`
`In the Supreme Court of the United StatesIn the Supreme Court of the United States
`In the Supreme Court of the United States
`
`In the Supreme Court of the United StatesIn the Supreme Court of the United States
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Petitioner,
`
`v.
`
`DISH NETWORK L.L.C. and SIRIUS XM RADIO INC.,
` Respondents.
`
`On Petition for Writ of Certiorari to the
`United States Court of Appeals for the Federal Circuit
`
`PETITION FOR WRIT OF CERTIORARI
`
`KAI ZHU
` Counsel of Record
`DRAGON INTELLECTUAL PROPERTY, LLC
`c/o
`60 Cody Ln.
`Los Altos, CA 94022
`T. 650.999.0172
`F. 610.884.6145
`kz@dragonipllc.com
`
`Counsel for Petitioner
`
`Becker Gallagher · Cincinnati, OH · Washington, D.C. · 800.890.5001
`
`
`
`i
`
`QUESTION PRESENTED
`
`Whether inter partes review—an adversarial process
`statutorily created in 2011 and 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 III forum without a jury, especially for patents
`granted before inter partes review was created.
`
`This petition presents the same question which this
`Court is considering in Oil States Energy Services, LLC
`v. Greene’s Energy Group, LLC, 639 F. App’x 639 (Fed.
`Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June
`12, 2017) (“Oil States Energy Services”). Because this
`petition implicates the same issues to be decided in Oil
`States Energy Services, and because the Court will soon
`decide the power of the Patent Trial and Appeal Board
`of the USPTO to determine validity of patent rights,
`Petitioner asks that the Court hold its decision on this
`petition pending that decision.
`
`
`
`ii
`
`PARTIES TO THE PROCEEDINGS
`AND RULE 29.6 STATEMENT
`
`The parties to the proceedings include those listed
`on the cover.
`
`Dragon Intellectual Property, LLC, is a limited
`liability company formed in the State of Delaware.
`
`
`
`iii
`
`TABLE OF CONTENTS
`
`QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . .
`
`i
`
`PARTIES TO THE PROCEEDINGS
`AND RULE 29.6 STATEMENT . . . . . . . . . . . . . ii
`
`TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . v
`
`PETITION FOR A WRIT OF CERTIORARI . . . . . . 1
`
`OPINIONS AND ORDERS BELOW . . . . . . . . . . . . 1
`
`STATEMENT OF JURISDICTION . . . . . . . . . . . . . 1
`
`CONSTITUTIONAL PROVISIONS INVOLVED . . 1
`
`INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
`
`STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . 2
`
`REASONS FOR GRANTING THE PETITION . . . . 5
`
`I.
`
`II.
`
`III.
`
`This Court’s Precedent Confirms That The
`Seventh Amendment Provides Patent
`Owners With A Right To A Jury In
`Invalidation Proceedings. . . . . . . . . . . . . . . . . 5
`
`This Court’s Precedent Confirms That Patent
`Owners Have A Right To An Article III
`Forum For Invalidation Proceedings.
`. . . . . . 9
`
`Inter Partes Review Cannot Be Justified By
`The Public-Rights Doctrine, Especially For
`Patents Granted Earlier.
