`
`In the
`Supreme Court of the United States
`
`UNITED STATES,
`
`v.
`
`
`
`Petitioner,
`
`IMAGE PROCESSING TECHNOLOGIES LLC, ET AL.,
`Respondents.
`
`
`On Petition for a Writ of Certiorari to the
`United States Court of Appeals
`for the Federal Circuit
`
`BRIEF FOR RESPONDENT
`COMCAST CABLE COMMUNICATIONS, LLC
`
`
`
`
`
`MARK A. PERRY
`GIBSON, DUNN &
` CRUTCHER LLP
`1050 Connecticut Ave., NW
`Washington, DC 20036
`(202) 955-8500
`MPerry@gibsondunn.com
`
`JESSICA A. HUDAK
`GIBSON, DUNN &
` CRUTCHER LLP
`3161 Michelson Drive
`Irvine, CA 92612
`
`
`
`
`
`DONALD B. VERRILLI, JR.
`
` Counsel of Record
`GINGER D. ANDERS
`MUNGER, TOLLES & OLSON LLP
`1155 F Street NW, 7th Fl.
`Washington, DC 20004
`(202) 220-1100
`donald.verrilli@mto.com
`
`BRIAN J. SPRINGER
`MUNGER, TOLLES & OLSON LLP
`350 S. Grand Ave., 50th Fl.
`Los Angeles, CA 90071
`
`
`
`
`Counsel for Respondent
`Comcast Cable Communications, LLC
`
`
`
`
`
`
`
`i
`
`QUESTIONS PRESENTED
`1. Whether, for purposes of the Appointments Clause,
`U.S. Const. art. II, § 2, cl. 2, administrative patent judges
`of the United States Patent and Trademark Office are
`principal officers who must be appointed by the Presi-
`dent 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 adjudicating
`Appointments Clause challenges brought by litigants
`that had not presented such a challenge to the agency.
`
`
`
`
`
`ii
`
`RULE 29.6 STATEMENT
`Pursuant to this Court’s Rule 29.6, respondent states
`that Comcast Cable Communications, LLC is a wholly
`owned, indirect subsidiary of Comcast Corporation and
`no other publicly held corporation owns 10% or more of
`the stock of respondent.
`
`
`
`
`
`iii
`
`TABLE OF CONTENTS
`
`Page
`
`OPINIONS BELOW ....................................................1
`JURISDICTION...........................................................1
`DISCUSSION ..............................................................2
`CONCLUSION ............................................................4
`
`
`
`
`
`
`
`iv
`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Page(s)
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) ....................... 2, 3, 4
`
`FEDERAL STATUTES
`
`28 U.S.C. 1254(1) ......................................................... 1
`
`ADMINISTRATIVE MATERIALS
`
`General Order, 2020 WL 2119932
`(P.T.A.B. May 1, 2020) ........................................... 2
`
`
`
`
`
`1
`
`OPINIONS BELOW
`The order of the court of appeals in Rovi Guides,
`Inc. v. Comcast Cable Commc’ns, LLC, Nos. 2019-
`1215, 2019-1216, and 2019-1218 (consolidated) and in
`Rovi Guides, Inc. v. Comcast Cable Commc’ns, LLC,
`Nos. 2019-1293, 2019-1294, and 2019-1295 (consoli-
`dated) (Pet. App. 62a-63a) is unreported.
`The order of the court of appeals in Promptu Sys.
`Corp. v. Comcast Cable Commc’ns, LLC, Nos. 2019-
`2368 and 2019-2369 (consolidated) (Pet. App. 36a-37a)
`is unreported.
`The order of the court of appeals in Promptu Sys.
`Corp. v. Comcast Cable Commc’ns, LLC, No. 2020-
`1253 (Pet. App. 44a-45a) is unreported.
`JURISDICTION
`The judgments of the court of appeals in Promptu
`Sys. Corp. v. Comcast Cable Commc’ns, LLC, Nos.
`2019-2368 and 2019-2369 (consolidated), and in
`Promptu Sys. Corp. v. Comcast Cable Commc’ns, LLC,
`No. 2020-1253, were entered on February 27, 2020.
`The judgments of the court of appeals in Rovi
`Guides, Inc. v. Comcast Cable Commc’ns, LLC, Nos.
`2019-1215, 2019-1216, and 2019-1218 (consolidated)
`and in Rovi Guides, Inc. v. Comcast Cable Commc’ns,
`LLC, Nos. 2019-1293, 2019-1294, and 2019-1295 (con-
`solidated), were entered on April 22, 2020.
`The petition for a writ of certiorari was filed on July
`23, 2020, pursuant to this Court’s March 19, 2020 or-
`der extending the time within which to file a petition
`for a writ of certiorari to 150 days after the date of the
`court of appeals’ judgment. The jurisdiction of this
`Court is invoked under 28 U.S.C. 1254(1).
`
`
`
`
`
`2
`
`DISCUSSION
`In Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
`1320 (Fed. Cir. 2019), the Federal Circuit held that ad-
`ministrative patent judges who sit on the Patent Trial
`and Appeal Board (Board) are principal rather than
`inferior Officers of the United States; that severing ad-
`ministrative patent judges’ statutory removal protec-
`tions was sufficient to cure the Appointments Clause
`violation; and that the patent owner was entitled to re-
`adjudication before a reconstituted Board panel de-
`spite not having raised its Appointments Clause chal-
`lenge before the Board. The United States has filed a
`petition for a writ of certiorari in Arthrex, seeking re-
`view of the Federal Circuit’s Appointments Clause and
`remedial rulings. See Pet. for Cert., United States v.
