Supreme Court Says Of Course The Patent Office Can Admit It Made A Mistake And Dump Bad Patents

from the phew dept

For the second time in two years, the Supreme Court has needed to weigh in and note that, of course, the US Patent Office can take another look at the crappy patents it already granted, recognize its mistake, and void the patents. A little less than two years ago, it looked at what standards could be used by the Patent Trial and Appeal Board (PTAB) using the Inter Partes Review (IPR) system created by the America Invents Act of 2010. The latest case was much more broad: challenging whether the IPR/PTAB process itself was Constitutional.

The basic idea behind the IPR process was an admission that the USPTO is historically bad at properly reviewing patents before granting them. It grants a lot of bad patents. The IPR process allows anyone to present evidence to the PTO that it made a mistake and granted a patent that should never have been granted. If the PTAB is convinced, it can invalidate the patent. Seems pretty straightforward. Except that the usual patent lovers (mainly patent trolls and big pharma) insisted that this was some sort of unconstitutional taking of property, without the review of a court. This is wrong for a whole bunch of reasons -- starting with the incorrect view of patents as traditional "property."

The Supreme Court ruled on the issue, in a case called Oil States Energy Services v. Greene's Energy Group, and basically said that of course the PTAB can invalidate patents this way. Justice Thomas wrote the majority opinion with a 7 - 2 split (Gorsuch and Roberts dissented). The key issue was whether or not invalidating patents is reserved only for the courts, and most of the Justices don't see any support for that. In short, the majority opinion says what the Patent Office gives, the Patent Office can take away...

This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III.

The majority opinion points out that the Constitution doesn't require the Judicial branch to weigh in on the granting of patents, and thus it need not weigh in on the invalidating of those patents either.

Inter partes review is “a second look at an earlier administrative grant of a patent.” ... The Board considers the same statutory requirements that the PTO considered when granting the patent.... Those statutory requirements prevent the “issuance of patents whose effects are to remove existent knowledge from the public domain.” ... So, like the PTO’s initial review, the Board’s inter partes review protects “the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope,”... Thus, inter partes review involves the same interests as the determination to grant a patent in the first instance.

The court reasonably compares it to other administrative processes where the government can grant things, such as franchises, and later revoke or amend those franchises.

An important part of the ruling is that patents are not property in the traditional sense, and this isn't case of removing someone's property without the Judicial Branch. Specifically, the court says that patents are really more similar to a franchise right, than a traditional property right:

Patents convey only a specific form of property right—a public franchise.... And patents are “entitled to protection as any other property, consisting of a franchise.” Seymour, 11 Wall. at 533 (emphasis added). As a public franchise, a patent can confer only the rights that “the statute prescribes.” Gayler, supra, at 494; Wheaton v. Peters, 8 Pet. 591, 663–664 (1834) (noting that Congress has “the power to prescribe the conditions on which such right shall be enjoyed”). It is noteworthy that one of the precedents cited by Oil States acknowledges that the patentee’s rights are “derived altogether” from statutes, “are to be regulated and measured by these laws, and cannot go beyond them.”

And while Oil States points to some earlier rulings saying that only the courts can invalidate a patent, the Supreme Court correctly notes that the cases it points to were decided under the Patent Act of 1870 -- and under that Act, courts were necessary. But there is no Constitutional prohibition on Congress setting up different rules for the patent system, and since 2010 with the America Invents Act, Congress decided to allow for this administrative review.

Amusingly, the court also takes Oil States to school for a history lesson. The company had argued that historical principles have established that only a court could invalidate a patent, and points to cases decided in 18th century England. But, the Supreme Court, citing Mark Lemley, points out that Oil States not only gets its history wrong, but that the actual history shows that England had something quite similar to an Inter Partes Review process:

But this history does not establish that patent validity is a matter that, “from its nature,” must be decided by a court.... The aforementioned proceedings were between private parties. But there was another means of canceling a patent in 18th-century England, which more closely resembles inter partes review: a petition to the Privy Council to vacate a patent. See Lemley, supra, at 1681–1682; Hulme, Privy Council Law and Practice of Letters Patent for Invention From the Restoration to 1794, 33 L. Q. Rev. 63 (1917). The Privy Council was composed of the Crown’s advisers.... From the 17th through the 20th centuries, English patents had a standard revocation clause that permitted six or more Privy Counsellors to declare a patent void if they determined the invention was contrary to law, “prejudicial” or “inconvenient,” not new, or not invented by the patent owner. ... Individuals could petition the Council to revoke a patent, and the petition was referred to the Attorney General. The Attorney General examined the petition, considered affidavits from the petitioner and patent owner, and heard from counsel.... Depending on the Attorney General’s conclusion, the Council would either void the patent or dismiss the petition....

