1877 Supreme Court Thought’s on Oil States?

Cochrane v. Deener, 94 U.S. 780 (1877)

It would, perhaps, be desirable if all cases of this sort [i.e., patent cases] could be referred to a commission of intelligent experts and practical men to report their opinion thereon, with their reasons, for the final action of the court. … Neither courts nor ordinary juries are perfectly adapted to the investigation of mechanical and scientific questions. .

96 thoughts on “1877 Supreme Court Thought’s on Oil States?

  1. 17

    I accidentally came across something in a web search that offered me some mild amusement.

    This relates to the amicus brief for the respondents submitted for the Internet Association et al.

    The brief, on pages 17 and 18 explains why “the public rights nature nature of validity issues is confirmed by the very fact that scire facias was the device for litigating validity issues outside of infringement suits”

    As the brief points out: “Scire facias was a ‘prerogative writ,’ and the very reason why such writs came to be called ‘prerogative’ is […]”

    Thus, according to the amicus brief, “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.”

    I looked at Murray’s Lessee, but failed to find any qualification of specialized meaning given there to ‘common law’, ‘equity’ or ‘admiralty’.

    But, by chance, looking for other information, I landed on the Wikipedia page for ‘Prerogative writ’ here:

    link to en.wikipedia.org

    Apparently scire facias is no longer considered to be a prerogative writ, but to be an ‘extraordinary writ’. But six ‘prerogative writs’ were listed. all but one with obscure Latin names. Presumably nobody here has ever come across any of them. The list reads as follows:


    habeas corpus,




    quo warranto.

    Hmm, I seem to recall seeking quite a number of those habeas corpus thingummybobs in the SCOTUS orders. Now that they have been shown so conclusively to lie outside “common law, equity and admiralty”, maybe the Congress can establish an Article I legislative court that would ease the burden on SCOTUS and the inferior Article III courts by handling all proceedings on writs of habeas corpus.

    1. 17.1

      Distant, this issue actually is one of the most important issues raised by the supporters of IPR: that a scire facias writ was only brought in the name of the King. As we know, the writ scire facias was the only way patents were actually ordered revoked by the common-law courts. But the litigation was not between private parties – except to the extent the were present with the leave of the Crown.

      The primary contention of Oil States is that the reason IPR are unconstitutional is that they are litigation between private parties over patent validity. They insist that is not the government v. the patent owner, implying, if not all but stating, that if the government was the party, IPR would be constitutional.

      Thus they make the issue of the government involvement in the writ scire facias central to the case when that is not really an issue at all. The Article III violation is the revocation of a patent by the USPTO and not by the court system. It makes no difference whatsoever who is the complaining party. It makes no difference whether the government brings the revocation proceeding or whether it is pursuant to a petition by a private party. The procedures are irrelevant. It is the revocation itself that is the problem.

      Their reply brief doubled down on the nonsense of their opening brief and amplified it. The position is driven by their apparently desperate attempts to preserve reexaminations, and I don’t understand why they are taking that position because it is completely unnecessary even to discuss reexaminations except to help explain McCormick Harvesting. They are shooting not only themselves in the foot, but they are shooting the entire patent system in the foot by not arguing the case properly.

      God help us.

      They are going to be hammered by the Supreme Court on this issue. They are going to be hammered, and rightly so, by the government attorneys. They are going to lose the case because of this.

      1. 17.1.1

        Ned, not to disagree with your above assessments, but rather to ask: What about the number of IPRs in which the patent owner does not even respond to the petition, or otherwise participate. Cannot the “government” [the PTAB] proceed with the IPR anyway if the petition’s prior art passes the IPR threshold test?


          I don’t see why not.

          I was actually involved in a “situation” where the patent owner was served but declined to present a defense. The PTAB issued an order to show cause why the claims should not be held unpatentable over the art presented in the petition. Upon receiving no response, the PTAB rendered a final decision adverse to patentability.

      2. 17.1.2

        Regarding the role of the king: well things don’t seem to have changed much. Would the SCOTUS justices take an interest in things happening across the pond. For example this case (which went to the UK Supreme Court, but I have here linked to the judgment at the High Court):

        link to judiciary.gov.uk

        The link is to

        R (Miller) v. Secretary of State for Exiting the EU

        Which, according to the judgment is

        Between: The Queen on the application of (1) Gina Miller & (2) Deir Tozetti dos Santos – Claimants, -v- The Secretary of State for Exiting the European Union – Defendants.”

        This case exemplifies judicial review in the United Kingdom in the 21st century. So far I haven’t found information on the Web concerning the procedural aspects of this case, but the form of proceeding here is the successor to the petition of right. And, to proceed on a petition of right, and also in scire facias proceedings, the attorney general’s fiat was required. In the case of petitions of right, the writ had to be endorsed by the attorney general with the words fiat justitia (let justice be done). In particular, according to Lord Campbell, Lord Chief Justice of the Court of Queen’s Bench in 1853, in the case R v. Eastern Archipelago Company, on page 354:

        “The defendant’s counsel then rely on dicta, to be found in the books, that this fiat is ‘matter of right.’ It is matter of right to all who are justly entitled to it; but those only are justly entitled to it who suffer a prejudice by the letters patent, and the breach of the condition upon which they have been granted.”

        Source: link to books.google.ie

        (Lord Campbell had served as attorney general for several years before being appointed Chief Justice.)

        In the same case, pp. 332-3, Wightman J. said the following:

        “It is said, in Sir Oliver Butler’s Case, that the Attorney General is bound, ex debito justitiae, to give his assent to the prosecution of a scire facias, in the name of the Crown, by a private prosecutor, if such prosecutor has been injured by a patent, which may be avoided upon suggestion of facts which would defeat it.”

        One could quote other statements from other nineteenth century sources.


          Distant, thanks for that. But the fact is that an IPR petitioner may proceed without showing any injury.


            But the fact is that an IPR petitioner may proceed without showing any injury.

            One tidbit to add (that Ned often purposefully overlooks): this lack of standing in phase one (Forum One) was provided by Congress on purpose.


          Did anyone cite Stearns v. Barrett 1 Mason 153 in any Oil States brief. It is in the second (1822) edition of Fessenden, at page 303.

          Justice Story interpreting section 10 of the 1793 act.

          Discussion seems to be spread over pages 301-326.

          Fessenden (2nd edition, 1822) at 311:

          Justice Story: “After considerable hesitation, I have come to the conclusion, that the proceedings on the rule nisi are not conclusive; and that the procss to be awarded upon making the rule absolute, is not a final process, but a judicial writ in the nature of a scire facias at the common law.”

          URL opening at page 303 is here:

          link to books.google.com

          (A web search brings up 19th century citations of Stearns v Barrett, but hardly any modern citations, and no modern discussions in briefs that I can spot in the first few pages of search results.)


