throbber
No. 16-712
`
`
`
`IN THE
`Supreme Court of the United States
`
`_______________________________
`
`OIL STATES ENERGY SERVICES, LLC,
`
`
`
`Petitioner,
`
`v.
`
`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 DELL INC., FACEBOOK, INC., AGILENT
`TECHNOLOGIES, INC., ARISTA NETWORKS, INC.,
`CLOUDFLARE, INC., EDWARDS LIFESCIENCES
`CORP., HEWLETT PACKARD ENTERPRISE CO. ,
`HTC CORPORATION, JCPENNEY CORPORATION,
`INC., LIMELIGHT NETWORKS, INC., RED HAT,
`INC., SMITH & NEPHEW, INC., TWITTER, INC.,
`AND VARIAN MEDICAL SYSTEMS, INC. AS
`AMICI CURIAE IN SUPPORT OF RESPONDENTS
`
`_______________________________
`
`THEODORE B. OLSON
`KRISHNENDU GUPTA
` Counsel of Record
`MICHELE K. CONNORS
`AMIR C. TAYRANI
`THOMAS A. BROWN
`BLAIR A. SILVER
`DELL INC.
`GIBSON, DUNN & CRUTCHER LLP
`One Dell Way
`Round Rock, Texas 78682
`1050 Connecticut Avenue, N.W.
`(512) 728-3186
`Washington, D.C. 20036
`
`(202) 955-8500
`COLIN STRETCH
`tolson@gibsondunn.com
`FACEBOOK, INC.
`
`1601 Willow Road
`Menlo Park, CA 94025
`(650) 543-4800
`
`
`
`Counsel for Amici Curiae
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ............................................... ii
`INTEREST OF AMICI CURIAE ....................................... 1
`SUMMARY OF ARGUMENT ............................................ 2
`ARGUMENT ...................................................................... 5
`I. PATENT REVOCATION BY THE PRIVY
`COUNCIL IS THE CLOSEST HISTORICAL
`ANALOGUE TO INTER PARTES REVIEW ............. 5
`A. Patent Revocation Was Historically
`A Royal Prerogative Exercised By
`The Privy Council ..................................... 6
`B. The Writ Of Scire Facias Is Not An
`Historical Analogue To Patent-
`Claim Cancellation And Was Itself
`A Matter Of Public Right ....................... 10
`C. The Defense Of Invalidity Is Not
`An Historical Analogue To Patent-
`Claim Cancellation ................................. 14
`II. INTER PARTES REVIEW PROMOTES
`INNOVATION BY REMOVING ARTIFICIAL
`PATENT BARRIERS AND REDUCING
`WASTEFUL LITIGATION COSTS ....................... 17
`CONCLUSION .......................................................... 25
`
`
`
`
`
`
`

`

`
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`ACQIS, LLC v. EMC Corp.,
`109 F. Supp. 3d 352 (D. Mass. 2015) ................... 23
`Advanced Micro Devices, Inc. v. LG
`Elecs., Inc., No. 14-cv-01012,
`2015 WL 545534 (N.D. Cal. Feb. 9,
`2015) ..................................................................... 23
`Arctic Cat Inc. v. Polaris Indus. Inc.,
`No. 13-3579, 2015 WL 6757533
`(D. Minn. Nov. 5, 2015) .................................. 20, 21
`Atlas Roofing Co. v. Occupational Safety
`& Health Review Comm’n,
`430 U.S. 442 (1977) .............................................. 12
`B.E. Tech, L.L.C. v. Facebook, Inc.,
`No. 12-cv-02769 (W.D. Tenn.) .............................. 19
`Blonder-Tongue Labs., Inc. v. Univ. of
`Ill. Found.,
`402 U.S. 313 (1971) .............................................. 15
`Crowell v. Benson,
`285 U.S. 22 (1932) ................................................ 14
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .................................... 14, 17
`EveryMD LLC v. Facebook, Inc.,
`No. 13-cv-06208 (C.D. Cal.) ................................. 19
`Granfinanciera, S.A. v. Nordberg,
`492 U.S. 33 (1989) ........................................ 8, 9, 10
`
`
`
`

