`
`Nos. 19-1434; 19-1452; 19-1458
`================================================================================================================
`
`In The
`Supreme Court of the United States
`--------------------------------- ♦ ---------------------------------
`
`UNITED STATES,
`
`v.
`
`ARTHREX, INC., et al.,
`--------------------------------- ♦ ---------------------------------
`
`Petitioner,
`
`SMITH & NEPHEW, INC., et al.,
`Petitioners,
`
`v.
`
`ARTHREX, INC., et al.,
`--------------------------------- ♦ ---------------------------------
`
`ARTHREX, INC.,
`
`v.
`
`Petitioner,
`
`SMITH & NEPHEW, INC., et al.
`--------------------------------- ♦ ---------------------------------
`
`On Writs Of Certiorari To The
`United States Court Of Appeals
`For The Federal Circuit
`--------------------------------- ♦ ---------------------------------
`
`BRIEF OF AMICUS CURIAE PROFESSOR
`ANDREW MICHAELS SUPPORTING NO PARTY
`--------------------------------- ♦ ---------------------------------
`
`ANDREW C. MICHAELS
`UNIVERSITY OF HOUSTON LAW CENTER
`4604 Calhoun Road
`Houston, TX 77204
`(713) 743-6919
`acmichaels@uh.edu
`
`================================================================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`
`
`i
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF CONTENTS ......................................
`i
`TABLE OF AUTHORITIES .................................
`ii
`STATEMENT OF AMICUS CURIAE ..................
`1
`SUMMARY OF ARGUMENT ..............................
`1
`ARGUMENT ........................................................
`5
`
`I. The Federal Circuit Failed To Properly Ap-
`ply Its Decision Retroactively, Causing
`Significant Delay And Waste .....................
` II. Lucia Does Not Support The Federal Cir-
`cuit’s Remands Because Any Fix In Lucia
`Was Administrative Rather Than Judicial .... 12
` III. Although Rare Prospective Judicial Mak-
`ing May Still Be Permissible Under Chev-
`ron Oil, That Doctrine Does Not Support
`The Federal Circuit’s Remands ................. 19
` IV. Other Circuit Courts Have Similarly
`Shown Confusion Surrounding Retroac-
`tivity Doctrine In Recent Cases ................ 23
`CONCLUSION ..................................................... 28
`
`
`5
`
`
`
`ii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
`1320 (Fed. Cir. Oct. 31, 2019) ........................ 6, 12, 17
`Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d
`760 (Fed. Cir. Mar. 23, 2020) ........................... passim
`Aurelius Inv., LLC v. Puerto Rico, 915 F.3d 838
`(1st Cir. 2019) .................................................... 25, 26
`Bedgear, LLC v. Fredman Bros. Furniture Co.,
`783 Fed. Appx. 1029 (Fed. Cir. Nov. 7, 2019) ............ 6
`Buckley v. Valeo, 424 U.S. 1 (1976) ............................. 26
`Chevron Oil Co. v. Huson, 404 U.S. 97
`(1971) ..................................................... 19, 20, 21, 22
`Collins v. Mnuchin, 938 F.3d 553 (5th Cir. 2019) ...... 24
`DIRECTV, Inc. v. Imburgia, 136 S. Ct. 463 (2015) ......... 7
`e-Watch Inc. v. Avigilon Corp., 2013 U.S. Dist.
`LEXIS 176807 (S.D. Tex. Dec. 17, 2013) ................. 11
`Ex parte Siebold, 100 U.S. 371 (1880) .......................... 7
`FCC v. Fox TV Stations, Inc., 556 U.S. 502 (2008) ...... 13
`FCC v. Fox TV Stations, Inc., 567 U.S. 239 (2012) ...... 13
`Financial Oversight & Mgmt. Bd. For Puerto
`Rico v. Aurelius Investment, LLC, 140 S. Ct.
`1649 (2020) .............................................................. 26
`Flood v. Kuhn, 407 U.S. 258 (1972) ............................ 15
`Free Enterprise Fund v. Pub. Co. Accounting
`Oversight Bd., 561 U.S. 477 (2010) ............. 10, 15, 16
`
`
`
`iii
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`General Order in Cases Remanded Under Ar-
`threx, Inc. v. Smith & Nephew, Inc. (PTAB May
`1, 2020) .................................................................... 11
`Harper v. Va. Dep’t of Taxation, 509 U.S. 86
`(1993) ................................................... 7, 8, 14, 15, 22
`Intellectual Ventures II LLC v. JP Morgan Chase
`& Co., 781 F.3d 1372 (Fed. Cir. 2015) ..................... 22
`Intercollegiate Broad. Sys. v. Copyright Royalty
`Bd., 684 F.3d 1332 (D.C. Cir. 2012) ......................... 24
`James B. Beam Distilling Co. v. Georgia, 501 U.S.
