The Modern Public Rights Doctrine

EDITORIAL NOTE: This article is the third installment of an 8-part series exploring the constitutionality of the PTAB under the public rights doctrine. To begin reading from the beginning please see: Patent Review in an Article I Tribunal is Unconstitutional.


Front terrace of the United States Supreme Court.

The modern public rights jurisprudence flows from Atlas Roofing in 1977 to Stern in 2011. Although the case law does not provide a straight line, there is a consistent pattern illustrating the clear constraints of administrative agency adjudication. These constraints include consent of the parties, due process and review by Article III courts. Without these elements, according to a continuous line of Supreme Court jurisprudence, administrative proceedings are illegitimate and unconstitutional. Stern is the governing precedence on the issue of the public rights doctrine, with the composition of the Court today substantially identical to that of the Stern Court.

Before getting to Stern, however, we must consider Altas Roofing, Raddataz, Northern Pipeline, and Granfinanciera.

Atlas Roofing (1977) and Raddatz (1980)

According to Atlas Roofing, only Article III courts can adjudicate core constitutional rights. Congress has the power to establish statutory public rights and enable an administrative tribunal to adjudicate or develop an original fact finding involving these rights. Nevertheless, matters adjudicated in administrative tribunals are reviewable by Article III courts.

The Atlas Roofing court sought to resolve a conflict between a Seventh Amendment right to a jury and congressional power to create laws to empower an agency to regulate agency authority. In those cases in which Congress establishes a statute for resolving a public right, it may allocate to an executive agency the authority to resolve disputes in the agency’s domain. The Court in Atlas Roofing involved the allocation of authority for administration of OSHA, a class of public health and safety regulations that require specialized expertise and may satisfy the class of cases within the public rights exception.

“The Seventh Amendment does not prevent Congress from assigning to an administrative agency the task of adjudicating violations of OSHA. When Congress creates new statutory “public rights,” it may assign their adjudication to an administrative agency with which a jury trial would be incompatible, without violating the Seventh Amendment’s injunction that jury trial is to be “preserved” in “suits at common law.” That Amendment was never intended to establish the jury as the exclusive mechanism for factfinding in civil cases, but took the existing legal order as it found it, and hence there is little or no basis for now interpreting it as providing an impenetrable barrier to administrative factfinding under otherwise valid federal regulatory statutes. The Amendment did not render Congress powerless – when it concluded that remedies available in courts of law were inadequate to cope with a problem within its power to regulate – so to create such new public rights and remedies by statute and commit their enforcement, if it chose, to a tribunal other than a court of law (such as an administrative agency) in which facts are not found by juries.” (430 U.S. 442, 443 (1977))

While the Court preserved the public rights doctrine to enable allocation of a narrow class of OSHA matters to an administrative agency, outside the purview of Article III court juries, the Court also required a review of agency decisions in Article III courts. Thus, while an executive agency may be assigned the role of fact finder for a specialized class of public right, outside of the domain of a fact finding jury, an Article III court must be able to review the agency determinations. Once again, it is implied that the constraints of due process are applied to the agency fact-finding administration.

This due process constraint is brought to the surface in Raddatz (447 U.S. 667 (1980)). In creating a court of Magistrates to perform fact finding, Article III judges may review a tribunal’s determinations de novo, though not a hearing de novo. The review of a tribunal’s determinations de novo satisfies the due process requirement. In this way, “[t]he statute strikes the proper balance between the demands of due process under the Fifth Amendment and the constraints of Art. III.” (447 U.S. 668) The Court was keenly aware of the need to preserve due process constraints in a fact finding tribunal, namely, by enabling the review of the tribunal’s determinations by Article III courts.

Both the Atlas Roofing and Raddatz Courts recognized that in order to respect the separation of powers and to maintain the independence of the judiciary, it is necessary to enable Article III courts to review the fact finding of Article I tribunals. Only after a federal district court review is an administrative tribunal determination held to be final.

Northern Pipeline (1982) and Granfinanciera (1989)

In Northern Pipeline, the Court addressed the constitutionality of the Bankruptcy Act of 1978 when Congress created courts inferior to Article III courts to resolve bankruptcy disputes. The Court ruled that, as legislative courts, bankruptcy courts are not substitutes for Article III courts, thereby reiterating the sanctity and independence of the federal judiciary. “It thus threatens to supplant completely our system of adjudication in independent Art. III tribunals and replace it with a system of ‘specialized’ legislative courts.” (458 U.S. 73 (1982))   Following the earlier public rights exception cases, the Court held that private rights are adjudicated in Article III courts. “It is, of course, true that, while the power to adjudicate ‘private rights’ must be vested in an Art. III court, ‘this Court has accepted factfinding by an administrative agency, . . . as an adjunct to the Art. III court, analogizing the agency to a jury or special master and permitting it in admiralty cases to perform the function of the special master.’” (458 U.S. 77, citing Crowell 285 U.S. 51)   The Court made two main points. First, litigants must supply consent to review a dispute in a non-Article III court. Second, Congress may create and define statutory rights and adjudicate this class of rights in administrative tribunals within constraints.   A plurality of the Northern Pipeline Court observed:

