of reach with sufficiently motivated effort.

            1. You are trying to tie together two very different things, Greg.

              As may often be provided (by you , even): correlation is not cause.

              Here, you do not even have correlation.

              rare degree of obtuseness

              Indeed – just not how you want to portray it.

            2. “It takes rather a rare degree of obtuseness to argue that something that is, ex hypothesi, not unconstitutional can still constitute an unconstitutional condition, but I suppose that no degree of obtuseness is out of reach with sufficiently motivated effort.”

              This seems very unfair. There are indeed things that Congress is allowed to do “in general” or “in the abstract” that it is nevertheless *not* allowed to do as a condition of something. For example, they can raise or lower taxes, and in some cases they can do so based on activity they want to incentivize or disincentivize, but they couldn’t give a tax break to those who agree to express certain viewpoints. That would be an unconstitutional condition on an otherwise constitutional tax provision.

              Just like there are things Congress can eliminate or deny outright, but not in if done discriminatorily, etc.

              So, count me in with the obtuse, I guess…and perhaps you can distinguish my example from this case…but it would still call into question your sweeping statement. In any event, there’s no need to presume bad faith or the like just because somebody doesn’t see your point or is hung up on a different point/nuance, etc.

              1. There are indeed things that Congress is allowed to do “in general” or “in the abstract” that it is nevertheless *not* allowed to do as a condition of something. For example, they… couldn’t give a tax break to those who agree to express certain viewpoints.

                The essence of the unconstitutional condition is that it is the condition being attached to the otherwise legitimate grant or action that is unconstitutional. You are certainly correct that Congress can give a tax break, but Congress cannot engage in viewpoint discrimination. Therefore, in your example, the condition (engage in expression of this viewpoint) is unconstitutional.

                That is the complete opposite of the issue in discussion, where we are granting ex hypothesi that trials in Art. II fora are constitutional. If such Art. II adjudications are constitutional, then it cannot amount to an “unconstitutional condition” to condition the grant of the patent on the agreement to the Art. II adjudication.

  11. >>He also mentioned that expanded panels are not unlike en banc panels in the federal circuit courts, and exist principally to correct panels that diverged from precedents.

    Mr Stewart should have been reprimanded for this misrepresentation. An expanded panel is nothing like an en banc review of the CAFC because the en banc review is all the judges that are not retired. The expanded panel is selected by the directed.

  12. >>He also mentioned that expanded panels are not unlike en banc panels in the federal circuit courts, and exist principally to correct panels that diverged from precedents.

    Mr Stewart should have been ripped in two for this misrepresentation–at best. An expanded panel is nothing like an en banc review of the CAFC because the en banc review is all the judges that are not retired. The expanded panel is selected by the directed. Should have resulted in the immediate stopping of oral arguments and removal of Mr. Stewart. This is pretty bad.

    1. I think the Court was quite aware they aren’t the same and the Court’s action to move on was pretty dismissive of the Government’s position.

      Agreed this was a big credibility hit. The panel stacking seemed to really irk the Court when the government is asking the Art III Court to give “deference” to the PTAB’s decisions and actions.

      If the case goes for OS, I believe the panel stacking is the form of abuse that will motivate the Court to do so – yes, I know it is supposed to be based on some 18th century practice by English Courts, but this is today. This is a policy case now.

      1. The “panel stacking” power is NOT new.

        It seems odd that this is something that seems to be being aligned purely with the AIA.

        Panel stacking has been a power of the USPTO since like forever.

        1. Regardless, the Justices certainly didn’t appear to be in favor of it with respect to the PTAB process and the high deference review by the FedCir.

          Further, has there ever been a case before the SC that exposed panel stacking?

        2. Thank goodness the PTO never systematically grants junk patents!

        3. Neither replies here are on point.

          But one deserves a benefit of the doubt, while Malcolm is being his usual self.

          Ray,

          Whether or not the Justices “like it,” this aspect is part and parcel of admin law and is simply in accord with any one particular admin agency setup.

          This also goes to the point that Congress F’ed up when they provided so much discretion to one of the worst admin agencies in regards to any separation between the admin agency “judicial” role and the admin agency “policy” role.

