Oil States Amicus Briefs Seek to Stabilize IPR Constitutional Footing

by Dennis Crouch

The final group of amicus briefs were filed this past week in Oil States v. Greene’s Energy — This round supporting the Government’s position that Inter Partes Review (IPR) proceedings are consistent with the US Constitution.

As per usual, the briefs are largely divisible into two categories: (1) direct merits arguments focusing on congressional power to enact the IPR regime; and (2) policy briefs arguing that IPRs do important work.  I’ll note here that the focus of the policy briefs is on efficient and timely adjudication. I have not seen any of the briefs so far that recognize the third reality – that the PTAB is invaliding patents that would have been upheld by a court.  For some reason amicus consider it appropriate to identify court failures in efficiency but not to identify failures in the substantive decisionmaking.  The closest on-point is likely Apple’s Brief which promotes the “well-informed and correct” outcomes of the PTAB. 16-712bsacAppleInc.

Overall, the collection of briefs here is quite strong. The most compelling brief in my view is that filed by the well-known team of Duffy and Dabney on behalf of several groups, including the Internet Association. They write:

No decision by this Court has ever held unconstitutional a system of adjudication by an Executive Branch agency on the grounds that the system violates Article III or the Seventh Amendment. This case should not be the first.

Patents are a type of public franchise that Congress has subjected to Executive Branch determination since the founding of the Republic. …

Petitioner and its amici draw inapt comparisons between patent rights and fee simple grants in physical land, but even if patent rights could be analogized to land, the most appropriate analogy would be to leases in public lands, which are subject to administrative revocation. Like leases, patent rights are limited in time, subject to periodic payments to maintain the rights, revert to the public upon expiration, and have the attributes of personal property. Indeed, Petitioner and its amici rely on the statement in 35 U.S.C. § 261 conferring on patents the “attributes of personal property,” but if anything, that statute undermines Petitioner’s case because it strengthens the analogy between patents and leases.

16-712 bsac The Internet Association et al.

A second key brief in the set was filed by a group of law professors led by Professors Lemley (Stanford); Reilly (Kent); and Rai (Duke).  The group makes the argument that – as a creature of congressional statute rather than common or natural law – congress also has the full power to establish a system for revocation. 16-712, BSAC 72 Professors of Intellectual Property Law.  The idea behind these statements is to step around the Supreme Court’s Stern decision that expresses “skepticism about Congressional efforts to withdraw from Article III courts ‘any matter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty’ or ‘is made of the stuff of the traditional actions at common law tried by the courts at Westminster in 1789.'”  The law professor’s interpretation of these cases though is that rights whose source is statute (rather than common or natural law) can largely be further determined by Congress.  This argument skirts around prior discussions that have focused on the reality that patent cases were “law tried by the courts at Westminster in 1789.”

Adding to these legal and historical arguments is the second law professor brief – an interesting and important brief written by Professors Golden (Texas) and Lee (Fordham). 16-712 bsac Professors of Administrative Law.  An important contribution of the brief is the recognition that congress’s failure to immediately create an IPR regime back in 1779 should not be seen as preventing action today:

[At that time] Trial courts were better suited to fact-finding and evidence-taking regarding prior art than Congress or Cabinet officers. And like Britain’s Privy Council, which exercised its summary revocation power as late as 1779 and retained but did not exercise that power in the nineteenth century, Congress and Cabinet officers had other pressing responsibilities.

Golden’s Brief also side-steps the public rights debate – arguing that “any lingering concerns about encroachment on Article III judicial power are answered by the existence of a right to an appeal to the Federal Circuit that is de novo on questions of law and meaningful on questions of fact.”  See also, Prof. Hollaar, noting that the question presented is “misleading in important respects, including the inaccurate suggestion that Article III courts do not provide substantial oversight in inter partes reviews.”  16-712 bsac Professor Lee A. Hollaar; and from Intel, et al.: “At the time of the Constitution’s adoption, there was no established rule that only courts could invalidate patents.”  16-712bsacIntel.

Still, Golden and others argue that invalidating patents is a public rights question – and thus easily within Congressional power to control through administrative action.  On this point, however, the Auto Makers group (including BMW, Ford, GM, Mercedes, Toyota, VW, Volvo, and others), argue that this case is not an appropriate case for revisiting the public-rights doctrine — a project that would have significant and wide-ranging impact on administrative law in general. 16-712bsacAllianceofAutoMfrs.

Public Knowledge and EFF came together to file their brief with a serious pursuit of historical issues worth reading:

Pre-ratification practices in England, the colonies, and the early states consistently treat patents as a privilege granted as a matter of sovereign discretion, with the objective in granting patents being not merely to reward inventors but also to induce economic productivity to the benefit of the state and the public. And as matters of sovereign discretion, the patents of England, the colonies, and the states included conditions intended to advance economic and public interests—including, in many cases, conditions for automatic, non-judicial revocation.

EFF brief-oil-states.  Following this approach (although without the same historical research). Arris group and others argue that patent rights should not be considered Blackstonian Property.  16-712bsacArrisGroupEtc_.   Finally, on the history angle, the Dell & Facebook brief argues that the Privy Council, rather than Scire Facias,  revocation is “the closest historical analogue” to the IPR system. 16-712 bsac Dell.

Many of the briefs IPRs should be seen as the patent office correcting its own mistakes. See, GE’s brief, for example, 16-712 bsac General Electric Company; also, 16-712 bsac BSA The Software Alliance; 16-712 bsac Unified Patents Inc.; and 16-712 bsac SAP America, Inc., et al. Although not seriously questioned here, a the banking group Askeladden addes to the argument that IPR procedures are good enough to ‘statisfy the standards for the adjudication of public rights in non-Article III forums.” 16-712bsacAskeladdenLLC

On the policy side, AARP is seeking lower health-care prices for its members and has generally sided with policies that increase competition and decrease the power of patent rights. In its brief, AARP argues that IPRs are an effective tool for this goal. 16-712 bsac AARP.  I-MAK makes a parallel argument in its brief. 16-712 bsac I-MAK (“Unmerited secondary patents stifle generic competition and inflate drug prices.”). See also, 16-712bsacAAM; and  16-712 bsac America’s Health Insurance Plans;  16-712 bsac Mylan Pharmaceuticals Inc_ (“Mylan’s experiences with inter partes review highlight the pro-competitive nature of inter partes review.”). As simply middle-men in the world of commerce, the Retail Association argues that its members likewise need this somewhat more efficient mechanism for eliminating low-quality asserted patents. 16-712 bsac Retail Litigation Center16-712 bsac Volkwagen Group of America, Inc. (“IPR proceedings has been successful in providing a low-cost but accurate process for adjudicating patent validity.).  Adding on here, TSMC argues that IPR provide an important outlet for manufacturers to protect their stream of commerce in cases where declaratory judgment jurisdiction does not exist. 16-712bsacTaiwanSemiconductorManufacturingCo.

Following these policy arguments, the not-for-profit org KEI particularly explains how the top-side briefs incorrectly argue that the IPR system harms national innovation and wealth.  KEI’s point is irrefutable – allowing enforcement of no-invention patents doesn’t help anyone.  brief-oil-states KEI_amicus_Oil_States.

Overall, this is a powerful group of briefs that leave me believing that – in the end – the Supreme Court will leave the IPR regime in place and in power.

156 thoughts on “Oil States Amicus Briefs Seek to Stabilize IPR Constitutional Footing

  1. Ned posted the following interesting statement on the latest Patently-O blog today [11/15/17] which surprised me:
    “However, they do make strong points: that reexaminations and IPR are indistinguishable from a constitutional point of view and the concession by Oil States of the constitutionality of reexaminations is all the court has to look at. Second, that whether validity was litigated in the common law courts in infringement trials is totally irrelevant to whether there is a constitutional right to a jury trial in actions to revoke patents.”

    1. Paul, McCormick Harvesting and the Seventh Amendment cases all point the way: the problem is the remedy: cancellation or revocation. Procedures are irrelevant. McCormick Harvesting involved a reexamination of the claims in a issued patent by an examiner. The Seventh Amendment cases all say the remedy is the most important thing. To that end, the common law procedure scire facias provided the same remedy, was conducted from start to finish in the common law courts of England, and disputed facts were tried to a jury.

      Even at the PTAB I was emphasizing the remedy was the only important consideration. I focused on ex parte Wood and its holding that the writ scire facias had a right to a trial by jury.

      My main objection to the Oil States main brief is that it lost focus and made concessions that stripped my original argument of all merit. We are left now with a hash. I can only hope that my own brief and some of the other amici on our side are seen to come to the rescue. The historians brief was quite helpful. But the Oil States brief is so full of holes and weak argument as to be a potential for disaster. Their attorneys have to up their game on the law pronto or else we may not win even though the argument on our side is so very, very simple.

  2. Lie, upon lie, upon lie. Where do they get the gall?

    From the Dell brief:

    “Patent revocation did not rest within the exclusive
    province of the common-law and chancery courts
    of England at the time of the Founding. Prior to the
    Founding—and for more than a century thereafter—
    the Crown’s Privy Council had broad authority to revoke
    patents outside of a judicial proceeding, including
    for a variety of reasons related to patentability,
    such as lack of novelty. Because this non-judicial
    body had the authority to revoke patents when the
    Constitution was framed, neither Article III nor the
    Seventh Amendment requires that patentability
    challenges be decided solely by courts.

    Moreover, while England’s common-law and
    chancery courts also possessed authority to consider
    the validity of patents, neither of the pre-Founding
    judicial procedures for evaluating patent validity is
    an historical analogue to cancellation of patent
    claims through inter partes review. The writ of scire
    facias was a partial delegation of the Privy Council’s
    patent-revocation authority to the chancery court,
    but it was not comparable to claim cancellation
    based on lack of novelty or obviousness because scire
    facias addressed only issues akin to inequitable conduct.

    In addition, the right to seek patent revocation
    through a writ of scire facias was itself a public right,
    rather than a purely private one, because the writ
    was pursued in the name of the Crown, required the
    permission of the Crown, and involved the participation
    of the Crown in the judicial proceeding.”

    link to scotusblog.com

    1. Looking at the amicus brief in question.

      What are their sources?

      Maybe Sir William Searle Holdsworth is a name to conjure with, but the only reference they give is to this page.

      link to archive.org

      An extremely cursory summary of invention patents under the Stuarts, practically all prior to the revolution in 1688 that established the “rule of law”. And, looking at the footnotes, Holdsworth’s authority is given in footnote 5 as

      L.Q.R. xxxiii 63.

      This is followed in the footnotes by a succession of ibid, and then a bit later L.Q.R. xxxiii 193-194.

      Tracking down the citation to the journal in HeinOnline, and to the issue, this resolves to E. Wyndham Hulme’s two articles on Privy Council Law and Practice, that are also listed as authorities in the brief. Thus Holdsworth has made a quick cursory summary of Hulme, but adds no authority beyond Hulme, and certainly adds on analysis of value.

      Then William Martin, through Oren Bracha, is cited merely for the fact that the standard defeasance clause was inserted in the letters patent through to the beginning of the 20th century. (I believe I have already posted here somewhere a link to a commission established by parliament then which, among other things, tried to find out why the dickens that defeasance clause was inserted in issued patents at that time.)

      I see, paging back through Bracha’s thesis, that his footnote 39 on page 22 cites 6 Holdsworth at 331, which is the very page that I have linked to above.

      Back to the amicus brief. “patents were issued by the Privy Council” — The authority for this is given as Walterscheid, Part IV, pages 83-84. There is no mention, in these pages of Walterscheid, of the Privy Council. This authority just documents the standard procedure whereby letters patent for all sorts of purposes were issued. (Maybe the authors of the brief were confused by the involvement of the Lord Privy Seal in the process.)

      So it seems that Hulme is to be the authority to support everything in the vicinity of page 7 of the amicus brief.

      For more detail on Privy Council, with citations that put one in a position to view the actual papers themselves, see the Addendum by Gomez-Arostegui and Bottomley, at the following URL:

      link to papers.ssrn.com

      Back to the amicus brief. It cites Coke and Blackstone as authorities around pages 11, 12, 13. But, in my opinion at least, nothing that serves them.

      But they can peg here their wonderful constitutional innovation: “The Privy Council’s delegation of authority to the chancery court to issue the writ of scire facias meant that the court had concurrent authority with the Council to revoke patents on certain grounds […]”

      (One wonders, how exactly could the Privy Council “delegate” to the law courts “authority” to do the things that the law courts had been doing, uninterruptedly, since before the Privy Council, as such, came into existence? The mind boggles.)