            Numbers of briefs cited ex parte Wood & Brundage (1824), a Supreme Court case that held that actions to revoke patents under Section 10 of the ’73 Act were like the the common law writ scire facias and, for that reason, had a right to a trial by jury. See, e.g., Oil States Brief at *55.


              But, as we know, the reason the writ scire facias has a right to a trial by jury was because they were common law writs.


            Query (to Ned presumably, in view of Assuming, arguendo, that an actual injury, or threat of legal proceedings, or something similar, is necessary under the U.S. constitution in order to initiate proceedings in Federal courts, was Section 10 of the 1793 act constitutional?


              Yes, because standing was, and still is, determinable by a court upon filing. Standing is jurisdictional in nature.


          Concerning Privy Council consideration of Dr. James Fever Powder patent in 1753

          There is recent discussion in Dr. Sean Bottomley’s book and in the Addendum to the amicus brief by Gómez-Arostegui and Bottomley. These sources identify some of the privy councils documents in question. Prof. Gómez-Arostegui’s website at http://www.copyrightcases.org links to Privy Council records on the Anglo-American Legal Tradition website at the O’Quinn Law Library of the University of Houston Law Center here:

          link to aalt.law.uh.edu

          Some deep links follow. obtained using the information provided by Gómez-Arostegui and Bottomley, supplemented by further ferreting around on the AALT website.

          Consideration of the petition by Walter Baker requesting annulment of Dr. James Fever Powder patent by the “Committee of the Council for hearing Appeals from the Plantations &c.” on February 10, 1753:

          link to aalt.law.uh.edu

          Membership of the committee on that day consisted of the Lord President of the Council, four noblemen and Edward Willis, Lord Chief Justice of the Court of Common Pleas.

          Letter from the Council Office, Whitehall, dated May 21, 1753, concerning a petition by Walter Baker to have a clerk of the Privy Council attend a law court with the affidavit of Dr. James, to serve as evidence in a perjury case:

          link to aalt.law.uh.edu

          Report of the law officers regarding this petition, (June 23, 1753):

          link to aalt.law.uh.edu

          Dismissal of Walter Baker’s petition by order of the King in Council, August 10, 1753:

          link to aalt.law.uh.edu

          To quote:

          “His Majesty, having taken the said Petition into Consideration together with a Report made by His Majesty’s Attorney and Solicitor General thereupon is pleased with the Advice of His Privy Council to Order that the Petition of the said Walter Baker Be, and is hereby dismissed this Board.”

          Further observations.

          At the meeting at which the committee “for hearing appeals from the plantations etc.” considered the petition of Walter Baker requesting that Dr. James’s patent be annulled, it also dealt with some judicial business:

          Antigua. The Lords of the Committee this day took into Consideration the revived Appeal of John Dunbar Esqr. and others against Henry Webb Esqr. Attorney General ofthe Leeward Islands and others from Antigua, and having heard Counsel in Part thereupon adjourned the further Hearing of this Appeal to Friday, the 16. of this Instant at the Six of the Clock in the Evening.”

          This is minuted at the following URL:

          link to aalt.law.uh.edu

          This is of course the very committee of the Privy Council that considered appeals made to the King in Council from judgments of the law courts of the American colonies.

          For more information see Holdsworth A History of English Law, volume 1, at 516-518, viewable online at the following URL:

          link to archive.org

          I would also add, that so far, I have not come across any document or citation of any document to substatiate any claim that the Privy Council took any formal “decision” to “cede” authority over patent matters or establish any “concurrent jurisdiction” around that time. This is what James Oldham had to say, in his book English Common Law in the Age of Mansfield, at p.199, note 47:

          “Hulme presents a somewhat speculative theory in “Privy Council Law,” 193-95, positing a constitutional quarrel arising out of the Privy Council’s refusal to produce an affidavit in a patent case on the advice of the Attorney General Murray. It seems equally possible that the shift in jurisdiction occurred for les dramatic, practical reasons as the number and complexity of patent applications increased.”

          To me, without any shred of documentary evidence to support it, Hulme’s “somewhat speculative theory“ is mere fanciful speculation.

      3. 17.1.3

        And what makes this so doubly sad is that all of their amici support emphasized either that patents were property making their revocation the issue, or that the remedy of revocation was the most important aspect for determining Article III or Seventh Amendment rights.

    2. 17.2

      McCormack Harvesting: “[t]he only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.”

      Quote is the subject of a posting on Patent Docs which has attracted a number of comments:

      link to patentdocs.org

      How should one construe vest?

      My initial understanding is that either one was in undisputed possession from time immemorial or else that the right, authority etc. has been assigned by an irrevocable grant. This seems at least consistent with what online legal dictionaries I have consulted.

      The US Congress can grant jurisdiction or authority to a legislative Article I court where it is lawful and constitutional to do so. But I would presume (though more than willing to stand corrected) that, for example, the jurisdiction and authority of the Court of Federal Claims is not vested in that court, but might be withdrawn by a subsequent act.

      A nice point anticipating possible objections: Congress can establish inferior Federal Article III courts and determine their jurisdiction and proceedures, but the judicial power is then vested collectively in the Supreme Court and the inferior courts established by Congress, and derives from the Constitution, not from the Executive and Legislative branches. However my understanding is that the constitutional position of legislative courts is different.

      1. 17.2.1

        Distant, your reading is the only tenable reading of that passage. It is regrettable that Oil States has adopted the position of the other side, and that of Federal Circuit, that the problem the Supreme Court had with an examiner canceling claims of an issue patent without the consent of the patent owner is that there was no statute authorizing it.

        Oil States is doing a lot the damage its, and our own position. It almost seems like they are Trojan horse.

  2. 16

    In view of the obsession with IPRs on all patent blogs, note the significant 11/20/17 article “A Deep Dive in Petition Filing Stats” from the Sterne Kessler firm. For the first time in more than two years, they observed a significant dip in the number of new patents challenges at the PTAB in the last quarter year. Only lightly over 200 patents were hit with their first PTAB petition between July and September 2017, the fewest number of new patents challenged by any IPR in any quarter in nearly 3 years. Likewise, the lowest total number of IPRs (392) filed in this latest quarter since the first quarter of 2016. [Total IPRs includes plural IPRs on the same patent from plural defendants or IPRs against different claims.]
    Through the end of September there have been 7,558 total PTAB petitions, but the total number of patents challenged by IPR petitions was 4,580 – an average of 1.65 IPR petitions per patent. Two-thirds of IPR challenged patents have just one IPR petition. Most patents named in multiple petitions have faced only two separate challenges, but there are three patents that have been challenged over 20 times.

  3. 15

    Deener is actually very relevant to computer related inventions. In Deener there is a method of grain processing and the Justices say that the particular machines to perform the various function steps do not matter, but that it is the combination of the functional steps that are patentable. They also say that it should not matter which type of grain is used.

    Pretty close to software. Think of a bit of represented information as a grain of wheat.


          I’ve got lots more.

