# Amicus Curiae Brief — Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 350 (2017) (No. 16-712)

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0724%3A63

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2017

## Text

Supreme Court, U.S.
FILED

AUG 31 2017

No. 16-712
OFFICE OF THE CLERK
a = = = —

Bn the
Supreme Court of the Anited States

Or. 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

BRIEF OF 27 LAW PROFESSORS AS AMICI
CURIAEIN SUPPORT OF PETITIONER

ADAM MOSSOFF SEAN D. JORDAN
Antonin Scalia Law School Counsel of Record
GEORGE MASON ADAM W. ASTON
UNIVERSITY JACKSON WALKER L.L.P.
3301 Fairfax Drive 100 Congress Avenue,
Arlington, VA 22201 Suite 1100

Austin, TX 78701

sjordan@jw.com

(512) 236-2281

ne

1
QUESTION PRESENTED

Whether inter partes review—an adversarial
process used by the Patent and Trademark Office
(PTO) to analyze the validity of existing patents-—
violates the Constitution by extinguishing private
property rights through a non-Article [J forum
without a jury.

i

TABLE OF CONTENTS
te ccuietnecwaudébvescoressons 1
a cacdisnenbetebeiecersses il
I I ccs ncunpsiocecssuwesscauesesncessoees J
I cenvawvervscoeseusdckosncosesses ee

|. Since the Early American Republic, ‘This
Court and Lower Federal Courts Have
Defined Patents as Private Property

li. This Court Has Provided Constitutional
Protection to Patents as Private Property
Rights for Two Hundred Yeurs....................... 10

Ill. This Court Recently Reaffirmed That
Patents are Private [Property Rights
Secured Under the Constitution .................... 17

eG es cepasauuscacueusonnes 19

il

TABLE OF AUTHORITIES

Cases

Allen v. New York,

1 F. Cas. 506 (C.C.S.D.N.Y. 1879)...........

Atlas Rooting Co. v. Occupational Safety
& Health Review Comm'n,

SIU, BO FAD aco ccnecsscsesccesens ilaelaestl

Ayling v. Hull,

2 F. Cas. 271 (C.C.1). Mass. 18685)...........

Ball v. Withington,

2 F. Cas. 556 (C.C.S.D. Ohio 1874) .........

Batten v. Silliman,

2 F. Cas. 1028 (C.C.E.D. Pa. 18655)..........

Brooks v. Byam,

4 F. Cas. 261 (C.C_D. Mass. 1843)...........

Buck v. Cobb,

4 F. Cas. 546 (C.C_N.D.N.Y. 1847)..........

Burleigh Rock-Drill Co. v. Lobdell,

4 F. Cas. 750 (C.C.D. Mass. 1875)...........

Butner v. United States,

Me I once iin ches ace nbs caobeaducdeuddee ss

Page(s)

shbgseounetent 9

w

iv

Cammeyer v. Newton,

ee ee et 12. 13, 36, 38
Carew v. Boston Elastic Fabrie Co.,

SP. Ce, OG ee Si cg ee fs)
Carr v. Rice,

Sr. Ce, BO Oe, Fs ei 7
Cascades Projection LLC v. Epson Am., Inc.,

EG FAS TOGO Wee. Cir, BOUFD a vncsisecrecsececvescdesess’ 12
Crowell v. Benson,

ie IRE: eae et Aarne = 8 oe 8 5
Davoll v. Brown,

7, Cos, 007 G.I Memon, 1OOO ei 10

Dobson v. Campbell,
7 ¥. Gos. FO0 CCD. We. 1608) ceed 6, 7

Earle v. Sawyer,
8 F. Cas. 254 (C.C.D. Mass. 1826)........................ 8

Eastman v. Bodfish,
SF. Com. Se oe eee. 16D) oe 7

eBay Inc. v. MercExchanye, L.L.C.,
RO: Ce, Dr i hcsesentecs tack ecinnes 19

kx parte Wood,
SS UTD. Bh Wt) OO Chika ove vos veecectenne 6

Vv

Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co.,
I i PU NO ia ieics writin is niceetareien 19

Fla. Prepaid Postsecondary Educ.
Expense Bad. v. Coll. Sav. Bank,
Oe arcs sacs neieteiscdobions 3,19

Gay v. Cornell,
50 F Cas. 190 0.0 B.D. Y... TOI vecciiccsccsncesses 10

Gayler v. Wilder,
A UI CEO Paarae) SAF CRI asi csc cnacscescvvevscsonsces 8

Goodyear Dental Vulcanite Co. v. Van Antwerp,
Os FA GE TET TID ia caenscncescncseccsvessons 7

Grant & Townsend v. Raymond,
10 F. Cas. 985 (C.C.S.D.N.Y. 1829)..........:ccec00- 218

Gray v. James,
SW Pine. FOGG C.D. Dik. UBT FD ccacsndesccccensscsseeees 9

Hayden v. Suffolk Mfg. Co.,
11 F. Cas. 900 (C.C.D. Mass. 1862)...................-- 10

