Supreme Court to decide if Inter Partes Review is Unconstitutional

By Gene Quinn
June 12, 2017

Supreme CourtEarlier today the United States Supreme Court granted certiorari in Oil States vs. Greene’s Energy Group, et al. From a substantive standpoint, this dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB). By taking this case the Supreme Court will once and for all address the constitutionality of having an Article I tribunal extinguish patent rights.

There were three questions presented by Oil States in the petition for writ of certiorari. They were:

  1. Whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether the amendment process implemented by the PTO in inter partes review conflicts with Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016), and congressional direction.
  3. Whether the “broadest reasonable interpretation” of patent claims – upheld in Cuozzo for use in inter partes review – requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent’s specification.

The Supreme Court granted certiorari only on the first question, whether inter partes review violates the U.S. Constitution by extinguishing private property rights through a non-Article III forum without a jury.

The grant of certiorari in this case is particularly noteworthy given that the United States was asked by the Supreme Court for its views and opined in its brief that the petition should be denied. Generally speaking, the Supreme Court accepts the recommendations of the Solicitor, but this marks the second time in just several weeks where the Solicitor has recommended the Court decline certiorari in a patent case only to have the Court take the case any way. The other case where the Solicitor recommended the Court not get involved was SAS Institute v. Lee, dealing with the issue of whether the PTAB must issue a final written decision with respect to any claim that is challenged, as is actually required by statute. For more on that case see SCOTUS to hear SAS Institute v. Lee.

The argument that inter partes review is unconstitutional can be traced back all the way to 1898 when the Supreme Court issued its decision in McCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S. 606 (1898). In that case the Supreme Court held that once a patent is granted it “is not subject to be revoked or canceled by the president, or any other officer of the Government” because “[i]t has become the property of the patentee, and as such is entitled to the same legal protection as other property.”

Since September 16, 2012, when the PTAB became operational and post grant challenges made available under the America Invents Act (AIA), the USPTO has been doing precisely what the Supreme Court in McCormick Harvesting said was prohibited – revoke patents. Therefore, the Supreme Court will either need to explicitly overrule McCormick Harvesting, implicitly overrule McCormick Harvesting while trying to convince themselves that the case remains good law and is consistent with AIA post grant procedures, or the Court will need to find inter partes review unconstitutional.

The phrasing of the question taken by the Supreme Court could be quite telling. Over the last several years 8 of the 9 Supreme Court Justices have signed on to an opinion that has recognized that a patent confers either an exclusive or valuable property right. Thus, it would hardly seem a stretch to suggest that the Court, or at least the required four Justices necessary to take a case, have some reason to suspect that the extinguishing of a exclusive, valuable property through a non-Article III forum without a jury violates the Constitution.

In Horne v. Department of Agriculture, Chief Justice John Roberts writing for the majority that included Justices Scalia, Kennedy, Thomas, Alito, as well as Ginsburg, Breyer and Kagan with respect to Parts I and II, approvingly quoted from James v. Campbell a 19th century case that unequivocally states that a patent confers upon the patent owner “exclusive property” rights. Moreover, in a dissent written by Justice Alito and joined by Justice Sotomayor in Cuozzo Speed Technologies v. Lee, footnote 6 calls a patent a “valuable property right.” Still further, in 2014, Nautilus v. Biosig Instruments, Justice Ginsburg, writing for a unanimous Court called the patent grant a reward of a patent a “property right” and “like any property right, its boundaries should be clear.” She was quoting the earlier Festo case, which had also been a unanimous 2002 decision. Thus, the Roberts Court has repeatedly identified patents as a property right, exclusive and valuable in nature. Indeed, a property right that is similar to other property rights. Combine this with the many Supreme Court cases from generations ago that routinely describe patents in inventions being equivalent to patents in land, and it seems as though there is real reason to suspect that the Supreme Court could rule inter partes review unconstitutional.