          If you need more, just ask. Asking is easy!

          Think of a request for information as a zinc cylinder.



            I’ve got lots more

            Not to speak for Bguy, but I believe that the “more” that he is looking for is NOT the type of “more” that you have “lots more” of.

            When you are able to provide inte11ectually honest and substantive content that is on point, THAT is the difference that commentators are looking for.

            More of the same blight (lots, little, whatever) that you have been plaguing these boards with for the better of the last eleven and half years is NOT what is desired.

      1. 15.2.1

        I eat bowls of processed information every morning. Goes great with milk, which I think of as bingo management instructions.

      2. 15.2.2

        Oh come on 6. I thought better of you. MM has become a parody of himself, but you have become more respectable.

    1. 15.3

      Night, this pretty much is what happened in the British Nielsen case as well. It was ultimately decided that the form of the device heating the air between the bellows and the furnace was substantially irrelevant. What was important, however, was that the heating did take place and that it provided hot, as opposed to cold, air to the furnace from the bellows.

  4. 14

    “a commission of intelligent experts and practical men to report their opinion thereon, with their reasons, for the final action of the court” That certainly doesn’t describe my experience with IPR boards. Oh, they may look good on paper, but when they clearly have little knowledge of the subject matter at hand they shouldn’t be opining on what a PHOSITA would/could do without any supporting evidence.

    1. 14.1

      Alan, indeed. There is no guarantee that the panel deciding an IPR has any expertise in the subject matter of the patent whatsoever. In contrast, experts testifying in court and/or advising the court normally have significant experience in the field and can provide reliably intelligent comment on the technology and on the patent.

      1. 14.1.1

        Apples and oranges Ned. The conflicting hired gun experts of both parties in both IPRs and D.C. trials are not the judges or fact finders in either proceeding.
        In contrast to almost all D.C. judges and every juror I ever heard of, the three APJs in an IPR all have technical undergraduate degrees, law degrees, and patent law experience, including knowing how to read patent claims vis a vis prior art patents. Which is the main reason why their reversal rate by the Fed. Cir. is much lower.


          Sounds like you are making an argument for a special patent trial court, which if housed in the judicial department might pass muster, and maybe you could get around the 7th amendment by making it a opt in court for the patent owner. If Oil States strikes down the IPR star chamber – maybe congress would create such a court.


            maybe congress would create such a court.

            …and it would need be Congress that makes that change (in contrast to some of the earlier Amici thinking that the courts could “redraft” the AIA in some attempt to save IPRs).


            I think that the creation of such a court is the best option Congress will have once Oil States tosses the current IPR regime.

            (1) Create a specialized set of Art. III district courts that handle nothing but validity issues. These cases can only originate out of an infringement suit or DJ action filed in another U.S. district court. That is to say, the parties would file in one court, and when the infringement defendant or DJ plaintiff asserts invalidity as a defense, the original judge refers the validity contest to one of these specialty courts. Ideally, the specialty court system would be organized by subject matter expertise (courtroom 1 handles pharma case, courtroom 2 handles mechanical devices, etc).
            (2) Amend the FRCP to allow the same scope of discovery in these courts as the current IPR system allows.
            (3) Specify in the enacting statute that the judges for this specialized set of courts must be licensed to practice in front of the USPTO, which will have the effect of requiring a minimum measure of science training and familiarity with substantive patentability law.
            (4) Set a hard 18-month start-to-finish time limit on actions in front of this court. This will necessitate that these district courts have the authority to refer a given matter back to the originating district court if the issues in a given suit look too complicated to manage in 18 months.
            (5) Allow for appeal only to the CAFC—no collateral attack on one district court’s verdict in another district court. Also, no right of remand. The CAFC gets to affirm or reverse, but no loop-holes to evade the 18 month limit.
            (6) Structure the cause of action in these courts as a suit against the PTO to rescind the patent. The patentee can then be joined as an interested party, to defend the patent’s validity if the patentee so choose. On the other hand, the patentee can, at its option, decline to participate, and leave the defense of validity to the government. Because this is a suit against the government, the ‘sovereign immunity’ exception to the VII amendment applies, and therefore no juries are necessary (or permitted) in this court.


              I forgot point #7

              (7) The FRCP should be amended to specify that a defendant (or DJ plaintiff) pleading invalidity should be limited to two grounds of invalidity. There may be eighty reasons why these claims fail, but only one is necessary, so pick your best (or two best) and move forward on that one or those two. Once the validity trial is resolved in the specialized district court, that is the end of validity challenges by this party (or its privities) against this patent.

  5. 13

    Very interesting, Dennis. Our brief quotes Madison:

    In urging the establishment of a Patent Office, even supportive founders recognized that wrongful claimants would be highly motivated to seek these
    limited monopolies and that the onus was on the Executive to restrain and police such [post-grant] practices. See Letter From James Madison to Congress, April 11,
    1816 (“I recommend . . . that further restraints be imposed on the issue of patents to wrongful claimants, and further guards provided against fraudulent exactions of fees by persons possessed of patents.”)
    available at
    link to presidency.ucsb.edu

    1. 13.2

      Is that a policy argument for something like loser pays? Or an argument that patents are the red headed step child of the Constitution and Star Chambers are just the right answer because there was an policy reason to create a patent office? The creation of a patent office – hence patent examination – was in response to the registration system – no?

      1. 13.2.1

        I could not tell what Jonathan was actually going for, as his link just led to the landing page (and not to the details of what Madison may or may not have been talking about).

    1. 12.1

      Oil States reply brief on pp.15-16 puts particular emphasis on the word exclusive in (presumably) the following quote from Stern and Marshall. (The page numbering on justia.com is not given, and the quote from Northern Pipeline occurs three times in Chief Justice Roberts’s opinion of the Court in Stern v. Marshall.)

      The significance of this: it is surely undeniable that, whatever jurisdiction the Crown or the Privy Council might have had in 1791 to revoke letters patent for inventions (if indeed they had any), scire facias actions in common law courts were by then established and therefore nobody can claim that the “executive” or ”legislative” branches of the U.K. polity (to the extent that they can be separated out) had exclusive jurisdiction.

      Quoth Roberts, C.J.:

      “It is not a matter that can be pursued only by grace of the other branches, as in Murray’s Lessee, 18 How., at 284, or one that “historically could have been determined exclusively by” those branches, Northern Pipeline, supra, at 68 (citing Ex parte Bakelite Corp., 279 U. S., at 458).”

      1. 12.1.1

        It is interesting that Ted Olson, who won the case Bush v. Gore, and also who won the case involving the constitutionality of gay marriage, and the author of the Dell brief, exactly flipped the logic used by Justice Roberts in Stern. Ted Olson said that in order to have Article III rights, the matter had to be exclusively tried in the courts of law.

