# Amicus Curiae Brief — Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 350 (2017) (No. 16-712) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0724%3A46 ## Record - **Collection:** Supreme Court brief - **Document type:** Amicus Curiae Brief - **Published:** January 1, 2017 ## Text AO No. 16-712 FILED | << AUG 31.2017 | eRe COURT OS. ; ALUS. | Iu The PREM Supreme Court of the United States + OIL STATES ENERGY SERVICES, LLC, Petitioner, Vv. GREENE’S ENERGY GROUP, LLC, et al., Respondents. —_-- On Writ Of Certiorari To The United States Court Of Appeals For The Federal Circuit 2 BRIEF OF PROFESSOR DMITRY KARSHTEDT AS AMICUS CURIAE SUPPORTING PETITIONER —__—_—__—_#¢ DMITRY KARSHTEDT Counsel of Record GEORGE WASHINGTON UNIVERSITY SCHOOL OF LAW 2000 H Street, N.W. Washington, DC 20052 dkarshtedt@law.gwu.edu (202) 994-5725 August 31, 2017 COCKLE LEGAL BRIEFS (800) 225-6964 WWW COCKLELECALBRIEFS.COM Laxey of Congas . TABLE OF CONTENTS Page I iscock cttccecsnsdanisecsnenciessessumanpaesnensous i ee IIS canine sccusncnitctcriatencdeatanspundaieatcine iv BOSONS GE AICI CONTEND onscccccecescsvciseesuicnneneesencions 1 | A AT 1 Pe ctccncsariscetndousndvniaceenniascninsseindiemiguaneasmeinion 4 I. Adjudication Of Claims of Private Rights Is The Exclusive Province Of The Judiciary..... 4 Plo tcncteiscnsteghioanitn diecvaden tuennniemanetiddecsitinionsiiaban: 6 A. Patent Infringement Claims Sound In Common-Law Trespass, A Private BN achackecspahe cetemeddiiresaiteomhsansnmeascindanasbdtns 6 B. Patent Infringement Claims Kear Little Resemblance To Causes Of Action That Have Qualified For The Public Rights I iicttctinnncncinsaiindacentnaetinibechdaimiaicense 9 III. Invalidity Is An Affirmative Defense To A Claim For Patent Infringement, Which Con- gress Has Unconstitutionally Delegated To eT Tae Fe i iiivccntenescictiniaminceeniveceses i3 A. Invalidity Is Inextricably Tied To Claims For Patent Infringement In District I Sciineniemnsnmeninectenetiendeiiisincestecesesati 13 1. Invalidity, Which The IPR Statute Empowers The PTAB To Resolve, Can Be Charged In Patent Cases Only If There Is Actua] Or Threat- ened Infringement..................-...--. A il TABLE OF CONTENTS — Continued Page 2. PTAB Proceedings Typically Take Place In Parallel With Litigation..... 3. By Resolving Invalidity, The PTAB Takes Infringement Suits Away From Re EE RR ORT Et B. PTO Expertise Docs Not Justify The PTAB’s Authority To Bind Federal Ee accccuuiakiacisthainineindacepudednandiatiadebiaenees.ta 1. Expertise Does Not Allow Agencies To Take The Place Of Courts When Private Rights Are At Issue ............. 2. ‘The PTAB’s Role In IPRs Extends Beyond Functions That Expert Agen- cies Have Traditionally Been Permit- I i cecceciteniosicnsin 3. The Statutory Scheme At Issue Breaks With The Historical Practice Of De C. The PTAB’s Invalidity Determinations Are Not Collateral, But Central, To In- fringement Suits, And Are Designed To Preempt District Court Adjudication Of The Same Questions.....................-:20000+ IV. The IPR Statute Offends The Principle Of Separation Of Powers By Allowing An Agency To Direct A Court How To Decide A I IIE <.ccosecnsoseaecieuesgaremcaciusonnneneseneee 19 21 21 24 27 29 ili TABLE OF CONTENTS —- Continued Page A. PTAB Determinations Of Invalidity Func- tion As “Rules of Decision” That End I I inieccccakvusoscstentoniiehabeccoisatons 31 B. Rather Than Amend Applicable Law, The IPR Statute Delegates To The PTAB The Power To Pick Winners And Losers Ne SE OI tleicccusinscitsainiadinesvesdstianhanien 32 V. Adjudication Of Cases Involving Private Rights In Article III Courts Effectuates The Values Protected By The Doctrine Of Sepa- Ie ID ictertavccenssshensedvanbepesdeenttinvaesas 34 ee 36 iv TABLE OF AUTHORITIES Page CASES Arris Grp., Inc. v. British Telecomme’ns PLC, 639 Fe ee Ts EE SE OP nkvibnndscicasnnrwviscddscnccnndassecens 14 B & B Hardware, Inc. v. Hargis Indus., Inc., 135 RE EER yea SA te ean SEES Ne ae vee 25 Bank Markazi v. Peterson, 136 S. Ct. 1310 STREET Pe LARA Ae ies Co REE, Dee 32, 33, 34 Biook wu Birehk, 366 UB. 196 (IGE) ..0s.0000seccckcccsess.0.00: 10 Brown v. Kendall, 60 Mass. 292 (1850)..............:cceeseees 6 Butterworth v. United States ex rel. Hoe, 112 U.S. RAE RARE Se Rg ESN DDD AIRE Re Gd 8a ME» 27 Carbice Corp. v. Am. Patents Dev. Corp., 283 U.S. og: SRR BORGES, 6 BAS vee Eh ee lee SELES: 8 Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. i 13 Ctr. for Sci. in the Pub. Interest v. Regan, 727 F.2d Fe Geis CE BOND vriiseedcececascntdnses SEE So 29 Clark v. Time Warner Cable, 523 F.3d 1110 (9th 8 Re SI SOE SPEND Sd Rar ect Re A Oe 24 Commil USA, LLC v. Cisco Sys., Inc., 135 8. Ct. | EL ea alee Sasa Be tation REN AS SE Mi 13 Commodity Futures Trading Comm’n v. Schor, ee He Eo riericsadioscctieacccnsnedadsabauiaens 12, 21, 22 Consumer Watchdog v. Wis. Alumni Research Found. , 753 F.3d 1258 (Fed. Cir. 2014), cert. de- OC, See Ts Ce A CD acts cnsnecsetecercscscnensssnisnes 15 Vv TABLE OF AUTHORITIES — Continued Continental Paper Bag Co. v. Eastern Paper Bag i eee HR EE III osc catigdccgacaccunpececssessiusntsimensy cans 8 Crowell v. Benson, 285 U.S. 22 (1932) ...4, 11, 13, 20, 26 Cuozzo Speed Techs., LLC v. Lee, 1386S. Ct. 2131 i ctsicinnsedycsnsdodipmnnntgsesvectinnaiutgipnste 15, 16, 22, 30 Dickinson v. Zurko, 527 U.S. 150 (1999)..................... 27 Dowagtiac Mfg. Co. v. Minn. Moline Plow Co., 235 EE NE IIE vec nisschaxuvcdvauieederindsateephibiecateckapedesesns vies 8 Envtl. Processing Sys., L.C. v. FPL Farming Ltd., ABT Te. Wee GEG CH, BORG oi ncccecescccnscvesssscccseccssssecees 20 ePlus, Inc. v. Lawson Software, Inc., 789 F.3d 1349 (Fed. Cir. 2015), cert. denied, 136 S. Ct. IIIS isvtnsssihigitiacateceeersstsbomedpiaieoumnenineieaies 18 ePlus, Inc. v. Lawson Software, Inc., 790 F.3d 1507 (Ped. Cir, 2016) CeO.) ...0c00ccsccccccccccccesese. 18, 25 Ex Parte Bakelite Corp., 279 U.S. 438 (1929)............. 11 Executive Benefits Ins. Ag’cy v. Arkison, 134 ee EEE cinictdcnd ics sianceckarsicpeitshesnehiniesinbesstacee 28 Fresenius USA, Inc. v. Baxter Int'l, Inc., 721 F.3d 1330 (Fed. Cir. 2013), cert. denied, 134 S. Ct. |: RESP Sree aire mY Hot setae, See 14, 18, 19, 30 Graham v. Goodcell, 282 U.S, 409 (1931)... 22 Granfinanciera, S.A. v. Nordberg, 492 U.S. 33 a ie a ee, a eagandgonaadeaas 4,12 vi TABLE OF AUTTIORITIES — Continued Page Greene’s Energy Grp., LLC v. Oil States Energy Servs., LLC, Case IPR2014-00216, 2015 WL 2089371 (Patent Tr. & App. Bd. May 1, 2015), aff'd, 639 Fed. App’x 639 (Fed. Cir. 2016) nc ci tatesapeunndbiandaaabpepsbauietcainante 17 In re Baxter Int'l, Inc., 678 F.3d 1357 (Fed. Cir. SEES ae Ea an SOE ante eee eR 19, 26 Kappos v. Hyatt, 132 S. Ct. 1690 (2012)............... 21, 27 Markman v. Westview Instruments, Inc.,517 US. ih 6 aaiaeueaniedamcanicitaneines 6 McCormick Harvesting Mach. Co. v. C. Aultman ee A Ce OI ecenicrecessncinincossonsensesececeseee 20 MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015), cert. denied, 137 SEE III nos tecsadesouaeuinnsncetasiccnnsatandiecenent veined 5, 21 MedIimmune, Inc. v. Genentech, Inc., 549 U.S. 118 SRR RSS SR RE a ae ee Ree 14 Mistretta v. United States, 488 U.S. 361 (1989) .........34 Murray’s Lessee v. Hoboken Land & Improve- ment Co., 59 U.S. (18 How.) 272 (1855).....4, 9, 10, 11 Muskrat v. United States, 219 U.S. 346 (1911).......... 36 N. Pipeline Constr. Co. v. Marathon Pipe Line Ca., 458 U.S. 50 (1962) ...........ccccrccceesssccceerenrees 4, 5, 34 Oil States Energy Servs., LLC v. Trojan Wellhead Protection, Inc. and Greene’s Energy Grp., LLC, No. 6:12-cv-00611-RWS, 2014 WL 12360946 Ee See, cE Is TINIE Srrnripncicrcinsancuceustsovnenecsersuneaes 17 Vii TABLE OF AUTHORITLES — Continued Page Organic Seed Growers & Trade Ass’n v. Mon- santo Co., 718 F.3d 1350 (Fed. Cir. 2013), cert. OREO, SIG Ge Ce. Be CD eve csacanesvvncccenseesscesesees 14 Plaut v. Spendthrift Farm, Inc., 514 US. 211 Precision Instrument Mfg. Co. v. Auto. Maint. Mack. Co. ; SB4 UG. GEG CABG) ......ncevercsscccccccscsssesss 22 Reiter v. Cooper, 507 U.S. 258 (1993)..............cceeseeceees 24 Robertson v. Seattle Audubon Soc., 503 U.S. 429 0 lie tad tl sate eet cE NE: SOUS RE eS 31 Stein v. Goddard, 22 F. Cas. 1233 (C.C.D. Cal. ERIE TT a eS eee ee tee 8 Stern v. Marshall, 564 U.S. 462 (2011)............... passim St. Joseph Stockyards Co. v. United States, 298 A a ca eta pnansinennien 10 Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 pe 8 oy gi Re % | eee 25 Theodore Roosevelt Conservation P’ship v. Sala- Br, SE Fae ee Cakes GR DEED scoscnccccsinccestsssscncsss 29 Thomas v. Union Carbide Agric. Prods. Co., 473 I es cal 4,5,9, 10 Thomson-Houston Elec. Co. v. Ohio Brass Co., 80 6, . ___, Re RRR SSS eet ES meee 8 Translogic Tech., Inc. v. Hitachi, Lid., 250 Fed. App’x 988 (Fed. Cir.), cert. denied, 555 U.S. Vill TABLE OF AUTHORITIES — Continued Troy v. Samson Mfg. Corp., 758 F.3d 1322 (Fed. IIE Tia ta hears cab tli cenidcedeaeehiaiiiiatenasecdaeimaliahepemeennsonaion 28 Ultratec, Inc. v. CaptionCall, LLC, Nos. 2016- 1708, 2016-1709, 2016-1715, 2017 WL 3687453 CI Ss NE IG, SITE OP occscstnchesecnics-cseccodiicsvunsatetnocesessd 30 Union Sugar Refinery v. Mathiesson, 24 F. Cas. 686 (C.C.D. Mass. 1865) (No. 14,399) ........0.... 