“These two principles assist us in evaluating the ‘adjunct’ scheme presented in these cases. Appellants assume that Congress’ power to create “adjuncts” to consider all cases related to those arising under Title 11 is as great as it was in the circumstances of Crowell. But while Crowell certainly endorsed the proposition that Congress possesses broad discretion to assign factfinding functions to an adjunct created to aid in the adjudication of congressionally created statutory rights, Crowell does not support the further proposition necessary to appellants’ argument — that Congress possesses the same degree of discretion in assigning traditionally judicial power to adjuncts engaged in the adjudication of rights not created by Congress. Indeed, the validity of this proposition was expressly denied in Crowell when the Court rejected ’the untenable assumption that the constitutional courts may be deprived in all cases of the determination of facts upon evidence, even though a constitutional right may be involved, ‘the essential independence of the exercise of the judicial power of the United States in the enforcement of constitutional rights requires that the Federal court should determine . . . an issue [of agency jurisdiction] upon its own record and the facts elicited before it.’” (458 U.S. 81-81, quoting Crowell 285 U.S. 64)

The distinction between rights created by the Constitution and rights created by Congress is recognized as a major feature of the analysis.

“Although Crowell and Raddatz do not explicitly distinguish between rights created by Congress and other rights, such a distinction underlies in part Crowell’s and Raddatz’ recognition of a critical difference between rights created by federal statute and rights recognized by the Constitution. Moreover, such a distinction seems to us to be necessary in light of the delicate accommodations required by the principle of separation of powers reflected in Art. III. The constitutional system of checks and balances is designed to guard against “encroachment or aggrandizement” by Congress at the expense of the other branches of government. Buckley v. Valeo, 424 U.S. 122. But when Congress creates a statutory right, it clearly has the discretion, in defining that right, to create presumptions, or assign burdens of proof, or prescribe remedies; it may also provide that persons seeking to vindicate that right must do so before particularized tribunals created to perform the specialized adjudicative tasks related to that right. Such provisions do, in a sense, affect the exercise of judicial power, but they are also incidental to Congress’ power to define the right that it has created. No comparable justification exists, however, when the right being adjudicated is not of congressional creation. In such a situation, substantial inroads into functions that have traditionally been performed by the Judiciary cannot be characterized merely as incidental extensions of Congress’ power to define rights that it has created. Rather, such inroads suggest unwarranted encroachments upon the judicial power of the United States, which our Constitution reserves for Art. III courts.” (458 U.S. 83-84)

As inferior tribunals established by Congress to adjudicate public rights, the decisions of these tribunals must be reviewed by Article III courts. This approach underlines the Court’s view that the Constitution preserved the power of an independent judiciary. On this issue, a plurality of the Northern Pipeline Court suggested that “appellate review is sufficient to satisfy either the command or purpose of Art. III.” (Northern Pipeline, footnote 28).

Observing the de novo review requirement in Crowell, the Northern Pipeline Court commented that “[the] Court in Crowell found that the requirement of de novo review as to certain facts was not ‘simply the question of due process in relation to notice and hearing,’ but was ‘rather a question of the appropriate maintenance of the Federal judicial power.’ 285 U.S. 56. The dissent agreed that some factual findings cannot be made by adjuncts, on the ground that, ‘under certain circumstances, the constitutional requirement of due process is a requirement of [Art. III] judicial process.’ Id. at 285 U. S. 87 (Brandeis, J., dissenting)” (Northern Pipeline, footnote 33).

Further, the mere allocation of a statutory right designed by Congress for review by specialized administrative courts is insufficient to overcome the objection that removal of adjudication of rights from the judiciary is legitimate. The sanctity and independence of the federal judiciary is paramount in order to maintain constitutional checks and balances.

Addressing the conflict between a bankruptcy court tribunal decision and the Seventh Amendment right to a jury trial, the Court in Granfinanciera ruled that though bankruptcy court adjudication of private rights can be considered to have public rights aspects in the allocation of fact-finding to an inferior tribunal, the Seventh Amendment jury right is not usurped by bankruptcy court adjudication. Citing Atlas Roofing, the Granfinanciera Court observed that “[a]lthough the Seventh Amendment does not prohibit Congress from assigning resolution of a statutory claim that is legal in nature to a non-Article III tribunal that does not use a jury as a factfinder so long as the claim asserts a ‘public right,’ Congress lacks the power to strip parties who are contesting matters of private right of their constitutional right to a jury trial.” (492 U.S. 34 (1989)) In fact in some cases, a private right is entwined with a public right that Congress may allocate to an Article I tribunal. Nevertheless, Congress “cannot eliminate a party’s Seventh Amendment right to a jury trial merely by relabeling the cause of action to which it attaches and placing exclusive jurisdiction in an administrative agency or a specialized court of equity.” (492 U.S. 61) This view fine tunes the Court’s ruling in Atlas Roofing in which the Court stated that, in cases in which Congress creates public rights and allocates the adjudication of these rights to an Article I tribunal, a jury trial may not be necessary. However, in cases in which private rights are implicated in “suits at common law,” “[o]ur prior cases support administrative factfinding in only those situations involving ‘public rights,’ e.g., where the Government is involved in its sovereign capacity under an otherwise valid statute creating enforceable public rights. Wholly private tort, contract, and property cases, as well as a vast range of other cases, are not at all implicated.” (Granfinanciera, 492 U.S. 51, citing Atlas Roofing at 430 U.S. 458) and concluding, following Crowell, that “Congress may devise novel causes of action involving public rights free from the strictures of the Seventh Amendment if it assigns their adjudication to tribunals without statutory authority to employ juries as factfinders. But it lacks the power to strip parties contesting matters of private right of their constitutional right to a trial by jury.” (492 U.S. 51-52)

