Paternal Justice: A Bill Cosby Approach to Patents by the PTO

father-dad-son-scoldBill Cosby famously quipped about his father warning, “You know, I brought you in this world, and I can take you out. And it don’t make no difference to me, I’ll make another one look just like you.” Thankfully, our government doesn’t display this bombastic, albeit tongue-in-cheek, style of paternal justice. Ours is a system governed by laws. Where our most ancient natural or civil rights are in play, we have “high walls” to keep government actors from acting capriciously by, let’s say, asserting as one branch of government the power assigned to a different one. Plaut v. Spendthrift Farm, Inc., 514 U.S. 211, 239 (1995). That is the heart of Separation of Powers – the bedrock upon which the United States built all of its public institutions over the past 225 years.

And so it should be when we talk of the grand bargain between an inventor and the sovereign. The modern patent system exists to encourage disclosure. Inventors respond to that inducement. They surrender secrecy over the fruits of their intellectual labor. In exchange for disclosure, the government grants exclusive rights. As constitutional private property, those rights receive protection from interference by the Executive Branch as strong as that of any private property.

If only that were so.

In a filing by the United States Patent and Trademark Office on June 26, 2015, in my clients’ case asserting the unconstitutionality of inter partes review, the Patent Office writes:

“Because Congress may authorize the PTO to issue patents in the first instance, Congress may equally authorize the PTO to reconsider its patentability decisions and to correct its mistakes.”

Brief for Appellees in Cooper v. Lee, App. No. 15-1205 (4th Cir.), at 10. It goes on:

“Because Congress may empower PTO to issue patents in the first instance, it may equally empower PTO to revisit its decisions to ensure that the patents were properly issued.”

Id. at 29.

Bill Cosby’s dad would be gratified.

If he thought about it at all, Cosby’s dad might have also shared the extraordinary understanding of what a patent is that the government just conveyed: “patents for inventions… are entirely created by the federal government.” Id. at 32. Yes, that equal blend of narcissism and solipsism that scored laughs in the 1980’s has crept into the government’s viewpoint about what role it plays for inventors. How many named inventors on issued patents would be surprised to learn what small role (nonexistent, even) they have always played in the patent system, according to the official position and political philosophy of the current administration?

My clients, of course, tell a different story. They point out the historical antecedents of courts adjudicating patent invalidity. Because of that history, binding Supreme Court authority holds that any adversarial invalidation proceeding over the validity of an issued invention patent invokes the “judicial” power. It must happen in court, if it happens at all. Article III of the U.S. Constitution reserves such power to the Judicial Branch. The Federalist No. 43 bears this out, placing invention patents on as high a pedestal as copyrights, in terms of being natural rights that should merit exclusivity for their creators. Thus, inter partes review is unconstitutional.

The Fourth Circuit briefs are here, here and here. In particular, our clients’ briefing relies on McCormick Harvesting Mach. v. Aultman, 169 U.S. 606 (1898), which explicitly forbids Patent Office proceedings from canceling original claims of issued patents.

The one amicus filing – in support of our clients – is here.

No amicus made an appearance to support the administration. Funny that, given the hundreds (maybe thousands) of victorious infringers, radiating glory after using inter partes review to place their 95%-chance “gamble” that the agency that brought those patents in this world, would just as easily take them out.

The Author

Robert P. Greenspoon

Robert P. Greenspoon is a founding member of Flachsbart & Greenspoon, LLC. He is a registered patent attorney who concentrates his practice in the trial and appeal of patent cases involving computer and electronic technologies. He is also a former federal district court law clerk. The opinions presented above are his own, and not necessarily those of his firm or his firm’s clients.

Mr. Greenspoon represents both NPEs and operating companies, and both rights holders and accused infringers. He holds a winning appellate record, having argued numerous cases before the Court of Appeals for the Federal Circuit, as well as cases before the Fourth and Eighth Circuits.

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Discuss this

There are currently 24 Comments comments.

  1. Anon July 12, 2015 10:54 am

    The choice of “Bill Cosby” as a paternalistic figure – while not directly mentioned in your article – is further skewered given his rather public foibles.

    To this point then, a judicial branch that sets themselves up as “above the law” and is unwilling itself to be constrained by those very high walls of separation of powers is much skewered like today’s Bill Cosby**.

