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 Center; 16-712 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.
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.”
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.
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
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.
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!
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?
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?
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.
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.
So no jury trial?
Considering further the matter of the role of the Privy Council with regard to patents in the 19th century. The merits brief for the Federal Respondent makes reference to the potential role of the Privy Council through into the 19th century:
“the Privy Council acted on petitions to cancel defective patents through the American Founding. See ibid. (noting that the Privy Council retained the right to revoke patents until 1847);”
Nevertheless, the Lord Chief Justice of the Court of Queen’s Bench, Lord Campbell, who had served as Attorney General between 1834 and 1841, and therefore a central player in Privy Council business and also in scire facias proceedings to repeal letters patent, made the following observation which delivering an opinion in 1853 with regard to the defeasance clause in letters patent for inventions:
“I cannot find that this summary power has ever been exercised.”
See 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, at 357; available at the following URL:
link to books.google.com
Suppose, for the sake of argument, that the Privy Council had received a petition after 1835, requesting that the king exercise his power under the defeasance clause. To which committee of the Privy Council would that petition have been referred?
Well, there was a committee of the Privy Council that had, under an Act of Parliament of 1835 being given particular responsibilities with regard to patents of invention:
“5 & 6 Will. IV. c. 83
“An Act to amend the Law touching Letters-patent for Inventions
“[Royal Assent, 10th September, 1835.]
“[…]
“II. And be it enacted, That if in any suit or action it shall be proved or specially found by the verdict of a jury that any person who shall have obtained Letters-patent for any invention, or supposed invention, was not the first inventor thereof, or of some part thereof, by reason of some other person or persons having invented or used the same, or some part thereof, before the date of such Letters-patent, or if such Patentee or his assigns shall discover that some other person had, unknown to such Patentee, invented or used the same, or some part thereof, before the date of such Letters-patent, it shall and may be lawful for such Patentee or his assigns to petition His Majesty in Council to confirm the said Letters-patent or to grant new Letters-patent, the matter of which petition shall be heard before the Judicial Committee of the Privy Council; and such Committee, upon examining the said matter and being satisfied that such Patentee believed himself to be the first and original inventor, and being satisfied that such invention, or part thereof, had not been publicly and generally used before the date of such first Letters-patent, may report to His Majesty their opinion that the prayer of such petition ought to be complied with, whereupon His Majesty may, if He think fit, grant such prayer; and the said Letters-patent shall be available in Law and Equity to give to such petitioner the sole right of using, making and vending such invention as against all persons whatsoever, any law, usage or custom to the contrary notwithstanding; Provided that any person opposing such shall be entitled to be heard before the said Judicial Committee: Provided also, that any person, party to any former suit or action touching such first Letters-patent, shall be entitled to have notice of such petition before presenting the same.”
Source: link to books.google.com
Would it not therefore be expected, that if a petition seeking to activate the defeasance clause had been received, it would have been referred to the Judicial Committee of the Privy Council?
And what is the nature of that Judicial Committee? Its website is here:
link to jcpc.uk
To quote from the official website:
“The Judicial Committee of The Privy Council (JCPC) is the court of final appeal for the UK overseas territories and Crown dependencies, and for those Commonwealth countries that have retained the appeal to Her Majesty in Council or, in the case of Republics, to the Judicial Committee.”
The Judicial Committee has jurisdiction in other matters arising within the U.K., as described on its own website, and it was established in 1833 to hear appeals formerly heard by the King-in-Council, through the following Act of Parliament:
link to legislation.gov.uk
I ask: can anyone seriously maintain that the actions of this committee (and the predecessor committee or committees whose business it took over) were non-judicial?
Another, quite separate matter related to the Privy Council. The Federal Respondent merits brief, on pages 39 and 40, discusses a case in 1732 where the Privy Council “made void” a patent for lighting a coastline.
It is worth noting that the subject matter interfered with the King’s own monopoly under the royal prerogative.
See Blackstone’s Commentaries (7th Edn, 1775), Book I, Chapter 7, pp. 264, 265:
“The erection of beacons, light-houses, and sea-marks, is also a branch of the royal prerogative: whereof the first was antiently used in order to alarm the country, in case of the approach of an enemy; and all of them are signally useful in guiding and preserving vessels at sea at nigth as well as by day. For this purpose the king hath the exclusive power, by commission under his great seal, to cause them to be erected in fit and convenient places, as well upon the lands of the subject as on the demesnes of the crown: which power is usually vested by letters patent in the office of lord high admiral. And by the statute 8 Eliz. c. 13. the corporation of the trinity-house are impowered to set up any beacons or sea-marks wherever they shall think them necessary; and if the owner of the land or any other person shall destroy them, or shall take down any steeple, tree, or known sea-mark, he shall forfeit 100l., or, in case of inability to pay it, shall be ipso facto outlawed.”
(Citations omitted.)
The “third party” (Respondent Brief) in the matter of Hamblin’s patent (parent comment) was in fact Trinity House, the charity that, from 1514, has had by royal charter the responsibility for lighthouses around the coasts of England. See their website:
link to trinityhouse.co.uk
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.”
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.)
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.
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.
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.[…]”
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.
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?
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.
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?
[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.
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.
Just to clarify, I think the group trying to undermine patents is focused on making information processing patent ineligible under 101.
Just to be clear, I think the group is only trying to make information processing patents ineligible. The other stuff you wrote is nonsense.
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.
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.
Benson?
Gottschalk v. Benson 409 U.S. 63 (1972)
You know, that spin-off from Soap starring Robert Guillaume…
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?
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.
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”
Link?
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.
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.
Reject reject reject…
It is almost as if you are pretending that THAT did not happen.
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.
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.
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.
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.
[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.
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.
Reminds me of Eric Holders’ reasoning in not bringing criminal charges against the big banks: they are too big to fail.
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.
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.
I can smell the IPR cheerleading…
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.
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?
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.
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.
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.
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.
Telebrands is the IP equivalent of a poacher.
Both the Duffles and Lemless lead briefs are filled with inaccuracies. I think they both should be subjected to discipline for filing these briefs.
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.
You still around, NW? I’m interested to hear about the inaccuracies you found also!
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…
I don’t feel called out.
Oh snap!
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.
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.
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.
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.
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.
Are summary judgments also “unconstitutional”?
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?
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].
“Antique law” <= lol
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.