Amicus Curiae Brief — Lynk Labs, Inc., Petitioner v. Samsung Electronics Co., Ltd., et al.

No. 25-308

IN THE

Supreme Court of the United States

_________

LYNK LABS, INC.,

v.

Petitioner,

SAMSUNG ELECTRONICS CO., LTD. ET AL.,

_________

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS FOR THE

FEDERAL CIRCUIT

_________

BRIEF OF PROFESSOR TIMOTHY T. HSIEH

AS AMICUS CURIAE IN SUPPORT OF

PETITIONER

_________

WILLIAM J. COOPER

Counsel of Record

FELIPE CORREDOR

CONRAD | METLITZKY | KANE LLP

217 Leidesdorff Street

San Francisco, CA 94111

(415) 343-7100

wcooper@conmetkane.com

Counsel for Amicus Curiae

TABLE OF CONTENTS

INTEREST OF AMICUS CURIAE ............................ 1

SUMMARY OF ARGUMENT .................................... 2

ARGUMENT ............................................................... 3

I.

II.

The Federal Circuit’s Decision Conflicts

with Loper Bright and Revives Chevron

Deference in Disguise. ..................................... 3

A.

Loper Bright Reaffirmed That Courts,

Not Agencies, Say What the Law Is. ........... 4

B.

The Federal Circuit’s Reasoning

Replicates the USPTO’s Policy-Driven

Approach and Resurrects Chevron in

Substance if Not in Name ............................ 5

C.

The Federal Circuit’s Reasoning Shows

the Need for a Rebuttable Presumption

Against Disguised Chevron Deference ........ 8

The USPTO’s Policy Interpretation Lacks

Legal Foundation and Extends Agency

Power Beyond Statutory Boundaries. ........... 11

A.

Unreasoned and Informal Agency

Guidance Cannot Alter Statutory

Meaning ...................................................... 12

B.

Allowing Policy to Substitute for

Statutory Interpretation Revives the

Chevron Regime ......................................... 13

(i)

ii

III.

This Case Implicates the Interpretive

Principle Affirmed in New Prime and

Public.Resource.Org:

Courts

Must

Respect Congress’s Use of Well-Settled

Terms .............................................................. 14

IV.

This Court’s Precedents Reaffirm That

Administrative Convenience Cannot

Override Statutory Text or Constitutional Structure .............................................. 17

V.

Fairness and Due Process Concerns

Underscore this Case’s Importance ............... 20

CONCLUSION.......................................................... 26

iii

TABLE OF AUTHORITIES

Cases

Chevron U.S.A. Inc. v. Natural Resources Defense

Council, Inc., 467 U.S. 837 (1984)................. 3, 8, 21

Commodity Futures Trading Comm’n v. Schor,

478 U.S. 833 (1986) ................................................. 6

Connally v. General Construction Co.,

269 U.S. 385 (1926) ................................... 21, 22, 25

FCC v. Fox Tele. Stations, Inc.,

567 U.S. 239 (2012) ............................................... 23

Georgia v. Public.Resource.Org, Inc.,

590 U.S. 255 (2020) ........................................ 15, 16

Helsinn Healthcare S.A. v. Teva Pharms.

USA, Inc., 586 U.S. 123 (2019) ........... 11, 16, 17, 20

In re Bayer,

568 F.2d 1357 (C.C.P.A. 1978) .............................. 22

In re Hall,

781 F.2d 897 (Fed. Cir. 1986) ................................ 22

In re Lister,

583 F.3d 1307 (Fed. Cir. 2009) .............................. 22

In re Swanson,

540 F.3d 1368 (Fed. Cir. 2008) ...................... 5, 7, 16

Loper Bright Enterprises v. Raimondo,

603 U.S. 369 (2024) ........................................passim

Lynk Labs, Inc. v. Samsung Co. Ltd.,

125 F.4th 1120 (Fed. Cir. 2025) ....................passim

Microsoft Corp. v. i4i Ltd. Partnership,

564 U.S. 91 (2011) ................................................. 18

New Prime Inc. v. Oliveira,

586 U.S. 105 (2019) ......................................... 15, 16

iv

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

Grp., LLC, 584 U.S. 325 (2018) ............................. 25

Perez v. Mortgage Bankers Ass’n,

575 U.S. 92 (2015) ................................................. 13

Return Mail, Inc. v. United States Postal Service,

587 U.S. 618 (2019) ......................................... 18, 19

Sackett v. EPA,

598 U.S. 651 (2023) ............................................... 12

SAS Inst. Inc. v. Iancu,

584 U.S. 357 (2018) ............................................... 19

United States v. Lanier,

520 U.S. 259 (1997) ............................................... 21

West Virginia v. EPA,

597 U.S. 697 (2022) ............................................. 8, 9

Statutes & Rules

28 U.S.C. § 1295 ........................................................ 14

35 U.S.C. § 311(b) ..............................................passim

Supreme Court Rule 37.2 ........................................... 2

Supreme Court Rule 37.6 ........................................... 2

Other Authorities

Br. for Intervenor-Director,

Lynk Labs, Inc. v. Samsung Elecs. Co.,

No. 23-2346 (Fed. Cir. filed May 3, 2024) ... 5, 6, 7, 8

The Federalist No. 78 (Alexander Hamilton)

(Clinton Rossiter ed., 1961) ................................... 10

IN THE

Supreme Court of the United States

————

NO. 25-308

LYNK LABS, INC.,

Petitioner,

v.

