Opposition Brief — ARRIS International Limited, Petitioner v. ChanBond, LLC, et al.

No. 19-455

In the Supreme Court of the United States

ARRIS INTERNATIONAL LIMITED, PETITIONER

v.

CHANBOND, LLC, ET AL.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR THE FEDERAL RESPONDENT

IN OPPOSITION

NOEL J. FRANCISCO

Solicitor General

Counsel of Record

JOSEPH H. HUNT

Assistant Attorney General

MELISSA N. PATTERSON

SARAH E. WEINER

Attorneys

Department of Justice

Washington, D.C. 20530-0001

SupremeCtBriefs@usdoj.gov

(202) 514-2217

QUESTION PRESENTED

In the Leahy-Smith America Invents Act (AIA),

Pub. L. No. 112-29, 125 Stat. 284, Congress authorized

the U.S. Patent and Trademark Office (USPTO) to reconsider the patentability of an issued patent at the request of a third party through an administrative process

called inter partes review. The AIA authorizes judicial

review of the Board’s “final written decision with respect to the patentability” of the challenged patent

claims, which is issued “[i]f an inter partes review is instituted and not dismissed.” 35 U.S.C. 318(a), 319. The

question presented is as follows:

Whether the USPTO’s decision not to institute an inter partes review on the ground that the petition was

time-barred under 35 U.S.C. 315(b) is judicially reviewable by the Federal Circuit.

(I)

TABLE OF CONTENTS

Page

Opinions below .............................................................................. 1

Jurisdiction .................................................................................... 1

Statement ...................................................................................... 2

Argument....................................................................................... 6

Conclusion ................................................................................... 14

TABLE OF AUTHORITIES

Cases:

Arthrex, Inc. v. Smith & Nephew, Inc.,

880 F.3d 1345 (Fed. Cir. 2018) ..................................... 6, 8, 9

B & B Hardware, Inc. v. Hargis Indus., Inc.,

135 S. Ct. 1293 (2015) ......................................................... 12

Cuozzo Speed Techs., LLC v. Lee,

136 S. Ct. 2131 (2016) ..................................2, 3, 9, 10, 12, 13

GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309

(Fed. Cir. 2015) ..................................................................... 8

ICC v. Brotherhood of Locomotive Eng’rs,

482 U.S. 270 (1987).............................................................. 10

Mathews v. Eldridge, 424 U.S. 319 (1976) .......................... 12

Oil States Energy Servs., LLC v. Greene’s Energy

Grp., LLC, 138 S. Ct. 1365 (2018) ........................................ 2

SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) .................. 12

St. Jude Med., Cardiology Div., Inc. v. Volcano

Corp., 749 F.3d 1373 (Fed. Cir. 2014) ............................. 5, 7

Thryv, Inc., f ka Dex Media , Inc. v. Click-to-Call

Techs., LP, cert. granted, No. 18-916

(June 24, 2019)..................................................................... 13

Weyerhaeuser Co. v. United States Fish & Wildlife

Serv., 139 S. Ct. 361 (2018) ........................................... 10, 11

Wi-Fi One, LLC v. Broadcom Corp.,

878 F.3d 1364 (Fed. Cir. 2018) ....................................... 6, 13

(III)

IV

Statutes and regulations:

Page

Administrative Procedure Act, 5 U.S.C. 701 et seq.............. 9

5 U.S.C. 701-706................................................................. 9

5 U.S.C. 701(a)(2)............................................. 9, 10, 11, 12

5 U.S.C. 706(2)(A) ............................................................ 10

Endangered Species Act of 1973, 16 U.S.C. 1531

et seq. .................................................................................... 10

Leahy-Smith America Invents Act, Pub. L. No.