`529 (1991) ........................................................ passim
`Kuhn v. Fairmont Coal Co., 215 U.S. 349 (1910) ....... 19
`Linkletter v. Walker, 381 U.S. 618 (1965) ................... 19
`Lucia v. S.E.C., 138 S. Ct. 2044 (2018) .... 12, 13, 15, 17, 18
`Marbury v. Madison, 5 U.S. 137 (1803) ........................ 7
`Mauget v. Kaiser Engineers, Inc., 546 F. Supp.
`486 (S.D. Ohio 1982) ............................................... 20
`Polaris v. Kingston, Nos. 2018-1768, -1831 ................ 10
`Quicken Loans, Inc. v. Jolly, 2010 U.S. Dist.
`LEXIS 150634 (E.D. Mich. 2010) ............................ 20
`Reynoldsville Casket Co. v. Hyde, 514 U.S. 749
`(1995) ............................................................... 7, 8, 22
`Rivers v. Roadway Express, Inc., 511 U.S. 298
`(1994) ..................................................................... 5, 7
`Ryder v. United States, 515 U.S. 177 (1995) ......... 22, 26
`
`
`
`iv
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`SAS Inst., Inc. v. Complement Soft, LLC, 825
`F.3d 1341 (Fed. Cir. 2016) ....................................... 22
`Seila Law LLC v. Consumer Fin. Prot. Bureau,
`140 S. Ct. 2183 (2020) ....................................... 23, 27
`United States v. Booker, 543 U.S. 220 (2005) ......... 8, 17
`United States v. Security Industrial Bank, 459
`U.S. 70 (1982) ............................................................ 5
`Waite v. Santa Cruz, 184 U.S. 302 (1902) ............ 25
`
`CONSTITUTIONAL PROVISIONS
`U.S. CONST. Art. II ............................................... passim
`U.S. CONST. Art. III ................................................. 7, 10
`
`STATUTES
`15 U.S.C. § 7211(e)(6) .................................................. 16
`15 U.S.C. § 7217(d)(3) ................................................. 16
`
`RULES AND REGULATIONS
`Bureau of Consumer Financial Protection, Rat-
`ification of Bureau Actions, 12 C.F.R. Chapter
`X (July 7, 2020) ....................................................... 23
`
`
`OTHER AUTHORITIES
`Andrew C. Michaels, Retroactivity and Appoint-
`ments, 52 LOY. UNIV. CHI. L. J. ___ (forthcom-
`ing 2021) .................................................................... 1
`
`
`
`v
`
`TABLE OF AUTHORITIES – Continued
`
`Page
`
`Elisabeth Earle Beske, Backdoor Balancing and
`the Consequences of Legal Change, 94 WASH.
`L. REV. 645 (2019) ............................................. 18, 26
`Evan Weinberg, High Court Ruling Leaves
`CFPB Enforcement Actions in Doubt, BLOOM-
`BERG NEWS (June 30, 2020) ..................................... 23
`GRAY, NATURE AND SOURCES OF THE LAW 206
`(1909) ....................................................................... 20
`H.R. Rep. No. 112-98 (2011) ....................................... 22
`Michael P. Healy, Communis Opinio and the
`Methods of Statutory Interpretation: Inter-
`preting Law or Changing Law, 43 WM. &
`MARY L. REV. 539 (2001) ......................................... 20
`Paul J. Mishkin, Forward: The High Court, The
`Great Writ, and the Due Process of Time and
`Law, 79 HARV. L. REV. 56 (1965) ............ 6, 14, 15, 17
`RPX, 2015 REPORT: NPE LITIGATION, PATENT
`MARKETPLACE, AND NPE COST 5 (2016) .................. 12
`
`
`
`1
`
`STATEMENT OF AMICUS CURIAE
`Amicus is a member of this Court’s bar, and a law
`
`professor who teaches and writes in the areas of patent
`law, statutory interpretation, and administrative law.
`He is interested in seeing the law of retroactivity con-
`tinue to develop in a manner that is coherent and leaves
`courts the discretion to avoid wasteful duplicative ad-
`ministrative actions in appropriate circumstances.1
`
`--------------------------------- ♦ ---------------------------------
`
`SUMMARY OF ARGUMENT
`If this Court affirms the Federal Circuit’s as ap-
`
`plied severance of removal protections on Administra-
`tive Patent Judges (APJs), or applies a different
`judicial severance or fix to the relevant statutes, it
`should clarify that any such judicial fix applies retro-
`actively, in accord with foundational principles of judi-
`cial retroactivity, such that vacatur and rehearing are
`discretionary and necessary only upon a showing that
`the prior statutory misrepresentation of law actually
`made some difference.
`
`
`1 Amicus has no financial interest in the outcome of this case.