The Privy Council was a prominent feature of the English system. It had exclusive authority to revoke patents until 1753, and after that, it had concurrent jurisdiction with the courts.... The Privy Council continued to consider revocation claims and to revoke patents throughout the 18th century.

Just a note: if you're going to cite English legal history at the US Supreme Court to try to establish some sort of general and accepted rule, it's best if you don't skip out on the fact that the actual history supports the other side. Just saying.

The final argument from Oil States that the court rejects, is that the PTAB is a violation because it looks too much like an Article III court, without being an actual court. But the majority opinion basically says "so what?"

But this Court has never adopted a “looks like” test to determine if an adjudication has improperly occurred outside of an Article III court. The fact that an agency uses court-like procedures does not necessarily mean it is exercising the judicial power. See Freytag, 501 U. S., at 910 (opinion of Scalia, J.). This Court has rejected the notion that a tribunal exercises Article III judicial power simply because it is “called a court and its decisions called judgments.”

The dissent from Gorsuch (with Roberts signing on) is all over the place. They seem taken in by the myth of patent greatness, kicking off the dissent with the following:

After much hard work and no little investment you devise something you think truly novel. Then you endure the further cost and effort of applying for a patent, devoting maybe $30,000 and two years to that process alone. At the end of it all, the Patent Office agrees your invention is novel and issues a patent. The patent affords you exclusive rights to the fruits of your labor for two decades. But what happens if someone later emerges from the woodwork, arguing that it was all a mistake and your patent should be canceled? Can a political appointee and his administrative agents, instead of an independent judge, resolve the dispute? The Court says yes. Respectfully, I disagree.

But... that makes no sense. Congress, which has the power to set up the patent system to "promote the progress of the useful arts" has determined (reasonably) that since the Patent Office grants lots of bad patents, it can also review and invalidate its mistakes. That's not a "dispute that needs to be resolved." It's an administrative function that doesn't end once the patent is granted.

Gorsuch seems to think people will read the narrow ruling of the majority to more or less decimate the courts and move lots of disputes into administrative processes. That's silly. The majority opinion is quite clear that it is narrowly focused on the issue before it concerning Congress's authority to enable the Patent Office to invalidate patents. As for the history lesson mentioned above, Gorsuch claims it no longer applies because the English Privy Council stopped invalidating patents in the 18th Century. That's true, but meaningless. The whole reason English patent history is brought up in the first place was because Oil States tried to argue that it was the natural order of patents that only courts could remove them. What they really meant is that it was the natural order starting in the late 18th century... which is a lot less convincing if you're trying to argue a form of "we've always done it this way." The point is... we haven't.

This is a big and important win, protecting everyone from bad patents. The IPR process has been shown to be a tool that is at least somewhat effective in dumping bad patents. We should all strive for a situation in which the PTO doesn't grant bad patents in the first place, but given that it does, it should be able to acknowledge its mistakes and correct them.

Of course, that won't stop patent trolls and big pharma from flipping out. Even the site FiercePharma seems to be completely off its rocker in calling this ruling a "blow for pharma" and describing the IPR process as "hated." Except that's silly. IPR is only hated by those with junk patents. If pharma hates it, it's because they know their patents are junk.

As that article makes clear, though, the powerful Pharma lobby intends to pressure Congress to still kill the IPR process as quickly as possible:

In a statement, PhRMA spokesperson Nicole Longo said the "narrowly tailored decision" found only that IPRs are constitutional, not "efficient or fair." The arguments and a Tuesday ruling in another case—SAS Institute v. Iancu—mean it's "clear there are problems with the IPR process that need to be addressed," she added.

Amusingly, the article also notes that most of the big pharma companies have used the IPR process themselves to invalidate the patents of others, suggesting that maybe they don't actually "hate" it that much after all...


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  • identicon
    Anonymous Coward, 26 Apr 2018 @ 12:53pm

    Cost and Effort

    Then you endure the further cost and effort of applying for a patent, devoting maybe $30,000 and two years to that process alone.