112-29, 125 Stat. 284 ............................................................. 2

§ 18, 125 Stat. 329-331 ....................................................... 3

§ 18(a)(1), 125 Stat. 329 ..................................................... 3

§ 18(a)(1)(A), 125 Stat. 329 ............................................... 3

§ 18(a)(3)(A), 125 Stat. 330 ............................................... 3

Patent Act of 1952, 35 U.S.C. 1 et seq. ................................... 2

35 U.S.C. 131 ...................................................................... 2

35 U.S.C. 141-144............................................................... 7

35 U.S.C. 141(c) ......................................................... 4, 7, 8

35 U.S.C. 143 ...................................................................... 5

35 U.S.C. 253(a) ................................................................. 8

35 U.S.C. 311- 319 .............................................................. 2

35 U.S.C. 311(a) ................................................................. 3

35 U.S.C. 311(b)-(c) ........................................................... 2

35 U.S.C. 314 .................................................................... 12

35 U.S.C. 314(a) ................................................................. 3

35 U.S.C. 314(b) ........................................................... 3, 12

35 U.S.C. 314(d) ........................................4, 7, 8, 12, 13, 14

35 U.S.C. 315(a)(1)-(b) ...................................................... 4

35 U.S.C. 315(b) ............................................. 5, 6, 9, 13, 14

35 U.S.C. 315(e) ............................................................... 11

35 U.S.C. 316 ...................................................................... 4

35 U.S.C. 316(a)(5)............................................................. 4

35 U.S.C. 316(a)(8)............................................................. 4

V

Statutes and regulations—Continued:

Page

35 U.S.C. 316(a)(10) ........................................................... 4

35 U.S.C. 316(a)(13) ........................................................... 4

35 U.S.C. 318(a) ......................................................... 4, 6, 7

35 U.S.C. 319 .................................................... 4, 6, 7, 8, 14

35 U.S.C. 321- 329 .............................................................. 2

35 U.S.C. 321(a) ................................................................. 3

35 U.S.C. 321(b)-(c) ........................................................... 2

28 U.S.C. 1295 ...................................................................... 8, 9

28 U.S.C. 1295(a)(4)(A) ........................................................... 8

37 C.F.R. Pt. 42, Subpt. A....................................................... 4

Section 42.4(a) .................................................................... 3

Section 42.71(a) .................................................................. 8

Section 42.73 ...................................................................... 9

Miscellaneous:

77 Fed. Reg. 48,680 (Aug. 14, 2012) ....................................... 3

H.R. Rep. No. 98, 112th Cong., 1st Sess. Pt. 1 (2011) .......... 2

Restatement (Second) of Judgments (1982) ....................... 12

In the Supreme Court of the United States

No. 19-455

ARRIS INTERNATIONAL LIMITED, PETITIONER

v.

CHANBOND, LLC, ET AL.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR THE FEDERAL RESPONDENT

IN OPPOSITION

OPINIONS BELOW

The order of the court of appeals (Pet. App. 1a-4a)

is not published in the Federal Reporter but is reprinted at 773 Fed. Appx. 605. The redacted decisions

of the United States Patent and Trademark Office (Pet.

App. 5a-30a, 31a-55a, 56a-80a, 81a-105a, 106a-130a) are

unreported.

JURISDICTION

The judgment of the court of appeals was entered on

December 27, 2018. A petition for rehearing was denied

on April 26, 2019 (Pet. App. 131a-132a). The petition for

a writ of certiorari was filed on July 25, 2019. The

jurisdiction of this Court is invoked under 28 U.S.C.

1254(1).

(1)

2

STATEMENT

1. a. The Patent Act of 1952 (Patent Act), 35 U.S.C.

1 et seq., charges the U.S. Patent and Trademark Office

(USPTO) with examining applications for patents, and

it directs the USPTO to issue a patent if the statutory

criteria are satisfied. 35 U.S.C. 131. Federal law has

long permitted the USPTO to reconsider the patentability of the inventions claimed in issued patents. In the

Leahy-Smith America Invents Act (AIA), Pub. L. No.

112-29, 125 Stat. 284, Congress substantially expanded

those procedures. See Oil States Energy Servs., LLC v.

Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1370

(2018); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.

2131, 2137-2138 (2016). Congress enacted the AIA to

“establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.” H.R. Rep.

No. 98, 112th Cong., 1st Sess. Pt. 1, at 39-40 (2011).

