Industry Reaction to Supreme Court Decision in Oil States v. Green Energy

By Gene Quinn & Renee C. Quinn
April 24, 2018

*Updated on 4/26/18 with additional Commentation

Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.  For my analysis see SCOTUS says Patents are a Government Franchise, Not a Vested Property Right.

Todd Dickinson

We’ve already published several articles on this very important decision today, one including the instant reactions of Todd Dickinson, former Director of the United States Patent and Trademark Office, and Russ Slifer, former Deputy Director of the United States Patent and Trademark Office. Both men signaled the importance the initiative of Director Iancu will play as this debate continues.

“I would expect PTO Director Iancu’s recently-announced intention to review and likely change PTAB processes… to be where the focus of the debate shifts even more than it has,” Dickinson explained.

Russ Slifer

While the decisions are much as he explained, “the holdings of these two cases highlight the critical importance of Director Iancu’s recent statements that the USPTO needs to make changes to how the PTAB conducts and institutes post-grant reviews,” Slifer explained.

In order to get a diverse array of views, we held open comments through early evening for this instant reaction piece. We will have much more to write in the coming days and weeks. Nevertheless, what follows is reaction to the Supreme Court Oil States decision from a distinguished panel of industry experts.


 

Chief Judge Paul Michel
Chief Judge, US Court of Appeals for the Federal Circuit (ret.)

In Oil States, disturbing that the Court characterizes patent as “public franchises.”  That may apply comfortably to broadcast licenses issued by the FCC because the airwaves belong to the public, but not to Edison’s inventions even after the PTO grants him patents.  After all, the statute which the Court seems to treat lightly whenever it protects the patentee says “patents shall have the attributes of personal property.”  To my eye, franchises are fundamentally different because they are rights that do not partake of property.

One redeeming feature however, was the caveat that patents are still protected by the Due Process and Takings clauses of the Fifth Amendment.  I see that supporting future cases in the high court that may, for once, help patent owners.

 

Bob Stoll
Partner, Drinker Biddle and Former Commissioner for Patents for the USPTO

In a totally unsurprising holding, at least to me, the Supreme Court found today by 7-2 that IPR does not violate the Constitution and the IPR is a permissible review on the patents.  Justice Thomas, writing for the majority, states that IPR is simply a reconsideration of the patent grant and Congress was acting within its authority to authorize the PTO to conduct that reconsideration.

I applaud the outcome because to rule otherwise would wreak havoc on the US patent system with the possible resurrection of zombie patents that were already invalidated.  Reversing would also raise parallel questions about other non-article III courts that arguably take property and further unsettle the judicial ecosystem.  But the logic employed by the majority does seem a bit tortured in the discussion of a public right and that IPR is merely a permissible reconsideration of the original grant.

Now is the time for Director Iancu to provide revised rules to level the playing field in all of the post-grant processes and help make the patent system better.

 

Sharon Israel
Partner, Shook, Hardy & Bacon, LLP

Today, the Supreme Court added both certainty and uncertainty to inter partes review proceedings.  In Oil States, the Court settled the overarching question that IPR proceedings do not violate Article III or the Seventh Amendment of the Constitution.  The decision leaves some room for further constitutional challenges, e.g., for retroactive application to pre-AIA issued patents, due process challenges, and other potential constitutional challenges.  However, the Court made clear that the overall scheme for administrative trial proceedings created by Congress under the America Invents Act remains alive and well.

 

Efrat KasznikEfrat Kasznik
President, Foresight Valuation Group

This case makes clear the power of Congress to provide the USPTO with broad post-issuance authority. In other words, the status quo remains. From a patent valuation perspective, IPRs have already impacted the value of patents due the uncertainty coupled to these proceedings. This decision reinforces the constitutionality of IPR proceedings and may further complicate the processes by which patent owners monetize their assets and would add Oil States to the list of cases such as Alice and Mayo that reinforce the uncertainty in the market regarding the patentability of cutting edge inventions.

While the Supreme Court’s Oil States decision has been largely anticipated by the IP community, one should review it in conjunction with Andrei Iancu’s recent public statements, which might arguably be the more interesting development this week. Director Iancu’s statement that “human-made algorithms that are cooked up, invented as a result of human ingenuity are different from discoveries and mathematical representations of those discoveries” might signal an effort by the Director to push for changes in validity considerations that would include these algorithms that can be distinguished from mathematical representations of discoveries. This statement may signal the emergence of a market for patents claiming algorithms, a market that currently resides behind NDAs and trade secret protection.

 

Christopher Kise
Partner, Foley & Lardner (on Behalf of Green Energy)

This is truly great news for American business and industry.  Actual innovators and productive businesses such as Greene’s Energy can now rest assured this important facet of our system will be retained, and the burden imposed by non-practicing entities will be minimized.

 

 

Stephen Kunin
Partner, Oblon, McClelland, Maier & Neustadt, L.L.P.

I am not surprised by the 7-2 decision of the Supreme Court upholding the Constitutionality of AIA administrative trials as well within the authority of the USPTO to correct patents that it had issued.  Many prognosticators had predicted such an outcome, some even were so bold to predict that it would be a 9-0 decision.  The long history of patent correction mechanisms at the USPTO that have survived challenge including interferences were the losing party had been issued a patent that was revoked as well as ex parte and inter partes reexamination proceedings resulting in issuance of reexamination certificates canceling claims seem to presage the Court’s decision to leave it to Congress’ discretion to enact patent legislation to permit the USPTO to reevaluate its decision to grant patents based on information not previously considered by the Office.

The seventh amendment right to jury trial and the patents as private rights v. public rights arguments did not prevail.  If such arguments had prevailed I wonder what would have been the fate of ITC Section 337 investigations, albeit in rem proceedings, where the ITC can invalidate granted patents in a bench trial.  Perhaps there is a distinction because the complainant is the patent owner who sought institution of the ITC investigation.

 

Raymond Van Dyke
Intellectual Property Attorney

In a narrow but still huge decision today, Oil States Energy Services v. Greene’s Energy Group, the U.S. Supreme Court today relegated patents and challenges to them as more a public, as opposed to a private, right.  Justice Thomas wrote the opinion of the Court that under the “public-rights doctrine” great latitude is accorded in allowing the adjudication of “public rights” by non-Article III adjudicators, e.g., political appointees.  The Court held that Article III federal judges are not needed in Inter Partes Review patent challenge proceedings at the USPTO, where a private challenger can seek the invalidation of a patent under the auspices of the USPTO, where the “judges” are subject to the Director and other political appointees that “adjudicate” the patent right.  This particular point was made manifest when former Director Michele Lee sought to overturn Patent Board decisions not to her liking by appointing more judges to skew the result.

Justice Thomas sought to narrow the conclusion of the Court today to just the constitutionality of these IPR proceedings, and not extend this viewpoint to other contexts of patents, leaving the “private property” notion for some patent rights hanging.  In his dissent, Justice Gorsuch lucidly contested the majority’s viewpoints and the holding, considering it as dispensing “with constitutionally prescribed procedures” for expediency and a “retreat” from constitutional guarantees for citizens.  Indeed, the majority seemed to interpret the jurisprudence and the historical context quite differently than Justice Gorsuch.

As a practical matter, the Justices as a whole were perhaps loathed to invalidate IPR and the thousands of decisions made so far, and thus stretched the Administrative State to now include IPR patent rights, forfeiting the parties’ private rights.  With only two Justices viewing patents as private instruments, Gorsuch and Roberts, this does not bode well for the future.  Congress needs to act to fix this.  However, with the insidious influence of the tech lobbyists to squelch private innovation and future technology challenges by any means, it is doubtful that Congress will step up.   Thus, in due course, when the next challenge accrues encroaching on patent rights, we will again be faced with a majority of the Justices deeming patents as another administrative right to be curtailed, instead of the special instruments they are for the private citizen to contribute to Society as a whole, as our Founders intended, by getting a short-term incentive to innovate.  Liberal IPR proceedings over the last few years, invalidating many valuable patents, have significantly undermined the importance and value of patents, the consequences for which are being felt by entrepreneurs, inventors and investors for future technologies.  With the value of patents being diminished, and today’s decision is a further diminishment, innovation in America is suffering, the next cures for diseases are compromised, the next valuable app is being thwarted, and the American spirit of invention quelled.  All because a majority of our Justices deem the patent system as something not deserving of constitutional protections, which is in direct conflict with history and policy.

 

Brian P. O’Shaughnessy
Partner, Dinsmore & Shohl

In keeping with its recent history of eroding patent property rights, the Supreme Court has ruled that IPRs are within the constitutional ambit of Congress.  The Court focused on the public rights argument, concluding that “Patents convey only a specific form of property right – a public franchise.”  As such, the right is properly circumscribed by statute.  The majority held, and the dissent contested (Gorsuch, Roberts), that, as a public right, the revocation of the right is not of a nature solely suited to an Article III court, but may, by operation of statute, be conferred on the legislative or executive branches.

In a somewhat encouraging turn, the Court emphasized the narrowness of its holding.  It restricted it to IPRs, noted the protections afforded by Federal Circuit review, and cautioned that its “decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.”  Enter Senators Coons and Cotton, and Representatives Stivers and Foster, who have introduced in their respective houses, the STRONGER Patents Act.  Due consideration of this legislation will open a worthy, and now much needed, dialogue as to the nature and extent of those protections, and whether they are properly balanced to maximize innovation and public benefit.  IPRs have proven prejudicial to meritorious inventors, and have diminished the public’s confidence in our patent system.  The terms under which they are conducted are unduly discretionary and yield unpredictable outcomes, often inconsistent with those of Article III courts.  If IPRs are to remain, Congress must act to shore them up, and ensure they afford all the constitutional protections that Oil States demands.

