Opposition Brief — Comcast Cable Communications, LLC, Petitioner v. Promptu Systems Corporation, et al.

No. 20-1220

In the Supreme Court of the United States

COMCAST CABLE COMMUNICATIONS, LLC, PETITIONER

v.

PROMPTU SYSTEMS CORPORATION, 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

ELIZABETH B. PRELOGAR

Acting Solicitor General

Counsel of Record

BRIAN M. BOYNTON

Acting Assistant Attorney

General

SCOTT R. MCINTOSH

COURTNEY L. DIXON

Attorneys

Department of Justice

Washington, D.C. 20530-0001

SupremeCtBriefs@usdoj.gov

(202) 514-2217

QUESTION PRESENTED

Whether the court of appeals appropriately declined to

consider a constitutional challenge to the manner in which

the judges of the Patent Trial and Appeal Board (Board)

are appointed, where petitioner asked the Board to institute inter partes review proceedings and did not challenge

the judges’ appointment until after the Board issued its

adverse decision.

(I)

TABLE OF CONTENTS

Page

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

Jurisdiction .................................................................................... 2

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

Argument....................................................................................... 7

Conclusion ............................................................................... 15

TABLE OF AUTHORITIES

Cases:

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

941 F.3d 1320 (2019), cert. granted,

141 S. Ct. 549, and 141 S. Ct. 551 (2020) ........ 3, 4, 7, 9

141 S. Ct. 549.................................................................... 12

Carr v. Saul, No. 19-1442 (Apr. 22, 2021) ............................. 9

Caterpillar Inc. v. Wirtgen Am., Inc.,

No. 2019-2206 (Fed. Cir. Jan. 29, 2020) ......................... 10

Ciena Corp. v. Oyster Optics, LLC,

958 F.3d 1157 (Fed. Cir. 2020) ........................ 6, 10, 11, 13

Commodity Futures Trading Comm’n v. Schor,

478 U.S. 833 (1986)........................................................ 10, 11

Cuozzo Speed Techs., LLC v. Lee,

136 S. Ct. 2131 (2016) ........................................................... 3

Free Enterprise Fund v. Public Co. Accounting

Oversight Bd., 561 U.S. 477 (2010) .................................... 3

Freytag v. Commissioner, 501 U.S. 868 (1991) .......... 8, 9, 11

Hormel v. Helvering, 312 U.S. 552 (1941) ....................... 8, 9

Hytera Commc’ns Co. v. Motorola Solutions, Inc.,

No. 2019-2124 (Fed. Cir. Jan. 30, 2020) ......................... 10

McCarthy v. Madigan, 503 U.S. 140 (1992) ........................ 8

Palo Alto Networks, Inc. v. Finjan, Inc.,

836 Fed. Appx. 916 (Fed. Cir. 2020) ................................ 10

SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) ................... 3

(III)

IV

Cases—Continued:

Page

Sierra Wireless, Inc. v. Koninklijke KPN N.V.,

No. 2019-2082 (Fed. Cir. Jan. 29, 2020) ......................... 10

Stern v. Marshall, 564 U.S. 462 (2011) ............................. 13

Unemployment Comp. Comm’n v. Aragon,

329 U.S. 143 (1946) ............................................................ 8

Union Pac. R.R. v. Brotherhood of Locomotive

Eng’rs & Trainmen Gen. Comm. of Adjustment,

558 U.S. 67 (2009) ............................................................ 12

United States v. Arthrex, Inc., 141 S. Ct. 549 (2020) ...... 12

United States v. L. A. Tucker Truck Lines, Inc.,

344 U.S. 33 (1952) .............................................................. 8

Woodford v. Ngo, 548 U.S. 81 (2006) .................................... 8

Constitution, statutes, regulations, and rule:

U.S. Const. Art. II, § 2, Cl. 2 .................................................. 3

