Blame for the Weakened U.S. Patent System Cannot Be Pinned on the PTAB Alone

By Gene Quinn
September 24, 2019

“When Congress enacted the America Invents Act it was so singularly focused on killing patent rights that it set up a two-tiered system for challenging patents…. Patents are presumed valid in federal district court, while patents are not presumed valid at the PTAB.”

https://depositphotos.com/88648926/stock-photo-the-elephant-in-a-restaurant.htmlIt is time to recognize the elephant in the room. The Patent Trial and Appeal Board (PTAB) is broken. And, if we want to be perfectly fair and reasonable in our assessment of the reasons that the PTAB is failing, the blame must trace all the way back to Congress. The creation of three new ways to invalidate patent rights was at best ill-conceived. The manner in which it was done clearly put the finger of infringers on the scale of justice. The creation of an open-ended second window for patents to endlessly be challenged without title ever quieting and ownership ever settling is making a mockery of patent ownership.

Not Faster or Cheaper, Just Unfair

When Congress created inter partes review (IPR), post grant review (PGR) and covered business method (CBM) review, the purpose was to provide yet another opportunity for challengers to invalidate patent claims. These processes were pitched as leading to a faster and cheaper resolution, which has simply not turned out to be the case.

“Some 85% of patents contested at the PTAB are involved in parallel litigation,” USPTO Director Iancu explained during his keynote presentation at the AIPLA annual meeting in October 2018.

On top of the 85% of patents at the PTAB that are involved in parallel proceedings, we know that patent owners with strong patents are required to run a gauntlet at the PTAB, challenged over and over again. Witness Finjan, Inc. They have defended the same nine patents successfully in 80 IPRs, with dozens more pending on those same nine patents, all of which have been thoroughly and successfully adjudicated as being valid in federal court on numerous occasions.

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This presents two problems. First, at what point in time will the PTAB ever say enough is enough? How many times are they willing to accept challenges on the same claims in the same patents in an effort to find a different result? Second, how did a group of executive branch employees become superior to Article III district court judges?

With respect to the first point, the answer, we know, is that there is no limit, which is truly astonishing given that when the Federal Circuit determines claims unpatentable as the result of an IPR appeal, that decision has “an immediate issue-preclusive effect on any pending or co-pending actions involving the patent[s].” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).

The same cannot be said, however, when the patent owner prevails. If the patent owner prevails against Mega Giant, Inc. and there is a decision from the Federal Circuit confirming patentability of all patent claims, that decision has absolutely no preclusive effect or force for a subsequent challenge on the same patent claims in the same patent when brought by Giant Mega Corporation. In other words, challengers need to win once, while the patent owner needs to win every time.

With respect to the second issue, these Administrative Patent Judges have become the most important, influential and all-powerful judicial body in the patent world. The system of constitutional checks and balances that have been in place since Marbury v. Madison, 5 U.S. 137 (1803) has required an independent federal judiciary made up of independent constitutional officers with life tenure to exercise independent review over the functions, laws and regulations of the legislative and executive branches of government.

It is antithetical to our constitutional form of government for executive branch employees to effectively treat the decisions of Article III federal judges as merely advisory in nature. Constitutional law 101 mandates that the federal judiciary does not issue decisions that are advisory in nature, yet that is in effect what happens. A validity trial in federal court is merely a dress rehearsal.

All the evidence one needs of an agency grown too big and powerful is on display every day at the PTAB. It is well past time for Congress to fix its mess and bring sanity, and constitutional rationality back to the system for challenging the validity of patents.

Time to Correct the America Invents Act

How did this happen? This question leads us back to the root cause – Congress. When Congress enacted the America Invents Act (AIA) it was so singularly focused on killing patent rights that it set up a two-tiered system for challenging patents. The evidence required to challenge a patent successfully and find the claims invalid in district court is much higher than the evidence required to successfully challenge and prevail at the PTAB. Patents are presumed valid in federal district court, while patents are not presumed valid at the PTAB.

The Senate IP Subcommittee is now considering the STRONGER Patents Act, which among other things would bring much needed balance – and sanity – back to patent challenges. The STRONGER Patents Act of 2019, now in its third incarnation, would harmonize the burden of proof required to invalid patent claims between federal district courts and the PTAB. It would also eliminate the repetitive, harassing proceedings patent owners face, and it would separate the decision to institute from decisions on the merits, which is important because PTAB judges are compensated in part based on clearing cases and have a perverse incentive to institute once they have put in the time and effort to consider a petition.

It is long past time to fix the system. District courts should not be inferior to executive branch employees. That is not how the constitution envisions the role of the judiciary, at least not since Marbury v. Madison.  And, the repeated decisions where patents are upheld as valid in federal court only to fall at the PTAB must come to an end if the U.S. is going to maintain a functioning patent system. Constitutional judicial officers must have the final say, not executive branch employees.

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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

Discuss this

There are currently 69 Comments comments. Join the discussion.

  1. Pro Say September 24, 2019 8:47 pm

    “All your patents are belong to us.”

    “Over and over and over and over and over and over and over and over and over and over and over and over and over and over and over and over and over and over and over and over and over and over again.”

    “As many times as it takes . . . until we take back that which we have already told you was yours.”

    The PTAB

    “p.s. Sorry (though not really), but we don’t give a d.a.m.n. what the Courts say.”

  2. Rose September 24, 2019 10:28 pm

    FAANG will tell Congress how to write the bill, there will be no fix to PTAB nor 101. Judges do enjoy see their 401k earning growing big. Patents are dead for the small investor, people are going to have to get use to it. When you donate as much as FAANG does it’s easy to get bipartisan surport. Cheers to the New a Corporatocracy the elites win.

  3. Eric September 25, 2019 12:14 am

    Would that it should be so, Gene.
    And, having established such a de facto carveout to the Constitution, for the nonce at least, what’s to prevent this legislative practice of supposedly elevating Executive Branch bureaucrats above Article III Judges from spreading to other domains of governance? It is truly unfortunate that the magnitude of the enormous influence of the corrupt anti-patent crowd upon the U.S. government is now such, that its fundamental structure is threatened.

  4. Anonymous September 25, 2019 2:51 am

    The real problem is that the presumption of validity is from the outset a legal fiction that, in many cases, bears little connection to the work actually done during examination.

  5. Chris September 25, 2019 9:14 am

    Almost at the end, you wrote “That is now how the constitution envisions the role of the judiciary”, but I think you meant “That is not how the constitution envisions the role of the judiciary”

  6. Anon September 25, 2019 9:44 am

    Anonymous @ 4,

    How exactly is that “the real problem?”

  7. Night Writer September 25, 2019 9:48 am

    The reality is that under Oil States there is no right to an Article III court. Patents under Oil States are just junk that the government can invalidate pretty much for any reason and at any time they want. Congress could pass laws that say that your claims are invalid for pretty much any reason that had a rational basis.

    It is just reality under Oil States.

    I think there is so much money behind not fixing this that the odds of it being fixed in our life times is pretty much zero. What will happen is innovation will suffer, but it will take 20 to 50 years for it to be so painful that something has to be done.

  8. Eileen McDermott September 25, 2019 10:03 am

    Thank you Chris, you’re right – that’s fixed now.

  9. Bill September 25, 2019 10:18 am

    I suppose it depends on which side you’re on. If my company is being sued for infringing a bogus patent that never should have issued and we have to choose between a jury in a hostile venue or the PTAB to challenge validity, I’ll take the PTAB every time. Take the jury out of the equation, and I believe fewer IPRs will be filed.

  10. TFCFM September 25, 2019 10:28 am

    GQ: “ if we want to be perfectly fair and reasonable in our assessment of the reasons that the PTAB is failing, the blame must trace all the way back to Congress.