 

John O’Quinn
IP Partner, Kirkland & Ellis

Justice Thomas’s opinion for the majority focuses specifically on the public-rights aspect of patent law, and the fact that IPRs simply involve “reconsideration of the Government’s decision to grant a public franchise.”  Although it is perhaps surprising to see him and Justice Gorsuch disagree so directly, Justice Thomas’s willingness to have an Executive Branch agency resolve a dispute that otherwise naturally could be adjudicated by a court is consistent with the views he described in Wellness Int’l Network, Ltd. v. Sharif, 135 S. Ct. 1932 (2015) (Thomas, J., dissenting).

 

Suzannah Sundby
Managing Partner, Canady + Lortz, LLP

Because patent challengers and the courts went slightly mad in the aftermath of MayoMyriad, and Alice, and found just about everything under the sun to be not patentable subject matter, it is somewhat heartening to see that the Supreme Court took the time to unambiguously emphasize the narrowness of their holding as being limited to the constitutionality of inter partes review by non-Article III forums.  As such, Oil States has no bearing on the constitutionality of non-Article III forums deciding other patent matters such as infringement actions, the constitutionality of the retroactive application of inter partes reviews, or any other issue that was not explicitly presented and considered by the Court.

 

Charles R. Macedo
Amster Rothstein & Ebenstein LLP

In Oil States, the seven member majority of the Supreme Court confirmed (at least for now) the constitutionality of inter partes review proceedings, as set up by Congress in the American Invents Act of 2011.  The Court reaffirmed that the Patent Trial and Appeals Board — an adjudicatory body within the PTO created to conduct inter partes reviews, has authority to examine the validity of a patent which was previously issued by the PTO.   The Court found “Inter partes review falls squarely within the public-right doctrine”, as it “is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration.   Thus, the PTO can do so without violating Article III.”  The Court’s emphasis of the “narrowness of our holding” does leave the door opened a crack to consider other constitutional challenges that don’t turn on a public right vs. private right distinction. At least as of today, Oil States leaves intact inter partes reviews, and other post-issuance proceedings before the USPTO.

 

Robert Greenspoon
Founding Member, Flachsbart & Greespoon

The decision rests on an unfortunate mistake, used to distinguish the Court’s prior 19th Century holdings. It states that the Patent Act of 1870 “did not include any provision for post-issuance administrative review.” It is difficult to understand this belief. The 1870 Act at Section 53 permitted “reissue” proceedings by its express terms, and reissue statutory provisions (Sections 41, 46) permitted the cancellation of original patent claims. Against this statutory backdrop, the McCormick Court forbade cancellation of original patent claims on constitutional grounds.

 

Josh Malone
Principal at Tinnus Enterprises and Inventor of Bunch O Balloons

This past year I have aggressively advocated for recovering our American patent system. I have funded events, protests, travel, and amicus efforts for US Inventor to the tune of tens of thousands of dollars. I have made dozens of trips to Washington D.C. and the USPTO to advocate for inventors.  I have undertaken extensive original research on the laws and individual cases. I have searched court filings to identify and then organized dozens of inventors who have been abused by the corporate take over of the patent system. I have sacrificed my time, my family, and my finances. Others have given more for sure – Paul Morinville, Randy Landreneau, Adrian Pelkus, and others have given more for longer. For months now I have been committing to my colleagues to fight the fight until the Supreme Court settled the issue.  Now it is settled. Patents are just like toll bridges. If you have millions of dollars you can have one. The fight is over. The big corporations, the lawyers, the bureaucrats got what they wanted.

Americans don’t understand where innovation comes from. They don’t understand our history. Even Justices Alito and Thomas don’t understand. It is settled – we don’t need patent rights in America. Google, Apple, and Elon Musk will take care of us.

My advice to aspiring inventors? The U.S. patent system is not for you. You cannot afford it. It will not help you. If you can encrypt your invention then go for it. If your invention is hardware then patent it in China. Keep your day job and join the maker movement in your spare time. Don’t sign up for multi-level marketing scams and don’t apply for a U.S. Patent.

 

Kristen Osenga
Professor of Law, University of Richmond, School of Law

While I am disappointed with the Supreme Court’s ruling in the Oil States case, I am not terribly surprised.  The majority opinion, and the many others who are cheering the constitutionality of inter partes review, fall back on the trite horror story of “bad patents” without considering the real effects on innovation.  To the extent “bad patents” exist, and by that phrase I mean patents that should not have been granted in the first place, it seems that the creation of a monstrous bureaucracy to attack these patents is the real horror story.  If we have so many “bad patents,” and to look at the record of the PTAB in invalidating patents, we must have an awful lot of them…wouldn’t a more apt answer be to fix the solution on the front end, before a patent is granted?  By setting up one administrative process on the back end to fix errors that are caused by a separate administrative process on the front end, Congress has created additional layers of uncertainty for companies and investors, as well as opportunities for harassing inventors and innovators, that are more likely to hinder innovation than the presence of any “bad patent” might.  

Although I’m disappointed with the outcome of Oil States, I still think there could be a happy ending to this story.  Given recent remarks by Director Iancu, where he has repeated his focus on changing the narrative to pro-innovation and pro-intellectual property and increasing the reliability of a patent grant, I hope he will take the opportunity provided by Oil States to actually fix the patent system by looking at the initial examination process, so we don’t have so many “bad patents” to start with, and curtailing the zealousness with which the PTAB has approached the inter partes review system, returning more value and certainty in the property right of issued patents.  

 

Matthew Rizzolo
Counsel, Ropes & Gray

In the U.S. Supreme Court case Oil States Energy Services LLC v. Greene’s Energy Group LLC, petitioner Oil States Energy argued that the America Invents Act inter partes review (IPR) procedures violate the U.S. Constitution’s separation of powers, alleging that IPRs are an improper exercise of “judicial power” by an executive branch agency—the Patent Trial and Appeal Board (PTAB). Oil States, which had its hydraulic fracturing patent invalidated in an IPR requested by Greene’s Energy, had argued that patents can only be ruled invalid by a jury in a federal district court, not by a panel of administrative patent judges in the PTAB.

Today, the Supreme Court affirmed the Federal Circuit’s prior ruling that these IPR proceedings do not violate the Constitution. Ropes & Gray intellectual property litigation attorneys expected that the Court would uphold the constitutionality of these AIA trial proceedings, given the history of reexamination of validity at the Patent Office, the availability of judicial review of such proceedings by the Federal Circuit, and the fact that patent rights flow from a statutory framework that can be adjusted by Congress. The Court noted that narrowness of its holding to the precise constitutional challenges raised by Oil States, and explained that the decision should not be misconstrued as suggesting that patents are not property for the purposes of the 5th Amendment.

If the Supreme Court had found IPR proceedings to be unconstitutional, patent challengers would have lost an important cost-control mechanism, forcing most issues of patent validity to be decided in district court litigation. Such a change would likely have reinvigorated so-called “patent trolls” and increased nuisance lawsuits and costs on patent defendants.

Justice Neil Gorsuch dissented from the Court’s ruling (joined by Chief Justice Roberts), expressing his view that patent rights were not the type of rights that historically could be adjudicated outside of the independent district courts.

 

Matthew Kregger
Partner, Morrison Foerster

The PTAB is still in business. By upholding the constitutionality of inter partes review procedures, the Court has left intact this powerful tool that can be used to challenge patents.   The Court rejected the argument that patent validity disputes have to be adjudicated by a federal court. Instead, the Court ruled that these disputes can be heard by administrative patent judges who work for the patent office. 

PTAB challenges have become a crucial part of patent litigation. Frequently, after a patent infringement lawsuit is filed the case is stayed while a PTAB challenge is resolved.  This has resulted in a lower cost way for those accused of infringing a patent to win the case or drive it to an early settlement. By rejecting the constitutional challenge in Oil States, the Supreme Court kept this important option open for accused infringers.  

 

Tahir Amin
Co-Founder and Executive Director, Initiative for Medicines, Access & Knowledge

The Supreme Court’s ruling marks a victory to ensure the American patent system works responsibly and reasonably to get true inventions into the hands of consumers, patients and families.

When it comes to deciding which patents are merited and which are not, the Patent Trial and Appeal Board plays a critical quality control function. And affirmed by the Court’s ruling, we’re on the right path to removing unmerited patents that drive up drug prices and block too many people from getting the treatment they need. Healthy competition in our marketplace won today.

 

Clint Conner
Partner, Dorsey & Whitney

Companies targeted with patent infringement suits can take comfort in knowing that they will not simply be a punching bag; they can punch back.  The Court’s 7-2 decision is a resounding affirmation of inter partes review proceedings, which are widely used and have proven to be effective at weeding out weak patents.  The Court’s decision will discourage patent holders from pursuing haphazard patent enforcement measures.  Patent holders would be well-advised to conduct a serious analysis of the validity of their patents in view of prior art before launching enforcement measures.  Companies subject to a seemingly never-ending stream of patent infringement suits should be encouraged by the Court’s decision because it solidifies the leverage that inter partes review proceedings can provide to alleged infringers.

 

Eric Buresh
Erise IP

While Oil States was closely watched for its potential of eliminating IPR proceedings altogether, the Supreme Court’s decision affirming the constitutionality of IPR proceedings is ultimately a non-event that effectively maintains the status quo.  If it had come down the other way, the Oil States decision would have had an existential impact on IPR proceedings.  As decided, Oil States should not have a meaningful impact on practice before the PTAB.

The Supreme Court’s SAS Institute decision, however, will have a multitude of impacts on both practice and strategy before the PTAB.  Initially, we would expect to see both Patent Owners and Petitioners attempting to have the PTAB modify recent institution decisions to comport with the Supreme Court’s new guidance, which requires the PTAB to institute IPR proceedings on all challenged claims if the Board decides to institute on any one challenged claim. From a practice standpoint, it will be interesting to see how the PTAB adjusts its practices to SAS.  One possibility is that the PTAB will only address one (or select) claims in institution decisions.  This would reduce workload on the PTAB in many cases, but it would also leave the parties with no guidance on how the PTAB is initially viewing the remainder of the challenged claims that now need not be addressed at institution.