Appointments Clause ............................................. passim

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

35 U.S.C. 1(a) ..................................................................... 2

35 U.S.C. 2(a)(1)................................................................. 2

35 U.S.C. 3(c) .................................................................. 2

35 U.S.C. 6 ......................................................................... 2

35 U.S.C. 6(a)................................................................. 2, 4

35 U.S.C. 6(c) .................................................................. 3

35 U.S.C. 141(c) .............................................................. 3

35 U.S.C. 142 .................................................................. 6

35 U.S.C. 144 .................................................................. 3

35 U.S.C. 316 ..................................................................... 3

35 U.S.C. 318(a)................................................................. 3

35 U.S.C. 319 ..................................................................... 3

5 U.S.C. 7513(a) ....................................................... 3, 4, 5, 12

5 U.S.C. 7543(a) ....................................................................... 3

V

Regulations and rule—Continued:

Page

5 C.F.R. Pt. 359 ........................................................................ 3

37 C.F.R. Pt. 42, Subpt. A ................................................... 3

Sup. Ct. R. 10 ......................................................................... 12

Miscellaneous:

83 Fed. Reg. 29,312 (June 22, 2018) ....................................... 3

In the Supreme Court of the United States

No. 20-1220

COMCAST CABLE COMMUNICATIONS, LLC, PETITIONER

v.

PROMPTU SYSTEMS CORPORATION, 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 opinion of the court of appeals in No. 2019-1947

(Pet. App. 1a-6a) is not published in the Federal Reporter but is reprinted at 838 Fed. Appx. 555. The final

written decisions of the Patent Trial and Appeal Board

(Pet. App. 16a-61a, 62a-101a) are not published in the

United States Patent Quarterly but are available at

2019 WL 1423154 and 2019 WL 1423155.

The opinion of the court of appeals in No. 2019-2287

(Pet. App. 7a-15a) is not published in the Federal Reporter but is reprinted at 838 Fed. Appx. 551. The final

written decisions of the Patent Trial and Appeal Board

(Pet. App. 102a-141a, 142a-182a) are not published in

the United States Patent Quarterly but are available at

2019 WL 2714487 and 2019 WL 2714488.

(1)

2

JURISDICTION

The judgments of the court of appeals in these cases

were entered on January 4, 2021. A petition for rehearing in No. 2019-2287 was denied on February 2, 2021.

The petition for a writ of certiorari was filed on February 26, 2021. The jurisdiction of this Court is invoked

under 28 U.S.C. 1254(1).

STATEMENT

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

et seq., establishes the United States Patent and Trademark Office (USPTO) as an executive agency within the

United States Department of Commerce “responsible

for the granting and issuing of patents and the registration of trademarks.” 35 U.S.C. 2(a)(1); see 35 U.S.C.

1(a). The Patent Trial and Appeal Board (Board) is an

administrative tribunal within the USPTO consisting of

the Director, the Deputy Director, the Commissioners

for Patents and Trademarks, and “administrative patent judges.” 35 U.S.C. 6(a). The Board conducts several kinds of patent-related administrative adjudications, including appeals from adverse decisions of patent examiners; derivation proceedings; and inter partes

and post-grant reviews. See 35 U.S.C. 6.

Administrative patent judges, of whom there are

currently more than 250, are “persons of competent legal knowledge and scientific ability who are appointed

by the Secretary [of Commerce], in consultation with

the Director.” 35 U.S.C. 6(a). Like other “[o]fficers and

employees” of the USPTO, most administrative patent

judges are “subject to the provisions of title 5, relating

to Federal employees.” 35 U.S.C. 3(c). Under those

provisions, members of the civil service may be removed

“only for such cause as will promote the efficiency of the

3

service.” 5 U.S.C. 7513(a). * Because the Secretary appoints the judges, that removal authority belongs to the

Secretary. See Free Enterprise Fund v. Public Co. Accounting Oversight Bd., 561 U.S. 477, 509 (2010).

These cases arise out of inter partes review proceedings conducted by the Board. Inter partes review allows third parties to “ask the [USPTO] to reexamine the

claims in an already-issued patent and to cancel any

claim that the agency finds to be unpatentable.” Cuozzo

Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2136 (2016).

