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Cascades Projection LLC v. Epson America, Inc.

Patentee’s Argument Against Constitutionality of IPR to be Heard Initially by Panel, Not En Banc

Cascades Projection LLC v. Epson America, Inc., (Fed. Cir. May 11, 2017) (Per curiam; concurrence by Newman; concurrence by Dyk (with Prost, Hughes); dissent by O’Malley; dissent by Reyna) (PTAB) (3 of 5 stars)

Fed Cir denies Cascades’ petition for en banc hearing of its appeal. Cascades urged that a patent right is a private right, not a public one, and from that reasoned that the PTO’s cancellation of patents in IPR was an unconstitutional exercise of judicial power.

Newman concurrence: Judge Newman reasons that the matter should be resolved by a panel of the Court prior to any en banc consideration.

Dyk concurrence (with Prost, Hughes): Judge Dyk views the issued raised in the petition as settled in MCM Portfolio, 812 F.3d 1284 (Fed. Cir. 2015), which held that patent rights are public rights. Addressing the dissents, he sees no inconsistency between MCM and either Patlex, 758 F.2d 594 (Fed. Cir. 1985), or McCormick Harvesting, 169 U.S. 606 (1898). He also sees no inconsistency in concluding that patent rights are public rights, conferred by federal statute.

O’Malley dissent: Judge O’Malley is uncertain that MCM was correctly decided. She approves Judge Reyna’s dissent, and notes that McCormick indicated that patent rights may only be annuled by the courts, and not the Patent Office.

Reyna dissent: Judge Reyna reads McCormick as limiting the power to “annul” patents as vesting only in the judiciary, and not the Patent Office. He also views MCM and Patlex as “inconsistent and irreconcilable” opinions within the Fed Cir’s law. Third, he cites separation of powers as a consideration to be analyzed carefully.

KEYWORDS: INTER PARTES REVIEW; PRIVATE RIGHT; PUBLIC RIGHT; EN BANC