While many will undoubtedly have varied opinions as to the importance of this decision by the Court to take this case, the truth is that any decision by the Supreme Court in Oil States simply cannot make things any worse for patent owners than they already are. Patents rights are currently be extinguished by an Article I tribunal that fundamentally refuses to provide even a modicum of due process. The PTAB refuses to consider evidence timely submitted, they refuse to allow amendments despite the statute saying there is a right to amend, they refuse to issue final decisions on all the claims challenged, they make up their own standards rather than follow statutory tests, there are no judicial rules of ethical conduct for PTAB judges, PTAB judges decide issues where there are serious conflicts of interest, and much more. Therefore, things could hardly get any worse, yet Oil States presents the very real possibility that the Supreme Court will rule that post grant proceedings at the USPTO violate the Constitution.

There will undoubtedly be much more written about this issue in the months to come. It will not be argued until the October 2017 term of the Court, with a decision sometime before the end of June 2018. Stay tuned!

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 54 Comments comments.

  1. Edward Heller June 12, 2017 12:18 pm

    To say the least, Gene, I am very pleased. The Oil States brief was a “copy” of our own brief in MCM Portfolio. The government brief advanced the same arguments against Oils States as against us.

    MCM was relisted, but not taken. I speculated that that was because without Scalia, the court was split 4-4. With Gorsuch, we now have a 5-4 majority.

  2. Bluejay June 12, 2017 12:22 pm

    Gene: Excellent analysis.

    The briefs of Oil States and its friends will be very powerful.

  3. Greg DeLassus June 12, 2017 12:30 pm

    “Therefore, the Supreme Court will either need to explicitly overrule McCormick Harvesting, implicitly overrule McCormick Harvesting while trying to convince themselves that the case remains good law and is consistent with AIA post grant procedures, or the Court will need to find inter partes review unconstitutional.”

    I think that this goes too far. McCormick says that “[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.” One can read this as a statement of constitutional law (i.e., the Constitution does not provide for the possibility of any other entity than an Art. III court to declare an issued claim invalid against the wishes of the patent owner), or one can read it as a matter of statutory construction (i.e., Congress *could* if it wishes provide some other entity empowered to declare an issued claim invalid against the wishes of the patent owner, but it has not done so). Certainly, at the time of McCormick, the Congress *had not* provided any other mechanism for a claim to be declared invalid post-grant, except for the Art. III courts. There were no re-examination statutes back then, nor any sort of IPR proceedings provided for in the act back then. The patent office did not even have the authority back then to revoke a patent that lost an interference (Act of 1870, RS §4904). Rather, if you wanted to get rid of a granted, interfering claim, one had to sue in the District of Columbia (RS §4918).

    In other word, *if* the Court were to hold IPRs to be constitutional, it would not need to over-rule McCormick. It could simply distinguish McCormick on the grounds that McCormick was decided against a different statutory background than applies today.

    That said, I guess I consider it unlikely that the Court is going to affirm the constitutional validity of IPRs. The Court *rarely* takes ceriorari to the CAFC in order to affirm. A safer bet would be on a declaration of unconstitutionality.

  4. Bluejay June 12, 2017 12:34 pm

    Greg:

    Per SCOTUSblog, CAFC is 0-5 this term.

  5. Greg DeLassus June 12, 2017 12:37 pm

    Blujay:

    My thought exactly.

  6. Night Writer June 12, 2017 12:43 pm

    This would be just too good to be true.

  7. Curious June 12, 2017 12:46 pm

    Very, very interesting. One keeps wondering when the pendulum will run its course into the anti-patent portion of the continuum. Perhaps this case is the inflection point.

    A ruling that IPRs are unconstitutional coupled with the appointment of the Director of the USPTO that is really pro-patent and a Congressional rewrite of 35 USC 101, and our patent system is definitely back on track.

  8. Gene Quinn June 12, 2017 12:53 pm

    Night Writer-

    That thought crossed my mind as well. Too good to be true? At least for now it is a ray of hope until it is taken away.

    -Gene

  9. Gene Quinn June 12, 2017 12:55 pm

    Curious-

    Do not assume that the appointment will be of a pro-patent Director. Anyone who thinks the next Director should be someone who believes patents are significant property rights and not public rights should immediately write, call and e-mail the Department of Commerce. Secretary Ross needs to know that the industry is not defined by the feelings of Silicon Valley.

