Interjecting into the dialogue, now that it has come to life again.

I would suggest that, in England, from medieval times, through into the 18th and 19th centuries, and indeed down to the present time, letters patent have been a mechanism for granting rights, and letters patent were and are issued for all sorts of the purposes. The US context would be different because the Founding Fathers evidently did not favor a constitution in which the executive exercises the full powers of the English royal prerogative. Consider a case where letters patent are used to charter a corporation. I would presume that the rights to hold real property, engage in commerce, award degrees etc. would be rights that would be adjudicated in an Article III Court. I would expect such rights to be “private rights” to the extent that there is some meaningful categorization of types of rights. And therefore it would seem logical to me that SCOTUS would consider rights granted by letters patent, for whatever purpose, to be “private rights”, as opposed to “public rights”, assuming for the sake or argument that there is some principled logical distinction between these kinds of rights.

Next stage in the argument: where rights are granted to an inventor, to what is the right granted? Here I would suggest that maybe the right is to the “invention”. And what is the “invention”? This might be construed to be whatever in the subject matter of the specification satisfies the requirements of eligibility (including subject matter requirements), novelty and nonobviousness – what it is, falling within the bounds of eligible subject matter, that the inventor has in fact invented.

(The SCOTUS opinion in Warner-Jenkinson, I suggest, is consistent with a concept of “the invention” that is not completely defined through constructing the literal scope of the claims.)

What about the sequence of claims? One approach would be to regard these as a more dynamical part of the textual documentation associated with the patent grant. The claims represent attempts to capture, in textual form, aspects of the invention. Unlike other parts of the specification, the sequence of claims is not fixed at the time of filing. They are typically amended in prosecution, and the law provides opportunities to the inventor, through continuation patents, amendments etc. to enlarge and amend the wording of the claims and to add new claims, provided that the “invention” described in the specification is not enlarged thereby. Also cancellation of a claim is not going to invalidate the patent – whereas were the patent grant to adhere to what is covered by the precise wording of the claims, an invalid claim would surely entail an invalid patent grant, in that the Commissioner of Patents purported to grant exclusive rights in subject matter that could not lawfully be granted. It seems to me that one might argue that the inventor or assignee is estopped from pleading infringement of aspects of the “invention” that have not been claimed. But if claims can be added (e.g., in a continuation patent) a decade or more after filing or “inventing”, to the benefit of the patentee, then, if the USPTO has determined, via some formal procedure authorized by Congress, that the subject matter of certain claims is infringed by prior art, then there might be an argument that the public notice function of the sequence of claims would best be vindicated through cancellation of claims – with such claim cancellation not diminishing, by one iota, whatever “invention” is implicit in the specification text outside the claim sequence.

If the procedure could be framed in which some person or corporation petitions the government, specifically the Patent Office, to re-examine the validity of a claim in the light of alleged prior art, and the Patent Office conducts a proper examination, and deems some claim to be invalid, and “cancels” the claim through some procedure authorized by Congress, then this would create a cause of action that the patentee might assert against the Commissioner of Patents. And Congress could provide that this claim might be adjudicated in either an Article I Court or an Article III Court, without entitlement to trial by jury on account of sovereign immunity.

Against this, there would surely be an argument that, while such a re-examination system might in theory be within constitutional bounds, the current IPR process is too adversarial, and embeds the petitioner too thoroughly into the procedures, to an extent that might be deemed incompatible with a theory that sovereign immunity trumps 7th Amendment rights to a jury trial.