SAMSUNG ELECTRONICS CO., LTD. ET AL.,

Respondents.

————

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Federal Circuit

————

BRIEF OF PROFESSOR

TIMOTHY T. HSIEH AS AMICUS CURIAE IN

SUPPORT OF PETITIONERS

————

INTEREST OF AMICUS CURIAE

Professor Timothy T. Hsieh is an Associate Law

Professor at the Oklahoma City University School of

Law. His research and teaching focus on technology

law, antitrust and intellectual property, including

patent law. Professor Hsieh previously practiced

intellectual property law and worked as an Assistant

Patent Examiner at the U.S. Patent & Trademark

Office (“USPTO”). His professional experience and his

areas of scholarship give him a strong interest in the

sound development of patent law, and particularly the

2

legal rules applied by and to the USPTO. He submits

this brief to underscore the importance of the question

presented to the constitutional separation of powers

and to the predictable administration of our Nation’s

patent system.1

SUMMARY OF ARGUMENT

This case presents a pressing question that

extends far beyond the patent system: whether federal

courts may circumvent this Court’s landmark decision

in Loper Bright Enterprises v. Raimondo, 603 U.S. 369

(2024), by favoring the agency’s preferred policy over

a statute’s plain text.

Although this case arises in a patent context, it

is really about the Judiciary’s role in interpreting

statutes and the limits of agency power. The Federal

Circuit’s decision in Lynk Labs, Inc. v. Samsung Co.

Ltd., 125 F.4th 1120 (Fed. Cir. 2025), Pet. App. 1a,

endorses a U.S. Patent & Trademark Office

(“USPTO”) administrative policy that expands statutory meaning—a move that covertly reprises the

deference Loper Bright repudiated.

Hence, this case is not about technicalities of

patent law. Instead, it is about whether courts will

1 Pursuant to Supreme Court Rule 37.6, the counsel of record

listed on the cover states that no counsel for a party in this case

authored this brief in whole or in part, nor did any such counsel

or party or anyone other than amici curiae make a monetary contribution intended to fund the preparation or submission of the

brief. The parties received timely notice through their counsel of

record of Professor Hsieh’s intention to file this brief, as required

by Supreme Court Rule 37.2.

3

uphold or erode the separation of powers. In Loper

Bright, 603 U.S. at 371, this Court overruled the

experiment of Chevron U.S.A. Inc. v. Natural

Resources Defense Council, Inc., 467 U.S. 837 (1984),

recalling the judiciary to its duty to interpret statutes

independently. But here, the Federal Circuit parroted

an agency’s policy-driven interpretation of a statute

instead of its settled judicial interpretation. The court

of appeals effectively treated agency policy as determinative of the meaning of the phrase “printed publication” in 35 U.S.C. § 311(b)—resurrecting Chevron

through semantic gymnastics. That approach flouts

this Court’s precedents, upsets constitutional structure, and creates uncertainty for inventors. This

Court should grant certiorari.

ARGUMENT

I.

The Federal Circuit’s Decision Conflicts

with Loper Bright and Revives Chevron

Deference in Disguise.

The U.S. Constitution vests the power to

interpret law in the judiciary. Loper Bright made clear

that the Framers envisioned legal interpretation as

“the proper and peculiar province of the courts.” 603

U.S. at 385 (citation modified). Chevron deference—

allowing agencies to interpret ambiguous statutes

based on their policy preferences—was repudiated as

something that “cannot be squared” with the Administrative Procedure Act (“APA”). Id. at 396.

4

The Federal Circuit’s decision revives Chevron

in all but name. The question before the court was

purely one of statutory interpretation: whether “printed publications” under 35 U.S.C. § 311(b) include

abandoned patent applications that were not publicly

accessible at the relevant time. Instead of interpreting

that term according to its text, structure, and historical meaning, the Federal Circuit relied on a USPTO

policy determination that such applications should

count as prior art because patent applications are

within the agency’s subject matter expertise. Loper

Bright prohibits such reliance when statutory

interpretation is at issue.

A.

Loper Bright Reaffirmed That

Courts, Not Agencies, Say What the

Law Is.

Loper Bright overruled Chevron and mandated

that courts must “exercise their independent

judgment in deciding whether an agency has acted

within its statutory authority, as the APA requires.”