    Fair enough. However, if we TRULY want to be “perfectly fair and reasonable,” then we shouldn’t exist that no problem existed prior to 2011 (when the AIA was enacted).

    The AIA was enacted *precisely* because Congress recognized that far too many “junk patents” were escaping (and had already escaped) from the USPTO, and that assertion of far too many of those “junk patents” was seriously inhibiting innovation and business in the US. So, it’s not an entirely one-sided story.

    In my view, the question is how best to balance:

    1) Congress’ admirable desire (note: not an obligation) to appropriately award inventors of valuable technologies

    with

    2) Congress’ equally admirable desire to appropriately regulate commerce so as to prevent parties from unjustifiably inhibiting the production of valuable goods and services which contribute to the general welfare of our nation.

    The “magic wand” solution, of course, would be for Congress to somehow conjure up a Patent Office that will quickly issue to inventors patents that are — without exception — absolutely valid over the entire body of prior art and strictly limited to the inventor’s genuine contribution to the art.

    Barring emergence of an infallible, all-knowing Ideal-Patentable-O-Meter (programmed, of course, with the perfectly-calibrated standards for patentability that we have never achieved in over two centuries), the actual solutions available to Congress are more limited:

    A) Up until 2011 (AIA; crudely summarizing the past for the sake of brevity), Congress set up a Patent Office that could be expected to deny patentability to a good proportion of non-patentable inventions, and private parties were left to resolve disputes about the inventions of debatable-patentability which issued as patents. Because the 2019-dollar cost to private parties to resolve such a dispute was in the million- to millions-of-dollars range, the system could be expected to work properly for disputes valued above that range, but far-from-perfectly for less-valuable disputes.

    B) Since 2011 (AIA), the ‘quality’ of patents issued by the USPTO is, at least arguably, not much changed, but the cost of resolving disputes about issued patents has been decreased to the hundreds-of-thousands-of-dollars range. For that reason, the system should be expected to work for a broader range of disputes (including those of lower value), even though it is still too pricey to address disputes less valuable than that lower range. (“Standing”-related barriers to knocking over bad patents have also been removed.)

    C) As a forward-looking way of preventing future disputes, Congress COULD simply greatly increase the scrutiny applied prior to issue in the USPTO (e.g., by applying AIA-like procedures PRIOR to grant). Although this would reduce disputes and prevent issuance of questionable patents, it would also greatly increase the cost of obtaining a patent to begin with, simply shutting out inventors of less-valuable (or less-obviously-valuable) technologies without greatly altering the numbers of inventions that are ultimately found non-patentable. That seems to me a poor solution.

    I’ll keep my fingers crossed for development of the Ideal-Patentable-O-Meter. In the meantime, however, I think it’s preferable to avoid tying US commerce in knots merely to potentially-enrich a small population of folks who think they’ve invented something (only some of whom actually have and are nonetheless rewarded under the current system).

  11. Anon September 25, 2019 10:50 am

    TFCFM,

    Your “enacted *precisely* because Congress recognized that far too many “junk patents” were escaping (and had already escaped) from the USPTO, and that assertion of far too many of those “junk patents” was seriously inhibiting innovation and business in the US. So, it’s not an entirely one-sided story.

    is itself a one-sided bit of “Oh No Tr011” propaganda.

    The “problem” was oversold (and Trumped up). Was there an issue with some patents that should not have been granted?

    Sure.

    But one does NOT fix the actual problem (examination) by burning down the barn.

  12. Josh Malone September 25, 2019 11:01 am

    TFCFM, how do you figure that AIA has reduced the cost of resolving patent disputes? It ADDS half a million per patent.

  13. Anon September 25, 2019 11:12 am

    TFCFM,

    Your theme smacks more than just a little of “Efficient Infringement,” deriving as it does on the notion of cost (as opposed to property rights). It is interesting that you would dismiss actually making examination better (as you did at C)) with the ASSumption that such could only be done at a greater cost. Perhaps, something like innovation could be unleashed on the issue…

  14. concerned September 25, 2019 11:20 am

    TFCFM @ “I think it’s preferable to avoid tying US commerce in knots merely to potentially-enrich a small population of folks who think they’ve invented something (only some of whom actually have and are nonetheless rewarded under the current system).”

    That is funny! Rewarded? I cannot even get the examiners to follow their own memos.

    Do I “think” I have invented something? How many experts tried to solve the problem, how many years the problem existed and how many university studies until I can “think” I have invented something:

    A). 3 experts, no disability attorneys for 3 weeks and a neighbor newsletter

    B). 100 experts, 5 disability attorneys for 4 years and a high school paper

    C). Hundreds of thousands of working professionals and experts, every disability attorney in the nation, for 63 years and 2 university studies

    If my invention meets C). above, may I have your permission to “think” I have invented something and the expectation that the USPTO will follow their own memos? Please put that in your Ideal-Patentable-O-Meter and advise me of your results.

  15. anonymous September 25, 2019 11:31 am

    At some point, incessant validity challenges damage the integrity of the whole patent system. We need to be seriously discussing patent incontestability. As Gene argues, a patent is a property right that must vest and quiet at some time. When?

    For example, if IPRs are a good thing, allow them to be instituted within the first three years after a patent issues only. After that, the patent’s validity becomes incontestable, or at the very least validity becomes a jury question with the clear and convincing evidence standard.

    Too little attention is paid to the fact that the patent term is intended to mitigate the effect of “wrongly” issued patents. I’d argue it is more detrimental systemically to allow someone like Apple to keep litigating for 10+ years, while the patent term crumbles away. If patent rights quieted on a date certain and were more reliable, free market licensing transactions would solve most infringement disputes, and would likely do so at a much lower net cost than present litigation expenditures.

  16. BP September 25, 2019 12:32 pm

    @11, Anon, got it right, invasion of the Tr011z. “Junk” to whom and who pays/or paid for that “junk”? Anon got it right: “an issue with some patents that should not have been granted”, which was taken as a grand opportunity to further weaken the agency. Less examiner training on 102/103, making non-attorney examiners analyze case law (“judicial exceptions”), . . . when it all could have been resolved – logically and easily – using 102/103 and 112. But that takes technical skill, which is continuously being arbitraged/devalued.

  17. PTO-Indentured September 25, 2019 1:55 pm

    Thank you Gene for setting — again — the bar in being an IP top watchdog.

    Yes, as your title suggests, setting a blame on the PTAB alone for its doings in an immense destruction of U.S. patents (at the hands of executive branch employees) would amount to a missing of the forest for the trees. Or perhaps more analogous, an admonishing directed at AIA-intended ‘executioners’, missing the fact that first there had to be those who planned for — and ensured for years there would be entrenched — such “patent death squads”. The PTAB did not merely manifest themselves into being — there’s a wider trail.

    How wide? How high up does decision-making, impacting on the USPTO / U.S. patents, IP issues, emphasis, represented in mainstream media, go?

    This came on to my radar screen recently, wherein a SSU professor seemed to be connecting majr ‘influence’ dots — I pass it along in the spirit of ‘get truth from whichever source it can be derived’:

    Giants: Who Really Rules The World?

    Looking like — at least — there’s a might river we are swimming up against.

  18. Jam September 25, 2019 2:46 pm

    The AIA has arguably created an infringement racket where underfunded inventors can be sued into insolvency by overly capitalized corporations infringing the very patents inventors attempt to enforce. I.e., profits from an infringed patent are used by the infringer to make the inventor insolvent. It is arguably cheaper for a large corporation to sue an underfunded inventor into insolvency than it is for the large corporation to license the patent. This is not an eligibility issue of whether a patent is to “junk” subject matter or to truly innovative technology. This is a numbers issue as suing the inventor to insolvency costs X, licensing the patent would cost Y, and X is less than Y. Before the AIA (and Alice, et al.), Y was less than X.