From a strategic standpoint, Petitioners will need to be more cautious about which claims to challenge in an IPR.  After SAS, even claims that could potentially have weak prior art reads will now be subject to institution if other claims are subject to art that passes the institution threshold.  The long-term result is that those weaker prior art reads will now proceed through a Final Written Decision giving rise to estoppel effects as to those claims.  From the Patent Owner side, a possible strategic shift that may evolve is the option of statutorily disclaiming broader claims that are more likely to invoke an IPR institution.  Such a strategy could effectively remove the low hanging fruit that would otherwise result in an institution decision as to all challenged claims

 

James Edwards
Executive Director, Conservatives for Property Rights

We are disappointed that the Supreme Court ruled that the Patent Trial and Appeal Board (PTAB) is constitutional in another move that further weakens our patent system and continues the Court’s trend of harming our once great patent system. While we are pleased that the majority opinion emphasized that this ruling is a narrow one and should not suggest that patents are not property, we still fear that this ruling will continue to erode the constitutional protection of property rights and degrade our patent system. This decision makes clear that it’s time for Congress to step in and take action to eliminate or seriously reform the PTAB system through legislation such as the STRONGER Patents Act.

 

Erik Oliver
Partner, Richardson Oliver Law Group

In today’s 7-2 decision upholding IPR, the US Supreme Court maintained the AIA regime which allows parties to challenge patents they view as having dubious validity. This is the outcome I predicted and while I believe further court challenges to IPR as such are unlikely to be successful in the short term, the majority opinion took pains to emphasize the narrowness of the holding. In fact, two areas were called out as unresolved: (1) retroactive application of IPR to pre-AIA patents and (2) a broader due process challenge to the IPR process.

Nonetheless, those opposed to IPRs might do better to focus their efforts on reforming a process they view as unfair at the USPTO. They will likely find Director Iancu to offer a more favorable ear than the Supreme Court. Iancu has emphasized his interest in strengthening patent rights and the recent Federal Register notice and new examiner guidelines on § 101 align with a more pro-patent rights stance.

The decision here also reinforces the opportunity to enhance your company’s patent prosecution practices. If your business depends on having assertion-ready patents, then this ruling is a further incentive to implement prosecution practices aligned with increased patent value such as conducting a pre-filing search, submitting more prior art, filing more claims of more varied scopes, and having a robust continuation practice.

 

Van Lindberg
Member, Dykema Cox Smith

Much of the commentary and argument associated with Oil States focused on the idea that because patents have the attributes of private property, they must be “private rights” protected by the constitution. The majority opinion in Oil States says otherwise, that a patent is a “public right” that only arises out of government action. This firmly entrenches the idea that inter partes reviews are just “a second look at an earlier grant.”

The other takeaway from Oil States is that this is really a maintenance of the status quo. To decide that inter partes reviews were not constitutional would have led to major disruptions. Although some parts of the patent community wanted IPRs to go away, Oil States was always a long shot.

 

Brian Pandya
Partner, Wiley Rein

Today’s decision is a clear victory for PTAB supporters.  The Supreme Court’s reasoning in Oil States was simple and crystal clear:  if the PTO can grant a patent, it can take it away (under certain circumstances).   But, the PTAB as we’ve known it since 2012 is changing.  Examples of changes include: today’s surprise decision in SAS that all petitioned claims must be reviewed, leaving open the dreaded possibility (for petitioners) of an IPR being instituted on the basis of the challenge to one claim but other claims later being confirmed as patentable on the backend, thus creating a bulletproof patent; the many internal changes to PTAB practice and procedures such as claim amendments and follow-on petitions, with even more changes promised by Director Iancu; and, the majority in Oil States leaving open the possibility of narrower constitutional challenges to the PTAB, such as due process challenges in cases involving alleged ‘panel stacking’ or challenges to the application of inter partes review to patents granted before 2012 before the expectation of IPRs.

 

Brad Pedersen

Brad Pedersen
Patterson Thuente IP

The Supreme Court and IPRs – a Mixed and Messy Bag of Results. In the Oil States decision handed down today, Justice Thomas authored the 7-2 majority decision affirming the constitutionality of IPR proceedings over challenges based on Article III separation of powers and the 7th Amendment Right to Trial by Jury. Depending upon which camp you are in, this will be seen as either generally favorable (petitioners) or generally unfavorable (patent owners).

 

Terry Clark
Member, Bass, Berry & Sims

Today’s decisions add yet another layer of complexity to the already uncertain world of patent law.

The Oil States decision confirms that as long as new prior art exists, patent prosecution never really ends until the patent expires. What the Patent Office gives, it may also take away without the procedural protections independent review through the Article III court system. Assuming an applicant successfully obtains a patent, he must live with the uncertainty of further review under the USPTO’s “broadest reasonable interpretation” and “preponderance of the evidence” standards should he ever decide to enforce his “public rights.”

It remains to be seen whether Congress (with different versions of patent legislation currently pending before the House and the Senate) will take up the policy questions implicated in these decisions.

 

Marshall Schmitt
IP Partner, Michael Best

The decision, its rationale, and the alignment of the Justices are unsurprising based on the questions asked at oral argument and the applicable precedent.  The PTAB bar will breathe a sigh of relief although few were holding their breath given how the case unfolded.

 

 

Chris DouglasChristopher Douglas
Partner, Alston & Bird

There has been much press about the strength of the U.S. patent system and the uncertainty that a patent holder has about the validity of its patents. The practical outcome of the IPR procedure being found constitution is that this uncertainty will remain. It is expected that petitioners will celebrate this victory while patent owners will focus their attention on USPTO rulemaking and/or legislative action.

 

James Heintz
Partner, DLA Piper

This went pretty much as most people had expected, for the reasons that were expected. It was interesting that Thomas’ opinion cabined in the extent of the opinion and left open the possibility of other challenges, including due process and retroactive application.  Thus, we might see still other constitutional challenges

 

James Baldwin
Associate, Neal Gerber Eisenberg

Today’s decision is interesting, but not surprising. Eliminating Inter Partes Reviews would have been a major disruption to one of the most significant changes to patent law in recent history. However, the Court was not entirely unsympathetic to patent owner’s concerns, and telegraphed that the Justices may be open to other challenges. For example, Justice Thomas specifically noted that the Court did not decide whether the patent owner is getting due process and whether Inter Partes Reviews can appropriately be applied to patents granted before the America Invents Act (AIA). The decision finally puts the question of IPR constitutionality to rest, but it seems the fight will continue and move on to issues regarding the structure of the Inter Partes Review process.

 

Chris GallagherChris Gallagher
President of IP Strategic.com

The precision of the Oil States’ dissent sharply contrasts with Justice Thomas’ convoluted majority opinion, moving the distinction between public and private property further into the fog of today’s patent uncertainty. His latest opinion now joins his 2006 eBay decision to create a double deterrent to investment in US patented invention. I cannot usefully add clarity to the words of Justice Gorsuch except to repeat an early excerpt and cogent foot note.

“Today, the government invites us to retreat from the promise of judicial independence. Until recently, most everyone considered an issued patent a personal right—no less than a home or farm—that the federal government could revoke only with the concurrence of independent judges. But in the statute before us Congress has tapped an executive agency, the Patent Trial and Appeal Board, for the job. Supporters say this is a good thing because the Patent Office issues too many low quality patents; allowing a subdivision of that office to clean up problems after the fact, they assure us, promises an efficient solution. And, no doubt, dispensing with constitutionally prescribed procedures is often expedient. Whether it is the guarantee of a warrant before a search, a jury trial before a conviction—or, yes, a judicial hearing before a property interest is stripped away—the Constitution’s constraints can slow things down. But economy supplies no license for ignoring these—often vitally inefficient— protection.”

“Color me skeptical. The very point of our written Constitution was to prevent the government from “depart[ing]” from its protections for the people and their liberty just because someone later happens to think the costs outweigh the benefits.”( foot note)

 

Mark Janis
Director, Center for Intellectual Property Research at Indiana University’s Maurer School of Law

The decision this morning is a good outcome for the patent system. It’s the culmination of decades of debate over whether to have a meaningful post-grant administrative review process in U.S. patent law,” said Janis, who proposed such a system in an article published in 1997. “I wondered about the constitutional question back in 1997; it’s good to see the constitutionality of the process vindicated today.

I hope that the decision marks an important inflection point in the policy debate over post-grant review proceedings.  Momentous questions about the nature of the proceedings can now be set aside.  The pragmatic work of refining the implementation details can proceed. USPTO Director Iancu seems to have an appetite for that work, and I hope that the result will be a set of procedures that better balances patent owner and challenger interests.  Justice Gorsuch’s dissent provides much food for thought and may signal the emergences of a new and forceful voice on patent matters.

 

Randy Landreneau
President, US Inventor

This is a dark day for America. Within the DNA of the great American experiment has been the concept that any person from any walk of life who comes up with something patentable can own it and benefit fully from that ownership. This has been a key part of the “American Dream.” Patents have been property rights for 200 years. Now, the degree to which you own your patented invention will depend on politics – who is President, what multinational corporations supported the campaign, what key person of their viewpoint gets appointed as head of the Patent Office, and how can the system be skewed to fit that viewpoint. The result is the death of the kinds of disruptive American innovation that have served this country and mankind so well.

Every great idea in the mind of an independent inventor is absolutely his or her own property until it is disclosed. If the eventual patent is not the private property of the inventor and can be invalidated as easily as now, what is the incentive to disclose the idea? Without legislation that eliminates the PTAB and requires an Article III Court with a jury to invalidate a patent, America will never again lead the world in innovation.