Thus, reiterating a line of reasoning from Murray’s Lessee through Crowell and Northern Pipeline, the Granfinanciera Court states that congressional power is limited in assigning private claims outside of a jury’s purview just as it is limited in allocating “adjudicative authority in non-Article III tribunals.” (492 U.S. 52) However, in distinguishing between the limits of Article III and non-Article III courts, and the role and limits of the public rights exception to each of these, the Court, quoting Atlas Roofing, stated:

“In Atlas Roofing, supra, at 430 U. S. 458, we noted that Congress may effectively supplant a common law cause of action carrying with it a right to a jury trial with a statutory cause of action shorn of a jury trial right if that statutory cause of action inheres in, or lies against, the Federal Government in its sovereign capacity. Our case law makes plain, however, that the class of “public rights” whose adjudication Congress may assign to administrative agencies or courts of equity sitting without juries is more expansive than Atlas Roofing‘s discussion suggests. Indeed, our decisions point to the conclusion that, if a statutory cause of action is legal in nature, the question whether the Seventh Amendment permits Congress to assign its adjudication to a tribunal that does not employ juries as factfinders requires the same answer as the question whether Article III allows Congress to assign adjudication of that cause of action to a non-Article III tribunal: For if a statutory cause of action, such as respondent’s right to recover a fraudulent conveyance under 11 U.S.C. § 548(a)(2), is not a ‘public right’ for Article III purposes, then Congress may not assign its adjudication to a specialized non-Article III court lacking ‘the essential attributes of the judicial power.’ Crowell v. Benson, supra, at 285 U. S. 51. And if the action must be tried under the auspices of an Article III court, then the Seventh Amendment affords the parties a right to a jury trial whenever the cause of action is legal in nature. Conversely, if Congress may assign the adjudication of a statutory cause of action to a non-Article III tribunal, then the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder. See, e.g., Atlas Roofing, supra, at 458 U. S. 453-455, 458 U. S. 460” (Granfinanciera, 492 U.S. 53-54)

The public right exception is carefully limited to rights allocated by Congress that derive from government sovereignty or a public purpose, not from private rights designed to be adjudicated in common law in Article III courts. This is so because “’matters from their nature subject to a “a suit at common law or in equity or admiralty”’ lie at the ‘protected core’ of Article III judicial power.” (Granfinanciera quoting Crowell and Atlas Roofing, 492 U.S. 56).

Although it may seem expedient and cost-effective to maintain a specialized tribunal, the Court observed that these issues cannot “overcome the clear command of the Seventh Amendment,” (492 U.S. 63) citing Bowsher, “[T]he fact that a given law or procedure is efficient, convenient, and useful in facilitating functions of government, standing alone, will not save it if it is contrary to the Constitution,” quoting INS v. Chadha (462 U.S. 919) and further showing that “the desire for speedy justice” is overcome by a “right to a jury trial,” citing Pernell v. Southall Realty (416 U.S. 383-384).

CLICK HERE to CONTINUE READING… Part 4 will conclude discussion of the modern public rights discussion, specifically discussing Stern (2011) and the sanctity of Article III courts prohibiting private rights from being adjudicated by a legislative tribunal.

Other series articles:


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Join the Discussion

38 comments so far.

  • [Avatar for Anon]
    October 15, 2017 11:30 am

    Mr. Heller,

    Shall I then take your comment at post 37 as confirmation of my views?

    I am curious, as other views that I have advanced (dealing with some of the very basics of property law, vis a vis sticks in the bundle of property rights) have likewise NOT been confirmed by you despite equally patient and detailed explications from me.

    Those other views may yet hold sway over exactly what happens at the initiation decision point (and they continue to hold sway EVEN IF the “switch” occurs to the discussion from what is at stake in IPRs moving solely from a discussion of patent rights to a discussion patent rights accompanied by this NEW, PUBLIC and substantiated by Congress as being needed (because of the prior remedies at law being inadequate) Right of Challenge.

    The existence of even a
    right of challenge
    – distinctly different from scire facias –
    in addition to

    the patent right

    still may not be made by Congress if the path of that new legal remedy includes within it, violations of a property right (takings) that occur at the distinct legal point of the initiation decision point.

  • [Avatar for Edward Heller]
    Edward Heller
    October 14, 2017 03:26 pm

    Unfortunately anon, I think you and I have discovered in this conversation where the focus of the defense of IPR is going to center. I personally agree with you that Congress should not be allowed to declare that the remedy provided by law is inadequate.