    ** I draw this parallel with some hesitation, as I certainly do not intend to demean the victims of sexual abuse, not imply that Mr. Cosby himself should lack the presumption of innocence that our legal system affords. I am not convicting Mr. Cosby in a court of popular opinion, but rather stress the possible implication of a “do what I say and not what I do” example, and the rather clear implication of a Court acting beyond its own authority in other regards of the U.S. patent system.

  2. step back July 12, 2015 4:11 pm

    Maybe Bill Cosby did some not nice things to a whole bunch of unconscious victims.

    But he did not take down a whole country and its Constitution to boot as did some of the bad actors in the current patent death squads tragedy. I think Bill deserves an apology.

  3. step back July 12, 2015 4:15 pm

    The US Constitution says something about “securing” exclusive rights to inventors for their respective discoveries.

    Query: after allegedly securing such rights, does Congress have the right and enumerated power to “de-secure” them?

    Does SCOTUS have a constitutional and enumerated right to “de-secure”?

  4. Benny July 13, 2015 5:37 am

    “Congress may equally authorize the PTO to reconsider its patentability decisions and to correct its mistakes.”
    Given that the alternative is that mistakes remain uncorrected, I would assume that this is the preferred option.

  5. Night Writer July 13, 2015 6:59 am

    My rather cursory read of this is that IPRs are unconstitutional, but that the result of so holding would be so untenable that the Roberts’ court would never do it. My guess: you won’t get an unconstitutional holding in a lower court and that the Royal 9 will simply deny cert. The fed. dist. courts are overloaded and they don’t want these patent cases.

    (And would a court that rendered the Alice decision really care about what is Constitutional? No.)

  6. Anon July 13, 2015 7:16 am

    “Too big to fail” wins then, does it not Night Writer?

    Some citizens are just more equal than others (to piggyback – as it were – on a literary meme).

    Benny – please note that the ends you speak of are not bad ends, but it matters very much the means used to get to those ends. It is the means that are the focus, not the ends.

  7. Benny July 13, 2015 7:36 am

    Which means would you suggest, then?

  8. Anon July 13, 2015 8:23 am


    Means that do not violate the takings doctrine.

  9. Benny July 13, 2015 8:46 am

    In engineering, when identifying a problem it is customary to suggest an alternative solution. Simply re-iterating the problem does not take you far.

  10. Edward Heller July 13, 2015 11:04 am

    The public rights doctrine advanced by the government is an inherent aspect of sovereign immunity. When the government is operating qua government, its actions are immune from review by the courts. Thus when the government is acting within its enumerated powers, such as the power to regulate interstate and foreign commerce, it has plenary power to allocate adjudications regarding its regulations anywhere it chooses, subject, of course, to due process.

    Thus on its face, the argument made by the government seems plausible in that Congress does not have the obligation to create patents in the first place, and just like sovereign immunity, when it chooses to create patent rights it can condition those patent rights anyway is so chooses.

    But when the Supreme Court first recognized this aspect of sovereign immunity we now know as public rights, the Supreme Court carefully excluded from the public rights doctrine, rights that were actually litigated in the courts of England in 1789. There are two good reasons for doing so: First, to preserve the constitutional structure of our government which allocated adjudications regarding cases and controversies to the courts. Second, to preserve the right to a trial by jury because such litigations in the courts of England had a right to a trial by jury.

    The Patlex court did not seem to understand that patents cannot be public rights because patents were litigated in the courts of England in 1789. The Patlex court thought the public rights doctrine did not extend to rights created by statute – but only to so-called common law rights. However, the Supreme Court jurisprudence in this area is not so limited, because the Supreme Court has already recognized that there is a right to a trial by jury for patents, copyrights and trademarks, all of which are created by statute at the federal level.

    Moreover, the Federal Circuit itself has recognized the Patlex is overruled by its own decision in Lockwood that recognized that validity had a right to a trial by jury. Lockwood is still followed by the Federal Circuit even though it was vacated by the Supreme Court. Thus the Federal Circuit itself has recognized that Patlex is not good law.

    The government provides no alternative theory to sustain Patlex but a theory that cannot be right even in principle.

  11. Congressional Hammer July 13, 2015 3:56 pm

    Congress has declared war on the American inventor and entrepreneur with so called “Patent Reform.” In what even one Congressman calls “crony capitalism” H.R. 9 and S. 1171 represent nothing short of the destruction of the US Patent System in favor of markets and capital, and the corporations controlling them. The American inventor and entrepreneur is being sold out, with potentially enormous economic consequences. Yahoo published an article last week entitled “The Anti-Innovation Patent Act of 2015”


    Congress Declares War on American Inventors

  12. Anon July 13, 2015 7:32 pm


    This may shock you: this is not engineering, this is law.