When an inter partes review is instituted, the Board determines the patentability of the claims at issue through

a proceeding that has “many of the usual trappings of

litigation.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,

1353-1354 (2018); see 35 U.S.C. 316; 37 C.F.R. Pt. 42,

Subpt. A. At the conclusion of the proceedings, the Board

issues a final written decision addressing the patentability of the challenged claims, 35 U.S.C. 318(a), which

is subject to rehearing by the Board, 35 U.S.C. 6(c). The

Board’s final written decisions may be appealed to the

Federal Circuit. 35 U.S.C. 319; see 35 U.S.C. 141(c), 144.

2. a. In Arthrex, Inc. v. Smith & Nephew, Inc.,

941 F.3d 1320 (2019), cert. granted, 141 S. Ct. 549, and

141 S. Ct. 551 (2020), the Federal Circuit held that, for

purposes of the Appointments Clause, U.S. Const. Art.

II, § 2, Cl. 2, administrative patent judges are principal

officers who must be appointed by the President with the

advice and consent of the Senate. 941 F.3d at 1327-1335.

A small subset of administrative patent judges serve as members of the Senior Executive Service, see 83 Fed. Reg. 29,312, 29,324

(June 22, 2018), and therefore are subject to removal “for misconduct, neglect of duty, malfeasance, or failure to accept a directed

reassignment or to accompany a position in a transfer of function,”

5 U.S.C. 7543(a); see 5 C.F.R. Pt. 359.

*

4

The court therefore held that the statutorily prescribed

method of appointing administrative patent judges—by

the Secretary of Commerce acting alone—violates the

Appointments Clause. Ibid.; see 35 U.S.C. 6(a).

To cure the putative constitutional defect that it

identified, the Arthrex court held that the restrictions

on removal imposed by Section 7513(a) cannot validly

be applied to administrative patent judges, and that the

application of those restrictions should be severed so

that the judges are removable at will. 941 F.3d at 13351338. “Because the Board’s decision in [Arthrex] was

made by a panel of [administrative patent judges] that

were not constitutionally appointed at the time the decision was rendered,” the court vacated the Board’s decision, remanded for “a new hearing” before the Board,

and directed “that a new panel of [administrative patent

judges] must be designated to hear the [proceeding]

anew on remand.” Id. at 1338, 1340; see id. at 1338-1340.

The patent owner in Arthrex raised its Appointments Clause challenge for the first time in its opening

brief in the court of appeals. The court recognized that,

as a general rule, “a federal appellate court does not

consider an issue not passed upon below.” Arthrex, 941

F.3d at 1326 (citation omitted). The court concluded,

however, that despite “Arthrex’s failure to raise its Appointments Clause challenge before the Board,” resolving the constitutional issue in that case was “an appropriate use of [the court’s] discretion.” Id. at 1326-1327.

The court explained that the issue implicated “important structural interests and [the] separation of powers,” and it concluded that “[t]imely resolution [wa]s

critical to providing certainty to rights holders and competitors alike.” Ibid.

5

b. On October 13, 2020, this Court granted the government’s petition for a writ of certiorari seeking review of the Federal Circuit’s Arthrex decision, as well

as two additional petitions filed by the private parties in

Arthrex. See United States v. Arthrex, Inc., No. 19-1434

(argued Mar. 1, 2021); Smith & Nephew, Inc. v. Arthrex,

Inc., No. 19-1452 (argued Mar. 1, 2021); Arthrex, Inc. v.

Smith & Nephew, Inc., No. 19-1458 (argued Mar. 1, 2021).

The Court granted certiorari to consider (1) whether

administrative patent judges are principal or inferior

officers for purposes of the Appointments Clause; and

(2) whether, if administrative patent judges are principal officers, the Federal Circuit properly cured any Appointments Clause defect by severing the application of

Section 7513(a) to those judges.

3. a. In 2016, petitioner was sued for infringing two

patents—U.S. Patent No. 7,260,538 (the ’538 patent)

and U.S. Patent No. 7,047,196 (the ’196 patent)—owned

by respondent Promptu Systems Corporation. See

Compl. ¶ 1(a), Promptu v. Comcast, No. 16-cv-6516

(E.D. Pa. Dec. 19, 2016). In 2017, petitioner filed a petition for inter partes review of both patents. Pet. App.

