United States: Are Inter Partes Review Proceedings Constitutional? The Federal Circuit Is Not Yet Ready To Decide

On May 11, 2017, with six of its twelve active judges authoring or joining separate opinions, the Federal Circuit denied a petition for an initial hearing en banc which asked the full Court to address the question "whether a patent right is a public right." In this case, Cascades Projection LLC v. Epson America, Inc., the petitioner (Cascades) contends that patent rights are not public rights and that the Patent Office therefore cannot revoke issued patents—arguing that inter partes review ("IPR") "in its present form violates Article III of the United States Constitution (Separation of Powers), unless [IPR] outcomes are deemed advisory in the trial courts."

A note on the unusual procedural posture in which this case was presented to the Federal Circuit: Rehearings of panel decisions, en banc, are very rare—according to a fact sheet supplied by the Federal Circuit, "En banc petitions [are] accepted less frequently, in only 16 of more than 1100 requests." Initial hearings en banc—hearings before the entire Court before a three-judge panel hears the case—are even rarer birds than that. Yet Cascades asked for such an initial hearing, presumably because the Federal Circuit's panel decision in MCM Portfolio v. Hewlett Packard Co., 812 F.3d 1284, 1293 (Fed. Cir. 2015), had already resolved this question adverse to Cascades, and subsequent panels must follow prior panel decisions unless and until the prior precedent is overturned by the Court en banc (or by the Supreme Court). So Cascades apparently calculated that there was no point in waiting to ask for en banc treatment of this issue.

Under what has become known as the "public-rights doctrine" of separation of powers, only a controversy involving public rights "may be removed from Art. III courts and delegated to legislative courts or administrative agencies for their determination." Northern Pipeline Construction Co. v. Marathon Pipe Line Co., 458 U.S. 50, 70 (1982). "Private-rights disputes, on the other hand, lie at the core of the historically recognized judicial power." Id. So the controversy raised by Cascades depends on whether patent rights are more accurately characterized as private rights or public rights. If they are public rights, then an agency can revoke them. If they are purely private rights, only an Article III court can.

Cascades' petition placed significant reliance on the characterization of an issued patent as private property and on the Supreme Court's decision in McCormick Harvesting Mach. Co. v. Aultman, 169 U.S. 606 (1898), where the Court stated that the "only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent." Id. at 609. Both arguments have been seemingly rejected by the Federal Circuit. Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985), upheld the constitutionality of ex parte reexamination proceedings because "the grant of a valid patent is primarily a public concern." Id. at 604. And the MCM panel rejected McCormick's statement as inapplicable to IPRs, because McCormick's statement merely reflected the fact that Congress at the time had not statutorily authorized the Patent Office to review issued patents.

Cascades' petition argued that MCM was wrongly decided and inconsistent with Patlex. According to Cascades, the premise of Patlex was that ex parte reexamination was actually just a continuation of prosecution, "a characterization inapplicable to IPR." Cascades further argued that McCormick made clear that permitting the Patent Office to cancel issued patents gave rise to separation-of-powers problems. Cascades' petition for initial hearing en banc was supported by a number of amici.

The Federal Circuit nonetheless denied the petition for initial en banc hearing, with six of its 12 judges writing or joining separate opinions:

  • Judge Newman—the author of Patlex—concurred in the denial of initial hearing en banc, and noted that the best course of action is for the case to be heard by a panel in the first instance, and, "[i]f necessary" and appropriate, then proceed to an en banc rehearing.
  • Judge Dyk, joined by Chief Judge Prost and Judge Hughes (the three members of the MCM panel), also concurred in the denial of initial hearing en banc, and offered a full-throated defense of MCM, concluding that MCM fully coheres with Federal Circuit and Supreme Court precedent: "MCM was correctly decided, and there is no need to restate MCM's reasoning here."
  • Judge O'Malley dissented from the denial of initial hearing en banc, observing that Cascades' petition raised a question that was "both sufficiently debatable and exceptionally important," and therefore concluding that the case should have been immediately taken en banc.
  • Judge Reyna, who also dissented from the denial of initial hearing en banc, did not even view the issue as debatable: Rather, he believed that MCM and Patlex are inconsistent with each other, and irreconcilable with the Supreme Court's McCormick. He concluded that the full Court "should consider the constraints Article III imposes on the adjudication of patent rights by an administrative authority."

Curiously, none of the opinions nor Cascades' reply addressed Epson's argument that the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), "specifically endorsed inter partes review as helping to 'protect the public's paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope'" (quoting id. at 2144).

Coincidentally, just a few weeks ago, the (acting) Solicitor General filed a brief in opposition to certiorari at the Supreme Court in Oil State Energy Services, LLC v. Greene's Energy Group, LLC, addressing the same issue. Relying in part on Cuozzo, the Solicitor General maintained that "[p]atents are quintessential public rights," and recommended denying a petition for certiorari premised on the argument that IPRs are not constitutional.

Nevertheless, the Federal Circuit's fractured response shows that the Federal Circuit is not of one mind on this issue. Should the Federal Circuit (either the panel, or the court en banc on rehearing) ultimately agree with Cascades, the entire AIA scheme for post-issuance review could be deemed unconstitutional, and be altered or scuttled entirely. We will continue to monitor the progress of this case.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.