On February 23, 2015, the Supreme Court denied without comment MadStad Engineering’s petition for Writ of Certiorari. MadStad sought review of the Federal Circuit’s affirmance of a district court’s dismissal for lack of standing of MadStad’s declaratory judgment case, in which MadStad challenged the constitutionality of the AIA’s first-inventor-to-file provisions.

In its petition, MadStad argued that Article 1, Section 8, Clause 8 of the Constitution provided a “specific mode of accomplishing the particular authority granted,” i.e., securing exclusive rights for limited times to inventors in their discoveries. MadStad concluded that “inventor,” when considered in the context of the time, was intended to mean the first inventor or discoverer; not the first inventor to file.

In response, the government first pointed out that the AIA defines “inventor” as the person “who invented or discovered the subject matter of the invention.”  35 U.S.C. § 100(f).  It then emphasized that every patent system needs a type of priority rule (whether it be a first-inventor-to-file or first-to-invent system), and nothing in the Constitution requires the adoption of one priority rule over another.

The Supreme Court declined to address the parties’ constitutionality arguments, letting stand the Federal Circuit’s decision holding that MadStad did not have standing to challenge the AIA’s first-inventor-to-file provisions. Relying on the Supreme Court’s decision in Clapper v. Amnesty International, the Federal Circuit held that MadStad failed to show that it had suffered an “actual or imminent” injury from those provisions. It reasoned that while MadStad may have had numerous inventions in development, it failed to show how “hypothetical consequences of the legislation” would amount to the requisite level of injury.

As neither the Supreme Court nor the Federal Circuit addressed the merits of the constitutionality challenge, this issue remains open for a proper plaintiff.