`
`
`
`___________________________________
`
`No. 20-74
`IN THE
`Supreme Court of the United States
`UNITED STATES,
`
`
`
`
`Petitioner,
`
`v.
`IMAGE PROCESSING TECHNOLOGIES LLC ET AL.,
`
`
`Respondent.
`___________________________________
`
`ON PETITION FOR A WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`___________________________________
`MICRON TECHNOLOGY, INC.’S
`BRIEF IN SUPPORT OF PETITION
`___________________________________
`
`Jared Bobrow
`Jeremy Jason Lang
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1000 Marsh Road
`Menlo Park, CA 94025
`(650) 614-7400
`
`
`Melanie L. Bostwick
`Counsel of Record
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1152 15th Street, NW
`Washington, DC 20005
`(202) 339-8400
`mbostwick@orrick.com
`
`Counsel for Respondent Micron Technology, Inc.
`
`
`
`i
`
`QUESTIONS PRESENTED
`1. Whether, for purposes of the Appointments
`Clause, U.S. Const. art. II, § 2, cl. 2, administrative
`patent judges of the U.S. Patent and Trademark Of-
`fice are principal officers who must be appointed by
`the President with the Senate’s advice and consent, or
`“inferior Officers” whose appointment Congress has
`permissibly vested in a department head.
`2. Whether the court of appeals erred by adjudi-
`cating Appointments Clause challenges brought by
`litigants that had not presented such a challenge to
`the agency.
`
`
`
`ii
`
`CORPORATE DISCLOSURE STATEMENT
`Respondent Micron Technology, Inc., has no par-
`ent corporation, and no publicly held company owns
`10% or more of its stock.
`
`
`
`iii
`
`TABLE OF CONTENTS
`
`Page
`QUESTIONS PRESENTED ...................................... i
`CORPORATE DISCLOSURE STATEMENT .......... ii
`TABLE OF AUTHORITIES .................................... iv
`INTRODUCTION ..................................................... 1
`STATEMENT OF THE CASE .................................. 1
`REASONS FOR GRANTING THE PETITION ....... 3
`CONCLUSION .......................................................... 5
`
`
`
`
`iv
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .......................... 1, 2
`
`Polaris Innovations Limited v. Kingston
`Tech. Co.,
`792 F. App’x 820 (Fed. Cir. 2020) .......................... 3
`Constitutional Provisions
`U.S. Const. art. II, § 2, cl. 2 ........................................ 1
`Statutes
`5 U.S.C. § 7513(a) ........................................................ 2
`35 U.S.C. § 6(a) ............................................................ 1
`35 U.S.C. § 6(b)(4) ....................................................... 1
`35 U.S.C. § 311 ............................................................ 1
`Rules
`S. Ct. R. 12.6 ................................................................ 1
`Other Authorities
`Petition for a Writ of Certiorari,
`Arthrex, Inc. v. Smith & Nephew,
`Inc., No. 19-1458 (filed June 30,
`2020) ....................................................................... 3
`
`
`
`v
`
`Petition for a Writ of Certiorari, Polaris
`Innovations Ltd. v. Kingston Tech.
`Co., No. 19-1459 (filed June 30,
`2020) ....................................................................... 3
`Petition for a Writ of Certiorari, Smith
`& Nephew, Inc. v. Arthrex, Inc., No.
`19-1452 (filed June 29, 2020) ................................ 3
`Petition for a Writ of Certiorari, United
`States v. Arthrex, Inc., No. 19-1434
`(filed June 25, 2020) ...................................... 3, 4, 5
`
`
`
`1
`
`INTRODUCTION
`Pursuant to this Court’s Rule 12.6, respondent
`Micron Technology, Inc., respectfully files this respon-
`sive brief in support of the petition for a writ of certi-
`orari filed by Andrei Iancu, Under Secretary of
`Commerce for Intellectual Property and Director,
`U.S. Patent and Trademark Office, as it regards the
`cases in which Micron was a party in the court of ap-
`peals: North Star Innovations, Inc. v. Micron Technol-
`ogy, Inc., Nos. 2020-1295, 2020-1296, 2020-1297,
`2020-1298, and 2020-1299 (Fed. Cir.).