`. . . . . . . . . . . . . . . 10
`
`CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
`
`
`
`iv
`
`APPENDIX
`
`Appendix A Opinion in the United States Court of
`Appeals for the Federal Circuit
`(November 1, 2017) . . . . . . . . . . . App. 1
`
`Appendix B Final Written Decision in the United
`States Patent and Trademark Office,
`Before the Patent Trial and Appeal
`Board
`(June 15, 2016) . . . . . . . . . . . . . . App. 11
`
`
`
`v
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Atlas Roofing Co. v. Occupational Safety & Health
`Review Comm’n,
`430 U.S. 442 (1977) . . . . . . . . . . . . . . . . . . . . . . 12
`
`Boulton Watt v. Bull,
`1795) 126 Eng. Rep. 651 (CP) . . . . . . . . . . . . . . . 9
`
`Crowell v. Benson,
`285 U.S. 22 (1932) . . . . . . . . . . . . . . . . . . . . . . . 12
`
`Curtis v. Loether,
`415 U.S. 189 (1974) . . . . . . . . . . . . . . . . . . . . . 5, 6
`
`Darcy v. Allein,
`(1601) 77 Eng. Rep. 1260 (KB)
`
`. . . . . . . . . . . . . . 6
`
`Ex Parte Wood & Brundage,
`22 U.S. 603 (1824) . . . . . . . . . . . . . . . . . . . . . . . . 6
`
`Feltner v. Columbia Pictures Television, Inc.,
`523 U.S. 340 (1998) . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Granfinanciera, S.A. v. Nordberg,
`492 U.S. 33 (1989) . . . . . . . . . . . . . . . . . . . . . 6, 11
`
`Iron Silver Mining Co. v. Campbell,
`135 U.S. 286 (1890) . . . . . . . . . . . . . . . . . . . . . . 10
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995)
`. . . . . . . . . . . . . . . . 6
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) . . . . . . . . . . . . . . . . . . . 5, 7, 8
`
`
`
`vi
`
`McCormick Harvesting Mach. Co. v. C. Aultman &
`Co.,
`169 U.S. 606 (1898) . . . . . . . . . . . . . . . . . . . . 2, 10
`
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015)
`. . . . . . . . . . . . 4, 7
`
`Murray’s Lessee v. Hoboken Land & Improvement
`Co.,
`59 U.S. 272 (1855) . . . . . . . . . . . . . . . . . . . . . 9, 12
`
`NFIB v. Sebelius,
`132 S. Ct. 2566 (2012) . . . . . . . . . . . . . . . . . . . . 13
`
`N. Pipeline Constr. Co. v. Marathon Pipe Line Co.,
`458 U.S. 50 (1982) . . . . . . . . . . . . . . . . . . . . . 9, 13
`
`Oil States Energy Services, LLC v. Greene’s Energy
`Group, LLC,
`639 F. App’x 639 (Fed. Cir. 2016), cert. granted,
`2017 WL 2507340 (U.S. June 12, 2017) . . . . .
`
`i, 4
`
`Spokeo, Inc. v. Robins,
`136 S. Ct. 1540 (2016) . . . . . . . . . . . . . . . . . . . . 12
`
`Stern v. Marshall,
`564 U.S. 462 (2011) . . . . . . . . . . . . . . . . . . passim
`
`Tegal Corp. v. Tokyo Electron Am., Inc.,
`257 F.3d 1331 (Fed. Cir. 2001)
`. . . . . . . . . . . . . . 7
`
`United States v. Am. Bell Tel. Co.,
`128 U.S. 315 (1888) . . . . . . . . . . . . . . . . . . . . 8, 13
`
`CONSTITUTION
`
`U.S. CONST. art. III . . . . . . . . . . . . . . . . . . . . . passim
`
`U.S. CONST. amend. VII . . . . . . . . . . . . . . . . . . . . 1, 5
`
`
`
`vii
`
`STATUTES AND REGULATIONS
`
`28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . 1
`
`35 U.S.C. § 103 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
`
`35 U.S.C. § 261 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`35 U.S.C. § 311(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`35 U.S.C. § 311(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`35 U.S.C. § 318(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`37 C.F.R. § 42.100(a) . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`125 Stat. 299 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`OTHER AUTHORITIES
`
`2 JOSEPH STORY, COMMENTARIES ON EQUITY
`JURISPRUDENCE (Melville M. Bigelow ed., Little,
`Brown, & Co., 13th ed. 1886)
`. . . . . . . . . . . . . . . 9
`
`3 WILLIAM BLACKSTONE, COMMENTARIES . . . . . . . . 12
`
`Brief for Intervenor—Director of the United States
`Patent and Trademark Office, Oil States Energy
`Servs., LLC v. Greene’s Energy Grp., LLC, 639 F.
`App’x 639 (Fed. Cir. 2016) . . . . . . . . . . . . . . . . . . 7
`
`Oren Bracha, Owning Ideas: A History of Anglo-
`American Intellectual Property (June 2005)
`(unpublished Ph.D. thesis, Harvard Law School),
`https://law.utexas.edu/faculty/obracha/disserta
`tion/pdf/chapter1.pdf . . . . . . . . . . . . . . . . . . . . . . 6
`
`
`
`viii
`
`General information concerning patents, USPTO
`(Oct. 2015), https://www.uspto.gov/patents-
`getting-started/general-information-concerning-
`patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7, 8
`
`H.R. Rep. No. 112-98, pt. 1 (2011)
`
`. . . . . . . . . . . . . . 3
`
`Adam Mossoff, Patents As Constitutional Private
`Property: The Historical Protections Of Patents
`Under The Takings Clause, 87 B.U. L. REV. 689
`(2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`
`
`1
`
`PETITION FOR A WRIT OF CERTIORARI
`
`Petitioner Dragon Intellectual Property, LLC
`respectfully submits this petition for a writ of certiorari
`to review the judgment of the U.S. Court of Appeals for
`the Federal Circuit.