  • [Avatar for Anon]
    October 14, 2017 08:37 am


    I have answered your questions above.

    Note that this is merely reflecting that similarity with scire facias is not enough to have the two equal. There need not be any type of “all or nothing” that your second and third lines seem to imply.

    Thus, the right of challenge is a new right – different enough from scire facias. Remember – Congress knows what scire facias is and could have – but did not – invoke that explicit remedy. Please to not get caught up in an “Ends only” type of thinking.

    Also – per Ned’s comment, the right of challenge is justified because Congress explicitly stated that the remedies at law before this new right were not adequate.

    The focus with my efforts here is to show that Ned’s direct comment at 2 – if taken with the understanding that I have provided – FULLY supports the IPR regime as enacted by Congress in the AIA.

    If you believe that what Ned wrote at 2 is necessary and sufficient, then the path of attack that Ned has also engaged in (with his focus solely on “right” being the patent right as opposed to any new right of challenge) will – and must – fail.

  • [Avatar for Mac]
    October 13, 2017 02:46 pm


    If Congress established IPR as separate public procedural right appended to the patent right (as I understand you to propose), what remedy did Congress intend the public to obtain?

    If it is patent cancellation, doesn’t this make IPRs inextricable from the private patent right, and therefore indistinguishable from scire facias?

    If not, aren’t IPRs just toothless advisory admimistrative decisions?

    Perhaps I misunderstood you and Mr. Heller, but I understand this as the crux of your debate.



  • [Avatar for Anon]
    October 13, 2017 01:28 pm

    Thanks IR.

    I will still chase Mr. Heller because of what he said way back at comment 2.

    If he believes in what he said, then he should answer me in an inte11ectually honest manner.

    Where I see this going is that the subject of what is at stake in the IPR regime will “all of a sudden” be realized to be not the patent right whatsoever.

    I just do not see how the Supreme Court can walk back all of their jurisprudence concerning the fact that patent rights are property.

    Once you establish that patents are property, (and here, critically, maintain that the focus of the IPR regime is solely on the right that is deemed property), the IPR regime MUST fall.


    Switch the focus.

    Instead of being “about” patent rights, consider instead that Congress created a new right in the AIA.

    That new right is NOT the patent right -as much as everyone (and I am not excluding me) believes to be the case.

    Instead, that new right is a public right – a right of challenge.

    This right does trail the existing patent right, but does NOT supplant it.

    This right does have the capability of harming that existing patent right, but so what? Many items may harm the existing patent right, but are no less “viable” for doing so.

    Look at each of the points that I have presented. I have tracked Ned’s original statement at post 2, and with this new right, provide a reasoned discourse as to why IPRs may survive the Oil States challenge. With Ned’s own statement as a starting point, no less.

    Do I do this because I am a fan of IPRs? Because I want them to survive?

    Please realize that I am NO such supporter.

    Which should be even more reason to take seriously the path that I have laid out!

    If the Court spins this “issue” as not about patent rights per se, but instead the issue being about some NEW public right because Congress has provided justification that the prior remedies at law were inadequate, then Ned’s post at 2 fully supports the IPR regime.

    (let me end with this tease: EVEN IF what I post here comes to pass – Ned’s unwillingness to engage aside – there remain solid argument’s as to why IPRs must still fail Constitutional muster).

  • [Avatar for Invention Rights]
    Invention Rights
    October 13, 2017 12:50 pm

    Edward and Anon – you are both right. The infringer lobby including the PTO and DoJ rely on the hypothetical strawman – can Congress create a revocable monopoly right under the Commerce clause? Of course they can.

    Can they by decree alter the nature of the historic patent property right under the Patent clause into this new public right? No. This is not the legislative process. They should repeal the Patent Act, and create this new revocable monopoly right and call it something other than a patent.

    The briefs of the government and amici later this month will focus entirely on the hypothetical power of Congress, ignoring what they actually did.

  • [Avatar for Anon]
    October 12, 2017 08:10 pm

    Mr. Heller,

    Your question is yet another diversion.

    The answer to you question matters not at all to the point of which you refuse to address.

    Is that a dozen non-responses from you? I have lost count.

    Will you ever find your way and address the point?

  • [Avatar for Edward Heller]
    Edward Heller
    October 12, 2017 07:26 pm

    anon, do you have any proof other than your assumption that people who petitioned for scire facias in England had to have standing as we know it in the US today?

  • [Avatar for Anon]
    October 12, 2017 07:22 pm

    and yet another diversion Mr. Heller.

    We have already established that IPRs are not score facias.

    We have already established that “similar” does not cut it.

    We have already established that Congress deliberately created IPRs to not require standing.

    Why would you evade the point put to you by yet again with a diversion like this?

  • [Avatar for Ned Heller]
    Ned Heller
    October 12, 2017 06:28 pm

    anon, just to be clear, no one in England other than the King had a right to file a scire facias. One had to petition the Atty. General who had the discretion to lend the King’s name to the action.

    IPR are similar. The petitioner does not have a to an IPR, just a right to petition for one. While the trial is inter partes, the government can take over if the petitioner settles showing that government is a real party in interest, just like with scire facias.

