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November 15, 2017


Hey Michael,

For all those who believe SCOTUS will uphold IPRs constitutional in Oil States, I ask these two questions: (1) how do you address the SCOTUS holding in McCormick Harvesting that says only an Article III court can invalidate an issued patent?; and (2) does 35 USC 261 mean what it says and says what it means (i.e., patents are “personal property”)? In particular, for those who believe that the holding in McCormick Harvesting wasn't based on constitutional "due process" and separation of powers grounds, the very words you've quoted from that case completely belie that belief.

Hey Andrew,

My apologies, I should have addressed my comment to you, not Michael.

Back in 1898, the time of McCormick, had the Congress by then set up any sort of post-issue review by the Patent Office?

I thought not. In which case, it was a fact that the only way, back then, to get a duly issued patent cancelled was by the courts. So the McCormick court was quite right, back then, to declare:

"The only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent."

But things have changed since then, right?

The patents clause gives the Congress the power to regulate patent law, right. And regulate it they have, right. On many occasions since 1898.

So I guess Ned Heller is right, that it all comes down to the 18th century in England, and the activities of the Privy Council.

Fascinating. Popcorn please.

"But things have changed since then, right?"

Wrong, MaxDrei. Like I suggested above, read the language quoted by Andrew from McCormick Harvesting. SCOTUS in that case clearly stated that only an Article III court could adjudicate validity, both as a "due process" issue under the 5th Amendment, as well as a separation of powers issue. The meaning of the express language in our Constitution does not change over time, no matter what certain SCOTUS justices may (wrongly) believe.


I am sure that you have seen the reasoning on other blogs. Even Cognress, being the correct branch of the government to write (or change) the statutory law that is patent law may not do so in a vacuum.

Not everything written by Congress survives Constitutional scrutiny (witness the recent Slants case in the domain of trademark law).

The item under question here is whether or not patents are property.

Patents start out as inchoate property rights of the inventor. The inchoate right becomes a full legal property right at the time of grant. Once that point is reached, other Constitutional protections of property kick in.

One should (really, must) remember that our sovereign started with a deep aversion to the government dipping in and taking personal property (due in no small part to the Crown's insistence on doing that very thing in a number of ways).

ANY post-grant changes to law are suspect, and thus must pass scrutiny. The idea that Congress may do something - purely as a legislative issue outside the purview of a Constitutional scrutiny is a fallacy. NOT EVEN the new presence of the "statutory authority" saves THAT authority from scrutiny.

This very much is similar to admonitions provided elsewhere: the right questions must be asked. Often previously, parties were asking if the PTAB could do this or that under the AIA. Such were wrong questions, as it was clear that under the AIA, the PTAB was following what Congress provided. The right question was whether or not Congress could provide that in the first place. THAT is the thrust here in Oil States.

Sadly, some still want to think of this as NOT a Constitutional issue, and think that if they label this a "statutory" issue, then everything is fine.

This is merely trying to make the question into the wrong question (again). FOCUS is needed to keep the issues clearly in the spotlight. And that spotlight is not whether or not the PTAB is doing what Congress has provided, and instead is very much MAY Congress itself provide what it has attempted to provide.

Thanks Mr. Williams for a thorough and balanced summary. [Including your noting the interesting fact that the old Sup. Ct. McCormick decision does not specifically mention or invoke any specific provisions of the Constitution.]
P.S. EG, quoting only a part of 35 USC 261 rather than the whole statutory provision is not the kind of argument that the Supremes will like.

Hey Paul M.,

You (and others) can believe what you/they will about what McCormick Harvesting says-the express language quoted by Andrew from that case clearly says the Article III issue is a Constitutional one, not a statutory one as you and other seem to believe.

I also take great umbrage at your comment about "quoting only a part of 35 USC 261 rather than the whole statutory provision." The "part" I refer to says that patents are "personal property"-in what way does the other unquoted "part" not say that? None of the arguments I've seen so far about that unquoted "part" are in anyway persuasive to me and others that patent rights are anything other than "personal property" which is subject to "due process" under the 5th Amendment. And I frankly don't care that it may "not [be] the kind of argument the Supremes like." When I see Our Judicial Mount Olympus twist the express language of the patent statutes to mean something that they're not (i.e., in 35 USC 101), I'm also am frankly not impressed.

When one reads all the briefs (50+ hours) what becomes clear is this: historical law supports patent owners and the AIA should have given patent owners who lose in the PTAB some type of "de novo" right to a trial by jury but with the "kicker" that special FRCP Rule 68-type fee shifting consequences would result from another loss there. Seventh Amendment would be protected and respected and only the most persistent litigants with the most valuable patents would likely exercise those rights after losing in the PTAB. Perhaps this is the coming amendment that must occur through Congress -- not SCOTUS, right? (smile) ps. Does In re Micron "set the stage" for what may now happen?

I haven't read all the Briefs, no.

But if I read the 5th amendment right, it speaks of "private" property. To my mind, an issued US patent is the very antithesis of private. Its very existence is to enable the entire world to put an invention into effect.

Now, in McCormick, the Decision referred to "personal" property. There are intellectual property rights in an issued US patent, for sure, invented by The Congress and bestowed exclusively on the patent owner by the USPTO. So of course the owner of the patent has, in the patent, some "personal property". But is that enough to settle it, that any "property" in the patent that its owner enjoys for the time being is "private property" within the meaning of the 5th Amendment? What is "personal" and what is "private" are, generally, not the same. Must they be taken, here, as identical in scope?


I am not sure that you are looking at the word "private" in the proper context.

As used here, it is NOT to be confused with the notion of "behind closed doors."

You further stray away from the recognized legal meaning with your comment of "What is "personal" and what is "private" are, generally, not the same." Where did you develop that notion?

Where? The dictionary. The two words are not synonyms. I have been supposing that the writers of the Constitution chose their words carefully. If they wrote "private", they meant "private" and not "personal". "Personal property. Keep out. Trespassers will be prosecuted" Something not quite right there, surely.

Now you tell me that the "legal meaning" of "private" in the 5th Amendment is "recognised". But given the present referral to the Supreme Court, it looks to me like it is still not free from ambiguity.

It does not have the ambiguity that you wish to inject with some reference to a standard dictionary.

Are you no the one that oft uses the phrase "with a mind willing to understand?" It appears that you are doing the opposite with an attempt to not recognize the context here.

"The two words are not synonyms."

Actually, according to a quick google search and Thesaurus.com, Synonym.com, Oxford Dictionary and Merriam-Webster.com, they ARE synonyms.

So you are incorrect both in context and otherwise.

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