  19. angry dude September 25, 2019 3:54 pm

    TFCFM@10

    “…to avoid tying US commerce in knots merely to potentially-enrich a small population of folks who think they’ve invented something (only some of whom actually have and are nonetheless rewarded under the current system).”

    Dude,

    Name ONE independent inventor or small R&D company “rewarded under the current system” (“potentially-enriched” does not count)

    Name, please ?
    Speak up or shut up

  20. Anon September 25, 2019 4:13 pm

    anonymous,

    Interesting comment of: “Too little attention is paid to the fact that the patent term is intended to mitigate the effect of “wrongly” issued patents.

    I have not heard of this before. Do you by chance have a reference that discusses this in more detail?

  21. Anon September 25, 2019 6:53 pm

    PTO-indentured @ 17,

    I find it excessively UNhelpful for you to “pin your hopes” on an author whose solutions include “merely” redistributing all wealth from those who are capable to those who need.

    While I do NOT begrudge the activities of keeping a critical eye on the banking clan [if I may use that term], there is a FAR cry from that type of care to the rather extreme conspiracy type of mantra that your chosen author advocates with.

    Reminds me of one of the adages of my Uncle Ben (not his most famous adage, mind you):

    Always have an open mind – but take care that your mind is not so open that your brain falls out.

  22. Curious September 25, 2019 7:52 pm

    At some point, incessant validity challenges damage the integrity of the whole patent system.
    This is a significant problem. For a patent owner, winning in a court means a judgment in their favor (more than likely damages rather than an injunction but that is another issue for another day). For a patent owner, winning at the PTAB means they’ve spent hundreds of thousands of dollars and gotten ZERO in return. Oh wait, that isn’t true, what they get is a big “KICK ME AGAIN” sign taped to their backside inviting another petition. The only time they get to take off the sign is if their patent(s) are invalidated.

    Patent owners CAN ONLY LOSE at the PTAB. Moreover, winning only means having the opportunity to shell out additional hundreds of thousands of dollars to go through the same gauntlet. It is LOSE-LOSE at the PTAB for patent owners.

    Off the top of my head, this is what I propose to address this particular issue (bearing in mind that there are other issues with the PTAB that need to be addressed).

    #1) A patent challenger cannot go to the PTAB in an IPR as to a particular patent unless they are the subject of a lawsuit in which the same patent is asserted. This eliminates the practice of sham IPRs filed by one part that is actually on the behalf of another party.
    #2) A patent challenger only gets one bite at the apple in the PTAB. If they subsequently find better prior art, then raise that issue at the District Court.
    #3) For all other subsequent challengers after the first IPR has been filed (again, to challenge, they have to be subject to a lawsuit), they can choose to also petition for an IPR on the patent. However, in so doing, they lose their opportunity to challenge the patent on any grounds that could be raised in the IPR. In other words, the patent challenger gets collaterally estopped from raising the issue of validity.

    Whether the IPR gets instituted or not does not make a difference. Once the patent challenger has petitioned for the IPR they are stuck with the consequences.

    During patent examination, an examiner is charged with “cit[ing] the best references at his or her command.” A patent challenger should be held to no less of a standard. A patent challenger should be a sophisticated party that is expected to bring significant resources to bear in order to find the best prior art. If they do not find the best prior art that should be their problem — not a problem that the patent holder has to address by facing multiple challenges.

    The more I think about it, the more I’m convinced that even the first patent challenger should be limited to a single bite of the apple (i.e., no second chance at the District Court). There should be a negative consequence to the patent challenger who loses at the PTAB. An IPR should be an alternative (not supplemental) mechanism to litigating validity in court.

    Think of it in this light. If an alleged infringer loses a counter-claim of patent invalidity at the District Court, they cannot turn around and file a declaratory judgement action and seek to have the patent declared invalid on other grounds. Why should a trip to the PTAB be any different? You get one bite of the apple — either at the District Court or the PTAB.

  23. angry dude September 25, 2019 10:39 pm

    Curious @22

    Dream on, dude…

  24. Anon September 26, 2019 7:38 am

    Curious,

    I believe the estoppel provisions are already in place (being enforced is a different matter).

    The remaining largest problem (as I read your post) is the fact that Congress explicitly set up a two forum system, and — by nature of that first forum — there simply is no Article III standing requirement.

    This of course was a purposeful and conscience decision on the part of Congress.

    It was also a decidedly BAD idea from an engineering perspective.

    Anyone who has been in the real world of manufacturing products and recognizing that warranty issues may exist KNOW that an “open-ended” warranty system with no feedback into the manufacturing process is guaranteed ONLY to keep costing the manufacturer, and will do absolutely nothing to ACTUALLY improving quality.

    With zero tie-in back into the “manufacturing” process of examination, the “promise” of improving quality is easily seen to be a LIE.

    ALL that this turns into is more for the Efficient Infringer who competes on non-innovation factors.

    Both sides have to spend money on the post grant mechanisms. But only one side wants to be able to outspend the other.

    Under the sheep’s skin of “but we are removing a bad patent” is the wolf of competing on non-innovative terms.

    And you alight upon a factor that makes things even worse with the two-forum setup.

    It is no accident that in the weaving of that coat of sheepskin, that the Efficient Infringer crowd “suggested” the open-ended, non-Article III Phase One element. This was sold on the direct notion that anyone (and not just competitors) should be able to “fight” those dastardly bad patents.

    Of course, this LIE is also seen in how the post grant review mechanisms were sold as “a cheaper alternative to court action.” As is plainly evident, such an alternative would only be available to those who need that alternative — namely those WITH Article III standing.

    So why then this dichotomy?

    The self-evident answer, coupled with the inane “no-feeeback-open-warranty,” is that the mechanism is a way to fight against the enforcement of patents (as opposed to the ‘sold’ notion of improving patent quality).

    As is often the case, the layer of “political cover” causing problems in and of itself, reveals that such WAS merely political cover.

    The AIA was without a doubt the worst patent legislation ever put together.

  25. concerned September 26, 2019 8:05 am

    PTO-Indentured @ “Looking like — at least — there’s a might river we are swimming up against.”

    I am in the patent world. I hope I never become of the patent world.

  26. Anon September 26, 2019 8:30 am

    The large quote at the top of the story reminds me of a position that I have long advanced (and one that I informed my legislative representatives during the AIA process): the presumption of validity is a stick in the bundle of patent rights for the sanctioned (granted) property that is a patent.

    Once that sanction occurs and the inchoate right is turned into the full legal property right (including all of the sticks), the full force of Constitutional protections (notably Takings Law as applied to property) kicks in.

    At the moment of institution — well before any decision on the merits OF that institution — there IS a taking of that stick from the bundle of property rights, and the patent no longer has all of its protections.

    As the Supreme Court case of i4i provides, that particular stick is an extremely important aspect of the property, and the value of the property is significantly impacted with any taking of that aspect.

    Note as well that even if the nature of the personal private property that is a patent is transformed by judicial fiat into a “public franchise” type of Personal property, the Constitutional protections of Takings law remain in effect for the protection of property.