`
`OPINIONS AND ORDERS BELOW
`
`The order of the Federal Circuit affirming the
`opinion and order of the Patent Trial and Appeal Board
`(PTAB) (App., infra 1-10) is unreported and available
`at 2017 U.S. App. LEXIS 21707 (Fed. Cir. November 1,
`2017). The opinion and order of the PTAB (App., infra
`11-36) is unreported and available at 2016 Pat. App.
`LEXIS 7559 (PTAB June 15, 2016).
`
`STATEMENT OF JURISDICTION
`
`its order on
`The court of appeals entered
`November 1, 2017. An application to extend the time
`to file a petition for a writ of certiorari was granted on
`January 25, 2018, making the petition due on or before
`March 16, 2018. The jurisdiction of this Court is
`invoked under 28 U.S.C. § 1254(1).
`
`CONSTITUTIONAL PROVISIONS INVOLVED
`
`The Seventh Amendment of the United States
`Constitution provides:
`
`In Suits at common law, where the value in
`controversy shall exceed twenty dollars, the
`right of trial by jury shall be preserved, and no
`fact tried by a jury, shall be otherwise re-
`examined in any Court of the United States,
`than according to the rules of the common law.
`
`
`
`2
`
`INTRODUCTION
`
`This petition presents the same issue currently
`before this Court in Oil States Energy Services:
`whether the Constitution permits an administrative
`agency to extinguish a patentee’s private issued patent
`rights without a trial by jury. Because the grant of
`certiorari in Oil States Energy Services is relevant to
`this case, this Court should hold this petition pending
`the outcome of Oil States Energy Services. Should the
`Court determine in Oil States Energy Services that
`IPRs are unconstitutional, Petitioner respectfully
`requests that the Court grant this petition, vacate the
`judgment below, and remand with an instruction to
`dismiss for want of jurisdiction.
`
`STATEMENT OF THE CASE
`
`Patents create property rights, protected by the
`Constitution. Once a patent is granted, it “is not
`subject to be revoked or canceled by the president, or
`any other officer of the Government” because “[i]t has
`become the property of the patentee, and as such is
`entitled to the same legal protection as other property.”
`McCormick Harvesting Mach. Co. v. C. Aultman & Co.,
`169 U.S. 606, 608-09 (1898).
`
`The sole patent involved in this case, U.S. Pat.
`No. 5,930,444 (the ’444 patent), which is owned by the
`petitioner, was granted by the PTO on July 27, 1999. In
`September, 2011—more than a decade later—Congress
`passed the America Invents Act (the AIA) to combat
`what it perceived as inefficiencies in patent litigation.
`
`The AIA made several significant changes to the
`U.S. patent system, including abolishing inter partes
`reexamination and replacing it with inter partes review
`
`
`
`3
`
`(IPR). 125 Stat. at 299, 305. The AIA also renamed the
`PTO’s Board of Patent Appeals and Interferences,
`which is now the Patent Trial and Appeal Board (the
`Board). Id. at 290.
`
`The old inter partes reexamination proceeding
`differs significantly from the new inter partes review
`proceeding in that the former included neither a
`discovery process nor a trial, while the latter includes
`both. As such, the AIA allows the Board to review
`existing patents and extinguish those rights in a true
`adversarial process, via the newly created inter partes
`review. See 35 U.S.C. §§ 311(a) & 318(a); 37 C.F.R.
`§ 42.100(a); H.R. Rep. No. 112-98, pt. 1, at 46-47 (2011).
`Inter partes review commences when a party—often an
`alleged patent infringer—asks the Board to reconsider
`the PTO’s issuance of an existing patent and invalidate
`it on the ground that it was anticipated by prior art or
`obvious. 35 U.S.C. § 311(b).
`
`Historically, though, suits to invalidate patents
`would have been tried before a jury in a court of law.