      For a nice introduction to the judicial role of the Privy Council see the first chapter of Norman Bentwich, The Practice of the Privy Council in Judicial Matters, available at the following URL:

      link to archive.org

      (N.B., this reference seems to be out of copyright in the U.S., but presumably not in the E.U.)

      See also the following essay by A.V. Dicey:

      link to archive.org

      Some of the things I found this evening:—

      In the London gazette, revocation of Hamblin’s patent (1732):

      link to thegazette.co.uk

      Revocation of Betton’s patent (1745):

      link to thegazette.co.uk

      Revocation of Wilkinson’s patent (1779):

      link to thegazette.co.uk

      Note that the authority to void the patent is explicitly founded on the defeasance clause written into the text of the issued letters patent:—

      His Majesty in Council this Day took the same into His Royal Consideration, and was pleased to order, That the said Letters Patent granted to the said John Wilkinson should be made void:—In Pursuance whereof, and of the Power reserved in the said Letters Patent, we do hereby signify and declare the said Letters Patent granted to John Wilkinson, for his Invention of Casting and Boring Iron Guns or Cannon, are from henceforth to cease, determine, and be utterly void, to all Intents and Purposes. Whereof all Persons whom it may concern are to take Notice, and govern themselves accordingly.

      So much for now.

  3. Judicial Role of the Privy Council

    Quoth the Federal Respondent in Oil States on pages 38-39 of their merits brief:

    2. A long history of non-judicial patent cancellation confirms that understanding. For as long as governments have issued patents, they have reserved the right to cancel patents without judicial involvement or subject only to appellate judicial review.

    I plan here to explore the veracity of this claim. In particular I intend to demonstrate that patents were cancelled “without judicial involvement” is directly contradicted by one of the very authorities upon which they rely.

    ===

    The following link may have some relevance to US readers of this blog (presumably the overwhelming majority).

    link to amesfoundation.law.harvard.edu

    The target of the link is the following academic paper: Sharon Hamby O’Connor and Mary Sarah Bilder, Appeals to the Privy Council before American Independence: an Annotated Digital Catalogue, LAW LIBRARY JOURNAL Vol. 104:1 [2012-11]

    Question: were these appeals considered by an executive or administrative agency?

    ===

    Next exhibit is at the following URL:

    link to books.google.com

    This links to Jerome William Knapp, Reports of Cases Argued and Determined before the Committees of His Majesty’s Privy Council Appointed to hear Appeals and Petitions 1829-1831 (Knapp’s Reports).

    I am not a lawyer, but to my untutored eye, the “reports of cases” included in this volume look suspiciously like law reports.

    Indeed in the second case, Benest v. Pipon (a case originating in Jersey), there is reported the speech “for the Appellant” and the speech “for the Respondent”, the opinion of Lord Wynford.
    The report concludes:

    “Judgment of court below reversed.

    “Costs, if any had been payed, to be returned, and a new trial directed.”

    To repeat myself, the proceedings of this “non-judicial” body seem remarkably like those of an appellate court of law.

    And note, in particular, that these reports predate the reforms of the Privy Council committee structure in 1833 masterminded by the Lord Chancellor, Lord Brougham, that formally established the Judicial Committee of the Privy Council.

    ===

    Final exhibit:

    E. Wyndham Hulme, Privy Council Law and Practice of Letters Patent for Invention from the Restoration to 1794, 33 L.Q. R. 180 (1917).

    This authority is referenced on page 40 of the Federal Respondent’s merits brief, and in many other briefs. The article is available through HeinOnline.

    On page 190 of Hulme’s article, we find the following
    which relates to the dismissal, in 1753, of a petition requesting the king to invalidate the patent for Dr James’ Fever Powder on the basis specified in the defeasance clause in the patent grant:

    “On the 10th February, 1753, the Committee of the Council for hearing Appeals assisted by Sir John Willes, Lord Chief Justice of the Common Pleas, having considered the matter, recommended that the petition be dismissed.” (my italics).

    I trust that it is unnecessary to add that the Lord Chief Justice of the Common Pleas was a very senior judge in the courts of common law. Without judicial involvement indeed!

    1. Distant, I think it is true that Elizabeth in 1601 revoked a number of monopoly patents without judicial proceedings. But all that occurred prior to the Statute of Monopolies that on its face revoked all prior monopoly patents save a few, and then confined legal authority to revoke patents in the common law courts. The Statute of Monopolies may have changed the “law.”

      But, worthy of mention, is the Magna Carta that forbad deprivation of property without due process. I presume this prevented summary revocation without some hearing?

    2. Reading that brief “claim” with its caviat, it is: “A long history of non-judicial patent cancellation .. subject only to appellate judicial review.” Taking a long [pre-reexamination] view of “long” what could that really be other than interferences?
      But anticipate Ned’s objection to that as interferences having provided [pre-AIA] an intermediate 35 USC 146 “Civil action in case of interference.” But how far “long” back from its 1952 enactment was there an equivalent statutory civil action trial provided from a PTO interference decision? And did it provide for a jury trial way back then, or since when?

      1. Comment appreciated!

        The whole of page 39 and half of page 40 is concerned with English practice. First of all, orders of the King in Council (i.e., decisions of the Privy Council). I am not aware of any court with appellate jurisdiction over orders in council, and the Judicial Committee of the Privy Council, to the best of my knowledge, is the highest court of appeal in the cases over which it exercises appellate jurisdiction, on a par with the Supreme Court of the United States, and superior to the high courts and supreme courts of many jurisdictions.

        Secondly my primary focus is on English law, rather than U.S. law, The interference practice in England differed from the American one. Before it “passed” the Great Seal, the patent parchment, if it even existed, had no particular status, so all pre-grant proceedings were purely administrative proceedings. And interference proceedings in Great Britain were pre-grant proceedings conducted by the Attorney General, the Solicitor General and (in Scotland) the Lord Advocate. There was a caveat system whereby those who in theory were reducing a potential invention to practice could file a caveat requiring the Attorney General to inform them if any patent petition in their area was filed. They could then interfere in the prosecution of the patent, and the law officers of the Crown would hold hearings to determine whether there was interference and, if so, who was the first and true inventor. (These pre-grant interference proceedings would be a direct analogue of the hearings conducted by USPTO administrative patent judges, only the workload fell to the law officers of the Crown.

        Finally, the theme of the “English tradition of non-judicial cancellation” appears again on page 45 of the Federal Respondent’s merits brief, in the paragraph numbered as 3.

      2. The statute (1836 Act) that authorized interferences with patents also granted aggrieved parties a bill in equity. Since the relative rights of two contending parties were involved, a bill in equity was appropriate as the matter was not a simple revocation action. England was consistent. See, Atty. Gen. v. Vernon II.

  4. Regarding the history of “defeasance clause” enabling the king, on the advice of six or more members of the Privy Council, to cancel letters patent for inventions in appropriate discussions, there is discussion of this in an appendix to the report of a UK Commission of Inquire (Parliamentary Paper Cd. 506, of 1901, entitled Report of the Committee appointed by the Board of Trade to enquire into the workings of the Patents Acts on certain specified questions.

    The following URL may work:

    link to parlipapers.proquest.com

    I found reference to this report on page 194 of the second article by E. Wyndham Hulme, discussing the Privy Council case of Dr. James’ fever powder, that is cited in many briefs.

    The relevant part is Appendix 4, numbered from 162 to 168. However the pages of PDF come out in a muddled order so that the pdf page numbers run from 124 to 130 of 182.

    In his witness testimony, Mr. J. W. Gordon suggested that the purpose of introducing the clause was to provide those hauled before the notorious Court of Star Chamber on account of patent infringement with some sort of defence; given that, in courts of common law, invalidity was a defence to infringement. The Court of Star Chamber was usually a committee made up of six privy councillors. It was a notorious instrument of tyranny and oppression: in particular those brought before it could be required to swear an oath, with the result that those guilty had the choice of incriminating themselves on oath or committing perjury. This practice of course motivated the Fifth Amendment to the U.S. Constitution.

    To quote this witness (2nd column of page 166):

    “It will be seen from the above-quoted resolution of the Council avoiding the Cooks charter that the Lords, while declaring it void, ordered the A.G. to take steps for its repeal according to law, unless the Cooks would voluntarily surrender it. And this with regard to a patent which was already impounded and actually lying in the Council cheat. And we know from Sir Edward Coke that the repeal of a patent can only be effected by severing the Great Seal and cancelling the enrolment, acts which only the Lord Chancellor can perform (4 Inst., p. 88). THere is no ground whatever for supposing that this proviso was intended to substitute new machinery for scire facias, or to divest the Chancellor of his immemorial and exclusive jurisdiction. The declaration here of invalidity serves only to enable the tribunal to treat the patent as void in a proceeding inter partes, in the same way that it always has been treated as void by the courts of common law when a sufficient objection to the grant has been established. In other words it leads to a judgment in personam, not to a judgment in rem. It frees the particular respondent from the grip of the patentee, and leaves the patent itself to be overthrown in the course of law.”

    1. Next, some comments about E. Wyndham Hulme’s article Privy Council Law and Practice of Letters Patent for Invention from the Restoration to 1794. II, 33 L. Q. Rev. 180, 195 (1917)

      Much of the discussion surrounding the proceedings on Dr. James’ Fever Powder patent
      (pp. 189-191 and 194) in Hulme’s article is just opinion and speculation that is not founded on the documents from which Hulme quotes.

      What the record shows is that one Walter Baker petitioned the King for him to exercise his power to void the patent under the standard defeasance clause. The matter was referred by the King to a committee, who sought a report from the Attorney General, Dudley Ryder, and the Solicitor General, William Murray, later 1st Lord Mansfield. The law officers recommended that the petition be denied, on the basis that,

      “[…] we find that the new invention, to which the said letters patent relate, is compounded of a powder and a pill, whereas the petition, and affidavits laid before us in support of it, concern the powder, which is one of the ingredients only; so that supposing what the petitioner says to be true, it is quite immaterial, and don’t affect the medicine, which doctor James claims an exclusive privilege of selling; and therefore we are humbly of opinion, that the said petition is not pertinent, and ought to be dismissed.”

      And the petition was accordingly dismissed.

      Later there were some shenanigans when the aggrieved petitioner started a case in the common law courts to have the patentee convicted of perjury, and sought to have the affidavit of the patentee provided to the Privy Council produced in evidence in the perjury suit; and apparently managed to snaffle many of the other affidavits which he published in a pamphlet (which I have added to my collection as digital PDF from the British Library copy. It is included in the Eighteenth Century Collections database of Thomson Gale, entitled The Affidavits and Proceedings of Walter Baker, administrator to the late Baron Schwanberg etc.).

      But although Hulme talks of a “quarrel” between the Council and Lord Mansfield, so far as I can see, he fails to quote any contemporaneous evidence for any such disagreement. According to what he has explicitly quoted, there is simply a recommendation that a petition to the king be denied (quoted above), and advice to the effect that there was no legal reason or precedent either to supply or withhold the affidavit that the petitioner had sought to have introduced in evidence in the perjury case.

      Later academic commentators such as Holdsworth or Bottomley seem to have been often careful to quote their discussion of Hulme’s suggestions by qualifications like (for Holdsworth) “In Hulme’s opinion…” or (in Sean Bottomley’s book) “Hulme speculated that…”

      In particular, neither Hulme, nor anyone else that I know of, has produced the text of any written decision that “granted the courts concurrent jurisdiction to revoke a patent“ (see Federal Respondent brief at p.40). (In any case the law courts had of course had jurisdiction to revoke letters patent from medieval times; to suggest that the Privy Council could grant such jurisdiction seems to me particularly crass.)

      1. Thank you Distance. But it remains that in reaction to the petition of the courts to have the clerk of the privy Council testify in court regarding the James affidavit, the privy Council never again revoke the patent for invalidity based upon petition but instead referred the petitioners to the common law remedy. Hulme notes that this decision was in reaction to some dispute with Murray, later Lord Mansfield, to avoid a constitutional crisis. Perhaps Hulme was writing based upon some received anecdotal information about the events of 1752-1753.

        But it is easy to see what the constitutional crisis could be – the privy Council did not want its members call before the courts of law to testify. To avoid that, they simply stepped aside and left the private petitioners to their common law remedies.

      2. Rounding out discussion of Dr James’ Fever Powder patent a little further.

        In 18.1, I mentioned a pamphlet published by the aggrieved petitioner seeking to revoke Dr. Robert James’s patent through the Privy Council, the title of the pamphlet commencing The Affidavits and Proceedings of Walter Baker, administrator to the late Baron Schwanberg …. That pamphlet is available in the database Eighteenth Century Collections made available by Thomson Gale.