        This is just one of many many many many many many many many many many “misrepresentations” Mr. Olson made to the Supreme Court about the state of law, especially that of the English law. It is if he never read the historians brief, and could bluster is way through without anybody actually inspecting his bald assertions and misrepresentations.

        The commentary to today over as Scotusblog about Oil States noted that it had 57 amici, a number not seen by the Supreme Court in years, and this was a commercial case, not the kind and normally draws a lot of attention.


          This is just one of many many many many many many many many many many “misrepresentations”

          Welcome, Ned, to my world and dealing with those who are anti-software, anti-business method, and generally anti-patent.


          The great SCOTUS bar. They are way more jaded than the rest of us. But I guess if you can conjure up new rights, what’s a little fudging on history. They know, more that most, these cases are vessels into which policy will be poured into, reasoning can be found later. The ‘naturally’ occurring BRCA case come to mind, you know since it’s found in nature, it can’t really be discovered, since it was always present. Breyer sounded like the fool opining on the science.


            Breyer sounded like the fool opining on the science.

            I am not quite understanding this comment, because Justice Breyer did not author the Myriad opinion (or even write separately to concur).

            Do you mean during oral argument? They all sounded like fools then, and Breyer was not the worst of them (that dubious distinction goes to Justice Sotomayor’s chocolate-chip cookie analogy). Or are you thinking of Breyer’s half-baked understanding of the science in Mayo?

  6. 11

    BASF Corporation v. Johnson Matthey Inc., link to cafc.uscourts.gov


    The Federal Circuit has taken a great step in the right direction. Noting that the invention in this case was in the novel combination of two known compositions, the court held that it was not indefinite to define the known compositions in terms of their properties – functionally. Thus they allowed a claim to compositions that were effective to produce a certain result to be proper, and such claim was construed to cover compositions known to those skilled in the art to be effective for the purpose.

    The problem with the Federal Circuit’s prior jurisprudence in this area was that it considered the functionality of a claim totally outside of any consideration as to what the invention was and, in particular, whether the functionality was at the point of novelty. The Supreme Court only has problems where a point of novelty is being claimed functionally, i.e., such as with “old combination” where one of the elements is improved. The Federal Circuit, until this case, has not really understood the issue. It has never before, to my knowledge, considered what the invention was and whether the particular elements being claimed were old before deciding the issue of indefiniteness (or enablement, or patentable subject matter).

    1. 11.1

      Windmill Ho!

      From the linked case:

      The court first described the functional character of
      the claim language. But the Nautilus standard of “reasonable
      certainty” does not exclude claim language that
      identifies a product by what it does. Nothing inherent in
      the standard of “reasonable certainty” precludes a relevant
      skilled artisan from understanding with reasonable
      certainty what compositions perform a particular function.
      Not surprisingly, we have long held that nothing in
      the law precludes, for indefiniteness, “defining a particular
      claim term by its function.” Hill-Rom Servs., Inc. v.
      Stryker Corp., 755 F.3d 1367, 1374–75 (Fed. Cir. 2014);
      see Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838
      F.3d 1224, 1232 (Fed. Cir. 2016) (explaining that claims
      “are not per se indefinite merely because they contain
      functional language”), cert. denied, 137 S. Ct. 2267 (2017);
      Microprocessor Enhancement Corp. v. Tex. Instruments
      Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (explaining that
      “apparatus claims are not necessarily indefinite for using
      functional language”); In re Swinehart, 439 F.2d 210, 212
      (CCPA 1971) (ruling that “there is nothing intrinsically
      wrong with the use of such a technique in drafting patent


      The district court’s footnote adds nothing helpful to
      Johnson. It credits Dr. Epling’s assertion that “a practically
      limitless number of materials” could catalyze SCR of
      NOx, and it treats that scope as “indicating that the
      claims, as written, fail to sufficiently identify the material
      compositions.” J.A. 5 n.5. But the inference of indefiniteness
      simply from the scope finding is legally incorrect:
      “breadth is not indefiniteness.” SmithKline Beecham
      Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir.
      2005) (internal brackets omitted).

      Notably, the phrase “Point of Novelty” is NOT in the case.

      1. 11.1.1

        Notably, the phrase “Point of Novelty” is NOT in the case.

        They didn’t use that phrase but they definitely did note that the identity of the catalytic materials (which were also taught in the specification, by the way — a fact that should not be ignored) was not the invention.



          You comment has no relation to the points currently under consideration in this dialogue.

          But thank you for a comment without ad hominem. That’s a plus.

      2. 11.1.2

        The BASF holding sounds like the holding as the case we are discussing Cochrane v. Deener, 94 U.S. 780 (1877). A method claim is always going to be ‘functional’ in it’s claim language, heck it’s probably not enabled if it doesn’t profess a function.

    2. 11.2

      “The district court’s analysis does not consider that the
      specification makes clear that it is the arrangement of the
      SCR and AMOx catalysts, rather than the selection of
      particular catalysts, that purportedly renders the inventions
      claimed in the ’185 patent a patentable advance over
      the prior art. As a result, the claims and specification let
      the public know that any known SCR and AMOx catalysts
      can be used as long as they play their claimed role in the
      claimed architecture. ”

      BASF CORPORATION v. Johnson Matthey, at *11.

  7. 10

    Standard disclaimers, IANAL etc.

    Cochrane v. Deener is on the web here:

    link to supreme.justia.com

    Mr. Justice Bradley’s opinion starts with a discussion as to whether a court sitting in equity can award a final injunction without a verdict at law.

    For comparison purposes, it might be instructive to compare the English case Hill v. Thompson and Forman, 3 Meriv. 622, 36 E.R. 239 (Ch.
    1817), in Webster’s Patent Cases (1 W.P.C. 229) here:

    link to books.google.com

    My survey of the report (again IANAL etc.) below.

    Newly-granted patent relating to the smelting of iron.

    Plaintiff sought an injunction in the High Court of Chancery (sitting in equity). A preliminary injunction had been obtained “upon the filing of the bill, until answer or further order”.

    Defendants moved to dissolve the injunction. After much argument:

    “Lord Eldon, L.C., said, he doubted whether the injunction ought to have been granted in the first instance, unless the affidavits had stated more particularly in what the alleged infringement of the patent consisted;[…]”

    “The principle upon which the court acts in cases of this description is the following: Where a patent has been granted, and an exclusive possession of some duration under it, the court will interpose its injunction, without putting the party previously to establish the validity of his patent by an action at law. But where the patent is but of yesterday, and, upon an application being made for an injunction, it is endeavoured to be shown in opposition to it, that there is no good specification, or otherwise that the patent ought not to have been granted, the court will not, from its own notions respecting the matter in dispute, act upon the presumed validity or invalidity of the patent, without the right having been ascertained by a previous trial, but will send the patentee to law, and oblige him to establish the validity of his patent in a court of law, before it will grant him the benefit of an injunction. […] Here I cannot but entertain a doubt, whether the improvement as to the lime destroying the ‘cold short’ is, or is not, a new invention, but that is not for me to decide; […] ”

    The result of this first legal proceeding:

    “His Lordship accordingly dissolved the injunction; but directed that an account should be kept of slags used and iron made by the defendants, according to the method described in the specification, the plaintiff undertaking to bring an action; with liberty to apply to have the injunction revived after trial of the action, or in case of any unreasonable delay being interposed on the part of the defendants.”

