No. 17-535
`In the Supreme Court of the United States
`
`
`
`TRANSPERFECT GLOBAL, INC., PETITIONER
`v.
`JOSEPH MATAL, INTERIM DIRECTOR, UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`BRIEF FOR THE RESPONDENT
`
`
` NOEL J. FRANCISCO
`Solicitor General
`Counsel of Record
`CHAD A. READLER
`Acting Assistant Attorney
`General
`MARK R. FREEMAN
`WILLIAM E. HAVEMANN
`Attorneys
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`
`
`
`
`
`
`In the Supreme Court of the United States
`
`
`
`TRANSPERFECT GLOBAL, INC., PETITIONER
`v.
`JOSEPH MATAL, INTERIM DIRECTOR, UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`BRIEF FOR THE RESPONDENT
`
`
` NOEL J. FRANCISCO
`Solicitor General
`Counsel of Record
`CHAD A. READLER
`Acting Assistant Attorney
`General
`MARK R. FREEMAN
`WILLIAM E. HAVEMANN
`Attorneys
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`
`
`
`
`
`
`
`QUESTION PRESENTED
`Whether post-grant review of covered business
`method patents comports with Article III and the
`Seventh Amendment.
`
`
`
`(I)
`
`
`
`In the Supreme Court of the United States
`
`
`
`No. 17-535
`TRANSPERFECT GLOBAL, INC., PETITIONER
`v.
`JOSEPH MATAL, INTERIM DIRECTOR, UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`BRIEF FOR THE RESPONDENT
`
`
`OPINIONS BELOW
`The decision of the court of appeals (Pet. App. 1a-
`22a) is not published in the Federal Reporter but is
`available at 2017 WL 2963553. The final decision of the
`Patent Trial and Appeal Board (Pet. App. 23a-56a) is
`not published in the United States Patents Quarterly
`but is available at 2015 WL 4381591.
`JURISDICTION
`The judgment of the court of appeals was entered on
`July 12, 2017. The petition for a writ of certiorari was
`filed on October 10, 2017. The jurisdiction of this Court
`is invoked under 28 U.S.C. 1254(1).
`STATEMENT
`1. Congress has created several mechanisms that al-
`low the United States Patent and Trademark Office
`(USPTO) “to reexamine—and perhaps cancel—a patent
`
`(1)
`
`
`
`2
`
`claim that it had previously allowed.” Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2137 (2016). In 1980,
`Congress created ex parte reexamination, under which
`any person may request reexamination of a United
`States patent on the basis of qualifying prior art. 35 U.S.C.
`301, 302; see Act of Dec. 12, 1980, Pub. L. No. 96-517, 94
`Stat. 3015 (35 U.S.C. Ch. 30). If the Director of the
`USPTO finds that such a request raises a “substantial
`new question of patentability affecting any claim,” a pa-
`tent examiner reexamines the patent “according to
`the procedures established for initial examination.”
`35 U.S.C. 303(a), 305; see 35 U.S.C. 304.
`Congress later created “another, similar procedure,
`known as ‘inter partes reexamination.’ ” Cuozzo, 136 S. Ct.
`at 2137; see 35 U.S.C. 311-318 (2000). The USPTO could
`institute an inter partes reexamination based on a peti-
`tion for such a review from a third party if the third
`party raised “a substantial new question of patentability”
`regarding an existing patent. 35 U.S.C. 312(a) (2000);
`see 35 U.S.C. 313 (2000). Inter partes reexamination
`differed from ex parte reexamination in that the third-
`party petitioner could participate in the inter partes
`proceeding and, after 2002, in any subsequent appeal.
`See Cuozzo, 136 S. Ct. at 2137; Cooper Techs. Co. v.
`Dudas, 536 F.3d 1330, 1332 (Fed. Cir. 2008).
`In 2011, Congress enacted the Leahy-Smith America
`Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284,
`which created several new mechanisms of post-
`issuance patent review. The AIA replaced inter partes
`reexamination with inter partes review, see Cuozzo,
`136 S. Ct. 2137. Under the AIA, third parties may seek
`inter partes review of any patent more than nine
`months after the patent’s issuance on the ground that
`
`
`
`
`
`3
`
`the patent is invalid based on lack of novelty or obvious-
`ness. 35 U.S.C. 311(b). The Director of the USPTO may
`institute an inter partes review if he determines that
`“there is a reasonable likelihood that the petitioner
`would prevail” with respect to at least one of its chal-
`lenges to patent validity, 35 U.S.C. 314(a), and if no other
`provision of the AIA bars institution under the circum-
`stances.
`The AIA created another review mechanism, known
`as post-grant review, for challenges brought within nine
`months of patent issuance. 35 U.S.C. 321(c). Any per-
`son other than the patent owner may petition for post-
`grant review, which the Director may institute if he de-
`termines that the petition “demonstrate[s] that it is
`more likely than not that at least 1 of the claims chal-
`lenged in the petition is unpatentable” or that the “pe-
`tition raises a novel or unsettled legal question that is
`important to other patents or patent applications.”