    Using this logic, I should get a refund from the IRS just because I went through the process of filling out and filing the long paperwork.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 26 Apr 2018 @ 1:03pm

    This Court has rejected the notion that a tribunal exercises Article III judicial power simply because it is “called a court and its decisions called judgments.”

    So does this mean they're willing to admit that Foreign Intelligence Surveillance Act "Courts" are nothing of the sort? FISA claims to be a judicial entity, calls itself a court, and yet acts almost nothing like the model of an American court. Per this phrasing, FISA may not be a judicial entity at all, which could have interesting consequences.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 26 Apr 2018 @ 1:41pm

      Re:

      The court said that simply calling something a court does not make it one. It did not say that calling something a court makes it not one. Big difference.

      reply to this | link to this | view in chronology ]

    • identicon
      Damien, 24 May 2018 @ 1:47pm

      Re:

      Also, to be clear, the question here is not whether they are "courts" but whether they are Article III courts as opposed to Article I or Article IV courts, known as tribunals. Article III courts are special, constitutionally, but I dont think there is any question that they are in fact a court... but whether their authority derives from Article III or not.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 26 Apr 2018 @ 1:43pm

    "Posthumous" Patent Review?

    Criminal convictions can be invalidated through executive pardon, even as a purely symbolic gesture for people who have been dead for a long time. Would the same concept hold true for bad patents that have also expired? Since the US Patent Office can now reverse itself, I'd like to propose that Amazon.com's recently expired "one click" patent be reviewed by the Patent Office a second time -- and hopefully rejected this time around as unpatentable.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 26 Apr 2018 @ 1:51pm

    "America Invents Act of 2010"

    AIA was 2011, Mike. https://www.gpo.gov/fdsys/pkg/PLAW-112publ29/pdf/PLAW-112publ29.pdf

    reply to this | link to this | view in chronology ]

  • icon
    Toom1275 (profile), 26 Apr 2018 @ 1:54pm

    After much hard work and no little investment you devise something you think truly novel. Then you endure the further cost and effort of applying for a patent, devoting maybe $30,000 and two years to that process alone. At the end of it all, the Patent Office agrees your invention is novel and issues a patent. The patent affords you exclusive rights to the fruits of your labor for two decades. But what happens if someone later emerges from the woodwork, arguing that it was all a mistake and your patent should be canceled?

    It's kind of funny how Gorsuch's fantasy scenario is pretty much the opposite of the common reality the law was made to correct.

    reply to this | link to this | view in chronology ]

    • icon
      That One Guy (profile), 26 Apr 2018 @ 2:47pm

      'But what about MY work?'

      It also completely ignores that more than one person can have the same idea, independent of each other, or that the amount of time and money you spend on something is not an indicator that it's a novel idea to others in the field.

      So say the hypothetical comes true, the first person gets the patent. Now say that another person, who had never even heard of the first person comes up with the same invention. Should their work, their time and money be completely invalidated simply because the other person got the patent first? Should the first person be able to demand payment from the second simply because of that patent, as though all of the time and money they might have spent are simply irrelevant?

      After all, if it would be a terrible thing for the first person to spend all that time and money and get nothing to show for it, how much more insulting for the second to spend all their time and money and get sued for it?

      The hypothetical attempt at a tear-jerker may have been persuasive to the one who wrote it, but you don't have to dig very far to see that it opens up a whole slew of problems once you move past the starting premise.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 26 Apr 2018 @ 3:11pm

        Re: 'But what about MY work?' / crowd-sourcing

        One thing that would help the 'duplicant patent application' issue would be for the Patent Office to immediately post on their website all patent applications, so other prospective inventors could see as soon as possible the other people who "got there first." For the patent office to also seek comments from the public on all "in the queue" received patent applications could help the overworked examiners come to a better decision, and such a public-review system might even completely end the need to nullify bad patents later, by publicly hashing out all the arguments ahead of time.

        Other federal agencies like in this case the ATF have had public comment systems for proposed rule changes in place for some time.

        https://www.federalregister.gov/documents/2018/03/29/2018-06292/bump-stock-type-devices

        reply to this | link to this | view in chronology ]

        • identicon
          Damien, 24 May 2018 @ 1:43pm

          Re: Re: 'But what about MY work?' / crowd-sourcing

          The USPTO does this... they immediately post all patents as soon as they are granted. Since no patent rights exist prior to grant, this is the earliest possible moment the office could, in fact, give notice of patent rights.