The AIA established new procedures for third parties to challenge the patentability of claims in issued patents. Such challenges are heard and decided by a Patent Trial and Appeal Board (Board). For challenges to

patentability brought within nine months after the disputed patent was issued, the AIA established a procedure known as post-grant review, which allows challenges to patentability on any ground that could be asserted as a defense to a claim of infringement. 35 U.S.C.

321(b)-(c); see 35 U.S.C. 321-329. For challenges

brought after that nine-month period, the AIA established inter partes review, which is limited to challenges

based on prior art consisting of patents and printed

publications. 35 U.S.C. 311(b)-(c); see 35 U.S.C. 311319. Any “person who is not the owner of a patent” may

3

petition for either post-grant review or inter partes review. 35 U.S.C. 311(a), 321(a). This case concerns inter

partes review. 1

b. Inter partes review proceeds in two phases.

When a petition for inter partes review is filed, the

USPTO first must determine whether to institute a review. 35 U.S.C. 314(a). The institution decision is made

on the basis of the petition and any response that the

patent owner files, and it must be made within three

months after the USPTO receives the patent owner’s

response or, if no response is filed, “the last date on

which such response may be filed.” 35 U.S.C. 314(b).

The Director has delegated this responsibility to the

Board. 37 C.F.R. 42.4(a).

The AIA does not require the agency to grant inter

partes review in any circumstance, but it identifies certain circumstances in which the agency may not institute such review. See Cuozzo, 136 S. Ct. at 2137, 2140.

The USPTO may not institute review unless the agency

determines that “there is a reasonable likelihood that

the petitioner would prevail with respect to at least 1 of

the claims challenged in the petition.” 35 U.S.C. 314(a).

Inter partes review also “may not be instituted” if

(1) “before the date on which the petition for such a review is filed, the petitioner or real party in interest filed

The AIA introduced an additional mechanism for reconsidering

the patentability of claims for “covered business method[s].” AIA

§ 18, 125 Stat. 329-331 (capitalization omitted). Covered-businessmethod (CBM) review proceedings generally “employ the standards

and procedures of [] a post-grant review,” § 18(a)(1), 125 Stat. 329,

but a party may f ile a petition for CBM review at any time during

the term of the patent, see § 18(a)(1)(A), 125 Stat. 329. The CBMreview program is scheduled to expire on September 16, 2020. See

§ 18(a)(3)(A), 125 Stat. 330; 77 Fed. Reg. 48,680, 48,687 (Aug. 14,

2012).

1

4

a civil action challenging the validity of a claim of the

patent”; or (2) “the petition requesting the proceeding

is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner

is served with a complaint alleging infringement of the

patent.” 35 U.S.C. 315(a)(1)-(b). The determination

“whether to institute an inter partes review” is “final

and nonappealable.” 35 U.S.C. 314(d).

If the USPTO elects to institute inter partes review,

the Board conducts a trial-like proceeding to determine

the patentability of the claims at issue. See 35 U.S.C.

316; 37 C.F.R. Pt. 42, Subpt. A. During this second

phase, both parties are entitled to take limited discovery, 35 U.S.C. 316(a)(5); to file affidavits and declarations, 35 U.S.C. 316(a)(8); to request an oral hearing,

35 U.S.C. 316(a)(10); and to file written memoranda,

35 U.S.C. 316(a)(8) and (13). At the end of the proceeding (unless the matter has been dismissed), the Board

must “issue a final written decision with respect to the

patentability of any patent claim challenged by the petitioner.” 35 U.S.C. 318(a). A party aggrieved by the

Board’s final written decision may appeal that decision

to the Federal Circuit. 35 U.S.C. 141(c), 319.

2. In September 2015, respondent ChanBond, LLC

sued several telecommunications companies in federal

district court, alleging infringement of U.S. Patent Nos.

7,941,822, 8,341,679, and 8,984,565. Pet. App. 2a. In February 2018, petitioner filed five petitions requesting that

the Board institute inter partes review of various claims

in the same three patents owned by ChanBond. Ibid.

The Board declined to institute inter partes review.