 

Bijal Vakil
Executive Partner, White & Case

The Supreme Court’s decision today will guide the future actions of the PTAB, which has become a popular forum for parties to resolve disputes. We expect to see an even greater number of cases being brought to the PTAB because, since 2012, there have been 12,000 proceedings filed at the board. We are going to continue to advise our clients, as we always have, that they should invest in robust patent portfolios, and that they should be constantly evaluating their best practices on how to monetize, leverage and/or approach others about cross-licensing them.

The PTAB system is but one of many options for companies to turn to for resolving their patent disputes. The district court and the International Trade Commission are other alternatives. There are several advantages that the PTAB provides its users. First, the process is quick; second, it saves companies money because it limits the amount of discovery; and third, it gives the parties insight into their oppositions’ positions early on in the matter. Moreover, there is nothing that prohibits concurrent proceedings in the district court and PTAB to resolve disputes.

 

Ronald Abramson
Partner, Lewis Baach Kaufmann Middlemiss

Oil States is as widely expected. One collateral effect of the decision is that it further strengthens the “public law” aspect of patents, which could make a difference in cases that require consideration of the public interest, such a forum disputes and injunctions. Oil States would have been monumental had it gone the other way, but it was not expected to, and did not. There is also potentially a retroactivity question on Oil States. Most patents in current IPRs were issued prior to the law establishing IPRs. Today’s Oil States ruling leaves that issue open – though one might doubt it would come out any differently.

 

Christopher Loh
Partner, Fitzpatrick, Cella, Harper & Scinto

The majority’s reasoning essentially is that, because the executive arm of the U.S. government has been given the constitutional power to grant a patent, it also has the constitutional power to take it away.  The majority rejected Oil States’s argument that patents are entitled to special status after they issue; the majority explained that patents are issued subject to the qualification that they subsequently can be reexamined or canceled by the PTO.  While the majority disagreed with the dissent over the import of historical practice to this case, the majority nevertheless found a historical analogue to IPRs in the practice of the Privy Council, an 18th century arm of the English Crown that until 1753 had the exclusive authority to revoke patents.  In upholding the constitutionality of IPRs, the Supreme Court avoided a number of subsidiary issues that would have arisen had it ruled the other way, including what to do about patents previously invalidated in IPRs.  The Supreme Court left open a door for future litigants to argue that IPRs might be subject to constitutional challenge under the Due Process Clause or Takings Clause.

 

Cyrus Morton
Chair of the Patent Office Trials Group, Robins Kaplan LLP

To state the obvious, this decision just preserves the status quo.  It’s business as usual at the PTAB.  The decision expressly did not resolve the retroactive applicability of IPRs. That issue had the attention of several Justices at oral argument, and further challenges on this issue are sure to follow. If you filed for a patent without knowing that IPRs would later take it away, maybe you would have kept it a trade secret.  The underlying question the decision leaves unresolved is whether or not IPRs are a good idea. The dissent by Justice Gorsuch, and joined by Chief Justice Roberts, provides the argument that they are not. In essence, Gorsuch argues that in England before the Constitution, and for nearly 200 years in America, it was clear that patent rights deserved the protections provided by an Article III Court. Now, it is up to Congress to make that choice, and they have said the Executive Branch giveth, and the Executive Branch can taketh away. IPRs won’t be going anywhere anytime soon.

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.

Gene Quinn

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Discuss this

There are currently 70 Comments comments.

  1. Night Writer April 24, 2018 6:27 pm

    The decision rests on an unfortunate mistake, used to distinguish the Court’s prior 19th Century holdings. It states that the Patent Act of 1870 “did not include any provision for post-issuance administrative review.” It is difficult to understand this belief. The 1870 Act at Section 53 permitted “reissue” proceedings by its express terms, and reissue statutory provisions (Sections 41, 46) permitted the cancellation of original patent claims. Against this statutory backdrop, the McCormick Court forbade cancellation of original patent claims on constitutional grounds.

    That is the best comment. Also, they misinterpreted the actions of the Privy Counsel. Patent invalidity was a common law action (Lemley’s paper is wrong) and Gorsuch disagrees with Lemley’s paper.

  2. Night Writer April 24, 2018 6:32 pm

    The decision in Oil States again is just wrong. It is like Alice where the SCOTUS has just generated false facts and given new definitions to old words to justify burning down the patent system.

  3. John White April 24, 2018 7:32 pm

    Well folks, what we have here is the “baby” (the U.S. Patent System) has been dispatched thru the drain, and yet the “bath water” (frivolous litigation) remains. This horrible decision, where a patent is just like a public toll (Troll?) bridge, combined with the Court’s past steaming pile a-la eBay (compulsory licensing) means the patent system is effectively done. The odds of you keeping your patent are now limited to a one out of three chance (the PTAB invalidation rate being 2/3), and your odds of getting an injunction are essentially zero. So, a US patent is now, officially, worthless. The Executive branch (USPTO) can con you out of filing fees to get a “right” that they can summarily take away when paid more by your competitor when that right becomes valuable. Who in their right mind would get a US patent? The “baby” is gone. The Gorsuch dissent has it right. Oh, and by virtue of patents being worthless, “trolls” can get patents more-or-less for free; so go get a bunch and sue. One might stick and, besides, even an IPR will rip $ 300 K each from someone. So, have at it. Be as frivolous as you want filing lawsuits. The “bath water” remains.

    The follow-on SAS decision in view of Oil States is like saying, “well, the tornado destroyed your house, but hey, here is a perfectly good shingle from the rubble.” Gee, thanks, let’s see where on my destroyed house this will fit!

    Unless, and until, the Congress corrects the effects of the PTAB/AIA combine, and its wholly awful aftermath, the Courts, led by the Supreme Court, will continue their unabated onslaught against the patent system. I think we’ll miss its absence. The future brought to us by patent protected technology, a staple of the US economy, has been ceded to others.

  4. Gene Quinn April 24, 2018 8:26 pm

    I’m not sure I agree that the status quo has been maintained. The Supreme Court has said rather definitively that patents are not a property right. Patents are now categorically a government franchise, nothing more. It is purely fools gold to hold out hope that patents will be a property right in a Takings or Due Process context but only a government franchise elsewhere. The verbiage of the grant doesn’t change, neither does its nature. Patents are now definitively not property… at least unless and until Congress overrules Oil States.

    So the status quo has not been maintained, and as is typical the Supreme Court has found a way to do more harm.

  5. Independent inventor April 24, 2018 9:16 pm

    All of these lawyers doing cartwheels because patents are now essentially worthless. Don’t they realize that when the innovators in this country stop bothering with the patent process, their high-dollar clients won’t have anything left to steal? Only good news is these clowns will be out of a job. “A good outcome for the patent system”. Unbelievable. There is no “patent system” if by which you mean a system which allows an innovator to protect his or her idea against market incumbents hell bent on stealing and squashing others. Now Gene says we should go to China (!) for patent protection? The world really is upside-down. We had a good run, but the game is over.

  6. Night Writer April 24, 2018 9:44 pm

    @3 John White

    Well having the guy that taught me how to pass the patent bar say this is pretty depressing. I will repeat what I have been saying for many years now that this is about big corporations and the courts doing their bidding. This is very similar to what happened to anti-trust laws. The justification is always the same. We can’t compete in the world unless you give us what we say we need.

    It may correct itself somehow, but I don’t see how.

  7. Paul Morinville April 24, 2018 9:55 pm

    My advice for small inventors and startups is to abandon the US patent system. If you can keep it a trade secrets, do so. If you cannot, patent it in China but not here. Patenting here is worse than useless, it is a liability that will cost you hundreds of thousands of dollars and many years of your patent’s life.

    Congress is hopelessly fiddling while our innovation engine burns. The courts are rampaging down the same path of further destruction. Perhaps the Trump administration wants to correct what they can, and I have great hope in Iancu, but he is limited to what Congress and the courts hand him.

    At some point, one has to accept reality. For me that point is now. Do not file for a patent in the US.

  8. angry dude April 24, 2018 11:30 pm

    Paul Morinville @6

    “Do not file for a patent in the US”

    Ha-Ha-ha

    Dude,

    I was posting this message here for years since Ebay fiasco and all the regulars accused me of being overly pessimistic loser not capable of exploiting the still great US patent system…

    Well, try to exploit it now (better not, unless you have money to burn)

    The doc said to the morgue: “to the morgue it is!”

  9. temorit April 25, 2018 12:19 am

    Angry Dude – I may be finally ready to give in and agree with you. Which is not to say that I thought you were wrong for the past few years, but I couldn’t give up hope that this was just a pendulum swing. The pendulum now is dislodged from the fulcrum. To the morgue it is!

  10. A Rational Person April 25, 2018 1:19 am

    Gene@6

    I agree. Since the Oil States decision effectively allows revocation of the patent grant at will by the Executive Branch, there’s no need for a “taking” by the Federal Government to transfer a patent right. The Federal Government can simply revoke one party’s patent right and give a grant of exclusive right for the same technology to someone else.

    Although I would expect the market for U.S. patents to be severely damaged, at least in the short run, during the remaining time that U.S. Patents have significant value there could be a boom market in the purchase of PTAB judge appointments.

    Hope the four liberal justices who voted to destroy the U.S. Patent System in Oil States enjoy the possibility that their decision may help fund Trump’s re-election campaign through the “contributions” his campaign is likely to receive in return for appointments to the PTAB and the stacking of PTAB panels.

    Hopefully, USPTO Director Iancu is more principled than the four liberal justices and will resist the tremendous temptation to put PTAB appointments up for sale.

  11. Paul Morinville April 25, 2018 1:27 am

    Angry Dude,. To the morgue. Agreed. Do not patent in the US. It’s over.

  12. Night Writer April 25, 2018 7:10 am

    Of course, we shouldn’t underestimate the ingenuity of corporations or individuals to find a way to make money using the patent system such as it is.

    I think John White is alluding to this. I think the new patent system very much favors large players with more money and sophistication.

    I think the time to reform will depend now more on economic issues and how the corporations fair. We are likely going to have to wait for things to become terrible (1929 or maybe 2008) for reform.