`

`iii
`
`Intellectual Ventures I, LLC v. Lenovo
`Group Ltd., No. 16-10860-PBS
`(D. Mass. July 13, 2017) ...................................... 22
`Mowry v. Whitney,
`81 U.S. (14 Wall.) 434 (1871) ......................... 11, 12
`Murray’s Lessee v. Hoboken Land &
`Improvement Co.,
`59 U.S. (18 How.) 272 (1856) ............................. 2, 5
`N. Pipeline Constr. Co. v. Marathon
`Pipe Line Co.,
`458 U.S. 50 (1982) .................................................. 5
`Neste Oil OYJ v. Dynamic Fuels, LLC,
`No. 12-1744-GMS, 2013 WL 3353984
`(D. Del. July 2, 2013) ........................................... 23
`PersonalWeb Techs., LLC v. EMC Corp.,
`5:13-cv-01358-EJD
`(N.D. Cal. Jan. 13, 2014) ..................................... 24
`PersonalWeb Techs., LLC v. Facebook,
`Inc., 5:13-cv-01356-EJD
`(N.D. Cal. Jan. 13, 2014) ..................................... 24
`Realtime Data, LLC v. Dell, Inc.,
`6:16-cv-89-RWS-JDL
`(E.D. Tex. Feb. 3, 2017) ....................................... 23
`Stern v. Marshall,
`564 U.S. 462 (2011) ................................ 2, 5, 6, 8, 9
`In re Tech. Licensing Corp.,
`423 F.3d 1286 (Fed. Cir. 2005) ............................ 12
`United States v. Am. Bell Tel. Co.,
`128 U.S. 315 (1888) .............................................. 13
`
`
`
`

`

`iv
`
`Constitutional Provisions
`U.S. Const., art. I, § 8, cl. 8 ................................... 4, 17
`Statutes
`35 U.S.C. § 311(a) ................................................ 16, 24
`35 U.S.C. § 311(b) ...................................................... 14
`35 U.S.C. § 315(e)(2) .................................................. 20
`35 U.S.C. § 316(d)(1) ........................................... 15, 21
`35 U.S.C. § 318(b) ...................................................... 15
`Patent Law Amendment Act, 1852, 15
`& 16 Vict., c. 83 (Eng.), at
`https://cdn.patentlyo.
`com/media/2017/08/PL-Amendment-
`Act-15-16-Victoria-c.83-1852.pdf ........................... 8
`Pub. L. No. 112-29, 125 Stat. 284 (2011) .................. 17
`Regulations
`37 C.F.R. § 42.100(b) ................................................. 21
`Other Authorities
`157 Cong. Rec. S131 (daily ed. Jan. 25,
`2011) ..................................................................... 17
`157 Cong. Rec. S5409 (Sept. 8, 2011) ....................... 17
`Am. Intell. Prop. L. Ass’n, 2015 Report
`of the Economic Survey (2015), at
`http://files.ctctcdn. com/e79ee274201/
`b6ced6c3-d1ee-4ee7-9873-
`352dbe08d8fd.pdf ................................................. 20
`William Blackstone, Commentaries.............. 11, 12, 13
`
`
`
`

`

`v
`
`Oren Bracha, Owning Ideas: A History
`of Anglo-American Intellectual
`Property (June 2005) (unpublished
`Ph. D. thesis, Harvard Law School),
`at https://law.utexas.edu/faculty/
`obracha/dissertation/pdf/
`chapter1.pdf ........................................................... 7
`Lauren Cohen et al., The Growing
`Problem of Patent Trolling, 352
`Science 521 (2016) ................................................ 18
`Coke’s Institutes ........................................................ 11
`H.R. Rep. No. 112-98 ................................................. 17
`William Hands, The Law and Practice
`of Patents for Inventions (London, W.
`Clarke & Sons 1808) ...................................... 13, 15
`William Holdsworth, A History of
`English Law (1924) ................................................ 7
`E. Wyndham Hulme, Privy Council Law
`and Practice of Letters Patent for
`Invention from the Restoration to
`1794 (Part II), 33 L.Q.R. 180 (1917) .................. 6, 7
`William Martin, The English Patent
`System (1904) ......................................................... 7
`RPX Corp., NPE Litigation: Costs by
`Key Events (2015), at
`http://www.rpxcorp.com/wp-
`content/uploads/sites/2/
`2015/05/Final-NPE-Litigation-Costs-
`by-Key-Events1.pdf .............................................. 20
`
`
`
`

