`
`
`
`
`
`
`
`Nos. 19-1434, 19-1452, 19-1458
`
`IN THE
`Supreme Court of the United States
`————
`UNITED STATES,
`
`
`Petitioner,
`v.
`ARTHREX, INC., et al.,
`Respondents.
`
`
`
`____________________________________________________________________________________________________
`
`SMITH & NEPHEW, INC., ET AL.,
`
`
`
`Petitioners,
`v.
`ARTHREX, INC., ET AL.,
`Respondents.
`
`____________________________________________________________________________________________________
`
`
`
`ARTHREX, INC.,
`
`
`Petitioner,
`v.
`SMITH & NEPHEW, INC., ET AL.,
`Respondents.
`
`____________________________________________________________________________________________________
`
`
`
`
`
`
`
`On Writs of Certiorari to the
`United States Court of Appeals
`for the Federal Circuit
`__________________________________________________________________
`BRIEF OF AMICI CURIAE AMERICANS FOR PROSPERITY
`FOUNDATION AND TECHFREEDOM IN SUPPORT OF
`PETITIONER IN NO. 19-1458
`————
`
`MICHAEL PEPSON
`Counsel of Record
`CYNTHIA FLEMING CRAWFORD
`AMERICANS FOR PROSPERITY FOUNDATION
`1310 N. Courthouse Road, Ste. 700
`Arlington, VA 22201
`(571) 329-4529
`mpepson@afphq.org
`Counsel for Amicus Curiae
`
`
`
`December 30, 2020
`
`
`
`
`
`
`
`
`
`i
`
`TABLE OF CONTENTS
`
`Table of Authorities……………………………………...ii
`
`Brief of Amici Curiae in Support of Petitioners ...…...1
`
`Interest of Amici Curiae..…….…………………….…...1
`
`Summary of Argument….………………………….…...3
`
`Argument………………….………………………….…...6
`
`I. This Court Should Vacate and Set Aside the
`Board’s Decision……....…….……………….…....6
`
`A. The Blue-Pencil Remedy Exceeds the Judicial
`Power Under Article III.…………………………6
`
`B. The Separation of Powers Requires Meaningful
`Relief………...………………………..……………9
`
`to
`C. Federal Courts May Not Arrogate
`Themselves Congress’s Prerogative (and Duty)
`to Make Public Policy Decisions …….………..12
`
`II.
`
`Judicial Removal of APJ Independence Would
`Create Due Process Problems …...…...………..18
`
`III. This Court Should Reject Parade-of-Horribles
`Arguments Against
`Providing Arthrex
`Complete Relief …………………………...….….24
`
`Conclusion..……………….………………………….….27
`
`
`
`
`
`
`
`
`
`ii
`
`TABLE OF AUTHORITIES
`
`Cases Page(s)
`
`Barnhart v. Sigmon Coal Co.,
`534 U.S. 438 (2002) .............................................. 16
`
`Barr v. Am. Ass’n of Political
`Consultants,
`140 S. Ct. 2335 (2020) ................................ 8, 10, 12
`
`Buckley v. Valeo,
`424 U.S. 1 (1976) .................................................... 9
`
`Caperton v. A. T. Massey Coal Co.,
`556 U.S. 868 (2009) .............................................. 22
`
`Collins v. Mnuchin,
`938 F.3d 553 (5th Cir. 2019) ............................ 8, 10
`
`Commodity Futures Trading Comm’n v.
`Schor,
`478 U.S. 833 (1986) ........................................ 23, 24
`
`DaimlerChrysler Corp. v. Cuno,
`547 U.S. 332 (2006) ................................................ 8
`
`Ethicon Endo-Surgery, Inc. v. Covidien,
`812 F.3d 1023 (Fed. Cir. 2016) ............................ 21
`
`Free Enter. Fund v. Pub. Co. Accounting
`Oversight Bd.,
`561 U.S. 477 (2010) .............................................. 18
`
`
`
`
`
`iii
`
`
`Henson v. Santander Consumer USA,
`137 S. Ct. 1718 (2017) .................................... 14, 15
`
`Humphrey’s Ex’r v. United States,
`295 U.S. 602 (1935) .............................................. 23
`
`In re Alappat,
`33 F.3d 1526 (Fed. Cir. 1994) .............................. 19
`
`In re Murchison,
`349 U.S. 133 (1955) .............................................. 21
`
`James B. Beam Distilling Co. v.