        This provoked a ripost, in the form of an anonymous pamphlet, entitled An Answer to a Late Scurrilous Pamphlet published by One BAKER and his ACCOMPLICES Respecting Dr. James’s Powder., which is freely available on the website of the US National Library of Medicine at the following URL:

        link to collections.nlm.nih.gov

        This pamphlet, like that of Walter Baker, includes a lengthy sequence of affidavits.

        Reading, or at least skimming, those two pamphlets, one thing is abundantly clear: anyone trying to get at the truth of the matter would be in the position of Elizabeth Bennet in Pride and Prejudice, when she sought to decide whether to believe Wickham or Darcy: it is beyond doubt that at least one of the two pamphlets is a tissue of lies and/or a scurrilous libel. But the task is to determine which one of the two falls into that category.

        My own speculation, which I emphasize is pure speculation. Once they had absorbed all the affidavits and conducted the hearing, it was clear to the two law officers of the Crown, viz. the Attorney General and the Solicitor General, that they were dealing with the petition, or petitioner, from a somewhat hot location seething with fire and brimstone. And that the less the Privy Council had to do with this mare’s nest, the better, at least from the perspective of the Privy Council. And, after all, Dr. James, the patentee, could always institute an infringement action in the common law courts if he so chose. Otherwise the matter could be let lie. And so they came up with a reason for denying the petition on the simplest and most straightforward reason that they could come up with: namely that the inventions were on their face different. Presumably the law officers were present at the subsequent meeting of the Committee for hearing appeals, and probably there was full and frank discussion of the case which, conveniently, did not appear on any written record. And similarly anodyne advice was provided by the law officers when the question of producing Dr. James’s affidavit to a court of common law later came up.

        And, reflecting on this, in the light of their practice as barristers-at-law, they realised that any genuine attempt to settle the dispute would require a trial at nisi prius before a jury. And therefore it would be a wise practice on the part of the Privy Council to deny routinely all run-of-the-mill petitions asking the king to act on the defeasance clause, so that future cases were tried in the courts of law which had the procedures to cope with them. I emphasize that this is pure speculation on my part.

  5. I am putting forward the following proposition here for consideration:

    Under English law, as it stood at the end of the eighteenth century, if the king or queen had acted, by writing under the great seal or signet, to void letters patent on the advice of six or more members of the Privy Council, then a scire facias action might have been brought by the aggrieved patentee in a court of law to have the instrument of revocation declared void.

    This possibility was canvassed by two justices of the Court of Queen’s Bench, in 1853, and a scire facias case to annul letters patent granting a royal charter to a company.

    The case is the following:

    The Queen, on the prosecution of Sir James Brooke, against The Eastern Archipelago Company (Court of Queen’s Bench, 1853) 118 Eng. Rep. 452 (K.B.); 1 EL & BL. 310.

    The URL for the start of the report, in Ellis and Blackburn’s Queen’s Bench Reports, Volume 1, page 310, is here:

    link to books.google.com

    This was a scire facias action to repeal letters patent granting a royal charter to the Eastern Archipelago Company/i>.

    With regard to the text of the letters patent, the writ stated that “Provided always, and We did thereby will and declare, that, in case the said Corporation should […] or in case the said Corporation should not comply with any other the directions and conditions in Our said letters patent contained; it should be lawful for Us, Our heirs and successors, by any writing under the great seal or under the sign manual of Us, Our heirs or successors, to revoke and made void Our said royal charter, and every clause, matter and thing therein contained, either absolutely, or under such terms and conditions as We or they should think fit.”

    The question of the legality of this proviso was not before the Court, and indeed the Queen had not acted on this proviso, but counsel for the patentee had suggested that, in the circumstances of the case, the proper rule for revoking the royal charter ought to have commenced with the Queen taking action under this proviso (by a “writing” under the great seal or under the sign manual, purporting to revoke the patent. Two of the four justices hearing the case (on opposite sides with regard to the final judgment) accepted that, in those circumstances, it would have been open to the aggrieved patentee to prosecute a scire facias action to void the instrument of revocation; and neither of the other two justices contradicted them, though the Lord Chief Justice, Lord Campbell, did say that “The notion of a scire facias after a revocation by writing under the great seal or sign manual never seems to have been contemplated,[…].

    WHITEMAN J. (p.328): “ Two objections were made […] and, Secondly, that, if they were conditions the non-compliance with which might entitle the Crown to revoke its grant, the proceeding ought to be, according to the terms of the proviso, not by scire facias in the first instance, but by an absolute or qualified revocation under the great seal or sign manual, previous to any proceeding by scire facias; […] It may well be that it was intended by the proviso that the Crown should have the power […] to revoke it without a scire facias, absolutely or upon terms, by writing under the great seal or sign manual; leaving it to the grantees to institute counter proceedings by scire facias, or otherwise to vacate the instruments of revocation, on the ground of the Crown having been deceived by false information. This would, indeed, appear to be the only course that could be adopted in the case of a partial or qualified revocation; […]”

    COLERIDGE J. (p.336): “The question, then, for decision is, Whether this judgment can pass in this case until Her Majesty shall by writing under the great seal, or under Her sign manual, declare Her pleasure to revoke and make void the charter? And, in coming to the conclusion that it cannot, […] If indeed the King has been deceived by any false suggestion, as to what he grants, or the consideration for his grant; […] in these and such like cases, the grant will be either wholly void, or restrained according to circumstances; […]“

    Later in Justice Coleridge’s opinion (p.344): “But it has been said that this particular reservation is so expressed as to be absurd and impracticable; for it supposes first the charter to have been revoked and made void by the Queen’s declaration under the great seal, or sign manual, and then that a scire facias is to issue for the purpose of procuring a judgment to avoid and cancel that which has already been so revoked and made void. It there be any difficulty on this account, it exists equally in regard of many letters patent for new inventions. In them it is commonly provided that, ‘if it shall be made appear that the grant is contrary to law, or the supposed invention prejudicial to the subjects in general, or not new, or not found out by the patentee, then, upon signification by the Crown under the signet or privy seal, the letters shall be utterly void.’ Yet a scire facias, as we all know, would be necessary for the repeal of the patent after such signification made; and that for a reason which will be obvious presently. For, secondly, although the Queen should act upon the power reserved, and revoke and annul the charter, Her revocation will take no effect unless there had been in fact that breach of condition on which alone it depends: and that fact must be tried upon the suggestion in the scire facias. If the issue raised on it be found against the Crown, the revocation falls to the ground; and, if it be found against the grantee, then the revocation, which was only contingent before, becomes absolute. But, even then, there remains, thirdly, the cancellation to be awarded, the bringing in of the charter to be formally cancelled, and the enrolment in Chancery to be quashed and annulled.[…]”

    1. Distant, it appears that it was well accepted by 1853 that the only way the crown could in fact repeal a patent would be by a scire facias that even attempt to do so directly without judicial means would not be effective.

  6. The real question is: why are those who pay steeply for the patent office, disclose their oftentimes valuable creations to the public, work for the betterment of all, … why are these people having to pay for the incompetence of the Patent Office? They aren’t the ones issuing patents with a fancy seal of approval. They don’t decide what should or shouldn’t be patented. All they can do is present their application and argue its merits. The decision is with the Federal government. When the Federal government screws up (supposedly), why doesn’t the Federal government foot the bill? Why does the patent owner have to pay to defend what the Federal government has said meets the requirements for patentability. What incentive is there for the Federal government to offer better examination? Quite the opposite, the Federal government now double dips: give us your application fees, now go rely on this “government approved” legal document, now give it back, and pay us even more money for us to take it from you. The IPR regimen perversely encourages incompetent examination … why get it right the first time when the PTO can come along later, charge more fees, and fix the supposed mistake?

    Regardless of the Constitutional arguments, it’s unfair how patent owners are being treated by the government.

    And why don’t failed examinations (patent-cancelling IPRs) end up with the Applicant getting a refund for, say, issue fees, maintenance fees, etc.? Why doesn’t the PTO pay the cost of defending challenged patents? … after all, they are the ones who concluded it was good. They should be required to _defend_ challenged patents. It should be kept in mind who is failing to do their job. Where else in the law does a party get paid extra for failing to perform the job they were paid to do?

    1. I am not convinced that patent examiners are incompetent although the barely English-speaking examiners need to be discharged.

      There seems to be a group that is high-up and deeply embedded in the USPTO since before 1995 and that is dedicated to undermining the system. I know it sounds like a conspiracy theory, but there are laws against conspiracies because conspiracies are often real.

      I tend to view undermining the patent system and dismantling the healthcare system as two steps in ongoing un-American effort to harden class and racial divisions.

      1. I’d rather not say examination is incompetent, but it can reach the wrong conclusion. Examination lately is reasonable and competent. The specialized art knowledge of the examiner corps is valuable and they usually do conscientious work at a tedious job. But who should bear the cost when examination reaches the wrong outcome? What incentive is there for the PTO to improve where possible?

      2. [T]he barely English-speaking examiners need to be discharged.

        And then what? I do not enjoy the experience of struggling to understand my interlocutor any more than you do, but fundamentally the PTO employs STEM graduates with poor English skills because they are STEM graduates willing to take the job. If you kick out the folks with limited English, it is not as if there is a line out the door of people with equal technical qualifications but superior English skills waiting to take their places. There are, to be sure, a surfeit of liberal arts grads with better English language abilities out there looking for jobs, but if you replace a Vietnam-born mechanical engineer with a Connecticut-born art history major, the results for examination will be even poorer, and equally frustrating to the applicant (or the applicant’s lawyer), except along a different dimension.

        In other words, if you start purging the Examiner corps on the basis of English-language abilities, you will not improve the experience. At best, you will simply serve to make the examination backlog that much longer. Possibly you will also lower the quality of examination in the bargain.

      3. Most of the people at the PTO are fairly nice people just trying to do a good job and that includes the ones that have poor English skills.

        I do think you are right about the PTO and DOJ having a group that is trying to undermine the patent system. Basically, it goes back to Benson. Benson is the root of all evil in the patent system.

        1. Just to clarify, I think the group trying to undermine patents is focused on making information processing patent ineligible under 101.

        2. Just to be clear, I think the group is only trying to make information processing patents ineligible. The other stuff you wrote is nonsense.

        3. I also believe most of the barely English-speaking examiners are nice people, but dealing with their office actions and advisories can drive one mad. The USPTO can find some other role in which they can work and in which they would not deal directly with applicants.

        4. If there is such a cabal, it was probably happy with Benson. The trigger for action seems to have been In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). The USPTO implemented SAWS shortly after the CAFC issued the decision in this case.

          1. You know, that spin-off from Soap starring Robert Guillaume…

      4. What is this lunacy?

        First stating that barely English speaking examiners need to be discharged, and in the same breath saying there is some cabal at the PTO trying to create racial divisions? What?!

        Do you have any evidence for these claims?

        1. I have had to deal with office actions and advisories which were written in something other than English.

          It’s a problem.

          If there is a cabal at the USPTO and Justice Department dedicated to destroying the patent system, barely English speaking examiners that can’t get jobs elsewhere are useful for doing low-level dirty work because they can’t refuse the marching orders in the service of SAWS, Second Look, and other illegal or unlawful programs.

          I wrote my summary on the logic of undermining the patent system and destroying national healthcare system too quickly.

          I rewrote it to clarify my points.

          If you are interested, you can click on Undermining the patent system and dismantling the healthcare system are two steps in an ongoing effort to harden class and racial divisions.

          I was going to become an historical political economist before I became a physicist.

          I think I see a disturbing trend.

    2. Refunding your $400? PTO application examination fee sounds like a good idea.
      But this patent owner plea would get more sympathy but for the recent PTAB statistical study showing that 85% of all IPRs are due to the patent owner suing companies for patent infringement, that is, demanding large $ amounts in damages from them – far more than the IPR costs.
      This same statistical study and detailed report, available on their website, demolishes some other popular allegations about IPRs:
      “An Analysis of Multiple Petitions in AIA Trials”

      1. Give me a break Paul. 1) What does suing someone have to do with it? 2) It costs a lot more than $400 for the patent.

        1. Paul can speak for himself, but to my mind the value of refunding PTO fees is not to make the applicant whole. Rather, the value is that if the PTO knows that loses money when it releases an invalid claim into the world, then it will have an incentive to improve examination quality at the front end, so that it will not have to pay those refunds later. In other words, it is really about giving the PTO a tangible incentive to do it right the first time (thus obviating the need for IPRs or re-exams), rather than compensating the applicant for their lost patent. Anything that improves examination is all to the good for everyone.