    The two proceeds could not be more alike in the alignment of the parties, the issues to be tried, and the remedies for adverse judgment for the patent owner.

  • [Avatar for Anon]
    October 12, 2017 05:47 pm

    Mr. Heller,

    You perhaps overlooked the fact that a legal right exists OUTSIDE of the court system.

    And you ask (again) a question to which the answer was clearly given. Twice.

    The right is the right to challenge. That is the new right. That is the public right. That is the right that is different than scire facias (albeit similar).

    We’ve been over this now several times.

    Instead of these diversions, will you please go back and hew to the point put to you?

  • [Avatar for Edward Heller]
    Edward Heller
    October 12, 2017 05:40 pm

    anon, what new right is that, anon? People with standing have the right to go to court to defend themselves. But no one has a right to an IPR. Just a right to petition.

  • [Avatar for Anon]
    October 12, 2017 05:24 pm

    Your last paragraph ignores what I have posted Mr. Heller in that what Congress did was create a new right in addition to the patent right. Your comment is geared only to the patent right. The new right is a right of challenge, and has been made open to the entire public (hence no standing requirement).

    Your last paragraph only evidences that you need to read what I have written a bit more closely. Please do so.

  • [Avatar for Edward Heller]
    Edward Heller
    October 12, 2017 03:21 pm

    anon, regulation of drugs is an example of a new public right where traditional legal remedies were not deemed enough. Until registered, a drug cannot be sold and violation is enforced by the criminal laws. This creates a quasi-period of exclusivity for the first to register a new drug that is enforced by the government.

    Environmental regulation is another.

    Worker health and safety is another.

    Ditto trademark registration and the new trade secrets act.

    But patents are provided for in the constitution and existed prior to 1789. The right authorized is an exclusive right, which is a right enforceable in a court of law. Congress might add new remedies to enforce such rights, but patents can hardly be described as public rights in any sense of the word.

  • [Avatar for Anon]
    October 12, 2017 02:33 pm

    All well and good Mr, Heller – can you map this directly to your comment at post 2?
    If so, we may finally be getting somewhere.

  • [Avatar for Edward Heller]
    Edward Heller
    October 12, 2017 01:42 pm

    Public rights: the right of the government between itself and those subject to its traditional jurisdiction: e.g., employees and agents, and new rights it creates where the government is acting pursuant to one of its delegated power. But the right is between itself and those subject to its regulation.

    Private Rights: rights created by congress creating liability between one citizen and another. Workers Comp on the international waters in Crowell is an example. New private rights may be assigned to an administrative tribunal for adjudication.

    Legal Rights: rights, old or new, enforceable in court by damages for infringement. Infringement creates damages, which are the property of their owner. They can be sold.

    Patents are legal rights. Infringement damages are vested choses in action that can be sold independently of the patent. Only the owner of the chose in action for past damages may bring suit, although he may have to join the patent owner if invalidity is raised as a defense.

    An IPR is a remedy. It is not a statutory private right in any sense because it does not create liability. Moreover, the only right it creates is the right to file a petition. The remedy of an IPR is patent cancellation.

    The problem is that the validity of legal rights is and has always been the exclusive province of the courts save for a period of time in England where the Privy Council adjudged the validity of monopoly patents.

  • [Avatar for Anon]
    October 12, 2017 12:07 pm

    a legal right is a right gives one a right to action in court for damages.

    Not limited to be something in court.

    I don’t know what you are talking about

    Very convenient of you – also simply not believable given that I have provided the details in painstakingly careful format.

    What new right has congress created in the AIA.

    The right to challenge. Note this is a right that does NOT require standing (and that is explicitly contemplated and enacted in the AIA.

  • [Avatar for Edward Heller]
    Edward Heller
    October 12, 2017 10:58 am

    anon, I don’t know what you are talking about. Just to be clear, a legal right is a right gives one a right to action in court for damages. That is what a patent is and remains. What new right has congress created in the AIA.

    Remedies are a different topic.

  • [Avatar for Anon]
    October 12, 2017 10:32 am

    Mr. Heller,

    I find your post at 19 interesting, given as you still evade the point presented to you, and yet want to refer yet again to a case that supports the point I presented and that you seek to evade.

    Your post at 18 may in fact be true, but alas, is a non sequitur to the rather specific point that I am (still) trying to have you focus upon. We can address the constitutionality issue separate from the point that I am attempting to have you focus on.

    I must insist though on returning (yet again) to the point upon which I seek for you to address.

    I am persistent on this point due in part to the fact that this may very well differentiate the main focus (so far) on the patent right and look to a different right that Congress has decided to make.

    A different right that is new.
    A different right that is in addition to (yes, something “in addition” may well impact an existing right) the patent right.
    A different right that is a public right.
    A different right that – per Congress – is justified because of the current means (remedies) have been deemed inadequate in and of themselves, and Congress wishes to add this new right (new remedy) in order to provide an additional Means (remedy) to arrive at an already sanctioned Ends.

    To refresh your memory, way above at 2 you wrote (emphasis added):

    Inadequate remedy at law[1] allows Congress to create new public rights[2] unknown to the common law[3] to address the issue, and to assign the adjudication of such new public rights to an administrative tribunal.