Horne v. Dep't of Agric.,
4 Bee | one eerennen 2,17, 18

Hovey v. Henry,
12 ¥. Cas. 603 (C.C.D. Mass. 1846)..........-.......22-+. 7

James v. Campbell,
OG ane 3,5, 18

vi

Lightner v. Kimball,
15 F. Cas. 518 (C.C.D. Mass. 1868)..................... 10

Livingston v. Jones,
15 F. Cas. 669 (C.C.W.D. Pa. 1861)
(rev'd hy Jones v. Morehead,
I re I a race cara casceccesiassaceesusicunscavaceeatens 7

McClurg v. Kingsland,
43 US. (i Flow.) BOS (CIDER) .......ccc<csc0c0000s: 10-12, 16

McCormick Harvesting Mach. Co. v. C.
Aultman & Co.,

Sarr a 12, 18
McKeever v. United States,

ct: Re & 1). Reema cnenenen ee 13-16
MCM Porttolio LLC v. Hewlett-Packard Co.,

812 F.3d 1284 (Fed. Cir. 2015).............. 2, 4, 12, 16
Moore v. Marsh,

oT a SO TES GS iat alee y
Pennock v. Dialogue,

Bee A ee NEO CRI eesisisedes tee sinexeicsorsonnsenincnn 7,8

Potter v. Holland,
10 F. Com: 1166 6C.C. Comte. ERD BD acccecccscasseceovscves: y

Russell v. United States,
ee rs WN ee cece cuvecan hore eeonseds 13

Vii

Soe’y for the Propagation of the Gospel
in Foreign Parts v. New Haven,

21 U.S. (8 Wheat.) 464 (1823).....0.000000.....

Stern v. Marshall,

Se er i iincesicrsenacuinaconies

Suydam v. Day,

$3 F. Cas. 678 C.CB.D.N.Y.. UBGG)...20.0::cccsesersses00

Tull v. United States,

IT TE ST osewcesscsavescinecesessssowveniss

United States v. Butfalo Pitts Co.,

UF Se Ce oi ibs sen icctcsepastects snes

United States v. Burns,

ee CUD. sespeuwcasaibansetinas

Vanhorne's Lessee v. Dorrance,

2 US. (2 Dall.) 304 (1795) .............ccscoveee-

Winans v. Denmead,

56 U.S. (15 How.) 330 (1853)................5

Constitutional Provision & Statute

ee ae ee ee

OR OO OG see ccsvaeascovuniecinecsidoraseis

Vill
Other Authorities

Adam Mossoff, Patents as Constitutional
Private Property. The Historical
Protection of Patents Under the Takings
Clause, 87 B.U. L. Rev. 689 (2007)............ccceecceeees 3

Adam Mossoff, #xc/usion and Exclusive Use
in Patent Law, 22 Harv. J. L. & Tech. 321

The Federalist No. 48, at 271-72 (James
Madison) (Clinton Rossiter ed., 1961)................06. A

Gregory Dolin & Irina D. Manta,
Taking Patents, 73 Wash. & Lee L.
Rg ee RR a ate Not a8 2 ey eae ea 17

Theodore D. Woolsey et _ al.,
The First Century of the American
BN I ntti d score icadracduvcanvecks 15

INTEREST OF AAt/c/ CURIAE

The amici curzae are 27 law professors who teach
and write on patent law, property law, and
constitutional Jaw. They have an interest in both
promoting continuity in the evolution of these
interrelated doctrines and ensuring that the patent
system continues to secure innovation to its creators
and owners. They have no stake in the parties or in
the outcome of the case. Although amici may differ
amongst themselves on other aspects of patent law
and constitutional law, they are united in their
professional opinion that this Court should reverse
the Court of Appeals for the Federa! Circuit’s decision
in this case because it fails to protect the
constitutionally secured private property rights of
patent owners. This failure undermines the
constitutional function of the patent system in
promoting innovation. The names and affiliations of
the amici members are set forth in Appendix A.

SUMMARY OF ARGUMENT

The decision by the Court of Appeals for the
Federal Circuit directly contradicts this Court's
longstanding case law th: secures constitutional
protections for private property rights in patents. The
Petitioner fully addresses the specific legal and

|. All parties have consented to the filine of tuis brief. No counsel]
for any party authored this brief in whole or in part, and no
person or entity, other than ame: or their counsel, made a
monetary contribution intended to fund the preparation or

submission of this bricf.

2

constitutional issues concerning these _ private
property rights protected under the Seventh
Amendment. Amgucz offer additional support by
identifying the substantial case law from this Court
and lower federal courts reaching back to the early
American Republic that patents are private property
rights secured under the Constitution. Thus, the
Federal Circuit ts mistaken in concluding that patents
are “public rights” that exist solely at the
administrative prerogative of the sovereign, a key
legal premise in this case and in many others since
the Federal Circuit's decision in \4CM Portfoho LLC
v. Llewlett-Packard Co., 812 F.3d 1284, 1293 (Fed. Cir.
2015). This mistake has infected many of the Federal
Circurt’s decisions affirming actions by the Patent
Trial & Appeal Board (PTAB) at the United States
Patent & Trademark Office. This is a predicate issue
underlying whether the Seventh Amendment or any
other constitutional provision or doctrine applics to
the private property rights in patents, and thus it
must be resolved in this case.