`

`vi
`
`Success Rates on Request to Stay
`Pending IPR, CBM, or PGR Through
`2016, DocketReport (2017), at
`http://docketreport.blogspot.com/
`2017/02/success-rates-on-requests-
`to-stay.html .......................................................... 22
`C. Violante, Law360’s Federal Circuit
`Snapshot: By The Numbers, Law360
`(Mar. 1, 2017), at https://www.
`law360.com/newsroom/articles/
`58ade8f20857780a37005e0e ................................ 22
`Edward C. Walterscheid, The Early
`Evolution of the United States Patent
`Law: Antecedents (Part 4), 78 J. Pat.
`Trademark Off. Soc’y 77 (1996) ....................... 6, 15
`Brian T. Yeh, Cong. Research Serv.,
`R42668, An Overview of the “Patent
`Trolls” Debate (2013) ........................................... 18
`
`
`
`

`

`
`
`
`
`
`
`INTEREST OF AMICI CURIAE1
`As leading companies in the computer technolo-
`gy, consumer electronics, medical device, retail, so-
`cial media, and software fields, amici have a signifi-
`cant interest in defending the constitutionality of the
`inter partes review procedure before the Patent Trial
`and Appeal Board (“PTAB”). Amici have all benefit-
`ed from the availability of inter partes review—either
`directly as successful petitioners in inter partes re-
`view proceedings or indirectly through a reduction in
`patent-infringement litigation and the cancellation of
`unpatentable claims imposing roadblocks to their in-
`novative enterprises. Amici are also patent owners
`themselves—collectively holding tens of thousands of
`patents—and have confidence in the ability of the
`PTAB to decide any challenges to the patentability of
`their own claims in an evenhanded and accurate
`manner. In amici’s experience, inter partes review
`provides a cost-effective, efficient, and fair mecha-
`nism for resolving patentability questions, and
`thereby
`fosters
`innovation, promotes economic
`growth, and preserves the finite resources of the fed-
`eral courts.
`Dell Inc. (“Dell”) is one of the world’s largest
`technology companies. The Dell family of businesses
`innovates across devices, ecosystems, and services to
`
`
` 1 Pursuant to this Court’s Rule 37.3(a), amici state that the
`parties have filed letters with the Clerk granting blanket con-
`sent to the filing of amicus briefs. Pursuant to this Court’s Rule
`37.6, amici state that no counsel for a party authored this brief
`in whole or in part, and no counsel or party made a monetary
`contribution intended to fund the brief’s preparation or submis-
`sion. No person other than amici or their counsel made a mon-
`etary contribution to the brief’s preparation or submission.
`
`
`
`

`

`
`
`
`
` 2
`
`
`design solutions specifically for the way people
`work—from award-winning thin clients, tablets, and
`laptops to powerful workstations and rugged devices.
`Dell’s products include personal computers, servers,
`enterprise storage systems, and computer and net-
`work security products. Dell and its affiliates own
`more than 20,000 patents and applications world-
`wide, and recognize the importance of protecting val-
`id intellectual-property rights. To date, Dell and its
`subsidiary EMC Corp. have participated in 86 inter
`partes reviews and similar post-grant proceedings
`before the PTAB.
`Facebook, Inc. provides a free social media ser-
`vice that gives more than 2 billion people around the
`globe the power to build communities and bring the
`world closer together. People use Facebook to stay
`connected with friends and family, to build commu-
`nities, to discover what is going on in the world, and
`to express what matters to them. The service is now
`provided in more than 100 languages and dialects.
`Facebook has participated in 76 inter partes reviews
`and similar post-grant proceedings.
`A full list of amici can be found on the cover of
`this brief.
`SUMMARY OF ARGUMENT
`I. This Court has “long recognized that, in gen-
`eral, Congress may not ‘withdraw from judicial cog-
`nizance any matter which, from its nature, is the
`subject of a suit at the common law, or in equity, or
`admiralty.’” Stern v. Marshall, 564 U.S. 462, 484
`(2011) (quoting Murray’s Lessee v. Hoboken Land &
`Improvement Co., 59 U.S. (18 How.) 272, 284 (1856)).
`But if a matter was not subject exclusively to a suit
`at common law, equity, or admiralty at the time of
`
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`