          1. I agree, and I think the Justices distaste for the Admin State is enhanced with such power congress hands the agencies. While not determinative, the panel stacking was like scratches on the chalkboard to the conservative wing of the Court. They really didn’t like hearing it.

    2. The “stacked” panels are a total red herring. I wish that the government attorney had explained better what is going on in those “stacking” cases, but it is a shame that so much valuable time was wasted on this issue, because it is really irrelevant to any issue of constitutionality that is actually at stake in this suit. No one even raised due process in the proceedings below, so the “stacking” issue is totally beside the point.

      1. No, it is not a red herring. Our constitution is based on separation of powers. That is why we have Judiciary, Executive, Congress, Senate, States…etc.

        The founders have recognized that one person or institute cannot be trusted to be given all the power. As they say, absolute power corrupts absolutely.

        To give a significant percent of our economy, namely innovation, to one unelected director who can stack the panels is totally against the spirit of our constitution.

        1. Yes, it is a red herring, because it would equally well violate the separation of powers to transfer judicial power to the executive, even if the executive was formally constrained to assign IPRs to three ALJ panels selected by lot.

          1. Panel stacking isn’t a separation of powers issue. If the IPR process is constitutional – the issue of panel stacking is a 5th amendment due process (impartial arbiter) issue. If IPR process in not constitutional, then the panel stacking issue goes away.

            It’s a red hearing in the sense that the 5th Amendment issue is not before the Court and it not a concern if the Court strikes down the IPR process.

            I see the panel stacking issue as some Justice’s venting their disgust for how abusive the executive can be with their powers/rules and as a motivation to find a proper way to do something about it.

          2. That “equally well” line does not make your case that the thing that IS “equally well” is a red herring.

            All your comment does is add an additional view, without really addressing WHY either of the “equally well” separation of powers arguments are – or are not – red herrings.

          3. The panel stacking is relevant because it does illustrate how difficult it can be to correct corruption when the power is vested in only one branch.

    3. Should be random. Would that satisfy you?

  13. What I got from the arguments was that Neil Gorsuch is kind of a jerk. I mean, he asks questions like he’s got an uncooperative witness on the stand, instead of probing the legal issues in a discussion with a well-respected attorney.

    1. I didn’t get that. I got that he strongly believes they are private rights and thinks all of the rest of it was unnecessary.

      1. I got that he doesn’t tolerate an attorney not answering his direct questions. That’s pretty common among Judges and Justices…

    2. Neil Gorsuch is kind of a j – rk.

      “Kind of”? The guy is a poster child for world class j – rks. He’s an entitled pr-ck whose sole purpose in life is to please the @ h 0le masters in the Ferderlerst Sersiety who bought his seat on the Court.

      1. the Ferderlerst Sersiety who bought his seat on the Court.

        1. anon

          America needs the USSR back on the map… as a possible destination for emigration.

      2. “He’s an entitled pr-ck whose sole purpose in life is to please the @ h 0le masters in the Ferderlerst Sersiety who bought his seat on the Court.”

        What new leftist conspiracy theory is this? Do tell us all about it.

      3. No, the United States Senate handed him his Unconstitutional seat on the Court.

    3. Gorsuch sounds like a great federalist and great defender of the Constitution’s structural protections. What’s amazing is that Breyer sounds ok with the stacked and hacked star chamber can obviate an Art III final judgment.

  14. I think there is a good chance that IPRs are going to be found unconstitutional. I think Kagen is going to vote with Gorsuch.

    I think even Kagen gets the overstepping of IPRs.

    1. Bryer, Gingsburg, and Sotomayer are definitely going to go with Constitutional. Real bad arguments they use to. You can tell they are going to do and say anything to say it is Constitutional.

      1. Yeah, that umbrella statement/question was more confusing that Gingsburg’s rambles.

      2. I agree about Sotomayor and Ginsberg, but are you sure about Breyer? All of that questioning about reliance interests suggest that even Justice Breyer has concerns about whether IPRs are entirely kosher.

    2. So it’s — it’s not — it is geared to
      be an error correction mechanism and not a
      substitute for litigation.

      That is Gingsburg in a nutshell. She is saying ONLY 102 and 103–ONLY. What a joke.

    3. JUSTICE
      BREYER:
      By the way, there was
      judicial review.
      MS. HO:
      I -JUSTICE
      BREYER.
      As there is here.