This Court has long recognized and secured the
constitutional protection of patents as private
property rights reaching back to the early American
Republic. Just two terms ago, this Court confirmed
the continuing vitality and relevance of the revered
legal proposition that patents are private property
rights in Horne v. Department of Agriculture, 135 S.
Ct. 2419, 2427 (2015) (Roberts, C.J.), in which the
Court approvingly quoted one of its own nineteenth:
century decisions that “[a patent] confers upon the

3

patentee an exclusive property in the patented
invention which cannot be appropriated or used by the
government itself, without just compensation, any
more than it can appropriate or use without
compensation land which has been patented to a
private purchaser” (quoting James v. Campbell, 104
U.S. 356, 358 (1882)). This Court also held seventcen
years ago that patents are property rights secured
under the Due Process Clause of the Fourteenth
Amendment. See Fla. Prepaid Postsecondary Educ.
Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627 (1999).

To establish the extensive and binding historical
case law that supports this Court’s recent decisions-—
affirming the private property rights in patents under
the Constitution, amici detail these nineteenth-
century cases. These decisions are overwhelming
evidence for the public meaning in early American
courts that patents are private property rights
protected by the Takings Clause and Wue Process
Clause. See Adam Mossoff, Patents as Constitutional
Private Property: The Historical Protcetion of Patents
Under the Takings Clause, 87 B.U. L. Rev. 689, 700—
11 (2007) (discussing this case law). Congress
explicitly endorsed this case law in the 1952 Patent
Act in codifying the Segal definition of patents as
“property” in 35 U.S.C. § 261. See Adam Mossuilf,
Exclusion and Exclusive Use in Patent Law, 22 Harv.
J. L. & Tech. 321, 343—45 (2009) (discussing the text
and legislative history of § 261 as “codifyling! the case
law reaching back to the carly American Republic that
patents are property rights”).

4

Respondent and its supporting amc? will likely
argue that the public (or its delegated agents in the
government) has an interest in the validity of a patent
given that it is a property right granted and secured
under federal law, and that this interest is sufficient
to classify it as a “public right” on par with other
modern regulatory entitlements. See MCM Portfolio,
812 F.3d at 1292-93 (citing only modern
administrative law cases). But this assertion proves
too much; it is a truism about all private rights. As
James Madison recognized in The Federalist No. 43,
“the copyright of authors had been solemnly adjudged,
in Great Britain, to be a right of common law,” and
that the “right to useful inventions seems with equal
reasun to belong to the inventors.” The Federa/ist No.
43, at 271-72 (James Madison) (Clinton Rossiter ed.,
1961). As with all private rights, such as the rights to
liberty, property, and contract, Madison concluded
that “the public good fully coincides in both |patents
and copyrights}! with the claims of individuals.” Jad at

272.

Any appeal to a highly generalized “innovation
policy” goal in the patent system is not a coherent
ground in policy or law for defining an entire class of
private property rights as “public rights.” First, it
directly contradicts the weight of this Court’s
longstanding decisions to the contrary, holding that
patents are private property rights. Second, it
contradicts this Court’s recent discussion in Stern vy.
Marshali, 131 8S. Ct. 2594, 2612 (2011), that the
“public rights exception” does not apply to matters of

5

“private right, that is, of the liability of one individual
to another under the law as defined” (quoting Crowe//
v. Benson, 285 U.S. 22, 50 (1932)). In their alienation
in the marketplace (via license or assignment) and in
their enforcement, patents are quintessential
property rights in which rights and liabilities cxist
solely between individuals “under the law as defined.”
Id. The fuct that patents are uniquely federal property
rights, whereas most other “property interests are
created and defined by state law,” Butner v. United
States, 440 U.S. 48, 55 (1979), is a distinction without
a difference under this Court’s binding case law
reaching back to the early American Republic.

The Federal Circuit’s decision in this case directly
conflicts with both modern and long-established
decisions on the constitutional protection of patents as
private property rights. The result of this
contradiction with this Court’s jurisprudence on
patents has a far-reaching, negative impact for the
protection of all “exclusive property” under the
Constitution. James, 104 U.S. at 358. The Court
should reaffirm expressly its extensive case law that
patents are private property rights, which are secured
as such under the Constitution, and reverse the
Federal Circuit’s contrary decision.

6
ARGUMENT

I. SINCE THE EARLY AMERICAN REPUBLIC, THIS
COURT AND LOWER FEDERAL CouRTS HAVE
DEFINED PATENTS AS PRIVATE PROPERTY RIGHTS.