`The Constitution thus provides patent owners with a
`right to a jury and an Article III forum. Inter partes
`review violates these rights.
`
`filed
`1. On December 20, 2013, Dragon
`infringement suits on the ’444 patent against DISH
`Network and Sirius XM Radio in the District of
`Delaware. On December 23, 2014, almost at the
`statutory deadline for doing so, DISH petitioned for
`inter partes review against the ’444 patent.
`
`2. Later, Sirius moved to join DISH’s IPR petition.
`The Board granted review for DISH and granted
`joinder for Sirius on January 8, 2016.
`
`
`
`4
`
`3. Meanwhile, on December 2, 2015, the Federal
`Circuit held that inter partes review was constitutional.
`MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d
`1284, 1288-92 (Fed. Cir. 2015).
`
`4. On June 15, 2016, the Board issued its Final
`Written Decision for the DISH IPR, invalidating all the
`claims of the ’444 patent under the review on
`obviousness grounds under 35 U.S.C. § 103 (pre-AIA).
`Dragon timely appealed the Board’s determination to
`the Federal Circuit, arguing that the Board erred in its
`obviousness findings. The appellate briefing of
`Dragon’s appeal concluded on January 31, 2017, when
`Dragon filed its appellate reply brief.
`
`5. On June 2, 2017, this Court granted certiorari to
`the Federal Circuit for the Oil States Energy Services
`case, which is currently still pending before the Court.
`In that case, among other questions, petitioner Oil
`States raised the same constitutional question based on
`which Dragon is now also petitioning for a writ of
`certiorari—whether inter partes review violates the
`Constitution by extinguishing private property rights
`through a non-Article III forum without a jury. The
`Court granted certiorari in the Oil States Energy
`Services case solely for that question.
`
`6. On November 27, 2017, the Court held an oral
`hearing on the Oil States Energy Services case. The
`Court has not issued an opinion for the case, but is
`expected to do so soon.
`
`7. The question presented in this case is nearly
`identical to that presented in the Oil States Energy
`Services case, except that, in addition to all the
`constitutional issues identified and the arguments
`
`
`
`5
`
`made by Oil States, Dragon also challenges whether
`inter partes review—even under the “public rights”
`doctrine—can be invoked against patents granted
`before inter partes review was statutorily established
`by Congress in 2011, including the ’444 patent, which
`was granted more than 12 years earlier.
`
`REASONS FOR GRANTING THE PETITION
`
`Inter partes review violates the Constitution. Suits
`to invalidate patents must be tried before a jury in an
`Article III forum, not in an agency proceeding. Inter
`partes review conflicts with this Court’s cases
`upholding the constitutional guarantees of a jury and
`an Article III court for patent invalidation.
`
`This Court has long held that patent “infringement
`cases today must be tried to a jury, as their
`predecessors were more than two centuries ago.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370,
`377 (1996) (emphasis added). At a minimum, the
`Constitution requires that an Article III
`judge
`adjudicate all cases in law and in equity arising under
`federal law. U.S. CONST. art. III. Contrary to this
`Court’s precedent, the Board’s inter partes review
`proceeding provides neither the jury nor the Article III
`forum guaranteed by the Constitution.
`
`I.
`
`This Court’s Precedent Confirms That The
`Seventh Amendment Provides Patent
`Owners With A Right To A Jury In
`Invalidation Proceedings.
`
`The Seventh Amendment ensures a jury trial “[i]n
`Suits at common law.” U.S. CONST., amend. VII. The
`“thrust of the Amendment was to preserve the right to
`jury trial as it existed in 1791.” Curtis v. Loether, 415
`
`
`
`6
`
`U.S. 189, 193 (1974). Beyond that, this Court has held
`that the Seventh Amendment “also applies to actions
`brought to enforce statutory rights that are analogous
`to common-law causes of action ordinarily decided in
`English law courts in the late 18th century, as opposed
`to those customarily heard by courts of equity or
`admiralty.” Granfinanciera, S.A. v. Nordberg, 492 U.S.
`33, 42 (1989).
