A Real Separation of Powers or Separation of Law: Can an Article I Administrative Agency Nullify an Article III Federal Court Judgment? Shashank Upadhye & Adam SussmanARTICLE - Fordham Intellectual Property, Media & Entertainment Law Journal
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A Real Separation of Powers or Separation of Law: Can an Article I Administrative Agency Nullify an Article III Federal Court Judgment?
Shashank Upadhye & Adam Sussman

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This Article concerns whether and how Article I administrative agencies can overturn the final judgment of an Article III federal court. The Article identifies if there really is a constitutional crisis afoot because of a violation of the separation of powers doctrine. It also addresses the concern that the federal court is the final arbiter of a legal dispute and that neither Congress nor an agency can step in to undo that which the federal court has done. The Article focuses on the newly enacted America Invents Act and the current use of administrative agency proceeding to reexamine issued patents as a tool to nullify patent infringement judgments.





rticle III of the Constitution grants the federal courts plenary power to adjudicate legal disputes.1 Article III also creates coveted judicial positions so that talented and keen attorneys can serve as federal court judges.2 It is, without a doubt, an honor to serve as a federal judge. To some, it is heresy that once a federal court exercises its full constitutional powers, something or someone else can undo its decision.3


The patent laws are also constitutional.4 The founders of the Constitution deliberately chose to enshrine the grant of patent rights in the main Constitution by allowing Congress the ability to create and administer the patent law.5 The Constitution also empowers the government to create agencies to administer the federal laws.6 Naturally, in promulgating laws, Congress cannot be expected to think of every contingency or every procedure, and as such, the administrative agency is delegated the power to create the more precise tools to administer the congressional law.7


The so-called patent law crisis that threatens to raise constitutional issues concerns how the patent laws operate within the rubric of judicial oversight of patent infringement and the United States Patent and Trademark Office (“PTO”) process. As will be detailed herein, the problem lies in whether a defendant in a patent infringement proceeding (the putative infringer) can invoke PTO procedures to undo a federal court’s patent infringement verdict. That is, because a patent infringement verdict necessarily involves an issued and valid patent, once the infringer loses, can he get a “do-over” by expunging or impeaching the patent back at the PTO? And if so, under what circumstances can reexamination help or hurt the patentee?


In Part I, we examine the basic nature of the patent process and the advanced nature of the reexamination process. In Part II, we discuss the potential constitutional problem (i.e., the separation of powers) of whether the PTO violates the separation of powers doctrine by canceling the claim and its effect on parallel federal court litigation. In Part III, we discuss the concepts of finality and the final judgment rule. We also examine in Part IV whether the Due Process provision is implicated by canceling a federal court judgment of liability. In Parts V and VI, we examine certain remedies that may exist for patentees and defendants. In Part VII, we examine the effect of reexamination in the pharmaceutical patent litigation context and why reexamination may be useful in that context.



*Shashank Upadhye is a partner at Amin Talati & Upadhye, LLC in Chicago. He is a globally recognized expert in the field of pharmaceutical IP and FDA regulatory law. He is formerly the VP – Global Head of IP for Apotex, Inc. (Toronto, Ontario) and VP – Head of US IP for Sandoz, Inc. and Eon Labs, Inc. He is also the author of the industry-leading treatise entitled, “Generic Pharmaceutical Patent and FDA Law,” published by Thomson West. He is also the author of 12 full law review articles related to IP, pharmaceutical, antitrust, and international law. He received his L.L.M. in IP (The John Marshall Law School, Chicago, IL); J.D. (New England School of Law, Boston, MA); B.A. (Brock University, St. Catharines, ON), and B.Sc. (Brock University, St. Catharines, ON). He is admitted to practice law in several states and is a registered patent attorney. The views expressed herein are simply of the author alone, and do not represent the views of any client in the past, present, or future. Criticisms or comments about this paper can be directed to the author at: supadhye@hotmail.com.


**Adam Sussman is currently an associate patent attorney at Amin Talati & Upadhye, LLC. He received his J.D. in May 2014 from The John Marshall Law School, in Chicago, Illinois, with a Certificate in Intellectual Property, and served as the 2013–2014 Managing Editor of The John Marshall Review of Intellectual Property Law. He received his B.A. in Chemistry from the University of Pennsylvania in May 2002, and his Ph.D. in (Synthetic Organic) Chemistry from the University of Illinois, Chicago, in 2010.

  1. U.S. @@Const.## art. III, § 1.

  2. See id.

  3. Symposium, Judicial Independence, 11 @@Chap. L. Rev.## 389, 395 (2008) (“I do think some of the ad hominem attacks on judges have gotten particularly nasty in the last several years, but that may be a mark of the general polarization of parties and the political debate we have had. Judges have taken some of the brunt. It is something that I think we ought to keep our eyes on. We should try to keep the discourse civil. It is fine to criticize judges for their reasoning or for their decisions when there is disagreement. But when criticism turns particularly nasty and derogates into name calling, it is just possible, as Professor Geyh pointed out in his book, that if enough mud is slung around, some of it might actually stick. So, I think it behooves us all, whatever side of the issues we are on, to try to keep the discourse civil.”); see generally James S. Liebman & William F. Ryan, Some Effectual Power: The Quantity and Quality of Decisionmaking Required of Article III Courts, 98 @@Colum. L. Rev.## 696, 703, 773–845 (1998) (positing a distinctive role for the federal courts in deciding a litigated case with finality, effectuality, and in accordance with all available law).

  4. U.S. @@Const.## art. I, § 8, cl. 8.

  5. See id. We define the “main” Constitution as being the original Articles versus subsequent Amendments. While some may suggest that rights enshrined in the original Articles are more important (because they came first) than subsequent Amendments, (see, e.g., Mehrdad Payandeh, Constitutional Aesthetics: Appending Amendments to the United States Constitution, 25 @@BYU J. Pub. L.## 87, 99 (2011)), others suggest that the Articles and Amendments maintain equal footing. See, e.g., U.S. @@Const.## art. V (“The Congress, whenever two thirds of both Houses shall deem it necessary, shall propose Amendments to this Constitution, or, on the Application of the Legislatures of two thirds of the several States, shall call a Convention for proposing Amendments, which, in either Case, shall be valid to all Intents and Purposes, as Part of this Constitution, when ratified by the Legislatures of three fourths of the several States, or by Conventions in three fourths thereof, as the one or the other Mode of Ratification may be proposed by the Congress; Provided that no Amendment which may be made prior to the Year One thousand eight hundred and eight shall in any Manner affect the first and fourth Clauses in the Ninth Section of the first Article; and that no State, without its Consent, shall be deprived of its equal Suffrage in the Senate.”).

  6. U.S. @@Const.## art. I, § 8, cl. 18; U.S. @@Const.## art. II, § 2.

  7. See Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837, 843–44, (1984) (“The power of an administrative agency to administer a congressionally created program necessarily requires the formulation of policy and the making of rules to fill any gap left, implicitly or explicitly, by Congress. If Congress has explicitly left a gap for the agency to fill, there is an express delegation of authority to the agency to elucidate a specific provision of the statute by regulation.”).

Article by

Shashank Upadhye* & <br />Adam Sussman**

Vol 25 Book 1

25 <span style="font-variant: small-caps;">Fordham Intell. Prop. Media & Ent. L.J.</span> 1

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