    We have entered the age of the giant international corporation. Makes me wonder if they can also weaken the patent system in other countries.

  13. Pro Se April 25, 2018 7:52 am

    Unless the PTAB choose to ignore pre-AIA 12(b) and accept a printed publication that does not prove publication before my critical date….

    I will have survived my #12 and #13 IPRs…

    My life today is one of continuing anxiety, a lifestyle of waiting for the next legal zinger. After 5 years collectively, I’m finally getting to my first Markman hearing next month.

    I put my soul into my patents,

    I’ve sacrificed everything to obtain them,

    I went through years broke waiting for my patents,

    I endured major disrespect from family and friends chasing my “dream”,

    My marriage barely survived while on the road to obtaining my patents,

    Before Alice, I was told my patent claims were too complicated and long,

    After Alice, I’ve been called a visionary, no, I just studied and applied Phrama markush-type claims,

    I built my dream product and own the best product name in my field of patenting..

    After thinking about this, no… I’m going to fight.. the U.S. patent system and courts are going to have to kill me… I’m ready to die with my patents in hand…

    I am a U.S. Inventor and product developer, if the devil want to fight, he better call God to come help him.

  14. A Rational Person April 25, 2018 8:02 am

    Night@11,

    As I discuss in @9 above, I also wouldn’t underestimate the ingenuity of the political party in control of the White House to find a way raise money off the the patent system such as it is.

    As a reminder, the hypothetical situation I have proposed above is not so hypothetical:

    The following article from IPWatchdog on May 7, 2017:

    More conflicts of interest surface with second PTAB judge

    http://www.ipwatchdog.com/2017/05/07/more-conflicts-interest-surface-second-ptab-judge/id=83012/

    With the ability of the political party in control of the White House’s to appoint judges to the PTAB and stack panels on the PTAB subject to no review by Congress and with the appointed judges not subject to the Ethical Code of Conduct applicable to Article III judge, it would seem only a matter of time before various tech firms realize it might be worth buying a few PTAB appointments from the party that controls the White House.

    I would also note that one of the major reasons why property rights are supposed to be adjudicated by Article III Courts and not by administrative agencies that are political controlled is precisely because of the possibility of the type of situation I have outlined above.

  15. Night Writer April 25, 2018 8:09 am

    @13 A Rational Person

    I agree 100 percent with you. With saw that with Obama who sold the CAFC appointments to the highest bidder.

    (And there is huge amounts of money at stake.)

  16. Tesia Thomas April 25, 2018 8:11 am

    @Pro Se,

    Keep up the fight. You owe it yourself, really.

    To be honest, worst case scenario, you become a relic in inventors history like Farnsworth. 🙂

  17. Curious April 25, 2018 8:13 am

    Short-term winner: Big corporations (aka, the cabal of “efficient infringers”)
    Long-term winner: China
    Loser: Any small-time inventor with a dream
    Loser: Any mid-size company with patent rights
    Loser: American innovation

    The IPR process is rife with abuse and is set up such that big can eventually wear down small. If big loses an IPR, they (or one of their proxies) can simply institute another IPR. If small wins an IPR, they gain nothing except another ticket to ride upon the money-draining IPR ride. A few of spins on that ride, and you can lose millions. Eventually, small will lose and their patent(s) disappear. Oh, and this doesn’t take into account that the fact-finders (i.e., the APJs) are subject to the whims and desires of the executive branch. Got a pesky patent that you want killed, perhaps a $400,000 donation to a PAC friendly to the current president might solve that problem? Of course, there is judicial review but findings of fact are reviewed for “substantial evidence.” In layman’s terms, so long as the court can find even a glimmer/whiff of truth in them, then the facts are not to be set aside (regardless of whether a mountain of facts supports the other position).

    While big corporations will win in the short-term, China is playing the long game. Sure, bring your patents over to China. They’ll take all of your disclosures (for now) and perhaps even enforce some foreign-originated patents. However, once they’ve gotten what they want, they are free to change the game to be foreigner-unfriendly — something they ALWAYS do. At this pace, the US patent system will be a shell of what it once was and be essentially useless. When that happens, China will start flexing it’s economic muscles and start competing in earnest against the largest US companies. China doesn’t care about competing fairly and without the patent system to protect US innovation, they’ll be more than happy to take down US industry.

    BTW — if you have kids, it is never too late to have them learn Chinese as a first (err, I mean second) language.

    Finally, for those advocating trade secrets — have you been watching the news the last decade or so? Who is capable of keeping a secret today? If your “trade secret” has some economic value, some hacker will find it (or be paid to find it).

    One last thing. Reading the comments from the industry leaders, it is easy to tell those that care about the US patent system and those that are tools for the efficient infringers.

  18. Night Writer April 25, 2018 8:17 am

    All these posts really bring out the distinction between what the majority wrote and the dissent. The majority acted as if this would be just business as usual with administrative state. I.e., something like your SSN payments. No one really cares.

    But, patents are different in that there is a lot more money at stake. Is Google now going to make sure they get the director of their choice? I’d guess yes or at least that they will pay a large some of money for getting who they want.

    Gorsuch’s statements (with Roberts) should be read more than once.

  19. Night Writer April 25, 2018 8:30 am

    Curious >>One last thing. Reading the comments from the industry leaders, it is easy to tell those that care about the US patent system and those that are tools for the efficient infringers.

    That is for sure. Lemley’s paper that was cited should be scrutinized. Note that the dissent says that they don’t think Lemley’s paper is correct. Still just a f’ing joke that the SCOTUS cites as evidence a paper that was not peer reviewed and, in fact, has no review and there is no recourse for anyone that asserts that the paper violates ethics. Yet the SCOTUS cites it as factual evidence.

    Just a f’ing joke this country has become.

  20. Disenfranchised Patent Owner April 25, 2018 8:39 am

    Remember “You didn’t build that!”?
    Well now it’s also, “You didn’t invent that!”

  21. Tesia Thomas April 25, 2018 8:42 am

    @Disenfranchised Patent Owner,

    I think it’s, “You don’t own that!”

  22. Disenfranchised Patent Owner April 25, 2018 8:48 am

    Tesia @ 20…

    I think it’s more like the story of Edward Pilgrim, who hanged himself after his property was taken from him for a pittance. I thought he owned it, but…

    Check out his story on Wikipedia…

  23. Genuinely curious April 25, 2018 9:08 am

    From John White: “So, a US patent is now, officially, worthless.”

    So, this is what you all actually believe? Am I to assume that pretty much everyone is retiring, going back to school, or working on obtaining a new skill set because (we all agree) patent law is dead?

  24. Paul Cole April 25, 2018 9:10 am

    @ Paul Morinville

    Patent specifications written to comply clearly and positively with 101-103 and 112 USC with well written descriptions supporting the new function or result which is the basis of eligibility and with a number of good dependent claims providing useful fall-back positions are likely to survive challenge.

    The naïve and badly written specifications seen in many of the section 101 cases did not survive, and mere reading of the claims in issue makes it abundantly clear why this has happened.

    One of my friends in the UK profession was offered the opportunity (which he rightly turned down) to file UK-originating patent applications for a US multinational. The deal was not only a fixed price for each patent filing but also a total of 2.5 hours inventor contact but no more, including both the initial filing stage and subsequent prosecution. Apparently the inventors were too important to be bothered by a mere patent attorney. With attitudes like that then Paul Morinville’s comments are apt. To thinking people knowing the importance of the invention to protect and willing to pay proper attention to detail they are not.

    There are signs that Director Iancu will be a positive influence, as also will Neil Gorsuch who clearly benefits from his time at University College, Oxford.

  25. FistonChin April 25, 2018 9:19 am

    In order for global government to happen, various systems need to he harmonized. The patent systems are one of the key elements that require harmonization. The CLS Bank v Alice decision was one of the first decisions in this regard. These two are clearly directed verdicts with clear errors. All for the hidden purpose of harmonizing the US and EU Patent systems.

  26. Paul Morinville April 25, 2018 9:36 am

    Paul Cole @22. I think Iancu is aggressively working to fix what he can. I’m convinced the Trump administration is trying to fix it on many levels. But there is only so much that Iancu and others in the Trump Administration can do. To fix it for little guys (and therefore for the creation of new technology) will take Congress and the courts reversing completely. Congress is lost in other useless stuff and the problem is not big enough for them… yet. The courts have no real world experience starting up companies or inventing anything. Thomas is literally an English major in a robe. The vast majority of judges don’t even have technical degrees let alone experience in business. The Federal Circuit is stacked with anti-patent activists.

    I don’t see this problem being fixed for 20 years. Between now and then, the Chinese will have completely taken over tech, as they are right now with Artificial Intelligence and so many other fields. When the Chinese hack into an aircraft carrier and beach it, then we will start to fix the patent system. Until then between doltish English majors in robes and corrupt politicians and bureaucrats in Washington, nothing will change.

    “I am tired of fighting. Our Chiefs are killed; Looking Glass is dead, Ta Hool Hool Shute is dead. The old men are all dead. It is the young men who say yes or no. He who led on the young men is dead. It is cold, and we have no blankets; the little children are freezing to death. My people, some of them, have run away to the hills, and have no blankets, no food. No one knows where they are – perhaps freezing to death. I want to have time to look for my children, and see how many of them I can find. Maybe I shall find them among the dead. Hear me, my Chiefs! I am tired; my heart is sick and sad. From where the sun now stands I will fight no more forever.

    Chief Joseph – Thunder Traveling to the Loftier Mountain Heights – 1877

  27. Pro Se April 25, 2018 9:42 am

    Let’s not forget the latest U.S. Tax Reform removed the capital gains benefit from patent sales.

    Anyone working in the computer science field should seek design patents for new and novel GUI designs and build their solutions as a SaaS or device apps and rely on source code Copyrights. Come up with a good product/service name and Trademark it. Also make sure the product/service name can be secured as a .com.