`
`In 1791, “[a]n action for patent infringement is one
`that would have been heard in the law courts of old
`England.” Markman v. Westview Instruments, Inc., 52
`F.3d 967, 992-93 (Fed. Cir. 1995). And it had been that
`way for 200 years before that, too. See Darcy v. Allein
`(1601) 77 Eng. Rep. 1260 (KB); see also Oren Bracha,
`Owning Ideas: A History of Anglo-American Intellectual
`Property 33 (June 2005) (unpublished Ph.D. thesis,
`Harvard Law School), https://law.utexas.edu/faculty/
`obracha/dissertation/pdf/chapter1.pdf (noting that, in
`Darcy, “none of the parties disputed that the common
`law court had jurisdiction to decide the validity of the
`patent”). The only other way for a patent to be revoked
`at that time would have been a writ scire
`facias—essentially a show-cause order as to why the
`patent should not be revoked—that could be filed in the
`Chancery courts. And even in those instances, any
`disputed facts were tried to a jury in the common law
`courts. See, e.g., Ex Parte Wood & Brundage, 22 U.S.
`603, 614-15 (1824) (“[I]t is ORDERED * * * that the
`said Judge do award a process, in the nature of a scire
`facias, to the patentees, to show cause why the said
`patent should not be repealed * * * and that if the issue
`be an issue of fact, the trial thereof be by a jury.”).
`
`
`
`7
`
`in the copyright
`As this Court has held
`context—indistinguishable
`from patents
`in this
`regard—“the common law and statutes in England and
`this country granted copyright owners causes of action
`for infringement [and those suits were] tried in courts
`of law, and thus before juries.” Feltner v. Columbia
`Pictures Television, Inc., 523 U.S. 340, 348-49 (1998). It
`is thus clear that patent infringement cases—including
`invalidity defenses where damages are sought—are the
`province of the jury. See Markman, 517 U.S. at 377;
`Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331,
`1340 (Fed. Cir. 2001).
`
`Disregarding this long line of precedent, inter partes
`review takes a patent infringement claim out of the
`jury’s hands and entrusts it to bureaucrats. In support
`of this regime, the PTO has argued that “patents are a
`quintessential public right closely intertwined with a
`federal regulatory program,” thus giving the agency
`power to revoke patents. Brief for Intervenor—
`Director of the United States Patent and Trademark
`Office at 2, Oil States Energy Servs., 639 F. App’x 639
`(mem.). Ignoring the proper historical analysis
`mandated by this Court’s cases, the Federal Circuit has
`agreed, holding that patent rights are mere “public
`rights” of the sort outside Seventh Amendment
`protection. MCM Portfolio, 812 F.3d at 1293.
`
`Yet patents are certainly more than that. As even
`the PTO has recognized, patents are a property right,
`complete with the most important characteristic of
`private ownership—the right of exclusion. See General
`information concerning patents, USPTO (Oct. 2015),
`https://www.uspto.gov/patents-getting-started/general-
`information-concerning-patents (“A patent for an
`
`
`
`8
`
`invention is the grant of a property right to the
`inventor[—]the right to exclude others * * * *”). Even
`more important is that the private right exists wholly
`apart from the government once granted. See United
`States v. Am. Bell Tel. Co., 128 U.S. 315, 370 (1888)
`(“[The subject of the patent] has been taken from the
`people, from the public, and made the private property
`of the patentee * * * *”). That is why “[o]nce a patent is
`issued, the patentee must enforce the patent without
`aid of the USPTO.” General information concerning
`patents, USPTO, supra. If the patent were as tied to a
`public regulatory scheme as the PTO contends, the
`agency would also be responsible for violations of the
`patent. But that has never been the case.
`
`Congress’s attempt to “streamline” patent litigation
`by permitting the Board to resolve invalidity defenses
`thus impermissibly supplants the jury trial and creates
`a conflict with this Court’s jurisprudence. Indeed,
`turning over patent invalidation to agency judges
`renders Markman a dead letter. This Court’s teaching
`that patent “infringement cases today must be tried to
`a jury” is now easily bypassed by an alleged infringer
`using inter partes review to nullify it. See Markman,
`517 U.S. at 377. This Court should not permit that
`workaround of the constitutional jury-trial guarantee.
`
`Doubtless Congress and the PTO believe that inter
`partes review is more efficient. But the Seventh
`Amendment enshrines the right to jury in the
`Constitution precisely because of the possibility that a
`future legislature would find juries to be inefficient or
`inconvenient. Inter parties review is inconsistent with
`this guarantee. This Court’s review is needed to resolve
`
`
`
`9
`
`the conflict on this exceptionally important issue and
`enforce the Constitution’s jury-trial right.