    So the matter moves to the common law courts. But note that the Lord Chancellor does not himself refer the case to the law courts for trial. The plaintiff undertakes to bring the action; and the quid pro quo for that undertaking is that the defendants are “directed” to keep strict accounts so that the plaintiff is in a position to recover profits if he succeeds in an infringement action in the law courts.

    The trial at law is Cor. Dallas, J. Mich. Vac. 1817. [Holt, N.P.C. 636; 2 B. Moore, 429; 8 Taun. 382.], in 1 W.P.C. 232.

    “Dallas, J.: Left it to the jury to say, whether the plaintiff had made out the novelty of the invention or improvement for which the patent was taken out; namely, the conversion of slags into good bar iron, and the prevention of the quality called ‘cold short,’ by the application of lime.

    “Verdict for the plaintiff”

    This verdict did not end the proceedings at law. The defendants could, and did, move in Chancery for a “rule” to have the jury verdict quashed and a new trial granted.

    During the resulting interruption to legal proceedings, the plaintiffs moved to have their injunction revived [3 Mer. 626, WPC at page 235]. According to the plaintiff, “The verdict of the jury was also stated to be conclusive as to the matter of fact, and the application now made as of course, and such as the court could not refuse, without taking upon itself to meddle with what was the exclusive province of a court of law.” The defendants of course argued against this position, and in their
    reply, the plaintiffs claimed that “the verdict pronounced agreeably to that direction gave a prima facie right to the plaintiff, upon which the court could not refuse to act.”

    The Lord Chancellor gives his reasons for not granting an injunction in response to the jury verdict. Interestingly, Lord Eldon suggests a “written description” requirement, but not of course deciding the point of law (which was not his to decide), but in the course of giving his reasons for not awarding an injunction:

    “In his directions to the jury, the judge has stated it as the law on the subject of patents—first, that the invention must be novel; secondly, that it must be useful; and thirdly, that the specification must be intelligible. I will go farther, and say that not only must the invention be novel and useful, and the specification intelligible, but also that the specification must not attempt to cover more than that which, being both matter of actual discovery, and of useful discovery, is the only proper subject for the protection of a patent. And I am compelled to add, that if a patentee seeks by his specification any more than he is strictly entitled to, his patent is thereby rendered ineffectual, even to the extent to which he would be otherwise fairly entitled.”

    But this (what to me at least seems to be a) “written description” requirement was, according to the Lord Chancellor, a question of law, not of fact:

    “Now, the utility of the discovery, and the intelligibility of the description, &c., are all of them matters of fact proper for a jury. But whether or not the patent is defective in attempting to cover too much, is a question of law, and as such to be considered, in all ways that it is convenient for the purposes of justice that it should be considered.”

    Later, the Lord Chancellor said:

    “And when I see that this question clearly arises, the only other question which remains is, whether I can be so well satisfied with respect to it as to take it for granted, that no argument can prevail upon a court of law, to let that first question be reconsidered, by granting the motion for a new trial. If this be a question of law, I can have no right whatever to take its decision out of the jurisdiction of a court of law, unless I am convinced that a court of law must and will consider the verdict of the jury as final and conclusive. […]”

    In conclusion, the Lord Chancellor explained why the balance of hardship favoured the defendants, and therefore order that the matter be left to stand over till the following legal term, to give the law court the opportunity to rule on the application for a new trial.

    Back to the law court, specifically the Court of Common Pleas,
    Trin T. 1818. [8 Taun. 382; 2 B. Moore, 433.], 1 W.P.C. 239.:

    Lens, Sergt. in Hilary Term last, obtained a rule nisi to set the verdict aside, and to enter a nonsuit, or have a new trial; first, on the grounds urged at the trial; secondly, because the verdict was against evidence, inasmuch as it had been proved that lime had been applied […]”

    In the opinion delived by Dallas J., the gist seems to have been that there was plenty of evidence to support prior use and the witness testimony was not sufficient to support the verdict.

    Outcome: “ Rule absolute for a nonsuit.”

    (Seems to me to be the early 19th century English, and perhaps, U.S. version of JMOL.)

    1. 10.1

      …to be contrasted with the distinctly different US sovereign approach of the presumption of validity at a Clear and Convincing level…

  8. 9

    MM attempts a deflection by trying to make hay about who the members of the commission would have been more than a century ago, but, once the dust settles, you realize (once again) he deflects the issue (Mr. Barbarino indeed)–in this case, that a qualified commission is better able than the Supreme Court to consider patent law. Anyone (but him) will look at 101, and the “guidance” provided by the USSC, and know it as a fact. But, somehow, we collectively are dumber than 150 years ago. . .

    1. 9.1

      Except that you don’t need a deep background in science or patent law to reach or appreciate the holding in Prometheus v.Mayo. All you need to do is set the kool aid down and look at the absurd position taken by Prometheus and its “experts”. It’s all right there in black and white. “Guidance” wasn’t what was called for. What was called for was the hammer, and that’s what was delivered.

      Next up: logic is ineligible for patenting. So what to do about instructions for machines whose sole purpose is to apply logic to data?

      This isn’t difficult stuff. But if you’re a baby addicted to the bottle, well … tears will fall.

      1. 9.1.1

        More dissembling on logic, eh Malcolm?

        Tell me about “logic” and the ability to garner copyright protection for certain aspects of software.

        Especially since one cannot copyright “logic.”

        Since – clearly there is “something more” – your continued pretending otherwise is disingenuous. In fact, such is morally bankrupt, as this is NOT a new proposition for you, and yet you persist in attempting to spread such fallacies.

  9. 8

    Well, the “practical men” thing is entirely consistent with “English common law” circa 1787 which is, of course, The Greatest Law Ever in the History of the Universe. Juries were limited to males only because of the “defect” inherent to the female species.

    These were very enlightened people! And we must abide by their deep wisdom even today. The worst thing ever would be try for some deeper understanding. If some be-wigged dudes back in 1784 said that something called a “patent” could only be revoked by a court (even where the evidence for that is highly dubious) then darn it all we just have to bow down and obey, regardless of how silly it makes us look. As long as some rich white guys get to celebrate for a few weeks, we should just be happy. Maybe some coins will fall out of their pockets while they wave their pompoms around. That happens sometimes, right?

      1. 8.1.1

        Your ISMs are showing.

        So are yours.


        You going to stamp your little feet and fill your diapers again?


          Says the guy stamping his little feet and filling his diapers..