          Anon has—quite rightly—pointed out that such a policy of refunds for ruined claims might create an incentive for the PTO simply to issue a lot of unreasonable rejections, on the logic that they face a penalty for allowing a bad claim, but no obviously equal penalty for stalling out a valid claim. Allow me, then, to suggest a further refinement on the idea of fee refunds after invalidation: the PTO must spot a rejected Applicant the funds necessary to appeal to the CAFC. That is to say, if you appeal to the CAFC and win on even one claim, then the PTO has to pay for your appeal. Moreover, they do not merely refund you your attorney fees after you win. Rather, they have to pay those fees up front, and you only have to reimburse them for those fees if you lose in front of the CAFC on every claim in the appeal.

          This system would create a powerful set of financial incentives for the PTO to think very carefully before allowing or rejecting, and to reject invalid claims but to allow valid ones. If, in response to these incentives, the PTO starts getting right on the first try more often, that is a happy outcome for everyone.

          1. Reject reject reject…

            It is almost as if you are pretending that THAT did not happen.

          2. Sure, if they had to refund the fees and expenses to a much greater extent like $20K. It also doesn’t go to the lost opportunity.

          3. Perhaps everyone involved in the issuance of a patent having claims invalidated by the PTAB should suffer some penalty in the form of at least no bonuses and perhaps being fired.

          4. Meh, that’s not really how the government roles. As I recall the spending orgies in October, so we could keep it in the budget for next year. Agencies are all about growing and expanding and planning growth into projections. As I’ve said before, under public choice theory, the IPR scheme provides an incentive to issue more patent of lower quality, not less.

            1. iwasthere, I know. The obvious solution to a problem is to fix it. But the government solution is always to spend more: here, by providing more bureaucrats to undo what is done badly by a first group of bureaucrats who are not encouraged or discouraged in any way to correct their poor performance.

            2. [U]nder public choice theory, the IPR scheme provides an incentive to issue more patent of lower quality, not less.

              That is why I proposed that the PTO must refund the fees for any patent that is later invalidated, either in an administrative proceeding or in litigation. That is precisely the sort of incentive that public choice theory tells us would give the PTO the right incentives to do a thorough examination in the first place. It might also be necessary to set a statutory cap on the IPR petition fee, to require that it not exceed the initial examination fee, so that the PTO does not see a potential profit stream in allowing claims to draw the (more lucrative) set of IPR fees.

              1. Yes but, we are talking about the government here. Your fee proposal, would probably and perversely, incentivize even more poor quality patents to issue, you know, to make up for the refunds.

                1. Reminds me of Eric Holders’ reasoning in not bringing criminal charges against the big banks: they are too big to fail.

              2. Not just fees – make the client whole** (yes, this does open up a trap for overcharging, which should have some type of control)

                **well, whole at least as outlays go – it is quite a different matter as to any “making whole” for the publication of what may have been otherwise (at least attempted to be) trade secrets.

        2. Everything. It shows that your patent is rarely if ever going to get hit with an IPR unless you are hitting on someone with a lawsuit or at least a threat of one. [Not that anyone on the G-blog will ever tell you that.]

          As for a small potential cash refund that is roughly how little the PTO collects for doing the prior art searches on applications that so often miss the better prior art that an IPR petitioner spends a great deal more money on searching for after being sued.

      2. One would think that a botched examination which results in allowing invalid claims should be analogous to malpractice by a doctor or to shoddy carpentry work by a carpenter.

        The USPTO should compensate the victim of a shoddy examination for all the expenses that the victim incurs because of the shoddy examination.

        1. JM, we can all be sympathetic with that, but as you know, there is normally no way to successfully sue government employees for malpractice, especially patent examiners, and the suit would cost you far more than you could recover.
          If you could prove [ha] that your patent attorney told you that you could rely on the mere cheap and short USPTO prior art search that was all you paid for [instead of paying for a thorough prior art search of you own], and as a direct result you wasted a great deal of money, then maybe you might have a malpractice case against him or her?

        2. Two counters here….

          1) to Joachim – how would you suggest avoiding the Reject Reject Reject syndrome of any such one-sided stringency (punishing errors of allowance while NOT punishing errors of NOT granting)?

          2) to Paul – GIVEN (and quite aside from any “best practices”) that a search OF ANY KIND is not required at all, your attempt here to insinuate the “pay for the better search” as some type of required element – and after all, there is NO chance whatsoever with malpractice concerning a non-required element – I think that you miss the mark.

          As you might recall from the Tafas era, searching is NOT an innovator’s job, and instead IS part of the examiner’s job.

          I will grant that my practice DOES push for the innovators to pay for the maximum best prior art search – and that this DOES make my job of prosecution MUCH more efficient. As I indicated, aside from any such “best practices” view, though, the insinuation of “malpractice” is simply off the mark.

    3. And you have understated the cost and capriciousness. The PTO, having recently granted several patents for Bunch O Balloons has now switched sides, teamed with a notorious infringer, and is asking the Federal Circuit to allow them to cancel my first patent so the infringer does not have to pay. link to ipwatchdog.com.

      1. Thanks for mentioning that strange G-blog article on the strange and highly untypical water balloons patent mess. Among the strangest bits to me in that article are not even acknowledging that IPRs have no statutory jurisdiction to reject any original claims for ambiguities, and that the Sup. Ct. Nautilus ambiguity test is worse than the prior Fed. Cir. test for patent owners, not better.

        1. Why should your pet peeve about IPRs not being open to 112 challenges any point for calling any article on IPRs (and the damage they cause) to be labeled “strange.”

          That itself is very strange.

          Oh wait, this is coming from the top IPR cheerleader.

          Still very strange.

  7. Both the Duffles and Lemless lead briefs are filled with inaccuracies. I think they both should be subjected to discipline for filing these briefs.

    1. Night – Are you able to be more specific regarding these alleged inaccuracies?

      I’ll note here that if you were filing court papers and identified Duffy and Lemley as “Duffles and Lemless” then you would be the one subject to discipline.

      1. You still around, NW? I’m interested to hear about the inaccuracies you found also!

      2. Dennis, while I agree, and it certainly is uncalled for in the sense that no insult is called for, it’s just funny to me (and probably everyone else except MM) that given MM’s multiple, egregious violations of any community standards, THIS is what you call out…

      3. I’ll take a look at it Dennis. I have documented on the other website many of the problems with Lemley’s papers. I have gone through cites and illustrated that they do not support the proposition that Lemley claims they support. I have illustrated that Lemley leaves off well-known cases that he must be aware of that are counter to his arguments. I have documented that he claimed software had no structure. That he has presented graphs that were not normalized to support a hypothesis. Etc. Ned below mentions some of the many problems with Lemley’s brief.

        As to Duffy, I think he push for the previously unknown reference as was discussed on this blog, is disingenuous at best. Moreover, I’ve gone over Duffy’s papers before and he is loose with his cites and his conclusions often lack any logical basis.

        I may put together something to illustrate this. Reading through these there is ample material. But, Dennis, the problem is that even if I do what will come of it?

        It is well-known that law schools protect their professors and they can get away with pretty much any ethical violation.

        I have proposed ways to illustrate that papers are unethical. For example, the cites can be taken out with what proposition they supposedly support and a survey could be done to see how many people actually agree that the cite support the proposition the paper is using the cite for.

        As to Duffles, Duffy was a law professor of mine and we used to call him that.

        Big picture, a waste of my time. Nothing will come of it.

        1. In Lemley’s functional paper, he selects patents that are not a fair sample and mischaracterizes them. The fact is, with Lemley, the easier question to answer is what does he do that is ethical? Almost nothing.

        2. I showed you a paper that Lemley wrote where he claimed software had no structure. You said it was no big deal. Reality is that he did not even cite to a reference that had a counter view. Reality is that the cite for no structure was absurd.

      4. And, Dennis, my question to you is why do you not call them out for unethical behavior?

        1) Lemley’s claim that software had no structure.

        2) Lemley using a graph of patent applications that was not normalize to support his hypothesis that patent applications have not fallen despite the tougher litigation climate for patents.

        The fact is that Lemley is a highly unethical person and that it would be difficult to read a single page of his work without running into some ethical violation.

  8. It is sad that the petitioner did not ask the question of whether it is acceptable for a Court to stay an infringement action when an IPR has been filed after the complaint for infringement. If the Court grants the stay despite the patent owner opposition and despite the patent owner request for a jury trial, granting the stay seems to be a disguised way to deprive the patent owner of a jury trial for some of the questions of fact in the case. Maybe the Court will sustain the constitutionality of IPRs but will give a hint that staying Court proceedings may not be always acceptable.

    1. Are summary judgments also “unconstitutional”?

      1. Questions of facts not determinative of the outcome in summary judgements, therefore OK. Are questions of fact not determinative of the outcome of IPRs also?

  9. This is just to compare what I will call the two “possies of patent professors” amicus briefs filed in this case.
    Interestingly, as I recall. the first-filed law profs brief only argued that patents are private rights but did not ever go on to ask for or explain why that prevented Congress from enacting IPRs?
    But the above-cited second set of law profs brief [Lemley et al] strongly argues in favor of maintaining IPRs on several grounds, even including what appears to be asserted rebuttals of antique law debates in comments on this blog as well as prior criticisms of the former Lemley article [which this amicus brief now replaces as the target for Ned and DP for those debates].

  10. Regarding EFF and “Pre-ratification practices in England, the colonies, and the early states consistently treat patents as a privilege granted as a matter of sovereign discretion, with the objective in granting patents being not merely to reward inventors but also to induce economic productivity to the benefit of the state and the public. And as matters of sovereign discretion, the patents of England, the colonies, and the states included conditions intended to advance economic and public interests—including, in many cases, conditions for automatic, non-judicial revocation.”

    Regardless of the “conditions,” the Statute of Monopolies specified that the validity of a patent be determined by and according to the common law. After the constitutional crisis of 1752-3 (William Murray, later Lord Mansfield, was then Solicitor General), the Privy Council never again revoked a patent for invalidity despite many petitions. Not once. Instead, applications the privy Council were consistently referred to the courts for adjudication.

    Furthermore, by the late 1700s, the British had developed the legal requirement for a sufficient specification in order that the public be fully informed on how to make and use the invention. It was to induce this disclosure that patents were granted. The idea that patents could be granted to advance specific policy objectives effectively died in 1624 when Parliament outlawed such patents in the Statute of Monopolies.

    This from Rex v. Arkwright, which opinion is in the appendix of the Alliacense brief:

    “The questions for your decision are three: First, whether this invention is new? Secondly, if it is being new, whether it was invented by the defendant? And, thirdly, whether the invention is sufficiently described by the specification?
    It seems to me that the last question is the question of greatest importance: because, if you should be of the opinion upon that question that the specification is not certain enough, it may have the effect of inducing people who apply for patents in the future times to be more explicit in the specifications, and, consequently, the public will derive a great benefit from it: and, therefore, I will say to you the evidence upon that point first, and will endeavour to state it separately from all the evidence which is applicable to the other points of the cause. Upon this point it is clearly settled at law, that a man to entitle himself to the benefit of a patent for a monopoly, must disclose his secret and specify his invention in such a way that others might be taught by it to do the thing for which the patent is granted, for the end and meaning of the specification is, to teach the public, after the term for which the patent is granted, what the art is, and it must put the public in possession of the secret in as ample and beneficial a way as the patentee himself uses it. This I take to be clear law, as far as it respects the specification; for the patent is the reward, which, under the act of parliament, is held out for a discovery; and, therefore unless the discovery be true and fair, the patent is void. If the specification, in any part of it, be materially false all or defective, the patent is against the law against law, and cannot be supported.”

    Alliacense brief at A-4, 5.

    1. The Golden brief similarly remarks on the enactment of the Statute of Monopolies to put an end to prerogative patents but continues to insist that the patents granted thereafter were, nevertheless, nothing more than prerogative patents even though they were granted only to discoverers of new manufacturers. What is really true is that there was a long struggle between Parliament and the monarchy which was reflected in the struggle between the privy Council in the courts of law over who had jurisdiction over patent validity. That led to a constitutional crisis in 1753 that was resolved in favor of the courts of law.

      The good professors brief entirely ignores these events and suggests that the privy Council simply lapsed in their exercise of their “authority.” Nothing could be further from the truth.

      1. In Why Nations Fail Daron Acemoglu and James A. Robinson explain the importance of patents in the economic development of the USA.

