David Steiber

Cardozo Journal of Conflict Resolution

September 17rd, 2017
Note Outline

An arbitration method that balances the delicate Constitutional line of Inter Partes Review

1. Introduction
a. The idea of using a patent to protect innovative technology was first seen as early

as 500B.C. by Ancient Greece as an, encouragement [sic] held out to all who

should discover any new refinement in luxury, the profits arising from which were

secured to the inventor by patent for the space of a year."

i. Since then, over the course of nearly 2500 years, patents have transformed

continuously throughout various cultures (will name cultures and provide

examples) that have adopted their use. Each culture constructed its laws

by how it planned to utilize its patent system.

1. There are several examples of utilitarian systems used for

betterment of society, but also equally examples of nefarious uses

that granted strategic monopolies by Kings for subordinates who

gained favor. History has shown repeatedly the extensive

repercussions of various implementations of Patent law

b. Discuss the give and take of patents
i. Inventors give their knowledge to the public
ii. Inventors gain a monopoly on their idea for 20 years in order to receive

the benefit of their invention.

c. Introduce US Consitution Article I Section 8. Clause 8 Patent and

Copyright clause
i. America has arguably the most robust and trusted Patent laws the world

has ever seen. Many scholars have attributed Americas technological

superiority to the reward system granted by its advanced patent system. If

 this is indeed true then we need to continue to lead the world with

innovative patent laws that conform to the needs of our society.

1. In 2012, the US Congress attempted just that with that nations 4th,

and largest, modification to its Patent Laws called The Leahy

Smith America Invents Act (AIA). It is with this revision that the

controversial Inter Partes Review was born.

2. With all innovation, tweaks are necessary and the AIA is no

different.
a. It is my hopes with this introduction you will have grasped

the severity and potential consequences if we get this

wrong. If we no longer properly protect American

Innovation then there is a chance we will lose our

technological edge and significantly hamper our global

presence.
b. Next, we will discuss whats going on, how we got there,

and where we might go from here.

2. Background
a. Pre-AIA Patent Law how it functioned general overview
i. Introduce McCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S.

606 (1898)
ii. Pitfalls issues discussed.
1. Not sure particular pitfalls yet, will need to research more.
b. After general overview then focus on Pre-AIA patent law that is specifically

relevant to the topic of IPR in post-AIA patent law.

i. Discuss why Congress felt our Patent system needed to change.
ii. Brief introduction as to what PTAB is.
c. Discuss/teach what IPRs are, and what they are meant for.
i. Introduce ADR aspects of IPR and confront the need for change

(Constitutional issue)
ii. Introduce upcoming Supreme Court Case Oil States vs. Greenes Energy

Group
 1. Likely will not be determined unconstitutional, as that would

require subsequent litigation over 5 years worth of patent revokes.

3. Discussion
a. Discuss how the PTAB works and its processes that make IPRs necessary.
b. Further discuss what the IPR was created to accomplish.
i. Use this high level understanding of the purpose of IPR in order to

develop a framework of thought as to how one might develop a solution to

the IPR issue.

c. Discuss why patent IPRs are superior to that of normal litigation.
i. Expert Judges that understand the science behind the invention
ii. Much cheaper and faster than litigation
iii. Allows for secrecy throughout arbitration process to protect the invention.
iv. Add all of this to previous framework constructed in 3(b) above.
d. Discuss current arguments and any possible solutions tired or proposed to be

tried.
i. Look towards other countries for solutions
1. Good ideas
2. Bad Ideas
4. Proposal
a. Develop a method of operation within the PTAB that balances inventors rights

with public need for valid patents.

i. Upon PTAB determination of invalid patent, allow for mandatory scope

refinement (compromise)
1. Take patent invalidation off the table.
a. This is simply not the forum for patent invalidation.
i. Adversaries still will use PTAB due to severe

decrease in costs and quicker turn around time

relative to litigation.
1. After PTAB IPR, if a resolution cannot be

afforded, then can go to litigation ONLY to

answer question of patent invalidation.

ii. Transform the purpose of the IPR and what it seeks to accomplish.
1. Patents are not perfect, but this must be balanced with the

constitutional right of Patent ownership.

a. Make issued patents as good as they can be!
 b. Compile data from PTAB litigation in order to define areas of patent law that need

more robust front end prosecution.

i. Change the standard of proof on the front end for areas of Patent Law that

notoriously are found to be invalid.

c. Allow PTABs IPR to write an opinion to send to Art III judge if a compromise

cannot be reached.
i. Unbiased opinion of the facts, no determination made.
5. Conclusion
a. Allowing the PTAB to revisit patents and make them more competitive allows

America to maintain the creation of useful patents.

i. This must be balanced with the rights afforded to patent owners who have

given the knowledge of their invention to the public.

ii. In creating a solution, we must not lose site that the goal of Patent law, as

written in the constitution, is to promote the progress of science and

useful arts, by securing for limited times to authors and inventors the

exclusive right to their respective writings and discoveries

6. Important cases:
a. McCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S. 606 (1898)
issued patents are private property that cannot be taken away by the govt.
b. Patlex Corp. v. Mossinghof public vs private rights
c. Microsoft Corp. v. i4i LP - presumption of validity patents are given under the
law means that a heightened standard of proof is needed to invalidate them.
d. KSR International Co. v. Teleflex Inc. broadened scope of what can be
constituted as obvious under 103.
e. Oil States vs. Greenes Energy Group Upcoming case in regards to IPR
Constitutionality.