      Breyer is 100 percent Constitutional ’cause. And he is filled with lots of those ridiculous anecdotes that only a justice can get away with. A man with a lessor title would be laughed out of the room.

    4. One thing that is bad is is the judicial review since it can be appealed to the CAFC. I suspect this may be the key point if it is held Constitutional.

      1. One thing that is bad is is the judicial review since it can be appealed to the CAFC.

        What?

      2. Yes, NW, as noted earlier, the fact that any IPR due process violation allegations can be, and have been, dealt with on appeal to the Fed. Cir. takes most of the wind out of that sail. Also, re alleged “stacking,” expanded PTAB Boards for any reason are are rare as hens teeth.

          1. Agreed. Again and again both sides responded to incommodious facts by observing that incidences of these horribles were rare in practice. How is this relevant in a facial challenge like this case?

    5. The current “judicial review” may indeed be the nail to hang the hat on for constitutionality. However, the high deference standard may undermine that angle and the previously decided cases that indicate that such appellate review is insufficient to save constitutionality.

      I will note that after looking at the TC Heartland arguments, I thought Kagan was going affirm…so much for me guessing how she will vote here.

      1. I hope your right. But, I think you can see when Ginsburg plays games like saying that they are really limited proceedings that ONLY involve 102 and 103—only. That the justices are capable of using the facts of the case to arrive at any holding they want and make it narrow enough that they can worm out of it the next time something like this comes along.

  15. Paul, what have I been saying, conceding that reexaminations are constitutional undermines the whole case that IPRs are unconstitutional. The Justices are not going to buy this argument. If Oil States is going to win, it will be despite Oil States arguments.

    1. I agree Ned. The reexamination issue is probably the biggest issue.

    2. I would second that assessment. The argument did not go well for the petitioner. At least the Justices themselves seemed well-prepared. On the other hand respondents seemed to go far along the road of saying that patentability was a purely administrative factual concern, that is appropriate matter for an executive decision. Developing their argument no doubt beyond the point of reasonable caricature – really patentability is of its nature not a matter for courts of law at all, and, were it not for the fact that some exercise of the judicial power is unfortunately needed if damages are be awarded, there really isn’t a need for Article III courts to get in on the act, other than some basic supervision to ensure basic due process is preserved in the administrative determination.

      If Justice Gorsuch finds himself in a minority and writes a dissent, it would probably be a strong one.

      1. If Justice Gorsuch finds himself in a minority and writes a dissent, it would probably be a strong one.

        And will demonstrate to everyone even more plainly what a complete ig n0 ramus j@ ck off he is.

    3. Query: is there some analogue of obiter dicta in relation to attorney argument? It seems to me that the constitutionality or otherwise of ex parte or inter partes reexamination seems to me not properly before the Court. But, even if it it was thought necessary strategy to distinguish inter partes review from reexamination, it seems to me it would be more proper to present the argument along the lines of something like the following: “Even assuming, arguendo, that both ex parte or inter partes reexamination were constitutional, nevertheless, in the case of inter partes review,…” But it seemed to me that counsel for the petitioner was falling over her feet to volunteer concession after concession at the beginning of the argument, without being pressed on the matter.

      1. My read is the decision to split ex parte reexams off from IPRs was a result of tallying up the potential votes and the view that they needed another Justice that supports some executive review but not a full tribunal (Kagan…). She certainly seemed to be focuses on how to draw the line and seemed wary of stripping the government from its administrative oversight for NLRB cases and other admin functions. She may be a surprise vote for overturning the IPR statute.

        1. She certainly seemed to be focuses on how to draw the line and seemed wary of stripping the government from its administrative oversight for NLRB cases and other admin functions.

          As long as we are objecting to lawyers standing in front of the court and saying things that the lawyers themselves know to be false, one really should call Ms. Ho on this one. She distinguished (pg. 68, ll. 16–20 of the transcript) NLRB proceedings on the grounds that “the big difference there is at the NLRB, it is the… government that is bringing… and prosecuting that action.”