    [1] – let’s for argument sake take ‘remedy at law’ to be the path (means) and not a desired result (ends). If it helps at all, you may consider that the “at law” is one path in a larger general sense, and “in equity” is a different path in a larger sense – with the distinguishing provided ONLY for illustrative purposes and not meant to be a consideration of actual paths for this particular aspect of law.

    I know that you want to look at this differently, but please, humor me.

    As to “inadequate” you have not replied to, and I trust that you understand both that Congress has been explicit in their identifying the current means as inadequate, and thus justifying the creation of the new means.

    [2] Here (again) I wish to emphasize that what Congress has created (arguably) in the AIA is a new, different, and additional right to the patent right. THIS is a very different view of the matter than most pundits have taken. If in fact there has been a creation of a new and different right, then counsel’s focus on the patent right may be considered an errant effort.

    [3] As we both have in the past focused solely on the patent right, perhaps the courts will look at this differently and find that the IPR regime, while involving patent rights, is actually all about a new and different right: the right, newly created and different than anything previously known, of the “right of challenge.”

    I do note your attempt to equate this with a similar prior known remedy (scire facias), but I trust that you have relinquished the fact that similarity is simply not enough and that – in fact – the IPR right is different than scire facias.

    Given the views that I have proffered to the individual portions of the phrase that you provided, your phrase makes the case FOR the government.

    I am well aware of the consequence of this case being made with your statement.

    It is – in fact – that awareness that drives me to question your phrase at post 2 in the first place.

    As I have indicated, there simply must be something more. Your phrase – as I have supplemented it with observations that you have continuously avoided – not only makes the case for the government, but provides a far too easy roadmap for eviscerating all non-public rights with creations (new and in addition to), justified for the mere Congressional statement that the existing remedy at law is inadequate (a low hurdle), and thus “proper.”

    Do you recognize that your own statement does this?

  • [Avatar for Edward Heller]
    Edward Heller
    October 12, 2017 09:27 am

    Further, anon, consider that the ability to amend did not save reexaminations in McCormick Harvesting.

  • [Avatar for Edward Heller]
    Edward Heller
    October 12, 2017 09:24 am

    anon, the addition of a constitutional bell to an unconstitutional whistle does not save the whistle.

  • [Avatar for Anon]
    October 11, 2017 11:40 pm


    You have not addressed the point I presented as to that word.


    That is not what they did. They augmented and added to instead of replace. And they did so because they stated that the item to which they augmented was justified as being inadequate.

    These are points that you still do not address.

    Now, for the seventh time, you offer a distraction.

    Will the eighth reply be the reply that you are finally on point?

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 10:30 pm

    anon, Congress can create a new remedy unknown at common law (before 1789) to address a problem for which traditional remedies are inadequate. Congress cannot however create a so-called new remedy (public) right to replace an existing remedy that has a right to trial by jury. To do so would be to strip away constitutional rights.

    This kind of thing, providing “new” remedies with no right to trial by jury, to collect taxes, duties and fines, is what King George did prior to 1776 and was a primary reason for our revolt.

  • [Avatar for Anon]
    October 11, 2017 10:11 pm

    Mr. Heller,

    It should be clear to you by now just what I mean.

    Why do you then descend into this dust-kicking of accusing me of nit picking about PTO procedures?

    Please return and (finally) address the point put to you, or with a minimum of courtesy acknowledge that it is a point that you are unwilling to address.

    You have gone off on tangents of “right to trial by jury” at 4, DJ actions at 6, good – but irrelevant questions at 8, misdirection of remedy as an Ends rather than as a means at 10, McCormick Harvesting and Examiners at 12 (which actually bolsters my response to you), and now at 14, you descend into accusations that are not only irrelevant, but unfounded.

    You have done just about everything except for address the point put to you.

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 07:27 pm

    If by means we mean in a court of law or in the PTO, then we agree. If you are going to nit pick about PTO procedures, then we definitely disagree. Why discuss the issue of how many angels can dance on the tip of a pin when there is no pin.

    The PTO, regardless of the former procedures or the participation of 3rd parties, cannot revoke a patent. That is the exclusive power of the federal courts. Furthermore patent owners have a right to a trial by jury before their patents may be revoked for invalidity.

  • [Avatar for Anon]
    October 11, 2017 07:20 pm

    We will have to agree to disagree, then Mr. Heller, as the way itself is critical in law, and if you disagree with that, then we will find no common ground here. You may as well have a benevolent dictatorship as you would have a democracy.

    I will add that your inclusion here of McCormick Harvesting is merely yet another distraction from the point that I had (attempted) to get you to address.

    If anything, the case supports my view – in that the manner of having an examiner do something was not proper, but that perhaps a different manner of obtaining the same end result would be proper.

    I hold forth that you are just not using the term “remedy” properly. What is all important is the means to the ends (once the ends are agreed to be proper).

    As I indicated, your version of “remedy” just does not make sense when it comes to the notion of adequacy.

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 06:49 pm

    anon, the WAY is not important. The SC has already ruled in McCormick Harvesting that an


    cannot revoke patent he thinks invalid after reexamination of the claims appearing an issued patent. Why? Because, it held, only a court of law could revoke a patent for any reason.