  27. Andrew Keirns September 26, 2019 10:24 am

    But Gene – PTAB is not ‘broken’ for some players

  28. anonymous September 26, 2019 11:13 am

    @20 anon –

    The importance of patent term follows the evolution of patents.
    Mossoff, Rethinking the Development of Patents: An Intellectual History, 1550-1800
    https://repository.uchastings.edu/cgi/viewcontent.cgi?article=3458&context=hastings_law_journal

    The “limited times” wording of Article 1, Section 8, for patents, was a purposeful departure from long-term monopolies granted by the Crown. From 1600 to late 1700, patents were issued pursuant to “royal privilege” to advance the Crown’s economic and social policies. Such practice came to be seen as unfair, with market power being given as a gift from the sovereign at its whim, as opposed to a “limited time” monopoly that expired at a time certain to avoid abuses of the royal prerogative. Where it had become unpopular and wrong for a sovereign to provide one party an advantage in the market via a patent for too long a time, e.g. a wrongly issued patent, a limited patent term addressed that issue, constraining the “royal prerogative” of cronyism that was used to either help one’s patentee friends by continuing an existing monopoly or to help one’s friends who would otherwise infringe by ending the monopoly already granted to another.

    At the same time, evolution of patents occurred, from the royal prerogative to the common law doctrine, incorporating at the time Locke’s “natural-law conceptions of the social contract and the moral significance of labor,” resulting in the notion of patent-as-property. I believe the first limited term patent had a term of 14 years and was codified in Section 6 of the Statute of Monopolies, enacted 1624, “the first definitive step toward the shift away from royal prerogative and privileges to common law and legal rights” and “also enacted to serve as an explicit limitation on the past abuse of the royal prerogative.”
    https://en.wikipedia.org/wiki/Statute_of_Monopolies.
    https://www.ipwatchdog.com/2015/04/09/the-day-that-changed-the-world-april-10-1790/id=56422/
    https://en.wikipedia.org/wiki/History_of_United_States_patent_law

    With the AIA and literally endless validity challenges, we now have the “royal prerogative” of cronyism in reverse, where large companies with money and influence ensure they have unencumbered access to a particular market without threat to that market access from a patent owner. A set patent term was always meant to curb this tendency of abuse by the sovereign.

    Over time, patents changed from a royal grant of a monopoly due to royal privilege, to a social contract with the public *for a specific term* in exchange for a published specification.

    Aside from the Patent Clause, a 14-21 year patent term has always been reflected in statute. In 1790, the Patent Board members had the power to grant a patent, which authority was absolute and could not be appealed. Moreover, the board could set the duration of a patent *individually* but not to exceed 14 years from issuance.
    https://www.uspto.gov/about-us/news-updates/us-patent-system-celebrates-212-years
    https://web.archive.org/web/20110722040111/http://www.ipmall.info/hosted_resources/lipa/patents/Patent_Act_of_1790.pdf

    In 1836, there was a 14 year term from issuance, extendable “for the term of seven years from and after the expiration of the first term,” for a total term of 21 years. The term was to be extended if the patentee applied for it and if there was a public hearing to consider evidence “both for and against the extension.” Having “due regard for the public interest,” the board was to consider whether or not the patentee had recovered “a reasonable remuneration, for the time, ingenuity, and expense” by the patentee. Thus, Congress considered a “bad patent” one that did not help the patentee for long enough, fixing the problem by *extending* the patent term another 7 years.
    https://govtrackus.s3.amazonaws.com/legislink/pdf/stat/5/STATUTE-5-Pg117a.pdf

    In 1861, the term was 17 years from issuance. Now, we all know it is 20 years from filing.

    For copyrights, the term varies, but is generally life of the author plus 70 years. For an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first. https://www.copyright.gov/help/faq/faq-duration.html

    Imagine if a patent term was the same as for copyrights. Each derives from Article 1, Section 8, so imagine if Congress treated “limited times” equivalently. They don’t, obviously, but patent term has always since 1624 functioned to curb the abuse of power of the sovereign to help those cronies closest to it. Considering the historical evolution of the patent right to exclude, patent term has always existed to temper the risk to the public that too few free-market participants could offer the patented items. That a patent’s term is fixed and part of the very social contract the patentee holds with the public has always mitigated the risk that a patent was “wrongly” granted.

    I’m sure someone has said it better elsewhere.

  29. TFCFM September 26, 2019 12:44 pm

    @#27 Anonymous: “At the same time, evolution of patents occurred, from the royal prerogative to the common law doctrine … Over time, patents changed from a royal grant of a monopoly due to royal privilege, to a social contract with the public *for a specific term* in exchange for a published specification.

    ???

    Good luck obtaining (or enforcing) a “common law” patent.

    Patents are explicitly a statutory creation, in the U.S. at least. The patent statute giveth and the patent statute taketh away, with CONGRESS (not some illusory “social contract”) specifying the terms of the giveth-ing and the taketh-ing (even if the legislature may sometimes unwisely leave the details of interpretation to be worked out by the judiciary).

  30. Anon September 26, 2019 12:54 pm

    anonymous @ 28,

    Much appreciated – Thank you (will read and contemplate)

  31. Pro Say September 26, 2019 1:37 pm

    anonymous @28: Thanks much for a very worthwhile post. A keeper for sure.

    Gene — please consider elevating this to a standalone article.

  32. Curious September 26, 2019 1:49 pm

    I believe the estoppel provisions are already in place (being enforced is a different matter).
    Those estoppel provisions, if my reading is correct is of the same arguments against the same patents. Moreover, estoppel is triggered when a Final Written Decision. My estoppel provisions are far stricter. Estoppel is triggered upon the filing of a Petition — not when the Final Written Decision is rendered (which doesn’t happen if the Petitioned is denied). More importantly, estoppel isn’t limited to just the “same arguments” that were made. This is a “one bite of an apple” deal. There would be no second chances based upon new prior art or new arguments.

    The AIA was without a doubt the worst patent legislation ever put together.
    Only to patent holders. Patent infringers love it. This is why I have frequently called it the America Infringes Act, because that is what it enables.

  33. Kernel Wong September 26, 2019 2:33 pm

    Patents are dead, the rule of laws does not protect IP holders in America. Word of advise from a person that has patents and went through the PTAB the system only works for the super rich and small patent holders like my self do NOT stand a fighting chance. 101 PTAB EBAY,ALICE,MAYO,TC HEARLAND, OILs case have killed patents for good. Germany is a good place to file for a patent, America has sold it self off to Silicon Valley.

  34. Marco September 26, 2019 3:54 pm

    Agree with Gene.

    The Court “slipped up” in Oil States. Under the Constitution, Congress does not have the right to empower the executive branch to “adjudicate” disputes involving patent properties issued to inventors by the executive branch. Anybody can see this. The power to adjudicate disputes involving issued patents should be reserved entirely to Article III federal courts.

    Great wisdom resides in the elegant simplicity of our federal court system, and in its ability to ferret out truth and obtain the correct result in a vast array of cases. These courts have effectively adjudicated thousands of highly complex, technical matters for over two hundred years. The power of effective cross-examination of witnesses before federal judges and juries in patent cases and the ability of federal judges to decide issues during the course of a patent case is a bulwark that stands against “drift” of patent law away from the mainstream of American intellect.

    Federal court judges and juries across the country need to see patent cases played out in front of them, in their entirety. Adjudication of patent disputes in the federal courts before the people is a good thing. It helps keep us strong and vibrant. We should embrace it, not fear it.

    Again, Gene is right.

  35. anonymous September 26, 2019 4:31 pm

    @29 TFCFM. Your “????” concern my paraphrase of Mossoff’s article. I direct you there for more context.

    And I know patents are a statutory creation, of course. Those statutes contain a term. I was arguing why term matters and providing some historical perspective for it. I don’t like a court thinking it can engage in “taketh-ing” any of my term, which specifically applies to my right to exclude, and instead thinking the term relates to a period of compulsory licensing. It doesn’t. If you think any statute exists that compels a patentee to license, please share.