          This is nonsense. Anyone who knows anything about the NLRB knows that if you pull an NLRB case, it will be captioned something like “Cartwright Foods v. NFCW Local 65” or some such. In other words, the agency adjudicates disputes (just like the PTAB) between two private parties. The agency only steps in to defend the decision as a named party if one or the other of the two private parties appeals the NLRB decision to court (exactly like the PTO defends its decisions in front of the CAFC if the IPR loser appeals). In other words, there really is no distinction here between what happens in an IPR and what happens in an NLRB trial. To suggest otherwise is knowingly disingenuous.

          1. Unfortunately this kind of “zealous argument” is just par for the course. I don’t even think it raises the Justices blood pressure. They knew she was wrong, and they knew that she knew it. All part of the “game”. So civilized!

          2. Yup-I sense Kagan like the NLRB process and is afraid of using too thick of a stroke in the OS case because of potential damage it could do to other admin cases.

          3. “In other words, there really is no distinction here between what happens in an IPR and what happens in an NLRB trial. To suggest otherwise is knowingly disingenuous.”

            That’s ridiculous. The one involves no even arguable property takin’/destroyin’.

            1. Oh, that is a good point. My apologies for my lack of clarity. I did not really mean to imply that there is no difference at all between what the NLRB does and what the PTAB does. My point is simply that the distinction that Oil States actually advanced is not, you know, true.

              There are distinctions that one can draw between the NLRB and the PTAB, but “at the NLRB, it is the… government that is bringing… and prosecuting that action” is not one of them.

              1. Idk bruh, I think they might be correct in that argumentation. It actually is the NLRB bringing the action iirc. Their lawls and setup are weird.

                “Anyone who knows anything about the NLRB knows that if you pull an NLRB case, it will be captioned something like “Cartwright Foods v. NFCW Local 65” or some such.”

                That’s because that is the complaint that is under adjudication, once the adjudication is complete by the NLRB then it’s the gubmit tryin’ to put it’s big D down on the defendant (that’s just because that is the way the lawl is written).

                See wiki.

                “Processing of charges[edit]
                Charges are filed by parties against unions or employers with the appropriate regional office. The regional office will investigate the complaint. If a violation is believed to exist, the region will take the case before an Administrative Law Judge who will conduct a hearing. The decision of the Administrative Law Judge may be reviewed by the five member Board. Board decisions are reviewable by United States Courts of Appeals. The Board’s decisions are not self-executing: it must seek court enforcement in order to force a recalcitrant party to comply with its orders. (For greater detail on this process see the entry for unfair labor practice).”

                “In other words, the agency adjudicates disputes (just like the PTAB) between two private parties.”

                Idk about that bruh. It’s reviewing an agency grant of property.

                “The agency only steps in to defend the decision as a named party if one or the other of the two private parties appeals the NLRB decision to court (exactly like the PTO defends its decisions in front of the CAFC if the IPR loser appeals). ”

                Not true. Anytime there is a violation found under the lawl in the NLRB they’re supposed to issue a ruling. And if the defendant doesn’t comply then the NLRB is supposed to go to court to enforce their decision against the defendant. This is why in the final analysis it is a complaint by the gubmit against the defendant. See wiki article above.

            2. Isn’t there a lot of money at stake between the private parties in many NLRB and other Government administrative trials? E.g., payments of back wages and reinstatement expenses by the employer to what can be numerous affected employees in the case?

              1. What does the amount of money in controversy have to do with constitutional rights? Guess I missed that day in Con Law…

                1. Ray, I was responding to 2.3.1.1.3 who seems to be suggesting that having something of financial value in dispute is a helpful distinction between NLRB trials and IPRs. But are not NLRB administrative trial money damages awards more, rather than less, like article III court cases?

          4. NLRB is outside my ken – are there comparable standing issues there?

            1. I am not sure what you have in mind as a comparable standing issue. The NLRB institutes a proceeding when one party makes a credible allegation of an unfair labor practice against the other. In that respect, all NLRB proceedings have standing to support an Art. III action, because one side wants the other side to do something or to stop doing something, and the other side wants to avoid being compelled to do or not do whatever is being alleged.

              1. Thanks – that does help, giving another material difference between the NLRB and IPR.

                With the IPR (as I am sure that you are aware), the Phase One portion in the Administrative Agency domain requires NO standing (open to the public in a way that simply does not meet Article III standing).