`Georgia,
`501 U.S. 529 (1991) .............................................. 10
`
`Lucia v. SEC,
`138 S. Ct. 2044 (2018) .......................................... 11
`
`Marbury v. Madison,
`5 U.S. (1 Cranch) 137 (1803) ....................... 4, 8, 11
`
`Murphy v. NCAA,
`138 S. Ct. 1461 (2018) ...................................... 8, 11
`
`Nichols v. United States,
`136 S. Ct. 1113 (2016) .......................................... 17
`
`Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................ 20
`
`Noel Canning v. NLRB,
`705 F.3d 490 (D.C. Cir. 2013) .............................. 11
`
`
`
`
`
`iv
`
`
`N. Pipeline Constr. Co. v. Marathon
`Pipe Line Co.,
`458 U.S. 50 (1982) .................................................. 9
`
`Oil States Energy Servs. v. Greene’s
`Energy Grp., LLC,
`138 S. Ct. 1365 (2018) .................................. passim
`
`PHH Corp. v. Consumer Financial
`Protection Bureau,
`881 F.3d 75 (D.C. Cir. 2018) .................................. 9
`
`Polaris Innovations Ltd. v. Kingston
`Tech. Co.,
`792 F. App’x 820 (Fed. Cir. 2020) .................. 13, 18
`
`Randall v. Sorrell,
`548 U.S. 230 (2006) .............................................. 14
`
`Reno v. ACLU,
`521 U.S. 844 (1997) ................................................ 8
`
`Ryder v. United States,
`515 U.S. 177 (1995) .............................................. 12
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .................................... 14, 16
`
`Seila Law LLC v. Consumer Financial
`Protection Bureau,
`140 S. Ct. 2183 (2020) ........................................ 7, 9
`
`Synar v. United States,
`626 F. Supp. 1374 (D.D.C. 1986) ........................... 9
`
`
`
`
`
`v
`
`
`Thryv, Inc. v. Click-To-Call Techs., LP,
`140 S. Ct. 1367 (2020) .......................................... 19
`
`Tumey v. Ohio,
`273 U.S. 510 (1927) .............................................. 22
`
`United States v. Rutherford,
`442 U.S. 544 (1979) ................................................ 8
`
`United States v. Will,
`449 U.S. 200 (1980) .............................................. 24
`
`Utica Packing Co. v. Block,
`781 F.2d 71 (6th Cir. 1986) ............................ 21, 23
`
`Withrow v. Larkin,
`421 U.S. 35 (1975) ................................................ 21
`
`Constitution
`
`U.S. Const. Art. I, § 1 .................................................. 3
`
`U.S. Const. Art. III, § 2, cl. 1 ....................................... 8
`
`Statutes
`
`Pub. L. No. 112-29, 125 Stat. 284 (2011) .................... 5
`
`Rules
`
`Sup. Ct. Rule 37.3 ........................................................ 1
`
`Other Authorities
`
`Federalist No. 78 (Hamilton) .................................... 24
`
`
`
`
`
`vi
`
`
`Federalist No. 79 (Hamilton) .................................... 22
`
`Gene Quinn, If PTAB Judges Can Decide
`Cases Involving Former Defense Clients
`USPTO Conflict Rules Must Change,
`IP Watchdog (May 2, 2017) ............................. …22
`
`Gene Quinn, USPTO Response to FOIA
`Confirms There Are No Rules of
`Judicial Conduct for PTAB Judges, IP
`Watchdog (May 31, 2017) ................................ …23
`
`Gene Quinn & Steve Brachman, More
`Conflicts of Interest Surface with
`Second PTAB Judge, IP Watchdog
`(May 7, 2017) .................................................... …22
`
`Gregory Dolin,
`Dubious Patent Reform,
`56 B.C. L. Rev. 881 (2015) ................................... 26
`
`John M. Golden,
`Working Without Chevron: The PTO as
`Prime Mover,
`65 Duke L.J. 1657 (2016) ..................................... 19
`
`Kent Barnett,
`Resolving the ALJ Quandary,
`66 Vand. L. Rev. 797 (2013) ........................... 22, 23
`
`
`
`
`
`vii
`
`
`Kent Barnett,
`To the Victor Goes the Toil—Remedies