          No patent rights exist for an application, so even if they were made available, they do not give any indication as to what patent rights currently exist for that invention.

          Public comments on patent applications... LUL, please provide a useful idea. Who cares what the public's opinion of it is, the only thing that matters is the examiner. In any case, the application becomes public before being granted and during that period third parties are able to submit references to the extent they are relevant. So that kinda already exists.

          reply to this | link to this | view in chronology ]

      • icon
        Toom1275 (profile), 26 Apr 2018 @ 3:23pm

        Re: 'But what about MY work?'

        After all, if it would be a terrible thing for the first person to spend all that time and money and get nothing to show for it, how much more insulting for the second to spend all their time and money and get sued for it?

        Or when the first person spent neither time nor effort to get theirbpatent and gets to sue the second anyway.

        reply to this | link to this | view in chronology ]

        • icon
          That One Guy (profile), 26 Apr 2018 @ 3:34pm

          Re: Re: 'But what about MY work?'

          Otherwise known as 'the people who benefit the most from not being able to review patents after they've been granted.'

          As you noted, it's funny that he spun this elaborate hypothetical about how revoking patents would be a terrible crime against inventors, when the people who stand the most to lose from it are those that haven't invented anything, or have 'invented' something so blatantly obvious to someone in the field that the patent shouldn't have been granted in the first place.

          reply to this | link to this | view in chronology ]

  • icon
    That One Guy (profile), 26 Apr 2018 @ 2:24pm

    If you don't have one power, you don't have the other

    It seems to me another counter-argument would be to note that if the patent office cannot invalidate patents, then they shouldn't be able to grant them either. If they have the power to give patents, then it makes sense for them to be able to 'take them back'(or, more accurately, decide that a given patent shouldn't have been granted in the first place). To argue that they have ultimate power over patents only to the point of granting them seems to be wanting to have it both ways.

    Additionally, making use of some good old reducto ad absurdum, it seems that if you follow the 'patents are property, the patent office shouldn't be allowed to take someone's property back' line far enough, then refusing a patent is basically refusing someone ownership over their 'super valuable' invention, and could be problematic.

    As pointed out by the dissent, people can invest years of work and thousands of dollars to file for a patent, and yet the patent office can simply refuse a filing and lead to all of that being wasted? If taking a patent back is a terrible thing because it costs the previous owner so much, then refusing to grant the patent in the first place is almost as bad.

    reply to this | link to this | view in chronology ]

    • identicon
      ryuugami, 26 Apr 2018 @ 6:35pm

      Re: If you don't have one power, you don't have the other

      I got a better idea :)

      If patents are property, then patent holders need to start paying taxes on all those patents they hold. Those taxes should be proportional to the value of the patent in question.

      So, if a patent holder sues you and claims you owe them $50 million in damages for infringing, they should be paying property taxes on that $50 million asset every year until the patent expires -- about 20 years :)

      reply to this | link to this | view in chronology ]

  • identicon
    Lawrence D’Oliveiro, 26 Apr 2018 @ 5:59pm

    It Doesn’t Take “Hard Work” To Come Up With A Patent

    A patent is just an idea. You don’t even have to prove the idea works before getting a patent.

    Which is why you can wait until somebody else manages to implement something resembling the idea, and then sue them. In other words, this is why “patent trolling” is possible at all.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 26 Apr 2018 @ 10:57pm

    Damn, tp and out_of_the_blue aren't going to like this. Not one bit.

    reply to this | link to this | view in chronology ]

  • icon
    Steerpike (profile), 27 Apr 2018 @ 9:25am

    This language in the opinion leads me to believe we haven't seen the last of Constitutional challenges to IPRs"

    "Moreover, we address only the precise constitutional challenges that Oil States raised here. Oil States does not challenge the retroactive application of inter partes review, even though that procedure was not in place when its patent issued. Nor has Oil States raised a due process challenge. Finally, our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause."

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 28 Apr 2018 @ 7:17am

    Except that the usual patent lovers (mainly patent trolls and big pharma) insisted that this was some sort of unconstitutional taking of property, without the review of a court.

    ^^If patent equals physical property is true, then should not be a tax levied on the creation of a patent?

    Both the Pharma and Entertainment industries owe the government unpaid taxes, possibly in the amount of trillion of dollars.

    We can finally pay off the entire national debt in a single stroke of a ink pen!

    The system is fixed! The system is fixed!

    reply to this | link to this | view in chronology ]


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