By Jason Rantanen
Oil States Energy Services v. Greene’s Energy Group: Inter partes review does not violate Article III or the 7th Amendment. Patents are public rights for purposes of this question. This holding is a self-proclaimed narrow one that “should not be misconstrued as suggesting that patents are not property for the purposes of the Due Process Clause or Takings Clause.” Thomas for the majority; Breyer with a concurring opinion (joined by Ginsburg and Sotomayor), Gorsuch dissenting (joined by Roberts). Opinion here: Oil States v. Greene’s Energy
SAS Institute v. Iancu: When the USPTO institutes an inter partes review, it must decide the patentability of all of the claims the petitioner challenged, based on the plain text of § 318(a). Gorsuch for the majority; Ginsburg dissenting (joined by Bryer, Sotomayor, and Kagan); Breyer dissenting (joined by Ginsburg and Sotomayor, and Kagan in part). Opinion here: SAS v. Iancu
Off to teach Administrative Law, so more to come later.
Update: Prof. Tom Cotter has a longer summary on his Comparative Patent Remedies blog: http://comparativepatentremedies.blogspot.com/2018/04/us-supreme-court-upholds-inter-partes.html
Speaking of the Constitution and public versus private rights issues…
Is there are Constitutional (public vs. private) law jurisprudence, in the context of a grant of something which is intended to be a property right (private-ish right), where the property right is time limited, for which the “public rights” issues surrounding the grant are time limited? i.e. that the period of revocation or period during which public interests supporting the “public right” give way to actual vestment?
I’m imagining (because I am not versed in constitutional or public vs private rights law) something like a principle that in such a context the public right surrounding grant must die away for the intended grant to come into fruition?
Any thoughts?
In the olden days this was generally captured under the view that an inventor’s natural right to their invention, an inchoate right, became a fully legal property right at the time of grant.
Supreme Court cases (well, take your pick which flavor now) even made mention of this passage at the time of grant and why that event was important to the nature of the property.
As how this applies to Franchises rather than Property, well, I am pretty sure you can guess and be accurate just as much as anyone else (under the rule of man as opposed to the rule of law).
So I guess patents are no longer considered Intellectual Property. They are an Intellectual Franchise.
Is there any accident to the word association that comes up most often with the word “franchise” is “McDonalds”…?
link to scotusblog.com
Ron Mann’s write up.
You always seem to like Mann, but when it comes to patent law, Mann is way out of his league, with much of his writing unmoored from any real understanding of this particular area of law.
Of course, given your “Ends justify the Means” logic, as long as anyone parrots what you want to hear, you are going to get all excited.
Two key points support the view that patents are matters of purely “public right.” The first is the notion, illustrated by quotations from earlier cases, that the patent is a “creature of statute law” that “take[s] from the public rights of immense value, and bestow[s] them upon the patentee.”
If patents are public rights because it “take[s] from the public rights of immense value, and bestow[s] them upon the patentee.”, what is land?
After all land is not created by any one unlike inventions. If inventions are bestowed by public to owner, then land is definitely bestowed by public to the owner.
link to en.wikipedia.org
“The Homestead Acts were several United States federal laws that gave an applicant ownership of land, typically called a “homestead,” at no cost. In all, more than 270 million acres of public land, or nearly 10% of the total area of the U.S., was given away free to 1.6 million homesteaders;….”
So do we have any private property rights left with this logic?
Two key points support the view that patents are matters of purely “public right.”
Er, the Court did not say that “patents are matters of purely ‘public right.'” That is your own mischaracterization of the opinion. The Court said that grant of a patent is a matter of public rights.
People really need to get past this bifurcative thinking on this subject. It is not an either/or situation. A patent is not purely public or private. It has aspects of both public and private rights. If you do not understand this insight from Oil States, then you really do not understand patents.
