Private or Public Right? Who Should Adjudicate Patentability Disputes and Is the Current Scheme Really Constitutional?

Marquette Intellectual Property Law Review Volume 21 | Issue 1 Article 5 Private or Public Right? Who Should Adjudicate Patentability Disputes and Is the Current Scheme Really Constitutional? Jasmyne M. Baynard Follow this and additional works at: https://scholarship.law.marquette.edu/iplr Part of the Civil Procedure Commons, Constitutional Law Commons, Courts Commons, Intellectual Property Law Commons, and the Science and Technology Law Commons Repository Citation Jasmyne M. Baynard, Private or Public Right? Who Should Adjudicate Patentability Disputes and Is the Current Scheme Really Constitutional?, 21 Marq. Intellectual Property L. Rev. 57 (2017). Available at: https://scholarship.law.marquette.edu/iplr/vol21/iss1/5 This Comment is brought to you for free and open access by the Journals at Marquette Law Scholarly Commons. It has been accepted for inclusion in Marquette Intellectual Property Law Review by an authorized editor of Marquette Law Scholarly Commons. For more information, please contact . 03 BAYNARD.FINAL (DO NOT DELETE) 4/27/2018 11:13 AM COMMENTS PRIVATE OR PUBLIC RIGHT? Who Should Adjudicate Patentability Disputes and Is the Current Scheme Really Constitutional? INTRODUCTION ....................................................................................... 58 I. INTER PARTES AND POST-GRANT PROCEEDINGS: NEW ADMINISTRATIVE INNOVATION IN PATENT LAW......................... 59 A. Pre-AIA: Administrative Review under the Patent Act of 1952 ...................................................................................... 60 B. Post-AIA Administrative Review – Inter Partes Review ..... 62 and Post-Grant Review ................................................................ 62 II. CONSTITUTIONAL CHALLENGES FOR ADMINISTRATIVE REVIEW: ..... 65 COOPER V. LEE AND MCM PORTFOLIO LLC V. HEWLETT-PACKARD CO. 65 A. Cooper v. Lee ....................................................................... 65 B. HP Decision from Federal Circuit ........................................ 67 III. THE CONSTITUTIONALITY OF INTER PARTES REVIEW ....................... 69 UNDER THE SEVENTH AMENDMENT ....................................................... 69 A. Claim 1: A patent is a private right ....................................... 69 1. Judges, Juries and the Seventh Amendment Rights of Inventors......................................................................... 69 B. Claim 2: A patent right is a public right. .............................. 72 IV. PROPOSED SOLUTIONS ...................................................................... 73 CONCLUSION ........................................................................................... 74 03 BAYNARD.FINAL (DO NOT DELETE) 58 4/27/2018 11:13 AM MARQ. INTELL. PROP. L. REV. [Vol. 21:1 INTRODUCTION “The patent bargain is the foundation upon which the patent system is built: in exchange for protections for an invention, the inventor agrees to make public their inventions so that others may build upon it.”1 The patent bargain creates a presumption of protection for the inventors, yet categorizing the patent a public right or a private right has diminished expectations for inventors and confusion for the masses. On October 11, 2016, the Supreme Court denied two petitions for writ of certiorari that challenged the constitutionality of Patent Trial and Review Board proceedings on the basis of the patent owner’s Seventh Amendment right to a jury trial and Article III separation of powers.2 The latter of those cases is the cornerstone for which this comment rests. In Cooper v. Lee,3 Petitioner J. Carl Cooper asked the United States Supreme Court to review a section of the Leahy-Smith America Invents Act that established “inter partes review,” (IPR) a procedure for administrative review of a patent.4 Making a number of constitutional challenges, Cooper asserts that inter partes review empowers an executive agency tribunal to assert judicial power cancelling a private property right.5 Moreover, Cooper stresses that patent disputes among private parties are disputes that have been known in the common law courts of 1789, afforded a trial, and cannot be adjudicated by an advisory opinion.6 After a tumultuous trip through the legal system in an attempt to finally determine the constitutionality of the IPR system, the high court has again left us pondering the issue of patent adjudication. With its denial of the petitioner’s writ for certiorari, the Court has again refused to declare whether patent rights are a private or public right. What does this mean for patent owners going forward? The waters are murky, but we will continue to see the adjudication of patent disputes by a non-Article III tribunal. This Comment examines a key question for patent administrative law: whether the grant of a patent is a public right, (i.e. a right that is primarily a concern of the public and can only be conferred by the government) thus subject to revocation by an administrative agency? In analyzing this concern, this 1. Editorial. The patent bargain. NATURE (Dec. 11, 2013), http://www.nature.com/news/thepatent-bargain-1.14333 [https://perma.cc/UTQ3-4DVD]. 2. See Petition for Writ of Certiorari. MCM Portfolio LLC v. Hewlett-Packard Co., No. 151330, 2016 WL 1729988 (Apr. 29, 2016), cert. denied, 2016 WL 1724103 (Oct. 11, 2016) (arguing cancellation of patent claims violated Seventh Amendment right to jury trial); Petition for a Writ of Certiorari, Cooper v. Lee, No. 15-955, 2016 WL 355184 (Jan. 21, 2016), cert. denied, 2016 WL 361681 (Oct. 11, 2016) (arguing violation of Separation of Powers). 3. Petition for a Writ of Certiorari, Cooper v. Lee, supra note 2. 4. Id. 5. Id. 6. Id. 03 BAYNARD.FINAL (DO NOT DELETE) 2017] 4/27/2018 11:13 AM PRIVATE OR PUBLIC RIGHT? 59 Comment will address three subjects. First, this Comment will explore how section 311 of the Patent Act7 established the process of inter-partes proceedings and section 3218 established the post-grant review of patents. Second, this Comment will outline the case law challenging the constitutionality of section 311 and section 321.9 Third, this Comment will examine the competing perspectives of whether a patent is a public or private right. This Comment has important implications for whether section 311 and section 321 are constitutional exercises of congressional power. Finally, this Comment will attempt to foreshadow how the outcome of current case law will affect the patent bargain and adjudication scheme. I. INTER PARTES AND POST-GRANT PROCEEDINGS: NEW ADMINISTRATIVE INNOVATION IN PATENT LAW Examination remains the crucial element of the quid pro quo patent bargain.10 The federal government’s patent power stems from a specific constitutional provision, which authorizes Congress “[t]o promote the [p]rogress of [s]cience and useful [a]rts, by securing for limited [t]imes to authors and [i]nventors the exclusive [r]ight to their respective [w]ritings and [d]isco (...truncated)