7 United States v. Klein, 80 U.S. (13 Wall.) 128 aD rat RE ESE LFS PRIUS ie Seat ed OE 31, 32 United States v. Sioux Nation, 448 US. 371 SREP RID Brot ean OSS SSA Siva ee etd ore eee em 31, 32 Wellness Int'l Network, Ltd. v. Sharif, 135 S. Ct. PE I cigs shaadanita cits crnadaabetbinrsselseanmeiicetunseedietunhas 12 CONSTITUTIONAL PROVISIONS HN I acecatesscsectsdiicscedmncceteopn-aiennecsocepeseened passim STATUTES Be I in centers cenineecnnemndiacmecvelcatuiadmnbeninenssiniinsanies 23 BE OI ais cncddacenyaivunnuoenangalnavastneyeelsadidenniaareseion 17 I sip tienen siemanisucncsaimdditeenennaiinciniorentussieclnsiianeiie 27 Be Ns Ot I aaa iid scicrninivenininmaenencasiibanemcnnetogs 27, 28 RR a pene eee MEN PRS SLE 28 a aa ict nosinatoncatasep Uiritpricnideeiecdiialeedeaietinpianientsaianisail 28 Be Ne OF A Seecteek cerned denis deeninetingetchoccncaunniideidinelanen 6 1x TABLE OF AUTHORITIES - Continued Page es I Abid ccccaduihninaes onedotasansenunbeeniiiasesiinbcensnandegl 6 Ee i iteriicrccnitanidindadnbsanmianswdtemreinauiatouaes 13, 16 Be ee I aietrcvtsciccsoeoietenstanterirreninerpiss 15, 16, 23, 30 BN IIT IES nr scaccniniee tpt aceeasineniie naan helices amipegeaieneaelia 16 Be Pe I oid iccaiehccenesinisindncdeksindesosslensticinienaetaseneuberesteomses 15 Be RN I a sn.cncatoetnahdirevieneiteniip eahinaesimecumoeaneabenenain 10 Act of Apr. 10, 1790, 1 Stat. 109 (1790)........0000.0.. 6, 22 Act of Feb. 21, 1793, 1 Stat. 318 (17993)..................e000+. 7 Act of July 8, 1870, 16 Stat. 198 (1870) ............0.......... 6 Act of July 19, 1952, 66 Stat. 792 (1952) ..........0.00... 28 Title 35, United States Code Annotated (1954 ee I NED sai dcicidnaenensrecccomescensiccescnienes 28 TREATISES A. LaLonde, Gilson on Trademarks (2014)................25 William C. Robinson, The Law of Patents for EP UMUC EIN sic sibetticsinennhcadneverencactesaes 7 Arthur Underhill et al., Principles of the Law of Torts; or, Wrongs Independent of Contract 612 (1st American ed. from 2d English ed., Albany, William Gould & Son 1881)....................cceeeeeeeeeee eee 7 x TABLE OF AUTHORITIES — Continued OTHER AUTIIORITIES Ralph Brubaker, Non-Article Ill Adjudication: Bankruptcy and Nonbankruptcy, With and Without Litigant Consent, 33 Emory Bankr. I oi i eT Oa oe Complaint, Oil States Energy Servs., LLC v. Tro- jan Wellhead Protection, Inc. and Greene’s En- ergy Grp., LLC, No. 6:12-cv-00611-RWS (E.D. Pe ls ANT I occidibttidatctctenctcintinsubdsaanssodee Dennis Crouch, RIM v. NTP Continues to Trou- ble Patent Office, Patently-O, https://patentlyo. com/patent/2008/05/rim-v-ntp-conti.html (May ayn che RCRA EO SF MOAB 90 SSS 2 Frank H. Easterbrook, Presidential Review, 40 Case W. Res. L. Rev. 905 (1989) ......0.......0. ee. Richard H. Fallon, Jr., Of Legislative Courts, Administrative Agencies, and Article lif, 101 ee in, Se I ico kaa ticsnlusss Shueceaates P.J. Federico, Commentary on the New Patent Act, 75 J. Pat. & Trademark Off. Soc’y 161 Catherine Fredenburgh, Reading the Bilack- Berry Tea Leaves, Law360, https:/Awww.law360. com/articles/5509 (Mar. 1, 2006)........................ Paul R. Gugliuzza, (njvalid Patents, 92 Notre NS Sn, SNS GE te MII caccsicecricdasinceninchesnanaonddeces Page ine xi TABLE OF AUTHORITIES - Continued Page Mark D. Janis, Rethinking Reexamination: To- ward a Viable Administrative Revocation Sys- tem for U.S. Patent Law, 11 Harv. J. L. & Tech. PITT at scntscccapinndidipadndataenninaninampdansincdegibannsrncsinie’s 22 Joint Stipulation of Dismissal, elcommerce.com v. SAP AG, 745 F.3d 490 (Fed. Cir.), vacated, 564 Fed. App’x 599 (Fed, Cir. 2014) (en banc) RS Oo caaumamaceantebids 26 Amy L. Magas, Comment, When Politics Inter- fere with Patent Reexamination, 4 J. Marshall Rev. Intell. Prop. L. 160 (2004).............000.... 34, 35, 36 Adam Mossoff, Who Cares What Thomas Jeffer- son Thought About Patents? Reevaluatiny the Patent “Privilege” in Historical Context, 92 SIE Bas SNe SP INET oricrncicscnsscescecpetnecesesessenécesones 8 Caleb Nelson, Adjudication in the Political Branches, 107 Colum. L. Rev. 559 (2007)......... 11,12 Peggy P. Ni, Rethinking Finality in the PTAB Age, 31 Berkeley Tech. L.J. 557 (2016) ..........0000..., 19 Kevin E. Noonan, What the Director’s Letter Did Not Say, Patent Docs, http:/Avww.patentdocs.org/ 2008/06/what-the-direct.html (June 15, 2008)............ 35 Note, “Moot” Administrative Orders, 53 Harv. L. atten PIE a TPT GRE RSS ew SEE ao PD ST 29 Lynda J. Oswald, The “Strict Liability” of Direct Patent Infringement, 19 Vand. J. Ent. & Tech. Re at See. EARN IR Sh NS aera eer 6 Restatement (Second) of Judgmenis (1980)............... 25 x1 TABLE OF AUTHORITIES - Continued Sidney A. Shapiro, Abstention and Primary Ju- risdiction: Two Chips Off the Same Block - a Comparative Analysis, 60 Cornell L. Rev. 75 (RIPPED. snscaicccconnscsenes tvessssesesesdscideshunadimmapammianaaani 24 Saurabh Vishnubhakat et al., Strategic Deci- sionmaking in Dual PTAB and District Court Proceedings, 31 Berkeley Tech. L.J. 45 (2016) .......17 lL INTEREST OF AMICUS CURIAE Amicus is a full-time law professor who has pub- lished several articles exploring the relationship be- tween patent law and tort law. This brief describes the historic connection betwee patent infringement and common-law trespass, and addresses the bearing of this connection on the question presented.’ ° SUMMARY OF THE ARGUMENT Petitioner Oil States Energy Services sued respon- dent Greene’s Energy Group in a district court on sev- eral counts, including patent infringement. Greene’s then petitioned the U.S. Patent and Trademark Office (PTO) to challenge the validity of the patent claims as- serted in the litigation. The PTO cancelled the claims, and the Court of Appeals for the Federal Circuit sum- marily affirmed that determination. Had this Court not granted certiorari, the petitioner’s patent infringe ment cause of action would have been extinguished by the PTO’s decision. The error made by the Federal Circuit in the opin- ions that bound the court in the instant case, and re- peated by respondents in certiorari briefing, lies in the attempt to classify patents as either public or private ' No counsel for a party authored this brief in whole or in part and no counsel or a party made a monetary contribution in- tended to fund the preparation or submission of this brief. The parties have all consented to this filing, and the consents are on file with the Clerk. 2 rights in a categorical manner ~ that is, in isolation from any particular cause of action. This framing is im- proper because, under this Court’s precedents, the question whether a case involves a private right that must be adjudicated by an Article III tribunal relates to a particular legal action or claim, not the underlying privilege or property interest. Under the correct ap- proach, which takes into account the context in which the PTO makes its invalidity decisions, the Inter Partes Review (IPR) statute at issue in this case should be held unconstitutional because it empowers an agency to resolve a claim of private right: an action for patent infringement. The cause of action for patent infringement is a private right because it has long been recognized as a species of trespass claim by which the plaintiff typi- cally seeks, among other remedies, monetary relief for past harm from another private party. Because of its historic characterization as a trespass, infringement has a close kinship to common-law claims that this Court has recognized as private rights that cannot be adjudicated outside Article III courts. Invalidity is one of several, enumerated affirma- tive defenses that a defendant in a patent case may plead in response to an allegation of patent infringe- ment. The IPR statute effectively removes this affirm- ative defense to infringement from Article III courts, and empowers the Patent Trial and Appeal Board (PTAB), an arm of the PTO, to decide it. In many cases, including one involving these very litigants, a deter- mination of invalidity by the PTAB has extinguished 3 parallel district court actions for patent infringement. This delegation of judicial power over such causes of action to a body that is not a part of the judiciary, and not an adjunct to an Article III court, is constitution- ally forbidden by this Court’s precedents. The IPR statute offends the doctrine of separation of powers for another, closely related reason: It effec- tively grants to the PTAB the power to direct that pending cases be dismissed. Although Congress can constitutionally abate extant claims by amending ap- plicable law while the litigation is pending, Congress in this case delegated to an agency the power to extin- guish a claim by adjudicating an affirmative defense in favor of a defendant. Because the PTAB here fully resolved a claim concurrently pending in a district court, it violated the rule that coordinate branches can- not direct Article III courts to dispose of specific cases in a particular way. The doctrine of separation of powers exists in part to prevent abuses that might eventuate if claims of pri- vate rights are adjudicated outside Article LII courts. By empowering the Executive Branch to resolve such disputes in the patent infringement context, the IPR statute weakens Article III safeguards of impartial ad- judication, and therefore contravenes separation of powers principles. 