Jury Trial/Article III Challenges to PTAB Expectedly Fail at High Court

Yesterday, the Supreme Court of the United States denied certiorari in two cases challenging the constitutionality of AIA trial proceedings. MCM Portfolio LLC v. Hewlett-Packard Co. et al., and Cooper et al. v Lee et al.  These cases largely presented the same constitutional challenge as that lodged against the USPTO’s patent reexamination system in the 1980s, in Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985).  Since that time, patent validity has been found to fall within the “public rights exception,” permitting adjudication before non-Article III tribunals.

These more recent cases hoped to distinguish reexamination from AIA trials on the ground that reexamination was not adjudicative, but examinational.  Of course, after Cuozzo, it has been clear that this line of reasoning was certain to fail.

In terms of those hoping to unravel AIA trial proceedings, a writ of certiorari remains pending in Ethicon Endo-Surgery Inc. v. Covidien LP.  This challenge focuses on the ability of the USPTO Director to delegate her authority to institute AIA trial proceedings to the Board, the same entity providing the ultimate decision on outcome. Certiorari in this case seems equally unlikely.

Now that opponents are running out of options to unhinge the PTAB, attention may shift to legislative efforts and/or rule based modifications coming out of the PTAB.  

For a discussion of expected rule changes and efforts in this regard, don’t miss the November 15th program, IAM Patent Law & Policy 2016.  Speakers this year include former USPTO Director David Kappos, current USPTO Director Michelle Lee, PTAB Chief Judge David Ruschke, former CAFC Chief Judge Paul Michel, and many more.