`STATEMENT OF THE CASE
`The government’s petition encompasses 39 orders
`in which the Federal Circuit vacated and remanded
`decisions by the Patent Trial and Appeal Board in the
`wake of the court of appeals’ ruling in Arthrex, Inc. v.
`Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).
`See Pet. 20. The Board is an administrative tribunal
`within the United States Patent and Trademark Of-
`fice (PTO) that conducts several types of patent-re-
`lated adjudicative proceedings, including, as relevant
`here, inter partes review proceedings under 35 U.S.C.
`§ 311. See 35 U.S.C. § 6(b)(4). By statute, the Board
`consists of certain specified PTO officials as well as a
`number of administrative patent judges who are ap-
`pointed by the Secretary of Commerce in consultation
`with the PTO Director. See id. § 6(a).
`The court of appeals in Arthrex held that these ad-
`ministrative patent judges were appointed in viola-
`tion of the Appointments Clause, U.S. Const. art. II,
`§ 2, cl. 2. 941 F.3d at 1327-35. The court found the
`
`
`
`2
`
`judges to be principal officers who must be appointed
`by the President with the advice and consent of the
`Senate. Id. In order to cure the purported constitu-
`tional defect, the court of appeals severed the provi-
`sions of 5 U.S.C. § 7513(a) as applied to the
`administrative patent judges, prospectively rendering
`them inferior officers. 941 F.3d at 1335-38. Finally, as
`a remedy for Arthrex and similarly situated patent
`owners whose cases had been decided by the formerly
`unconstitutional judges, the court of appeals vacated
`the decision of the Board in that case and remanded
`for rehearing before a new panel of now-constitutional
`judges. Id. at 1338-40.
`The Federal Circuit has proceeded to apply that
`vacate-and-remand remedy in a number of other ap-
`peals, including many where (as in Arthrex itself) the
`patent owner had forfeited a constitutional challenge
`by failing to raise it before the PTO. This includes the
`orders that are the subject of the government’s peti-
`tion. See Pet. 23-25.
`One of those orders concerns Micron. See Pet.
`App. 53a-55a. It affects three related appeals from a
`total of five decisions in which the Board, based on
`petitions for inter partes review filed by Micron, held
`unpatentable all challenged claims of three patents
`owned by North Star Innovations, Inc. North Star did
`not challenge the appointment of the administrative
`patent judges while the inter partes review proceed-
`ings were pending before the PTO—even after the Ar-
`threx ruling issued, when the time for seeking
`reconsideration by the Board remained open. North
`Star belatedly raised this challenge only on appeal to
`the Federal Circuit. Over the objections of Micron and
`
`
`
`3
`
`Director Iancu, who intervened in the appeals, the
`Federal Circuit vacated the Board’s five decisions and
`remanded for new hearings in light of Arthrex. Pet.
`App. 55a. Micron sought en banc rehearing, which the
`court of appeals denied on June 16, 2020. Pet. App.
`129a-134a.
`Shortly thereafter, the government filed a peti-
`tion for certiorari seeking this Court’s review of the
`Arthrex decision as well as a related decision by the
`court of appeals in Polaris Innovations Limited v.
`Kingston Technology Co., 792 F. App’x 820 (Fed. Cir.
`2020). See Pet. 2, United States v. Arthrex, Inc., No.
`19-1434 (filed June 25, 2020). The private parties in
`the Arthrex and Polaris cases have petitioned this
`Court for review as well. See Pet., Smith & Nephew,
`Inc. v. Arthrex, Inc., No. 19-1452 (filed June 29, 2020);
`Pet., Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-
`1458 (filed June 30, 2020); Pet., Polaris Innovations
`Ltd. v. Kingston Tech. Co., No. 19-1459 (filed June 30,
`2020).