If patents are public rights because it “take[s] from the public rights of immense value, and bestow[s] them upon the patentee.”, what is land?… If inventions are bestowed by public to owner, then land is definitely bestowed by public to the owner.
Er, no. Land never starts by belonging to “the public.” Land starts by belonging to no one. Meanwhile, the Homestead Act did not distribute “public” land. It distributed government land. There is a real difference there. Just try showing up on a military base without authorization and saying “hey, this land belongs to the government and I am a citizen, so I own a joint interest on this property” and see how far that gets you.
This bifurcation is NEW. And the one swallows all meaningful aspects of the other.
That you (contimue) to not recognize this is most telling.
Given that nature of the so called “rights” at odds here (BTW real rights do not conflict) as between a public rights at issue surrounding granting and actual property rights (purportedly the aim of the grant)… would some time limit for revocation be appropriate?
Since the real right (property) is time limited, could not the issues surrounding grant (public rights) also be time limited?
e.g. a revocation within 3 years would be constitutional but a revocation after 3 would not?
SCOTUS did not do it this time, but since they like to legislate, who is to stop them from coming up with a time limit: when it comes to granting something which is supposed to be a right which eventually vests, the decision to grant in the public rights realm is time limited in its ability to be reversed.
Seems insane, but it fits the “logic”, no?
I do not think your thesis floats, as you must equate two things that are not equal.
I do not think that “constitutional” would control what you are trying to do.
Think (although under a different section of the Constitution, so the analogy only goes so far) of incontestability of Registered Trademarks….
as to “SCOTUS did not do it this time, but since they like to legislate, who is to stop them ”
Some of us refuse to let one branch arise above the Constitution (and so easily disregard the fact that ALL THREE branches are below the Constitution and its checks and balances). Get sleepy with the “oh well, SCOTUS is writing law again” – in areas that the Constitution explicitly provides for a different branch, and soon enough you have the Court believing that they are Supreme – even Above the Constitution.
By the way, I do believe that such was one of James Madison’s greatest fears…
I see that I have had a moment of weakness.
All I can muster up for now is a distant analogy of the most opaque and elliptical kind.
Breaking a specific principle through inadvertence or mistake is one thing, however, a breach of integrity; the conscious act of breaking with The Principle of Being Principled, is another matter altogether.
Ah, but not everyone shares that belief in The Principle of Being Principled.
“Men judge generally more by the eye than by the hand, for everyone can see and few can feel. Every one sees what you appear to be, few really know what you are.”
As I have often lamented, the Ends do not justify the Means – especially in Law (The Principle of Being Principled behind why we have law).
Most all of what I “fight” on these boards IS that lack of The Principle because the shortsightedness of “sight” is felt to be more important than the “what you are.”
Bottom line:
EITHER patents are not property (no matter the feeble dicta from Thomas),
OR Congress created (hiding an elephant in a mousehole) a NEW and separate right from that which most normal and learned patent attorneys understand as the patent right.
In the first case, one may see the Thomas attempt akin to Hans Brinker attempting to stop an unstoppable wave of necessary ramifications if indeed patents are not property.
In the second case, one may still have property (of a sort), but the Congress in-artfully created a new (parallel?) right that in all essence swallows up anything meaningful remaining of the property right.
In the second case, what we have is basically the ability to nullify ANY natural right (life, liberty, property – you know – the fundamental drivers of the great American experiment). All Congress has to do is create a “shadow” right – a public one – and that public one is a “right of challenge,” and since such fully fits into a “franchise” or “public” or however you want to label it, some administrative state could be created to SOLELY adjudicate the parallel, (shadow), “public” version while “technically” leaving the traditional Article III matter standing on its own and leave that shell to the courts.
In this manner, the Court here has actually contributed to a path of removing the judicial branch from meaningful adjudication of ANYTHING that the (bought) branch of Congress or the pure-political branch of the Executive may desire (and yes, Anon2, I also find this action to be ultimately puzzling for the Left Liberal philosophies).