This court unequivocally defined patents as
property rights in the early American Republic. In
1824, for instance, Justice Joseph Story wrote for a
unanimous Supreme Court that the patent securcs to
an “Inventor... 4a property in his inventions; a
property which is often of very great value, and of
which the law intended to give him the absolute
enjoyment and possession.” Ex parte Wood, 22 U.S. (9
Wheat.) 603, 608 (1824). In deciding patent cases
while riding circuit, Justice Story explicitly relied on
real property case law as binding precedent in his
opinions.” Justice Story was not an outlier, as many
Justices and judges repeatedly used common-law
property concepts in patent cases, such as defining a

2. See, e.x., Brooks v. Byam, 4 F. Cas. 261, 268-70 (C.C_D. Mass.
1843) (No. 1,948) (Story, Circuit Justice) (anulogizing a patent
license to “a right of way granted to a man for him and his
domestic servants to pass over the grantor’s land,” citing a litany
of real property cases and commentators at common law, such as
Lord Coke's Institutes, Coke's Littleton, Viner’s Abridgment, and
Bacon's Abridgement); Dobson v. Camphbcil, 7 F. Cas. 783, 785
(C.C.D. Me. 1833) (No. 3,945) (Story, Circuit Justice) (relying on
real property equity cases in which “feoftment is stated without
any averment of livery of seisin” in assessiiig validity of patent
license).

7

patent as a “title” in an invention,* identifying patent
infringement as a “trespass,”* and referring to
infringement of a patent as “piracy.”®

3. See, e.g., Carr v. Rice, 5 F. Cas. 140, 146 (C.C.S.D.N.¥. 1856)
(No. 2,440) (noting that “assignees [of a patent] become the
owners of the discovery, with a perfect title,” and thus “(patent
interests are not distinguishable, in this respect, from other
kinds of property”); Hovey v. Henry, |2 F. Cas. 603, 604 (C.C_D.
Mass. 1846) (No. 6,742) (Woodberry, Circuit Justice) (instructing
jury that “laln inventor holds a property in his invention by as
good a title as the farmer holds his farm and flock”).

4, See, eg., Goodyear Dental Vulcanite Co. v. Van Antwerp, 10
F. Oas. 749, 750 (C.C.D.NJ. 1876) (No. 5,600) (stating that
patent infringement is equivalent to a “trespass” of horse
stables); Burleh Rock-Drill Co. v. Lobdell, 4 F. Cas. 750, 751
(C.C.D. Mass. 1875) (No. 2,166) (noting that the defendants
“honestly believled] that they were not trespassing upon any
rights of che complainant”); Livingston v. Jones, 15 F. Cas. 669,
674 (C.C.W.D. Pa. 1861) (No. 8,414) (rev'd by Jones v. Morchead,
68 U.S. 155 (1863)) (accusing defendants of having “made large
gains by trespassing on the rights of the complainants”);
Eastman v. Bodfish, 8 F. Cas. 269, 270 (C.C.D. Me. 1841) (No.
4,255) (Story, Circuit Justice) (comparing evidentiary rules in a
patent infringement case to evidentiary rules in a trespass
action).

5. See, e.g., Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 12 (1829)
(Story, J.) (recognizing that “if the invention should be pirated,
(this} use or knowledge, obtained by piracy” would not prevent
the inventor from obtaining a patent); Batten v. Silliman, 2 F.
Cas. 1028, 1029 (C.C.1E.D. Pa. 1855) (No. 1,106) Gecrying
defendant's “pirating an invention”); Buck v. Cobb, 4 F. Cas. 546,
547 (C.C.N.1).N.Y. 1847) (No. 2, 079) (recognizing goal of patent
laws in “securlingl to inventors the rewards of their genius
against the incursions of pirates”); Dobson, 7 F. Cas. at 785

8

This Court explained in its unanimous decision in
Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 18 (1829), that
a patent is a “title” and thus an act of invention before
an application for a patent is “like an inchoate right to
land, or an inceptive right to land, wel] known in some
of the states, and every where accompanied with the
condition, that to be made available, it must be
prosecuted with due diligence, to the consummation
or completion of the title.” Similarly, in Cayler v.
Wilder, 51 U.S. (10 How.) 477, 493 (1850), this Court
recognized “the discoverer of a new and useful
improvement is vested by law with an inchoate right
to its exclusive use, which he may perfect and make
absolute by proceeding in the manner which the law
requires. [The inventor! possessed this inchoate right
at the time of the assignment [to Enos Wilder].”

The Gayler Court’s use of the common law
property concept of an “assignment” is significant, /d.,
because it further confirms the extent to which this
Court and lower courts in the early American
Republic defined patents as private property rights.
This Court and lower courts expressly incorporated
real property concepts from the common law in
creating conveyance doctrines in patent law. For

ee

(concluding that patent-assignee has been injured by “the piracy
of the defendant”); Grant & Townsend v. Raymond, 10 F. Cas.
485, 985 (C.C.S.D.N.Y. 1829) (No. 5,701) (noting that the
patented machine had “been pirated” often); Earle v. Sawyer, 8
F. Cas. 254, 258 (C.C_D. Mass. 1825) (No. 4,247) (Story, Circuit
Justice) (instructing jury that an injunction is justified by
defendant's “piracy by making and using the machine”).