    Further, even in engineering, the first step is often to stop doing that which is wrong (or at the very least, REALIZE that such is wrong).

  13. Lawrence Lockwood July 13, 2015 7:40 pm

    Edward Heller expresses the problem very well. As the ‘Lockwood’ in the jury matter that went to SCOTUS, I have always wondered about how after a patent is issued after a careful examination by the PTO and after the inventor has paid all his fees, paid his attorney and built his business, how the courts can invalidate those patents years later, i.e. ALICE ? Or by some Congressional legislation ? Amazingly, there is little discussion that patents should be ‘grandfathered’ under the laws in existence at the time the patent issued. If the inventor has followed the rules, paid his fees, built his business, shouldn’t he be afforded the laws in existence at the time his patent issued ? And has anyone ever heard of the PTO, Congress or Courts offering to reimburse the inventor for his lost fees ? I know they don’t amount to very much on the grand scale, but the theory is the inventor kept his part of the bargain, i.e. disclosed his invention, but the government didn’t even have the decency to mail him back his PTO fees after they rescinded his patent, The inventor did nothing wrong, Sadly, the rules of the ‘game’ were changed by the PTO, Courts and Congress while the ‘game’ was being played.

  14. David July 13, 2015 10:25 pm

    It’s odd that no one (cough, G. Quinn) is writing about the potential ramifications associated with either eCharge or MCM losing. If the challenging parties lose, the result will not merely be that IPR is upheld as constitutional; instead, patent validity as a claim will be identified as a public right. Per this definition, it become an administrative claim. Think about that moment, and what it means for the nation’s patent system moving forward. Michelle K. Lee has the potential to become a very, very powerful person.

  15. Anon July 14, 2015 7:08 am

    To run on a meme, I SAWS** what you did there David.

    And you are correct to a point, but I think that both (not either) eCharge and MCM have to lose. If either wins, then the IPR (and the AIA) crashes, mooting the “victory” for the IPR crowd in the other case.

    **It should be pointed out that the collection of power in a single branch of the government is a very bad thing – see the Federalist Papers for the warning against deconstructing the walls of the separation of powers doctrine. Also note, that it was just a year and a half ago that Miss Lee was entertaining “constituents” behind closed doors with no meeting minutes (and this was shortly after the Office announced its “anti-Tr011” measures which coincidentally featured Google-powered software analytics as a proprietary device).

    Seeing as the current administration has set a record for being the least transparent administration in history, seeing as the SAWS program was “decommissioned” – but not before it was revealed that such a shadow program was only one of many such programs, seeing that indeed if the patent right becomes a right subject to “the commons” and those same “commons” are controlled by an unseen and largely unaccountable few, we truly will have returned to a time where the patent game is the sport of Kings – but those Kings will be the Corporate variety.

  16. step back July 14, 2015 8:00 am


    Yes there is something fundamentally unfair when the government makes promises, when its citizen inventors take the government at its word, when they follow all the rules and then the government just takes away the granted personal property (under law that is what an issued patent is) without compensation or due process of law.

    This is not your father’s government.
    This is George Orwell’s jiggery-pokery gobbledygook government.

  17. David July 14, 2015 11:02 am


    Correct – both would have to lose at the circuit level (in my original post, I was referring to the Supreme Court level, as only one will be there in an non-amicus role), and I believe that you pointed out what at least 5 Supreme Court Justices will likely know (or already know): re-defining patent validity as a private right is the (far) lesser of two evils. It seems to be the necessary result, and it is unlikely that Kennedy, Roberts, Alito, Scalia, and Thomas would identify patent validity as an administrative right. Breyer and/or Ginsberg might also be hesitant to establish such a rule. Newman’s Patlex and Joy decisions are indefensible.

    MCM and eCharge have both done a good job with these arguments thus far. However, it is important to remember that Greenpsoon and Heller are professional advocates representing the interests of their licensing entity clients. I have noticed that both continue to play a cutesy definitional game much akin to Newman’s analysis in Patlex in order to save reexamination while attacking IPR. It should be clear why their clients are pursuing such an arrangement. This is not the time for games, however, and there is too much at stake – the licensing entities should not be the sole voice(s) in these disputes. Where are the legal commentators? Where are the amicus curiae? IF both eCharge and MCM lose, and IF these courts identify patent validity as a public right, then . . ?