Pet. App. 5a-30a, 31a-55a, 56a-80a, 81a-105a, 106a-130a. 2

The Board offered substantially identical explanations for its denial of each of petitioner’s f ive inter partes review petitions. For

2

5

The Board determined in each case that Section 315(b)

barred institution of inter partes review because “the

petition requesting the proceeding [wa]s filed more

than 1 year after the date on which the petitioner, real

party in interest, or privy of the petitioner [wa]s served

with a complaint alleging infringement of the patent.”

35 U.S.C. 315(b); see, e.g., Pet. App. 6a-7a. The Board

found that, although petitioner was not a named defendant in the earlier-filed litigation, it was “the supplier for

at least one of the allegedly infringing products” and

had entered into indemnification agreements that gave

it “ ‘sole control’ ” of at least some defendants’ defenses.

Pet. App. 18a-19a (citation and emphasis omitted). The

Board determined that petitioner’s relationship with

the defendants in that litigation was thus “ ‘sufficiently

close’ ” to create “a privity relationship.” Id. at 11a

(citation omitted). Because “those defendants were

served with a complaint[] * * * alleging infringement

* * * more than one year prior to the filing of the instant [p]etition[s]” for inter partes review, the Board

concluded that the petitions were “time-barred under

§ 315(b).” Id. at 24a.

3. Petitioner appealed all five of the Board’s noninstitution decisions to the Federal Circuit, and the

court consolidated the appeals. Pet. App. 1a. Respondent ChanBond moved to dismiss, and the Director of the

USPTO intervened under 35 U.S.C. 143 to support dismissal. Pet. App. 2a. In an unpublished order, the court

of appeals dismissed petitioner’s appeal for lack of jurisdiction. Id. at 1a-4a.

Relying on its earlier decision in St. Jude Medical,

Cardiology Division, Inc. v. Volcano Corp., 749 F.3d

ease of reference, we cite only to the Board’s resolution of case number IPR2018-570. Pet. App. 5a-30a.

6

1373 (2014), the Federal Circuit held that “a ‘determination * * * whether to institute’ [an inter partes review] proceeding” is not a “ ‘final written decision’ ” under Section 318(a), and that the court’s “review authority under 28 U.S.C. 1295(a)(4)(A) does not extend to appeals from decisions not to institute.” Pet. App. 3a (citation omitted). The court distinguished its recent en

banc decision in Wi-Fi One, LLC v. Broadcom Corp.,

878 F.3d 1364 (Fed. Cir. 2018), in which the court had

reviewed the Board’s Section 315(b) determination on

appeal from the Board’s final written decision. The

court explained that, unlike in this case, the Board decision that was appealed in Wi-Fi One was “not a decision denying institution.” Pet. App. 3a. The court distinguished Arthrex, Inc. v. Smith & Nephew, Inc.,

880 F.3d 1345 (Fed. Cir. 2018), on similar grounds, explaining that “[f ]ar from review over a non-institution

decision, Arthrex concerned the issue of whether a

party could appeal from a final adverse judgment entered under 37 C.F.R. § 42.73(b).” Pet. App. 3a-4a.

4. The court of appeals denied rehearing en banc

without noted dissent. Pet. App. 131a-132a.

ARGUMENT

Petitioner contends (Pet. 16-27) that a USPTO decision declining to institute inter partes review based on

the time bar in Section 315(b) is appealable to the Federal Circuit. Under the AIA, however, it is “the final

written decision of the [Board] under section 318(a)”

that is subject to judicial review. 35 U.S.C. 319. And

under Section 318(a), the Board issues a “final written

decision” only “[i]f an inter partes review is instituted

and not dismissed.” 35 U.S.C. 318(a). The Federal Circuit thus correctly dismissed petitioner’s appeals of the

7

Board’s determinations not to institute inter partes review in this case. Further review is not warranted.

1. a. The Federal Circuit correctly dismissed petitioner’s appeals of the USPTO’s decisions declining to

institute inter partes review. Inter partes review proceeds in two phases—institution and trial. “A party dissatisfied with the final written decision of the [Board]

* * * may appeal the decision pursuant to sections 141

through 144.” 35 U.S.C. 319. Sections 141 through 144

establish the procedures for appeals from the USPTO

to the Federal Circuit, including the manner by which

such an appeal is initiated, that the Director of the

USPTO may participate, and that the record for review

is transmitted from the agency to the court of appeals.