    Copyrights and Trademarks are still strong in U.S. IP, with design patents being likely still feasible: a startup could still create a bundle of valuable IP (I’ve done it, separate from my utility patents, it’s still possible). You will need to actually “make” something though, and make something solves a problem…

    Utility patents are poison, impossible to get within the examining corps these days if you’re not a major company and should be avoided at all cost. The days of thinking up a new idea, making sketches on napkins at conception, working through concepts to constructively reduce the Invention to practice with filing a U.S. utility patent… are over. It used to be you could patent something that solves a problem, now, you have to make something…

    Be careful though… the entire Silicon Valley culture will be looking to take your wonderful new ideas… just hope the work you’ve done thus far, and the brand you created, offers a starting point others are willing to buy as a discount to rebuilding it (to lesser quality) on their own.

  28. Paul Morinville April 25, 2018 9:45 am

    Pro Se @ 24. If that is true, explain why Snap is being eaten by Facebook and how to avoid it.

  29. Night Writer April 25, 2018 9:46 am

    Paul Cole >>>>Patent specifications written to comply clearly and positively with 101-103 and 112 USC with well written descriptions supporting the new function or result which is the basis of eligibility and with a number of good dependent claims providing useful fall-back positions are likely to survive challenge.

    Reality is that under KSR and Alice any patent claim can be invalidated by a competent finder of facts.

    That is just reality based on my reading many, many CAFC cases, PTAB cases, and doing a massive amount of prosecution in the US and all over the world.

  30. Jimmy Niles April 25, 2018 10:12 am

    As an independent inventor with a handful of technology granted patents, I’m beginning to wonder exactly why anyone would go through the process of getting a patent in the U.S. Can anyone explain exactly what the benefits are for having patent?

    If the so-called “monopoly” government franchise right that was granted can be taken away at any moment, what is an inventor to do? If feel like a company may be infringing one of my patents, even bringing the topic up about a licensing aspect, has the potential to start the IPR process for the company to file.

    Maybe the government (including USPTO) are the actual patent troll. After all, an inventor spends major dollars (including attorney cost) for prosecuting an application and all of a sudden it’s been revoked by those who granted you the patent. Does the USPTO offer to give you the money back you paid to them? Does the USPTO/PTAB offer to allow you to modified your claims?

    Maybe inventors would be better off spending their money on toilet paper instead…..

  31. Tesia Thomas April 25, 2018 10:16 am

    In the meantime, we inventors can drive down the costs of US patent drafting, filing, and prosecution…and then hopefully maintenance fees… so we stop overpaying for this crap-tastic IP system.

    Our fees fund the PTAB.
    So, maybe we should try really hard to get PTAB cases before the first maintenance fee so within the 9 months after issuance. Heck, we should file IPR against ourselves or pay Joe Blow on the street to do it if there really ever is estoppel.

    We have to change this system with market forces. Bankrupt USPTO!

  32. Paul Cole April 25, 2018 10:20 am

    @ Night Writer and Paul Morinville

    A well written and carefully prosecuted patent application, possibly also searched beforehand, may cost say $20,000-50,000.

    If litigated the attorney costs may be $500,000-5 million.

    What this means is that the candle of invention, if litigated, has to survive scrutiny under a searchlight. There is nothing that can be done about that – it is just a fact of life.

    HOWEVER, what is a further fact of life is that to be viable a patent specification has to be adequate not only to survive examination by the USPTO but also scrutiny by a court. Anyone who has done litigation before the US courts or before their counterparts in the UK (or even European opposition) will be aware just how demanding that is.

    As individuals we cannot change the system in which we work, only do our utmost to succeed in the situation in which we are placed. That means in our profession drafting specifications of the best achievable quality and prosecuting them with all due care. If we do that, and do not give way to unreasoning pessimism, there is every chance that our efforts will succeed.

    Nil desperandum carborundum (don’t let the bastards grind you down!)

  33. Tesia Thomas April 25, 2018 10:26 am

    Or, let’s make Patent Troll 2.0:

    As soon as your patent issues, accuse every American citizen of infringing.
    Someone will take you to PTAB.
    ???

  34. angry dude April 25, 2018 10:30 am

    Pro Se @12

    I hear you, dude

    Was there any way you could keep your invention(s) a trade secret for a while after it’s available in the market ?

    I myself made a terrible decision to file US patent on some key enabling piece of technology (digital signal processing algo) back in 2002
    Had I decided to keep it trade secret in compiled (and possibly encrypted) binary I’m pretty sure I would enjoy some exclusivity up to this day and would possibly take that little know-how of mine to grave (the problem I solved did not have absolute definitive solution for over 40 years – with over 500 US patents describing alternative much inferior solutions to the very same problem)

    Alas, it’s too late now – it’s fully disclosed in my patent and widely used all over the place

    No more US patents for me

    Fool me once – shame on you !
    Fool me twice – shame on me !

  35. Pro Se April 25, 2018 10:39 am

    @25 Let’s keep in mind Snapchat reportedly rejected a $3bln offer from FB in 2014. It’s also reported Google made an offer the them. Snapchat want to compete but at the risk of what happened to products like Digg (in 2008 it was reported Google offered $200mln and the deal broke down). Digg was ultimately sold for $500k years later.

    Above and beyond this patent mess, there’s still the business of IP and practitioners have to know when to hold em, and when to fold em…

  36. Curious April 25, 2018 10:46 am

    That means in our profession drafting specifications of the best achievable quality and prosecuting them with all due care. If we do that, and do not give way to unreasoning pessimism, there is every chance that our efforts will succeed.
    I am VERY successful getting broad claims on a great many applications. However, when asked about where the credit lies, I always point to the inventors. While a perfectly written specification makes my job a little easier, it is far more important to be working with a quality invention — no matter how described.

    That being said, even a 100 page specification isn’t going to save a patent when judges routine ignore claim limitations in their 101 analysis and overgeneralize the claims to the point that the invention is unrecognizable from their characterization. Under KSR, as NW pointed out earlier, any competent fact finder can cobble together a 103 rejection on just about any claim.

    As such, you saying that “there is every chance that our efforts will succeed” really don’t reflect reality. In my memory, every time SCOTUS has had chance to screw inventors and patent owners, they have. The deck is so stacked against inventors these days that I’m surprised that they even try anymore.

  37. Pro Se April 25, 2018 10:50 am

    @30. Sorry to hear that…

    With physical products, its impossible to keep a trade secret because of reverse engineering. Even medicine can be reverse engineered to some extent, with some trade secrets possible on methods of chemical compiling (like how much time xxX compound is allowed to dry under temperature Yyy).

    Computer science work can now mostly work using cloud computing where there’s robust access security to keep algorithms secret, hidden from reverse engineering.

  38. angry dude April 25, 2018 10:57 am

    Curious @16

    “Finally, for those advocating trade secrets — have you been watching the news the last decade or so? Who is capable of keeping a secret today? If your “trade secret” has some economic value, some hacker will find it (or be paid to find it)”

    If you talk about trade secrets for protecting software functionality then you are somewhat or mostly wrong…

    A hacker (more precisely not a “hacker” but “cracker”) will crack the protections of your executable binary to allow your binary to be used mostly “as is”
    No hacker or cracker can completely decompile and reverse-engineer a large piece of highly technical code – e.g. audio/video encoder/decoder
    – only a large company with unlimited resources can
    (I am not even talking about encrypted binaries – e.g. hardware enabled encryption built into e.g. some TI DSP processors etc)

    Copyright (hopefully) still protects the author from such blatant byte-per-byte copying

    The only way to escape (criminal) copyright violation charges is to completely reverse-engineer the entire functionality of a software product
    and then re-write all code from scratch (in a clean-room)

    In case of complex technical software this is HUGELY expensive proposition
    possible only for largest corporations – not some “hackers”

    It’s a lot cheaper to buy software license or even acquire entire company with all its codebase and original developers

    The loser in this picture is technical progress cause nothing new of any value or significance gets publicly disclosed so other people can’t build on it

    We are back to Middle Ages

  39. VanL April 25, 2018 11:01 am

    I’ve always thought that the shift from “shall have the attributes of private property” to being a “private right” was the logical leap that made Oil States weak from a constitutional perspective. The justices saw that opening and walked right through it, believing (I assume) that they were upholding “property rights” while just removing grants that had never truly vested.

    From a practical perspective, though, I think that the justices would have been motivated to the same result regardless. Think about what would happen to all of the finalized proceedings? The entire framework upon which the opinion is built crucially depends on the belief that the grant was always in error; it just took a while for that error to become apparent. Thus while an individual may have had upset expectations, they “should have known” that their grant was always conditional upon compliance with 101/102/103, even in the face of yet-to-be-discovered art.

    In contrast, if the entire procedure was found unconstitutional, the retroactive disruption of settled expectations would have been widespread and hard to contain. The justices want to see themselves as pragmatic; such an outcome would be abhorrent to them.

    That is why subsequent challenges to the process as a whole are also likely to be unsuccessful. Retroactive application? They’ll probably point out ex parte since 1980 or so and cast inter partes reviews as a continuation in spirit of inter partes reexams. Takings for invalidation? No taking, the grant was flawed from the beginning.

    The real powerhouse of these two is SAS. Short term, I think it is favorable for defendants/challengers, but long term I think it may end up giving teeth to the estoppel provisions of the AIA.

  40. Tesia Thomas April 25, 2018 11:03 am

    @23, Genuinely Curious,

    We will drive down the costs of drafting, filing, and prosecution.
    Then hopefully with less patents, that means less revenue from maintenance fees for the USPTO, and we bankrupt the USPTO because if small inventors aren’t creating IP then what’s the use of the PTAB?
    Apple isn’t taking Google to PTAB.

  41. Curious April 25, 2018 11:58 am

    No hacker or cracker can completely decompile and reverse-engineer a large piece of highly technical code
    I read this article about a week ago. https://www.wired.com/story/xbox-underground-videogame-hackers/ It makes for a very interesting read.