4 ARGUMENT I. Adjudication Of Claims Of Private Rights Is The Exclusive Province Of The Judiciary. Article 0] requires that claims of private rights be adjudicated in Article III courts. Stern v. Marshall, 564 U.S. 462, 488-92 (2011) (collecting cases). As this Court explained, a “private right” is one that implicates “the liability of one individual to another under the law as defined.” Jd. at 489 (quoting Crowell v. Benson, 285 U.S. 22, 50, 51 (1932)). Although this Court allowed certain claims involving private parties to be adjudicated by specialized tribunals, e.g, Thomas v. Union Carbide Agric. Prods. Co., 473 U.S. 568 (1985), claims sounding in common law are core private rights that have his- torically been, and must continue to be, resolved in Article III courts. Stern, 564 U.S. at 497-99 (tortious interference claims must be adjudicated in an Article III court); Granfinanciera, S.A. v. Nordberg, 492 US. 33, 438-46 (1989) (same for fraudulent conveyance); N. Pipeline Constr. Co. v. Marathon Pipe Line Co., 458 U.S. 50, 71-72 (1982) (plurality op.) (same for breach of contract). In opposing certiorari, neither respondent dis- putes that claims of private rights must be adjudicated in the Judicial Branch. Rather, both contend that the PTAB adjudications at issue in this case fall under the “public rights” exception to this requirement because patent rights are granted by the government. Greene’s BIO at 6-7 (citing Murray’s Lessee v. Hoboken Land & Improvement Co., 59 U.S. (18 How.) 272, 284 (1855); 5 Thomas, 473 U.S. at 587); Fed. BIO at 8-9. In so doing, respondents repeat the error of the Federal Circuit in MCM Portfolio LLC uv, Hewlett-Packard Co., 812 F.3d 1284 (2015), cert. denied, 137 S. Ct. 292 (2016), by imagining that the PTAB’s patent invalidation deci- sions exist in isolation from infringement litigation. Respondents and the Federal! Circuit overlook the fact that, in both structure and practice, the IPR statute charges the PTAB with deciding important, often dis- positive questions in cases involving private rights. In contrast, petitioner correctly notes that “patent infringement cases — complete with invalidity defenses — were ‘traditional actions at common law’ and there- fore ‘the responsibility for deciding that [type of] suit rests,’ if not with juries then at a minimum, ‘with Arti- cle III judges in Article III courts.’” Petition for a Writ of Certiorari at 19 (alteration in original) (emphasis added) (quoting Stern, 564 U.S. at 498 (quoting N. Pipe- line, 458 U.S. at 90 (Rehnquist, J., concurring in the judg- ment))). Under petitioner’s proper framing of the Article III question, the IPR statute creates a fatal separation of powers problem because it enables an agency to usurp the exclusive power of the judiciary to adjudi- cate claims of private rights. 6 li. Patent Infringement Is A Claim Of Private Right. A. Patent Infringement Claims Sound In Common-Law Trespass, A Private Right. A suit for patent infringement involves the de- termination of one party’s liability to another, see 35 U.S.C. §§ 271, 281 (2012), and patent infringement claims have long been the province of the judiciary. Pa- tent disputes, including validity challenges as defenses to claims of infringement, have been heard in courts since the first federal patent laws, see Act of Apr. 10, 1790, ch. 7, §§ 4-5, 1 Stat. 109, 111 (1790), and one can easily trace the “descent of today’s patent infringement action from the infringement actions tried at law in the 18th century.” Markman v. Westview Instruments, Inc., 517 US. 370, 377 (1996). Patent law has a historic kinship to common-law trespass, both in the sense of writs of trespass and tres- pass on the case that constitute the foundation for modern tort law, see Brown v. Kendall, 60 Mass. 292, 295 (1850), and of the property torts of the same name. “Trespass, and the role of writs as the basis for tres- pass actions, played a key role in early understandings of patent infringement liability.” Lynda J. Oswald, The “Strict Liability” of Direct Patent Infringement, 19 Vand. J. Ent. & Tech. L.. 993, 1000 (2017). This connec- tion is not merely a similarity, but a substantive link that has done real work in the law of patents. For ex- ample, the 1870 Patent Act stated that “damages for the infringement of any patent may be recovered by action on the case.” Act of July 8, 1870, ch. 230, § 59, 16 7 Stat. 198, 207 (1870) (emphasis added); see 3 William C. Robinson, The Law of Patents for Useful Inventions § 992, at 203 (1890) (comparing pleadings in patent cases to those “in other common-law actions”); id. § 1082, at 392 (noting that “[t]he acts of Congress, prior to 1819, made no provision for any suit in equity by the owner of the patent .. . in connection with his action jor damages at common law”) (emphasis added).” Reflecting these common-law roots, examples of treatment of patent infringement as trespass abound. A nineteenth-century treatise classified patent in- fringement as a species of “particular torts,” explaining that “infringement... is a wrongful act, in the nature of a trespass,” and noting that “of course the defendant in any such action or suit may plead the invalidity of the patent.” Arthur Underhill et al., Principles of the Law of Torts; or, Wrongs Independent of Contract 612, 652, 653 (1st American ed. from 2d English ed., Albany, William Gould & Son 1881) (quoting Union Sugar Re- finery v. Mathiesson, 24 F. Cas. 686, 689 (C.C.D. Mass. 1865) (No. 14,399) (Clifford, Circuit Justice) (charging the jury)). An 1856 circuit court decision explained that “(tlhe infringement of a patent is a tort; but as the 2 In contrast to the 1870 Act, the Patent Act of 1793 referred to “trespass on the case founded on this act.” Act of Feb. 21, 1793, ch. 11, § 5, 1 Stat. 318, 322 (1793) (emphasis added). Understood in conjunction with the Robinson treatise, this additional lan- guage must refer to the statutory source of the property right that the common-law writ of trespass un the case was meant to vindi- cate. In addition, as the absence of the “founded on this act” phase in the parallel provision of the 1870 Act confirms, a plaintiff’s ability to enforce its patent did not turn on that language. 8 wrongful act is not committed with direct force, and the injury is the indirect effect of the wrongful act of the defendant, the form of action is that description of tort called ‘trespass on the case.’” Stein v. Goddard, 22 F. Cas. 1233 (C.C.D. Cal. 1856) (No. 13,353); see also Thomson-Houston Elec. Co. v. Ohio Brass Co., 80 F. 712, 721 (6th Cir. 1897) (“An infringement of a patent is a tort analogous to trespass or trespass on the case.”). These are but a few examples; a large number of ninc- teenth-century cases describe infringement as a spe- cies of trespass. See Adam Mossoff, Who Cares What Thomas Jefferson Thought About Patents? Reevaluat- ing the Patent “Privilege” in Historical Context, 92 Cor- nell L. Rev. 953, 993 & n.192 (2007) (collecting cases). Consistent with this history, this Court has long discussed patent infringement in trespassory terms. For example, in Continental Paper Bag Co. v. Eastern Paper Bag Co., the Court referred to remedies for patent infringement as “reparation for the trespass.” 210 US. 405, 430 (1908). [n Carbice Corp. v. American Patents Development Corp., the Court stated that “(ilnfringement, whether direct or contributory, is es- sentially a tort, and implies invasion of some right of the patentee.” 