`On July 23, 2020, the United States and Director
`Iancu filed an omnibus petition for certiorari seeking
`review of the order remanding North Star’s appeals,
`as well as 38 similar Federal Circuit orders.
`REASONS FOR GRANTING THE PETITION
`Micron agrees with the government’s bottom line:
`The Court should hold the present petition pending
`its disposition of the government’s other pending pe-
`tition challenging the Federal Circuit’s rulings re-
`garding the constitutional status of the PTO’s
`administrative patent judges. See Pet. 26.
`
`
`
`4
`
`Micron further agrees with the government’s rea-
`soning for that request. As the government has ex-
`plained, the Federal Circuit’s Arthrex ruling was in
`error, in two critical respects. First, the court of ap-
`peals erred in holding that the PTO’s administrative
`patent judges are principal officers for whom the Con-
`stitution requires appointment by the President with
`the advice and consent of the Senate. See 19-1434 Pet.
`16-26. Second, the court of appeals erred in excusing
`the failure of patent owner Arthrex, Inc., to present
`its constitutional challenge to the Patent Trial and
`Appeal Board and its corresponding forfeiture of that
`challenge. See 19-1434 Pet. 28-33.
`The Federal Circuit committed the same errors
`with respect to the North Star appeals that are the
`subject of the government’s present petition. The
`court applied its erroneous constitutional holding to
`vacate the Board’s final written decisions regarding
`the patentability of North Star’s patent claims. Pet.
`App. 55a. And, just as it had for Arthrex, the court of
`appeals excused North Star’s forfeiture of its consti-
`tutional argument, contrary to this Court’s and the
`Federal Circuit’s own precedent and in violation of
`sound administrative procedure. See 19-1434 Pet. 28-
`30. Indeed, North Star’s forfeiture is even less excus-
`able than Arthrex’s was. At the time the Federal Cir-
`cuit issued its Arthrex decision, North Star was well
`within the time for seeking rehearing of the Board’s
`final written decisions. It could have requested the
`precise remedy specified by the Arthrex ruling—re-
`hearing by a new panel of now-constitutional judges—
`but it chose not to do so. And even on appeal, North
`Star raised its constitutional objection only as to the
`unfavorable portions of the Board’s rulings. In a
`
`
`
`5
`
`separate proceeding, where the exact same panel of
`administrative patent judges had upheld some of
`North Star’s patent claims, North Star did not chal-
`lenge the appointment of those judges but filed a
`cross-appeal addressing only the merits of the deci-
`sion.1
`The government is correct that, if the Court
`grants its petition in Arthrex and ultimately reverses
`the Federal Circuit’s judgment either on constitu-
`tional or forfeiture grounds, such a decision would un-
`dermine the Federal Circuit’s ruling in the North Star
`appeals that are subject to the present petition. Pet.
`26. In that event, it will be appropriate for the Court
`to vacate the Federal Circuit’s decision and remand
`for further proceedings. Accordingly, Micron supports
`the government’s request that this Court hold the
`government’s present petition pending the disposition
`of the petition in Arthrex (No. 19-1434) and any fur-
`ther proceedings in this Court.
`CONCLUSION
`The petition for a writ of certiorari should be held
`pending this Court’s disposition of the petition for a
`writ of certiorari in United States v. Arthrex, Inc., No.
`19-1434 (filed June 25, 2020), and any further
`
`
`1 Micron intends to file its own petition for certiorari, within
`the time provided by this Court’s rules, addressing North Star’s
`forfeitures in more detail.
`
`
`
`6
`
`proceedings in this Court, and then disposed of as ap-
`propriate in light of the Court’s decision in that case.
`Respectfully submitted,
`
`
`
`Jared Bobrow
`Jeremy Jason Lang
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1000 Marsh Road
`Menlo Park, CA 94025
`(650) 614-7400
`
`
`August 26, 2020
`
`Melanie L. Bostwick
`Counsel of Record
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1152 15th Street, NW
`Washington, DC 20005
`(202) 339-8400
`mbostwick@orrick.com
`
`
`
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