35 U.S.C. 141-144. Section 141(c) reiterates that “[a]

party to an inter partes review * * * who is dissatisfied

with the final written decision of the [Board] under section 318(a) * * * may appeal the Board’s decision only

to the United States Court of Appeals for the Federal

Circuit.” 35 U.S.C. 141(c).

Section 318(a) in turn provides that, “[i]f an inter

partes review is instituted and not dismissed[,] * * *

the [Board] shall issue a final written decision with respect to the patentability” of the challenged patent

claims. 35 U.S.C. 318(a). A USPTO decision not to institute an inter partes review at the initial stage of the

process is not a “final written decision * * * under section 318(a),” 35 U.S.C. 319, and therefore is not appealable under Sections 319 and 141(c). “[T]he statutory

provisions addressing inter partes review contain no authorization to appeal a non-institution decision” to the

Federal Circuit or to any other court. St. Jude Med.,

Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373,

1375 (Fed. Cir. 2014). In addition, Section 314(d) states

8

that “[t]he determination by the Director whether to institute an inter partes review under this section shall be

final and nonappealable.” 35 U.S.C. 314(d).

b. Contrary to petitioner’s contention (Pet. 22-25),

28 U.S.C. 1295(a)(4)(A) does not independently provide

a right to appeal the Board’s non-institution decisions.

Section 1295 grants the Federal Circuit “exclusive jurisdiction” over an “appeal from a decision of * * * [the

Board] with respect to a patent application, derivation

proceeding, reexamination, post-grant review, or inter

partes review under title 35.” 28 U.S.C. 1295(a)(4)(A).

That provision addresses jurisdiction but does not confer a right to appeal. It “is most naturally read” to grant

the Federal Circuit exclusive jurisdiction over whatever

appeals are separately authorized by the Patent Act, including appeals of the Board’s final written decisions in

inter partes reviews as authorized by Sections 319 and

141(c). St. Jude, 749 F.3d at 1376; see GTNX, Inc. v.

INTTRA, Inc., 789 F.3d 1309, 1312 (Fed. Cir. 2015)

(concluding, in the context of covered-business-method

review, that a Board decision vacating an earlier institution decision was “outside 28 U.S.C. § 1295(a)(4)(A)”).

As explained above, no provision of the Patent Act authorizes an appeal of the USPTO’s decision not to institute an inter partes review.

Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345

(Fed. Cir. 2018), is not to the contrary. Arthrex did not

involve a non-institution decision. In that case, the patent owner responded to a petition for inter partes review by disclaiming all of the challenged patent claims.

Id. at 1347; see 35 U.S.C. 253(a). Rather than declining

to institute inter partes review under 37 C.F.R. 42.71(a)

on that basis, the Board entered a final judgment

9

against the patent owner under 37 C.F.R. 42.73. Arthrex, 880 F.3d at 1347. As a result, estoppel attached

to the Board’s decision, precluding the patent owner

“from taking action inconsistent with the adverse judgment” in its three pending patent continuation applications. Ibid. (citation omitted).

The Federal Circuit held that, at least taken together, Section 1295 and the Administrative Procedure

Act (APA), 5 U.S.C. 701 et seq., gave the patent owner a

right to appeal “a final decision that disposes of an [inter

partes review] proceeding in the form of an adverse

judgment.” Arthrex, 880 F.3d at 1349; see id. at 1348 n.1

(“We need not decide whether the right to appeal comes

directly from § 1295 or in conjunction with § 704 of the

APA.”); see 5 U.S.C. 701-706 (conferring a right to judicial review to persons aggrieved by certain final agency

actions). The court distinguished St. Jude on the ground

that St. Jude “did not involve a similar situation” and did

not address “the availability of appeal of final adverse

judgment decisions.” Arthrex, 880 F.3d at 1349.

c. Petitioner contends that the APA similarly supplies “a cause of action * * * to challenge the Director’s

discretionary decision” against instituting inter partes

review. Pet. 27. That argument lacks merit. The APA’s

cause of action does not apply to the extent that an

agency action is “committed to agency discretion by

law,” 5 U.S.C. 701(a)(2), and the USPTO’s “decision

to deny a petition [for inter partes review] is a matter

committed to [its] discretion.” Cuozzo Speed Techs.,

LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (citing 5 U.S.C.