        [Note that without time-limited exclusive title to their inventions, inventors would have far less collateral with which to secure a loan.]

        HAVING AN IDEA, STARTING A FIRM, AND GETTING A LOAN

        The Industrial Revolution started in England. Its first success was to
        revolutionize the production of cotton cloth using new machines
        powered by water wheels and later by steam engines. Mechanisation of
        cotton production massively increased the productivity of workers in,
        first, textiles and, subsequently, other industries. The engine of
        technological breakthroughs throughout the economy was innovation,
        spearheaded by new entrepreneurs and businessmen eager to apply their
        new ideas. This initial flowering soon spread across the North
        Atlantic to the United States. People saw the great economic
        opportunities available in adopting the new technologies developed in
        England. They were also inspired to develop their own inventions.

        We can try to understand the nature of these inventions by looking at
        who was granted patents. The patent system, which protects property
        rights in ideas, was systematised in the Statute of Monopolies
        legislated by the English Parliament in 1623, partially as an attempt
        to stop the king from arbitrarily granting “letters patent” to
        whomever he wanted — effectively granting exclusive rights to
        undertake certain activities or businesses. The striking thing about
        the evidence on patenting in the United States is that people who were
        granted patents came from all sorts of backgrounds and all walks of
        life, not just the rich and the elite. Many made fortunes based on
        their patents. Take Thomas Edison, the inventor of the phonogram and
        the light bulb and the founder of General Electric, still one of the
        world’s largest companies. Edison was the last of seven children. His
        father, Samuel Edison, followed many occupations, from splitting
        shingles for roofs to tailoring to keeping a tavern. Thomas had little
        formal schooling but was home-schooled by his mother.

        Between 1820 and 1845, only 13 percent of patentees in the United
        States had parents who were professionals or were from recognizable
        major landowning families. During the same period, 40 percent of those
        who took out patents had only primary schooling or less, just like
        Edison. Moreover, they often exploited their patent by starting a
        firm, again like Edison. Just as the United States in the nineteenth
        century was more democratic politically than almost any other nation
        in the world at the time, it was also more democratic than others when
        it came to innovation. This was critical to its path to becoming the
        most economically innovative nation in the world.

        If you were poor with a good idea, it was one thing to take out a
        patent, which was not so expensive, after all. It was another thing
        entirely to use that patent to make money. One way, of course, was to
        sell the patent to someone else. This is what Edison did early on, to
        raise some capital, when he sold his Quadruplex telegraph to Western
        Union for $10,000. But selling patents was a good idea only for
        someone like Edison, who had ideas faster than he could put them to
        practice. (He had a world-record 1,093 patents issued to him in the
        United States and 1,500 worldwide.) The real way to make money from a
        patent was to start your own business. But to start a business, you
        need capital, and you need hanks to lend the capital to you.

        Inventors in the United States were once again fortunate. During the
        nineteenth century there was a rapid expansion of financial
        intermediation and banking that was a crucial facilitator of the rapid
        growth and industrialization that the economy experienced. While in
        1818 there were 338 banks in operation in the United States, with
        total assets of $160 million, by 1914 there were 27,864 banks, with
        total assets of $213 billion. Potential inventors in the United States
        had ready access to capital to start their businesses. Moreover, the
        intense competition among hanks and financial institutions in the
        United States meant that this capital was available at fairly low
        interest rates.

        [Why Nations Fail, pp. 26-27.]

        The “good” professors are essentially arguing that the USA implement something like the Venetian serrata.

        See The US Patent System, la Serrata of Venice, and Schumpeter.

        1. Worth repeating:

          The striking thing about the evidence on patenting in the United States is that people who were granted patents came from all sorts of backgrounds and all walks of life, not just the rich and the elite.

          1. Yes, now days especially highly educated first and second generation Asian American immigrants.

            1. What is really ironic (and stultifyingly so) is that your views and write-ups take the opposite view of the self-anointed Watcher over the Fields of Patent Rye and Kings of the ISMs: Malcolm.

    2. Regarding the KEI argument that enforcement of no invention patents does not advance the public weal, it is as if the only hope we had against no invention patents is the IPR.

      But the real question is who is to decide whether the patent is without invention – the PTO or the courts and juries? Everything else being equal, the matter seems to be a “design choice,” a political decision in the baliwick of Congress. But things are not otherwise equal. The patent owner has already disclosed his invention to the public and that cannot be undone. He has a vested right in his patent. Furthermore, because the patent owner had a right to a trial in the common-law courts granted to him by the Statute of Monopolies before his patent might be revoked, he similarly as today a right to to a trial in a court of law and to a jury because those rights are guaranteed in the Constitution. This is not simply a policy question.

      1. I think “no invention” refers to these two paragraphs.

        The inter partes review process can eliminate
        patents and patent claims when parties cannot demon-
        strate an innovation is novel or nonobvious. The deci-
        sion to invalidate a bad patent or bad patent claim on
        a timely basis and at a reasonable cost to the parties
        enables others the benefit of the freedom to innovate
        and makes it easier for these competitors to raise cap-
        ital to invest in products, including products based
        upon truly novel and inventive technologies.

        To the extent that the patent system is used to pro-
        tect investments without invention, which appears to
        be the desire of some of the opponents of the inter
        partes review system, there are other more appropriate
        policy tools which are available.

        If the above is really a problem, examination should be improved. IPR is exactly not the solution because it would allow bad examination to continue and maybe even increase.

        1. Further Joachim,

          There is a bit of dissembling in the item that you quote:

          The decision to invalidate a bad patent or bad patent claim on
          a timely basis and at a reasonable cost to the parties
          enables others the benefit of the freedom to innovate
          and makes it easier for these competitors to raise cap-
          ital to invest in products,
          including products based
          upon truly novel and inventive technologies.

          ANY such other products that are based upon truly novel and inventive technologies REMAIN so – whether or not the “bad patents” line of Kool-Aid is swallowed.

          Whether or not an item is a “bad patent,” such remain as they are in the grand scheme of things and serve as a prior art barrier to ANY ensuing “novel and inventive technologies.” The attempted spin that these “bad patents” somehow BLOCK further innovation is not only incorrect, it is 180 degrees wrong. STRONG patents (and strong patent rights including strong enforcement) serve as a STICK that invigorates new and innovative design arounds.

          Removing the stick is one of the worst things that one can do for an innovation-rewarding set-up.

          1. ANY such other products that are based upon truly novel and inventive technologies REMAIN so… Whether or not an item is a “bad patent,” such remain as they are in the grand scheme of things and serve as a prior art barrier to ANY ensuing “novel and inventive technologies.”

            I think you are misunderstanding the complaint that the other side is making here. The authors of that brief are not complaining that bad patents create prior art that stops an innovative new product from being patented. They are complaining that bad patents create an FTO obstacle that stops the innovative product from coming to market.

            It is cold comfort to the innovator to know that her product remains innovative, if she—nevertheless—will not be able to realize any profits on this innovation because of the transaction costs necessary to clear a legally insupportable blocking claim out of her path to market.

            1. necessary to clear a legally insupportable blocking claim

              You – like Malcolm – need to be reminded of a certain presumption of validity (and level thereof).

              Oh wait – you HAVE been reminded….

              1. What do reminders about the presumption of validity have to do with the point I was making? Nothing in 12.2.1.1.1 is at all affected by the observation that issued claims do (and should!) enjoy a presumption of validity.

                1. They are complaining that bad patents create an FTO obstacle that stops the innovative product from coming to market.

                  does NOT support your follow-up here of “(and should!)

                  Quite the opposite – which is why I posted what I posted.

                2. The observation that “bad patents create an FTO obstacle that stops the innovative product from coming to market” is equally true (or false) in a hypothetical regime in which there is no presumption of validity as it is in the world in which there is a presumption of validity. Your rejoinder is totally beside any point that I am making.

                3. My rejoinder is on point because your point is not on point.

                  Your last post is nothing but empty equivocation of your earlier positions.

                  You initially indicated a negative view, changed the view to a positive view, and now want to waffle with a “it does not matter” view.

        2. [E]xamination should be improved. IPR is exactly not the solution because it would allow bad examination to continue and maybe even increase.

          Well, who can argue with the assertion that “examination should be improved”? Indeed, who can argue with “improvement” in any context, given that—by definition—improvement means that something gets better?

          I notice, however, that your post is rather short on specifics about improvements that could be made. I also note that when the PTO tries to improve examination (as with the first round of 101 guidelines that came out after Alice), the same people who complain about IPRs started to squeal like stuck-pigs. I am, therefore, somewhat hard pressed to concede the sincerity of the suggestion that “examination should be improved.”

          Still and all, in the spirit of good faith and cooperation, please allow me to suggest an improvement to examination. The PTO should: (1) triple the application fees, so that the Examiners can afford the time to do a really thorough search (like in Europe); and (2) institute a rule that if any more than two claims in a granted patent are ever invalidated (either in litigation or in an AIA trial), then all fees that the patentee paid during examination should be refunded. I expect that such a stark set of financial carrots & sticks will rather concentrate the minds of PTO management about the importance of getting it right the first time.

          1. (as with the first round of 101 guidelines that came out after Alice)

            You ASSume that THAT was improvement…

          2. Watch out for your incentives being skewed as to Type I and Type II errors.

            The stick you seem to want to use only brings about the Reject Reject Reject era and has NO corresponding stick for the type of error in which a meritous patent is not granted.

            1. The stick you seem to want to use only brings about the Reject Reject Reject era…

              Possibly. This brings me back, however, to my point that the same folks saying that IPRs distract from the real goal of improving examination seem suspiciously reluctant to propose any actual improvements to examination. If the stick that I am proposing will not serve, what do you propose instead?

              1. seem suspiciously reluctant to propose any actual improvements to examination.

                Not so.

                At all.

                For example, I have provided several times – in great detail – suggestions for actual improvements. You play the Br’er Rabbit game again – instead, pay attention.

                I have also provided links to Ron Katznelson’s write-ups on exactly WHY your error here is the far more pernicious one.
                You are sounding like Malcolm again (and that’s not a good thing).

          3. “The PTO should: (1) triple the application fees, so that the Examiners can afford the time to do a really thorough search (like in Europe)”

            Here here!

            Though anon is correct about the incentive assymetry of (2).

            Perhaps (3) could be: reversed ex parte appeals get their fees (appeal plus original filing, but not RCEs or time extensions) refunded?

          4. Greg, one improvement that would make a lot of sense is to publicly fund the PTO so that the PTO is not beholden to its stakeholders, nor biased in favor of issuing patents to gain more clients and revenues.

            Fees should all go to the general revenue, but should be adjusted to reflect the actual costs of examination: to wit, a per page fee for specifications, per figure fee, and per claim fee. In addition, we need a substantial fee for each reference cited in an IDS.

    3. The most compelling brief in my view is that filed by the well-known team of well-known team of Duffy and Dabney. With all due respect, Dennis, I came away from reading that brief by Duffy with a profound sense of dismay. The guy simply does not know what he is talking about. I would think that the court could look from one end of that brief to the other and find nothing in it to either cite or to discuss among themselves. It was completely worthless assemblage of words. I do not think I will ever consider Duffy as a serious lawyer again.

      For one thing, a patent applicant has a right to a patent upon compliance with procedures that cannot be denied by the executive. It is a legal issue, just as much as invalidity is a legal issue. Legal issues are triable in a court of law and to a jury. It is as simple as that, but somehow according to Duffy, patent examination has become an agency decision as if an agency decision is discretionary. There is nothing about the decision of the director to grant or deny a patent which is discretionary. If the PTO refuses to grant a patent, the law provides the applicant with a right to “appeal” to a court of law and a trial de novo. The trial court can order that the director issue the patent.

      The whole idea that the writ scire facias is anything other than a legal common law writ is – well, I cannot write the word down here. It makes no difference who brings the action, King or a subject. It is the right of the patent owner to have a trial trial in a court of law and to a jury before his patent is revoked. Duffy seems to have no clue as to why we even have courts and juries. He probably does not even know what the word due process means. Does he even know what the Magna Carta is? Is this man even an American? He seems to have no familiarity at all with why we have separation of powers and courts to protect individual rights.

    4. The Arris group brief is another disappointment, citing the particularly misleading Lemley for the proposition that only the King and the privy Council had the “power” to revoke a patent prior to 1753. Nothing can be further from the truth, because the writ scire facias was in use to revoke patents long prior to that. If the gentleman ever read the Alliacense brief, the appendix includes a copy Sir Edward Coke, 4 Institute 79-80 (1644). In this chapter, Coke discusses the jurisdiction of Chancery, describing its ordinary, common law jurisdiction to revoke patents and to employ Kings bench for jury trials with respect to disputed facts. In fact the statute of monopolies expressly limited the revocation of patents to the common law courts – stripping the privy Council of any power that it may have had. Thus the exercise of jurisdiction by the privy Council was only through the revocation clause contained in the patents themselves, not through any power the crown may have had to revoke patents.