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`
`
`
` 3
`
`
`the Founding, Congress may assign it for resolution
`by a non-Article III decision-maker.
`Petitioner’s arguments that inter partes review
`violates Article III and the Seventh Amendment rest
`on the premise that there is an historical analogue to
`cancellation of patent claims that was available in
`the common-law or chancery courts of England at the
`time of the Founding, and, conversely, that there was
`no such procedure available outside the English
`court system. That premise is doubly flawed.
`Patent revocation did not rest within the exclu-
`sive province of the common-law and chancery courts
`of England at the time of the Founding. Prior to the
`Founding—and for more than a century thereafter—
`the Crown’s Privy Council had broad authority to re-
`voke patents outside of a judicial proceeding, includ-
`ing for a variety of reasons related to patentability,
`such as lack of novelty. Because this non-judicial
`body had the authority to revoke patents when the
`Constitution was framed, neither Article III nor the
`Seventh Amendment requires that patentability
`challenges be decided solely by courts.
`Moreover, while England’s common-law and
`chancery courts also possessed authority to consider
`the validity of patents, neither of the pre-Founding
`judicial procedures for evaluating patent validity is
`an historical analogue to cancellation of patent
`claims through inter partes review. The writ of scire
`facias was a partial delegation of the Privy Council’s
`patent-revocation authority to the chancery court,
`but it was not comparable to claim cancellation
`based on lack of novelty or obviousness because scire
`facias addressed only issues akin to inequitable con-
`duct. In addition, the right to seek patent revocation
`
`
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`

`

`
`
`
`
` 4
`
`
`through a writ of scire facias was itself a public right,
`rather than a purely private one, because the writ
`was pursued in the name of the Crown, required the
`permission of the Crown, and involved the participa-
`tion of the Crown in the judicial proceeding.
`Nor was the defense of invalidity in a patent-
`infringement suit an historical analogue to cancella-
`tion of patent claims through inter partes review.
`Invalidity was traditionally a personal defense to an
`infringement action and, unlike the cancellation of a
`claim through inter partes review, did not prevent
`the patent holder from asserting its rights against
`another defendant in a subsequent infringement
`suit.
`Multiple features of the historical record there-
`fore make clear that neither Article III nor the Sev-
`enth Amendment limits claim cancellation to judicial
`proceedings.
`II. Congress’s decision to authorize the PTAB to
`cancel patent claims through inter partes review is
`not only consistent with Article III and the Seventh
`Amendment, but also advances the Patent Clause’s
`objective of “promot[ing] the Progress of Science and
`useful Arts.” U.S. Const., art. I, § 8, cl. 8. In amici’s
`collective experience,
`inter partes review has
`strengthened the patent system by providing a cost-
`effective, fair, and efficient mechanism for weeding
`out unpatentable claims that would otherwise stand
`as barriers to innovation and be used by non-
`practicing entities to extort settlements in patent-
`infringement litigation. And even those patent-
`infringement actions that are filed are often much
`simpler as a direct result of inter partes review,
`which can limit the claims at issue, estop defendants
`
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`