603 U.S. at 412. The decision reestablished Marbury

v. Madison’s foundational premise that “it is emphatically the province and duty of the judicial

department to say what the law is.” Id. at 385. Although “[c]ourts must exercise their independent

judgment in deciding whether an agency has acted

within its statutory authority, as the APA requires”,

courts “need not and under the APA may not defer to

an agency interpretation of the law simply because a

statute is ambiguous.” Id. at 412–13. In so doing, the

Court rejected an argument that deference to the

agency is warranted because of the agency’s technical

subject matter expertise, because such deference “is

5

simply not necessary to ensure that the resolution of

statutory ambiguities is well informed by subject matter expertise.” Id. at 374.

The Federal Circuit’s opinion is irreconcilable

with that command. It ceded interpretive authority to

the USPTO because of the agency’s expertise with patent applications. Pet. App. 20a (printed documents

such as patent applications “are the types of

references that ‘are normally handled by patent

examiners’”). That rationale is indistinguishable from

what Loper Bright rejected.

B.

The Federal Circuit’s Reasoning

Replicates the USPTO’s PolicyDriven Approach and Resurrects

Chevron in Substance if Not in Name

The Federal Circuit’s reasoning in Lynk Labs

mirrors the USPTO’s own policy-driven advocacy. The

Director’s brief to the Federal Circuit admitted that

the agency’s view of “printed publication” rests not on

statutory text or judicial precedent, but on what the

agency perceives to be sound “policy.” See Br. for Intervenor-Director 16, Lynk Labs, Inc. v. Samsung Elecs.

Co., No. 23-2346 (Fed. Cir. filed May 3, 2024)

[“Intervenor Br.”] (arguing courts should “give effect

to the intent of Congress by ‘look[ing] not only to the

particular statutory language, but to the design of the

statute as a whole and to its object and policy.’”

(quoting In re Swanson, 540 F.3d 1368, 1374–75 (Fed.

Cir. 2008)).

The Director’s brief recast the statutory question as one of administrative logic and practical coherence with the overall patent system, especially

6

with respect to updates of the Manual of Patent

Examination and Procedure (“MPEP”), a policy

guidance document used by USPTO examiners that

also summarizes provisions in Title 37 of the Code of

Federal Regulations. See Intervenor Br. 7–8; see also

id. at 9 (describing the Leahy-Smith America Invents

Act as passed “against the backdrop of the USPTO’s

interpretation of the reexamination statutes”

(emphasis added)). The brief contended it would be

“anomalous” to treat certain confidential applications

differently from public ones. Id. at 28–30. The Director

further argued that including abandoned, later-published applications as prior art “sought to create a

streamlined administrative proceeding,” “provid[e]

quick and cost effective alternatives to litigation” and

“provide an efficient post-issuance process to remedy

any patentability defects in view of prior art documents”—all policy objectives of the USPTO. Id. at 21–

22. None of these arguments, of course, engage the

statutory language of § 311(b). Instead, they appeal to

institutional policy preferences—which, Loper Bright

held, cannot displace statutory text.

The Director’s brief openly invited Chevronstyle deference. It argued that “[f]or over 20 years, the

USPTO has interpreted ‘prior art consisting of patents

or printed publications’ to include published patent

applications under 35 U.S.C. § 102(e),” as the agency

“status quo” in “every version of the MPEP since

August 2001.” Intervenor Br. 23. The Director

stressed the “USPTO’s long-standing and consistent

definition of ‘prior art,’” even citing a discussion of

Chevron deference in Commodity Futures Trading

Commission v. Schor to argue that “congressional

failure to revise or repeal the agency’s interpretation

7

is persuasive evidence that the interpretation is one

intended by Congress.” Id. at 24 (citing 478 U.S. 833,

846 (1986) (emphasizing “interpretive value of

congressional acquiescence” to agency interpretation)). Even on the unwarranted assumption that

Congress knew about the MPEP’s interpretation

(contra pp. 12–13, infra), this argument betrays the

mode of reasoning Loper Bright rejected: a privileging

of agency practice and policy over textual analysis.

The Director’s brief also invoked In re Swanson,

540 F.3d 1368 (Fed. Cir. 2008), as supposed precedent

for its “contextual” method of statutory construction.

See Intervenor Br. 16 (quoting Swanson). Swanson

stated that courts must interpret patent statutes by

looking “not only to the particular statutory language,

but to the design of the statute as a whole and to its

object and policy.” 540 F.3d at 1374–75 (emphasis

added) (quoting Crandon v. United States, 494 U.S.

152, 158 (1990)). But that passage in Swanson, which

followed an express invocation of Chevron deference,

540 F.3d at 1374, n.3, rests on the same interpretive

framework Loper Bright rejected. To treat “object and

policy” as coordinate with statutory text is to treat

judicial interpretation as policy balancing—a choice

among multiple “permissible” interpretations, Loper

Bright, 604 U.S. at 400. Loper Bright forecloses that

approach. The judiciary’s independent judgment must

be exercised with fidelity to the enacted text, not to an

agency’s sense of statutory purpose.