    What we learn from this is that the remedy is all important and the procedures or parties largely irrelevant.

  • [Avatar for Anon]
    October 11, 2017 06:26 pm

    Mr. Heller,

    I think I see where our disconnect is.

    It has to do with the word “remedy.” Thank you for the creative posting structure – but the fact of the matter is that means to an end matter, and it is the means that are judged as to adequacy, rather than the ends.

    You appear to think that disparate paths to a same final result must be the same “remedy.”

    That is just not so.

    Remedy as used in the legal context is path-specific. The desired result of a remedy being similar (alone) is just not at point.

    The “remedy” (as you want to use that term) would have stopped Congress dead in its tracks as to ANY effort to create “alternatives.”

    No one – and I repeat NO ONE has ever put that meaning to what was happening with the AIA, and trust me, I was active in trying to stop the damage of the AIA during its gestation, and would have picked up on this version that you want to apply.

    The meaning that you want to use (only end result based) also violates another legal maxim as I indicated above:

    The ends do not justify the means.

    In other words, the different means that one may use very much matter in the legal world, and this maxim dictates that it is the different means that is inured by the term “remedy.”

    And just as plainly, IPR and scire facias are NOT the same remedy. Each of these two different remedies may seek the same desired result, but they would go about their obtaining their effects in different ways and THAT is the focus that needs to be maintained.

    Sure, there may be cases where NO different remedy would be appropriate (as in the case where the desired end result itself is simply not proper). But do not confuse that situation with the notion that inadequacy is tied to the end result and NOT to the method of obtaining that end result.

    If more than one manner exists to obtain a desired result, then the different manners will have different degrees of adequacy. It just does not make sense to evaluate “adequacy” as you are attempting to do with just a mere “end result” focus.

    If that were so, then the answer by Congress would NOT be trying to arrive at the same end result with a NEW path – they instead would be announcing a completely different end result and eliminating the old path rather than supplementing that old path.

    Congress – to the current manner being justified as “inadequate,” then by your own post they are free to create a new right and do with that new right what they will.

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 06:04 pm

    anon, the effect of a IPR is to deny a trial in a court of law and to a jury where one’s patent is being revoked,

    the remedy,

    for invalidity. IPR does not provide a


    unknown prior to 1791. The


    of revocation, is identical.

    IPR and scire facias actions provide the same


    Now, anon, is there anything in the above that is not clear as to why IPR and scire facias actions are not the same when considering whether scire facias actions provided an adequate


  • [Avatar for Anon]
    October 11, 2017 05:56 pm

    Mr. Heller,

    Your questions here are indeed very good questions.

    That being said, those questions merely serve as a distraction from the point that I am trying to impress upon you.

    May I ask (yet again) that you return to your comment above and to my rejoinder to your comment.

    The point to be addressed is just not tied to where you want to go with it. The point is that as you have portrayed the matter, Congress has acted well within their rights to create a NEW (and public) right alongside the patent right (that yes indeed does act against that right).

    But there is no doubt that this “right” is both “new” (it is NOT scire facias, nor is it DJ) AND it “justified” (at least in Congress’ eyes) in that the former remedies at law were “inadequate.”

    By YOUR statement at 2, such is enough.

    My point is that such cannot be enough, as the ability to create something “new” and add (slight) “justifications” around such a “weasel” word as “adequate” eviscerates the difference between public and private rights.

    I “get” that you would rather steer the conversation in other directions (you are familiar with the arguments that you have already made), so I want to ask you kindly to stay on point (because THAT point makes your researched arguments moot). Please address the point I presented (and for now, ONLY that point).

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 04:33 pm

    anon, what is the complaint? That the PTO issues to many bad patents? So what? The PTO has always issued bad patents. What is new on this front?

    What is the secondary complaint? That litigation is too expensive to clear an invalid patent? Well why does’t congress do something about litigation expense? Why do the have to strip patent owners of constitutional rights?

    The Feds also said the PTAB was expert in patent law. Now that is an outrageous attack on the judiciary, is it not?

    I have seen the arguments advanced over the years change. But long ago it was clear that infringers wanted to get away from juries. The stats have shown that once validity was given to juries, validity rates soared and so the value of patents. Thus when juries decide validity, 75% of patents survive. When the PTAB decides, only 10% or less survive.

    The game afoot is clear. It is not about what they say it is about. It is about getting validity away from juries.

  • [Avatar for Anon]
    October 11, 2017 04:16 pm

    Me. Heller,

    I understand your answer.

    I wonder though if you see why your answer (vis a vis what Congress chose to do differently with DJ actions) is NOT an answer to our exchange here?

    DJ’s are quite frankly a non sequitur.

    The fact that Congress did something else (DJ’s) has nothing to do with our discussion on what Congress did here with their “justified” and “new” remedy.

    Please understand why I am dismissing the comment on DJ’s and wanting you to once again read the exchange between us. Your original post remains troubling for the rejoinders I have provided. If it helps any, just think of this as Congress recognizing that they previously created DJ actions but even such were deemed “not adequate” for the reasons given in the AIA and that yet another NEW right, a public right, was thus created, and it was this new right that was handed over (at least in Phase I) to the executive branch administrative agency.