9

instance, in (otter v. IJvlland, 19 ¥. Cas. 1154 (C.C.
Conn, 1858), Justice Story, riding circuit, surveyed in
extensive detail how the common law real property
doctrines of “assignment” and “license” had been
applied in U.S. patent law in defining the nature of
the legal interest that a patent owner conveys to a
third party. See id. at 1156-57 (stating that “lan
ussignment, as understood by the common law, is a
parting with the whole property,” and that a license is
a “less or different interest than ... the interest in the
whole patent”). See also Moore v. Marsh, 74 U.S. (7
Wall.) 515, 520 (1868) (“An assignee is one who holds,
by a valid assignment in writing, the whole interest of
a patent, or any undivided part of such whole interest,
throughout the United States.”); Suydam v. Day, 23 F.
Cas. 473, 474 (C.C.S.]).N.Y. 1845) (distinguishing
between “an assignee of a patent [who] must be
regarded as acquiring his title to it, with a right of
action in his own name,” and “an interest in only a
part of each patent, to wit, a license to use”).

Federal courts from the early American Republic
to the late nineteenth century consistently alfirmed
that “the [patent] right is a species of property,” A//en
v. New York, 1 F. Cas. 506, 508 (C.C.S.D.N.Y. 1879)
(No. 232), and thus infringement is “an unlawful
invasion of property,” Gray v. /ames, 10 F. Cas. 1019,
1021 (C.C.D. Pa. 1817) (No. 5,719).§ As Cireuit Justice

ee

6. See also Bal/ v. Withington, 2 F. Cas. 556, 557 (C.C.S.D, Ohio
1874) (No. 815) (noting that patents are a “species of property”):
Carew v. Boston Elastie Fabric Co., 5 ¥. Cas. 56, 57 (C.C.D. Mass.
1871) (No. 2,398) (explaining that “ihe rights conferred by the

10

Levi Woodbury explained in 1845: “we _ protect
intellectual property, the labors of the mind, ... as
much a man’s own, and as much the fruit of his honest
industry, as the wheat he cultivates, or the flocks he
rears.” Davoll v. Brown, 7 F. Cas. 197, 199 (C.C.D.
Mass. 1845) (No. 3,662).

Il. Tris Court HAS PROVIDED CONSTITUTIONAL
PROTECTION TO PATENTS AS PRIVATE PROPERTY
RIGHTS FOR TWO HUNDRED YEARS.

The substantial early nineteenth-century case law
that patents are private property rights is directly
relevant to this case, because it underscores the
uncontroversial, unanimous decision by this Court in
McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206
(1843), that the Constitution pruhibits Congress from
retroactively abrogating vested property rights in
patents. In that case, the question was whether a
patent that had issued under a subsequently repealed
provision of the patent statute was still valid. The

patent law, being property, have the incidents of property”);
Lightner v. Kimball, 15 ¥. Cas. 518, 519 (C.C.D. Mass. 1868) (No.
8,345) (noting that “every person who intermeddles with a
patentee's property . . . is liable to an action at law for damages”);
Ayling v. Hull, 2 F. Cas. 271, 273 (C.C.D. Mass. 1865) (No. 686)
(discussing the “right to enjoy the property of the invention”);
Hayden v. Suffolk Mfg. Co., 11 F. Cas. 900, 901 (C.C.D. Mass.
1862) (No. 6,261) (instructing jury that a “patent right,
gentlemen, is a nght given to a man by law where he has a valid
patent, and, as a legal right, is just as sacred as any right of
property”); Gay v. Cornel/, 10 F. Cas. 110, 112 (C.C.S.D.NLY.
1849) (No. 5,280) (recognizing that “an invention is, within the
contemplation of the patent laws, a species of property”).

1]

unanimous opinion states bluntly that “a repeal [of a
patent statute] can have no effect to impair the right
of property then existing in a patentee, or his
assignee, according to the well-established principles
of this court.” Jd. In sum, a patent issued to an
inventor creates vested property rights, and “the
patent must therefore stand” regardless of Congress's
subsequent repeal of the particular statute under
which the patent originally issued. /d. The McClurg
Court emphasized that its decision was based on the
“well-established principles of this court” that
constitutional security is provided to vested property
rights in patents. /d.

Further confirming the legal status of patents as
private property rights, the McClurg Court continued
the practice of citing rea/ property cases as precedent
for defining and securing property rights in patents.
See id. (citing Society for the Propagation of the
Gospel in Foreign Parts v. New Haven, 21 US. @
Wheat.) 164 (1823), which addressed the status of
property rights in land under the treaty that
concluded the Revolutionary War). In relying on such
“well established principles” set forth in Society, the
McClurg Court. removed any doubt that might have
existed in 1843 that patents are on par with private
property rights in land as a matter of constitutional
doctrine.