Swanson

is

a

high-water

mark

of

administrative self-aggrandizement in patent law. It

greenlit the modern era of USPTO post-grant proceedings in which agency tribunals routinely revisited

8

and nullified Article III judgments. The Director’s

reliance on that case here—and the Federal Circuit’s

uncritical adoption of the same policy-driven reasoning—illustrates how deeply entrenched the Chevron

mindset remains within the administrative patent

system.

The Federal Circuit’s opinion did not merely

echo the Director’s reasoning; it adopted it wholesale.

The court reasoned that the agency’s interpretation

was “fully consistent with the ‘congressional purpose

in restricting reexamination’—and later, IPRs—to

printed documents”—phrases drawn almost verbatim

from the Director’s brief. Compare Pet. App. 19a–20a,

with Intervenor Br. 24, 26. That is Chevron by another

name. The court never explained how the words

“printed publication” could encompass non-public,

abandoned patent applications. Instead, it credited

the agency’s policy assertions as if they carried interpretive weight.

C.

The Federal Circuit’s Reasoning

Shows the Need for a Rebuttable

Presumption Against Disguised

Chevron Deference

Loper Bright repudiated Chevron’s invitation to

treat agency “reasonableness” as a substitute for

judicial interpretation. But here, the Federal Circuit

smuggles Chevron back into the law under another

name. Instead of asking what the statute means, it

asked whether the agency’s preferred view made

sense. The two questions are not the same, and Loper

Bright emphatically forbids conflating them. As this

Court warned in West Virginia v. EPA, courts must

hesitate before concluding that Congress means to

9

confer upon agencies “unheralded power” representing a “transformative expansion in [their] regulatory authority.” 597 U.S. 697, 724 (2022) (citing

Utility Air Regulatory Group v. EPA, 573 U.S. 302,

324 (2014)).

This phenomenon—judicial reasoning that

tracks an agency’s policy arguments without

mentioning “deference”—calls for a structural response. When three conditions are met—(1) the

court’s interpretation departs from the well-settled

meaning of a statutory term, (2) it expands administrative power at the expense of private rights or

judicial review, and (3) it coincides with the agency’s

own litigating position—a rebuttable presumption of

invalidity should attach. That prophylactic approach

would preserve Loper Bright’s promise by ensuring

that what appears to be “independent judgment” does

not devolve into “deference by imitation.”

This Court has long employed interpretive

canons to safeguard structural principles. The majorquestions doctrine ensures that agencies cannot claim

vast powers absent clear congressional authorization.

The rule of lenity protects liberty by requiring clarity

before punishment. The avoidance canon protects

constitutional values by preferring interpretations

that avert separation-of-powers conflicts. Each of

these doctrines rests on the same logic: when a governmental actor seeks to enlarge its authority or

constrain private rights beyond the statute’s plain

meaning, the courts must be skeptical. A rebuttable

presumption against agency-policy alignment would

be the natural extension of these principles in the

post-Chevron era.

10

Under that presumption, courts would ask a

simple question: Does this interpretation just so happen to align with what the agency itself urged as a

matter of policy? If so, heightened scrutiny is warranted, especially when the interpretation expands

executive power, diminishes access to Article III

courts, or redefines terms Congress deliberately left

unchanged. In this case, the alignment is complete.

The Federal Circuit’s reading (i) mirrors the USPTO’s

urged interpretation, (ii) rests on the same policy rationales of efficiency and coherence, (iii) neglects to

consider alternative readings consistent with textual

fidelity, (iv) fortifies the agency’s own jurisdictional

reach, and (v) erodes the rights of inventors and litigants to independent judicial review. That pattern

should trigger every constitutional alarm bell. It is not

interpretation—it is policy laundering through the

judicial branch.

As the Federalist Papers remind us, the

judiciary was designed to be “an intermediate body

between the people and the legislature” and “to keep

the latter within the limits assigned to their

authority.” The Federalist No. 78 (Alexander

Hamilton) (Clinton Rossiter ed., 1961). That same

duty applies, with equal or greater force, to executive

agencies. Courts serve as the buffer that prevents

administrative convenience from becoming administrative law. When courts adopt an agency’s policy

arguments wholesale, they cease to perform that

constitutional function. They become, instead, the

agency’s institutional echo.

The dangers of agency-policy alignment are not

abstract. In the patent context, such reasoning harms

11

the public’s reliance on stable, predictable rules of

innovation. When the USPTO can reinterpret statutory terms through litigation, and the Federal Circuit

rubber-stamps that view, inventors lose the ability to

plan their conduct based on the law as written.

Fidelity to Loper Bright requires more than

renouncing Chevron by name; it requires rejecting its

spirit. A jurisprudence that treats agency policy as interpretive guidance revives the same imbalance under

another label. Judicial independence means

skepticism toward the convenient alignment of power

and policy. Courts must recognize that what appears

“logical” from an administrative perspective may be

unconstitutional from a structural one. A rebuttable

presumption against such alignment would not

restore the foundational principle that the law must

be interpreted by judges.

II.

The USPTO’s Policy Interpretation Lacks

Legal Foundation and Extends Agency

Power Beyond Statutory Boundaries.