`
`No counsel for a party authored this brief in whole or in part, and
`no counsel or party made a monetary contribution. No person
`other than amicus made a monetary contribution to the prepara-
`tion and submission of this brief. All parties have consented to
`the filing of this brief. The arguments presented in this brief find
`further support and elaboration in the author’s forthcoming law
`review article, which is available for download on SSRN. See
`Andrew C. Michaels, Retroactivity and Appointments, 52 LOY.
`UNIV. CHI. L. J. ___ (forthcoming 2021).
`
`
`
`2
`
`Because it misunderstood this Court’s retroactiv-
`
`ity jurisprudence, the Federal Circuit’s decision in this
`case has resulted in roughly one hundred matters be-
`ing unnecessarily vacated and remanded for rehearing
`before the United States Patent and Trademark Office
`(USPTO). These matters are currently stayed before
`the agency. By correcting the Federal Circuit’s error,
`this Court could eliminate this wasteful and legally
`improper multiplication of hearings, which will other-
`wise create unnecessary delays and likely cost in total
`tens of millions of dollars.
`
`The Federal Circuit mistakenly viewed these re-
`
`mands as required by law (rather than discretionary)
`because it erroneously held that the APJs were “not
`constitutionally appointed at the time” when they is-
`sued the prior final written decisions on appeal, as
`those decisions were issued before Halloween 2019,
`which happened to be the day when the panel decision
`in this case was released. This reflects a fundamental
`failure to grasp the foundational principle of judicial
`retroactivity. The Federal Circuit’s decision to treat the
`panel decision release date as the “effective date” of its
`as applied severance was simply wrong under this
`Court’s jurisprudence, and the consequences of this er-
`ror are not insignificant.
`
`One of the primary benefits of the judicial princi-
`
`ple of retroactivity is that it allows courts to avoid con-
`fronting the question of the “effective date” of judicial
`decisions, a confrontation which smacks of the legisla-
`tive process. There is no effective date because the
`court’s statement of the law was always the law. This
`
`
`
`3
`
`is a partial legal fiction, but it is a useful one; although
`it might seem strange, the alternative is worse. When
`exactly would the effective date of a judicial decision
`be? The court below apparently chose the panel deci-
`sion release date, but the arbitrariness of that choice
`is highlighted by the fact the case remained subject to
`petitions for rehearing, and ultimately now review in
`this Court. If this Court applies a different judicial fix,
`does the date of that decision release then become the
`new effective date, requiring additional remands for
`any agency cases decided up until then? The Federal
`Circuit’s faulty reasoning would seem to say yes.
`
`The APJs did not spookily change from unconsti-
`
`tutional to constitutional on Halloween of last year.
`This Court’s jurisprudence makes clear that judicial
`decisions generally operate retroactively. This general
`principle holds for statutory invalidations, including
`judicial severance. So assuming that the Federal Cir-
`cuit was correct to strike the removal restrictions, that
`as applied severance must under this Court’s prece-
`dent be viewed as operating retroactively, such that the
`APJs were always in fact removable at will.
`
`To be sure, the APJs may have been under a
`
`misimpression that the unconstitutional statutory
`removal restrictions created. Where such a misim-
`pression actually affects the case, this Court’s juris-
`prudence provides that courts have the discretion to
`vacate and remand for rehearing. For example, if taxes
`were collected under an invalid tax statute, those taxes
`could not have been collected under the law as properly
`
`
`
`4
`
`understood, so the case should be remanded for consid-
`eration of a refund.
`
`But in this case, there is almost certainly no such
`
`actual harm caused by prior statutory mirage of re-
`moval restrictions, and this Court has stated that the
`decision on whether to remand in a situation like this
`is subject to principles of harmless error. The agency
`proceedings at issue here generally turn on the tech-
`nical issues of whether certain patent claims are an-
`ticipated or rendered obvious by certain prior art
`references; political influence in these cases would be
`extremely rare, especially because the decisions are
`subject to Federal Circuit review on the merits. There
`is no reason to think that any of the roughly one hun-
`dred remanded matters would have been decided any
`differently if the relevant APJs had known at the time
`they made the decision that they were in fact remova-
`ble at will – indeed Amicus has seen hardly an allega-
`tion of any such harm in any of the Federal Circuit
`opinions or briefing relevant to this matter. But the
`Federal Circuit did not consider the probable lack of
`harm relevant because it improperly viewed the re-
`mands as required by law rather than as discretionary.
`When properly viewed as discretionary, at least most
`of the remands were clearly wasteful and imprudent,
`and could be avoided by a straightforward application
`of this Court's retroactivity jurisprudence.