This is complete gibberish and you (along with your fellow glibertarian nertcases) are the last people on earth to opine about what “normal and learned patent attorneys” understand about anything.
Typical Malcolm Accuse Others meme…
Imagine the following pre-AIA scenario:
Magni Corp and Lesti Corp both invent essentially the same radio transmitter. Each is operating independently of the other. Neither knows that the other has invented this radio transmitter. Magni files on 2 May 1954 and Lesti files on 4 May 1954. Lesti launches the product on the market on 2 Aug 1955 and Magni—caught by surprise—quickly launches its competing product a few weeks later on 18 Aug 1955.
Meanwhile despite the fact that Lesti filed after Magni, Lesti’s examiner is quicker off the ball, and by 2 Nov 1955 Lesti has its patent, while Magni is still waiting for its first office action. Lesti asserts its patent against Magni. Magni defends—unsuccessfully—on the grounds that Lesti’s claims are anticipated by a publication from one of Magni’s own employees. The court ends up concluding that Lesti’s patent is valid and infringed, and issues an injunction ordering Magni off the market.
Meanwhile, Magni’s patent prosecution attorney (who was not in communication with Magni’s litigation attorney) copies Lesti’s claims into Magni’s pending application, and an interference is declared. The result is that all of Lesti’s claims are held invalid by the BPAI under §102(g)(1).
Notice what has happened here. An Art. III court has sustained the validity of Lesti’s claims against a §102 challenge, and an Art. I tribunal (the BPAI) has subsequently come along and invalidated them under §102. In other words, the exact same phenomenon that is supposedly the seventh sign of the apocalypse of the U.S. patent system—viz., the ability of an Art. I tribunal to tank claims even after they were sustain by an Art. III court—was entirely permissible even pre-AIA. If this state of affairs constitutes the sure and certain destruction of constitutional democratic republicanism, it is odd that our constitutional democratic republic has persisted so long in the face of such strong poison.
Could it be, perhaps, that the critics of yesterday’s decision are overstating its significance just a mite?
Find an actual case where that scenario happened. Because under the old code, an interference proceeding would start anew after BOPAI was finished – rendering BOPAI opinion basically advisory. Once in trial court, with the full due process rights of witnesses and cross-examination, that court would have to power to apply res judicata and law of the case, etc. to resolve the issues between the parties. Just like any other scenario wherein two Art III courts need to resolve overlapping subject matter and claims. So your scenario is only part of the story concerning how interferences played out under the old code – and therefore, misleading and incorrect.
See my response below at 12:13 p.m. today.
I really don’t understand the majority’s discussion regarding McCormick. McCormick appears to me as clearly holding that the only forum available to invalidate a patent is a district court (absent consent of the patent owner). How could the following language be anything other than a holding regarding separation of powers: “to attempt to cancel a patent upon an application for reissue when the first patent is considered invalid by the examiner . . . would be in fact an invasion of the judicial branch of the government by the executive.”
See below for the full quote from McCormick
“Had the original patent been procured by fraud or deception, it would have been the duty of the Commissioner of Patents to have had the matter referred to the Attorney General with the recommendation that a suit be instituted to cancel the patent; but to attempt to cancel a patent upon an application for reissue when the first patent is considered invalid by the examiner would be to deprive the applicant of his property without due process of law, and would be in fact an invasion of the judicial branch of the government by the executive.”
I agree that the better reading of McCormick is that it was speaking of a constitutional difficulty, rather than merely describing a statutory reality. However, McCormick is not 100% clear on this point, and the Court here exploited that slight unclarity. Two points, in this regard: (1) the Court is not actually bound by its own precedents, even when they are 100% clear; and (2) this is hardly the first time that the Court has used a slight unclarity in its prior precedents to totally upend the real significance of the previous precedent. Funk Bros., for example, was decided on the basis of “invention,” which has historically meant “obviousness,” and yet both Chakrabarty and Myriad have styled Funk Bros. as a sort of subject-matter eligibility case. I agree that this sort of squirrliness is regrettable and unsettling, but it is rather par for the course with this Court.