3a, 11a. The Board granted the petitions and instituted

review. Ibid. On petitioner’s request, the infringement

litigation was stayed pending a Board decision. See Order, Promptu v. Comcast, No. 16-cv-6516 (E.D. Pa. Aug.

13, 2019) (D. Ct. Doc. 195).

At no point during the agency proceedings did petitioner raise any constitutional objection to the appointment of the Board’s administrative patent judges. At

the conclusion of the administrative proceedings, the

Board issued final written decisions confirming the patentability of all of the claims on review. Pet. App. 17a,

63a, 103a, 143a.

6

b. Petitioner appealed the Board’s final written decisions to the Federal Circuit. In its opening briefs, petitioner principally argued that the Board’s resolution

of the inter partes review proceedings was erroneous,

and that the Board should have found the challenged

claims unpatentable. See 2019-1947 Pet. C.A. Br. 28-66;

2019-2287 Pet. C.A. Br. 26-66. In a paragraph at the

end of each opening brief, however, petitioner argued

that, under Arthrex, it was “constitutionally entitled to

a ‘new hearing’ before a ‘new panel of [administrative

patent judges].’ ” 2019-1947 Pet. C.A. Br. 66 (citation

omitted); 2019-2287 Pet. C.A. Br. 65 (citation omitted).

In neither case did petitioner clearly request a new

hearing. Petitioner contended, however, that by asserting its entitlement to such a hearing, it had “adequately

preserved the constitutional issue.” Ibid.

In both cases, the Federal Circuit notified the

USPTO that petitioner had raised a constitutional challenge to the Patent Act. See 35 U.S.C. 142. The USPTO

Director intervened in both cases, arguing that petitioner had forfeited its Appointments Clause challenge

since petitioner had urged the Board to institute the inter partes review proceedings and had not challenged

the Board judges’ appointments at any point during

those proceedings. See 2019-1947 Gov’t C.A. Corrected

Br. 6 (citing Ciena Corp. v. Oyster Optics, LLC, 958 F.3d

1157 (Fed. Cir. 2020)); 2019-2287 Gov’t C.A. Corrected

Br. 6 (citing Ciena Corp., supra).

c. In No. 2019-1947, the Federal Circuit affirmed

the Board’s decisions with respect to the ’538 patent.

Pet. App. 1a-6a. The court held that the Board had not

erred in construing the challenged patent claims, and

that the Board’s factual findings were based on substantial evidence in the record. See id. at 2a-6a. The court

7

further explained that it had “considered [petitioner’s]

remaining arguments” and found “them unpersuasive.”

Id. at 6a.

In No. 2019-2287, with respect to the ’196 patent, the

Federal Circuit affirmed in part, vacated in part, and

remanded. Pet. App. 7a-15a. The court agreed with petitioner that the Board had erred in construing one of

the challenged patent claims, and it therefore “vacate[d] and remand[ed] for the Board to consider the

parties’ arguments under the correct construction.”

See id. at 14a-15a. The court rejected petitioner’s other

arguments with respect to the Board’s claim construction. Id. at 12a-13a. And the court again noted that it

had “considered [petitioner’s] remaining arguments”

and found “them unpersuasive.” Id. at 13a.

ARGUMENT

Petitioner contends (Pet. 6) that this petition should

be held pending the Court’s resolution of United States

v. Arthrex, No. 19-1434 (argued Mar. 1, 2021), on the

ground that the Court’s decision in that case may affect

the proper disposition here. Petitioner notes that it

“has taken the position in other cases that Arthrex[, Inc.

v. Smith & Nephew, Inc., 941 F.3d 1320 (2019), cert.

granted, 141 S. Ct. 549, and 141 S. Ct. 551 (2020)] was

wrongly decided by the Federal Circuit.” Pet. 7. Petitioner argues (Pet. 6-7), however, that if this Court affirms the Federal Circuit’s Appointments Clause ruling

in Arthrex, the Court should vacate the Federal Circuit’s judgment in these cases and remand for new hearings before the Board. That argument is unsound.