Congress limited inter partes review (“IPR”) to

“prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). For nearly two centuries,

the term “printed publication” has been understood to

mean a document publicly accessible before the

invention’s priority date. Cf. Helsinn Healthcare S.A.

v. Teva Pharms. USA, Inc., 586 U.S. 123 (2019)

(applying longstanding judicial interpretation of “on

sale”). The Federal Circuit’s interpretation, driven by

USPTO policy, rewrites that limit by adding a third

category—unpublished, abandoned applications that

only later became public. That expands the USPTO’s

power beyond what Congress conferred, handing back

12

to agencies the authority to rewrite the law that Loper

Bright had taken away. Worse still, the policy the

Federal Circuit adopted does not rest on any lawful

source of authority. It was never promulgated through

notice-and-comment rulemaking and appears only in

informal guidance documents, the MPEP, and ad hoc

Patent Trial and Appeal Board (PTAB) decisions.

A.

Unreasoned and Informal Agency

Guidance Cannot Alter Statutory

Meaning

The USPTO successfully urged the Federal

Circuit to accept its “long-standing and consistent

definition of ‘prior art . . . printed publications,’” as

reflected in guidance such as the MPEP, on the

premise that Congress acquiesced in that

interpretation. See p. 6, supra. But the Director’s

premise was wrong. Prior judicial interpretations of

“printed publication” all cut against the agency.

Rather, this is a case of alleged implicit acquiescence

in a prior administrative interpretation, which raises

no presumption of congressional acquiescence but, on

the contrary, requires “‘overwhelming evidence’” of it.

Sackett v. EPA, 598 U.S. 651, 682–83 (2023) (quoting

Solid Waste Agency of N. Cook Cty. v. U.S. Army Corps

of Eng’rs, 531 U. S. 159, 169–170, n.5 (2001)). No such

evidence exists: there is no sign that Congress even

knew about the agency’s interpretation of § 311(b),

which was secreted in the MPEP, a document written

for use by patent examiners and supported by no stated reasoning.

13

The MPEP and PTAB adjudications cannot

override congressional limits or supply missing

statutory authority. Under the APA, “an agency may

not use interpretive rules to bind the public by making

law, because it remains the responsibility of the court

to decide whether the law means what the agency says

it means.” Perez v. Mortgage Bankers Ass’n, 575 U.S.

92, 103, 109 (2015) (Scalia, J., concurring).

Nevertheless, the Federal Circuit treated

nonbinding guidance from the MPEP and the PTAB

as dispositive. That approach defies the APA and the

Constitution alike. The Judiciary cannot validate executive interpretations merely because an agency

asserts them consistently. Consistency is not

constitutionality.

B.

Allowing Policy to Substitute for

Statutory Interpretation Revives

the Chevron Regime

Loper Bright teaches that although “[c]areful

attention to the judgment of the Executive Branch

may help inform” the inquiry of whether an agency

has acted within its statutory authority, courts “may

not defer to an agency interpretation of the law simply

because a statute is ambiguous.” Loper Bright, 603

U.S. at 412–13. The Federal Circuit’s deference to

policy sense in its statutory interpretation is Chevron

Step Two in disguise.

If this reasoning stands, any agency could

justify its statutory reinterpretations by invoking

“policy” or “expert judgment.” The EPA could label

14

emissions rules “policy-driven interpretations.” The

SEC could reframe financial regulations as “practical

readings.” Each would be an end-run around Loper

Bright.

The USPTO’s case is uniquely problematic

because all patent appeals flow exclusively to the

Federal Circuit. See 28 U.S.C. § 1295. Without percolation across circuits, such a doctrine will entrench

unchecked deference in a single court—a quasiadministrative loop that insulates agency reasoning

from judicial review. Only this Court can restore the

constitutional balance.

III.

This Case Implicates the Interpretive

Principle Affirmed in New Prime and

Public.Resource.Org: Courts Must Respect

Congress’s Use of Well-Settled Terms

The important question presented goes beyond

a technical issue of patent law—it implicates the separation of powers and settled principles of statutory

interpretation.

This Court has repeatedly emphasized that

when Congress employs well-settled terms of art, the

judiciary must interpret them as they were understood at the time of enactment—not as agencies or

later courts might prefer to redefine them. That

principle protects Congress’s legislative prerogative

and the stability of statutory law. The Federal Circuit’s decision below disregards that principle and

substitutes administrative “policy” for statutory

fidelity.

15

In New Prime Inc. v. Oliveira, 586 U.S. 105

(2019), the Court rejected an invitation to reinterpret

a long-settled statutory term—“contracts of employment”—to reflect modern assumptions. Justice

Gorsuch, writing for a unanimous Court, explained

that it is a “fundamental canon of statutory construction” that words generally should be “interpreted as

taking their ordinary . . . meaning . . . at the time

Congress enacted the statute.” Id. at 113 (citation

modified). The Court refused to “freely invest old statutory terms with new meanings” to amend legislation

outside the “single, finely wrought and exhaustively

considered procedure” the Constitution demands. Id.