    You don’t have to decompile or reverse-engineer code if you have access to the source code. What is described in the article was the work of rank amateurs.

  42. Curious April 25, 2018 12:03 pm

    The real powerhouse of these two is SAS. Short term, I think it is favorable for defendants/challengers, but long term I think it may end up giving teeth to the estoppel provisions of the AIA
    I’ve made this point before. I’ve seen more than my fair share of work from the PTAB. If they can tank one your claims, it is no sweat off their back to tank all of your claims. Also, if you are going to the Federal Circuit on appeal, you cannot effectively challenge every claim that you thought you should have won on. You’ve can challenge may two or three issues (maybe a fourth if you can keep everything succinct). After that, you cannot effectively argue for more.

  43. Paul Cole April 25, 2018 12:11 pm

    @36 Curious

    My score on Section 101 is 7 amicus briefs to the Federal Circuit and Supreme Court and two detailed comments in 2014 to the USPTO. So I can claim to have studied Section 101 in some depth.

    Contrary to popular belief, the problem is NOT the Supreme Court opinions which have been measured and cautious but over-reaction in the Federal Circuit, the district courts and the USPTO.

    Interpretation of judicial decisions and extraction of the relevant rules of law is taught in law school, and Arthur Goodhart (subsequently Master of University College Oxford) wrote a notable paper on the subject which can be accessed here:

    http://legacydirs.umiacs.umd.edu/~horty/courses/readings/goodhart-1930-ratio.pdf

    It seems that the skills taught to Yale law students in 1930 have been largely forgotten, at least amongst the members of our profession.

    And I have not seen a Federal Circuit case yet where it has been argued (a) that the claimed subject matter as a matter of substance as opposed to mere outward presentation falls within one of the eligible categories of Section 101, and (b) in consequence it cannot fall within a judicial exception without raising issues of separation of powers.

    If you look at the facts in Mayo, the claim recited four elements. The two allegedly novel elements were not in any of the eligible categories because they merely disclosed information without requiring involvement of the hand of man. The other two elements were admittedly old. Anyone who considers that eligibility can be achieved by combining two old elements with two ineligible elements must be on a diet of magic mushrooms. Other recent Supreme Court opinions are based on similarly doubtful claims.

    The consequence of State Street was that our profession arrived at the settled expectation that unduly broad and speculative claims would be upheld. The painful return to reality should blind us to the fact that novel and clearly inventive claims are likely to be upheld.

  44. PreAIA_patents_should_not_be_subject_to_IPRs April 25, 2018 12:13 pm

    I’m a Pro Se inventor and I have 5 patents (1 parent and 4 continuations) having a priority date of 2009. The original parent patent application was filed in 2009, and it was granted in 2013. All continuation patents claiming priority from the parent all have a 2009 priority date, but they were filed (and are being filed) after 2013. All continuation patent applications were (and any will be) examined under the pre-AIA rules; however, the actual patent grants that were (and any that will be) issued actually issue after the AIA went into effect. With these continuations, I am attempting to get the claim wording correct and am also claiming additional inventions from the original disclosure.

    The AIA changed the rules after I started the game. It changed how patents are examined. The PTO even acknowledges this: A continuation patent application that I file today that claims benefit from the parent pre-AIA patent application would be examined using pre-AIA rules.

    For a resulting patent to then be subject to IPRs, a tribunal created by the AIA, *AFTER* I started this process, no matter when the resulting patent issues, would be in injustice from all sides.

    I did not sign up for the AIA rules, including IPRs, and my patents are not examined under the AIA. Had I known that the AIA was going to establish the PTAB and IPRs of which my patents (having a PRIORITY DATE that pre-dates the AIA) would not be subject in order to enforce, I wouldn’t have entered into this agreement with the government in sharing my invention with the world. The PTAB and IPRs introduced additional risks and costs that I must now bear in order to enforce my patents post-issuance, let alone the method of determining validity is inconsistent with what was in effect pre-AIA.

    Indeed, the AIA changed the patent bargain/exchange mid-sentence for inventors.

    I still need to file continuations to protect everything that my original disclosure entails of which is patent eligible. I’ve invested years and sacrificed my time, money, family, numerous business opportunities, etc in pursuit of protecting my invention(s) via patent grant, and I’m right in the middle of this pursuit. And I don’t know what to do. Will my continuation patent applications, once granted, fall under pre-AIA or post-AIA? The law is not clear. But if I fail to file a continuation on time, I lose the benefit of claiming priority.

    No matter how SCOTUS ruled here in Oil States, the patent rules (AIA) changed after I started the game. My patents not being subject to the AIA during examination but also being subject to the AIA post-grant is not consistent/fair.

  45. Paul Cole April 25, 2018 12:36 pm

    @ Clint Conner

    “Patent holders would be well-advised to conduct a serious analysis of the validity of their patents in view of prior art before launching enforcement measures.”

    Seldom has a wiser remark been made.

    An inventor planning to launch infringement proceedings would be well advised to invest in an extensive novelty search followed by validity and infringement opinions from a firm that (a) did not prosecute the case to grant and (b) will not be responsible for conduct of the litigation and therefore has no axe to grind. If there is any doubt or flaw discovered, reissue before start of proceedings is advisable. Marconi very famously came to the UK for the exploitation of his coherer which formed the basis of his wireless system and his subsequent fortune. His drafting team included a member of the Carpmael dynasty as patent attorney, Preece who was the telecommunications expert for the Post Office and John Moulton Q.C. (subsequently Lord Moulton) as litigation expert. The patent drafted by the combined work of that four-member team was so strong and comprehensive that although the industry hated it, nobody dared infringe it.

    It is a fundamental truth that our profession is front-loaded. If the necessary effort is not put into the originally drafted application (including the US provisional if filed), later effort cannot save it. Likewise before the start of litigation. The current fashion for cheap and cheerful patents with over-broad and speculative claims overlooks this important truth.

  46. Tesia Thomas April 25, 2018 12:51 pm

    This is about the US patent system after the passage of AIA.

    There is IP that is invalid in the US that is valid in China, UK, EU, Japan, etc.

  47. angry dude April 25, 2018 1:24 pm

    Curious @41

    Why would I give anyone access to my source code ???

    Only after they buy my entire company – not just a software license

    Do you have source code for any *commercial* software you are using every day ? NO

    The article is all too familiar and quite funny though sad

    I personally spent at least $1000 years ago when my son was in his early teens buying those modded JTAG XBoxes off Ebay (with my credit card) and playing modded online Call of Duty games… and whatever else he did of which I had no idea
    (I told him if FBI showed up one day on the front porch I would walk them to his room immediately)

    And NO, those dudes could not reproduce Xbox hardware or original AAA games – they were just bottom feeding on security breaches making *minor* hardware/software mods possible

    It just illustrates that copyright protections are strong and criminal in nature and that US government will go out of its way to protect big corps like MSoft from any wrongdoing even if it caused negligible monetary damages to them

    But that same US government will gladly crash and kill startup’s/independent inventor’s patents causing them to lose everything

    Sad, very sad

  48. angry dude April 25, 2018 1:34 pm

    Paul Cole @45

    “Patent holders would be well-advised to conduct a serious analysis of the validity of their patents in view of prior art before launching enforcement measures.”

    ???????

    Dude, r u playing us for idiots ???

    I thought that every serious inventor would scour the earth to find prior art BEFORE filing patent application and especially after spending like 5-10 years on patent prosecution and tens of thousands in attorney/office action fees

    NO ?

  49. Ternary April 25, 2018 1:39 pm

    Paul @45. Almost every inventor (independent, institutional and corporate) I worked with has proclaimed that there is “nothing like it (their invention)” out there. And almost every initial discussion I had with inventors included an explanation of a 103 obviousness rejection. Still, most inventors were shocked when they received such a rejection on their application.

    No inventor I ever worked with ever told me to “just to get a patent.” They were all interested in obtaining a “high quality patent.” In that sense interests of inventors are aligned with infringers who complain about low quality patents.

    I suggest that one remedy that will satisfy this professed need for “high quality patents” is to allow a patent owner to file a continuation on an application at any time during the term of a patent issued on the application. Rather than infringing on “low quality patents” it offers the infringers the opportunity to infringe on “high quality claims” and having to pay for that. No surrendering of patents, invalidating of patents, IPRs or whatever required. It allows a patent owner to learn what the petitioner’s objections are against claims in an IPR. Rather than trying to fight a prejudiced forum, a patent owner can make an assessment if she can overcome a new 102/103 rejection and file a continuation accordingly. It further allows a patent owner to draft claims to a changing technological environment and better target potential and real infringers. Like “forever stamps” we should have “forever continuations.”

    If a patent is a government franchise, the government should provide adequate protection for the franchisee.

  50. Pro Se April 25, 2018 1:40 pm

    @44. The best advice I can give you is:

    1) As of right now, your pre-AIA patents will be subject to the IPR procedure, until a law is passed that changes it. Infringers love this part of the AIA deal because if Invention is deemed valuable they can just take it knowing that you’ll likely won’t be able to afford or find a contingency firm to represent you in this post-Oil states culture.

    2) Hire a pro prior art search. It’s worth the money. If your patent issues with less than 200 relevant pieces of searched references, you are setting yourself up for disappointment if you’re ever in a district court litigation and your defendant hit you with 200+ pieces of art as part of their infringement contentions disclosure.

    3) Make sure your independent claims pass the pencil length test… anything shorter will for sure be easily challenged with PTAB prior art petitions stitching disclosures together to recreate your short claims. Make sure your claims have total limitations that no 12 reference combination can teach. The USPTO examiner may use up to 5 references to challenge your claims in an office action, the PTAB will accept up to 12 from a challenger as a reason to institute and invalidate your claims.

    Don’t draft claims just to get by your examiner, draft claims to survive the PTAB and district court.