    -Gene

  10. Mike Rothwell June 12, 2017 12:59 pm

    Congrats to all who helped make this possible.

    Amicus participation will be important.

  11. Bemused June 12, 2017 1:14 pm

    This is pure speculation but I wonder if TC Heartland, which effectively shut down (for the most part) TXED, had anything to do with this grant of certiorari? Specifically, if SCOTUS bought into the “TXED is a patent troll’s paradise” narrative which lead to TC Heartland does SCOTUS now feel the playing field has been leveled enough that the PTAB death squads aren’t needed any more?

    On a more substantive note, if SCOTUS does declare the AIA or inter partes review as being unconstitutional, what happens to those PTAB orders which are still pending appeal? I presume those orders are now invalid (which is a plus for the most part for patent owners).

    However, what happens to those (painfully few) patent owners who actually won at the PTAB which resulted in estoppel against defendants? Will these estopped defendants now be allowed to argue that since the AIA/inter partes review was unconstitutional that these adverse orders were ultra vires so there is no estoppel going forward?

    What a tangled web Congress/SCOTUS weaves when they stick their snouts into patent law…

  12. Anonymous Victor June 12, 2017 1:19 pm

    I have hope that SCOTUS will do the only sane thing and abolish the PTAB but unfortunately much damage has already be done that can’t be undone. Both in the loss of significant $ and the destruction of some businesses.

  13. Bluejay June 12, 2017 1:19 pm

    Amicus briefs I want to read:

    1. Constitutional law professors; and

    2. The Silicon Valley crew.

  14. Night Writer June 12, 2017 1:59 pm

    Well good on you Edward. Now if you would only disavow Benson…

  15. Edward Heller June 12, 2017 2:53 pm

    Suppose the Court holds that a patent owner has a right to have the validity of his patent tried in an Art. III court and to a jury at his option, the validity of his patent being a legal issue. That would make IPRs unconstitutional only to the extent that they proceed without the consent of the patent owner.

    Congress could make that fix — but as we all know, the way IPRs are structured, no sane patent owner would now consent to an IPR.

    Any way you see it, IPRs are doomed in their present form.

    But to those who have not asserted their rights before, they are waived. Prior adverse judgement and cancellations stand.

    So, if you are now defending an IPR, you should consider the strong possibility that your failure to assert your constitutional rights in a timely manner will be construed as a waiver.

  16. Edward Heller June 12, 2017 2:55 pm

    Anonymous Victor@12. Some of it self-inflicted. See post 15.

  17. Edward Heller June 12, 2017 2:58 pm

    Night@14, Benson was confusing. It introduced the MOT, but did not rest its holding on that point. But still, the way the law has developed, the courts are following the MOT even if they are not saying that that is what they are doing.

  18. Night Writer June 12, 2017 3:25 pm

    https://patentlyo.com/hricik/2017/06/judges-applicable-ethics.html#comments

    OT, but Gene the article above —I think–misrepresents your article quite a bit. A very unflattering and unfair summary of your article(s).

  19. Gene Quinn June 12, 2017 3:36 pm

    Night Writer-

    Just left a comment over there. It is as if the author didn’t actually read the articles I wrote. He obviously wanted to purposefully take what I wrote out of context, and he did actually misrepresent what I wrote.

    Not surprising in one sense. I used to consider the author a friend, but we had a falling out that may seem to have lead to a personal grudge. Whatever that may be, it is surprising that this nonsense passes for thoughtful coming from someone who is supposed to be an expert on ethics.

    -Gene

  20. Greenacre June 12, 2017 5:12 pm

    In McCormick, SCOTUS drew an analogy to real property. Once title to Greenacre passed from the Land Department, an Article III court was needed to decide property issues.
    Intellectual property is not a direct analogy. Patent claims can only exist if there is first an invention. By analogy, if patent claims are invalid, the corresponding situation for real property would be that Greenacre does not actually exist.
    The Patent Office is not deciding property rights in the patent itself. The Patent Office is only deciding that no patentable claims existed in the first place and there is nothing to give to a patent applicant since the patent applicant did not “… invent[s] or discover[s] any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, … subject to the conditions and requirements of this title.