That is, judges may not treat text as elastic merely

because a newer or more convenient reading aligns

with present policy preferences.

The same fidelity to established meaning

animated Georgia v. Public.Resource.Org, Inc., 590

U.S. 255 (2020). There, the Court again rejected a

results-oriented argument—this time in an

intellectual-property context. Instead of expanding

copyright protection beyond the historical understanding of the “government edicts doctrine,” this

Court reaffirmed that courts must give statutory and

doctrinal terms their ”settled meaning” as established

by a “century of cases” that “rooted” that “doctrine in

the word ‘author.’” Id. at 270. That consistency to

settled judicial interpretation ensures that Congress

can legislate against a stable backdrop of legal

language without fear that agencies will later change

its meaning.

16

Together, these precedents reflect a deep

constitutional value: Congress’s right to legislate in

the language of the law without redefinition by other

branches. The Federal Circuit’s decision here does

precisely what those cases condemn. It “freely invests”

the phrase “printed publication”—a term whose

meaning was well settled in the Patent Act and in a

century of judicial decisions—with a new, policydriven context and content. Instead of honoring

Congress’s adoption of language long understood to

mean one thing by judges, cf. Helsinn, 586 U.S. at 123,

the court accepted the USPTO’s policy logic for expanding the term to include unpublished, later-released

documents.

The ruling below erases the boundary between

legislation and execution that this Court’s cases

protect. Congress must be able to rely on established

meanings when it legislates. Otherwise, as New Prime

warned, reliance interests would be upset by

“subjecting people today to different rules than they

enjoyed when the statute was passed.” 586 U.S. at

106. The Federal Circuit’s decision does just that: it

updates statutory meaning in line with the agency’s

“object and policy,” Swanson, 540 F.3d at 1374–75, not

the statute’s text. Protecting Congress’s ability to use

settled terminology is essential not only to the Constitution but to the separation of powers. When courts or

agencies treat statutory terms as malleable, they shift

legislative authority from Congress to the Executive.

That is the structural harm Loper Bright, New Prime,

and Public.Resource.Org all abjure.

17

This Court should grant review to reaffirm that

Congress’s words—especially those with an established judicial meaning—are not raw material for

agency revision. “Printed publication” and “prior art”

meant what they have always meant. The Federal

Circuit had no warrant to redefine those words by

reference to USPTO policy preferences.

IV.

This Court’s Precedents Reaffirm That

Administrative

Convenience

Cannot

Override Statutory Text or Constitutional

Structure

This Court’s cases reaffirm a consistent principle: administrative convenience cannot override

statutory text or constitutional structure. Across a

range of contexts, the Court has insisted that fidelity

to Congress’s words, rather than deference to agency

expedience, governs judicial interpretation.

In Helsinn Healthcare S.A. v. Teva

Pharmaceuticals USA, Inc., 586 U.S. 123 (2019), the

Court unanimously rejected the Federal Circuit’s reliance on the USPTO’s policy-driven reading of “on

sale” in 35 U.S.C. § 102. The district court held that

under the America Invents Act, only public sales could

trigger the on-sale bar. Id. at 128. But this Court held

that Congress’s use of the traditional term “on sale”

incorporated its long-settled judicial meaning, which

includes even confidential commercial sales. Id. at

132. Helsinn thus stood as a clear rebuke to policymotivated agency revisionism and a reaffirmation

that statutory continuity is presumed unless Congress

unmistakably indicates otherwise. The USPTO could

18

not redefine established statutory terms through

“object and policy” updates or administrative preferences.

In Microsoft Corp. v. i4i Ltd. Partnership, 564

U.S. 91 (2011), the Court confronted another temptation to soften statutory meaning for policy reasons.

The question there was whether the phrase “presumed valid” in § 282 of the Patent Act should permit

a lower evidentiary burden to challenge patent

validity. Id. at 95. The Court explained it was “in no

position to judge the comparative force” of the parties’

“policy arguments” as to the wisdom of the clear-andconvincing-evidence standard that Congress adopted.

Id. at 113. Instead, it held that Congress had adopted

§ 282 against a settled common-law backdrop establishing that patents are presumed valid unless overcome by clear and convincing evidence. Id. at 113–14.

Microsoft thus reinforces the same interpretive discipline: courts must read statutory terms as Congress

enacted them, not as administrators or litigants wish

they were written under policy justifications.

The same fidelity guided Return Mail, Inc. v.

United States Postal Service, 587 U.S. 618 (2019).

There, the Court rejected the government’s invitation

to treat a federal agency as a “person” eligible to

petition for post-grant review under the America

Invents Act. The Postal Service urged an expansive,

policy-friendly interpretation on grounds of

consistency with other portions of the patent statutes,

the federal government’s longstanding practice, and

the availability of civil liability for federal agencies.