`35 U.S.C. 324(a) and (b). The petitioner in a post-grant
`review proceeding may challenge a patent on any
`ground of invalidity. See 35 U.S.C. 321(b).
`In addition, in an uncodified portion of the AIA, Con-
`gress created a “transitional post-grant review proceed-
`ing for review of the validity of covered business method
`patents,” known as covered business method (CBM) re-
`view. AIA § 18, 125 Stat. 329. Only a person who has
`“been sued for infringement of the patent or has been
`charged with infringement under that patent” may peti-
`tion to institute a CBM review. § 18(a)(1)(B), 125 Stat.
`330. The Director may institute a CBM review at any
`time during the term of the patent, rather than during
`only the nine-month window that applies in other post-
`grant review proceedings. See § 18(a)(1)(B), (E), and
`
`
`
`
`
`4
`
`(d), 125 Stat. 330-331. In other respects, Congress spec-
`ified that the CBM procedure is to “be regarded as, and
`shall employ the standards and procedures of, a post-
`grant review.” § 18(a)(1), 125 Stat. 329. The CBM re-
`view program is set to expire in 2020—eight years after
`the Director issued regulations implementing the pro-
`cess. See § 18(a)(3)(A), 125 Stat. 330.
`2. Petitioner owns U.S. Patent No. 6,857,022 (the
`’022 patent), which describes a method of ordering a
`translation of an electronic document by hyperlink. Pet.
`App. 1a-3a. Petitioner sued MotionPoint Corporation in
`the United States District Court for the Northern Dis-
`trict of California for infringement of the ’022 patent.
`Id. at 24a. MotionPoint then petitioned the USPTO for
`CBM review of the ’022 patent. Id. at 23a-24a. The Pa-
`tent Trial and Appeal Board (PTAB) granted the peti-
`tion, conducted a CBM review, and issued a final writ-
`ten decision concluding that the challenged claims in the
`’022 patent were unpatentable under 35 U.S.C. 112 for
`lack of an adequate written description. Pet. App. 23a-
`56a. The PTAB concluded that MotionPoint had “shown
`by a preponderance of the evidence that one of ordinary
`skill in the art would not have understood from the writ-
`ten description of the ’022 patent that the inventors had
`possession” of the claimed invention. Id. at 55a.
`Petitioner appealed to the Federal Circuit. The par-
`ties subsequently settled, and the Director of the
`USPTO intervened to defend the PTAB’s decision. Pet.
`App. 2a; see 35 U.S.C. 143. On appeal, petitioner chal-
`lenged the Board’s claim construction and patentability
`determination, but did not allege that CBM review vio-
`lates Article III and the Seventh Amendment. Pet. C.A.
`Br. 1-38.
`
`
`
`
`
`5
`
`Following oral argument, the court of appeals af-
`firmed in an unpublished opinion. Pet. App. 1a-22a.
`The court concluded that the PTAB had correctly con-
`strued the claims of the ’022 patent, id. at 7a, and that
`the challenged claims were invalid for lack of an ade-
`quate written description, id. at 20a.
`DISCUSSION
`Petitioner contends (Pet. 2, 4) that the petition for a
`writ of certiorari should be held pending the resolution
`of Oil States Energy Services, LLC v. Greene’s Energy
`Group, LLC, No. 16-712 (argued Nov. 27, 2017). This
`Court granted a petition for a writ of certiorari in Oil
`States to decide whether inter partes review violates
`Article III or the Seventh Amendment. The USPTO in-
`validated claims in the ’022 patent through CBM review,
`not inter partes review, but this Court’s decision in Oil
`States could inform the resolution of an Article III or
`Seventh Amendment challenge to CBM review. While
`petitioner did not preserve its constitutional challenge
`before the court of appeals, the court of appeals can ad-
`dress the application of forfeiture principles in the first
`instance if this case is ultimately remanded for further
`proceedings in light of Oil States. Accordingly, the gov-
`ernment agrees that it is appropriate to hold this peti-
`tion pending the Court’s decision in Oil States.
`
`
`
`
`
`
`
`6
`
`CONCLUSION
`The petition for a writ of certiorari should be held
`pending this Court’s decision in Oil States Energy Ser-
`vices, LLC v. Greene’s Energy Group, LLC, No. 16-712,
`and then disposed of as appropriate in light of that
`decision.
`Respectfully submitted.
`
` NOEL J. FRANCISCO
`Solicitor General
`CHAD A. READLER
`Acting Assistant Attorney
`General
`MARK R. FREEMAN
`WILLIAM E. HAVEMANN
`Attorneys
`
`
`DECEMBER 2017
`
`
`
`
`
`
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