701(a)(2)).

For purposes of Section 701(a)(2), it is irrelevant that

the Board’s decision not to institute review in this case

was based on its determination that Section 315(b)

10

barred institution, rather than on an avowed exercise of

agency discretion. The AIA contains “no mandate to

institute review” under any circumstances. Cuozzo,

136 S. Ct. at 2140. And where a type of action is “committed to agency discretion” under Section 701(a)(2), an

agency’s stated reasons for taking that action cannot

make it reviewable. “[I]t is the [agency’s] formal action,

rather than its discussion, that is dispositive.” ICC v.

Brotherhood of Locomotive Eng’rs, 482 U.S. 270, 281

(1987); see id. at 283 (rejecting “the principle that if the

agency gives a ‘reviewable’ reason for otherwise unreviewable action, the action becomes reviewable”).

Contrary to petitioner’s assertion (Pet. 26), Weyerhaeuser Co. v. United States Fish & Wildlife Service,

139 S. Ct. 361 (2018), does not stand for the proposition

that an agency action “committed to agency discretion”

is nevertheless reviewable under the APA. In Weyerhaeuser, this Court considered whether an agency’s decision to designate or exclude certain lands as “critical

habitat” under the Endangered Species Act was committed to agency discretion and therefore unreviewable.

See id. at 369-372. The Court noted the “tension” between Section 701(a)(2)’s command that the APA does

not apply to agency actions “committed to agency discretion by law,” and Section 706(2)(A)’s authorization

for courts to set aside agency action that is “an abuse of

discretion.” Id. at 370 (citations omitted). It observed

that, in order “[t]o give effect to § 706(2)(A),” the Court

has “read the exception in § 701(a)(2) quite narrowly,”

rather than as covering every case in which an agency

possesses some discretion whether to take the challenged action. Ibid.

11

The Weyerhaeuser Court concluded that the Secretary’s critical-habitat determination was not “committed to agency discretion by law” under Section 701(a)(2).

139 S. Ct. 370-372 (citation omitted). The Court explained that a critical-habitat determination was the

sort of agency action “affecting the rights of a private

party” that has traditionally been regarded as reviewable. Id. at 370. And it observed that, although the Secretary possessed some discretion in determining

whether to exclude certain area from a critical-habitat

designation, the statute “mandated * * * the Secretary

to consider the economic and other impacts of designation when making his exclusion decisions.” Id. at 371.

The Court concluded on that basis that the decision was

not “committed to agency discretion by law” within the

meaning of Section 701(a)(2), and therefore was reviewable under the APA. Id. at 370-371 (citation omitted).

Non-institution decisions do not carry similar effects

for the rights of private parties. In contrast with a final

written decision, the USPTO’s decision not to institute

an inter partes review leaves the petitioner with the

same ways to challenge the validity of a patent—such as

petitioning for ex parte reexamination by the agency,

seeking a declaratory judgment from a district court, or

asserting unpatentability as an affirmative defense in a

patent-infringement suit—that were available before the

non-institution decision was made. Indeed, although

petitioner makes several passing references to “estoppels that follow a petitioner,” e.g., Pet. 16, under the

AIA estoppel flows from only those inter partes review

proceedings that “result[] in a final written decision under section 318(a).” 35 U.S.C. 315(e). Although other

adjudicatory bodies sometimes may choose to rely on a

USPTO non-institution order as persuasive authority,

12

administrative proceedings have preclusive effect only

“if the ordinary elements of issue preclusion are met,”

including that the issue “ ‘is actually litigated and determined by a valid and final judgment.’ ” B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1299,

1303 (2015) (quoting Restatement (Second) of Judgments § 27, at 250 (1982)). Weyerhaeuser thus provides

no basis to question this Court’s earlier conclusion that

non-institution decisions are committed to agency discretion by law. See Cuozzo, 136 S. Ct. at 2140 (citing