`
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`
` 5
`
`
`from raising certain arguments challenging claims
`upheld by the PTAB, and streamline the district
`court’s claim construction. In each of these respects,
`inter partes review has reduced wasteful litigation
`expenses and enabled amici to redeploy resources
`away from legal fees to research and development.
`In short, inter partes review enables technology
`companies to focus on innovation, not litigation.
`ARGUMENT
`I. PATENT REVOCATION BY THE PRIVY
`COUNCIL
`IS THE CLOSEST HISTORICAL
`ANALOGUE TO INTER PARTES REVIEW.
`When deciding whether it is permissible to as-
`sign a dispute to a non-Article III decision-maker,
`this Court looks to whether the proceeding “is made
`of ‘the stuff of the traditional actions at common law
`tried by the courts at Westminster in 1789.’” Stern v.
`Marshall, 564 U.S. 462, 484 (2011) (quoting N. Pipe-
`line Constr. Co. v. Marathon Pipe Line Co., 458 U.S.
`50, 90 (1982) (Rehnquist, J., concurring in the judg-
`ment)). If it is, then “the responsibility for deciding
`that suit rests with Article III judges in Article III
`courts” because, “in general, Congress may not
`‘withdraw from
`judicial cognizance any matter
`which, from its nature, is the subject of a suit at the
`common law, or in equity, or admiralty.’” Id. (quot-
`ing Murray’s Lessee v. Hoboken Land & Improvement
`Co., 59 U.S. (18 How.) 272, 284 (1856)).
`Article III does not bar inter partes review before
`the PTAB because the Privy Council possessed the
`authority to revoke patents at the time of the Found-
`ing, including for lack of novelty and other reasons
`related to patentability. In fact, there is no historical
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`

`
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` 6
`
`
`analogue whereby common-law or chancery courts
`could revoke patents for lack of novelty or obvious-
`ness. And because Article III does not prevent Con-
`gress from assigning claim cancellation to a non-
`judicial decision-maker, the Seventh Amendment—
`which applies only to suits at common law—is neces-
`sarily inapplicable.2
`A. Patent Revocation Was Historically A
`Royal Prerogative Exercised By The
`Privy Council.
`In eighteenth-century England, patents were is-
`sued by the Privy Council, the body of advisors to the
`Crown, pursuant to the Statute of Monopolies. See
`Edward C. Walterscheid, The Early Evolution of the
`United States Patent Law: Antecedents (Part 4), 78 J.
`Pat. Trademark Off. Soc’y 77, 83-84 (1996). Prior to
`1753, the Privy Council was also the primary venue
`for revoking patents. See E. Wyndham Hulme, Privy
`Council Law and Practice of Letters Patent for Inven-
`tion from the Restoration to 1794 (Part II), 33 L.Q.R.
`180, 193-94 (1917). The Privy Council could revoke
`patents for a number of reasons, including reasons
`related to patentability. Specifically, the Privy
`Council “decided such questions as, [w]ho of two
`
` 2 Even if a matter was tried exclusively by the common-law or
`chancery courts at the time of the Founding, Congress can still
`assign it to a non-judicial decision-maker if it is a matter of
`“public right.” See Stern, 564 U.S. at 488. Although the public-
`rights doctrine is largely beyond the scope of this brief, amici
`note their agreement with the position of respondents that
`“[p]atents are quintessential public rights,” U.S. Cert. Brief 9,
`and that patent claims can therefore be cancelled outside of a
`judicial proceeding for this additional reason. See Greene’s
`Merits Br. 29-39; U.S. Merits Br. 18-29.
`
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`

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` 7
`
`
`claimants was the first inventor, [w]hether a patent-
`ee was working his patent, [w]hether the invention
`was really new, [and w]hether it was in the public
`interest to grant a patent.” 6 William Holdsworth, A
`History of English Law 331 (1924) (footnotes omit-
`ted). Thus, like the PTAB, the Privy Council was a
`non-judicial body charged with the responsibility to
`assess patent validity based on criteria that included
`the novelty of the invention.
`In 1753, after a particularly messy revocation
`proceeding, the Privy Council granted the chancery
`court concurrent authority to revoke patents through
`the writ of scire facias. See Hulme, supra, at 189-91,
`193-94. But the writ of scire facias was only a partial
`delegation of the Privy Council’s authority to revoke
`patents. The Privy Council continued to possess con-
`current authority to revoke patents until the early
`twentieth century. See Oren Bracha, Owning Ideas:
`A History of Anglo-American Intellectual Property
`21 n.35 (June 2005) (unpublished Ph. D. thesis, Har-
`vard Law School) (citing William Martin, The Eng-
`lish Patent System 16 (1904)), at https://law.utexas.
`edu/faculty/obracha/dissertation/pdf/chapter1.pdf. In
`fact, the Patent Law Amendment Act of 1852 set out
`a statutory form to be included in all patent grants
`that expressly reserved the right of the Privy Council
`(or the Queen) to revoke the patent. It stated, in rel-
`evant part:
`Provided always, and these Our Letters Pa-
`tent are and shall be upon this Condition,
`that if at any Time during the said Term
`hereby granted it shall be made appear to Us,
`Our Heirs or Successors, or any Six or more of
`
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`