    I agree with Gene that the AIA needs fixing, and that the STRONGER Patents Act is a net benefit for the entire patent system.

  36. TFCFM September 27, 2019 10:17 am

    @#35 Anonymous: “I know patents are a statutory creation, of course. Those statutes contain a term. … I don’t like a court thinking it can engage in “taketh-ing” any of my term, which specifically applies to my right to exclude, and instead thinking the term relates to a period of compulsory licensing. It doesn’t. If you think any statute exists that compels a patentee to license, please share.

    I think you confuse the statute with your imaginary memes. The U.S. patent statute grants no “right to exclude” (please cite the grant of this right if you believe otherwise.) Instead, the statute codifies conditions under which a patent will be granted, conditions that will be considered infringement, and relief which courts are authorized to grant when infringement is determined. Among that relief is injunctions. Setting aside imaginary figments of “common law patent,” “natural rights,” “social contracts,” and “God Said So,” the statute has the following to say regarding the availability of injunctions:

    The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable. 35 USC 283.

    Only by
    1) reading “may” as “must” and
    2) pretending that the statute does NOT say “in accordance with the principles of equity
    can one credibly suggest that all patentees who prove infringement are entitled to an injunction. The balance-of-equities test applied in all other areas of law (and recognized by the Supreme Court as equally applicable in the eBay case) is precisely the embodiment of the statutory command. Equity sometimes requires that damages be limited to money damages.

    (I’m hesitant to add, for fear of offending anyone’s intelligence, that the same Congress which wrote our patent statutes granting patents has equal right to write the same patent statutes to ‘correct’ the granting of improperly-granted patents. Congress always retains the power to revise its statutes — even when you or I like the pre-revision version better.)

    Taking into account the pro-patentee bent of this blog, I suppose it’s not surprising that I so frequently end up highlighting the overlooked/omitted contrary view. Nonetheless, even pro-patentee partisans should recognize that arguments for patentee-favoring changes to our patent laws are far more likely to prevail if they are based on sense, logic, and a democratic consideration of all views in society than they are if they are based on nothing more than fairy tales (“common law patent,” “social contract”) and hand-waving.

  37. Curious September 27, 2019 12:02 pm

    The U.S. patent statute grants no “right to exclude”
    You just admitted that 35 USC 283 does. Regardless, the right to exclude is found in the US Constitution (i.e., “securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”). This securing of exclusive rights is the power that was granted to Congress.

    Equity sometimes requires that damages be limited to money damages.
    Except that’s not what was written in the US Constitution. The bigger issue is whether section 283 (and application thereof) is consistent with the US Constitution.

    The whole basis of patent law derives from Article I Section 8 | Clause 8, which states “[the United States Congress shall have power] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    What is particularly interesting is that EBay disposed of the “exclusive Right” portion and Alice/Mayo disposed of the “Discoveries” portion of the US Constitution.

  38. Anon September 27, 2019 12:58 pm

    It is TFCFM that is engaging in fairy tales and magic in his attempts to not acknowledge what a patent is.

    Couple this with his refusal to acknowledge fundamentals of equity (even as the courts — with known anti-patent bias — may be misapplying same), it is beyond evident that TFCFM suffers from critical misapprehensions.

    That he fancies himself to be some “balance” to this site’s “obviously too pro patent leanings” ONLY means that TFCFM is unwilling to recognize his own anti-patent views.

    Clearly, neither the Constitution nor history mean anything to TFCFM.

    For TFCFM, his view of the statute reigns Supreme (just because), and his view is the “balanced view” (just because).

    Somehow he even weaves in the “Mom, Apple Pie and Fourth of July”-like “based on sense, logic, and a democratic consideration of all views in society” with — of course — his views representing this ideal, while it is only the pro-patent views that are “guilty” of being memes confusing the statutes (and never mind the context of those statutes, as that too is only ‘confusing memes’ which TFCFM is magically free and clear of).

  39. TFCFM September 27, 2019 2:53 pm

    @#37 Curious: “This securing of exclusive rights is the power that was granted to Congress.

    You might want to take another look a that scrap of paper for context. Read in the context, Section 8 of Article I reads:

    The Congress shall have Power To … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries

    This is not an right granted to individuals, but rather a power granted to Congress. Congress, as the legislative branch, has the power — BUT NO OBLIGATION WHATSOEVER — to fashion a regime for awarding (and modifying) patents for whatever term and under whatever conditions the Congress sees fit.

    Reasonable minds surely can differ as to what terms and conditions yield the most advantageous patent regime for our nation. However, no serious mind can pretend that the Constitution requires that an injunction be granted in the event of every infringement of a patent, no matter how trivial the invention and no matter how onerous the hardships that would be occasioned by the injunction.

    It ought to be a clue that your assertions are wobbly when they require that a Constitutional provision be read ONLY as an out-of-context phrase divorced from the context of the very sentence in which it appears in our Constitution. There is no more an individual Constitutional right in a patent than there is a “common law patent” (or a patent fairy).

  40. anonymous September 27, 2019 3:25 pm

    @36 TFCFM. You asserted, “The U.S. patent statute grants no ‘right to exclude’ (please cite the grant of this right if you believe otherwise.)”

    You’re wrong. Please see, “Every patent shall contain a . . . grant to the patentee . . . of the right to exclude others . . .” 35 U.S.C. 154.

  41. anonymous September 27, 2019 3:46 pm

    Further, pursuant to the requirement of 35 U.S.C. 154, the ribbon copy of an issued US Patent says, “The Director of the United States Patent and Trademark Office Has received an application for a patent for a new and useful invention. The title and description of the invention are enclosed. The requirements of the law have been complied with, and it has been determined that a patent on the invention shall be granted under the law.

    Therefore, this United States Patent Grants to the person(s) having title to this patent the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States of America or importing the invention into the United States of America, and if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States of America, or importing into the United States of America, product made by that process, for the term set forth in 35 U.S.C. 154(a)(2) or (c)(1), subject to the payment of maintenance fees as provided by 35 U.S.C. 41(b). See the Maintenance Fee Notice on the inside of the cover. Signed, Deputy Director of the United States Patent and Trademark Office.”

  42. Anon September 27, 2019 7:01 pm

    anonymous,

    I know of NO attorney that so badly mangles the distribution of power with WHAT is in that distribution of power.

    If TFCFM is an attorney (and I suspect so — just not a registered patent attorney; and most likely a litigation attorney in the service of those seeking to avoid the protection of patents), then he either never took Con law or desperately needs a substantial refresher.

  43. Anon September 27, 2019 7:07 pm

    …and a quick further note (even though this should be clear), TFCFM is quick to say that he is perfectly willing to engage in substantive matters but has actually refused to do so on the critical patent points of both law (what is the nature of the patent right; that being one of a negative right) and equity (the cardinal underpinnings of equity being to make the aggrieved most whole.

    He certainly shows that he views his own hand waving as “balanced” (and motherhood and apple pie), while any other truly Pro-patent view is confused with memes and fantasies.

  44. Marco September 27, 2019 7:31 pm

    Ditto to ANONYMOUS. The Patent Act grants the right to exclude subject to the principles of equity. The latter phrase is a redundancy, since the scope and extent of injunctions have always been equitably restrained. That does not mean injunctions for proven infringements are to ever be permissibly denied altogether, just fashioned to do equity, with constant adherence to and respect for the right to exclude.
    This also help prove that Congress exceeded its Constitutional prerogative in effectively shifting adjudicatory power over patent disputes to a non-Article III tribunal. It is bad policy to boot, since it allows duly issued patent “property” to be hijacked and effectively ground up, outside the reach of the independent federal judiciary. We must stop this!