Reason 1,000,001 why it would be better if the Court were simply stripped of jurisdiction over patent cases.
Two points, in this regard: (1) the Court is not actually bound by its own precedents, even when they are 100% clear; and (2) this is hardly the first time that the Court has used a slight unclarity in its prior precedents to totally upend the real significance of the previous precedent.
Reason 1,000,001 why it would be better if the Court were simply stripped of jurisdiction over patent cases.
Yep. If SCOTUS had intellectual honesty, it would have overturned McCormick explicitly and render the new law of Oil States. Instead it pretends that this administrative power was always there, just waiting to be discovered. Thomas pulled the same trick in Ebay v. MercExchange by not overturning, but actually explicitly upholding Continental Paper Bag, but apparently gutting it’s holding.
I forgot Thomas wrote Ebay. I also seem to remember Kennedy’s concurrence better. Wow, with Alice and now Oil States, has any judge done more damage to the patent system in the last dozen years?
Thomas gave us eBay, Myriad, & Alice, which all both appalling. Kennedy gave us KSR, Festo, & Bilski, which are also appalling. Breyer gave us Mayo, which is, pound-for-pound, perhaps more appalling than any given one of the previously mentioned, but it is only one. For my money, the sum awfulness of Kennedy’s contribution is worse than the other two, but individual milage may vary on this question.
“all
bothappalling”Breyer gave us Mayo, which is, pound-for-pound, perhaps more appalling than any given one of the previously mentioned, but it is only one.
Go ahead and try to explain why, Greg.
First show everyone that you even understand the facts of the case. Best of luck to you.
Well at least we can agree on that Greg.
Yes, at least we agree on that Greg.
Breyer gave us Mayo, which is, pound-for-pound, perhaps more appalling than any given one of the previously mentioned…
On further reflection, while I stand by this contention, I do have to say that comparing Mayo with KSR is a hard call on which is the more awful. In the end I go with Mayo, but if others were to say that KSR is worse, I would be hard pressed to gainsay them.
Mike that is a really good points. I also think that the majority opinion citing to Lemley’s UVA paper about the privy counsel was outrageous. (The importance of this is whether it common law in England at the time of the US was formed, because if it was then it should be under Article III.)
The majority used a paper (with no peer review and no recourse if the author was unethical including just making up facts) as factual proof that the privy counsel continued to canceled patents or was still empowered to cancel patents past 1756. That is just mind bending. They may as well have quoted from a blog post from an anonymous poster.
And consider that Gorsuch and Roberts both contended that the majority’s position on the privy counsel was wrong.
Just unbelievable that a law journal paper (basically trash) is used as fact in one of the most important cases in patent law in the last 200 years.
I do wish Ned were here. The harshest words I’ve ever seem he write were towards Lemley and his mischaracterization of the Privy Counsel.
“They may as well have quoted from a blog post from an anonymous poster. ”
With all due respect, Night Writer, such a quote would most likely have MORE veracity.
Just saying.
Let’s take an objective look at where the Oil States decision leaves us. The total number of unsuccessful judicial attacks since 2013 on the constitutionality of the AIA, especially IPRs, must be at least half a dozen by now? With numerous amicus briefs raising every possible ground for attacking the constitutionality of IPRs, as well as some briefs in the prior Sup. Ct. Cuozzo IPR decision. Not even to mention hundreds of personal opinions in blog comments. The Supreme Court in Oil States has now finally put this issue to rest for good. Not a single Fed. Cir. judge, and now only 2 Sup. Ct. judges, have supported any IPR constitutionality attacks. Legislation and/or sustainable rule changes and/or Fed. Cir. decisions are thus the only realistic ways to change IPRs.