The court of appeals’ decisions in these cases were

issued after the Federal Circuit’s decision in Arthrex,

and the court neither relied on nor disavowed any aspect of the Arthrex decision. The court merely declined

8

to vacate the Board decisions based on petitioner’s forfeited Arthrex challenge. As petitioner recognizes (Pet.

7-8), the Federal Circuit has repeatedly refused to excuse parties’ forfeitures in similar circumstances. And

there is no reason to suppose that this Court’s disposition of Arthrex, which does not present any question of

forfeiture, will cast doubt on the result here. The petition for a writ of certiorari should be denied.

1. a. This Court has long recognized that “[s]imple

fairness to those who are engaged in the tasks of administration, and to litigants, requires as a general rule that

courts should not topple over administrative decisions

unless the administrative body not only has erred but

has erred against objection made at the time appropriate under its practice.” United States v. L. A. Tucker

Truck Lines, Inc., 344 U.S. 33, 37 (1952); see, e.g.,

Woodford v. Ngo, 548 U.S. 81, 90 (2006); McCarthy v.

Madigan, 503 U.S. 140, 144-145 (1992); Unemployment

Comp. Comm’n v. Aragon, 329 U.S. 143, 154-155 (1946);

Hormel v. Helvering, 312 U.S. 552, 556-557 (1941). That

general rule protects agency authority by giving the

agency an opportunity to address a party’s claim “before it is haled into federal court.” Ngo, 548 U.S. at 89

(citation omitted). It promotes efficiency by allowing a

party’s claim to be addressed at the administrative

level, potentially rendering judicial proceedings unnecessary. McCarthy, 503 U.S. at 145. And it discourages

“sandbagging,” Freytag v. Commissioner, 501 U.S. 868,

895 (1991) (Scalia, J., concurring in part and concurring

in the judgment), whereby a party strategically encourages an agency to pursue one course, but then seeks “at

the last possible moment to undo the administrative

proceedings” if the outcome is unfavorable. L. A. Tucker

Truck Lines, 344 U.S. at 36.

9

Notwithstanding the general rule, “exceptional cases

or particular circumstances” may arise “which will

prompt a reviewing or appellate court, where injustice

might otherwise result, to consider questions of law

which were neither pressed nor passed upon by the

* * * administrative agency below.” Helvering, 312

U.S. at 557; see, e.g., Carr v. Saul, No. 19-1442 (Apr. 22,

2021), slip op. 12 (holding that, inter alia, the “inquisitorial features” of Social Security proceedings justified

excusing beneficiaries from raising Appointments

Clause questions before the agency). In those “rare

cases,” a court may “exercise [its] discretion” to hear

challenges not raised before the administrative tribunal. Freytag, 501 U.S. at 879.

In Arthrex, the Federal Circuit found it “appropriate

for th[e] court to exercise its discretion to decide the

Appointments Clause challenge” to the appointment of

administrative patent judges, even though the appellant

in the case had raised that challenge for the first time in

the court of appeals. 941 F.3d at 1327. The court recognized that the appellant’s failure to raise the issue before the Board would ordinarily preclude the court’s consideration of the issue on appeal. See id. at 1326-1327.

The court concluded, however, that the Appointments

Clause issue was one of “exceptional importance” and

that “[t]imely resolution” of it was “critical.” Id. at 1327.

b. Since resolving Arthrex, the Federal Circuit has

vacated and remanded for new hearings in many other

cases where litigants have raised Appointments Clause

challenges for the first time on appeals from final written decisions issued by the Board. See, e.g., Pet. App.

at 1a-23a, Iancu v. Fall Line Patents, LLC, No. 20-853

(Dec. 23, 2020); Pet. App. at 70a-84a, Iancu v. Luoma,

No. 20-74 (July 23, 2020). But the Federal Circuit has

10

not invariably excused litigants’ failures to raise their

Appointments Clause challenges during the agency proceedings. In particular, the court has declined to entertain Appointments Clause challenges raised for the first

time on appeal when (as here) the party seeking to raise

the challenge was the petitioner in the Board proceedings. See Ciena Corp. v. Oyster Optics, LLC, 958 F.3d

1157, 1159-1162 (Fed. Cir. 2020); see also, e.g., Palo Alto

Networks, Inc. v. Finjan, Inc., 836 Fed. Appx. 916, 917

n.2 (Fed. Cir. 2020); Hytera Commc’ns Co. v. Motorola

Solutions, Inc., No. 2019-2124 (Fed. Cir. Jan. 30, 2020);

Caterpillar Inc. v. Wirtgen Am., Inc., No. 2019-2206 (Fed.