`for Regulated Parties in Separation-of-
`Powers Litigation,
`92 N.C. L. Rev. 481 (2014) ................................... 12
`
`Nicholas J. Doyle,
`Confirmation Bias and the Due Process
`of Inter Partes Review,
`57 IDEA 29 (2016) ................................................ 21
`
`Oral Arg. Tr., Collins et al. v. Mnuchin et
`al., Nos. 19-422, 19-563 (Dec. 9, 2020) .................. 5
`
`Philip Hamburger, Is Administrative Law
`Unlawful? (2014) .................................................. 19
`
`Samuel F. Miller, Lectures on the
`Constitution of the United States (1891) ............... 2
`
`Saurabh Vishnubhakat,
`Disguised Patent Policymaking,
`76 Wash & Lee L. Rev. 1667 (2019). ............. 19, 20
`
`The Patent Trial and Appeal Board and
`the Appointments Clause: Implications
`of Recent Court Decisions: Hearing
`Before the Subcommittee on Courts,
`Intellectual Property, and the Internet
`of the H. Comm. on the Judiciary,
`116th Cong. (2019) ............................... …13, 14, 26
`
`
`
`
`
`1
`
`
`
`BRIEF OF AMICI CURIAE
`IN SUPPORT OF PETITIONER ARTHREX
`
`Under Supreme Court Rule 37.3, Americans for
`Prosperity Foundation (“AFPF”) and TechFreedom
`respectfully submit this amici curiae brief in support
`of Petitioner Arthrex, Inc. (“Arthrex”).1
`
`INTEREST OF AMICI CURIAE
`
`Amicus curiae AFPF is a 501(c)(3) nonprofit
`organization committed to educating and training
`Americans to be courageous advocates for the ideas,
`principles, and policies of a
`free and open
`society. Some of those key ideas are the separation of
`powers, due process,
`the rule of
`law, and
`constitutionally limited government. As part of this
`mission, it appears as amicus curiae before federal
`and state courts.
`
`AFPF takes no position here as to broader public
`policy questions relating to patents, including debates
`and normative questions relating to balancing the
`interests of innovators with those of implementers.
`Instead, AFPF’s interest in this case solely lies in the
`enforcement of the Constitution’s separation of
`powers and due process requirements, and ensuring
`that patent disputes are
`litigated within a
`constitutionally permissible framework. AFPF has a
`particular interest in this case because it believes
`businesses and individuals, like Arthrex, are entitled
`
`
`1 All parties have consented to the filing of this brief. No counsel
`for a party authored this brief in whole or in part and no person
`other than amicus made any monetary contributions intended to
`fund the preparation or submission of this brief.
`
`
`
`
`2
`
`
`to a meaningful remedy for separation-of-powers
`violations that would afford them complete redress
`under the facts and circumstances of their case.
`
`TechFreedom is a nonprofit, nonpartisan think
`tank based in Washington, D.C. It is dedicated to
`promoting technological progress that improves the
`human condition. It seeks to advance public policy
`that makes experimentation, entrepreneurship, and
`investment possible.
`
`In the courts, TechFreedom generally focuses on
`issues germane to the Federal Trade Commission or
`the Federal Communications Commission. It does not
`involve itself with patent law, and it has no expertise
`on the inter-partes review process. The organization is
`fundamentally committed, however, to the notion that
`only Congress may write our laws. The judiciary
`simply applies those laws as written, while ensuring
`that
`the other branches
`stay within
`their
`constitutional
`lanes. The
`judiciary does
`this,
`moreover, only as it “decide[s] and pronounce[s] a
`judgment and carr[ies] it into effect between persons
`and parties who bring a case before it for decision.”
`Samuel F. Miller, Lectures on the Constitution of the
`United States 314 (1891).