    Hire a licensed patent attorney to advise you on your claims.. I can’t stress enough how important it is to have a professional IP practitioner proof Pro Se work. I made sure I had advisory on my Pro Se work, and it was the best service investment I made at the time.

  51. Curious April 25, 2018 1:52 pm

    Contrary to popular belief, the problem is NOT the Supreme Court opinions which have been measured and cautious but over-reaction in the Federal Circuit, the district courts and the USPTO.
    Right and wrong. Certainly, the Federal Circuit, the district courts, and the USPTO have over-reacted. Well, it is the Federal Circuit that over-reacted and everybody else followed their lead. However, SCOTUS certainly invited all of this by failing to even attempt to put any bounds as to how an “abstract idea” is identified and the determination of what it means for a claim to be “directed to” this abstract idea.

    The painful return to reality should blind us to the fact that novel and clearly inventive claims are likely to be upheld.
    I take it with all of your amicus briefs that you haven’t had time to look at some of the recent Federal Circuit decisions recently? When was the last time you tried to get a patent allowed out of Tech Center 3600? Good inventions are getting shot down ALL … THE … TIME.

  52. Curious April 25, 2018 1:56 pm

    Patent holders would be well-advised to conduct a serious analysis of the validity of their patents in view of prior art before launching enforcement measures.
    That’s sweet and all, but it isn’t going to stop motions to dismiss under 101 or cobbled together Frankenstein-like 103 rejections from getting your claims tanked in a IPR.

  53. A Rational Person April 25, 2018 1:59 pm

    Paul@43

    “The other two elements were admittedly old. Anyone who considers that eligibility can be achieved by combining two old elements with two ineligible elements must be on a diet of magic mushrooms.”

    35 USC 101 reads:

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    Two old elements that are combined that have never been combined before, based on a common definition of “new”, i.e., not existing before, would produce a “new” product or process. So you are effectively arguing that adding patent ineligible elements somehow makes a “new product” or “new process” not “new”. I would suggest that you might be the one on the diet of magic mushrooms.

  54. Curious April 25, 2018 2:04 pm

    Why would I give anyone access to my source code ???
    Why would the Democrats give wikileaks access to their email or why would Equifax give away sensitive data on 143M people? If your source code is on a computer and your computer is connected to the internet, then don’t be surprised if somebody else acquires it.

    Don’t draft claims just to get by your examiner, draft claims to survive the PTAB and district court.
    Good luck with that. When somebody posts an article as to how to draft claims to survive the PTAB and district court, I’ll be first in line to read it. That being said, the claims I draft today are likely to be subject to a different judicial treatment than the claims that are being looked at today. If somebody can foretell what patent law jurisprudence will be in 5 years, let me know. I can find them a job.

    Sure … you can throw everything but the kitchen sink into your claims in the hopes that this may be enough to survive. However, good luck proving infringement or surviving a design around.

  55. A Rational Person April 25, 2018 2:06 pm

    Paul@45,

    It appears, based on the recent practices of the PTAB, that an inventor planning to launch infringement proceedings would be well advised to invest in campaign contributions to the President’s party to ensure the inventor gets PTAB panel that will uphold the validity of the inventor’s patent.

  56. Silicon Valley Inventor April 25, 2018 2:18 pm

    @A Rational Person #55 “…an inventor planning to launch infringement proceedings would be well advised to invest in campaign contributions to the President’s party to ensure the inventor gets PTAB panel that will uphold the validity of the inventor’s patent.”

    That’s throwing good money after bad because those seeking to invalidate the patent have far more money, far greater influence, many attorneys on staff, and — should you succeed in upholding the validity in one PTAB review — more infringers are lining up to invalidate you in subsequent reviews.

  57. angry dude April 25, 2018 2:51 pm

    Curious@54

    Allowing your “secret juice” – your source code to be stolen is a catastrophe
    to be avoided at all costs (worse than wikileaks catastrophe for stupid Dems)

    Cut your company’s internet, compartmentalize your development process so each developer has access to his/her little piece and has no idea about other pieces of a puzzle, have them sign draconian non-disclosures/non-compete agreements etc etc etc

    Welcome to Middle Ages

  58. Paul Morgan April 25, 2018 2:53 pm

    A minor and now irrelevant point, but since raised above as an attack on the Court, the Patent Act of 1870 reissues, and all other reissue proceedings, only allows the patent owner itself to waive its rights and put its patent back into the PTO itself, in a purely ex parte, non adversarial, proceeding. Unlike interference proceedings and all subsequent statutory inter partes proceedings. How could that be an Article III Court proceeding?

  59. angry dude April 25, 2018 2:57 pm

    Silicon Valley Inventor @56

    Me thinks that investing any money/time/effort into US patent system at this point is just throwing good money after bad

    Cut your losses, dude
    I already did years ago – thankfully without spending all of my savings and ruining my marriage

  60. Paul Cole April 25, 2018 3:13 pm

    @53 An allegedly rational person

    If you had read Mayo and the patent in issue, your comments would originate form your mouth rather than the opposite end of your alimentary canal.

    For those who have not troubled to read the patent in issue, both old elements were disclosed in the patent in issue and both were closely related.

  61. A Rational Person April 25, 2018 3:52 pm

    Paul@60,

    I was reacting to your statement, not the particular facts of Mayo

    “Anyone who considers that eligibility can be achieved by combining two old elements with two ineligible elements must be on a diet of magic mushrooms.”

    Your statement implies that combining “combining two old elements” can NEVER be patent eligible under 35 USC 101. I pointed out that this is NOT true and gave an example of why your statement was not true.

    I await your apology for misreading my post.

  62. A Rational Person April 25, 2018 3:55 pm

    Paul@60:

    Also, how does your statement “For those who have not troubled to read the patent in issue, both old elements were disclosed in the patent in issue and both were closely related” show that the combination of the two old element were not new?

    Do you understand the difference between novelty and obviousness?

  63. Don Quixote April 25, 2018 4:07 pm

    And as usual, the majority opinion of the Supreme Court is based upon foggy and equivocating language; whereas, the dissenting opinion retains the tradition of precise language and well-defined precedents in jurisprudence. It’s almost as though they know perfectly what is going on.

  64. Silicon Valley Inventor April 25, 2018 4:48 pm

    @angry #59 “Me thinks that investing any money/time/effort into US patent system at this point is just throwing good money after bad”

    I’ve certainly had the same thoughts, and evaluated repeatedly at each juncture. The money/time/effort required to file a continuation and pay maintenance fees is an acceptable loss relative to the money/time/effort already put into the patent portfolio. Likely it will all come to naught. But to abandon the patents now and potentially have subsequent rulings turn the tide toward patent holders over the next 12 years without an opportunity for me to capitalize would be the real travesty in my situation. We founders know there is tremendous risk going in, and the only path to success is to weigh risk and reward at each juncture using the proper calculus.

    “Cut your losses, dude. I already did years ago – thankfully without spending all of my savings and ruining my marriage.”

    You clearly made the right decision for yourself, and perhaps I have not. But then why are you still here? If you have no vested interest, why are you angry and why do you still care? Shouldn’t you have let go by now? I don’t think those are rhetorical questions.

  65. Perkins April 25, 2018 7:39 pm

    Pro Se @27 “Let’s not forget the latest U.S. Tax Reform removed the capital gains benefit from patent sale.” Can anybody point me to when that happened? My tax guy tells me that capital gains section 1235 survived.

  66. angry dude April 25, 2018 9:59 pm

    Silicon Valley Inventor@64

    My 3rd maintenance fee is due now and I’ve been waiting for Oil States to come out to decide whether to pay it or not…

    The answer is obvious now

    I was in litigation with SV corporation for a brief period of time years ago (before AIA) and realized how ugly and dishonest this patent business had become so decided to quit (and was very lucky to be able to just walk away without being financially punished – they usually try to bankrupt you)

    Even if tide reverses 5-10 years from now its too little too late for me and countless others

    I am just venting out here and trying to educate other aspiring inventors to not waste their life’s work and life’s savings on US patent system

    US patent system does not deserve your effort, time and money. Period.

  67. Pro Se April 25, 2018 10:51 pm

    @65. See page 7 https://www.uspto.gov/sites/default/files/documents/20180201_PPAC_Legislative_Update.pdf

    This one for me was worse than Oil States… I’ve beat enough IPRs to build up some battle tested value.. then BAM… the Trump Administration decided to help everyone else but Inventors. It’s like someone has a vendetta against patents and Inventors.. there’s NO REASON why this provision needed to be in the tax bill… there’s no explanation on why….

    Not only did the U.S. make it to where no one would deem patents strong enough to buy, but they made it were no one with a strong patent could afford to sell.

  68. Lost In Norway April 26, 2018 3:10 am

    Well… this is going to make it interesting for me to advise my clients to enter the US national stage. I am hoping that my “the sky is falling” feeling will pass. I never expected SCOTUS to rule PTAB unconstitutional. But to excuse congress for writing bad law to strip away property rights unconstitutionally, then to make it all work to strip the private property right from a patent (goodbye constitution, hello franchise!) in order to meet a lower standard to make PTAB constitutional? Nope… never saw that one coming.

    Now my co-workers are wanting this decision explained and what it means for our clients in Norway. I’m going to try to do it with as few profanities as possible, but I am not sure that I’ll get it 100% profanity free.

  69. Anon April 26, 2018 8:12 am

    LiN,

    Please let us know what phrasing you come up with!

  70. Anon April 26, 2018 9:38 pm

    …finally starting to catch up, and this caught my eye:

    Contrary to popular belief, the problem is NOT the Supreme Court opinions which have been measured and cautious but over-reaction in the Federal Circuit, the district courts and the USPTO.

    Mr. Cole,

    Just how many times do you have to be told “I told you so” for you to let go of your (unwarranted) admiration of the Supreme Court?

    The problem STARTS at the top – quite opposite of your desired narrative.

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