  45. Curious September 28, 2019 9:46 am

    I wrote: “This securing of exclusive rights is the power that was granted to Congress.”

    You wrote: “This is not an right granted to individuals, but rather a power granted to Congress.” Did you not read the part of where I wrote “is the power that was granted to Congress? Jeesh … talk about not the sharpest tool in the shed.

    However, no serious mind can pretend that the Constitution requires that an injunction be granted in the event of every infringement of a patent, no matter how trivial the invention and no matter how onerous the hardships that would be occasioned by the injunction.
    If you cannot get an injunction, what are the exclusive rights then? You are saying that somebody with a big enough sob story can defeat the exclusiveness of those rights.

  46. TFCFM September 30, 2019 9:52 am

    @#40 anonymous: “Please see, “Every patent shall contain a . . . grant to the patentee . . . of the right to exclude others . . .” 35 U.S.C. 154

    Looking to the title of the section, this language relates to “Contents, In General” 35 USC 154(a)(1). At worst, I have spoken sloppily. If we’re going to be hyper-technical, then I suppose that I should have said that, “The U.S. patent statute grants no absolute ‘right to exclude’.”

    35 USC 154(a)(1), which you quote, is not the operative section of the patent statute for enforcing a patent. It is, instead, part of chapter 14 of that code title, which tells the Patent Office what it has to include in a patent when it issues ones (i.e., the claims must be included in the patent, not in a separate document, for example; and it must also publish the title).

    The exclusive rights granted in a patent are defined in sections of the statute elsewhere than in section 154 (see 35 USC chapters 28 and 29, for example). This is, of course, why no one cites 35 USC 154 when enforcing their patent rights (other, perhaps, than alleging that the patent’s term has not expired).

    Alternatively, if you wish to assert that chapter 14 grants “rights” that cannot be enforced according to chapters 28 and 29, we’ll need to engage in a rather tangential (and, doubtless, tedious) discussion of whether “rights” which cannot be enforced are “rights” in any meaningful sense of the word.

  47. TFCFM September 30, 2019 10:01 am

    @#45 Curious: “If you cannot get an injunction, what are the exclusive rights then?

    Pardon me for jumping in if this was not directed to me, but I’m pretty sure I know the answer, either way.

    The patent statute defines the exclusive rights (section 271). When you discuss injunctions, however, you are not discussing *rights*, however — you are discussing *remedies* for infringement of exclusive rights. As the plainly-permissive language of section 283 makes clear, injunctions are among the remedies which MAY (but need not in every case) be granted when an infringement of the exclusive rights defined in section 271 is found to have occurred.

    To cite a silly, but instructive, example, if I invent and patent The Cure For Cancer, but refuse to license it or to practice it myself, a court is likely to hold that doctors who nonetheless treat their patients using my claimed invention in the US have infringed my patent (perhaps even willfully), and that I am entitled to a remedy for the infringement, but that the balance of the hardships weigh against granting me an injunction to continue withholding my life-saving cure from the public.

  48. PTO-Indentured September 30, 2019 10:15 am

    Anon @ 21 Re PTO-indentured @ 17

    Anon, there appears to be (rather uncharacteristic of most Anon responses I read) a relying on some quoting out of context and/or false attributions in your reply. While I have adovcated in my reply an approach to ‘get truth from whatever source it may be derived’ that is not the same thing as saying that any of such sources will necessarily be 100% truth. If I read an Anon posting in IPW and feel that there’s 90% or 40% truth in it, I am betteer served walking away with either percent of such truth than none. If otherwise, I have an attitude that what I will read or watch (as in a video) must be only ‘the whole truth and nothing but the truth’, it will likely be on a very short read/watch list.

    Just to clarify … I have not, as you’ve attributed to my post @17 suggested that I or anyone “pin your hopes” on an (any) author”. Nor characterized that an author I have referenced — a political sociologist of some renown — should be gliby equated to no more than a “mantra” chanting socialist “whose solutions include “merely” redistributing all wealth” (words in quotes from Anon @21). Note I didn’t find anything in the video (posted above) I felt could be fairly so characterized, or even remotely thus ‘mantra-like’.

    If the latter were only the case — fair enough — yet it would better than “excessively UNhelpful for you to” provide actual quotes attributed to the individual (accurately and fairly). Should such quote(s) warrant an extreme ‘throwing the baby out with the bath water’, giving us some sense of proportionality as to why all of what the individual shared should be tossed — in your estimation — would be helpful. Particularly if, that position is supported with actual quoted text versus a quoting out of context, which of course will make an individual or certain of their words seem more simplistic or extreme, and thereby easier to refute.

    I’m happy to weigh supported facts when presented, and to continue making efforts to get / discern truth from whatever source it may be derived. To an extent that can be facilitated in this wonderfully helpful blog, I believe we will all benefit.

    An excellent example of how to elevate IPW discourse and foster a searching of truth can be seen in an Anon @20 inquiry:
    “I have not heard of this before. Do you by chance have a reference that discusses this in more detail?”

    A closing, additional open mind joke
    A diplomat: One who sees a person ‘with a hole in their head’ as someone with an open mind.

  49. Anon September 30, 2019 1:01 pm

    PTO-I,

    Thanks for swinging back with your comment. It appears that I indeed took your presentation of the author as you vouching for his entire spectrum of beliefs. I am heartened to hear from you that this is an error on my part.

    On that note, TFCFM, it is error on your part attempting to “redefine” your position as changeable based on some “hyper-technicality” of what “to exclude” means. Rather, this is the very heart of the matter of a patent being a negative right and not a positive right. This very heart (of the matter at law) then must inform the matters of equity.

    Both of these points have been presented to you and it cannot be said that these are merely “hypertechnical” aspects.

  50. TFCFM September 30, 2019 1:23 pm

    @Anon: “TFCFM, it is error on your part attempting to “redefine” your position as changeable based on some “hyper-technicality” of what “to exclude” means. Rather, this is the very heart of the matter of a patent being a negative right and not a positive right. This very heart (of the matter at law) then must inform the matters of equity.

    If you genuinely believe the nonsense you write, then please cite for us a case where a court relies on section 154 to define the scope of exclusive rights or uses section 154 to “cancel out” the indication in section 283 that a court need not issue an injunction in every patent case.

    Section 154 says nothing more than that the Patent Office must issue the claims with each patent (and accounts for the language written on the ‘ribbon copy’ page. The ‘exclusive right’ referred to in section 154 is limited to what is provided in Chapters 28 and 29 of 35 USC.

    If you wish to pretend otherwise, suit yourself. You’d be courting a malpractice charge if you advised a client that way.

  51. Curious September 30, 2019 4:59 pm

    I am entitled to a remedy for the infringement, but that the balance of the hardships weigh against granting me an injunction to continue withholding my life-saving cure from the public.
    So … exclusive rights are not exclusive. Thanks for clarifying that we can ignore the words of the US Constitution. BTW, as for your “silly, but instructive, example”, what would be the purpose of obtaining the patent if not to practice it (or license it) as the patent owner sees fit? Spite?? Regardless, I’m sure those wishing to receive the cure for cancer could easily travel to Canada or wherever.

  52. TFCFM September 30, 2019 5:19 pm

    @Curious: “So … exclusive rights are not exclusive.

    Yes. For the same reason that a simple-minded way of casually characterizing patent rights is not sensibly assumed to be a perfect literal description of the metes and bounds of those rights.

    Put another way, the “exclusive rights” granted by a patent are precisely those set forth in the patent statutes, not those roughly approximated by a shorthand expression.