One can hope that finally we will see more substantive and useful advice in blog comments on how to avoid or deal with IPRs, and how to improve them. That is, far less clogging of blogs with mere personal rants wasting readers time and making enough incorrect judicial predictions to make even weather forecasters look good by comparison. There are valid arguments for improvements and clarifications in IPRs that could be made. In particular, further improvements in the progress already made recently on IPR claim amendments, serial IPRs, the IPR time bar, and joinders.
Rah Rah Rah – ciscumba
You are right Paul. We have a pay to play patent system. It is settled. Independent inventors need not apply. Google, Apple, and Elon Musk will supply our domestic innovation. The rest we will import from China.
We have a pay to play patent system.
Because life would be soooooo much better for everyone if patents were handed out like candy to every “independent inventor” who wants one. Then we could all run out and buy patent litigation insurance, or pay a hundred licenses on junk patents every time we use a computer, which would be totally different from “pay to play” because “the right people” would be getting the money they’re entitled to because reasons.
I gotta say these crocodile tears from the maximalists are getting sweeter by the hour. Keep ’em flowing, folks! The rivers are getting dry here.
Paul for a smart guy you don’t know much about economics.
IWT, this decision is properly decided on Constitutional Law issues, not economics issues, and thus not relevant to comments here. Most of us have never engaged in debates on various blog allegations of IPR economic impact on the economy as a whole [versus just patent litigation and licensing, where an impact is indisputable]. Allegations by economics experts with data support need to be addressed to Congress.
This is the farthest thing from properly decided under Constitutional law issues – and you of all people who has steadfastly refused to even bother engaging on ANY merits of a Constitutional law discussion are the LAST person qualified to make that type of statement.
And by LAST, I place you even under Malcolm.
Ouch!
In particular, further improvements in the progress already made recently on IPR claim amendments, serial IPRs, the IPR time bar, and joinders.
Too true. It would be all to the best if Congress were to make clear: (1) that each petitioner gets one shot per patent; (2) that institution decisions are reviewable for compliance with the one year bar and for identity of privities; and (3) that amendments are to entered as of right when they are presented in the pre-institution patent owner reply.
Well ask the guys in the dock over in the SEC trial court. Currently the issue is pending cert. They are making some of the same arguments, but there the SEC can fine and suspend and bar from the profession actual persons.
To be denied the advantages of a full adversarial proceeding, is (or at least under our old Constitution) a violation of due process.
IPR’s and 101 problems are irretrievably connected.
IMO, 101 reform can’t happen until there is procedural reform to resolve “well understood” and “directed to” as matters of law, in the precise mold of claim construction. A process without a result is an absurdity, and the nature of the result must be understood as the core of the subject matter of a process. “Directed To” must be understood to identify PHOSITA- to say definitively in which art or endeavor the invention is located. No reliable 103 or 112 analysis is possible without that 101 inquiry for process patents, and IPR’s can’t do that at all, and Art III is on a purely individual luck of the judicial draw basis under Alice.
If 101 reform happens, it would almost certainly be enhanced and empowered by allowing 101 decisions in IPR’s. Otherwise it’s all just pre-season play before a 101 challenge in a district court should you eventually lose with the PTAB and CAFC. Art. III buys another several years-all the way back to the CAFC on the 101, if subject matter is kept out of IPR’s.
If IPR’s do evolve to faster, cleaner, and fair dispute resolution tools v. random district courts, that’s probably a good thing for everyone.
They can’t get there until the courts or Congress cure the subject matter and obviousness/written description ills that bedevil Art. III courts just as well.
So a statutory change or 101 case at the Supreme Court (which they seem to be conspicuously avoiding by not conferencing on any 101 petitions) will be needed to really fix the problem with IPR’s , and those changes more than likely wont address the ground truth: Information inventions are the locus of almost all of the problems.