  21. Judge Rich's Ghost June 12, 2017 5:27 pm

    The fact that the Court granted cert in SAS Institute just three weeks ago makes it highly unlikely that the Court intends to dismantle the entire AIA post-grant review regime.

  22. Tesia Thomas June 12, 2017 5:53 pm

    Ever since I filed for patents, IPR have been stressing me out.
    I learned about them from my many inventor buddies who are actually fighting the DoD. DoD & DoD contractors initiate IPR proceedings against inventors who they steal tech from.

    I was so sure the Executive branch (Pentagon, B2G Contractors like Northrop Grumman) and their Congressional lobbyists (thus the Legislative branch) were not on our side.
    IPR is favorable to them because they screw over small inventors just as much as the private sector.
    I believed that getting to the Supreme Court was small inventor’s only hope. And, the only real place for impartiality.

    Well now we’re here and if we don’t get something better here then we at least know all hope is lost in the US…and for a long time. Off to China!

    I agree with Night Writer and Gene- seems too good to be true.

  23. Independent Inventor June 12, 2017 6:01 pm

    Gene — assuming someone(s) will so request, could you please post any opportunities for your many readers like me who want to sign on to amici in support of Oil States?

    We all need to stand strong and together in this battle.

    SCOTUS needs to hear our collective voices.

  24. Tesia Thomas June 12, 2017 6:11 pm

    Yeah. Maybe we should have an amicus brief from independent inventors that lays out the effects of this and go a step further and have inventors sign it like a petition.
    Similar to US Inventor’s brief here: http://www.usinventor.org/wp-content/uploads/2017/02/16-953acUSInventorInc.pdf

  25. John June 12, 2017 6:57 pm

    What would become of instituted ipr’s that turned out unfavorably for patent owners prior to a potential ruling by the Supreme Court that they are unconstitutional?

  26. Pro Se June 12, 2017 7:14 pm

    “Historically, though, suits to invalidate patents
    would have been tried before a jury in a court of law.
    The Constitution thus provides patent owners with a
    right to a jury and an Article III forum. Inter partes
    review violates these rights.”

    -This is the “big one” and will determine if we are all doomed or will have a patent system in the United States…

    I’m on my 11th IPR (through 8, 3 left pending) and my infringers have used every illicit means of implementing them..

    They’ve told me they will keep filing them until “something works”..

    The U.S. is now a place where my startup can’t any business done.. my business partner just landed in Hong Kong where the only place we can get business deals with our product.

  27. Edward Heller June 12, 2017 7:41 pm

    Tesia, for some good amicus briefs already on file by independent inventors and others, see MCM Portfolio LLC at http://www.scotusblog.com/case-files/cases/mcm-portfolio-llc-v-hewlett-packard-company/

  28. patent leather June 12, 2017 7:46 pm

    Ned, I (regrettably) haven’t had the time to really follow this issue, although I really should have been since it is extremely relevant to my practice. So I apologize if this question is superficial, but why is there a distinction between IPReview and IPReexamination? Do these cases only attack the constiutionality of IPReview but not IPRexamination? Obviously the latter is very relevant if you owned (or represented an owner of) a patent that was invalidated in an IPRexamination.

  29. Edward Heller June 12, 2017 8:22 pm

    patent leather, Patlex was decided in ’85. Lockwood in ’95. The latter held that patent validity had a right to a trial by jury. The former that reexaminations did not violate Art. III and the 7th Amendment because patents were public rights. In a dissent to denial of en banc review, Judge Nies and two other judges in Lockwood argued that Lockwood necessarily overturned Patlex because Patlex had denied the patent owner a right to trial by jury before his patent was invalidated.

    Along comes IPRs and many ask why IPRs are unconstitutional if reexaminations are constitutional. Well the answer is that reexaminations are unconstitutional for the reasons stated in Lockwood: if an issue has a 7th Amendment right to jury trial, it cannot be assigned to either a court of equity or an administrative agency for trial.

    Now one may ask, why do patents have a right to jury trial for validity? Well patent validity was always tried in a court of law, and disputed facts to a jury, at common law. The US Supreme Court has already addressed this issue in ex parte Wood & Brundage, ruling that patent revocation actions are the nature of a writ scire facias and had a right to trial by jury — protected by the Seventh Amendment.