`
`
`
`
` 8
`
`
`Our or their Privy Council, that this Our
`Grant is contrary to Law, or prejudicial or in-
`convenient to Our subjects in general, or that
`the said Invention is not a new Invention as
`to the public Use and Exercise thereof, or that
`the said is not the true and first Inventor
`thereof within this Realm as aforesaid, these
`Our Letters Patent shall forthwith cease, de-
`termine, and be utterly void to all Intents and
`Purposes, anything herein before contained to
`the contrary thereof in anywise notwithstand-
`ing.
`Patent Law Amendment Act, 1852, 15 & 16 Vict., c.
`83 (Eng.) (emphasis added), at https://cdn.patentlyo.
`com/media/2017/08/PL-Amendment-Act-15-16-
`Victoria-c.83-1852.pdf.
`Because a patent could be revoked by a body oth-
`er than a common-law or chancery court at the time
`of the Founding, Article III does not limit Congress’s
`power to authorize a non-Article III decision-maker
`such as the PTAB to cancel patent claims. See Stern,
`564 U.S. at 484. And where Article III is not impli-
`cated, the Seventh Amendment is necessarily inap-
`plicable. See Granfinanciera, S.A. v. Nordberg, 492
`U.S. 33, 53-54 (1989) (“if Congress may assign the
`adjudication of a statutory cause of action to a non-
`Article III tribunal, then the Seventh Amendment
`poses no independent bar to the adjudication of that
`action by a nonjury factfinder”).
`Petitioner does not dispute that the Privy Council
`had the authority to revoke patents at the time of the
`Founding. Petitioner instead contends that patent
`revocations by the Privy Council were “rare” and
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`

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`
` 9
`
`
`“ceased entirely by 1779.” Pet. Br. 25. But the fre-
`quency with which the Privy Council exercised its
`authority to revoke patents has no bearing on the
`constitutional question, which turns on whether the
`common-law and chancery courts were the exclusive
`forum in which a patent could be revoked at the time
`of the Founding. If so, then “the responsibility for
`deciding [such a] suit rests with Article III judges in
`Article III courts.” Stern, 564 U.S. at 484. If not,
`then Congress can permissibly assign the matter to a
`non-Article III decision-maker. Id.
`Petitioner misreads Granfinanciera in arguing
`that Article III requires that a federal court adjudi-
`cate every matter that was “typically resolved” in the
`common-law or chancery courts at the time of the
`Founding, even if the matter was “occasionally re-
`solved” in a non-judicial setting. Pet. Br. 26. Gran-
`financiera—which addressed the applicability of the
`Seventh Amendment to a bankruptcy trustee’s action
`to recover a fraudulent monetary transfer—did not
`endorse any such restriction on Congress’s authority
`to assign matters to non-judicial decision-makers. In
`the passage invoked by petitioner, the Court dis-
`missed the contention of the bankruptcy trustee—
`who was arguing against the applicability of the Sev-
`enth Amendment—“that courts of equity sometimes
`provided relief in fraudulent conveyance actions.”
`Granfinanciera, 492 U.S. at 43. That “assertion,” the
`Court explained, “hardly suffice[d] to undermine [the
`defendant’s] submission that the present action for
`monetary relief would not have sounded in equity
`200 years ago in England.” Id. at 43. In other
`words, the historical record supported the defend-
`ants’ request for a jury not because actions to recover
`
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`