`
`In this case, the Federal Circuit properly exercised
`the judicial power when, in the process of resolving a
`concrete dispute, it concluded that the statute
`governing administrative patent judges violates the
`Appointments Clause. It then illicitly wielded the
`legislative power, however, when it “considered
`several potential fixes” to the statute and “chose the
`one it viewed” as best. Pet. App. 290 (Hughes, J.,
`joined by Wallach, J., dissenting from denial of
`
`
`
`
`3
`
`
`rehearing en banc). The Federal Circuit should
`instead have “defer[red] to Congress to fix the
`problem.” Id. TechFreedom urges the Court to reject
`the Federal Circuit’s attempt to rewrite the law.
`
`SUMMARY OF ARGUMENT
`
`“All legislative Powers” are “vested” in Congress.
`U.S. Const. Art. I, § 1. When a federal court finds a
`constitutional defect in a statute, therefore, it may not
`sit as a council of revision, which would require
`wielding legislative power to edit the statute until it
`deems the problem solved. Here, however, the Federal
`Circuit did just that.
`
`The Federal Circuit held the administrative patent
`judges (“APJs”) who oversee the inter partes review
`(“IPR”) process are principal Officers of the United
`States. The court then concluded the statutory rules
`governing the APJs’ appointment and removal are
`inconsistent with the APJs’ principal officer status.
`At that point, the court should simply have noted the
`defect, acknowledged that only Congress can address
`it, and taken no further action beyond vacating the
`challenged decision. Instead, the court seized for itself
`Congress’s power to supply a statutory fix. Making
`matters worse, the court selected an amendment that
`may not fix the Appointments Clause defect, probably
`infringes the right to due process, and leaves the party
`challenging the defect without a remedy.
`
`Some amici who favor the IPR process have set
`forth distinct statutory revisions for the IPR process,
`if this Court concludes APJs are principal officers. As
`their diverging proposals for salvaging that process
`confirm, fixing the IPR statute’s Appointments Clause
`
`
`
`
`
`4
`
`
`defect is a public policy question beyond the ken and
`province of the judiciary. It is a task for Congress.
`
`the
`fix
`to
`The Federal Circuit purported
`Appointments Clause problem by stripping the APJs
`of their for-cause removal protection. But making the
`APJs removable at will simply fixes an Appointments
`Clause problem (if it even does that) by replacing it
`with a due process problem. Now deprived of the right
`to a hearing before an independent adjudicator,
`Arthrex, the party that raised the Appointments
`Clause problem in the first place, is left without a
`remedy. As Chief Justice Marshall wrote in Marbury
`v. Madison, quoting Blackstone’s Commentaries, “‘it
`is a general and indisputable rule, that where there is
`a legal right, there is also a legal remedy by suit or
`action at law, whenever that right is invaded.’” 5 U.S.
`(1 Cranch) 137, 163 (1803) (quoting 3 Blackstone,
`Commentaries 23). “The very essence of civil liberty
`certainly consists in the right of every individual to
`claim the protection of the laws, whenever he receives
`an injury. One of the first duties of government is to
`afford that protection.” Id.
`
`There is nothing this Court can or should do to
`salvage the unconstitutional IPR process. Only
`Congress may cure these constitutional problems, if it
`chooses to do so. This Court should instead focus on
`the case and controversy before it and provide
`complete relief to Arthrex, consistent with the judicial
`role under Article III. The only meaningful way to
`redress the harms Arthrex has suffered from the
`constitutional violations is to vacate the agency
`decision without remand.
`
`
`
`
`
`5
`
`
`
`The sky will not fall if the Court does this. After
`all, the IPR process itself is relatively new—the
`product of the America Invents Act (“AIA”), Pub. L.
`No. 112-29, 125 Stat. 284 (2011). Congress has been
`on notice of its constitutional flaws, even holding
`hearings on possible approaches to fix these problems
`through the constitutionally prescribed method: duly
`enacted legislation. The political branches are thus
`well positioned to decide for themselves whether and
`how to address the statute’s constitutional shortfalls.
`Meanwhile, independent, neutral, and procedurally
`fair Article III courts will remain open to resolve
`patent disputes and grant declaratory and injunctive
`relief—just as they were before, and have been since,
`the AIA was passed nine years ago.
`
`The bigger risk lies on the other side, in letting
`attacks on the structure of the Republic go
`unaddressed. The separation of powers and our
`system of checks and balances are more than just
`arcane concepts from middle school civics classes.
