About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Mastermine Software, Inc. v. Microsoft Corp. (Fed. Cir. 2017) | Main | In re Micron Technology, Inc. (Fed. Cir. 2017) »

November 21, 2017


I am puzzled how the author can equally read McCormick as resting "solely on the lack of statutory authority at the time." McCormick's statement that cancellation of issued claims "would be in fact an invasion of the judicial branch of the government by the executive" is purely a constitutional separation of powers holding - not a statutory interpretation of the Patent Act. There can be no valid statute that would empower the executive to breach the separation of powers (Article III).

"The difficulty, of course, is that there was no statutory authority for the Patent Office to act in such a manner at this time."

Hey Andrew,

That may have been true, but if lack of statutory authority was reason for SCOTUS' holding in McCormick Harvesting, wouldn't SCOTUS had said something like or equivalent to "the patent office was not granted statutory authority" to invalidate a patent in a reissue? Instead, all words in the opinion evoke Constitutional (not statutory) infirmity.

Cynically, using the above reasoning, the Court could cite to McCormick Harvesting as supporting its opinion in Oil States regardless of what the Court's conclusion turns out to be.

Nose of wax anyone?

Dear EG,

Thank you for your comments (both to this post and the previous one). I also want to make clear that I think you have a perfectly valid view of the McCormick Harvesting case, and I recognize that many people agree with your position. However, I think that Respondent’s view of this case is also equally plausible. With that said, I am happy to, and capable of, arguing either position. Playing devil’s advocate, in response to your question, it could be argued that the Court WAS saying that the office did not have the statutory authority to cancel a patent – or more correctly that the statutory authority was revoked with the change in the 1870 patent act. With that change in the patent statute, and the lack of any other statutory authority, any attempt by the executive branch to assume power that was otherwise left to the courts was unconstitutional.

We could also flip your question to ask why SCOTUS did not say something like “Congress could never grant the authority to the executive branch to revoke an issued patent.” The problem is this wasn’t necessarily the question the Court were answering. And I do find the lack of mention of Constitutional infirmity slightly troubling.

With all of the said, I do find this debate interesting, and I am looking forward to seeing what questions the Court asks on Monday. And I will reiterate that I do appreciate all of the thoughtful and thought-provoking comments that have been provided to these posts. Thanks.


Dear Ron Katznelson,

I hope my response to EG answered your question also. Thanks for the comment.


A good article Andrew.
Ron, the McCormick Court's situation and statement of "an invasion of the judicial branch of the government by the executive" [absent any Congressional authorization] is not necessarily applicable to a Congressionally-established administrative tribunal 150 or so years later.
Even many of the expressly constitutional Sup. Ct. decisions of that long ago time period have long since been overruled by later Sup. Ct. decisions.

If McCormick Harvesting was really constitutional, why was it not used to attack subsequent statutory PTO interference proceedings adverse decisions against issued patent claims?

Your response to EG was not at all responsive to my comment. You skirt the holding in McCormick; under your reading, what part of "would be in fact an invasion of the judicial branch of the government by the executive" lacks "mention of Constitutional infirmity"? Can you please explain how that SPECIFIC statement can in any way mean that the "Court WAS saying that the office did not have the statutory authority to cancel a patent" but not what the plain language means - that the Office had no separation of powers (constitutional) authority to do so?

As best I recall, the relevant provisions of the Constitution have not been amended since McCormick. McCormick is good law as pertaining to the Constitution and therefore very much "applicable to a Congressionally-established administrative tribunal 150 or so years later."

The fact that the Federal Circuit ignored McCormick in prior cases is hardly a legal proof of anything.

Having made an attempt to understand the legal arguments, this way and that, it seems to me that the Supreme Court will find itself free to jump either way. The legal arguments are sound enough, on both sides, to support a defensible Decision, either way.

So, in the end, the Court will decide as it wants to decide.

The tie breaker is the general welfare, the public interest, public policy. That, I suppose, is where the Amicus Briefs will play a decisive role.

Andrew's article states:

"The difficulty, of course, is that there was no statutory authority for the Patent Office to act in such a manner at this time. "

This is a common misperception. From our Cooper v. Lee cert petition of last year:

"Indeed, at the time, reissue examiners acted under color of statutory authority to invalidate original patent claims during reissuance proceedings (just like IPRs today). See Patent Act of 1870, Section 46, R.S. § 4909 (providing that “any claim” – whether original or added – may be rejected twice during reissue, and rejection is final for appeal purposes). McCormick did not curtail executive action based on an absence of statutory authority; it held on constitutional grounds in the face of it."

I think your point only goes to the reissue process itself (which was abandoned in McCormick)-- not to the returned original patent that did not get reissued. It is the cancellation of claims in THAT patent that was at issue in McCormick and there was no statute prescribing invalidation of claims in the original returned patent due to the Office rejection of identical claims in a reissue application that was abandoned.

Therefore, I believe Andrew's article is correct on THAT point. And I would even accept as reasonable the argument that the first part of McCormick's statement -- that doing so "would be to deprive the applicant of his property without due process of law" -- can be interpreted as stating a void in statutory authority, even though it is a Fifth Amendment infirmity. This is because Congress could have cured this type of infirmity by providing due process through a statutory scheme for canceling claims in EXISTING patents.

However, my point is that the notion of a statutory void only goes so far. The second part of McCormick's holding -- that it "would be in fact an invasion of the judicial branch of the government by the executive" has no possible statutory cure. This holding in McCormick is purely constitutional. This constitutional infirmity is about the separation of powers and curing it requires amending Article III of the Constitution. It is on THIS issue that Andrew's article is incorrect. While McCormick's holding may not be a Fifth Amendment holding, it is certainly an Article III holding.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29