`
`
`10
`
`fraudulent transfers were only “occasionally re-
`solved” in equity courts, Pet. 26 (emphasis omitted),
`but because they were never resolved there when a
`fraudulent transfer of money was at issue. Granfi-
`nanciera, 492 U.S. at 43.
`The relevant constitutional question for purposes
`of Article III and the Seventh Amendment is there-
`fore whether, at the time of the Founding, patents
`could be revoked—whether typically, occasionally, or
`even rarely—by a non-judicial decision-maker. The
`answer to that question is emphatically “yes” be-
`cause persons seeking to challenge the validity of a
`patent could seek relief from the Privy Council for
`more than a century after the Founding. In fact, as
`explained next, they could only secure that relief
`from the Privy Council at the time of the Founding
`when seeking to invalidate a patent for lack of novel-
`ty. See infra Parts I.B-I.C.
`B. The Writ Of Scire Facias Is Not An
`Historical Analogue To Patent-Claim
`Cancellation And Was Itself A Matter Of
`Public Right.
`The Privy Council’s authority to revoke patents at
`the time of the Founding is fatal to petitioner’s posi-
`tion that Article III and the Seventh Amendment bar
`the PTAB from cancelling patent claims through in-
`ter partes review. But petitioner’s position is doubly
`flawed because not only does petitioner improperly
`discount the Privy Council’s patent-revocation au-
`thority but it also fails to identify an historical ana-
`logue by which the common-law or chancery courts
`could revoke patents for obviousness or lack of novel-
`ty.
`
`
`
`

`

`
`
`11
`
`Petitioner’s reliance on the writ of scire facias as
`a supposed historical analogue to inter partes review
`is misplaced in multiple respects. Pet. Br. 24. The
`writ of scire facias emerged from the Privy Council’s
`partial delegation of its patent-revocation authority
`to the chancery court in 1753. Through a petition for
`a writ of scire facias, a party could ask the chancery
`court to revoke a patent that had been “issued with-
`out authority” and that warranted repeal “for the
`good of the public and right and justice.” Mowry v.
`Whitney, 81 U.S. (14 Wall.) 434, 440 (1871); see also 3
`William Blackstone, Commentaries *260-61 (“Where
`the Crown hath unadvisedly granted any thing by
`letters patent, which ought not to be granted, or
`where the patentee hath done an act that amounts to
`a forfeiture of the grant, the remedy to repeal the pa-
`tent is by writ of scire facias in chancery.”) (footnotes
`omitted).
`The Court outlined in Mowry the three classes of
`cases where scire facias could be used to revoke a pa-
`tent:
`
`(i) When the king by his letters-patent has
`by different patents granted the same
`thing to several persons, the first pa-
`tentee shall have a scire facias to repeal
`the second.
`(ii) When the king has granted a thing by
`false suggestion, he may by scire facias
`repeal his own grant.
`(iii) When he has granted that which by law
`he cannot grant, he . . . may have a scire
`facias to repeal his own letters-patent.
`81 U.S. at 439-40; see also 4 Coke’s Institutes 88.
`
`
`
`