`Instead, as Justice Alito recently observed, this Court
`has “said many times that structural provisions of the
`Constitution, like the [A]ppointments [C]lause and
`rules about the removal of executive officers, are
`ultimately important because they affect ordinary
`people, they affect liberty, . . . and they affect
`democratic accountability.” Oral Arg. Tr. at 46:6–12,
`Collins v. Mnuchin, Nos 19-422, 19-563 (Dec. 9, 2020).
`
`The Federal Circuit has appropriated legislative
`power from Congress. If the blue-pencil remedy
`employed here is allowed to stand, it will only further
`signal a green light for courts to resolve policy
`disputes that belong in the political branches. This
`
`
`
`
`
`6
`
`
`will keep happening until this Court flashes a red
`light at judicial lawmaking.
`
`ARGUMENT
`
`I. THIS COURT SHOULD VACATE AND SET ASIDE
`THE BOARD’S DECISION.
`
`As Petitioner Arthrex explains, see Arthrex Br. 16–
`34, APJs are principal Officers of the United States,
`and thus the appointment of APJs by the Secretary of
`Commerce, and the restrictions placed on their
`removal, violate the separation of powers. The
`Federal Circuit agreed and held the underlying
`proceedings unconstitutional. Therefore, the Federal
`Circuit should have vacated the Patent Trial and
`Appeal Board (“PTAB”) decision, without remand and
`without attempting to prospectively edit the statute.
`Instead, the Federal Circuit revised the statute,
`thereby exceeding its authority and failing to provide
`a remedy to Arthrex.
`
`A. The Blue-Pencil Remedy Exceeds the
`Judicial Power Under Article III.
`
`As Arthrex explains, see Arthrex Br. 52–56, the
`AIA’s plain language and structure demonstrate
`Congress intended that removal restrictions on APJs
`be a key feature of the IPR process. Indeed, four
`Federal Circuit
`judges
`reached an
`identical
`conclusion: “The panel’s invalidation of Title 5
`removal protections and severance is not consistent
`with Supreme Court precedent. . . . By eliminating
`Title 5 removal protections for APJs, the panel is
`performing major surgery to the statute that Congress
`could not possibly have foreseen or intended.” Pet.
`
`
`
`
`
`7
`
`
`App. 250a–251a (Dyk, J., joined by Newman, Wallach,
`JJ., and Hughes, J., as to Part I.A, dissenting from the
`denial of rehearing en banc).2
`
`“ALJs in general and APJs in particular have been
`afforded longstanding and continuous protection from
`removal. . . . [H]ere, the provision being partially
`invalidated is not even part of the Patent Act but is
`instead in Title 5. Elimination of those protections
`cannot be squared with Congressional design.” Pet.
`App. 254a (Dyk, J., joined by Newman, Wallach, JJ.,
`and Hughes, J., as to Part I.A, dissenting from the
`denial of rehearing en banc); see also Pet. App. 277a
`(Hughes, J., joined by Wallach, J., dissenting from the
`denial of the petitions for rehearing en banc) (“Given
`the federal employment protections APJs and their
`predecessors have enjoyed for more than three
`decades, and the overall goal of the America Invents
`Act, I do not think Congress would have divested APJs
`of their Title 5 removal protections to cure any alleged
`constitutional defect in their appointment.”). For this
`reason alone, this Court should reject any proposal to
`rewrite the statute to “sever” the unconstitutional
`removal restrictions. Cf. Seila Law LLC v. Consumer
`Financial Protection Bureau, 140 S. Ct. 2183, 2219
`(2020) (Thomas, J., concurring in part and dissenting
`in part) (“Our modern severability precedents create
`tension with . . . historic practice.”).
`
`the Federal Circuit’s
`fundamentally,
` More
`remedial approach ignores the separation-of-powers
`limits on Article III courts’ ability to “revise” federal
`statutes—a task Article I vests in Congress alone.
`
`2 References to “Pet. App.” refer to Petitioner United States’s
`Appendix filed in case No. 19-1434.
`
`
`
`
`8
`
`
`“[C]ourts cannot take a blue pencil to statutes[.]”