                Your helpful comment indicates that the NLRB “officiates” between two sides WITH (Article III) standing.

                1. I agree that standing is a difference, but I am not clear as to why you consider it a material difference.

                  The problem being adjudicated in this case is whether executive branch agencies are impermissibly exercising the “judicial power of the United States”, which is necessarily restricted (Art. III, §1) to the Art. III courts and not the agencies. In other words, Oil States is saying that what the PTAB is doing is an exercise of “the judicial power of the United States,” and that sort of thing can only be done by the Art. III courts. At least some of the justices, however, think that what the NLRB does is a priori fine and salutary, so Oil States had to cough up an explanation as to why what the NLRB does is not an exercise of the “judicial power of the United States.”

                  If adjudicating disputes between private parties is (as Oil States contends) an exercise of the “judicial power of the United States,” and is thus not permitted to the Art. II agencies, then it is really no salve to this injury to say “ah, but it is o.k. when the NLRB does it, because then they are tackling an issue that could permissibly be tackled by the courts themselves.” In fact, this only makes it worse. At least if the Art. II tribunal is adjudicating a dispute that could not possibly be settled in an Art. III tribunal, you could argue that this does not offend against the separation of powers because none of the Art. III “turf” is being ceded to the Art. II tribunal. Where the Art. II tribunal is deciding a case that could be adjudicated in an Art. III tribunal, that only makes the separation of powers problem more, not less, offensive.

        2. “…the view that they needed another Justice that supports some executive review but not a full tribunal (Kagan…). She certainly seemed to be focuses on how to draw the line and seemed wary of stripping the government from its administrative oversight for NLRB cases and other admin functions.”

          Some have predicted that the Supreme Court took this case to rein in the administrative state more generally. If so, they wouldn’t be watering down the ruling just to get Kagan on board. But that’s a big “if” – because all 5 conservatives would then need to agree to striking this down on rather sweeping grounds, and I’m not sure Kennedy is *that* anti-administrative-state.

          1. Agreed. I think the adjustment may have been of fear that Kennedy may be hesitant to take a big swipe and they needed Kagan to overturn some aspect of the IPR process.

      2. Distant, I knew this was coming and predicted it. I knew they would hammer Oil States on this point because it made no sense that IPR were unconstitutional because of procedure rather than the remedy itself.

        At one point, Green Energy observed that Oil States had conceded the issue of power to revoke and was arguing procedure only. Kagan, et al., hammer Oil States on just how much third party participation was “enough.”

        It was downright humiliating.

        The only point in her whole argument she made good a argument is where she all but quoted me on 1779 privy council revocation for national security reasons. Bravo for this.

        1. Both sides made embarrassing concessions, or else embarrassingly failed to concede what should have been obvious points (as when the government refused to concede that the Interior Dept. cannot revoke land patents in administrative proceedings). In other words, if the Court is only supposed to rule in favor of the side that makes no embarrassing errors, then this one will simply have to be dismissed without judgment. Somehow, however, I trust that the Justices are smart enough to reach the right decision despite the foibles of the various representatives.

          1. I trust that the Justices are smart enough to reach the right decision despite…

            That seems to be a ridiculous assumption – based on past Supreme Court “reasonings” when it comes to patent law matters.

            1. Fair point. I will not be surprised if they resolve this case on totally absurd grounds—-they do so often enough. In any event, whatever errors they make will owe more to themselves than to the failures of the lawyers in this case.

          2. A response that could have been made to the Justice Gorsuch “land patents” question is that they are not analogous for several reasons, especially since by statute patents have “the attributes of personal property” not real property.

            1. Paul, what is the Supreme Court going to do with McCormick Harvesting that has already ruled that in connection with the issue of revocation that land patents and patents for invention should be treated in the same way?

              1. Treat that portion as dictum? It is scarcely necessary to reach McCormick‘s holding.

      3. counsel for the petitioner was falling over her feet to volunteer concession after concession at the beginning of the argument, without being pressed on the matter

        That’s because her primary argument is ridiculous on its face. It inherently and necessarily means that all agency review of patentability is unconstitutional. Her attempts to distinguish, e.g., interference practice and inter partes re-exam from inter partes review are embarassing and that’s not her fault. There are no compelling distinctions there but rather than face up to the consequences of her argument she chose instead to dissemble.