19

Id. at 629. The Court instead applied the traditional

interpretive presumption that “person” does not include the sovereign absent an affirmative showing to

the contrary. Id. at 628. The decision exemplified the

constitutional baseline that agencies may not enlarge

their own authority by appealing to policy rationales

when the statutory text provides no support.

Finally, in SAS Institute Inc. v. Iancu, 584 U.S.

357 (2018), the Court rebuffed the USPTO’s policybased approach to the IPR statute. The agency had

adopted a practice of instituting review on only some

challenged claims, asserting that this partial

institution was a more “efficient” administration of its

docket. Id. at 358, 368. The Court held that the

statute’s command that the Director “shall issue a

final written decision with respect to the patentability

of any patent claim challenged by the petitioner”

meant what it said: a “directive” that was “both mandatory and comprehensive,” Id. at 362–63. The

Director’s efficiency-based policy argument was

“properly addressed to Congress, not this Court.” Id.

at 358. The policy-based “partial institution” power,

“wholly unmentioned in the statute,” was “not entitled

to deference under Chevron” even before that decision

was overruled, and administrative convenience certainly cannot overcome statutory text after Chevron’s

overruling. Id.

Each of these decisions reflects a unified

jurisprudence: policy cannot rewrite the Patent Act,

and no administrative body may invoke expedience to

expand its authority. The Judiciary’s role is to say

20

what the law is, not to say what would make sense

from an agency’s perspective. The Federal Circuit’s

decision below ignores that command. By adopting the

USPTO’s policy position on the meaning of “printed

publication,” the court revived the same interpretive

elasticity that Helsinn, Microsoft, Return Mail, and

SAS Institute reject. It treated administrative logic as

a substitute for statutory meaning, and in so doing,

blurred the boundary between interpretation and

policymaking.

When courts treat policy rationales as

interpretive authority, they erode Congress’s

legislative function and embolden executive agencies

to define the limits of their own power. Loper Bright

restored the principle that judges must exercise independent judgment and give statutes their fair

textual meaning. If the Federal Circuit’s reasoning

stands, that victory for judicial independence will be

short-lived. Chevron will return—not by name, but by

habit.

This case offers a clean, narrow, and recurring

vehicle for the Court to reaffirm that Loper Bright’s

holding applies universally: no form of interpretive

deference survives under another name.

V.

Fairness and Due Process Concerns

Underscore this Case’s Importance

Beyond its structural implications, the Federal

Circuit’s approach strikes at the heart of basic

fairness. By allowing the USPTO to classify

abandoned patent applications that were secret at the

21

time of the invention as “printed publications”

considered part of the public domain, the decision

below exposes inventors to invalidation based on

information they could not have known. That result

offends the fundamental due-process principle that

the law must provide clear notice of the standards by

which citizens are judged.

For centuries, Anglo-American law has rested

on the proposition that individuals must have notice

of the legal rules that govern their conduct. As this

Court stated in Connally v. General Construction Co.,

269 U.S. 385 (1926), a statute must be “sufficiently

explicit to inform those who are subject to it what

conduct on their part will render them liable to its

penalties.” Id. at 391. When a legal regime subjects

parties to penalties, forfeiture, or loss of rights based

on information unavailable to them, it ceases to

function as law and becomes arbitrary power.

The requirement of notice is not a mere

procedural nicety—it is the first principle of legality.

As Justice Holmes explained, “fair warning * * * is

represented] in language that the common world will

understand, of what the law intends to do if a certain

line is passed”—“[t]o make the warning fair, so far as

possible[,] the line should be clear.” (emphasis added).

United States v. Lanier, 520 U.S. 259, 266 (1997)

(citing McBoyle v. United States, 283 U.S. 25, 27

(1931)). The Founders viewed that predictability as

the dividing line between government by laws and

government by men. If the public cannot know in

advance what the law requires, it cannot conform its

22

conduct or exercise its rights in good faith. That same

logic applies to the patent system, which operates only

when inventors can confidently assess what

knowledge constitutes the “prior art” that might be

asserted against attempts to patent their innovation.

Patent law, no less than criminal law, depends

on predictable, clear and knowable rules. The term

“printed publication” has always embodied that

premise: it refers to information that has been

publicly accessible before the critical date. See, e.g., In

re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (“‘public

accessibility’ has been called the touchstone in

determining whether a reference constitutes a

‘printed publication’ bar”). Hidden or abandoned

patent applications, by definition, are not publicly

accessible. To classify them as “printed publications”

is to invert the concept of publication itself. While it is

well settled that examined, issued “patents” may be

prior art as of the date they are filed, for “printed

publications” the opposite has always been true: it is

well settled that “the touchstone” of their prior art

status “is public accessibility.” E.g., In re Bayer, 568

F.2d 1357, 1359 (C.C.P.A. 1978) (rejecting USPTO’s

broad interpretation of “printed publication”); In re

Hall, 781 F.2d at 899 (same); In re Lister, 583 F.3d

1307, 1311 (Fed. Cir. 2009) (same). There has never

been such a thing as a secret “printed publication.”

Until now.