283 U.S. 27, 33 (1931); see also Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S. 641, 648 (1915) (“ITlhe exclusive right conferred by the patent was property and the infringement was a tortious tak- ing of a part of that property. . . .”). Thus, although pa- tents are granted by an agency created by Congress, the infringement cause of action is closely linked to ac- tions at common law. Patent infringement is a claim to 9 vindicate a property right by an action deriving from the writ of trespass, and is the patent counterpart of the trespassory property torts. Once this connection to common-law trespass is recognized, the die is cast: This Court has never sug- gested that one private party’s claim of trespass against another could be adjudicated within the Exec- utive Branch. To the contrary, the Court in Murray’s Lessee made clear that “we do not consider congress can either withdraw from judicial cognizance any mat- ter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty.” 59 U.S. (18 How.) at 284. B. Patent Infringement Claims Bear Little Resemblance To Causes Of Action That Have Qualified For The Public Rights Exception. The close relationship between claims of patent in- fringement and claims of trespass comes into focus when infringement is contrasted with causes of action that have qualified for the public rights exception. For example, claims for compensation under the Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA), see Thomas, 473 U.S. at 582-83, lack connection in form or history to claims known to common law. Unlike the Patent Act, FIFRA is a modern regulatory statute that implemented “an essentially Icgislative function” of “ratemaking,” which Congress accomplished by au- thorizing subsidies for firms that submitted research 10 data to the federal government via a system that “per- mits the parties to fix the amount of compensation, with binding arbitration to resolve intractable dis- putes.” Jd. at 590 (citing St. Joseph Stockyards Co. v. United States, 298 U.S. 38, 49-53 (1936)). Similarly, in upholding a commission’s power to set reasonable rents and regulate rights of landlords vis a vis holdover tenants, this Court observed that “if public interest be established the regulation of rates is one of the first forms in which it is asserted... .” Block v. Hirsh, 256 U.S. 135, 157 (1921) (cited in Thomas, 473 U.S. at 589). Indeed, the government has numerous statutory com- pensation schemes — the Social Security system, for ex- ample —that are just as far removed from common law causes of action as they are from a claim of patent in- fringement. See 42 U.S.C. § 405(g) (2015) (providing for deferential judicial review of the decisions of the Com- missioner of Social Security). As another cxample, the Treasury Department’s issuance of a distress warrant to recover property pur- chased with federal funds embezzled by a customs of- ficer also lacked any antecedent private cause of action under the common law. See Murray’s Lessee, 59 U.S. at 284. This Court concluded that Article III courts were not constitutionally required to issue such warrants based on historical practice in England and the consti- tutional commitment to Congress of the power to lay and collect taxes, which Congress had authorized the Executive Branch to bring into effect via appointment of customs officers. Jd, at 281-82. Likewise, in Ex Parte 11 Bakelite Corp., this Court allowed the Court of Cus- toms Appeals to adjudicate appeals of the Tariff Com- mission’s exclusion orders after observing that this legislative court “was created by Congress in virtue of its power to lay and collect duties on imports and to adopt any appropriate means of carrying that power into execution.” 279 U.S. 438, 458 (1929). The Court ex- plained that “[t]he full province of the [customs] court under the act creating it is that of determining matters arising between the Government and others in the ex- ecutive administration and application of the customs laws” and noted that the customs court was empow- ered to decide “matters the determination of which may be, and at times has been, committed exclusively to executive officers.” Jd. Finally, as this Court in Crow- ell observed in its discussion of Murray’s Lessee, claims relating to immigration status and veterans benefits would similarly be committed to Executive and Legis- lative Branches. 285 U.S. at 51. None of these claims resemble causes of action at common law. As these cases illustrate, the question of whether a right at issue is public or private turns on the nature of the cause of action being adjudicated, not on the type of the underlying property interest in the abstract. Thus, while the Treasury Department could constitu- tionally issue distress warrants with respect to land, it could not adjudicate causes of action relating to that same land sounding in common law, such as trespass. Cf Caleb Nelson, Adjudication in the Political Branches, 107 Colum. L, Rev. 559, 588-89 (2007) (discussing Mur- ray’s Lessee and concluding that “even if the traditional 12 power of taxation enabled the government tu take authoritative actions adverse to core private rights without any ‘judicial’ involvement, and even if the power of cminent domain was cut from the same cloth in some respects, these deviations from the traditional framework were quite limited. Whatever their precise contours, they did not spill over to the broad areas of governmental authority that nineteenth-century jurists grouped under the loose rubric of the ‘police power.’”). But see Greene’s BIO at 7 (stating that “[pla- tents are quintessential public rights” without consid- ering the context of infringement litigation); Fed. BIO at 9 (same). A causc of action for patent infringement, a tort-like claim between private parties, cannot be fairly analogized to a ratemaking, a distress warrant, or a claim for compensation from the government, and therefore belongs only in an Article ILI court.* 3 This Court allowed adjudication of a common-law claim, sounding in contract, in a non-Article III tribunal in Commodity Futures Trading Commission v. Schor, 478 US. 833 (1986). In Schor, however, respondent consented to resolution of that claim in the very tribunal he was complaining about, and this Court’s later cases emphasized Schor’s consent rationale. See Wellness Int'l Network, Ltd. v. Sharif, 135 S. Ct. 1932, 1939 (2015); Cranfi- nanciera, 492 U.S. at 59 n.14 (“The |Schor| Court reached this con- clusion . . .on the ground that Congress did not require investors to avail themselves of the remedial scheme over which the Com- mission presided. The investors could have pursued their ciaims, atbeit less expeditiously, in federal court. By electing to use the speedier, alternative procedures Congress had created, the Court said, the investors waived their right to have the state-law coun- terclaims against them adjudicated by an Article LI court.”); Ralph Brubaker, Non-Article ITI Adjudication: Bankruptcy and Nonbankruptcy, With and Without Litigant Consent, 33 Emory 13 Il. Invalidity Is An Affirmative Defense To A Claim For Patent Infringement, Which Con- gress Has Unconstitutionally Delegated To An Agency To Resolve. A. Invalidity Is Inextricably Tied To Claims For Patent Infringement [n District Courts. 1. Invalidity, Which The IPR Statute Empowers The PTAB To Resolve, Can Be Charged In Patent Cases Only If There Is Actual Or Threatened In- fringement. Under the Patent Act, invalidity is an “affirmative defense” to a claim for patent infringement. Commil USA, LLC v. Cisco Sys., Inc., 135 S$. Ct. 1920, 1929 (2015); 35 U.S.C. § 282(b)(2) (2012). Accordingly, if es- tablished, invalidity precludes the defendant’s liability to the plaintiff in an infringement case, and so resolves “the liability of one individual to another under the law as defined.” Crowell, 285 U.S. at 51. Although invalidity can also be styled as a “coun- terclaim,” Cardinal Chem. Co. v. Morton Int'l, Inc. , 508 U.S. 83, 96 (1993), it is not a separate cause of action. Invalidity can be asserted at the outset of a patent case Bankr. Dev. J. 11, 39 (2016) (“[T] he Court has never upheld as con- stitutionally valid, in the face of a clear constitutional challenge thereto, a fina] judgment non-Article II] bankruptcy adjudication without consent of the litigants.”) (emphasis removed). In the in- stant case, there was no consent to PTAB adjudication. Petitioner chose the forum of a district court to pursue its patent infringe- ment claim. 14 only to counter a charge of infringement or as a claim for relief under the Declaratory Judgment Act, and the party asserting invalidity must face at least a “threat- ened enforcement action,” i.e., a suit for infringement. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 130 (2007). In the absence of “adverse legal interests” be- tween parties arising from an actual or threatened infringement claim, there is no case or controversy, and a district court has no subject matter jurisdiction over an assertion of invalidity. Jd. at 127 (citations omitted). Invalidity defenses and counterclaims in dis- trict courts are thus inextricably tied to claims of in- fringement. See Organic Seed Growers & Trade Ass’n v. Monsanto Co., 718 F.3d 1350, 1359 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 901 (2014) (declaratory judg- ment plaintiff must allege “significant, concrete steps to conduct infringing activity”) (citation omitted); Arris Grp., Inc. v. British Telecomme’ns PLC, 639 F.3d 1368, 1381 (Fed. Cir. 2011) (finding subject matter jurisdiction based on an “implied assertion” that the declaratory judgment plaintiff “was committing. . . infringement”). The IPR statute empowers the PTAB to decide questions of validity in an adversarial proceeding in the shadow of a district court. The effect of patent in- validation at the PTAB on court proceedings is that “the patentee’s cause of action is extinguished and the suit fails.” Fresenius USA, Inc. v. Baxter Int'l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 15 2295 (2014);* see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143 (2016) (“[A]} decision to cancel a patent normally has the same effect as a district court’s determination of a patent’s invalidity.”). The IPR proceeding, therefore, in operation allows the PTAB to take the adjudication of an affirmative de- fense to a private-right claim out of the courts and, in so doing, vests resolution of the action for infringement in an administrative agency. The close connection between assertions of inva- lidity in district courts and at the PTAB is reflected in the IPR statute itself, which precludes IPR institution if the potential defendant in an infringement suit “filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315(a)(1) (2012); see also id. § 315(aX(2). Moreover, Congress spelled out the rela- tionship between IPR and future infringement actions, id. § 315(e), and provided for appellate review of the PTAB’s decisions on the assumption that the peti- tioner would, as a party facing an actual or potential infringement suit, have standing to appeal the PTAB’s confirmation of the patentability of the claims at issue, id. §319.° Finally, a closely related statute setting * This case dealt with another type of PTO post-issuance pro- ceeding, but the suit-extinguishing effect of patent invalidations during IPR is the same. 5 This statutory design raises serious Article III problems of another kind in those rare cases in which an IPR petitioner is not facing a threatened enforcement action. See Consumer Watchdog v. Wis. Alumni Research Found., 753 F.3d 1258, 1262 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015) (analyzing the prede- cessor to the IPR statute and concluding that, given the absence 16 forth so-called “Post-Grant Review,” adopted in the same legislation as IPR, explicitly ties PTAB actions to assertions of invalidity defenses in district court. It states that “[a] petitioner . .. may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b),” the Patent Act’s “Defenses” section. Id. § 321(b). Although “the purpose of the [IPR] pro- ceeding is not quite the same as the purpose of district court litigation,” Cuozzo, 136 S. Ct. at 2144, statutory design reveals a close tie between the two. Thus, as a matter of Article 111 standing and stat- utory structure, private allegations of invalidity are inextricably linked to claims of infringement. The func- tion of invalidity determinations is often to resolve these claims. 2. PTAB Proceedings Typically Take Place In Parallel With Litigation. The connection between allegations of infringe- ment and assertions of validity is borne out in the ex- perience of the PTAB. The typical [PR takes place in the shadow of a district court, thus enabling the PTAB to moot the entire patent case by resolving the defense of invalidity. Parallel proceedings that might lead to such results were explicitly contemplated by Congress, 35 U.S.C. § 315, and are the norm in practice. A recent of adversity of legal interests between patentee and petitioncr, pe- titioner lacked Article ITI standing to appeal its PTAB loss to the Federal Circuit). 17 empirical study found that approximately 70% of IPR petitioners have challenged before the PTAB the same patents that they had been accused of infringing in dis- trict courts. Saurabh Vishnubhakat eft al., Strategic Decisionmaking in Dual PTAB and District Court Pro- ceedings, 31 Berkeley Tech. L.J. 45, 73 (2016) (“We find that, overall, [Covered Business Method] and IPR petitions are in fact predominantly assertions of the petitioners’ own direct interests with respect to in- fringement liability on the particular patent being challenged.”). The devclopments that brought the instant case to this Court are typical and illustrative. Petitioner Oil States sucd respondent Greene’s for patent in- fringement in a district court and sought monetary and injunctive relief. Complaint at 6-7, 12-13, O7/ States Energy Servs., LLC v. Trojan Wellhead Protec- tion, Inc. and Greene’s Energy Grp., LLC, No. 6:12-cv- 00611-RWS (E.D. Tex. Sept. 10, 2012), ECF No. 1. The trial judge construed the asserted claims and denied Greene’s motion for summary judgment of invalidity of the claims under 35 U.S.C. § 112(b), 2014 WL 12360946 (E.D. Tex. June 23, 2014), discovery closed, and the date for jury trial was set, ECF No. 173 (Mar. 16, 2015). Greene’s, however, had filed a petition for an IPR. In an administrative ruling that was summarily affirmed by the Federal Circuit, the PTAB invalidated the very patent claims that Oil States had alleged Greene’s was infringing. Greene’s Energy Grp., LLC v. Ou States Energy Servs., LLC, Case IPR2014-00216, 2015 WL 18 2089371 (Patent Tr. & App. Bd. May 1, 2015), aff’d, 639 Fed. App’x 639 (Fed. Cir. 2016) (mem.). In so doing, the PTAB effectively resolved the infringement case in fa- vor of Greene’s, and the patent suit would have been fully extinguished had this Court not granted certio- rari in this case. Given the commonality of these parallel proceed- ings, the prospect of conflicting decisions between the agency and Article III courts is real. And when the PTAB and the courts reach opposing conclusions with respect to validity, the agency supersedes the courts. For example, as long as the district court has issues left to address in a case and all the appeals have not been resolved,® the PTAB’s decision to invalidate a patent can wipe out a judgment for past monetary damages, even if that judgment was affirmed by the Federal Cir- cuit in a prior opinion. Fresenius, 721 F.3d at 1340-44. Moreover, the PTAB’s invalidity decision can undo a judgment of contempt against an infringer for disre- garding an injunction, as long as the injunction was not final. ePlus, Inc. v. Lawson Software, Inc. , 789 F.3d 1349, 1356-58 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 1166 (2016).’ ® See Paul R. Gugliuzza, (invalid Patents, 92 Notre Dame L. Rev. 271, 295-307 (2016) (discussing the “absolute finality” rule). ? Questioning this result, a dissent filed in ePlus explained that the dual-track system “encourages defendants to scrap and fight to keep underlying litigation pending in the hope that they will fare better with the PTO and then be able to unravel the dis- trict court judgment against them.” ePlus, Inc. v. Lawson Software, Inc., 790 F.3d 1307, 1314 (Fed. Cir. 2015) (Moore, J., dissenting 19 3. By Resolving Invalidity, The PTAB Takes Infringement Suits Away From District Courts. In creating the IPR system, Congress dissected a cause of action that is rooted in the common law and has long been the exclusive province of the judiciary, and vested a particular aspect of that cause of action, the affirmative defense of invalidity, in an agency. Once the PTAB establishes invalidity, it does not matter what conclusion the courts have reached with respect to validity or infringement of the same patent in a case between the same parties — the suit is resolved in favor of the defendant.* Cf Fresenius, 721 F.3d at 1339 (“[T]he language and legislative history of the reexam- ination statute show that Congress expected reexami- nation to take place concurrent with litigation, and that cancellation of claims during reexamination would be binding in concurrent infringement litiga- tion.”).? Such a scheme — which renders a district court a mere adjunct to the PTAB in the resolution of a claim from denial of rehearing en banc); Peggy P. Ni, Rethinking Final- ity in the PTAB Age, 31 Berkeley Tech. L.J. 557, 586 (2016) (“(A]ileged infringers arc incentivized to prolong district court lit- iyation in hopes of receiving a favorable PTO determination.”). ® Because of “a lower standard of proof and the broadest rea- sonable interpretation standard of claim construction” at the PTO, In re Baxter Int'l, Inc., 678 F.3d 1357, 1360-61 (Fed. Cir. 2012), it does not matter that the patent’s validity was upheld in a parallel district court proceeding, even if that decision was af- firmed on appeal, id. at 1364-65. ® Even if the patent survives PTO review with amended claims, the original claims are cancelled, i.e., rendered invalid. See Fresenius, 721 F.3d at 1339-40. 