        Over and over again she brings up these “but the PTO rarely does that” responses when it’s pointed out that re-exams and IPRs are fundamentally different from adjudication in court because the PTO is authorized by statute to examine and revoke patents provided that due process is followed. Every one of the Justices understands that the “rarity” is utterly beside the point. She knows it too. Hence the sideshow.

        1. MM, I absolutely agree with you. Ms. Ho did as much damage to my basic argument as she could have.

    4. I do not believe that someone’s conceding reexaminations are constitutional could undermine the case (that actually had been made) that IPRs are unconstitutional.

      Insofar that the case had been made according to evidence, law, principle and the objective and independent application of reason, any inability for some petitioner to consistently apply those in a peripheral assessment of reexamination cannot undermine what the actual case made, means and implies.

      Any inconsistent application of correct principles (if recognized as correct) would be identified as such, an inconsistent application of correct principles.

      The only question is… what principles will be deemed correct.

      1. The only question is… what principles will be deemed correct.

        LOL

        Deep deep stuff here, folks.

      2. Anon2, as was stated by Kise, Oil States concedes that the PTO has the power to revoke a patent. Thus, they have no argument.

        Gorsuch, however, understands the issue the same way I do, and was making my argument again, again and again to Ms. Ho. She appeared to be arguing for the other side and against Gorsuch.

        1. Pretty sure that Gorsuch is on an island here although Thomas may join him if he smells enough Scalia stench exuding from Gorsuch’s armpits.

        2. @Ned, yes, but Gorsuch is only one Justice. If the other Justices don’t see it as an all or nothing issue, you don’t lose Gorsuch that may believe it is. By conceding exparte reexams, you should still keep the Gorsuch, and any others, and may be able to pick up enough of the other Justices that believe there is room for executive oversight. I just don’t by the need for an all-or-nothing approach, even if it is the “right” position.

          Perhaps OS position doesn’t advance the cause as much as some would like, but it would be progress.

          1. Ray, you are right of course. Even if Gorsuch is entirely right, trying to explain the issues to his brethren is going to be hard given that even Oil States counsel did not agree with him.

            1. As I learned many years ago, a “win” is a “win” even if it isn’t for the “right” reasons.

              I think many people would be completely happy to kill off IPRs and live with reexams, even if they aren’t “constitutional”..

        3. Yes, he was practically begging her to make strong and consistent (albeit politically difficult) arguments. Clearly she was hesitant to go there, likely wary of the politics and philosophies of others in the court.

    5. Water under the bridge of course … but it seems to me that the appropriate response to Justice Ginsburg’s first question about “error correction” would be to suggest that this would be a matter for Congress to consider once the Constitutional position had been clarified by a decision in the Oil States case.

      Of course one argument would be that, once the patent has issued, the patentee has vested rights, but might voluntarily seek reexamination if invalidating art is discovered.

      Another possibility, in the event of the patentee commencing an action for infringement, maybe the defendant could move at an early stage for proceedings to be stayed to initiate inter partes proceedings in the USPTO. In such a situation a report adverse to the defendant might result in estoppel of invalidity contentions, whilst if the report favored the defendant, then at least the burden of proof should then fall to the patentee, with greater likelihood of fee shifting if the patentee presses forward with a weak case and ultimately loses. There might be various variations.

      But such schemes would be matter for Congress to consider in future.

      1. I think many are viewing this case too narrowly as a patent case. I believe this case may, in fact, be a surrogate case for the permissible use of administrative hearings, and the Court is looking for a line it can draw between an acceptable administrative hearing and an impermissible one. Hence all the questioning about due process, which isn’t in the OS case but is an analog to the right to an Art III jury trial due process between private litigants.

        Gorsuch on one end hates the administrative state as much as Gingsburg and Sotomayor love it. Kagan and Breyer appeared to be more receptive to a balance. While it is easy to throw rocks at Ms. Ho, she had little practical choice but to take the position she did, which Gingsburg actually credited her for doing.

      2. Distant, voluntary reexamination has existed since the 1800’s. It is known as a reissue.

        Also, we patent attorneys include dependent claims adding detail. At some point, this detail may be “enough.” But the problem then is infringement.

