is an appellate advocate, best known as one of the nation’s most experienced Supreme Court practitioners having argued 38 cases. He has been counsel on more successful petitions for certiorari over the past decade than any other lawyer in private practice. Tom is also the co-founder and publisher of SCOTUSblog. Tom’s recognitions include being named by the National Law Journal as one of the nation’s 40 most influential lawyers of the decade and (in both 2006 and 2013) one of the nation’s 100 most influential attorneys. Tom is also the co-founder and publisher of SCOTUSblog – a web-site devoted to comprehensive coverage of the Court – which is the only weblog ever to receive the Peabody Award.
I represent MCM Portfolio LLC, which is seeking Supreme Court review of a recent decision of the United States Court of Appeals for the Federal Circuit upholding the constitutionality of the inter partes review (IPR) procedures created by the America Invents Act (AIA). The petition is available here. Amicus briefs in support of the petition are being filed May 31. We argue that IPR violates Article III of the Constitution, which vests the judicial power in the federal courts, and also the Seventh Amendment, which guarantees a right to a jury in civil litigation.
We along with several other attorneys represent ParkerVision, the plaintiff, which secured a $173 million infringement verdict that the courts subsequently threw out based on their own assessment of the evidence. In this case, the roles of courts and juries are front and center. The Federal Circuit has been dismissive of jury findings. As Judge Newman has observed, the Federal Circuit frequently “reweigh[s] the evidence to reach [the court’s] preferred result, rather than considering whether substantial evidence as presented at the trial supports the verdict that was reached by the jury.” Other judges and scholars have concurred in this view.
The panel decision in this case reads recent Supreme Court precedent to create an existential threat to patent protection for an array of meritorious inventions. It avowedly holds that “groundbreaking” new diagnostic methods that make a significant contribution to the medical field” are ineligible for a patent whenever they (1) incorporate the discovery of a natural phenomenon, and (2) the techniques involved in putting that discovery to its first practical use were individually known beforehand. In other words, the person who first discovers a natural phenomenon can never obtain a patent on any practical application of that new knowledge, however surprising or revolutionary the results, unless the steps she teaches to use it are independently novel. As the example of this case vividly shows, that cannot be correct.