`
`II.
`
`This Court’s Precedent Confirms That
`Patent Owners Have A Right To An Article
`III Forum For Invalidation Proceedings.
`
`Even if the Board’s determination of invalidity in
`this case did not violate the Seventh Amendment, it
`nonetheless violated Article III and this Court’s
`precedent. This Court has “long recognized that, 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.’” Stern v. Marshall, 564 U.S. 462, 484 (2011)
`(quoting Murray’s Lessee v. Hoboken Land &
`Improvement Co., 59 U.S. 272, 284 (1855)). Inter partes
`review hopelessly conflicts with that mandate.
`
`If a suit is within federal jurisdiction, then the test
`for Article III is whether the case “is made of ‘the stuff
`of the traditional actions at common law tried by the
`courts at Westminster in 1789.’ ” Ibid. (quoting N.
`Pipeline Constr. Co. v. Marathon Pipe Line Co., 458
`U.S. 50, 90 (1982) (Rehnquist, J., concurring in
`judgment)).
`
`Patent infringement cases are. See, e.g., Boulton
`Watt v. Bull (1795) 126 Eng. Rep. 651, 656, 660 (CP).
`Subject to the caveat of disputed facts being tried to a
`jury, these suits were raised in England during the
`Eighteenth Century either in actions at law or suits in
`equity. 2 JOSEPH STORY, COMMENTARIES ON EQUITY
`JURISPRUDENCE 236-39, §§ 930-34 (Melville M. Bigelow
`ed., Little, Brown, & Co., 13th ed. 1886). Either way, as
`
`
`
`10
`
`Stern teaches, they fit comfortably within the
`Article III tradition.
`
`Given this backdrop, it is unsurprising that this
`Court has long held that once a patent is granted, it “is
`not subject to be revoked or canceled by the president,
`or any other officer of the Government” because “[i]t
`has 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. That is why this Court
`has held in the context of land patents that “we do not
`believe that * * * the man who has obtained a patent
`from the government can be called to answer in regard
`to that patent before the officers of the land
`department of the government.” Iron Silver Mining Co.
`v. Campbell, 135 U.S. 286, 301-02 (1890). “The only
`authority competent to set a patent aside, or to annul
`it, or to correct it for any reason whatever, is vested in
`the courts of the United States, and not in the
`department which issued the patent.” McCormick, 169
`U.S. at 609.
`
`III.
`
`Inter Partes Review Cannot Be Justified By
`The Public-Rights Doctrine, Especially For
`Patents Granted Earlier.
`
`To be sure, “there [i]s a category of cases involving
`‘public rights’ that Congress could constitutionally
`assign to ‘legislative’ courts for resolution.” Stern, 564
`U.S. at 485. And this Court has indeed permitted
`tribunals other than Article III courts to exercise the
`judicial power over public rights. But that doctrine
`cannot justify inter partes review because patents do
`not fall into the public-rights category.
`
`
`
`11
`
`Public rights encompass only claims (i) by or against
`the government, (ii) which have been historically
`resolved outside the Judicial Branch, or (iii) the
`resolution of which is “essential to a limited regulatory
`objective * * * integrally related to particular federal
`government action.” Stern, 564 U.S. at 490-91. Patent-
`validity claims are none of these.
`
`A patent has been recognized for centuries as a
`private property right, so patent infringement cases do
`not rely on congressional grace for an Article III court.
`Cf. Granfinanciera, 492 U.S. at 54-55 (rejecting the
`argument that a fraudulent conveyance suit came
`within the “public rights” exception because it took
`place in a bankruptcy proceeding and holding that “[i]f
`a statutory right is not closely intertwined with a
`federal regulatory program Congress has power to
`enact, and if that right neither belongs to nor exists
`against the Federal Government, then it must be
`adjudicated by an Article III court” (emphasis added)).
`
`Patents “have * * * the attributes of personal
`property,” 35 U.S.C. § 261, and thus patent-validity
`claims involve disputes over quintessential private
`property rights that must be adjudicated by courts.
`Adam Mossoff, Patents As Constitutional Private
`Property: The Historical Protections Of Patents Under
`The Takings Clause, 87 B.U. L. REV. 689, 701 (2007)
`(discussing the American judicial tradition of patents’
`protection under Takings Clause as property rights).