          That Accuse Others meme in action…

      2. 8.1.2

        Over a July dinner with Oracle CEO Safra Catz — who has been mentioned as a candidate for several potential administration jobs — McMaster bluntly trashed his boss, said the sources, four of whom told BuzzFeed News they heard about the exchange directly from Catz. The top national security official dismissed the president variously as an “i d i 0 t” and a “d 0 pe” with the intelligence of a “kin der gar t ner,” the sources said.

        Everybody knows that what Catz says is true. But for some people — including a lot of the patent maximalists who tr 0ll this blog — that doesn’t matter. Go figure. But they’re very serious people! Super important and, in their own minds, they make the world go around.

        It’s not difficult to pull all this together. What’s difficult for some is just facing the music. Entitled little pieces of r@ cist mis0 gynist shirt clinging to their shrinking power. I can’t wait until they die. And they’re going to die! Just like the dinosaurs.


            Your feelings have ZERO to do with patent law

            Not really “my feelings” but the shared views of many many many other people who are watching closely. Of course it’s exactly like you to stick your head in the sand and pretend otherwise. I mean, this moment in history is just like every other moment, right? Nothing to see here. Move right along folks and just let these disgusting pi gs collect their cash at your expense. Nature’s way!

            Now please take yet another moment to inhale your own f@ rts and cast a super serious “protest vote”. You’re a very important person in your own mind!


              Wow, such amazing insight. Inhale your own f@ rts. When did you drop out of school… Fifth grade?


              Those ARE your feelings (you are the one doing the posting) and they STILL have nothing to do with patent law or patent law issues.

              Your reply totally misses.

              As usual.


          MM, what would you do if you found that employee of yours was saying very nasty things about you to others?


            MM would promote them as long as the very nasty thing that was being said about him was that he was a raycyst.


          “BuzzFeed News”

          MM is now a buzzfeeder lol.

          “The top national security official dismissed the president variously as an “i d i 0 t” and a “d 0 pe” with the intelligence of a “kin der gar t ner,” the sources said”

          Yes yes, and he somehow made it through the ivy league, and then made billions over the course of his life where most everyone else in his shoes just goes broke. We know, buzzfeed and McMaster are jelly to his peanut butter.

    1. 8.2

      Your self-hatred is unwarranted, MM. You’re actually a good guy.

      The Supreme Court was making a fairly simple, objective, and irrefutable point–that lay juries and courts are often ill-equipped to decide the specialized issues that come up in patent cases. The truth of that statement has increased with every passing year, as the complexity of the technology has increased and moved further and further away from anything jurors encounter in their daily lives. It’s very difficult to defend entrusting a lay jury to deciding whether software or biological patent claims are valid, when they don’t even understand the basics of how computers or biological cells work. I’ve seen patent trials where experts get up on the stand and make ridiculous statements about even basic science and technology that would be laughably wrong to anyone with knowledge in the field, yet the jury has no base of knowledge to know that they’re being duped, even on the most basic things.

      But your rhetoric is the kind of response I’d expect from a first year snowflake freshman at U.C. Berkeley who can find racial and gender “code” in any statement.

      1. 8.2.1

        The Supreme Court was making a fairly simple, objective, and irrefutable point–that lay juries and courts are often ill-equipped to decide the specialized issues that come up in patent cases.

        Right. I’m not responding to that. I’m responding to the patent maximalists who are crying fake crocodile tears over the OH SO UNFAIR! US patent system which permits their junky patents to be nullified by the granting agency upon a showing that the granting agency made an error.

        I though that was pretty clear from my comment but maybe it wasn’t as clear as it needs to be.


        You’re the snowflake. You haven’t figured out that yet? Go ahead and cry me a river about “political correctness” you p@ thetic little c r ee p.

      2. 8.2.2

        “Your self-hatred is unwarranted, MM”

        MM isn’t ethnically “white” so it isn’t self ha tred. He just has white skin tone.

  10. 7

    The case is about a court of equity being able to decide infringement and validity and whether the case MUST be referred to a court of law first. The passage cited, as often done in the writing style of the time, is the opposite of the holding (the court says the invention is understandable and the facts are basically uncontested) going on to hold the patent valid and infringed and others not infringed. Citing the new statute that a court in equity may empanel a jury of not less than 5, for contested issues of fact, and treat that the same as a court of law.

    1. 7.1

      From the case:

      In the present case, we see no special reason for sending the case to a court of law or to a jury for trial. There are no such issues depending upon the credibility of witnesses, or on the intricacy of machinery, as to make the case susceptible of easier solution or greater certainty as to the truth before such a tribunal than it admits of when presented to the consideration of a chancellor. It would perhaps be desirable if all cases of this sort could be referred to a commission of intelligent experts and practical men to report their opinion thereon, with their reasons, for the final action of the court. A proceeding of this kind was probably in the mind of Congress in passing the act of Feb. 16, 1875, authorizing a reference to a jury of five persons. Neither courts nor ordinary juries are perfectly adapted to the investigation of mechanical and scientific questions. The court below, however, exercised its discretion to decide the case upon its merits, without the aid of a jury of any sort, and their action is not a ground of appeal. If we were convinced, however, that the case was not properly decided, and could not be properly decided without such a reference, we might undoubtedly, in the exercise of our own discretion, remand it to the court below for that purpose. But we see nothing in the questions raised which require that such a course should be adopted.

      1. 7.1.1

        I.e., a jury was not required to even be impaneled to invalidate a patent in an Article III court if there were “no such issues depending upon the credibility of witnesses, or on the intricacy of machinery.” [Like prior art patents?]
        Is this consistent with the regular practice of the Fed. Cir. in denying patent invalidity summary judgments due to mere assertions of “disputed facts?” [As they did in KSR, and got reversed, for example.] [Hasn’t that lead to many “abstract” unpatentable subject matter “workarounds?”]

    2. 7.2

      Iwasthere, the case really was about whether a court of equity could issue an injunction without a prior trial at law to consider validity and infringement. The English practice was noted that if the validity of a patent was raised as a defense that a trial by jury was necessary. Note, that such a trial appears not to have been necessary when the disputed issue was infringement.

      I think the main reason for this requirement with respect to validity was a Statute of Monopolies that required the validity of a patent to be tried by and under the common law – which meant in the law courts where disputed facts were always tried to a jury.

      While all of this might be interesting when considering cases where the patent owner is seeking only an injunction, in the case where the remedy being sought by the petitioner is to revoke a patent for invalidity, there is actually no question that such actions were always tried in the law courts into a jury in England, and not in courts of equity.

      Also, in the matter of the privy Council, I thought England, after the Glorious Revolution, had the rule of law. Thus, the crown’s power to invalidate a patent could only come from Parliament. But the only statute on the point, the Statute of Monopolies, specifically stated that patent revocation could only be voided pursuant to a judgment of the common-law courts courts.