      The briefs discusses the quid pro quo completely ignoring the fact that by disclosing the invention to the public, something that cannot be undone, that the inventor has vested rights in the patent. The inventor takes nothing from the public it already had. Rather the inventor gives the public an invention it did not have an exchange for exclusive rights for a period of time.

      A lot of the other discussion about patents assumes that they were of the type banned by the Statute of Monopolies: monopoly rights given to individuals over pre-existing trade regardless of whether they created a new manufacture or brought one from abroad. These kinds of patents created real monopolies. Patents on new manufacturers, do not. They give to the public something they did not have before.

      Another brief that is beyond the pale in my humble opinion.

      1. Ned, et al, in what year did the UK stop granting patents on new importations of manufactures from other countries as opposed to actual novel inventions?

  11. Let me put it this way: Is it okay under our constitution that the PTAB can continue its kangaroo court procedures? All of this has been documented. The PTAB regularly stomps on fundamental due process rights.

    1. Just a cultural note. One proposed derivation of kangaroo court suggests that these were courts that in Australia dealt primarily with claim jumpers. In Australia the most well known jumpers are kangaroos.

    2. That very much turns on whether or not a property right is in the cross-hairs.

      The oxymoronic twist from this thread’s headline is that the purported “shoring up” is coming at the expense of hollowing out (eviscerating) that very property notion that underlies the Quid Pro Quo Of the US patent system.

      When “shoring up” necessitates such a gutting of the foundation of turning innovators natural right – albeit an inchoate one – into a fully legal, fully alienable property right, then we need better from the patent community than to acquiesce to the Infringers Rights mantra of “not actual property,” “just a lease,” or any other cheapening that seeks to minimize infringement costs so as to place this tort in the same category as other “standard business” infringe for a de minimum fee situation.

      A strong and effective patent system has both carrots and sticks. The Efficient Infringers playbook is to take away the stick and maybe (just maybe, after much effort and chasing down) provide for de minumus carrots.

      Our sovereign ranking is now what? Tenth?

  12. Isn’t an IP patent more like a mining patent than it is like land patent?

    Mining patents are in some sense limited in duration because mineral veins are limited in duration, and I remember from reading “Roughing It” that miners, at least during the Nevada Gold and Silver Rush, had to prove the patentability of their claim by working it for 10 days after declaring it to a territorial or federal bureau. Both patented and also unpatented claims are registered.

    Nevertheless a patented mining claim is permanent property while an unpatented mining claim is a mere franchise.

    It’s been a weird year. Who ever thought there would be an intersection of IP law and Indian law?

    The analogy of land patents to IP patents has long been around. Case documents and articles have analogized the the USPTO to the General Land Office, but I have not yet seen a discussion than analogized IP law to mining law although some one will probably point me to such an article or to such a case.

    I think of efficient infringers as claim jumpers.

  13. Talk about a rush to judgment.

    The reply brief hasn’t been filed and no oral argument yet.

    1. Dude is just expressing his opinion. It’s not like this is a criminal trial.

      Sure, it’s true that if we kneecap the ability of the FDA and the EPA to do their job then a lot of poor people will suffer and die. Maybe that will inspire them to work harder instead of loitering around in national parks which could be used for testing weapons instead of just sitting there and making liberals feel good.

    2. What you’re hearing is a sigh of relief from some here who were panicked by the opening briefs from the pro-IPR side.

      I also have a hard time believing that amicus briefs are going to be the deciding factor.

    3. Well, reply briefs are supposed to only be responsive and not raise any new issues or very different arguments, and oral arguments are notorious for helping to often lose cases as much as helping to win cases whenever they make any difference.

      Nor have I ever heard that the Supremes will just ignore genuine amicus briefs on law, as also asserted in another comment here?

      Unusually in this case [as I complained about for some time] there had been very little serious legal academia consideration of the issues in this case before cert was taken, in spite of the several prior cert attempts.

  14. Duffy and Dabney… write: No decision by this Court has ever held unconstitutional a system of adjudication by an Executive Branch agency on the grounds that the system violates Article III or the Seventh Amendment. This case should not be the first.

    Friends, I think you are missing the point here. It is precisely in order to achieve that first move in the dismantling of the apparatuses of the administrative state that the justices took the case in the first place. They do not care about the patent system, and this case is not about the patent system as far as they are concerned.

    It has been a long-term plan of the Federalist Society to use Article III of the constitution to upend the whole system of administrative adjudication. They have been laying the intellectual groundwork for this project for decades, and the loss of Scalia (and the near miss of having his seat filled by a Democratic appointee) has made them to realize that that they cannot tarry at their task forever. They have decided that they have laid enough groundwork, and all they needed was a case to present itself to allow them to lay the cornerstone on their long-in-waiting groundwork.

    Oil States obliged them by presenting a case about IPRs. They say their chance and they seized it. This case is not about patents, or IPRs, or the expectations of inventors. This is about using the separation of powers to take the network of administrative agencies down several, several pegs. Not to make this case into the first to “h[o]ld unconstitutional a system of adjudication by an Executive Branch agency on the grounds that the system violates Article III or the Seventh Amendment,” would defeat every purpose for which they granted cert. in the first place.

    [T]his is a powerful group of briefs that leave me believing that – in the end – the Supreme Court will leave the IPR regime in place and in power.

    I will be delighted to be proven wrong in this, Professor, but from where I am standing your conclusion looks very naive. The Court is not going to be swayed by well written amicus briefs (which hardly anyone reads anyway). They took this case to reverse the CAFC, and reverse the CAFC they will.

    1. It has been a long-term plan of the Federalist Society to use Article III of the constitution to upend the whole system of administrative adjudication.

      LOL

      And then what? Who’s going to charge women with homicide when they have a miscarriage? The local police? Seems like the Federal Fetus Monitoring Agency would want some power.

      But, yes, you are correct that it is the oh-so-aggrieved white boy dominionist goons in the Ferdlerst SersAhty who have been driving a lot of this nonsense. Just a bunch of g@ ing @holes, really, who don’t care about anything or anybody except themselves and consolidating power and money. No surprise that significant numbers of the online patent bar cheerlead for these s cu mbags.

      1. Your ISMs are showing Malcolm.

      2. “But, yes, you are correct that it is the oh-so-aggrieved white boy dominionist goons … Just a bunch of g@ ing @holes, really, who don’t care about anything or anybody except themselves and consolidating power and money.”

        BRIEF FOR ANTIFA AS AMICUS CURIAE

        MM
        Counsel of Record

    2. While I will be happy if you are correct…I wouldn’t necessarily rush to your judgment either.

      I believe the court is pretty evenly split over the judicial deference issue (5-4 or 4-5) and I certainly think this issue played into the decision to accept the case. I am HOPING that Gorsuch’s addition created a majority which feels this way….but I’m also cognizant that it might have only created a four-judge block which feels this way (four is all that is needed to get the case accepted).

      Additionally….if the deference supporting Justices still have a slight majority…they may have wanted to accept Oil States NOW….rather than wait since Kennedy is likely to retire next year…and it is quite likely that Trump will get to pick his replacement (i.e. another Gorsuch) which could push the current majority position (deference) into the minority. By getting the issue settled before Trump can revamp the Court again further against the admin deference issue….they make it difficult/akward to immediately turn around and accept a similar case to overturn the Oil States decision a year down the road.

      1. I would find your account plausible if Justice Kennedy had previously shown any inclination toward administrative deference. He has not. Please recall that Justice Kennedy was in the dissent in NFIB v. Sebelius.

        People have grown so accustomed to Kennedy being a swing vote, that they just mentally slot him into the “swing” category without paying attention to the issue in discussion. On this point, Justice Kennedy is not a swing vote. Justice Kennedy is a reliable member of the crush-the-Leviathan bloc on the court.

      2. Incidentally, I have no more information on this point than has anyone else around here, but I think that talk of Justice Kennedy retiring soon is misplaced. I predict that he is going to try to stick it out until 2021.

      3. Valuationguy,

        Add one other (small) wrinkle: IF patents are deemed NOT property, then that opens up a path to Congress to remove the judicial branch entirely.

        Do you think that the Court, with that same “block” that you may think be opposed to Gorsuch et al, would so easily give up their wax addiction (and remove the ability to mash the nose of wax of 101)?

        Admin. deference is NOT the brightline that I think that you are thinking it to be (and in fact, if there is a brightline, it is pointing in the opposite direction for this area of law).

      4. But Thomas said patents were public rights in Teva.

          • Justice Thomas

          : Notwithstanding a movement to recognize a “core” property right in inventions, the English common law placed patents squarely in the final category, as franchises that “depend upon express legislation,” and “hath [their] essence by positive municipal law.” 7 W. Holdsworth, A History of English Law 479, n. 7, 480, and n. 4, 497 (1926). The distinction between “core” private rights, on the one hand, and public rights and government-created privileges, on the other, has traditionally had significant implications for the way in which rights are adjudicated. Nelson, supra. Thus, no matter how closely a franchise resembles some “core” private right, it does not follow that it must be subject to the same rules of judicial interpretation as its counterpart.

          1. Justice Thomas makes a fundamental mistake by ignoring the knowledge — I assume a core private right — that was exchanged instead of cash for those lettres patents.

            If the government cancels a cash franchise early, the government can refund cash on a pro rated basis. What refund can the government for cancelling knowledge-based lettres patents early. It seems like an uncompensated taking.

            When the government takes a patented mining or land claim, it pays “just compensation”. When the government cancels (“condemns”) a patent claim, it in essence takes private knowledge (effectively a lobotomy?) without just compensation.

            1. Whether people like it or not,
              Whether people will admit it or not,

              this comes down to the fact that without the innovator, there is NO “anything” from the government. The government’s structure is – and must be – secondary to the innovation itself.

              Yes, there is a government structure involved with patents.

              Yes, that government structure turns an inchoate personal property of the innovator into a recognized legal property right.

              But to think this as some type of “franchise” misses – and misses badly – what the Quid Pro Quo is all about.

          2. One might question as to whether either the grant or revocation of a patent is a matter of discretion, or a matter of law? If the latter, can a legal patent be revoked without compensation?

            Yes it could in the UK, but not so in the US.

            1. Attempting to post to tie the dissent by Justices Thomas and Alito in Teva Pharmaceuticals v. Sandoz to principles of the English common law regarding letters patent, as that law was applied at the end of the 18th century. I believe it pays to look at the whole dissent, as opposed to the highlighted paragraph.

              Quotes from Justice Thomas in the dissent:

              “Patents are written instruments, so other written instruments supply the logical analogy.”

              [Discussion of statutes, and principles of statutory construction.]

              “The Court has given no hint that this practice changes when the statute it construes is a land patent—that is, a public land grant.”

              Justice Thomas:—“Second, statutes govern the rights and duties of the public as a whole, so subsidiary evidentiary findings shape legal rules that apply far beyond the boundaries of the dispute involved.[…]

              “The construction of contracts and deeds, by contrast, sometimes involves subsidiary findings of fact.[…]”

              Then, later in the dissent,

              “This, in turn, depends on whether patent claims are more like statutes or more like contracts and deeds.”

              It seems clear that Justice Thomas is developing a position based on his own considered position with regard to the fundamental nature of letters patent (both patents of invention, and land patents, and any other sorts of letters patent, such as letters patent appointing people to offices) And it is clear that, for Thomas and Alito, letters patent are more closely analogous to legislation than they are to contracts and deeds.

              Back to Justice Thomas in I B of the dissent:—“Because they are governmental dispositions and provide rules that bind the public at large, patent claims resemble statutes. The scope of a patent holder’s monopoly right is defined by claims legally actualized through the proce­dures established by Congress pursuant to its patent power. Thus, a patent holder’s actual intentions have effect only to the extent that they are expressed in the public record.“

              Following Justice Thomas’s argument, it is now established that Letters patent are statutes, or at least closely analogous to statutes, more analogous to legislation, than they are to contracts and deeds.

              In particular, according to Justice Thomas:—“In grant­ing a patent, the Government is acting not as a party to a bilateral contract binding upon itself alone, but instead as a sovereign bestowing upon the inventor a right to exclude the public at large from the invention marked out by his claims.”