20 for liability in a patent case — offends Article III be- cause it allows an agency to dispose of “a private right, that is, the liability of one individual to another under the law as defined.” Crowell, 285 U.S. at 51. The fact that district courts might still adjudicate whether the defendant infringes the patent and whether the patent is valid — if the PTAB happens to uphold the challenged claims — does not cure the con- stitutional problem. An example will illustrate why. Suppose a trespass claim arises under the law of a ju- risdiction in which consent is an affirmative defense." Given that the prima facie trespass claim must be ad- judicated in an Article III tribunal, it would be odd to conclude that Congress could nonetheless delegate to an agency the question of consent with the effect that a trespass suit must be dismissed if the agency found that the plaintiff consented to entry. When agencies de- cide questions that require the dismissal of a case, courts are Ieft with nothing to adjudicate, and the plaintiff is denied its day in an Article II{ forum. The cifect in the patent context is the same: Con- gress impermissibly enabled an agency to “oust the jurisdiction of [a] court to which the [patent] owner might apply for an adjudication of his rights.” Mc- Cormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 611-12 (1898), Even if district courts might 1” Cf Envtl. Processing Sys., L.C. v. FPL Farming Ltd., 457 S.W.3d 414 (Tex, 2015) (reversing a lower court’s holding that con- sent to trespass is an affirmative defense in ‘Texas after conclud- ing that the lack of consent is part of the plaintiff’s prima facte case). 21 have something meaningful left to do in some infringe- ment cases running in paralle! with PTAB proceedings, and even though some decisions in parallel infringe- ment cases are not rendered null by the PTAB, the IPR scheme still cannot stand. “A statute may no more law- fully chip away at the authority of the Judicial Branch than it may eliminate it entirely.” Stern, 546 U.S. at 502-03. B. PTO Expertise Does Not Justify The PTAB’s Authority To Bind Federal Courts. 1. Expertise Does Not Allow Agencies To Take The Place Of Courts When Pri- vate Rights Are At Issue. A counterargument respondents are likely to ad- vance is that the PTO possesses expertise with respect to patent validity that makes agency adjudication per- missible in this case. The PTO does play an important role in a “particularized area of law,” Stern, 564 U.S. at 489 n.6, and this specialization was central to the Fed- eral Circuit’s rejection of a prior Article III challenge to IPR, see MCM Portfolio, 812 F.3d at 1291 (“It would be odd indeed if Congress could not authorize the PTO to reconsider its own decisions.”). And, to be sure, this Court has referred to the PTO’s “special expertise.” Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012). Nonetheless, while this Court has deferred to agency expertise in deciding whether a claim may be adjudicated outside an Article III court, e.g., Schor, 478 U.S. at 855-56, it has done so when “the magnitude of 22 any intrusion on the Judicial Branch can only be termed de minimis,” id. at 856. This is not such a case. When a plaintiff is attempting to exercise its rights un- der a patent, it is asserting a property right via a claim stemming from the common law, necessitating an Arti- cle III forum for the claim’s resolution. Cf Nelson, su- pra, at 578 (describing the “vest[ing]” or rights granted by land patents, whereby rights could not be taken away without a judgment of a court, even though an agency was responsible for the initial grant); see also Act of Apr. 10, 1790, § 5, 1 Stat. 109, 111 (empowering “defendant|s|” in patent infringement cases to make pleas to “repeal. . . patents” via an “oath or affirmation made before the judge of the district court”). Infringe- ment causes of action, therefore, do not fall within the sphere of “a limited regulatory objective within the agency's authority.” Stern, 564 U.S. at 490. That is not to say that the P'l'O’s expertise can never be invoked to address validity of a patent after its grant. Indeed, post-issuance proceedings can “help| | protect the public’s ‘paramount interest in seeing that patent monopolies... are kept within their legitimate scope.” Cuozzo, 136 S. Ct. at 2144 (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 US. 806, 816 (1945)). More generally, certain “curative” statutes have withstood constitutional scrutiny. See, e.g., Graham v. Goodcell, 282 U.S. 409, 428-31 (1931); see also Cuozzo, 136 S. Ct. at 2144; cf Mark D. Janis, Rethinking Reexamination: Toward a Viable Admin- istrative Revocation System for U.S. Patent Law, 11 Harv. J. L. & Tech. 1, 93-122 (1997) (discussing possible 23 post-issuance review schemes that are unlikely to raise constitutional! problems). For example, Congress could create an opposition proceeding that would pre- vent a patent from being enforceable until it undergoes third-party challenges to validity within a defined pe- riod after a provisional grant. Cf 15 U.S.C. § 1063 (2006) (setting forth the process of opposition to trade- mark registration). But the IPR scheme goes well beyond empowering the PTO to correct its own mistakes, instead installing the PTAB as a kind of specialized quasi-court au- thorized to make determinations that are binding on Article II] courts in which these questions have tradi- tionally been adjudicated. In addition to the effects al- ready discussed, supra Section III.A, the IPR statute includes an estoppel provision stating that an IPR pe- titioner “may not assert either in a civil action arising . under section 1338 of title 28 or in a proceeding before the International Trade Commission .. . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that {IPR].” 35 U.S.C. § 315(e)(2). This subsection reinforces the conclusion that the IPR statute has gone beyond error correction and empowered the PTAB to function as an alternative adjudicatory forum for cases in the district courts. 24 2. The PTAB’s Role In IPRs Extends Be- yond Functions That Expert Agencies Have Traditionally Been Permitted To Exercise. The PTAB’s role under the IPR statute with re- spect to private rights is unlike those exercised even by expert agencies in other contexts. The PTO’s singu- lar power to effectively decide patent infringement suits in a plenary fashion by invalidating patents lies in stark contrast to, first, the role of an agency under the doctrine of primary jurisdiction, under which “the federal courts have developed the practice of using their discretionary power to decide that certain issues otherwise properly in federal court must be litigated before a federal administrative agency,” Sidney A. Shapiro, Abstention and Primary Jurisdiction: Two Chips Off the Same Block - a Comparative Analysis, 60 Cornell L. Rev. 75, 79 (1974) (emphasis added); see Clark v. Time Warner Cable, 523 F.3d 1110, 1114 (9th Cir. 2008) (“The primary jurisdiction doctrine allows courts to stay proceedings or to dismiss a complaint without prejudice pending the resolution of an issue within the special competence of an administrative agency. A court’s invocation of the doctrine does not in- dicate that it lacks jurisdiction. Rather, the doctrine is a ‘prudential’ one, under which a court determines that an otherwise cognizable claim implicates technical and policy questions that should be addressed in the first instance by the agency with regulatory authority over the relevant industry rather than by the judicial branch.” (quoting Reiter v. Cooper, 507 U.S. 258, 268-69 25 (1993)). Under the IPR statute, however, courts lack any discretion whether or not to defer to the agency, and effectively lose jurisdiction upon PTAB invalida- tion of the asserted patents. Second, the PTAB’s role extends beyond that played by agency determinations that could foreclose litigation in courts under traditional issue or claim preclusion principles. For example, a preclusive effect of a prior determination by an agency is subject to standard rules of res judicata, such as identity of is- sues, B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1305-08 (2015), and might be avoided if there is a “compelling showing of unfairness,” id. at 1309 (quoting Restatement (Second) of Judgments § 28, Comments g and j, at 283-84 (1980)); see also id. at 1306 (“Ultimately, [Trademark Trial and Appeal] Board deci- sions on likelihood of confusion . . . should be given pre- clusive effect on a case-by-case basis.” (quoting A. LaLonde, Gilson on Trademarks § 11.08(4]{ijLiii iB), p. 11-319) (2014)) (emphasis added). But under the IPR scheme, PTO decisions of invalidity effectively bind district courts even if the specific issues litigated were not the same, and there is no case-by-case analysis or an unfairness out. Cf ePlus, 790 F.3d at 1315 (conclud- ing that finality gamesmanship under the current re- gime can be “just plain unfair”) (Moore, J., dissenting from denial of rehearing en banc).’' In addition, while “! In contrast, the International Trade Commission’s invalid- ity determinations are not binding on future tribunals. Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1019 (Fed. Cir. 1987). 26 PTAB determinations of invalidity dispose of concur- rent litigation in the federal courts, court determina- tions of invalidity have no preclusive effect of any kind on the PTO. See Baxter, 678 F.3d at 1360-61. Third, the role of the PTAB under the IPR system extends far beyond that of agencies functioning as “an adjunct to the [district] court” in cases involving pri- vate rights, whereby “the ‘essential attributes’ of the judicial decision must remain in an article ILI enforce- ment court.” Richard H. Fallon, Jr., Of Legislative Courts, Administrative Agencies, and Article HI, 101 Harv. L. Rev. 915, 924 (1988) (citing Crowell, 285 U.S. at 50-51); see Stern, 564 U.S. at 489 n.6 (“[T]he ad- ministrative adjudicator had only limited authority to make specialized, narrowly confined factual determi- nations regarding a particularized area of law and to issue orders that could be enforced only by action of the District Court.”) (discussing Crowell). Under the IPR statute, the PTAB is more than an adjunct and more, even, than a district court’s equal. Instead, the PTAB makes determinations that bind the courts. See supra Section IT].A. Notably, the PTAB’s decisions are not subject to de novo review by a district court and require no court action for enforcement. See, e.g., Joint Stipu- lation of Dismissal at 2, elcommerce.com v. SAP AG, 745 F.3d 490 (Fed. Cir.), vacated, 564 Fed. App’x 599 (Fed. Cir. 2014) (en banc) (mem.) (No. 11-1369), ECF No. 50 Gointly moving to dismiss an appeal of an in- fringement case where the PTAB invalidated the as- serted patents and “no appeal {of the PTAB’s decision] was filed”). 27 3. The Statutory Scheme At Issue Breaks With The Historical Practice Of De Novo Review Of PTO Determinations. Before the advent of recently adopted post-issuance proceedings, Congress has long given parties aggrieved by PTO determinations an option to challenge the agency in a district court. Thus, the PT'AB’s power to decide validity of issued patents subject only to defer- ential appellate review, 35 U.S.C. § 141(c) (2012); see Dickinson v. Zurko, 527 U.S. 150, 152-53 (1999), can be contrasted — for example — with challenges to the PTO’s decisions under § 145, the section of the Patent Act at issue in Hyatt, 132 S. Ct. at 1700. That section, titled “Civil action to obtain a patent,” grants patent applicants the right to challenge the PTO’s rejection of their desired patent claims in a district court, and em- powers the court to take evidence that was not before the PTO and make de novo determinations of validity. Hyatt, 132 S. Ct. at 1694-95; see id. at 1696 (“The PTO, no matter how great its authority or expertise, cannot account for evidence that it has never seen.”). In con- trast to the IPR scheme, § 145 provides a model for the PTO’s functioning that is consistent with the role of the agency as an adjunct to an Article IIT court. Notably, de novo review of PTO determinations has deep historical roots. See Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 61 (1884) (discussing the predecessor statute to § 145); see also Hyatt, 132 S. Ct. at 1697-98. When the 1952 Patent Act granted to the PTO, for the first time, the power to cance! claims of an 28 issued patent without the applicant’s consent” in a so- called interference proceeding, Congress allowed for de novo review in district court of that decision under 35 U.S.C. § 146," the section that paralleled, and was con- sistent with, § 145; see Troy v. Samson Mfg. Corp., 758 F.3d 1322, 1325-28 (Fed. Cir. 2014); cf Executive Bene- fits Ins. Ag’cy v. Arkison, 134 S. Ct. 2165, 2171 (2014) (upholding the power of bankruptcy courts to adjudi- cate Stern claims because of availability of de novo review in district courts, which also enter final judg- ments). As noted by one of the 1952 Act’s drafters, this power of “cancellation of the claims involved from the patent. . .is new in substance and is made possible by the amplification of the right of review of the patentce provided for in section 146.” P.J. Federico, Commentary on the New Patent Act, 75 J. Pat. & Trademark Off, Soe’y 161, 193 (1993) (reprinted from Title 35, United States Code Annotated (1954 West Publishing Co. ed.)). The IPR statute breaks with this long practice. ‘2 A patentee can voluntarily request that the PTO replace a patent with a reissued one that reflects a correction of some error in the original patent. See 35 U.S.C. § 251 (a) (2012). This proceed- ing, by which the PTO correcta a defective patent with the pa- tentee’s consent, is not relevant here. 'S Act of July 19, 1952, Pub. L. No. 82-593, § 146, 66 Stat. 792, 803 (1952). This section was amended in 2011, as interferences were replaced with so-called “derivation” proceedings. 35 U.S.C. § 146 (2011). The new § 146, however, still allows the party ag- grieved by the PTO’s decision a “remedy by civil ac‘ ion” in district court. Id. 29 Under the challenged scheme, the PTAB wields signif- icant power vis a vis Article III courts, and doves so in a context in which private rights are implicated. Cc. The PTAB’s Invalidity Determinations Are Not Collateral, But Central, To In- fringement Suits, And Are Designed To Preempt District Court Adjudication Of The Same Questions. Another argument likely to be advanced in sup- port of the IPR statute is that court proceedings can sometimes be mooted by collateral actions of agencies without offending Article [II]. For example, a case might become moot when an agency withdraws a prior decision that is subject to a court challenge and re- places it with another decision. See, e.g., Theodore Roo- sevelt Conservation P’ship v. Salazar, 661 F.3d 66, 79 (D.C. Cir. 2011) (holding that it is “impossible to grant any prosnective relief” for alleged non-enforcement of an agency decision that was superseded, and dismiss- ing the appeal as moot); Ctr. for Sct. in the Pub. Interest v. Regan, 727 F.2d 1161, 1164 (D.C. Cir. 1984) (dismiss- ing as moot an appeal challenging a rule that was su- perseded); see Note, “Moot” Administrative Orders, 53 Harv. L. Rev. 628 (1940). The statutory scheme at issue in this case, how- ever, is different. Here, an agency resolves the very same issues of patent validity that district courts are empowered to adjudicate in the course of infringe- ment suits. Under the statutory design, the PTAB 30 proceeding is not collateral to, but can be intimately connected with and frequently triggered by, “Action[s]” for patent infringement. 35 U.S.C. § 315(b). PTAB de- cisions are made in trial-like proceedings often impli- cating, as here, the same two parties that are involved in parallel district court litigation. See supra Section III.A. This Court, indeed, acknowledged the IPR’s func- tion of “helping resolve concrete patent-related dis- putes among parties.” Cuozzo, 136 S, Ct. at 2144. But the PTAB can do a lot more under the IPR statute than merely “help.” It can make determinations that a dis- trict court in a parallel proceeding has no discretion to reject, even if the suit already reached advanced stages and even if the court already entered judgment that the patentee is entitled to retrospective relief. See, e.g., Ultratec, Inc. v. CaptionCall, LLC, Nos. 2016-1708, 2016-1709, 2016-1715, 2017 WL 3687453, at *1 (Fed. Cir. Aug. 28, 2017); Fresenius, 721 F.3d at 1340-44; Translogic Tech., Inc. v. Hitachi, Ltd., 250 Fed. App’x 988 (Fed. Cir.) (unpublished), cert. denied, 555 U.S. 1045 (2008). In such circumstances, the PTAB steps into the shoes of a court on certain questions of invalidity and takes over its role to “render dispositive judgments.” Frank H. Easterbrook, Presidential Review, 40 Case W. Res. L. Rev. 905, 926 (1989). The dispositive effect of PTAB determinations on co-pending cases is not hap- penstance of agency vicissitudes, but a part of the stat- utory design. The Constitution cannot countenance an adjunct role for Article III courts in the adjudication of 31 the private rights embodied in the patent infringement cause of action. IV. The IPR Statute Offends The Principle Of Separation Of Powers By Allowing An Agency To Direct A Court How To Decide A Specific Case. A. PTAB Determinations Of Invalidity Func- tion As “Rules of Decision” That End Pending Cases. Coordinate branches may not “prescribe rules of