      1. 7.2.1

        The Glorious Revolution may have severely circumscribed the Royal Prerogative, but did not abolish it. One could follow up on the final paragraph of Ned Heller’s comment 7.2 in a variety of ways.

        May I begin with one train of thought that has been in my mind for some time.

        Significant distinctive features of the law of patents for inventions in England developed in the late eighteenth and early nineteenth century through the opinions of Lord Mansfield, Sir Francis Buller and others. But what were the legal foundations on which their judgments rested? Surely not the Statute of Monopolies alone? Moreover neither the Statute of Monopolies nor any subsequent legislation had provisions relating to specifications. The English common law was very strict and rule-based, and had clear rules for the interpretation of legal instruments.

        Under the law, all grants of the Crown had to be matters of record, and letters patent were the standard legal instruments for grants of the Crown that impinged on others besides the grantee. In particular commissions, royal charters, rights to hold fairs and markets, rights to ferries, rights to collect turnpike tolls, rights to build lighthouses and collect light dues from passing shipping, rights to monopolies on pilotage into ports etc. etc. and much else were conferred through issuance of letters patent.

        Letters patent were legal instruments to be interpreted by courts of law according to rules similar to, but not apparently identical to, laws for resolving disputes over contracts and deeds.

        The Lords Chancellor, Justices and Barons of the superior courts of England could develop a body of jurisprudence relating to patents of invention precisely because the Crown had adopted boilerplate language in the texts of the letters patent that it issued. Because the boilerplate text varied so little from patent to patent, the judges of the common law courts could establish principles and precedents for resolving disputes over patents of invention.

        Letters patent for inventions had numerous provisos, and many of these were “defeasance” clauses. A web search on “defeasance” brings up a load of results connected with mortgages.
        But we find the following more general definition here:

        link to businessdictionary.com

        “Stipulation in an agreement which provides for its cancellation under specified conditions. For example, a defeasance clause in a deed of trust automatically causes the trust property’s title to revert from the trustee to the borrower when the debt is paid off.”


        Next let us consider a modern US invention patent. There is the image of one on the Wikipedia page here:

        link to en.wikipedia.org

        How might a late 18th or early 19th century English jurist construe this document?

        It might seem odd to them that the patent text does not begin with “To all to whom these presents come” followed by a sequence of “whereas” clauses. But the first paragraph does set out the preconditions allegedly satisfied by the patentee that ensure the lawfulness of the grant: “The Commissioner of Patents and Trademarks has received an application for a patent for a new and useful invention. The title and description of the invention are enclosed. The requirements of law have been complied with, and it has been determined that a patent on the invention shall be granted under the law”

        I suggest that the jurist, though finding the wording strange, would see this as incorporating compliance with Title 35 and other applicable legislation at the time of the grant as a necessary condition precedent for the grant, and would note that the letters patent allege on their face that these conditions have been satisfied. Were this not to be the case then the Sovereign would, in the language of English common law, would have been “deceived in its grant”.

        Then the contours of the grant are specified: the right to exclude others from making, using, selling or offering for sale the patented invention.

        There is also a proviso, which might be described as a “defeasance clause”: “subject to the payment of maintenance fees as provided by law”.

        There are also statements regarding the term of the patent.

        The effect of the “defeasance clause” is to ensure that the patent grant self-destructs, without the need for intervention by courts of law etc., if the maintenance payments specified by law are not kept up.

        As SCOTUS observed in
        Marbury v. Madison 5 U.S. 137 (1803), at 159, “But in all cases of letters patent, certain solemnities are required by law, which solemnities are the evidences of the validity of the instrument.“

        One of those solemnities is the “sign manual” of the Commissioner of Patents and Trademarks. Another is the counter-signature. A third is the seal of the USPTO.


        What I believe that the 18th or early 19th century English jurist would say is that, unless a proviso or defeasance clause kicks in, the sovereign, under principles of English common law, is bound by the grant unless it is proved in a court of law that either the grant is itself unlawful or else the sovereign was deceived in the grant. This reduces ultimately to showing that conditions of statutory subject matter, novelty, nonobviousness, enablement etc. have been satisfied.


        But English letters patent of the 18th and early 19th century are far more verbose, and contain a multiplicity of provisos, failure to comply with which would render the patent void. And I suspect that the English jurist would argue that there is a proviso relating to the six members of the Privy Council conditioning the grant, then it would be lawful to act upon it. Basically the freedom to contract. A clause in a contract between individuals, companies, corporations etc. requiring, for example, real or intellectual property to be transferred in a given contingency is surely enforceable in a court of law. And the same would apply to letters patent, though the special nature of such a grant, from a sovereign to a citizen or corporation, that impinges on the rights of other citizens and corporations, the rules for construing letters patent differ from those for construing grants and deeds.


          Distant, I think the problem is this: the role of the privy Council.

          Now the grounds for revocation by the privy Council remained the same as set forth in the Statute of Monopolies, but for the specification, so that the grant itself did not actually have to include in it the grounds set forth by the statutes. A patent granting a monopoly in a manufacture that had been in prior use would be illegal under the Statute. There is no need to have the grant clause recite this. These clauses must be seen been an artifact from a time prior to the Statute.

          The specification was developed so that the metes and bounds of the grant might be made certain, and also to enable artisans to practice the invention after its expiration. These might be considered common-law developments even though it was the law officers that originally made grants conditioned upon filing of an adequate specification.

          Thus there is nothing inconsistent in between the reservations clause and the Statute of Monopolies except for one thing: the role of the privy Council. Its continuation in adjudicating validity is plainly inconsistent with the the Statute. I think that, at the time, those involved with patent practice in England viewed the role of the privy Council with dismay. That is why for example, Thomas Webster was so vehement in his denunciation of the role of the privy Council in patent revocations:

          “A]ll monopolies, &c., to be void by the common law, has provided by this that they shall be examined, heard, tried, and determined, in the courts of common law, according to the common law, and not at the council table, star chamber, chancery exchequer chamber, or any other court of like nature, but only according to the common laws of the realm, and not otherwise. ”

          Webster, Thomas. Reports and Notes of Cases on Letters Patent for Inventions. Vol. 1. T. Blenkarn, 18 at 30.

          Thus, it is quite clear that having the privy Council stop interfering with patent validity was probably seen at the time as its compliance with the rule of law.


            Ned, with respect, I would argue against some of these positions.

            With regard to the Statute of Monopolies, I would pose the following propositions:

            No patentee issued with a patent of invention complying with the statute gained any rights from that statute other than the right not to be hauled into common law courts in order that their letters patent be invalidated as being “altogether contrary to the laws of this realm”

            No patentee issued with a patent of invention was placed under any obligation whatsover under the provisions of the Statute of Monopolies.