`Murphy v. NCAA, 138 S. Ct. 1461, 1486 (2018)
`(Thomas, J., concurring). “Under our constitutional
`framework, federal courts do not sit as councils of
`revision, empowered to rewrite legislation in accord
`with their own conceptions of prudent public policy.”
`United States v. Rutherford, 442 U.S. 544, 555 (1979).
`“[T]he power of judicial review does not allow courts
`to revise statutes[.]” Seila Law, 140 S. Ct. at 2220
`(Thomas, J., concurring in part and dissenting in
`part); see also Barr v. Am. Ass’n of Political
`Consultants, 140 S. Ct. 2335, 2365–66
`(2020)
`(Gorsuch, J., dissenting in part) (“I am doubtful of our
`authority to rewrite the law in this way. . . . To start,
`it’s hard to see how today’s use of severability doctrine
`qualifies as a remedy at all[.]”). And courts may “‘not
`rewrite a . . . law to conform it to constitutional
`requirements.’” Reno v. ACLU, 521 U.S. 844, 884–85
`(1997) (citation omitted).
`
`tasked with
`courts are
`federal
`Instead,
`adjudicating discrete cases and controversies. U.S.
`Const. Art. III, § 2, cl. 1. “No principle is more
`fundamental to the judiciary’s proper role in our
`system of government than the constitutional
`limitation of federal-court jurisdiction to actual cases
`or controversies.” DaimlerChrysler Corp. v. Cuno, 547
`U.S. 332, 341 (2006). This “generally does not include
`the legislative power to erase, rewrite, or otherwise
`‘strike down’ statutes[.]” Collins v. Mnuchin, 938 F.3d
`553, 609 (5th Cir. 2019) (en banc) (Oldham, J., and Ho,
`J., concurring in part and dissenting in part), cert
`granted, 207 L.Ed.2d 1118 (2020). Instead, the
`“province of the court is, solely, to decide on the rights
`of individuals[.]” Marbury, 5 U.S. (1 Cranch) at 170.
`
`
`
`
`
`9
`
`
`When courts rule for a complaining party, they must
`focus on providing complete relief to that party, not on
`rewriting statutes.
`
`B. The Separation of Powers Requires
`Meaningful Relief.
`
` The actions of unconstitutionally appointed (or
`insulated) officers must be set aside. Cf. Seila Law,
`140 S. Ct. at 2219 (Thomas, J., concurring in part and
`dissenting in part) (“To resolve this case, I would
`simply deny the . . . CFPB petition to enforce the civil
`investigative demand.”); PHH Corp. v. Consumer Fin.
`Prot. Bureau, 881 F.3d 75, 139 (D.C. Cir. 2018) (en
`banc) (Henderson, J., dissenting) (“I would set aside
`the Director’s decision as ultra vires and forbid the
`agency from resuming proceedings.”).
`
`This is because, as then-Judge Scalia explained, a
`remedy for a constitutional violation must redress the
`harm to the injured party. When resolving “cases
`specifically involving incompatible authorization and
`tenure (or appointment) statutes,” courts must focus
`on providing relief to “the injury-in-fact that confers
`standing upon the plaintiff.” Synar v. United States,
`626 F. Supp. 1374, 1393 (D.D.C. 1986) (per curiam)
`(collecting cases), aff’d sub nom. Bowsher v. Synar,
`478 U.S. 714 (1986); see also N. Pipeline Constr. Co. v.
`Marathon Pipe Line Co., 458 U.S. 50, 52 (1982)
`(setting aside exercise of adjudicatory authority over
`plaintiff by bankruptcy judge who lacked Article III
`life tenure); Buckley v. Valeo, 424 U.S. 1 (1976)
`(setting aside Federal Election Campaign Act
`provisions granting authority over plaintiffs to
`officials appointed in an improper manner).
`
`
`
`
`
`10
`
`
`
`Here, however, as Judge O’Malley, joined by
`Judges Moore and Reyna, explained:
`
`[O]ur curative severance of the statute,
`does not “remedy” the harm to Arthrex,
`whose patent rights were adjudicated
`under an unconstitutional scheme. . . .