              […]

              “As previously noted, patents are authoritative govern­mental dispositions.”

              “the limits of a patent must be known for the protection of the patentee […]”

              Then there is note 2, on page 9 of Justice Thomas’s dissent in Teva, beginning “The Anglo-American tradition […]”. I believe firmly that Justice Thomas was correct in asserting that patents for inventions were considered as “franchises” or “privileges” in English common law at the end of the 18th century.

              And I think it clear that Justice Thomas has a position on the nature of letters patent for inventions that does not derive from amici briefs that the American patent bar, or anyone else for that matter, has submitted to SCOTUS.

              Presumably Justice Thomas’s position on Oil States will be presented by him in an opinion, concurrence or dissent. (I don’t suppose that we will learn about it from any comments in oral argument.) But this is where I think he will go:

              Letters patent implement a grant of rights from a sovereign to a citizen or corporation, to some extent analogous to a contract or deed, but closer in nature to statutes resulting from legislation.

              The construction of patent claims is just an one particular aspect of the construction of the patent grant itself. The ultimate purpose of construction is to determine the rights that, assuming the validity of the patent, have been been transferred from the public at large to the patentee (in the way that a grant of a right to hold markets and fairs on particular days in England, and exclude others from holding competing markets and fairs in the immediate neighbourhood, assigns rights to the patentee at the expense of the public at large).

              As such (and I suggest in accordance with the procedures of common law courts in England at the end of the 18th century), the patent grant needs to be construed strictly in order to determine the extent of the rights that have been granted by the sovereign to the patentee.

              But the position that I would expect Justice Thomas to take would be that the construction of the patent grant must be based on the explicit text of the letters patent and the applicable law in force at the time that the grant was made.

              Thus, with regard to the “defeasance clause” involving the Privy Council in grants of patents for invention in England until well into the 19th century, this clause is a proviso that would lawfully condition the grant, but the ability of the king (or queen) to refer a petition requesting him or her to activate the defeasance clause to the Privy Council would be a direct consequence of the inclusion of that clause in the text of the letters patent, and on no other basis.

              I would expect Justice Thomas to argue that, whilst subsequent legislation might enlarge the rights of the patentee (conveying more rights from the sovereign to the patentee), legislation subsequent to the grant cannot reduce the value of the grant to the patentee without bringing in principles of eminent domain.

              We shall see, eventually.

        1. Anonymous, no, he said they were franchises — privileges — as opposed to property rights. The government brief has subtlety changed direction and has begun calling patents revocable privileges, not public rights.

          1. My thesis is that ”patent rights”” in English law, from medieval times through to the end of the 18th century and beyond, were classified as “franchises”, similar to the grant of rights to hold markets and fairs on particular days in particular locations and pocket the profits, but that the common law of England, but that where rights were granted under the Great Seal, they received equal protection under the common law.

            I haven’t now got time to compile and put together all the citations to English cases and treatises.

            One reference to note: Joseph Chitty, A treatise on the Law of the Prerogatives of the Crown (Butterworth, London, 1820), available on Google Books here:

            link to books.google.com

            See in particular page 400, On Revoking or Avoiding the Grant, deep-linked on Google Books here:

            link to books.google.com

            To quote:

            “When royal grants are void, a scire facias is in general requisite (a): but by statute 1 Ann. st. 1. c. 7. s. 7. for restraining grants of the lands and revenues of the Crown, grants contrary to that act shall be void without any inquisition, or scire facias, or other proceeding.

            “The grants of the King when valid in general bind him, though without consideration, as subjects are bound by their grants (b): except in cases where a mere authority, licence or exemption is given without an interest; as in the case of a licence to go abroad when the party is recalled; or the grant of an exemption from impress (c). And, though the grant of a mere licence or authority from the Crown (d0, or a grant “during the King’s will (e),” is determined by the demise of the Crown; it is clear that in other cases where an interest only is transferred by the Crown, the King’s successors are bound by it, though they are not mentioned in the grant (f): and this even on a grant to a college to be discharged of toll (g).”

            The citations (for those with the time to chase them up in nominate reports or the English Reports) are as follows:

            (a) See as to this, Index, tit. Scire facias. Ante, 330, 250. 38.

            (b) Ld.Raym.32. Ante, 119.125.132.

            (c) Ante, 24. 48. 4 Bac. Ab. 526. 16 East. 165.

            (d) Hard. 442. But not an authority coupled with an interest, Freem. 331. 17 Vin. Ab. 90.

            (e) Mo. 176. Com. Dig. Grant, G. 3.

            (f) Ibid. 1 Sid. 6. Hardr. 443, 4.

            (g) Yelv. R. 15.

            Thus proper legal scholarship, seeking to present a true understanding of what the legal position was in England was the late 18th century ought not to resort to mere speculation or invention as to the powers of the Crown to revoke letters patent ought not to resort to mere speculation, or cursory citations from modern texts that seem in some way apposite, but should properly investigate the English case law that clearly exists in reasonable abundance.

            In particular, I suggest that, if old English law is to be the yardstick, distinctions between “franchises” and real property rights do not provide a valid distinction with regard to rights that were or were not protected under the Common law and the subject matter of “suits at common law.”

            So much for now.

            1. Well said, Distant.

              Try the flip side of this. Since the King could not arbitrarily revoke, could the King arbitrarily deny a patent on invention — or would the issue of patentability be tried in a court of law?

              The answer to this question would be very illuminating.

            2. The Case Law behind citation Ld.Raym.32.

              The relevant nominate report is in the following: Robert Raymond Baron Raymond, Reports of Cases Argued and Adjudged in the Courts of King’s Bench, Volume 1.

              link to books.google.com

              The case is from the time of King William and Queen Mary, thus after the so-called “Glorious Revolution”. The case is the following:

              Hilary Term. 6 & 7 Will. & Mar. 1694. B.R.

              Rex & Regina v. Larwood.

              The judges disagreed as to the judgment on the case. But they were in agreement on a significant point of law.

              First of all, from the minority opinion of Sir Samuel Eyre, justice (on page 31):

              “That it is apparent by the information, that they who elected the defendant sheriff, had no power to make any such election, for the liberties granted by the charter of Henry 4. could not be divested but by surrender or forfeiture, and neither the one nor the other appears by th record; nor is it apparent that the corporation accepted the charter of Charles 2. But Charles 2. could not alter the liberties once settled by the charter of Henry 4. An affirmative statute will not take away nor change a power precedent […citations…] much less can the subsequent grant of the King do it.”

              The on the following page (to which the citation Ld.Raym. 32 refers):

              “My lord chief justice Holt, and Sir Giles Eyre justice, argued for the King.

              “  1.That the election was good.

              “  2. That the plea was ill.

              “As to the first, they agreed, that it was not in the power of the King to take away liberties before granted by him, &c. […] ”

          2. I am currently finding plenty of authority in 17th and 18th century English law for the proposition that, under the law of the 18th century, once the Great Seal had been affixed to letters patent, those letters patent were a public act, binding even on the King (or Queen), and void only if either the grant was one that could not lawfully made, or else that it appeared on the face of letters patent that the King was deceived in his grant. If the grant was not void, it could only be revoked by Act of Parliament. One interesting case is the Banker’s Case that went to the House of Lords in 1700. I might post somewhere links etc. to that case in coming days.

            Here is something I have just found. From the debates on the Regency Bill of 1789. The position put forward by the Solicitor General is here:

            link to distantperspective.blogspot.com

            Quoting from it:

            The only mode of obtaining the King’s consent, was by putting the great seal to the commission for passing it, and making it a public act. If it was so authorized, that rendered it a public act; and if, upon the face of it, it expressed that it passed by the consent of the King, Lords, and Commons, the judges of the land could not dispute it. The great seal, once put to it, gave it all the authority of law, and on inquiry could be instituted as to the mode of its having been passed. If letters patent passed, without the King’s warrant having been previously granted to direct such letters patent to be made out and sealed, yet, having the great seal annexed to them, however criminal it might be in the person who should, under such circumstances, take upon himself to put the great seal to those letters patent, they would prove of full force, and bind the King himself, although it might be known that His Majesty had not granted his warrant for making out such letters patent.

            1. Excellent work. I hope Oil States is following your research.

            2. Regarding the Bankers’ Case. This is relevant to discussions of sovereign immunity and I would point to an law review article by professors Paul F. Figley and Jay Tidmarsh,
              with the following recommended citation:

              Figley, Paul F. and Jay Tidmarsh. “The Appropriations Power and Sovereign Immunity.” Michigan Law Review 107 (2009): 1207-1268

              available here:

              link to digitalcommons.wcl.american.edu

              There following links to two of the nominate reports are here. Proceedings in the Court of Exchequer are in Freeman’s reports (1 Freem.K.B. 331) here:

              link to books.google.ie

              Proceedings in the Court of Exchequer Chamber (a common law appelate court) and in the House of Lords are reported in Thomas Bayly Howell, A complete collection of state trials, vol. 14, available at the following URL:

              link to books.google.ie

              (For further authorities and citations see note 17 of the article by Figley and Tidmarsh.)

              The Bankers’ Case is described from a sovereign immunity angle, rather than a letters patent angle, because that was where the battle had to be fought.

              How do letters patent fit into the picture?

              King Charles II, uncle of King William III, had raised large sums from bankers, or goldsmiths, as loans on which the exchequer would pay interest. The legal instrument for the transaction took the form of letters patent, granting the payments from the exchequer, in return for the consideration, i.e., the loans.

              King Charles defaulted.

              The bankers had themselves borrowed form others, and found themselves in severe financial difficulties as a result of the default.

              They sued by way of writ in the Court of Exchequer.

              One judge (Baron Lechmere) held that kings had no power to alienate their revenues, and thus the letters patent were void on that ground. The other Barons however were in agreement that the king could alienate the revenues. They also agreed that the bankers had a remedy by writ in the Court of Exchequer, and therefore found for the bankers.

              No judge, besides Lord Lechmere, gave as their opinion that the king couldn’t alienate revenues, and thus almost all of the many judges hearing the case as it proceeded through the courts agreed that the letters patent were good, and therefore bound the successors of King Charles II.
              On appeal, the Lord Keeper, Lord Somers, and one of the two Chief Justices argued that the Barons of the Exchequer had no standing to proceed on the writ in their court and give judgment that the king’s revenues were due to the petitioners. Lord Somer’s overruled the justices assisting him, finding for the king, against the bankers. There was then a writ of error to the House of Lords, and the Lords found for the bankers, against the king.

              The “sovereign immunity” angle has led to academic discussion of this case.

              The reports though also show that the judges hearing the case accepted the principle that if the letters patent were good (in this case, if King Charles II had been empowered to grant them) then they were binding on the successors to King Charles II. The letters patent (at least at that time at the end of the 17th century) could not be summarily revoked by the ruling king or queen.

    3. If what you say is true, then we are purposefully being distracted by the cutie in front of us, while the person behind, robs us.

      1. Hm, I do not think that it is fair to speak of “misdirection” here. Whatever else one might say of the Federalist Society, then have hardly been sneaky or covert about their long-term goals. They—and their fellow travelers in the judiciary—have been fairly open about what they consider to be the defects of the administrative state. If, as I predict, Oil States is intended to be a culmination of this long-term project, it will hardly come as a surprise to most observers. I think it feels like a surprise to some on this board because of the commonplace error among patent professionals to imagine that the rest of the world cares about patents as much as we do. Most of the country—very much including most of the rest of our fellow law professionals—do not give even five minutes of thought to patents in a given year. I expect that most Court observers realize what Oil States is really about, even if most patent lawyers mistakenly believe that the case is somehow about patents.

        1. even if most patent lawyers mistakenly believe that the case is somehow about patents.

          Even if your musings garner some heft, the case very much remains about patents.

          I am not sure how you can think otherwise, given that the very core of the Quid Pro Quo is in the balance here.

          1. Sure, you are entirely correct. I was deliberately overstating my point simply for emphasis. I agree that the Oil States cannot help but be a case about patents. My only point is that the Court did not take this case because they care about patents. They took it because they care about separation of powers, and the patent angle merely provides the incidental circumstances that tee up the separation of powers issue. It is undeniable, however, that, as you say, “the Quid Pro Quo is in the balance here.”