            Here is a link to the text of the Statute of Monopolies in a 19th century collection of statutes. One additional reason for giving this link is that there is much else in the book: other statutes relating to intellectual property, statutes related to trade with the colonies and foreign lands, plus commentary on the patent laws as understood at the beginning of the 19th century. In particular, there is discussion of the “patent bargain” on pages 9 and 10. Here is the URL:

            link to books.google.com

            Article VI reads as follows:

            “VI. Provided also and be it declared and enacted, That any declaration before-mentioned shall not extend to any letters patents and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working of any manner of new manufactures within this realm to the true and first inventor and inventors of such manufactures, […] provided that […]”

            Note that the scope of “any declaration before-mentioned” includes the following:

            “That all monopolies […] tending as aforesaid […] and the force and validity of them and of every of them ought to be and shall be for ever hereafter examined heard tried and determined by and according to the common laws of this realm and not otherwise.”

            There are also other important exceptions to the reach of the statute. I suggest that the inhabitants of 17th and 18th century England would consider articles VII and IX in particular as being at least as important if not more important than the provision excepting patents of invention.


            Also letters patent had been issued granting monopoly rights to those establishing new manufactures within the realm before the passage of the Statute of Monopolies.

            To me, this establishes that “patent rights” were not statutory rights created by the Statute of Monopolies, but were part and parcel of the rich tapestry of common law rights, including not only rights of possession of real property and chattels but also rights deriving from “charters”, “honours”, “liberties” and other “franchises”, and all the other rights that made medieval and Tudor England tick.

            So far as distinct rights for inventors could be said to have been “created”, the act of creation was, I suggest, the act of a sculptor, chipping away at a block of marble to remove the “odious monopolies” in order to create a valuable statue comprising patents of invention and many other types of patent grants that served the public interest.


            Secondly, to the best of my knowledge, the authority to issue letters patent, in England and Wales, and in many other jurisdictions, is on the basis of the Royal Prerogative, and does not derive from statute.

            Therefore I respectfully suggest that the inclusion of the conditions laid down in the Statute of Monopolies in the provisos of subsequent patents of inventions was not mere surplusage. It ensured that the grant was on its face in accordance with the provisions governing the exception in the statute and as a result (assuming all other statutory requirements were met) was on its face lawful: letters patent including such provisions could not be invalidated by the courts of law as being void, on the grounds that the grant itself was unlawful, provided that the patentee had truly met the conditions precedent and had complied with the provisos.

            I respectfully suggest that, to suppose that the English law courts would have looked directly to the provisions of the Statute of Monopolies, as laying down requirements that patentees were required by law to comply with, is to apply modern American legal assumptions to a significantly different constitutional setup.

            If it had been shown that the patentee was not the “first and true inventor” etc., then the law courts would rule that the king had been deceived in his grant, and the patent grant would accordingly be declared void, and the courts would order the surrender of the patent to the Chancery in order that it be cancelled.


              Distant, thanks for this insight. I understand now the importance of the revocation clauses.

  11. 6

    “for the final action of the court”

    This case is talking about a special tribunal created under the Article III system that would still ultimately report to an Article III court, not an administrative law hearing with no Article III judicial oversight.

    It’s more akin to a district court equivalent of the Fed Cir, not IPRs in the PTAB.

    1. 6.1

      It’s more akin to a district court equivalent of the Fed Cir, not IPRs in the PTAB.

      I cannot say that your reading of the passage is obviously correct. I would say, however, that I think that the best reformation of IPRs—when the Court rules the present IPR regime to be unconstitutional—would be to reformulate them as a special branch of the Art. III district court system. This would mean that there is a standing requirement for IPRs, but given that the overwhelming majority of IPRs in the present regime take place between parties in active litigation, the practical effect of this newly imposed standing requirement would be fairly slight. Meanwhile, the movement of IPRs over to the Art. III branch will easily settle the separation of powers issue, so that we will not need to worry about the precise contours of the outer limits of the “public rights” doctrine.

      1. 6.1.1

        so that we will not need to worry about the precise contours of the outer limits of the “public rights” doctrine.

        Hmm, by then that issue may have already been adjudicated.

  12. 5

    Is this unusual dicta-wish being quoted in an Oil States brief? [I don’t think it is in the Respondents brief?]

  13. 4

    An expert opinion provided to the court for consideration, or an expert opinion that takes the place of the courts?

    Dennis are you finally putting this together?

    I’m not optimistic.

    1. 4.1

      anony, at least Dennis kept the portion of the quote about “for final action of the courts.”

      Of course, a trial de novo would have to be available otherwise the “commission” would in fact be final arbiter.

  14. 3

    A handful of intelligent experts and practical men would be useful to “report their opinion”.

    Surely their passing on that knowledge would be useful to those entrusted with final determination of justice and whose considered weighing of that knowledge is both required and desirable.

    Given the choice, I would rather have my fate decided by 12 ordinary hard working and freedom loving people, whose solemn task is to weigh evidence and rely on expert testimony to render justice as between the parties, than a committee of state appointed (hand picked?) bureaucrats of unknown stripes, politics, and allegiances, tasked with pronouncing both so called fact and so called justice.

    Let the social scientists, statesmen, and politicians, and their chosen experts and social engineers, have their say, as I would have my scientists and engineers speak, in front of a wholesome group of bakers, accountants, farmers, miners, doctors, and storekeepers whom I would trust with determining justice in a free country.

    1. 3.1

      There is little doubt, anon 2, that the people behind IPR are, and have long been, in favor of taking patent cases out of the court system entirely. While they erect the strawman of the lack of technical expertise of the court and juror, the main objective is to put patent cases into the modern-day equivalent of the Star chamber/privy Council, where the court is entirely political and justice is served according to one’s wealth and power.

      Or perhaps a better analogy might be the “independent” judiciaries we see in countries where the party actually runs things.

      1. 3.1.1

        I don’t know – after listening to people trying to explain basic science to supreme court justices I don’t consider it a strawman at all. I also think this quote certainly says “take the place of” rather than “inform” particularly “for the final action of the court” seems to imply that what the committee is producing is the final action of the court.

  15. 2

    And it is interesting, is it not, that many courts actually consult their own experts?

    But no, rather than provide due process, the finality of judgments, the right to a jury trial, standing to prevent abuse of process, we must shred the Constitution and toss the issue of patent validity to a political court controlled directly from the White House that manipulates panels to achieve outcomes they desire. Such a political court system is obviously better for the entrenched interests that make America so great again.

  16. 1

    In that quotation, the most important words are “with their reasons”. The mere opinion of an expert is of no probative value.

    In English patent litigation, the heart of it is the x-exam by each side of the other side’s technical expert, on the content of that expert’s written report, delivered to the other side weeks before the trial. By proxy, each technical expert cross-examines the other, six feet in front of the nose of the judge.

    The judge has of course already read the two reports at leisure, before the trial begins.

    Why can’t all patent litigation be done this way?

      1. 1.1.1

        I recall an excellent DC trial court case exactly on this point concerning actions under 35 USC 145 as to the superior nature of live expert testimony and live cross examination vs. the dead letter of affidavits.

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