The 174-year-old legal rule in McClurg that
patents are private property rights secured under the
Constitution has never been reversed or limited. This

12

is confirmed by the holding (and substantial
supporting citations) in McCormick Harvesting Mach.
Co. vy. C. Aultman & Co., 169 U.S. 606 (1898), that
once a patent is issued to an inventor “lilt has become
the property of the patentee, and as such is entitled to
the same legal protection as other property.” /d. at
609. The Federal Circuit's decision in this case, and in
prior cases in which it has explicitly asserted that
patents are only “public rights,” cannot be reconciled
with this long-established rule. See, eg, MCM
Portfolio LLC, 812 F.3d at 1293; Cascades Projection
LLC v. Epson America, Inc., 864 ¥.3d 1309 (Fed. Cir.
2017) (Reyna, J., dissenting from denial of rehearing
en banc) (critiquing the Federal Circuit’s view from
MCM Portfolio and in many follow-on decisions that
patents are “public rights”).

Like McClurg, the McCormick Court’s decision in
1898 was not an outlier. In the late nineteenth
century, this Court and lower federal courts built
upon the precedents in McClurg and many other
similar decisions in consistently holding that patents
are private property rights secured under the
Constitution. See, e.g., United States v. Burns, 79
U.S. 246, 252 (1870) (stating that “the government
cannot, after the patent is issued, make use of the
improvement any more than a private individual,
without license of the inventor or making
compensation to him”); Cammeyer v. Newton, 94 U.S.
225, 234 (1876) (holding that a patent owner can seek
compensation for the unauthorized use of his patented
invention by federal officials because “(plrivate

13

property, the Constitution provides, shall not be taken
for public use without just compensation”); McKeever
v. United States, 14 Ct. Cl. 396 (1878) (rejecting the
argument that a patent is a “grant” of special
privilege, because the text and structure of the
Constitution, as well as court decisions, clearly
establish that patents are private property rights).

In Cammeyer, for example, this Court expressly
rejected an argument by federal officials that a patent
was merely a public grant by the sovereign and thus
they could use it without authorization. Citing the
Takings Clause, the Cammeyer Court stated that
“lalgents of the public have no more right to take such
private property than other individuals.” /d. at 234-
35 (emphasis added). "hus, the Cammeyer Court held
that the Constitution protects patent owners against
an “invasion of the private rights of individuals” by
federal officials. Jd. at 235 (emphasis added).

This Court again expressly affirmed that patents
are private property rights in its summary affirmance
of McKeever v. United States, 14 Ct. Cl. 396 (1878), in
which the Court of Claims held that patents are
secured under the Takings Clause as “private
property” against unauthorized uses by government
officials. See Russell] v. United States, 182 U.S. 516,
531 (1901) (stating that McKeever was “affirmed on
appeal by this court”); United States v. Buffalo Pitts
Co., 234 U.S. 228, 233 (1914) (citing McKeever and
stating “affirmed by this court”). The McKeever
court’s wide-ranging, historical analysis of why U.S.

14

patents are “private property,” as opposed to the
English definition of a patent as a “grant” that issues
by “royal favor,” McKeever, 14 Ct. Cl. at 417-19,
makes even more clear the profound contradiction in
the Federa] Circuit’s contrary conclusion that patents
are “public rights.”

Contrary to the English view of patents as solely
legal tools of governmental economic policy, the U.S.
clearly and definitively recognized that American
patents secured the “property in the mind-work of the
inventor,” za., as specifically authorized under the
Patent and Copyright Clause in the Constitution. U.S.
Const. art. I, § 8, cl. 8 (authorizing Congress in
“securing” the “exclusive Right” to “Inventors”.

The McKeever court’s opinion reflects now-classic
textualist and uriginal public meaning analysis. First,
it analyzed the text of the Patent and Copyright
Clause as evidence of this fundamental difference
between the English Crown’s persona/ privilege and
the American private property right. The court
explained that the language in this constitutional
provision—the use of the terms “right” and
“exclusive, the absence of the English legal term
“patent,” and the absence of any express reservation
in favor of the government—established that the
private property rights in an American patent were
not on the same lIegal footing as the personal
privileges in a patent granted by the English Crown.
McKeever, 14 Ct. Cl. at 421. The Court further
observed that this conclusion was buttressed by the

15

fact that the Framers empowered Congress, not the
Executive, to secure an inventor's rights—placing this
constitutional provision in Article I, not in Article II—
which suggested they viewed patents as important
private property rights secured by the people's
representatives, not as a special grant issued by the
prerogative of the Executive. /@ Although the
Framers did not state their reasons for securing
patents in the Constitution, the McKeever court
concluded that they “had a clear apprehension of the
English law, on the one hand, and a just conception,
on the other, of what one of the commentators on the
Constitution has termed ‘a natural right to the fruits
of mental labor.” /d. at 420.°