decision to the Judicial Department of the government in cases pending before it.” Plaut v. Spendthrift Farm, Ine., 514 U.S. 211, 218 (1995) (quoting United States v. Klein, 80 U.S. (13 Wall.) 128, 146 (1872)). Although this principle does not prohibit Congress from amending applicable law so as to affect outcomes in pending cases, Robertson v. Seattle Audubon Soc., 503 U.S. 429 (1992), this Court suggested that Congress may “over- step[] its bounds by granting [a court] jurisdiction to decide the merits of [a] claim, while prescribing a rule for decision that left the court no adjudicatory function to perform.” United States v. Sioux Nation, 448 U.S. 371, 392 (1980) (citing Klein, 80 U.S. (13 Wall.) at 146). Congress has done just that here. While allowing courts to retain jurisdiction over patent cases, it also empowered the PTAB to make determinations that make courts superfluous. Sioux Nation is instructive on the reach of the sep- aration of powers principles relevant here, and shows 32 why IPRs violate them. As characterized in Plaut, the statute under consideration in Sioux Nation “required the Court of Claims. . . [to] review on the merits, with- out regard to the defense of res judicata or collateral estoppel, a Sioux claim for just compensation from the United States — even though the Court of Claims had previously heard and rejected that very claim.” 514 US. at 230 (citing Sioux Nation, 448 U.S. at 391-92). The Court in Sioux Nation concluded that this statute did not offend separation of powers because “it neither brought into question the finality of [the Court of Claims’ earlier judgments, nor interfered with that court’s judicial function in deciding the merits of the claim.” 448 U.S. at 406. Here, however, the PTAB intcr- fered with the judicial function by effectively terminat- ing a patent case via adjudicating the defense of invalidity, thereby taking away a court’s ability to de- cide the case. Under this scheme, the courts have been relegated to the role of a stalking horse. B. Rather Than Amend Applicable Law, The IPR Statute Delegates To The PTAB The Power To Pick Winners And Losers In Patent Cases. This Court’s recent decision in Bank Markazi v. Peterson reiterated the long-held principle that amend- ments to applicable law during the pendency of litiga- tion do not offend separation of powers. 136 S. Ct. 1310, 1317 (2016). The law whose constitutionality was up- held in Bank Markazi made certain assets subject to attachment for the execution of judgments in a specific 33 set of cases. Jd. at 1332-33. This Court reasoned that “a statute dues not impinge on judicial power when it directs courts to apply a new legal standard to undis- puted facts.” Id. at 1325. The Court made clear, how- ever, that “Congress could not enact a statute directing that, in ‘Smith v. Jones,’ ‘Smith wins.’” Jd. at 1323 n.17. In addition, the Court noted that the statute under dis- pute “facilitates execution of judgments in 16 suits,” rather than a single suit, id. at 1326, and explained that its decision was driven in part by the tradition of the courts’ deference to the coordinate branches in matters of foreign policy, id. at 1328-29. But here, there was no amendment of applicable law, passed by Congress and signed by the President, that had the effect of terminating some group of pend- ing cases. Instead, Congress has delegated to the Exec- utive Branch an unprecedented power, subject only to deferential appellate review, to effectively decide partic- ular patent infringement suits. As discussed through- out, that power has the character of directing a court to decide that, in “Patentee v. Infringer,” “Patentee loses,” if the PTAB concludes that the claims that are also asserted in litigation are invalid. The intervening determination is not a change in governing law that embodies a new legal standard, but a legal conclusion made by an arm of the Executive Branch that effec- tively terminates individual patent cases. 34 V. Adjudication Of Cases Involving Private Rights In Article III Courts Effectuates The Values Protected By The Doctrine Of Sepa- ration Of Powers. In part because of its independence from political whims, the federal judiciary serves as an important safeguard of liberty in its role as a neutral arbiter of private disputes. “This Court consistently has given voice to, and has reaffirmed, the central judgment of the Framers of the Constitution that, within our polit- ical scheme, the separation of governmental powers into three coordinate Branches is essential to the preservation of liberty.” Mistretta v. United States, 488 US. 361, 380 (1989). In contrast, a system that reposes the ability to end lawsuits involving private rights in the Executive Branch is fraught with potential of fa- voritism and raises the specter of a coordinate branch’s power to pick winners and losers that has been this Court’s concern. Bank Markazi, 1368S. Ct. at 1323 n.17; N. Pipeline, 458 U.S. at 58 (plurality op.) (characteriz- ing Article III “{a]s an inseparable element of the con- stitutional system of checks and balances, and as a guarantee of judicial impartiality”). Patent law itself provides an example. Over a dec- ade ago, the PTO Director decided to order reexamina- tions of patents at issue in high-stakes infringement cases involving lesser-known plaintiffs (Eolas and NTP) and high powered defendants (Microsoft and RIM — the maker of BlackBerry — respectively). See Amy L. Magas, Comment, When Politics Interfere with Patent Reexamination, 4 J. Marshall Rev. Intell. Prop. 35 L. 160, 160 (2004) (“The recxaminations were ordered after an independent or small entity inventor received a substantial judgment against a large company.”). Not surprisingly, these decisions “created controversy among patent practitioners,” id. at 168, and some have argued that the PTO actions “disrupt[ed] the judicial system” because patents were being reexamined “at the same time as [their] validity is examined in a federal district court,” id. at 170. Worse yet, the NTP reexamination was marred by allegations of ex parte contacts between PTO officials and RIM representatives, and of other undue external influence on the PTO. See, e.g., Dennis Crouch, RIM v. NTP Continues to Trouble Patent Office, Patently-O, https://patentlyo.com/patent/2008/05/rim-v-ntp-conti. html (May 12, 2008) (“It is clear. . . that in the months lead- ing up to the NTP settlement, the PTO was feeling a tremendous amount of political pressure from RIM as well as Congress and the Senate.”), Kevin E. Noonan, What the Director’s Letter Did Not Say, Patent Docs, http:/Awww.patentdocs.org/2008/06/what-the-dircct.html (June 15, 2008). But in the courts, the picture was dif- ferent. Judge Spencer, who presided over the NTP-RIM infringement case, made it clear that he would follow binding law even if it meant enjoining RIM from mak- ing and selling the BlackBerry in the United States, and would do so in spite of “the politics” and “the lob- bying.” Catherine Fredenburgh, Reading the Black- berry Tea Leaves, Law360, https://www.law360.com/ articles/5509 (Mar. 1, 2006) (quoting a transcript of the permanent injunction hearing); id. (“[Judge Spencer] 36 is. . . telling the parties that he will not allow political pressure or media limelight to sway his decision in any way.”). Judge Spencer’s approach in the BlackBerry lit- igation is the stuff that Article HII is made of. Even before allegations of impropriety in the NTP reexamination process surfaced, a proposal was made “to minimize influences from the political arena” on high-stakes patent cases. Magas, supra, at 179. But a mechanism for doing so already exists. That mecha- nism is the doctrine of separation of powers, which pre- vents the political branches from stepping into the shoes of the courts. Indeed, “|j]udicial power . . . is the power of a court to decide and pronounce a judgment and carry it into effect between persons and parties who bring a case before it for decision.” Muskrat v. United States, 219 U.S. 346, 356 (1911). The statutory scheme at issue in this case contravenes the doctrine of separation of powers because it empowers an agency to decide cases in which private rights are at stake in place of the courts, and it cannot stand in the current form. SJ CONCLUSION The IPR statute violates Article III of the Con- stitution and the separation of powers doctrine by im- permissibly entrusting adjudication of private-right 37 claims to an agency. The judgment of the Federal! Cir- cuit should be reversed. Respectfully submitted, DMITRY KARSHTEDT Counsel of Record GEORGE WASHINGTON UNIVERSITY SCHOOL OF LAW 2000 H Street, N.W. Washington, DC 20052 dkarshtedt@law.gwu.edu (202) 994-5725 August 31, 2017 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0724%3A46. Public record. Not legal advice.