  30. max June 12, 2017 8:31 pm

    “Once a patent is granted it “is not subject to be revoked or canceled by the president, or any other officer of the Government” because “[i]t has become the property of the patentee, and as such is entitled to the same legal protection as other property.”

    For the USPTO to grant such property rights only to rescind them later without a jury trial is unjust, unconstitutional, and undermines the very pillars of U.S. patent law. This is especially true in tribunals involving the Alice 101 test, which at best is subjective.

    As an inventor, not a lawyer, it seems to me that either SCOTUS justices choose to realign the pillars of patent law, or they must engineer more fictional law to appease the lobbyists. The former will most certainly call Alice 101 into question while the later will continue to dilute the incentive for inventors to leverage the U.S. patent system. What a pickle.

    Goodbye Michelle and good riddance.

  31. Peter June 12, 2017 10:56 pm

    Nice summary. But I think the issue is not with McCormick clarifying that a patent right is a property right.
    But there are exceptions (Murray’Leasee” ) et al. The door on the exceptions of patents as property rights has been gradually widening opening since Granfinanciera S.A.(1989)
    So the legal question will be whether patent rights fall under the exceptions – given the circumstances surrounding the AIA.

  32. Inventor June 12, 2017 11:07 pm

    If the Supreme Court rules IPRs unconstitutional, what happens to previous IPR rulings that turned out unfavorably for patent owners?

  33. Judge Rich's Ghost June 12, 2017 11:47 pm

    Ed Heller, you neglect to note that the Court granted cert in Lockwood, so Lockwood has stood on shaky grounds for over twenty years.

  34. Lawrence Lockwood June 13, 2017 12:18 am

    Fought this battle 22 years ago, hope SCOTUS follows Edward Heller’s logic.

  35. patent leather June 13, 2017 12:38 am

    Thanks, Ned. So you are saying that basically if the Supreme Court rules that IPreviews are unconstitutional then IPreexams are also unconstitutional? meaning that patents that were invalidated in an IPRexam are now going to be valid again? What about ex parte reexams? What about patents that had their claims amended in reexams? will these patents revert to their original claim language without the amendments?

    Interesting times.

  36. Ray June 13, 2017 12:46 am

    Edward,

    It appears Roberts recused himself in MCM? If so, perhaps it was 4-3 against cert there. Now with a full bench, it could be 5-4.

    Trying to understand why the Court would have passed on this issue 3 times and now decides to address it.

    Also, reading Cuozzo, the Court in affirming the FedCir, made many very strong statements in support of the IPR proceedings. Crazy that the Justices in support of those statements would be ready to dump all IPR proceedings.

    Is it possible the Court could come up with a race scenario in which the IPR process stands as long as there isn’t a prior jury finding the patent valid?

  37. Night Writer June 13, 2017 6:02 am

    Of course they could be taking this because there has been so much fuss over this issue and they want to put it to rest and because as pointed out in this thread there are cases that appear to be in conflict.

    (I still find it hard to believe the SCOTUS is going to hold the IPR unconstitutional and move all that work back to the federal courts. They don’t want the work.)

    But, part of me thinks that this is part of the SCOTUS continue need to control everything. A power play. Maybe they don’t like that now they cannot make the final decision on a patent. I don’t have a prediction yet.

  38. Anon2017 June 13, 2017 7:36 am

    If scotus granted cert in sas case, then why would scotus grant cert in this case only to declare post grant reviews unconstitutional? That makes no sense, as such declaration could have been made in earlier cases, especially since reexams are constitutional.

  39. Anon June 13, 2017 7:50 am

    Night Writer @ 30,

    I have pointed out previously that IF the Court rules that patents are not property, they WILL be taking their fingers out of the 101 nose of wax.

    Since the Court is addicted to that power, it is easy to see that there will be no chance that the Court will make patents into something that – on the whole – could be taken out of the judicial branch (and that is exactly what could happen if patents are deemed not to be property).