`[The Federal Circuit’s] decision that the
`statute can be rendered constitutional by
`severance does not remedy any past
`harm—it only avoids continuing harm in
`the
`future. It
`is only meaningful
`prospectively,
`once
`severance has
`occurred.
`
`Pet. App. 245a–246a. Cf. Am. Ass’n of Political
`Consultants, 140 S. Ct. at 2366 (Gorsuch, J.,
`concurring
`in part and dissenting
`in part)
`(“[P]rospective decisionmaking has never been easy to
`square with the judicial power.”) (citing James B.
`Beam Distilling Co. v. Georgia, 501 U. S. 529, 548–549
`(1991) (Scalia, J., concurring in judgment) (judicial
`power is limited to “discerning what the law is, rather
`than decreeing . . . what it will tomorrow be”)).
`
`Blue-penciling the statute therefore “affords
`[Arthrex] no relief whatsoever.” Collins, 938 F.3d at
`609 (Oldham, J., concurring in part and dissenting in
`part). This Court should reject the proposal to remand
`the matter to the agency for a new hearing under a
`judicially modified statutory scheme. That approach
`would provide no relief to Arthrex and would leave it
`worse off. Arthrex is entitled to a remedy that
`meaningfully redresses its injuries, which were
`caused by an unconstitutional administrative action
`
`
`
`
`
`11
`
`
`suffering from a fatal defect in authority. The Court
`cannot fix that harm through ordering repetition.
`
`Failing to vacate the proceedings below without
`remand is in tension with the principle that for every
`right there must be a remedy.3 “It is a settled and
`invariable principle, that every right, when withheld,
`must have a remedy, and every injury its proper
`redress.” Marbury, 5 U.S. (1 Cranch) at 147. As
`applied here, this principle demands that where an
`agency official lacks statutory or constitutional
`authority to take a specific action, that action should
`be vacated. See Noel Canning v. NLRB, 705 F.3d 490,
`515 (D.C. Cir. 2013). Cf. Pet. App. 244a (O’Malley, J.,
`joined by Moore, JJ., concurring in the denial of the
`petitions for rehearing en banc) (“It is true that if . . .
`the appointment of APJs ran afoul of the Constitution,
`that fact was true from the time of appointment
`forward, rendering all APJ decisions under the AIA
`unconstitutional when rendered.”).
`
`Furthermore, Arthrex should not be punished for
`asserting its constitutional right to challenge the
`PTAB decision below, which was void ab initio. As
`this Court has made clear, Appointments Clause
`remedies
`should
`“create
`incentives
`to
`raise
`Appointments Clause challenges.” Lucia v. SEC, 138
`S. Ct. 2044, 2055 n.5 (2018) (cleaned up and citation
`omitted). The remedy
`for a violation of the
`Appointments Clause or separation of powers should
`advance the structural purpose of Article II by
`creating
`incentives
`for parties
`to raise such
`
`3 Severance is not “literally” a remedy, because “[r]emedies
`operate with respect to specific parties, not on legal rules in the
`abstract.” Murphy, 138 S. Ct. at 1486 (Thomas, J., concurring).
`
`
`
`
`12
`
`
`challenges. See Ryder v. United States, 515 U.S. 177,
`182–83 (1995). Remanding for repetitive proceedings
`would have
`the
`opposite
`effect, perversely
`disincentivizing parties
`from exercising
`their
`constitutional rights. See also Kent Barnett, To the
`Victor Goes the Toil—Remedies for Regulated Parties
`in Separation-of-Powers Litigation, 92 N.C. L. Rev.
`481, 518–46 (2014).
`
`Moreover, the Federal Circuit’s legislative-type
`remedy, while hollow for Arthrex, is anything but
`modest, as it judicially transfers Article I legislative
`power to an Article III court. The Federal Circuit
`correctly
`found the IPR process violates the
`Constitution because APJs are principal Officers. Yet
`it declined to remedy the harm to Arthrex caused by
`the constitutional violation. Instead, it assumed
`Congress’s legislative powers, severed a part of the
`statute, and left Arthrex and others worse off than
`before. Cf. Am. Ass’n of Political Consultants, 140 S.
`Ct. at 2366 (Gorsuch, J., concurring in the judgment
`in part and dissenting in part) (noting in that case
`that “[a] severance remedy not only fails to help the
`plaintiffs, it harms strangers to this suit.”).