  53. Anon September 30, 2019 5:33 pm

    TFCFM,

    My you are slippery, as you both refute the point provided by Curious, just as you challenge me to provide a citation that would make your own case against Curious.

    The problem though is that I am not curious, and have not held that the nature of the right MUST dictate the equitable result. You seek to change the nature of the right at a fundamental level with nothing more than bootstraps.

    That’s putting the horse before the cart.

    First, you need to understand (and acknowledge) the basic nature of the patent right — and THIS is not some mere “hyper-technicality” that you first attempted to dance away with in order to make the (necessary) admission.

    You also are slippery by asking for a court citation to a matter that NEEDS NOT such a citation. The matter is NOT how you would seek to deflect as being a matter of mere hyper-technicality, but is instead foundational (as I informed you long ago). You may well never find a citation to that, as the courts may operate at a baseline that already integrates that foundational understanding.

    Can you find a citation for a Court holding that states “water is wet?”

    That YOU (once again) descend to labeling my position (put forth in clearly objective good faith) as “nonsense” says more about you than the “nonsense” you would seek to denigrate.

    And that too is not being hyper-technical.

  54. TFCFM September 30, 2019 6:08 pm

    @Anon: “First, you need to understand (and acknowledge) the basic nature of the patent right…

    This, I think, is where we are disagreeing. You have some squishy, idealized idea of what a patent “is,” whereas I read the statute (wherein Congress defined patent rights) as interpreted by the courts.

    Each of these functions is specified by our Constitution, which granted Congress the power to define patent rights (which it did by enacting the patent statutes), and which granted courts the power to adjudicate disputes about patent rights (by following the patent statutes as written and interpreting them when necessary).

    Last I checked, our Constitution did not specify that patent rights are whatever you or I imagine them to be.

  55. Curious October 1, 2019 7:38 am

    Put another way, the “exclusive rights” granted by a patent are precisely those set forth in the patent statutes, not those roughly approximated by a shorthand expression.

    As I wrote earlier: “What is particularly interesting is that EBay disposed of the ‘exclusive Right’ portion and Alice/Mayo disposed of the ‘Discoveries’ portion of the US Constitution.” That’s the US Constitution for you … nothing but “shorthand expression[s]” that can be disposed at will by Congress and SCOTUS. What a beautiful country we live in.

    Last I checked, our Constitution did not specify that patent rights are whatever you or I imagine them to be.
    Last I checked, the Constitution did not mention “patent rights.” It used the term “exclusive rights.” However, the modifier of “exclusive” appears to be “shorthand” for non-exclusive at the whim of the Courts.

  56. TFCFM October 1, 2019 9:28 am

    @Curious: “Last I checked, the Constitution did not mention “patent rights.” It used the term “exclusive rights.” However, the modifier of “exclusive” appears to be “shorthand” for non-exclusive at the whim of the Courts.

    You’re close. The part of the Constitution’s patent clause that you keep ignoring is the part (“The Congress shall have power to…“) which specifies that the clause merely empowers Congress to design and implement a patent regime of its choice, if and as it sees fit. The Constitution is utterly silent as to the nature, extent, and conditions-for-eligibility of the “exclusive rights” it empowers Congress to grant. Thus, “exclusive” in the Constitution’s patent clause is “shorthand” for whatever-Congress-thinks-best.

    Congress, for better or for worse, designed and implemented a patent regime in which injunctive relief is available, but not mandatory. This is perfectly consistent with the Constitution (which requires neither that ANY patent regime be enacted nor that such a regime include an automatic right to an injunction.)

    You’ll need to come up with a better argument than that if you want to convince anyone who knows anything (e.g., most Congressional representatives) that the Constitution requires that injunctions be automatically granted (but for patent cases only).

    IMO, you’re better off arguing why automatic-entitlement-to-an-injunction would be a good choice for policy reasons, rather than relying on Constitution-centered arguments that fool only the ignorant.

  57. anonymous October 1, 2019 10:09 am

    @46 TFCFM

    So, there is a “right to exclude,” as you now must admit. Injunction is one way, per Section 283, “to prevent the violation of any right secured by patent.” The “right to exclude” is within the set “any right secured by patent.” Conversely, there is no remedies statute where Congress intended a compulsory license for the term of the patent, is there? Maybe you can provide a cite, including to legislative history.

    My post @30 posited that patent term is more important than we are recognizing. It historically served to mitigate a “wrongly” issued patent, because it endures for only a limited time. What is it the term relates to, if not the “right to exclude”? A patent itself says, “Therefore, this United States Patent Grants to the person(s) having title to this patent the right to exclude others . . . for the term set forth in 35 U.S.C. 154(a)(2).” Section 154 says “such grant shall be for a term” of 20 years from filing. Congress is “securing” for “limited times” the “right to exclude,” just as Article 1, Sec. 8 of the Constitution provides.

    Can you show me in statute where the patent term relates to anything other than the “right to exclude”? I suspect you’ll find nothing relating to a 20-year term for a compulsory license.

    You have made the point that the creation of the right is distinct from the remedy, as SCOTUS said in eBay. Can you show me in statute where a compulsory licensing mechanism would need to be limited to 20 years? What if a court fixed a compulsory licensing scheme for 30 years instead of 20, as part of assessing damages? And how does this square with SCOTUS recognizing, “[I]t has long been accepted that the sovereign may not take the property of A for the sole purpose of transferring it to another private party B, even though A is paid just compensation.” See, Kelo v. City of New London, 545 U.S. 469 (2005).

    Section 286 on “Time limitations on damages” says a patentee can only recover damages for past infringement going back six years. There is no provision for future damages in a compulsory license.

    The STRONGER Patents Act has it exactly correct and needs to pass. On infringement, the “court shall presume that (1) further infringement of the patent would cause irreparable injury; and (2) remedies available at law are inadequate to compensate for that injury.” Injunctions should be granted much more often, with only the rare case of the opposite.

    To put it back to you, “The U.S. patent statute grants no infringer the right to continued infringement, even if paying a reasonable royalty for a compulsory license.”

  58. TFCFM October 1, 2019 12:04 pm

    @#57 Anonymous: “So, there is a “right to exclude,” as you now must admit.

    I neither “must” nor do admit that there is a “right to exclude” in any sense beyond how one might want to apply that squishy term to the particular provisions of sections 28 and 29 of 35 USC.

    The US patent statute includes no “compulsory license” provision, even if a situation in which (past infringement is remedied by money damages alone and future infringement is not enjoined) might functionally resemble a compulsory license.

    You are entitled to your opinion regarding whether it would be a good idea to create a “presumption” that every successful infringement plaintiff ought to be entitled to an injunction.

  59. Curious October 1, 2019 12:31 pm

    The part of the Constitution’s patent clause that you keep ignoring is the part (“The Congress shall have power to…“)
    And you keep ignoring the part after “have power to …” which is “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” SCOTUS has, in the past, used the phrase “promote the progress of science” to limit what is patentable subject matter. Obviously, the “securing for limited times” is the basis for patent terms. Moreover, these rights are granted to authors and inventors (or their assignee), which is also supported by the text. As for “exclusive right” …. well, they’ve decided to rewrite that as “non-exclusive right.”

    to convince anyone who knows anything (e.g., most Congressional representatives) the Constitution requires that injunctions be automatically granted (but for patent cases only).
    Considering that the Constitution only mentions “exclusive rights” in one section, it isn’t a stretch to say that exclusive rights require exclusivity — in this situation, the granting of an injunction. The drafters of the US Constitution could have easily used the phrase “by securing for limited times to authors and inventors right to their respective writings and discoveries.” However, they used the phrase “exclusive right” instead of “right.” Why is that? A clerical error?

    rather than relying on Constitution-centered arguments that fool only the ignorant
    That Constitution … what a pesky, inconvenient document. So much better that SCOTUS can redefine it however way they want — unless they are [selectively] practicing originalism

  60. TFCFM October 1, 2019 1:42 pm

    @Curious: “Considering that the Constitution only mentions “exclusive rights” in one section, it isn’t a stretch to say that exclusive rights require exclusivity — in this situation, the granting of an injunction.

