In the Order List published February 23 from the Supreme Court was notice that certiorari was denied in 14-366 Madstad Engineering, Inc V. Patent and Trademark, et al.
Madstad Engineering was appealing prior decisions from the Middle District of Florida and the Federal Circuit that the company lacked standing to challenge the First to File provision of the America Invents Act as unconstitutional.
While the dismissal means that no court has actually weighed in on the challenge itself, a few of the arguments have been published and addressed in commentary:
Under the AIA, the patent will be awarded to the person who is first to file a patent application, regardless of whether the applicant was the actual first inventor of the technology in question.
This can be stipulated, since it is the definition of the First to File provision. One of the reasons for the transition to the First to File process was to reduce patent uncertainty. Where there are competing claims to an invention, it is a cleaner rule to determine priority based on filing date, than to review notebooks and witness accounts to identify when “invention” occurred through the previous mechanism of interference proceeding.
The new First to File system violates the Intellectual Property Clause, Article I, Section 8, Clause 8 of the Constitution, which provides Congress with the power “[T]o 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.”
This is the actual constitutional argument, which comes in two parts.
The first is whether another true inventor, working independently, who happens to reach the point of invention later, but files sooner, is inconsistent with the intent of this clause. There is nothing in the wording itself that makes such an individual less of an inventor, and therefore less entitled to a patent.
The second is whether someone who has stolen intellectual property, and files before the true inventor, would be entitled to a patent. This argument is undermined to some extent by the introduction of the derivation proceeding, and other mechanisms concerning intellectual property theft.
Since the plaintiff had no pending patent applications under the First to File rule, and no patent applications rejected because of the First to File rule, there were no damages under which to pursue a case.
It remains to be seen if another plaintiff will raise similar, or different arguments, and if those arguments will be heard by the court.