by Dennis Crouch

In Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319 (Fed. Cir. 2019), the patentee (Arthrex) argued that the inter partes review is an unconstitutional due process violation when applied retroactively against pre-AIA patents. The Federal Circuit rejected the basis for the argument — Although Arthrex filed its patent applications prior to passage of the AIA, the patent issued afterward. In somewhat cryptic analysis the court worte:

That Arthrex filed its patent applications prior to passage of the AIA is immaterial. As the Supreme Court has explained, “the legal regime governing a particular patent ‘depend[s] on the law as it stood at the emanation of the patent, together with such changes as have since been made.’” Eldred v. Ashcroft, 537 U.S. 186, 203 (2003) (quoting McClurg v. Kingsland, 42 U.S. 202, 206 (1843)). Accordingly, application of IPR to Arthrex’s patent cannot be characterized as retroactive.

Id. The two cases cited by the Federal Circuit here are interesting.

McClurg is best known as the case establishing “shop-rights doctrine.” In the case, the inventor (Harley) created a mold for casting metal cylinders so that the strongest material was toward the outer wall. Harley made the invention while on the job for the defendant Kingsland and Kingsland continued to use the invention for some time with without objection from Harley. Meanwhile, Harley obtained a patent and assigned it to McClurg who later sued Kingsland for infringement. The Supreme Court explained that such a situation created an implied license:

The Circuit Court … held that the defendants might continue to use the invention, … that they might presume a license or grant from Harley.

McClurg v. Kingsland, 42 U.S. 202 (1843).

In Arthrex, the focus on McClurg is for a different reason — congressional plenary power to legislate in the area of patent law — even retroactively.

The inventor in McClurg (Harley) obtained his patent in 1835 – a few months before passage of the Patent Act of 1836 that constituted a major revision of U.S. Patent Law. By its terms, the new law applied to old patents (with a few exceptions) but the case challenged whether Congress had the power to take such action. And the Supreme Court offered strong words allowing for Congress modify the law of patents without any restraint:

Whether [the appeal is] well taken or not, must depend on the law as it stood at the emanation of the patent, together with such changes as have been since made; for though they may be retrospective in their operation, that is not a sound objection to their validity; the powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution, and as there are no restraints on its exercise.

Id. This is the portion of the decision that is quoted by the Supreme Court in Eldred and again in Arthrex. I should note that the court actually goes on to put a pretty big caveat on congressional plenary power (as mentioned justice Stevens dissent in Eldred):

… so that they do not take away the rights of property in existing patents. . . . This repeal, however, can have no effect to impair the right of property then existing in a patentee, or his assignee, according to the well-established principles of this court in 8 Wheat. 493 [a real property case]; the patent must therefore stand as if the acts of 1793 and 1800 remained in force; …

Putting these two portions of the case together, it becomes clear that Congress is free to change the laws, and have those laws be retroactive nature so long as it does not impair the property right already granted. This caveat is a substantially more nuanced than what the Federal Circuit decided in Arthrex.

The Federal Circuit decided this case in August 2019. Arthrex recently petitioned for en banc rehearing raising again the constitutional question and noting that Eldred + McClurg were focusing on permissible retroactive congressional expansion of rights, not impermissible degradation.