Second, the McKeever court canvassed the federal
government's interpretation of the Patent and
Copyright Clause in the 100 years since the Founding
Era, finding again that patents protected private

7. The phrase “a natural right to the fruits of mental labor”
invokes the classic formulation of the natural nghts justification
for property. See, ¢.g., Vanhorne’s Lessee v. Dorrance, 2 U.S. (2
Dall.) 304, 310 (1795) (Patterson, J.) (“(The right of acquiring
and possessing property, and having it protected, is one of the
natural, inherent, and unalienable rights of man. ... No man
would become a member of a community, in which he could not
enjoy the fruits of his honest labour and industry.”), ‘lhe
MeKeever court did not cite a source for this quote, but it may
have been paraphrasing from a recently published treatise. See
Theodore D. Woolsey et al., The First Century of the American
Hepublic 443 (1876) (discussing how inventors are given “some
control over the reproductions of the fruits of mental labor . . . in
addition to the natural right te property”).

16

property rights, not special grants of privilege that
served only governmental policy goals. Accordingly,
Congress’s enactment of the patent statutes, the
Executive’s use of patented articles via “express
contracts,” and the Judiciary’s interpretation and
enforcement of these statutes and contracts all “forbid
the assumption that this government has ever sought
to appropriate the property of the inventor.” /d.
Throughout its opinion, McKeever repeatedly cited
this Court’s decisions in Cammeyer, Burns and
McClurg—Supreme Court cases holding that the
Takings Clause protects a patent as “private
property.”

Underlying the Federal Circuit’s decision in this
cuse and in many other cases denying patent owners’
claims that the PTAB violated their rights of due
process and constitutional doctrines like the
separation of powers is the Federal Circuit’s wrong
assertion that “patent rights are public rights,” 4CM
Portfolio LLC, 812 F.3d at 1293.5 In saying this, the

8. To reach this mistaken conclusion, the MCM Portfolto court
relied solely on two nun-patent law, administrative agency cases.
812 F.3d at 1292-93. These two modern cases address solely
creatures of modern administrative statutes—procedural
entitlements solely created in and adjudicated by modern
regulatory regimes. See, e.g., AUas Roofing Co. v. Occupational
Safety & Health Review Comm'n, 430 U.S. 442, 442-443 (1977)
(addressing procedural rights within the administrative regime
created by the Occupational Safety and Health Act of 1970); 7ud/
v. United States, 481 U.S. 412, 425-427 (1986) (addressing
procedural rights within the administrative regime created by
the Clean Water Act of 1972). Modern decisions by this Court

17

Federal Circuit directly contradicts the longstanding
jurisprudence of this Court. This Court should reverse
the Federal Circuit given its ahistorical argument
based entirely in modern administrative law that
patents are “public rights.” The Federal Circuit is
wrong; its decision in this case and prior cases conflict
with the decisions handed down by this Court in the
early American Republic and repeatedly sustained for
over two-hundred years that patents are private
property rights. See Gregory Dolin & Irina D. Manta,
Taking Patents, 73 Wash. & Lee L. Rev. 719 (2016)
(relying on this historical case !aw in applying modern
takings jurisprudence to conclude that the PTAB
effects a constitutional taking of a patent owner's
private property).

Ill. THis CourRT RECENTLY REAFFIRMED THAT
PATENTS ARE PRIVATE PROPERTY RIGIITS
SECURED UNDER THE CONSTITUTION.

This Court’s modern decisions are in accord with
the long-standing legal principle that patents are
private property rights that are secured under the
Constitution. Two years ago in Horne v. Department
of Agriculture, 135 S. Ct. 2419, 2427 (2015) (Roberts,
C.J.), this Court approvingly quoted one of its
decisions in 1882 that “la patent] confers upon the
patentee am exclusive property in the patented

addressing regulatory entitlements arising in the administrative
slate are distinct from the constitutionally protected private
property rights in patents long recognized by this Court and by
Circuit Courts for over two hundred years.

18

invention which cannot be appropriated or used by the
government itself, without just compensation, any
more than it can appropriate or use without
compensation land which has been patented to a
private purchaser” (quoting James v. Campbell, 104
U.S. 356, 358 (1882)). Notably, sixteen years after the
James decision, the McCormick Court cited it in 1898
along with numerous other decisions by this Court as
precedent for the same proposition:

It has been settled by repeated decisions
of this court that when a patent has received
the signature of the secretary of the interior,
countersigned by the commissioner of
patents, and has had affixed to it the seal of
the patent office .... It hes become the
property of the patentee, and as such is
entitled to the same legal protection as other
property.

McCormick, 169 U.S. at 608-09 (citing ames and
other cases, including Cammeyer). The legal rule
reaffirmed two years ago in Horne—patents are
private property mghts secured under the
Constitution—is settled doctrine with a provenance in
an unbroken line of decisions by this Court reaching
back to the early American Republic.