Such a regime transforms the patent system

into a guessing game governed by invisible rules.

Inventors would be judged not by what is public, but

23

by what lies buried in secret agency files. The result

is a Kafkaesque system in which innovation is chilled

by uncertainty and rights are lost to undiscoverable

“prior art.” Would-be patentees are entitled to rely on

which types of prior art are authorized by Congress to

be asserted against their patents. See 35 U.S.C.

§ 311(b). The USPTO’s policy, endorsed by the Federal

Circuit, undermines the reliance interests of every

inventor who trusts that the law’s terms mean what

they say.

The injustice is compounded by the fact that the

USPTO’s own internal practices caused the very

secrecy that inventors are now punished for. The

agency routinely keeps applications confidential for

eighteen months or longer before publication and then

abandons them without ever publishing them. To then

weaponize those confidential filings as prior art is to

penalize inventors for the government’s own

nondisclosure mandated by Congress. If we are to

respect Congress’s choice to generally keep patent

applications confidential for eighteen months, we

must also respect Congress’s choice to allow such prior

art in IPR proceedings only if they are examined and

issued as “patents.” 35 U.S.C. § 311(b).

In FCC v. Fox Television Stations, Inc., 567 U.S.

239, 253 (2012), the Court held that “regulated parties

should know what is required of them so they may act

accordingly,” otherwise laws fail to comply with due

process if they do not “provide a person of ordinary

intelligence fair notice of what is prohibited, or is so

standardless that it authorizes or encourages

24

seriously discriminatory enforcement.” Id. at 253. The

Federal Circuit’s acceptance of the USPTO’s

interpretation creates just such a standardless regime

in patent law: a system where private rights depend

on hidden materials and what the agency deems to be

good policy. That approach transforms the USPTO

from an examiner of patents into an arbiter of secret

law, able to decide retroactively when nonpublic

information should count as prior art.

The constitutional problem with the Federal

Circuit’s ruling is thus twofold. First, it undermines

the predictability that the patent system needs to

encourage innovation and investment. Second, it

erodes the legitimacy of agency action by detaching it

from publicly accessible law. The USPTO’s “policy”

interpretation creates precisely the kind of arbitrary,

post-hoc decision-making that the Administrative

Procedure Act and the Due Process Clause were

designed to prevent. When the law is “so vague that

men of common intelligence must necessarily guess at

its meaning and differ as to its application, it violates

the first essential of due process of law.” Connally, 269

U.S. at 391. Here, even experts in patent law cannot

predict what the agency or the Federal Circuit will

deem to be available prior art tomorrow. That is not

interpretation; it is improvisation.

The erosion of notice in the patent system

mirrors broader concerns. In Loper Bright, this Court

cautioned that when agencies fill in the “gaps”

according to their own policy preferences, they assume

the very legislative role the Constitution withholds

25

from them. 603 U.S. at 408–09. The same usurpation

occurs when the USPTO transforms its internal

confidentiality policies into de facto sources of legal

obligation. The separation of powers is not a technical

abstraction—it protects fairness by ensuring that

laws are made by Congress, interpreted by courts, and

announced publicly before they are enforced. When

those boundaries blur, ordinary citizens—here,

inventors—bear the cost.

The more secret materials are allowed to

operate as prior art contrary to Congressional intent,

the more property rights are at risk of being

extinguished by what is in effect secret law. Patents

are not privileges; they are “public franchises” secured

by statute. See Oil States Energy Servs., LLC v.

Greene’s Energy Grp., LLC, 584 U.S. 325 (2018). But

if they are limited by statute, they should be entitled

to the full scope set by that statute. Because they

derive from statute, their creation and destruction

must conform to constitutional norms of transparency

and regularity. If private patent rights can be nullified

by agency reinterpretations of well-settled statutory

language, vested property becomes contingent on

administrative grace. That result is incompatible with

both due process and Article III’s command that

judicial decisions, not agency preferences, determine

private rights.

The rule of law demands better. Statutes must

mean what they say, and citizens must be able to

know what the law is before their rights are taken

away. When an agency stretches statutory terms to

26

achieve a preferred outcome, it undermines both the

separation of powers and the public’s trust that law,

not policy, governs. Loper Bright reaffirmed that

courts must prevent such erosion of our constitutional

structure. The Court should grant certiorari to

reaffirm that agency policy preferences cannot

override Congress’s statutory enactments.

CONCLUSION

The Federal Circuit’s decision exemplifies the

danger Loper Bright sought to end: judicial abdication

of interpretive authority to agencies. By accepting the

USPTO’s policy-driven view of “printed publication,”

the Federal Circuit reinstated Chevron-style deference in substance if not in name. This Court should

grant certiorari.

Respectfully submitted.

WILLIAM J. COOPER

Counsel of Record

FELIPE CORREDOR

CONRAD | METLITZKY | KANE LLP

217 Leidesdorff Street

San Francisco, CA 94111

(415) 343-7100

wcooper@conmetkane.com

Counsel for Amicus Curiae

OCTOBER 2025