High Court to Review Constitutionality of AIA Trials

The Supreme Court has had at least three occasions over the past 7 months to review the constitutionality of AIA trial proceedings — it declined all three invitations. Thus, the writing appeared to be on the wall when the same question was posed recently in Oil States Energy Services v. Greene’s Energy Group. But, then the Federal Circuit wavered somewhat as to its conviction in its own precedent on point. When asked to reconsider the debate as to whether a patent is purely a private right or public right (as previously decided in MCM Portfolio LLC v. Hewlett-Packard Co. et al.) the CAFC's en banc denial of that request a few weeks ago (here) was a split decision. (As a reminder, as a public right, a patent may be adjudicated by an Article I court).

Never one to shy away from a new opportunity to set the CAFC straight, the High Court suddenly became interested in the very same debate it only very recently passed over three times, granting certiorari yesterday. (Order here, briefs here)

While the High Court's cert. decision will be embraced as a clear interest in reversal (as it almost always is), this would be ignoring practical realities of what has occurred here. First, the Court takes patent cases from time-to-time to simply provide guidance on oft debated issues, i4i and Cuozzo being the most recent examples. With the recent decision of the CAFC in Cascades Projection v. Epson and Sony, (noted above) essentially providing a split among circuits so to speak, and perhaps at least some academic interest on the Court to explain the public right aspects of patents, you can see why the Court may now have incrementally more interest in this debate.

As I explained previously, the issue of whether an intangible intellectual property right is exclusively a public right was recently debated in B&B Hardware, Inc. v. HargisIndus., Inc.,135 S. Ct. 1293, 1316-17 (2015) (Thomas, J., dissenting), which described the idea of IP as a "quasi-private right":

[T]rademark registration under the Lanham Act has the characteristics of a quasi-private right” and that, because registration is a “statutory government entitlement, no one disputes that the [Trademark Trial and Appeal Board] may constitutionally adjudicate a registration claim.” Id. at 1317. But the “right to adopt and exclusively use a trademark appears to be a private property right . . .

(emphasis added)

An opportunity to clarify this quasi-private right for patents, correct the CAFC, and overrule/distinguish the statement in McCormick Harvesting Mach. Co. v. Aultman-Miller Co., 169 U.S. 606 (1898), which everyone of these certs. is based on, appears to have finally convinced the Court that feedback was now in order.

Second, if reversal were the goal, the court could have been done so in any of the previous three opportunities, it's not like these previous opportunities were presented decades ago — we are talking October and November of 2016. All of the previous cases were indistinguishable in terms of being acceptable "vehicles" for the court's consideration of this broad constitutional principle.

My expectation is that the Court will reinforce the B&B delineation between infringement (private right) and validity (public right) and find the PTAB's validity-focused reviews constitutional.

Scott A. McKeown is an author of the Patents Post Grant.