`
`C. Federal Courts May Not Arrogate to
`Themselves Congress’s Prerogative (and
`Duty) to Make Public Policy Decisions.
`
`The Federal Circuit’s vigorous deployment of the
`“severability” doctrine is particularly problematic in
`that the Circuit arrogated to itself the power to decide
`among various alternatives how the statute should be
`revised. In other words, the Federal Circuit exercised
`the power to determine what the “legislative fix”
`
`
`
`
`
`13
`
`
`should be. That choice was not a proper judicial choice
`under the Constitution.
`
`To begin with, the Federal Circuit’s legislative
`changes are likely not in accord with what Congress
`would have wanted. As Judge Dyk explained:
`“Congress almost certainly would prefer
`the
`opportunity to itself fix any Appointments Clause
`problem before imposing the panel’s drastic remedy.”
`Pet. App. 255a. Dyk, J., joined by Newman, Wallach,
`JJ., and Hughes, J., as to Part I.A, dissenting from the
`denial of rehearing en banc); see also Polaris
`Innovations Ltd. v. Kingston Tech. Co., 792 F. App’x
`820, 828 (Fed. Cir. 2020) (Hughes, J., concurring) (“[I]t
`seems unlikely to me that Congress, faced with this
`Appointments Clause problem, would have chosen to
`strip APJs of their employment protections, rather
`than choose some other alternative.”).4 Compelling
`evidence of this, and a telling sign that the Federal
`Circuit overstepped its remedial authority here, is
`that Congress has already held a hearing exploring
`legislative fixes to the IPR process to solve the
`constitutional problems. It did this over a year ago.
`See The Patent Trial and Appeal Board and the
`Appointments Clause: Implications of Recent Court
`Decisions: Hearing Before the Subcommittee on
`Courts, Intellectual Property, and the Internet of the
`
`
`4 Underscoring the degree to which the Federal Circuit’s
`deployment of the blue-pencil remedy was in error, several
`administrative, constitutional, and intellectual property law
`scholars have explained that if this Court concludes that APJs
`are principal Officers (which they dispute), the Court should
`reject the “severability” remedy the Federal Circuit imposed. See
`Administrative, Constitutional, and Intellectual Property Law
`Professors Br. 28–33.
`
`
`
`
`14
`
`
`H. Comm. on the Judiciary, 116th Cong. (2019),
`https://judiciary.house.gov/calendar/eventsingle.aspx
`?EventID=2249. If this Court were an appropriate
`forum for resolving these questions, then why is
`Congress exploring amendments to the statute?
`
`Worse, the Federal Circuit arrogated to itself
`Congress’s role of deciding how to fix the statute.5 As
`Judge Hughes observed: “I would defer to Congress to
`fix the problem. . . . Congress can best weigh the need
`for a fair and transparent patent system with the need
`for
`federal employment protections
`for
`those
`entrusted with carrying out that system. And
`Congress faces fewer constraints than we do in fixing
`an unconstitutional statute. We should allow it to do
`so.” Pet. App. 290a–291a (Hughes, J., joined by
`Wallach, J., dissenting from the denial of the petitions
`for rehearing en banc). Balancing policy goals
`transcends the judicial role. See also SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348, 1357–58 (2018) (“Each side
`offers plausible reasons why its approach might make
`for the more efficient policy. But who should win that
`debate isn’t our call to make.”). And absent powers of
`divination, courts cannot “foresee which of many
`different possible ways the legislature might respond
`to the constitutional objections[.]” Randall v. Sorrell,
`548 U.S. 230, 262 (2006) (plurality). Instead, the
`“proper role of the judiciary . . . [is] to apply, not
`
`
`5 The Federal Circuit panel considered several proposed
`approaches to fixing the statute’s constitutional problems,
`ultimately electing to blue-pencil the removal restrictions. See
`Pet. App. 23a–28a. According to the panel: “We believe that this,
`the narrowest revision to the scheme intended by Congress for
`reconsideration of patent rights, is the proper course of action
`and the action Congress would have undertaken.” Pet. App. 29a.
`
`
`
`
`15
`
`
`amend, the work of the People’s representatives.”
`Henson v.
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