  18. Edward Heller July 14, 2015 2:26 pm

    anon, MCM is not trying to save reexaminations.

    Secondly, we are not parsing a patent into small bits, saying this piece is a public right and that piece is a private right. That is crazy talk coming from an institution that does not have a clue in the first place. The government in the current litigation is not taking this position as it makes now sense and is completely indefensible.

    Public rights are the right of the government to act in its sovereign capacity within its enumerated powers. When the government has to power to create a regulatory program, it can place adjudications regarding such a regulatory program anywhere wants to.

    For example, Congress has the power to grant patents for inventions. As a condition of that power, it can require examination prior to grant. Clearly this aspect of Congress’s power is within the public rights doctrine. But after a patent issues, either a patent is a public right or the government loses jurisdiction over the patent.

    But as we know, the Supreme Court has consistently ruled that after a patent is granted, the government loses jurisdiction over the patent and cannot even sue to revoke the patent based upon invalidity. Under no theory is it possible that an issued patent can be a public right.

  19. Edward Heller July 14, 2015 2:38 pm

    David, the Federal Circuit in Lockwood already held that there is a right to a jury trial for the patent owner in a DJ action for patent invalidity. Lockwood is consistently followed by the Federal Circuit. Judge Nies and two judges of the court have already recognize that Lockwood has overturned Patlex. The two cases cannot co-exist.

    Let me make this perfectly clear, MCM does not agree with the concept that a patent can be parsed into bits, one bit being a public right and the other a private right, allowing the government to revoke the patent. That truly is crazy talk. It is so obnoxious to both common sense and to dozens of on point Supreme Court cases as to not even be worthy of discussion.

  20. step back July 14, 2015 3:00 pm

    In our Orwellian world, crazy is sane and fact is fiction.
    Get with the program.

  21. Anon July 14, 2015 3:33 pm

    Mr. Heller,

    I think that you are responding to comments made by David. That being said, your response may cloud the issue if taken alone. By this I mean that – alone – your description of a regulatory scheme would capture the statutory control over patents. I am aware (as I am sure that many are a well) that there are additional considerations concerning the status of things in 1789 that impact the public/private designation. Someone “fresh” or a bit unlearned would not make that association, and might take your last comment and arrive at a conclusion opposite of the one that you may wish to impart.

    Sadly, the blogosphere has an abundance of people only too willing to manipulate statements so made.

  22. Edward Heller July 14, 2015 3:54 pm

    Anon, since you are speaking without understanding what the Supreme Court is talking about by the term “regulate” pursuant to an enumerated power, the Supreme Court is generally referencing the powers granted Congress in the constitution to “regulate” something. Here are the clauses were “regulate” appears:

    “Article I

    The Times, Places and Manner of holding Elections for Senators and Representatives, shall be prescribed in each State by the Legislature thereof; but the Congress may at any time by Law make or alter such Regulations, except as to the Places of chusing Senators.

    “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes;

    To coin Money, regulate the Value thereof, and of foreign Coin, and fix the Standard of Weights and Measures;

    To make Rules for the Government and Regulation of the land and naval Forces;

    No Preference shall be given by any Regulation of Commerce or Revenue to the Ports of one State over those of another: nor shall Vessels bound to, or from, one State, be obliged to enter, clear, or pay Duties in another.

    Article III

    In all Cases affecting Ambassadors, other public Ministers and Consuls, and those in which a State shall be Party, the supreme Court shall have original Jurisdiction. In all the other Cases before mentioned, the supreme Court shall have appellate Jurisdiction, both as to Law and Fact, with such Exceptions, and under such Regulations as the Congress shall make.

    Article IV

    The Congress shall have Power to dispose of and make all needful Rules and Regulations respecting the Territory or other Property belonging to the United States; and nothing in this Constitution shall be so construed as to Prejudice any Claims of the United States, or of any particular State.”

    A regulatory scheme where patents are litigated involves the ITC. But the result affects foreign commerce, not the patent. The statutory remedy is one that congress created pursuant to it power to regulate foreign commerce. The whole ITC procedure and all the rights and duties, etc., fall squarely into the public rights doctrine. This is a good example of what the Supreme Court is talking about.

    There is no power to regulate a patent.

    Patent validity has always been a matter for the courts and the Supreme Court has repeatedly said so.

  23. David July 14, 2015 4:29 pm

    Ed – thank you for the clarification.

  24. Anon July 14, 2015 6:15 pm

    Mr. Heller, thank you for the additional clarification that was missing from your original post.