    To the contrary, it is an ENORMOUS stretch to pretend that a portion of the Constitution that requires NOTHING AT ALL “requires” that “exclusive rights” must – if Congress decides to grant any – mean that injunctive relief is available to all non-defined holders of the non-defined rights whenever non-defined infringement of their non-defined patents is found according to non-defined standards by non-defined courts.

    The plain meaning of the section is that Congress is empowered to define and grant “exclusive rights” in substantially any way it sees fit. Congress saw fit to grant patent rights in a way that makes injunctive relief possible, but not mandatory.

    That you wish Congress had done something different changes neither what the Constitution empowered Congress to do nor what Congress, in fact, did.

  61. Curious October 1, 2019 4:14 pm

    Congress saw fit to grant patent rights in a way that makes injunctive relief possible, but not mandatory.
    That was SCOTUS — in Ebay — not Congress.

  62. TFCFM October 1, 2019 5:12 pm

    @Curious: “That was SCOTUS — in Ebay — not Congress.

    That was Congress, at 35 USC 283:

    The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable. [emphasis added]

  63. Anon October 2, 2019 11:37 am

    TFCFM,

    Your post at 62 reflects an item of substance that I have put to you that you have refused to engage with.

    To wit, “in accordance with the principles of equity” does NOT mean the merely typical equitable view that “injunctions are the most extreme form of equity” WHEN such is taken out of context with the nature of the right that has been transgressed.

    YES – Congress DID unleash the courts to fashion the remedies of transgression.

    But YOU appear to confuse and conflate remedy with the nature of the right itself.

    We all have already seen you back-peddle on the exclusivity factor of the patent right notwithstanding the slippery ways that you are attempting to do so – for example, your post at 58 and the improperattempt to characterize a KNOWN attribute as “squishy.”

    ALL of this was succinctly summarized in my first “tangle” with you on this subject — and the expressed need therein for YOU to recognize/acknowledge/integrate foundational aspects of both law and equity into your advocated position.

  64. TFCFM October 2, 2019 1:19 pm

    @Anon: “ALL of this was succinctly summarized in my first “tangle” with you on this subject — and the expressed need therein for YOU to recognize/acknowledge/integrate foundational aspects of both law and equity into your advocated position.

    Your beef is not with me. Your beef is with

    – Congress, which passed the statutes which you insist are irrelevant in the face of what you believe a patent “is” and

    – the judicial branch, which stubbornly enforces the laws that Congress enacted, rather than your beliefs.

    Take it up with them. Let us know how it turns out.

  65. Anon October 2, 2019 3:32 pm

    No TFCFM, you are incorrect in your attempt to rephrase what is going on.

    You misstate that “Congress, which passed the statutes which you insist are irrelevant in the face of what you believe a patent “is”

    I have made NO such statement of “irrelevancy.”

    None.

    The statutes concerning what a patent IS are clear – and clearly support the views that I have presented. On this matter of Law, it has been YOU that has back-peddled. It is you that have attempted to muddle what a patent IS with other sections of law dealing with other aspects of patents.

    You also misstate the circumstances with your choice of wording of “judicial branch, which stubbornly enforces the laws that Congress enacted, rather than your beliefs.

    I DO have a beef with HOW the courts have been enforcing the laws that Congress enacted – and NOT THAT the courts have been enforcing the laws that Congress enacted.

    You presuppose (again) that your views are correct when they are NOT.

    Bottom line here (and taking into account your own back-pedaling on the NATURE of the patent right) is that the Rule of Law fully supports the views that I have expressed,

    The issue I DO have (both with the courts and with your hackneyed ‘must follow what the courts have done as they can do no wrong’ mindset is that the fundamental aspects of equity – the very thing that Congress DID charge the courts to employ – are NOT how the courts are viewing the equitable remedy of injunctions.

    Instead of applying the principles correctly (and in accordance with BOTH what a patent right IS, as well as the principle aim of equity in making the aggrieved most whole), the courts have taken a “traditional” — and out of context — view that injunctions are a ‘most severe’ form of equity. They have — like you — done so in apparent ignorance of what the context of a patent right means.

    I do NOT have issues with law or with equity. BOTH are perfectly fine with my views.

    I do have issues with those that get applications of either — or both — wrong.

    Here, YOU have done both.

    You got the law side wrong in so far as the nature of the patent right.
    You got the equity side wrong in so far as not realizing that understanding the context of the nature of the patent right is a prime factor in making sure that the principles of equity are appropriately played out.

    Thus, placing your spin in the trash where it belongs, I AM taking up the substantive issues with YOU.

    My beef is very much with you.

    As we have both seen before though, when the substantive issues are not to your liking, you tend to obfuscate, prevaricate and just run away.

    As I stated, what is actually needed from you (if you really wanted to advance the conversation), is that you would recognize/acknowledge/integrate foundational aspects of both law and equity into your advocated position.

  66. TFCFM October 2, 2019 6:31 pm

    I’m not going to try to out-gibberish you. Enjoy your nonsense. I have clients to serve and work to do.

  67. Anon October 2, 2019 10:18 pm

    TFCFM,

    Yet again, you misconstrue and run away.

    This has become a habit of yours. Say things wrong. Get nailed to the wall. Accuse the other person of spouting gibberish. And then reappear later with the same things being said wrong.

    You are on the wrong blog.

  68. TFCFM October 3, 2019 9:29 am

    Whatever. Spend your free time as you like. I will do the same. As for me, I recognize an internet time-suck when I meet one.

    I’m happy to discuss substance with you at any time. Should you ever reply with substance, a conversation may even develop. However, when you respond with nonsense, insult, and gibberish, don’t expect me (or, evidently, others) to play along for very long.

    I look forward to an actual incident in which your assertions are pitted against mine. My clients enjoy prevailing when it matters, of course, and I feel no need to try to out-type an internet self-image-masturbator.

  69. Anon October 3, 2019 11:29 am

    TFCFM,

    You are full of excuses — yet again.

    Maybe instead of “time suck,” you spend the time to understand why your views are not copasetic BEFORE you trot them out again.

    And here (again) you ploy the same CRAP that you ployed the last time with your false assertion of “I’m happy to discuss substance with you at any time. Should you ever reply with substance, a conversation may even develop. However, when you respond with nonsense, insult, and gibberish, don’t expect me (or, evidently, others) to play along for very long.

    I have made clear and direct the substantive elements and it has been You that drops to nonsense, insults and accusations of gibberish (as witness by the additional and rather unseemly pejoratives that you reach to here.

    It is the way that YOU play that should not be expected to have anyone play along for very long. As I have noted – there is another blog that countenances YOUR type of behavior. This is not that blog, and if you are unwilling to actually entertain the critical points provided against you (and not seek to merely dismiss them with name-calling), acknowledge those critical points, and as appropriate when you back-peddle, actually integrate those critical points into your position. THEN you will be on a blog that promotes the spending of free time here.

    And very much to the contrary, if you continue to play the games that you play, indulging yourself in actions that you then turn around and accuse others of, you will find your leash here yanked and you will NOT be able to spend your free time as you like (leastwise not here).

    As always – this is your choice.

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