  40. Ray June 13, 2017 9:43 am

    The Roberts’ Court has been wary of complete wipe outs of Congressional acts based on unconstitutionality. See ACA…

    Is there a middle ground here? If the petitioner in the IPR is the defendant in a DCT case, perhaps the IPR is improper because it usurps the jury’s role in determining validity of a current case in controversy? If the petitioner is not a party to a pending DCT case, perhaps the IPR provides an alternative method to resolve a public right?

    Is there room to say the patent is a private right when it is being enforced, but is a public right regarding validity when it is being challenged to determine whether the patent is valid before taking action that could be construed as infringement?

    The Court was very complimentary of the IPR process in Cuozzo. My personal bias is to say “bye falicia” to IPRs, I know the easy analysis is to say the SCOTUS has reversed the FedCir 5 times in a row and usually only takes cases to do so. However, Cuozzo was about IPRs and the SCOTUS affirmed the FedCir.

    Frankly, I’m not persuaded that the SCOTUS is going to render a decision because it may result in more work for DCT Courts. Frankly, I believe the evidence is the IPR process has greatly increased the workload of the FedCir.

    There is a reason the SCOUTUS has accepted Cert on this case and didn’t three times in a row.

    Regarding ITC actions and self directed Ex Parte Reexams, this can easily be discounted as the patent owner waiving its 7AM right by taking this action on their own.

    My gut right now says the Court does a split of sorts. The IPR process on its face is constitutional. However, if the patent owner is taking action to enforce the patent in DCT, the IPR process is improper violation of the patent owner’s 7AM right to have a jury determine the result.

    Such a decision would be in line with how Roberts handled the ACA issues…

  41. Ray June 13, 2017 9:53 am

    @Anon (38):

    Re SAS cert. Agreed. There is something larger going on here.

  42. Mike Rothwell June 13, 2017 10:52 am

    My recent article on this subject might provide helpful background information:

    http://ncjolt.org/wp-content/uploads/2017/05/Rothwell_Final2-copy.pdf

    From the standpoint of Article III, the important questions are:

    Is the validity of an issued patent a public or private right?

    If a private right, what level of Article I involvement is permissible?

    In Stern v Marshall, the Justices split 5-4 on whether district court enforcement was required (in addition to other issues).

    If patent validity is a private right, expect:

    1. All forms of post grant review to become essentially advisory in nature;

    2. The PTAB would not “go away” – it would function as an expert adjunct to the trial courts (hence Cuozzo and SAS);

    3. A decision of unconstitutionality would not operate retroactively.

    The potential for a 5-4 split on some of these questions is a possible explanation for why the Court passed on Cooper and MCM.

    The downstream consequences of the Court not overturning the public rights designation are potentially very significant.

  43. Ray June 13, 2017 11:19 am

    @Mike (42)

    Is it also possible that the PTAB “advisory” action as you characterize it could be considered final if the patent owner has not or does not seek a jury trial before an Art III Court? Such inaction could be construed as a waiver of the trial?

    Also, could the PTAB “advisory” action turn into a shift of the presumption of validity at trial? Possible for the PTAB final order to also be introduced before the Jury for consideration?

    I hate to say it, but I agree that there does not seem any way the whole IPR framework is going away.

  44. Anon June 13, 2017 11:24 am

    Mike,

    You cannot get to your number 2 unless Congress acts and structures things. The type of change required is not within the powers of either the executive or the judicial branches.

    In other words, the PTAB – as it exists today – would indeed go away.

  45. Anon June 13, 2017 11:26 am

    Also, to answer the question of why grant cert to both SAS and Oil State, see my reply at:

    http://www.ipwatchdog.com/2017/06/13/industry-reaction-scotus-granting-cert-oil-states/

  46. Edward Heller June 13, 2017 11:42 am

    Just a couple points.

    1. McCormick Harvesting and “property” stand somewhat by themselves, independent of the issue of public rights and the seventh amendment. Neither Patlex nor MCM considered McCormick Harvesting in its analysis of the Article III or Seventh Amendment issue.

    2. Article III and Seventh Amendment rights are waivable. Unless asserted, they are waived. Thus the results and prior reexaminations and IPRs will probably stand.