    Yes, this “new right” does in fact jeapordize a personal property right. But to the Congress (and fully in line with your posts here), this new right is a different right than the actual patent right, is “justified” (per Congress), and thus, is fully legitimate.

    As I said, there has to be more to safeguard against the abuse that so easily may arise under a “mere justified” line of thought, since “new” is not much help when the item created by Congress will (of course) be new.

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 03:46 pm

    anon, before there was a DJ action, accused infringers said they needed the right to invalidate a patent and not wait until they were sued for infringement. Congress provided that remedy — which in many ways, is a private scire facias after Blonder Tongue. But by doing so, Congress did not strip patent owners of constitutional rights. They still had a right to adjudicate validity in a court of law and try disputed facts to a jury.

    What distinguishes IPRs from DJ actions is the removal of both the right to try the validity in a court of law and the right to try disputed facts to a jury. That is the objective of the legislation – to strip patent owners of essential constitutional rights. It is the constitutional rights themselves which are identified to be the problem for which the legislation is a solution.

  • [Avatar for Anon]
    October 11, 2017 03:21 pm

    Thank you Mr. Heller.

    I am not sure that your answer is an answer in full.

    I hesitate because of the word “adequate” in the phrase “if there exists no adequate legal remedy.”

    Read again my questions to you and think of them in this manner: Those pushing IPRs will claim that “adequate” was “clearly” not present in the legal remedies available, and thus this NEW public right created by Congress (accompanying the previous personal property right of a granted patent) is justified.

    As I put it in my questions to you – the screen of “justified” is clearly open to abuse and the word “adequate” (or the notion of lack thereof) is simply no match for what one might consider “a complete and adequate remedy at law [existing or previously] existed” IF Congress is bent on creating a new remedy. Clearly, with your comments today, one can make such an argument (colorably), and further, with my comments, one can make such an argument on most any existing non-public right.

    There must be more than just this to control against the evident possibilities of abuse.

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 02:55 pm

    Anon, as with equitable remedies, Congress can only create new remedies unknown to the common law if there exists no adequate legal remedy. Scott v. Freely. Otherwise Congress could simply remove the right to a trial by jury by creating a new administrative remedy when a complete and adequate remedy at law existed.

    The same situation obtained in England prior to 1791. In order to obtain an equitable remedy, there had to be no adequate legal remedy — otherwise the right to a trial by jury would be denied.

  • [Avatar for Anon]
    October 11, 2017 01:53 pm

    to justify the creation of a new remedy such as an IPR

    Two questions:

    1) Mr. Heller, what – to you – would be necessary to establish “justification?”

    I ask because I see the path of “well, we have justification for creating a new path for patent challenge” being an rather EASY work-around to all of the arguments that have seen print up to now (including your own).

    That easy justification is that Congress merely wanted to provide an additional path “in the name of patent quality***.”

    Whether or not IPRs are “nearly identical” to scire facias actions (either in form or substance) simply does not matter because IPRs are expressly NOT scire facias actions. Congress knows what scire facias actions are (as the US patent system at one time had those express actions. Congress, in the AIA, purposefully did something different and did not simply re-enable that which went before.

    2) under what legal authority is this “justification rationale” coming from?

    What I also see in your first paragraph here is a creation of something in addition to patent rights as a type of answer.

    Let me explicate: Yes, Congress has created a patent and yes, patents are items of personal property and thus – in and of themselves – NOT public rights.

    However, what Congress did in the AIA was create – in addition to the NON-public right of the patent, a NEW public right that attaches to that patent (in a sense). It is this separate and new thing that is a public right. It is this separate and new thing “unknown to the common law to address the issue, and to assign the adjudication of such new public rights to an administrative tribunal.

    The reason for the question – and the obvious concern – is that ANY such “new” public right can be created to match ANY item that is not a public right in and of itself, and thereby completely eviscerate the entire concept of private/public rights. Each and any (read that as every) existing non-public right can have a “new” public right created that was – in fact – unknown to the common law to address the issue, and “justification” is no obstacle and that is far too simple to fabricate.

    You have spoken out against things that “can be abused, will be abused,” and the path that you indicate here appears to swallow ALL of the non-public rights world.

  • [Avatar for Edward Heller]
    Edward Heller
    October 11, 2017 12:09 pm

    Inadequate remedy at law allows Congress to create new public rights unknown to the common law to address the issue, and to assign the adjudication of such new public rights to an administrative tribunal.

    What MCM Portfolio LLC did not do is determine whether there existed an adequate remedy know to common law to determine patent validity to justify the creation of a new remedy such as an IPR. It simply assumed that a DJ action, for example, that invokes the right to adjudicate validity in a common law court and to a jury to be “inadequate” and that an IPR was some thing “new,” unknown to the common law, when in point of fact, IPRs are nearly identical to scire facias actions both in form and substance, and where the latter had a right to a jury trial.

  • [Avatar for Jim Ruttler]
    Jim Ruttler
    October 10, 2017 12:54 pm

    Enjoying this series of articles very much.

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