`

`
`
`12
`
`None of these categories is analogous to cancel-
`ling a patent’s claims due to lack of novelty or obvi-
`ousness in inter partes review. A scire facias pro-
`ceeding inquired into the existence of competing is-
`sued patents, false statements in the original patent
`petition, or ultra vires action by the King—not lack of
`novelty or obviousness. Mowry, 81 U.S. at 439-40.
`In fact, the Federal Circuit has explained that, given
`the limited areas of inquiry by the chancery court,
`the “writ of scire facias was not analogous to a suit
`for a declaration of invalidity” at all, “but was more
`akin to an action for inequitable conduct.” In re
`Tech. Licensing Corp., 423 F.3d 1286, 1290 (Fed. Cir.
`2005).
`Moreover, even if the writ of scire facias were a
`relevant historical antecedent to inter partes review,
`the writ was extensively intertwined with the inter-
`ests of the Crown and was thus analogous to the ad-
`judication of a “public right” that could be assigned
`to a non-Article III decision-maker under this Court’s
`precedent. Cf. Atlas Roofing Co. v. Occupational
`Safety & Health Review Comm’n, 430 U.S. 442, 450
`(1977) (public-rights doctrine extends to “cases in
`which the Government sues in its sovereign capacity
`to enforce public rights created by statutes within
`the power of Congress to enact”).
`Scire facias was one of the prerogative writs,
`which, as their name implies, have roots in the royal
`prerogative of the Crown. See 1 Blackstone, supra,
`at *232 (“[T]he prerogative is that law in case of the
`king, which is law in no case of the subject.”). The
`Privy Council’s delegation of authority to the chan-
`cery court to issue the writ of scire facias meant that
`the court had concurrent authority with the Council
`to revoke patents on certain grounds, but every as-
`
`
`
`

`

`
`
`13
`
`pect of the scire facias proceeding was still infused
`with the Crown’s interests.
`For example, although a writ of scire facias could
`be sought by a private party, it was issued in the
`“name of the king.” United States v. Am. Bell Tel.
`Co., 128 U.S. 315, 360 (1888); see also 3 Blackstone,
`supra, at *261 (petition for a writ of scire facias “may
`be brought either on the part of the king . . . or, if the
`grant be injurious to the subject, the king is bound of
`right to permit him (upon his petition) to use his
`royal name for repealing the patent in a scire faci-
`as”). In fact, the Crown’s interest in the proceeding
`was so great that the Attorney General had to grant
`leave to issue the writ and was a party to the case in
`which the writ was sought. See William Hands, The
`Law and Practice of Patents for Inventions 16 (Lon-
`don, W. Clarke & Sons 1808) (“[A] writ of scire facias
`. . . issues out of the Court of Chancery, at the in-
`stance of any private person, but in the name of the
`King[;] leave to issue it must therefore be previously
`obtained from the Attorney General.”).3
`Because the writ of scire facias only existed by
`delegation from the Crown, was issued in the name
`
` 3 In contrast, most other writs available to private parties did
`not require approval and participation by the Crown, and their
`issuance ultimately rested within the sole discretion of the
`courts. For example, habeas corpus “issu[ed] out of the court of
`king’s bench . . . by a fiat from the chief justice or any other of
`the judges.” 3 Blackstone, supra, at *131. Certiorari was
`granted “as a matter of right” when claimed by the prosecutor
`and “as a matter of discretion” of the court when sought by a
`defendant. 4 id. at *316. Mandamus likewise could be issued
`by a court as “a command . . . in the king’s name” but did not
`require authorization from or involvement by the Crown. 3 id.
`at *110.
`
`
`
`

`

`
`
`14
`
`of the Crown, and required permission from a repre-
`sentative of the Crown who was a party to the case, a
`chancery court proceeding on a petition for scire faci-
`as would fit squarely within this Court’s definition of
`a matter of “public right.” Cf. Crowell v. Benson, 285
`U.S. 22, 50 (1932) (a public right is “between the
`government and persons subject to its authority in
`connection with the performance of the constitution-
`al functions of the executive or legislative depart-
`ments”). Thus, even if scire facias is a relevant his-
`torical analogue to cancellation of patent claims, the
`writ underscores that claim cancellation is the type
`of public-rights proceeding that can be heard by a
`non-judicial decision-maker and lends no support to
`petitioner’s attempt to restrict the resolution of pa-
`tentability challenges to Article III courts.
`C. The Defense Of Invalidity Is Not An
`Historical Analogue To Patent-Claim
`Cancellation.
`Petitioner fares no better when pointing to the de-
`fense of invalidity in patent-infringement actions as
`a purported historical analogue to the cancellation of
`patent claims. As with scire facias, there are several
`salient distinctions between the defense of invalidity
`at the time of the Founding and the cancellation of
`claims for obviousness or lack of novelty.
`As this Court has recognized, the “basic pur-
`pose[ ]” of inter partes review is to take “a second
`look at an

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