`
`The power sought to be exercised by the Board in
`inter partes review is a “prototypical exercise of judicial
`power.” Stern, 564 U.S. at 494. That is because a final,
`binding judgment is being entered on a cause of
`action—patent invalidation—that stems from the
`
`
`
`12
`
`common law and does not depend on any agency
`regulatory regime as it predates the agency by
`centuries. Ibid.
`
`If a question about a patent’s validity may instead
`be shunted from the federal courts to an administrative
`agency “simply by deeming it part of some amorphous
`‘public right,’” then Article III’s protections have
`devolved into mere “wishful thinking.” Stern, 564 U.S.
`at 495. And to do so with patent invalidation conflicts
`with this Court’s mandate that “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.’” Id. at 484 (quoting Murray’s Lessee,
`59 U.S. at 284). After all, public-rights cases are the
`exception. Most disputes involve only private rights
`—including “private tort, contract, and property cases,
`as well as a vast range of other cases.” Atlas Roofing
`Co. v. Occupational Safety & Health Review Comm’n,
`430 U.S. 442, 458 (1977). “Private rights * * *
`traditionally include[ ] * * * property rights,” Spokeo,
`Inc. v. Robins, 136 S. Ct. 1540, 1551 (2016) (Thomas, J.,
`(quoting 3 WILLIAM BLACKSTONE,
`concurring)
`COMMENTARIES 130-39), and these cases adjudicate
`“the liability of one individual to another under the law
`as defined.” Stern, 564 U.S. at 489 (quoting Crowell v.
`Benson, 285 U.S. 22, 51 (1932)). These private
`rights—the broad swath of matters fit for judicial
`resolution—may only be adjudicated by Article III
`courts.
`
`Even if this Court finds that the boundary between
`a private right and a public right can be sometimes
`blurry for a particular agency with judicial power
`assigned by a specific statute, see, Stern, 564 U.S. at
`
`
`
`13
`
`489 (“[T]here may be instances in which the distinction
`between public and private rights * * * fails to provide
`concrete guidance as to whether, for example, a
`particular agency can adjudicate legal issues under a
`substantive regulatory scheme.”), it is clear that inter
`partes review at the very least cannot be invoked under
`the public-rights doctrine to invalidate patents that
`were granted before inter partes review was even
`statutorily established by Congress. Indisputably,
`before the AIA was enacted in 2011, Congress never
`assigned judicial power to the PTO to invalidate
`patents. Cf. Stern, 564 U.S. at 485 (“[T]here [i]s a
`category of cases involving ‘public rights’ that Congress
`could constitutionally assign to ‘legislative’ courts for
`resolution.” (emphasis added)).
`
`In sum, patent infringement cases—complete with
`invalidity defenses—were “traditional actions at
`common law” and therefore “the responsibility for
`deciding that [type of ] suit rests,” if not with juries
`then at a minimum, “with Article III judges in Article
`III courts.” Ibid. (quoting N. Pipeline, 458 U.S. at 90
`(Rehnquist, J., concurring in judgment)); see also Am.
`Bell, 128 U.S. at 365 (“Patents are sometimes issued
`unadvisedly or by mistake * * * * In such cases courts
`of law will pronounce them void * * * * That is a
`judicial act, and requires the judgment of a court.”).
`Even if good reasons exist to allow the agency to revoke
`patents through inter partes review, this Court’s
`“deference in matters of policy cannot * * * become
`abdication in matters of law.” NFIB v. Sebelius, 132
`S. Ct. 2566, 2579 (2012). The Constitution prohibits
`inter parties review, and this Court’s review is needed
`to resolve the conflict and ensure the Article III forum
`for such disputes that the Constitution requires.
`
`
`
`14
`
`CONCLUSION
`
`Petitioner respectfully requests that the Court
`grant the petition for a writ of certiorari, vacate the
`judgment below, and remand for further consideration
`consistent with the Court’s decision.
`
`Respectfully submitted,
`
`KAI ZHU
` Counsel of Record
`DRAGON INTELLECTUAL PROPERTY, LLC
`c/o
`60 Cody Ln.
`Los Altos, CA 94022
`T. 650.999.0172
`F. 610.884.6145
`kz@dragonipllc.com
`
`Counsel for Petitioner
`
`