5 U.S.C. 701(a)(2)). 3

2. Properly construed, Section 314(d) of Title 35 provides an independent basis for the Federal Circuit’s dismissal of petitioner’s appeal. Section 314(d) states that

“[t]he determination by the Director whether to institute an inter partes review under this section shall be

final and nonappealable.” 35 U.S.C. 314(d). Section

314—i.e., “this section”—provides the only authority

under which the Director “shall determine whether to

institute an inter partes review.” 35 U.S.C. 314(b); see

SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018).

Petitioner has no legal entitlement to inter partes review under

any circumstances, see Cuozzo, 136 S. Ct. at 2140, and the USPTO’s

determination not to initiate a review did not deprive it of any cognizable property or liberty right. There is consequently no merit to

petitioner’s assertions (Pet. i, 3, 14, 16, 19, 21, 28) that it has been

denied due process. See Mathews v. Eldridge, 424 U.S. 319, 332

(1976) (“Procedural due process imposes constraints on governmental decisions which deprive individuals of ‘liberty’ or ‘property’ interests within the meaning of the Due Process Clause of the Fifth

or Fourteenth Amendment.”). In any event, petitioner did not raise

any due process argument in the Federal Circuit until its petition

for rehearing en banc, and the court below did not address the issue

in the unpublished decision of which petitioner seeks review.

3

13

Section 315(b) speaks directly and exclusively to the Director’s institution decision, providing that “[a]n inter

partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after

the date on which the petitioner, real party in interest,

or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. 315(b)

(emphasis added). Accordingly, the USPTO’s decisions

not to institute inter partes reviews at petitioner’s behest are “not appealable” because “that is what § 314(d)

says.” Cuozzo, 136 S. Ct. at 2139.

As petitioner observes (Pet. 18), the Federal Circuit

has held that Section 314(d) does not preclude that

court from considering, on an appeal from the USPTO’s

final written decision addressing the merits of the parties’ patentability dispute, whether Section 315(b)

should have barred the institution of that inter partes

review. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d

1364, 1374 (Fed. Cir. 2018). In Thryv, Inc., f ka Dex Media , Inc. v. Click-to-Call Technologies, LP, cert. granted,

No. 18-916 (June 24, 2019), the Court has granted review to consider that question. The government has

filed a brief in Thryv, disagreeing with the Wi-Fi One

court’s determination. Briefing in Thryv is complete,

and the Court has scheduled oral argument for December 9, 2019.

If this Court concludes in Thryv that Section 314(d)

precludes judicial review of the USPTO’s Section 315(b)

determinations on appeal from a final written decision,

that holding would provide an additional ground for

concluding that the Federal Circuit lacked jurisdiction

to review petitioner’s challenges to the USPTO’s noninstitution decisions here. But even if this Court renders a contrary holding in Thryv, its decision is unlikely

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to cast doubt on the Federal Circuit’s dismissal of petitioner’s appeals. The question in Thryv is whether, in

exercising its jurisdiction to review the Board’s final

written decision on the merits of patentability, the court

of appeals can consider the patent holder’s contention

that Section 315(b) barred the review. Here, by contrast, the Board never issued an appealable final written decision because the USPTO declined to institute

the requested review.

Because the Board never issued a final written decision, this case (unlike Thryv) does not present any questions concerning the scope of the Federal Circuit’s review authority under Section 319. And as explained

above, the Federal Circuit’s decision in this case rests

on the independent ground that no provision in the AIA

or the APA affirmatively authorizes judicial review of

the USPTO’s non-institution decision. Dismissal of the

appeals on that ground was correct, regardless of

whether or how Section 314(d) applies to Section 315(b)

determinations. There is accordingly no need for the

Court to hold the petition in this case pending the

Court’s disposition of Thryv.

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted.

NOEL J. FRANCISCO

Solicitor General

JOSEPH H. HUNT

Assistant Attorney General

MELISSA N. PATTERSON

SARAH E. WEINER

Attorneys

DECEMBER 2019