Cir. Jan. 29, 2020); Sierra Wireless, Inc. v. Koninklijke

KPN N.V., No. 2019-2082 (Fed. Cir. Jan. 29, 2020).

In Ciena, the Federal Circuit observed that, “[w]hile

the presence of a structural separation of powers issue

can justify considering a matter in the face of a clear

waiver or forfeiture, it does not compel it.” 958 F.3d at

1161. The court of appeals explained that, “[h]aving forgiven forfeiture in Arthrex” to consider the Appointments Clause question presented there, the court “remain[ed] free to exercise [its] discretion to impose

standard principles of waiver in other cases raising the

same challenge.” Ibid. The court further explained

that, when the party that seeks to challenge the Board

members’ appointments is the petitioner that previously invoked the Board’s jurisdiction by requesting inter partes review, the court would exercise its discretion

not to reach the forfeited claim. Ibid. “Where the decision to invoke a forum ‘is left entirely to the parties,’ ”

the court explained, “ ‘separation of powers concerns

are diminished.’ ” Ibid. (quoting Commodity Futures

Trading Comm’n v. Schor, 478 U.S. 833, 855 (1986)).

And where an inter partes review petitioner “not only

11

consented to adjudication by the Board, but * * * affirmatively sought to delay any consideration of its patent challenges by seeking a stay of the district court

litigation initiated by [the patent owner],” “[a]ny constitutional concern regarding the appointment of the

Board judges” is “negated by [the petitioner’s] forfeiture.” Id. at 1162.

As the government argued below, the Federal Circuit’s decision in Ciena fully supports enforcing petitioner’s forfeiture in these cases. As in Ciena, petitioner initiated the Board proceedings about which it

now complains, in an effort to have Promptu’s patents

declared unpatentable. Pet. App. 3a, 11a. As in Ciena,

petitioner not only initiated those proceedings, but “affirmatively sought to delay any consideration of its patent challenges by seeking a stay of the district court

litigation initiated by” the patent owner. Ciena, 958

F.3d at 1162; see p. 5, supra. And as in Ciena, petitioner

then failed to raise any challenge to the appointment of

the administrative patent judges that comprised the

Board panels that heard these proceedings until after

petitioner had lost before the Board. See Freytag, 501

U.S. at 895 (Scalia, J., concurring in part and concurring

in the judgment) (explaining that forfeiture principles

are intended to prevent a party from “suggesting” that

a tribunal “pursue a certain course, and later—if the

outcome is unfavorable—claiming that the course followed was reversible error”).

2. Contrary to petitioner’s contention, there is no

reason to hold this case pending the Court’s disposition

of Arthrex. The Court granted certiorari in that case to

consider (1) whether administrative patent judges are

principal or inferior officers for purposes of the Appointments Clause; and (2) whether, if administrative

12

patent judges are principal officers, the Federal Circuit

properly cured any Appointments Clause defect by severing the application of 5 U.S.C. 7513(a) to those judges.

See United States v. Arthrex, Inc., 141 S. Ct. 549 (2020).

Although the government asked the Court also to consider the Federal Circuit’s forfeiture holding in Arthrex, the Court did not grant certiorari on that question. See ibid. As a result, even if this Court affirms

the Federal Circuit’s decision in Arthrex on the merits,

its decision will provide no basis to disturb the Federal

Circuit’s disposition of these cases. And as petitioner

acknowledges (Pet. 7), if the Court reverses the Federal

Circuit’s decision and concludes that the current

scheme for the appointment of administrative patent

judges is constitutional, there will likewise be no basis

for disturbing the decisions below here.