    3. The court could decide the case solely based upon McCormick Harvesting thereby avoiding addressing directly the other issues about Article III or the Seventh Amendment.

    4. In MCM Portfolio, it is apparent that Roberts did participate in the decision to deny certiorari. It initially recused himself but later there is no evidence that he did not participate in the decision to deny certiorari.

    6. The point about the Supreme Court taking Lockwood is a good one. They are not totally convinced that patent validity has a Seventh Amendment right. However, it is my personal opinion that this is the strongest argument we have. Patent validity was uniformly tried in common law courts and to juries when facts were disputed. That is all that is required to invoke the Seventh Amendment. In fact, ex parte Wood & Brundage held that in proceeding scire facias in the United States, disputed facts should be tried to a jury. The decision regarding jury trial rights was based on the Seventh Amendment. In other words, in order to deny that patent validity has a right to a jury trial under the Seventh Amendment, the Supreme Court will have to overturn Justice Story, the originator of the doctrine that the Supreme Court today follows regarding the Seventh Amendment.

  47. Ray June 13, 2017 11:49 am

    @Edward,

    So this could actually turn out worse for patent owners…We could end up with invalidity being taken away from the jury, to the extent you can get there, and be decided by the DCT Court.

    That’s a depressing thought.

  48. Edward Heller June 13, 2017 1:03 pm

    Ray, our main opponent on the 7th Amendment issue is Lemley and others who quote him as if his tome were Gospel. For the truth, I would read up on the writings of Distant Perspective who has been posting on another site.

    Validity was always tried to a jury. Scire facias actions were filed alternatively at Kings Bench or in the Petty Bag, a common law court located in Chancery. Judgments by the Chancellor on patent validity cases were made using the Chancellor’s powers as a common law judge.

    Lemley says otherwise, but Lemley does fully elucidate that patent validity was always addressed as a legal issue in England.

  49. Night Writer June 13, 2017 4:36 pm

    >>My gut right now says the Court does a split of sorts. The IPR process on its face is constitutional. However, if the patent owner is taking action to enforce the patent in DCT, the IPR process is improper violation of the patent owner’s 7AM right to have a jury determine the result.

    Boy would that create a lot of litigation and races.

  50. inventor June 14, 2017 3:24 pm

    The companies whose IP is being challenged should file for putting a hold on their IPR proceedings till he Supreme Court rules on the matter. Too many frivolous challenges are being made by infringers who find it cheaper to take the IPR route with IPR judges being fast and loose when it comes to striking down patents.

  51. Night Writer June 14, 2017 7:36 pm

    @50 Inventor: Good point. The director could refuse all IPRs until the SCOTUS decides.

  52. Edward Heller June 14, 2017 9:04 pm

    Night, the Director could order the PTAB to not institute any further trials with respect to any patent owner who willfully and intentionally waives his constitutional rights to a trial by jury in a court of law.

    However, refusing IPRs otherwise may jeopardized petitioner’s rights to file that might otherwise be time-barred. See, 315(b).

  53. Ray June 14, 2017 9:28 pm

    I can’t see the Director stopping anything until a Court says there is something wrong with the IPR process. As it stands, the FedCir has repeatedly stated the process is constitutional. What authority does the Director have to disobey Congress at this point. All we have is the process will be reviewed by the SCOTUS. There is no provision for stays of IPRs in this circumstance, discretionary or otherwise.

    If someone knows of such a provision that I have not seen, I would love to see it.

  54. Anon June 15, 2017 9:28 am

    The only provision for stays of IPRs is:

    35 U.S.C. 316(a) Regulations.—The Director shall prescribe regulations—

    (4) : establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;

    This appears to be a very open-ended designation of authority to the Director.

    Hence, I am not sure that your “what authority does the Director have to disobey Congress” is actually a legitimate question, as I see NO “disobeying” if the Director under direct authority of Congress uses 35 U.S.C. 316(a)(4) to establish and govern with rules related to stays – under ANY circumstance that the Director may wish to invoke – and certainly the “and the relationship of such review to other proceedings under this title” covers the situation under discussion.

    This power of the Director is very much discretionary.