        1. Works for me. Search for he Supreme Court Tackles Patent Reform by Epstein.

          1. Same here. It worked when I clicked it.

    4. Hope you are right.

  15. Immediate response to paragraph in the brief authored by Dabney and Duffy, on pages 17 and 18:

    Scire facias was a ‘prerogative writ,’ and the very reason that such writs came to be called ‘ prerogative’ [is] because they were conceived as being intimately connected with the rights of the Crown.’ S.A. de Smith, The Prerogative Writs, 11 CAMBRIDGE L.J. 40, 41 (1951). Indeed, scire facias was originally viewed as a writ so ‘peculiar to the King himself’ that ‘the Attorney-General’s fiat had first to be granted’ before subjects could bring the writ. Id. The applicability of the scire facias writ to patent validity issues shows that such issues were emphatically not “subject of a suit at the common law, or in equity, or admiralty’ within the meaning of
    Murray’s Lessee

    Well, first, my understanding is that the 7th amendment historical test derives from United States v. Wonson, not from Murray’s Lessee, and relates to what would have been considered common law in England in 1793.

    And the writ of scire facias served very many purposes. This can be demonstrated by reference to note (4) in Underhill v. Devereux 2 Saund. 71 a.

    This note is in Volume 2 of Sir Edmund Saunders’s reports, as edited by John Williams, in an edition of 1824. (I do not have a citation to the English Reports, but any lawyer chasing up the case ought to find this in a law library.)

    The note starts at 71 a, and describes all the myriad applications of the writ of scire facias, with all the associated case law, with citations. The note goes on for page after page, continuing long after the end of the actual case being reported. By around page 72 o, one finally reaches the law applicable to the use of scire facias to repeal letters patent. But the fact that there is so much common law precedent around the writ surely shows, if proof were needed, that the writ was a common law writ.

    The original nominate report is available at the following URL:

    link to books.google.com

    I was aware that, back in 1793 and until well into the 19th century, England had courts of common law: King’s/Queen’s Bench, Common Pleas, Exchequer of Pleas, Chancery (in the Petty Bag office, course of equity, a court of admiralty, and courts for probate and divorce, not to mention the surviving ecclesiastical courts etc.

    But I never heard, until now, of what would seem to be courts in prerogative. Which courts in England in 1793 were assigned to handle cases in “prerogative” totally distinct from common law, equity and admiralty?

    1. P.S., for more information on the writ of scire facias, there is an entire treatise by Thomas Campbell Foster. I posted a link to this in a comment on a much older Patently-O posting. The URL goes to the section of the treatise dealing specifically with the use of scire facias to repeal letters patent, but the entire treatise, hundreds of pages long, is concerned entirely with uses of the writ. The URL is here:

      link to books.google.com

    2. Distant, you will note from your dissection of Lemley’s Jury Trial article that there are many inaccuracies and unsubstantiated assertions about English law (and even American law) that show what I can only say is unmitigated gall. I haven’t read the concerned brief yet, but I too have never heard that the common law writ scire facias was anything but a common law writ. When a party himself was harmed, he could bring the writ in his own name. But if he were acting in the public good, he would have to petition the attorney general to proceed in the King’s name.

      I suspect this is the point being made by the brief.

      But scire facias remained a common law remedy regardless of who the parties were. It had a right to a jury trial, and that means the writ is protected by the Seventh Amendment.

    3. DP first, my understanding is that the 7th amendment historical test derives from United States v. Wonson, not from Murray’s Lessee, and relates to what would have been considered common law in England in 1793.

      What’s the source of that understanding?

      1. Do you really care about the source?

        You seem to take a rather acerbic view to sources of law for the US sovereign.

      2. I was looking up Wonson and other cases to reply to this, till I fell asleep, or at least went to bed.

        Wikipedia cites Wonson for its discussion of the “historical test”.

        I found United States v. Wonson here:

        link to law.resource.org

        Also Parsons v. Bedford here:

        link to supreme.justia.com

        Attempting the heads of the argument, by Act of Congress, specifically 34th section of the act of 1789 (1 Stat. 92)” (presumably the act setting up the Federal district and circuit courts; I read the act some months ago), cases brought in Federal courts apply the common law of the state in which they are brought. Louisiana of course has to be a special case, covered by another act, as documented in Parsons v. Bedford.

        As Justice Story pointed out, if one were to apply this principle in constitutional questions, the application of the constitution would vary from state to state, so that litigants might be entitled to 7th amendment trial by jury, or (in the cases considered) retrial by jury without quashing the original jury verdict, on a state-by-state basis. But constitutional rights should be uniform across the United States.

        Later in Justice Story’s opinion in Wonson:

        It is in these words: ‘In suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved. And no fact tried by a jury shall be otherwise re-examined in any court of the United States, than according to the rules of the common law.’ Beyond all question, the common law here alluded to is not the common law of any individual state, (for it probably differs in all), but it is the common law of England, the grand reservoir of all our jurisprudence.

        Later in Parsons v. Bedford (concerning legal procedure in Louisiana, where state law is not common law):

        When, therefore, we find that the amendment requires that the right of trial by jury shall be preserved in suits at common
        law, the natural conclusion is that this distinction was present to the minds of the framers of the amendment. By “common law” they meant what the Constitution denominated in the third article “law,” not merely suits which the common law recognized among its old and settled proceedings, but suits in which legal rights were to be ascertained and determined, in contradistinction to those where equitable rights alone were recognized and equitable remedies were administered, or where, as in the admiralty, a mixture of public law and of maritime law and equity was often found in the same suit.

        And I note that Article III, Section 2 of the US Constitution begins as follows:

        The judicial power shall extend to all cases, in law and equity, arising under this Constitution, the laws of the United States, and treaties made, or which shall be made, under their authority;–to all cases affecting ambassadors, other public ministers and consuls;–to all cases of admiralty and maritime jurisdiction;

    4. The brief of the 72 law professors (including Lemley, Reilly, Rai), on page 28, has this to say about the amicus brief filed by Gomez-Arostegui and Bottomley:

      “They argue at various points based on this evidence that this Court, the Federal Circuit, current scholars, and even contemporary luminaries such as Lord Coke have all misunderstood the role of
      scire facias.“

      The brief for the 72 law professors also continues to assert (on page 28) that

      “It was the Chancellor, not the jury, who held the final power to revoke a patent using
      scire facias.”

      notwithstanding that this claim was addressed and refuted by Gomez-Arostegui and Bottomley in their earlier brief.

      Presumably the 72 professors rely on the authority of the “contemporary luminary” Sir Edward Coke, who wrote a century-and-a-half before ratification of the US Constitution.

      But any authority derived from the Institutes had been contradicted by the English courts in subsequent cases, as detailed below.
      .
      ===

      Sir Edward Coke’s had asserted (4 Inst. 79) that, in cases such as scire facias cases originating in Chancery and subsequently transferred to King’s Bench for jury trial, the record should be transferred back to Chancery for judgment.

      Deep link to the relevant passage in Coke’s Institutes here:

      link to books.google.com

      However the justices of the King’s Bench and the Lord Chancellor ruled unanimously in Jefferson v. Dawson (1 Mod. 29) that, once the report had been transmitted to the Court of King’s Bench, the judgment should be given in that court. This case was also reported by Sir Edmund Saunders as part of Jefferson v. Morton and others (2 Saund. 23, on page 26). This case was decided back during the reign of Charles II, back in the 17th century.

      Deep link to Jefferson v. Dawson in the first volume of Modern Reports:

      link to books.google.com

      The same in the second volume of Sir Edmund Saunders’s Reports (5th edtion, 1824):

      link to books.google.com

      The principle decided by the Court of King’s Bench (and approved also by the Lord Chancellor of the day) was affirmed at the commencement of the reign of King George I, at the beginning of the 18th century, in The Queen against Aires (10 Mod. 258, on page 260, the Sixth Exception). A deep link to Modern Reports here:

      link to books.google.com

      The Court of Queen’s Bench returned to the question in 1846, in Bynner v. The Queen, re-affirming that the practice followed in scire facias actions such as R. v. Arkwright, where the case was transferred to the Court of King’s Bench for jury trial, and judgment delivered there, was indeed proper practice, notwithstanding the assertion of Sir Edward Coke (4 Inst. 79, see above). But this judgment merely reaffirmed what had been decided nearly two centuries beforehand, and supplied extra authority, produced by a search of medieval patent rolls. The deep link is here:

      link to books.google.com

      ===

      I would add that, given that over a period of about 130 years prior to 1893, the English courts had consistently held that it was lawful for the Court of King’s Bench to give judgment on a writ of scire facias, it can hardly have been the “responsibility” of the Lord Chancellor to do so.

  16. I continue to be amazed not to see more administrative law professors chipping in on the issue which you only note being raised by The Auto Makers group? That is, “..significant and wide-ranging impact on administrative law in general.” Is that not being argued in other amicus briefs? Traditionally [and even more so under Roberts leadership] the Court is concerned about the potential for the unintended impact of its legal decisions in other areas, and how to avoid that. Especially a constitutional level decision [not a mere interpretation of a specific statute].

  17. If you believe that the original Quid Pro Quo was not in fact the intent of having a patent system….

  18. Thanks for digesting all these amicus briefs Dennis.

    Re: “the third reality – that the PTAB is invaliding patents that would have been upheld by a court.”
    One reason that argument may not be so effective is that the Sup. Ct. already recently dealt with that in Cuozzo – specifically discussing that such differences should be expected give the different burdens of proof [and claim interpretations]. Another such reason is that it would need a valid & current statistical study of D.C. decisions on validity that includes such decisions being reversed by the Fed. Cir. as well as IPR validity-invalidity decisions reversed by the Fed. Cir. The number of 101 D.C. decisions on 101 needs to be in that statistical pot, and may well change such statistics. A third such reason is that such an argument inherently [and dubiously] assumes that a majority of the Sup. Ct. will thinks that the number of patent claims held invalid in IPRs is inherently excessive, as many patent bloggers do. And a counter argument to that is the very low Fed. Cir. reversal rate of IPR decisions – much lower than the Fed. Cir. reversal rate of D.C. decisions even accounting for the APA appeal review scope vis a vis D.C. jury trial review scope.

    1. Isn’t the CAFC deferring to the USPTO under Chevron in a way that it does not defer to the DC?

  19. See also, Prof. Hollaar, noting that the question presented is “misleading in important respects, including the inaccurate suggestion that Article III courts do not provide substantial oversight in inter partes reviews.”

    Good for Hollaar for calling out this game.

    1. When deference of the Article III court to the administrative state (i.e. PTO/PTAB) is still the name of the game (i.e. required)…the “substantial oversight” provided by the Article III courts is somewhat LESS THAN SUBSTANTIAL.

      Did you miss this aspect of the politics surrounding why the SCOTUS accepted this case….immediately after Gorsuch (whose views on judicial deference to the admin state is well-documented) joined the Court?

  20. Goebbels quality analysis from Dennis in this article.

    1. Goebbels quality analysis

      ROTFLMAO

      Like I’ve said, the maximalists will literally do and say anything. They can’t help themselves.

      Stay tuned next when glibertarian “anony” will tell everyone how the H0 l0 caust was the result of the J e w s’ unwillingness to compromise with the N@ zis.

      LOLOLOLOLOL

  21. They’ll leave the IPR regime in place because it weakens the patent system, which is what this court has been doing steadily for the last 10-15 years. We didn’t need amici supporting the IPR regime to tell us that. But those amici may help provide cover for the court’s pre-ordained decision.

    1. They’ll leave the IPR regime in place because it weakens the patent system

      On the contrary, the reason the IPR regime was created — and the reason why it works — is because it strengthens the patent system. What weakened — and continues to weaken — the patent system is the granting of massive numbers of incompetently examined junky “do it on a computer” patents.

      Try not to mistake “pulling the rug out from low-level patent monetizers” to a weakening of the system as a whole. That’s a pretty huge mistake and it shows that you either aren’t paying attention or you are simply reciting a self-serving script.

      1. is because it strengthens the patent system.

        No. It does not.

        If you had any real world experience, you would know that such a post-hoc system with NO tie (feedback) into correcting the mechanisms that NEED to be focused upon (i.e., better examination), will not – and cannot make the patent system stronger.

        ALL that you are doing is celebrating a desired Ends, with no concept and no appreciation of the Means to that Ends.

        shows that you either aren’t paying attention or you are simply reciting a self-serving script.

        There (yet again) is Malcolm’s number one meme of Accuse Others…

      2. Agreed. I wonder if anyone here has actually represented clients in IPRs. I have represented both patent owners and petitioners. And I have won for both. It’s not nearly the patent death squad that commentators claim. I have found the APJs to overall be fair–some may be more friendly towards petitioners but I have also experienced APJs that were certainly patent-owner friendly.

        If you can’t win an IPR for a patent owner on a patent that truly is valid, the problem might not be the system, but your lawyering skills.

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