The Horne Court’s reaffirmation of this legal rule
was similarly confirmed nineteen years ago by this
Court when it held that patents are private property
rights secured under the Due Process Clause of the
Fourteenth Amendment. See Fila. Prepaid

19

Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank,
527 U.S. 627 (1999) (holding that patents are private
property rights secured under the Due Process Clause
of the Fourteenth Amendment).

To reverse the Federal Circuit in this case would
not be the first time this Court has stopped the
Federal Circuit in ignoring settled legal doctrine. In
2002, this Court warned the Federal Circuit in Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U.S. 722 (2002), that it must respect “the legitimate
expectations of inventors in their property” and thus
it cannot abrogate legal doctrines that have existed
since the early nineteenth century. /d. at 739. In
Festo, this Court brought an end to a decade-long
attempt by the Federal Circuit to abrogate the
longstanding infringement doctrine known as the
doctrine of equivalents. /d. ‘The doctrine of equivalents
is based in this Court's case law reaching back to the
Antebellum Era, see, c.g, Winans v. Denmead, 56
U.S. (5 How.) 330 (1853), just like the settled
constitutional doctrine that patents are private
property rights. As Chief Justice John Roberts stated
in eBay Inc. v. MercExchange. L.L.C., 1268. Ct. 1837
(2006), nineteenth-century patent law should be
accorded significant weight by modern courts in
securing the property rights in patents. /d. at 1841-
A2 (Roberts, C.J., concurring).

CONCLUSION

lor the foregoing reasons, amici urge this Court to
reverse the Federal Circuit and affirm the

20

longstanding rule in patent law and constitutional
law that patents are private property rights secured
under the Constitution.

Respectfully submitted,

Adam Mossoff SEAN D. JORDAN
Antonin Scalia Law School Counsel of Record
GEORGE MASON ADAM W. ASTON
UNIVERSITY JACKSON WALKER L.L.P.
3301 Fairfax Drive 100 Congress Avenue
Arlington, VA 22201 Suite 1100

Austin, TX 78701
sjordan@j w.com
(512) 236-2281

August 31, 2017

APPENDIX A — FULL LIST OF AMICl CURIAE*

Daniel R. Cahoy
Professor of Business Law
Smeal College of Business
Penn State University

David L. Callies

Benjamin A. Kudo Professor of Law
William S. Richardson Schoo] of law
University of Hawaii at Manoa

Kric R. Claeys

Professor of Luw

Antonin Scalia Law School
George Mason University

Gregory Dolin
Associate Professor of Law
University of Baltimore School of Law

James W. Ely, Jr
Milton R. Underwood Professor of Law, Emeritus
Vanderbilt University Law School

* Institutions of all signatories are for identification purposes

only. The undersigned do not purport to speak for their
institutions, and the views of amici should not be attributed to

these institutions

A°2

Richard A. Epstein

Laurence A. Tisch Professor of Law,

New York University School of |.aw

James Parker Hall Distinguished Service Professor
of Law Emeritus,

University of Chicago Law School

Eric M. Freedman

Siggi B. Wilzig Distinguished Professor of
Constitutional Rights

Maurice A. Deane Schoo! of law

Hofstra University

Matthew P. Harrington
Professeur titulaire
Faculté de droit
Université de Montréal

Hugh Hansen
Professor of law
Fordham University Schoo! of Law

Chris Holman
Professor of Law
UMKC School of Law

Joseph G. Hylton
Professor of Law
Marquette University Law School

A-3

Justin (Gus) Hurwitz
Assistant Professor of Law
University of Nebraska College of Law

Keith N. Hylton
William Fairfield Warren Distinguished Professor
Boston University School of Law

Layne Keele
Associate Professor of Law
Thomas Goode Jones School of Law

Faulkner University

Gary S. Lawson
Philip S. Beck Professor of Law
Boston University School of Law

Enka Lietzan
Associate Professor of Law
University of Missouri School of Law

Adam MacLeod

Associate Professor of Law

Thomas Goode Junes School of Law
Faulkner University

Irina D. Manta

Professor of Law

Maurice A. Deane School of Law
Hofstra University

A-4

Adam Mossoff

Professor of Law

Antonin Scalia Law Schoo!
George Mason University

Lateef Mtima
Professor of Law
Howard University School of Law

Sean M. O’Connor
Professor of Law
University of Washington School of Law

David Orozco

Associate Professor of Lega! Studies
College of Business

Florida State University

Kristen Osenga
Professor of Law
University of Richmond School of Law

Michael Risch

Professor of Law

Charles Widger School of Law
Villanova University

Mark Schultz
Professor of Law
Southern I]linois University School of Law

A-5

David O. Taylor
Associate Professor of Law
SMU Dedman Schoo! of Law

Saurabh Vishnubhakat
Associate Professor of Law
Texas A&M University School of Law

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0724%3A63. Public record. Not legal advice.