        If there is an intermediate claim that would be valid and still ensnare an infringement, it would only be available through a reeissue.

      3. Moving on to Justice Ginsburg’s question starting at p.13, l.22.

        Surely an appropriate response here would have been that, whilst novelty under 102 alone might be a “narrow kind of reexamination” obviousness under 103 involves more subtle legal questions requiring adjudication, and the propriety of such adjudication by the Executive differs between pre-grant and post-grant contexts.

    6. Agreed, ball dropped on this one. Correct answer: Reexamination, as first enacted, provided 35 USC 145 de novo court trial, with no difference to PTO, so in effect the pto stood in no greater position than any private litigant in an action to invalid a patent before an Art III court. That probably passes muster, whether the no trial court and only appeal procedure of reexamination today passes muster – is an open question and not before the bar.

      Ned, totally agree, Oil States arguments were just awful.

      1. I am sure that the oral transcript is not as illuminating as hearing a verbal rendition (and much less illuminating as it would be to be there in person), but I have to sadly concur here.

        Ho’s work was simply the most awful “script” that I have ever read from one of these oral arguments.

  16. The Chief Justice then raised the point of Due Process and PTAB panel-stacking, and whether Congress’ power to take away patents can allow patent validity to become a pure policy tool of the executive branch.

    There was an immense amount of time focused on this “panel-stacking” business which has nothing to do with the question the Supreme Court was supposed to be addressing.

    The irony of course is that the Supreme Court itself is “stacked” with Justices who were put there to carry out the policies favored by the filthy rich s c um b ags who installed them using objectively undemocratic means. And there’s very little that can be done about that.

    In contrast, if a PTAB panel is “stacked” or if there is any other due process problem with the proceedings, the aggrieved party can appeal to the CAFC, and then to the Supreme Court.

    But the possibility of “stacking” is a red herring. And the possibility of shenanigans by the “deciders” is an argument in favor of inter partes proceedings, not against them.

    1. “…the possibility of shenanigans by the ‘deciders’ is an argument in favor of inter partes proceedings, not against them.”

      OK, I didn’t follow this…care to elaborate? Your previous point about the ability to appeal to the CAFC may be an argument for why we need not be unduly *worried* about IPR shenanigans, but that’s not the same thing as an argument “in favor of” IPRs. How is the possibility of shenanigans in IPRs an argument in their favor?

      1. How is the possibility of shenanigans in IPRs an argument in their favor?

        Ken, you may be new here – Malcolm’s post run strongly to the view that ALL patents are “b a d.”

        1. anon, I have been around long enough to notice that…but I actually do like to try to understand everyone’s positions as well as I can.

      2. How is the possibility of shenanigans in IPRs an argument in their favor?

        I’m not sure how to answer that question because it’s not the point I’m making.

        My point is that if there is a concern about agency officials engaging in “shenanigans”, it’s better to have inter partes proceedings rather than proceedings where the allegedly corrupt agency engages in both fact finding, argument development and deciding. A competent petitioner is going to want a decision that sticks and will do everything that he/she can to make sure that the right arguments and correct facts get into the record.

        But let’s face it: this concern about “shenanigans” is just a pile of b.s. The patent maximalists never stop whining about being treated unfairly because it’s all they know how to do. It’s all they ever do. They are The Most Important People Ever and you can tell that just be looking at how awesome they look when they sit on the courthouse steps and wave their flags. Freedom to sue everybody with a junk patent! Smell it.

    2. “The irony of course is that the Supreme Court itself is “stacked” with Justices who were put there to carry out the policies favored by the filthy rich s c um b ags who installed them using objectively undemocratic means. And there’s very little that can be done about that.”

      MM is mad because some white cis hetero christian patriarchs want people to have property but MM would rather that the gubmit to effectively “own/control” all the property and distribute it according to need (and a little bit according to merit).

      luuuuuuuuuuuuuuulz.

      1. What do examiners think about this 6? Do they care how it comes out?

        1. Obviously the board cares, but the everyday examiner I haven’t heard much bias one way or the other from. They know it could impact the board (obviously a glut of judges as soon as it gets disbanded) but other than that meh.

          I do think there are a few that feel like there should be some easier way to take down a patent than a million dollar court proceeding.

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