It is immaterial that the Federal Circuit did not cite

Ciena in the decisions below. See Pet. 7. This Court

may affirm a court of appeals’ decision on any ground

“appearing in the record,” Union Pac. R.R v. Brotherhood of Locomotive Eng’rs & Trainmen Gen. Comm. of

Adjustment, 558 U.S. 67, 80 (2009) (citation omitted). A

fortiori, the Court may decline on the same grounds to

exercise its discretionary authority to grant a writ of

certiorari. See generally Sup. Ct. R. 10. And even if

this Court vacated the decisions below based on the

court of appeals’ failure to cite its own binding precedent, petitioner identifies no reason to believe that the

Federal Circuit would do anything other than reissue

materially identical decisions, simply making its reliance on Ciena explicit. Holding this petition pending

the Court’s resolution of Arthrex thus would only delay

further proceedings and waste judicial resources.

13

3. Petitioner’s passing alternative suggestion (Pet.

6, 9) that the Court exercise plenary review in these

cases should likewise be rejected. Given petitioner’s

prior affirmative invocation of the Board’s jurisdiction,

the Federal Circuit acted well within its discretion in

refusing to excuse petitioner’s forfeiture of its Appointments Clause challenge during the agency proceedings.

See pp. 8-11, supra; see also Stern v. Marshall, 564 U.S.

462, 482 (2011) (“[The litigant] repeatedly stated to the

Bankruptcy Court that he was happy to litigate there.

We will not consider his claim to the contrary, now that

he is sad.”). If petitioner had legitimate concerns with

the appointment of the Board’s members, it “had a valid

alternative forum in which it could have challenged” the

validity of Promptu’s patents: namely, the district court

proceedings in which Promptu had sued petitioner for

patent infringement. Ciena Corp., 958 F.3d at 1161; see

Compl., Promptu v. Comcast, No. 16-cv-06516 (E.D. Pa.

Dec. 19, 2016). Plenary review on this question is especially unwarranted given the Court’s prior decision

(when granting certiorari in Arthrex) not to review the

Federal Circuit’s application of administrative-forfeiture

principles to the far more common circumstance where

a patent owner seeks to raise an Appointments Clause

challenge for the first time in the court of appeals.

Even if the Federal Circuit’s approach to forfeiture

of Appointments Clause claims otherwise warranted

this Court’s review, these cases would be an unsuitable

vehicle for clarifying that issue. As petitioner acknowledges (Pet. 7), it has “taken the position in other cases,”

including cases before this Court, “that Arthrex was

wrongly decided by the Federal Circuit.” See 20-92 Pet.

9 (“[B]ecause APJs are inferior Officers, their appoint-

14

ments by the Secretary of Commerce (a Head of Department) [are] entirely consonant with the Constitution.”). Petitioner’s arguments on forfeiture have been

similarly inconsistent. Compare Pet. 8 (“IPR petitioners have the same rights and remedies as patent owners.”), with 20-92 Pet. 9 (arguing that “[t]he court of appeals erred in Arthrex itself by excusing the patent

owner’s administrative forfeiture,” and that the court

“compounded that error in this case because, whatever

the circumstances in Arthrex itself, there [we]re no exceptional circumstances * * * that warrant[ed] excusing Promptu’s administrative forfeiture” before the

Board). And even in these cases, petitioner did not

clearly request a new hearing on the basis of the Federal Circuit’s decision in Arthrex. See, e.g., 19-1947 Pet.

C.A. Br. 66-67 (“[P]ursuant to this Court’s ruling in Arthrex, Comcast is constitutionally entitled to a ‘new

hearing’ before a ‘new panel of APJs.’ Comcast has adequately preserved the constitutional issue by presenting it in its opening brief.”) (citation omitted). Petitioner’s inconsistent and incomplete requests for relief

confirm the propriety of the Federal Circuit’s exercise

of discretion here, and make these cases an unsuitable

vehicle for considering the court’s treatment of forfeited Appointments Clause challenges in more typical

circumstances.

15

CONCLUSION

The petition for a writ of certiorari should be denied.

Respectfully submitted.

ELIZABETH B. PRELOGAR

Acting Solicitor General

BRIAN M. BOYNTON

Acting Assistant Attorney

General

SCOTT R. MCINTOSH

COURTNEY L. DIXON

Attorneys

MAY 2021