Information inventions are where the art in question may be information processing as information processing, or where the art is really applying information processing to the art or endeavor being modeled, simulated, or transacted – from stock trading to cartoon animation.
Is our PHOSITA an animator or a computer programmer? Is it an animator with a computer programmer at their disposal or is it an expert in User Interface and algorithmic programming? Is it the juror off the street?
Certain kinds of information are amenable to those inquires, but certain kinds are not. My thoughts on that question here:
link to papers.ssrn.com
Paul you can’t expect those us in a burning building not to keep complaining.
The cheerleader is just pulling one of those “Oh, just s h u t up now” snide shots from the sidelines.
NW, yes I understand the desire to complain about IPRs, even though it wastes a lot of blog-reader time. But what bugs me is mere unsupported unrealistic personal wishes being presented to the lay public as if it were legal reality, when it is not, instead of any realistic constructive suggestions.
What “bugs you more” is of ZERO import.
As to the rest of your spin, there has been plenty of support and realistic legal points and counter points presented – to which you have “valiantly” refused to ever actually engage on the merits.
I also notice that you remain steadfastly silent on the academics who peddle things that truly are unsupported and unrealistic personal wishes, but with the wool pulled over the eyes have become “legal reality.” – which is a FAR MORE pernicious problem and something that SHOULD set even you off.
As I posted previously – I place you lower than Malcolm in regards to the topic here.
(and yes, that should sting more than just a little)
The argument of the two Oil States dissenters is interesting in that if it had been adopted it would have rendered unconstitutional, without any qualifications, any and all non-consentual PTO proceedings involving any issued patents! That is, not just IPRs, but all reexaminations, all AIA post-grant proceedings, and most interferences and derivation proceedings. [The vast majority of interferences seek cancellation of issued patent claims, although these Justices may well not be aware of that.]
That was Ned’s (eventual) position as well, no?
Reading the Constitution broadly, beyond it’s plan language, as a sort of suicide pact or a straitjacket against reasonableness. I’ll never understand it.
You say that as if that would have been a bad thing….
It would not have been a bad thing.
We see which side of the fence that you are on Paul – and it is not the pro-innovator side.
We see which side of the fence that you are on Paul – and it is not the pro-innovator side.
Remember, folks: this is from the same guy who whines endlessly about “one-bucketing”.
But he’s a very serious person! Totally not a transparent hypocrite who talks out of both sides of his mouth.
Right about ex parte but wrong about interferences and derivation proceedings. That was settled law 100 years ago.
Not really. Yes, it was settled in the sense that everyone agreed that interferences are fine. There is no principled difference between interferences and IPRs, however, except that everyone took their patents subject to the expectation of interferences, whereas only a comparative handful of present-day patentees took subject to the expectation of IPRs. The idea that interferences are constitutionally supportable in principle, that but IPRs are not (retroactivity considerations aside) is pure special pleading.
See my response above.
Your response at 24.1 above is fine and fair as far as it goes, and I will cheerfully give you that one. I cannot cite a case that mirrors my hypo. I confess that it is merely a hypo of my own contrivance, although I still have not seen reason to believe that my hypo was a legal impossibility under the old law.
If, however, you are to assert in 21.3 that Paul is “wrong about interferences and derivation proceedings. That was settled law 100 years ago,” then you need to swallow your own medicine and cite a case. As I have already mentioned yesterday at 10:46 pm, res judicata and collateral estoppel cannot have reached as far as you seem to suppose, lestwise Graham could not have gotten to the SCotUS on a record in which the patent was sustained in the Fifth Circuit and tanked in the Eighth. If you are going to argue that res judicata might not stop one Art. III court from reaching a different conclusion than another Art. III court, but that it would have stopped an Art. I tribunal from coming to a different conclusion than an Art. III court, you need to cite some authority for that proposition.