`Arthrex, Inc., No. 19-1434 (filed June 25, 2020). The
`private parties have filed petitions as well. Pet. for
`Cert., Smith & Nephew, Inc. v. Arthrex, Inc., No. 19-
`1452 (filed June 29, 2020); Pet. for Cert., Arthrex, Inc.
`v. Smith & Nephew, Inc., No. 19-1458 (filed June 30,
`2020).
`Since its decision in Arthrex, the Federal Circuit
`has “vacated more than 100 decisions” by the Board
`and has “instruct[ed] the Board to conduct further pro-
`ceedings on remand before newly-designated Board
`panels.” General Order, 2020 WL 2119932, at *1
`(P.T.A.B. May 1, 2020). Among those more than 100
`decisions are nine decisions in which Comcast Cable
`Communications, LLC prevailed before the Board, but
`the Federal Circuit vacated the Board’s decisions in re-
`liance on Arthrex. Three of the Board decisions con-
`cern a patent owned by Promptu Systems Corp. See
`Pet. App. 36a-37a (Nos. 2019-2368 & 2019-2369 (con-
`solidated)); id. at 44a-45a (No. 2020-1253). Six of the
`decisions concern patents owned by Rovi Guides, Inc.
`See id. at 62a-63a (Nos. 2019-1215, 2019-1216, and
`
`
`
`
`3
`
`2019-1218 (consolidated) and Nos. 2019-1293, 2019-
`1294, and 2019-1295 (consolidated)).
`The United States’ omnibus petition in this case en-
`compasses the Federal Circuit’s judgments in the
`cases involving Comcast and seeks a hold for these and
`other cases pending this Court’s decision on the Ar-
`threx petitions. Pet. 25-26. The Federal Circuit va-
`cated the Board’s final written decisions in these cases
`based on its conclusion in Arthrex that the administra-
`tive patent judges were invalidly appointed. As in Ar-
`threx, the Federal Circuit did so despite the patent
`owners’ failure to raise any Appointments Clause chal-
`lenge to the Board’s constitution before the Board it-
`self. The United States’ omnibus petition therefore
`presents the same questions that are presented in the
`petitions for writs of certiorari filed in Arthrex.
`In addition, Comcast has separately filed a certio-
`rari petition with respect to the Promptu cases, in
`which Comcast also urges this Court to hold the peti-
`tion pending its disposition of Arthrex and then dis-
`pose of it accordingly. Pet. for Cert., Comcast Cable
`Commc’ns, LLC v. Promptu Sys. Corp., No. 20-92 (filed
`July 24, 2020). Comcast intends to file a certiorari pe-
`tition with respect to the Rovi cases, seeking the same
`relief.
`For the reasons summarized in the United States’
`omnibus petition (at 25-26), Arthrex was wrongly de-
`cided in both its substantive and remedial aspects. See
`also Br. for Amicus Curiae Comcast Cable Communi-
`cations, LLC in Supp. of Pet’rs, Smith & Nephew, Inc.
`v. Arthrex, Inc., No. 19-1452 (filed Aug. 3, 2020). Ac-
`cordingly, Comcast respectfully submits that the
`Court should hold the United States’ petition for a writ
`of certiorari involving the Comcast cases (No. 20-74)
`pending disposition of the Arthrex petitions (Nos. 19-
`
`
`
`
`
`4
`
`1434, 19-1452, and 19-1458) and then dispose of it ac-
`cordingly. Comcast requests the same relief with re-
`spect to its Promptu petition (No. 20-92), and will re-
`quest the same relief in its Rovi petition. In the alter-
`native, the petitions involving the Comcast cases
`should be granted.
`CONCLUSION
`The petition for a writ of certiorari should be held
`pending disposition of the Arthrex petitions (Nos. 19-
`1434, 19-1452, and 19-1458), and any further proceed-
`ings in this Court, and then disposed of as appropriate
`in light of the Court’s decision in that case. In the al-
`ternative, the petitions involving the Comcast cases
`should be granted.
`Respectfully submitted,
`MARK A. PERRY
`GIBSON, DUNN &
` CRUTCHER LLP
`1050 Connecticut Ave., NW
`Washington, DC 20036
`(202) 955-8500
`MPerry@gibsondunn.com
`
`JESSICA A. HUDAK
`GIBSON, DUNN &
` CRUTCHER LLP
`3161 Michelson Drive
`Irvine, CA 92612
`
`
`
`
`
`
`DONALD B. VERRILLI, JR.
`Counsel of Record
`GINGER D. ANDERS
`MUNGER, TOLLES & OLSON
` LLP
`1155 F Street NW, 7th Floor
`Washington, DC 20004
`(202) 220-1100
`donald.verrilli@mto.com
`
`BRIAN J. SPRINGER
`MUNGER, TOLLES & OLSON
` LLP
`350 S. Grand Ave., 50th Fl.
`Los Angeles, CA 90071
`
`
`AUGUST 26, 2020
`
`
`
`