That’s the point Ned was making – on slamming counsel for Oil States screwing up the case law and logic of the arguments. He believed – which turns out to be true – a fatal concession was the position that ex parte is ok. In my view, ex parte reexamination WAS sound under the original code wherein 35 USC 145 provided a right to de novo trial in a court of record. Therefore it was a court revoking the patent and therefore squares with holding of McCormick. Under the new code, 35 USC 145 is gone, and therefore ex parte reexamination is just as infirm as IPR’s and for the same reasoning.
First they came for the patents that were not filed first, and I did not speak out, because I had a patent attorney.
Then they came for the patents with no trespass signs, and I did not speak out, because I had licenses.
Then they came for the patents based on abstract ideas, and I did not speak out, because I had better claims.
Then they came for my patent, and there was no judge left to speak for me.
I am the american inventor of the 21st century, stripped of my only property.
But you still have your government franchise (good until some politically connected entity wants to strip it from you).
I just rolled my eyes so hard that I broke my forehead.
Article I, Section 8, clause 8 of the Constitution gives Congress the power to secure for inventors the exclusive right to their “discoveries,” and clause 18 gives Congress the power to “make all Laws which shall be necessary and proper” for executing the foregoing power.
Oil States did not challenge the AIA under those provisions.
Instead, Oil States raised a fatally doomed property rights challenge under Article III which was wagged by the tail of the Seventh Amendment. It was a non-starter because all property rights are limited in nature and property rights to patents are limited by Congress. Even Justice Thomas understands this very simple, dispositive issue:
“The Patent Act provides that, “[s]ubject to the provisions of this title, patents shall have the attributes of personal property.” 35 U. S. C. §261. This provision qualifies any property rights that a patent owner has in an issued patent, subjecting them to the express provisions of the Patent Act. See eBay Inc. v. MercExchange, L. L. C., 547 U. S. 388, 392 (2006). Those provisions include inter partes review. See §§311–319.”
A more interesting challenge would be whether Congress has made “all Laws necessary and proper” to secure the exclusive right to inventors.
“property rights to patents are limited by Congress.”
Therein lies the legal error – once a property right is created, even Congress must abide by the OTHER Constitutional protections that kick in to protect property.
The right questions were not asked here.
Thus the wrong results have been achieved.
Correct. Actually Scalia’s holding in NextWave Communications as well.
A more interesting challenge would be whether Congress has made “all Laws necessary and proper” to secure the exclusive right to inventors.
LOL
I’m sure I’m not the only one who can hear the bottom of the barrel being scraped. And I’m watching a Led Zeppelin video.
Great go for it. Looking forward to your necessary and proper arguments. Hint: See my Hayburn’s arguments below for a better line of attack.
For those still arguing the old McCormick Harvesting case, note that it was disposed by the Court just as previously predicted here:
“..McCormick Harvesting Machine Co., supra, at 609; accord, American Bell Telephone Co., 128 U. S., at 364. But those cases were decided under the Patent Act of 1870. See id., at 371; McCormick Harvesting Machine Co., supra, at 611. That version of the Patent Act did not include any provision for post-issuance administrative review. Those precedents, then, are best read as a description
of the statutory scheme that existed at that time. They do not resolve Congress’ authority under the Constitution to establish a different scheme.”
See above concerning property right protections that even Congress is not free to disregard.
By not asking the right questions, the wrong result has been obtained.
In view of speculation below that the Oil States decision might differ for a pre-AIA patent, note that this decision is ON a pre-AIA patent. The opinion itself states: “In 2001, Oil States obtained a patent… ” [The subject patent]
Sure, but as Justice Thomas wrote (slip op. at 16–17) “[W]e address only the precise constitutional challenges that Oil States raised here. Oil States does not challenge the retroactive application of inter partes review… .” In other words, even though the patent at issue here was a pre-AIA patent, that is not an issue decided here. It is not a violation of stare decisis to ignore distinctions that—while implicitly present in a previous case—are not argued in a previous case, and thus not truly part of the holding.