`
`This issue is far from limited to the Federal Cir-
`
`cuit. Other circuit courts have similarly shown confu-
`sion in these sorts of situations. Amicus respectfully
`submits that this Court should directly address the
`
`
`
`5
`
`issue, so as to eliminate the waste that will ensue if the
`stayed remanded matters proceed before the USPTO,
`and also to clarify the law so as to prevent similar blun-
`ders from occurring in the future.
`
`--------------------------------- ♦ ---------------------------------
`
`ARGUMENT
`This Court has stated: “The principle that statutes
`
`operate only prospectively, while judicial decisions op-
`erate retrospectively, is familiar to every law student.”
`Rivers v. Roadway Express, Inc., 511 U.S. 298, 311-12
`(1994) (quoting United States v. Security Industrial
`Bank, 459 U.S. 70, 79 (1982)).
`
` While this principle might be familiar to most law
`students (and Amicus does his best to ensure that it is
`at least familiar to his), the principle was overlooked
`by the Federal Circuit. All of that court’s errors on this
`issue and the attendant unnecessary wasteful multi-
`plication of hearings flow from an apparent failure to
`fully grasp this one fundamental principle of law.
`
`
`I. The Federal Circuit Failed To Properly Ap-
`ply Its Decision Retroactively, Causing Sig-
`nificant Delay And Waste
`The Federal Circuit incorrectly viewed the date of
`
`the release of the panel opinion in this case, which
`happened to be Halloween 2019, as the “effective date”
`of its curing judicial severance, stating: “Because the
`
`
`
`
`6
`
`Board’s decision in this case was made by a panel of
`APJs that were not constitutionally appointed at the
`time the decision was rendered, we vacate and remand
`the Board’s decision without reaching the merits.”
`Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
`(Fed. Cir. Oct. 31, 2019) (emphasis added).
`
`This was error, less treat than trick, for a state-
`
`ment of law in a judicial opinion is a statement of
`“what the law is,” not “what it is today changed to, or
`what it will tomorrow be.” James B. Beam Distilling Co.
`v. Georgia, 501 U.S. 529, 549 (1991) (Scalia, J., concur-
`ring in the judgment). The Federal Circuit’s decision to
`treat the panel opinion release date as the “effective
`date” of its as applied severance was inappropriately
`more legislative than judicial in character. See Paul J.
`Mishkin, Forward: The High Court, The Great Writ,
`and the Due Process of Time and Law, 79 HARV. L. REV.
`56, 65-66 (1965) (“the question of an effective date . . .
`smacks of the legislative process; for it is ordinarily
`taken for granted . . . that judicial decisions operate
`with inevitable retroactive effect”).
`
`The Arthrex panel’s retroactivity blunder was
`
`pointed out just one week later in a concurrence by
`Judge Dyk in Bedgear, who would not have granted a
`remand in that case but for the fact that the panel was
`bound by the prior Arthrex panel. Bedgear, LLC v. Fred-
`man Bros. Furniture Co., 783 Fed. Appx. 1029, 1031
`(Fed. Cir. Nov. 7, 2019) (Dyk, J., concurring in the judg-
`ment, joined by Newman, J.).
`
`
`
`7
`
`There is no question that under this Court’s juris-
`
`prudence, the Federal Circuit’s as applied severance
`should have been viewed as retroactive, such that the
`APJs did not magically become constitutional on Hal-
`loween 2019 as the Federal Circuit thought. See Har-
`per v. Va. Dep’t of Taxation, 509 U.S. 86 (1993). When a
`court interprets a statute, the newly announced statu-
`tory construction is properly considered to have been
`the law all along. See, e.g., DIRECTV, Inc. v. Imburgia,
`136 S. Ct. 463, 469 (2015) (“judicial construction of a
`statute ordinarily applies retroactively”); Rivers, 511
`U.S. at 312-13 (“A judicial construction of a statute is
`an authoritative statement of what the statute meant
`before as well as after the decision of the case giving
`rise to that construction.”).
`
`The fundamental judicial retroactivity principal is
`
`rooted in Article III, and holds for statutory invalida-
`tions. When a court invalidates a statute, courts gener-
`ally should treat the invalid statute as though it never
`existed in the first place. See Reynoldsville Casket Co.
`v. Hyde, 514 U.S. 749, 759-60 (1995) (Scalia, J., concur-
`ring) (“In fact, what a court does with regard to uncon-
`stitutional law is simply to ignore it. It decides the case
`‘disregarding the unconstitutional law,’ . . . because a
`law repugnant to the Constitution ‘is void, and is as no
`law.’ ”) (quoting Marbury v. Madison, 5 U.S. 137 (1803),
`and Ex parte Siebold, 100 U.S. 371, 376 (1880)).
`
`Concurring in the court’s denial of rehearing en
`
`banc, Judge O’Malley appeared to suggest that judi-
`cial severance is an exception to these general retroac-
`tivity principals, stating that judicial severance is “by
`
`
`
`8
`
`necessity, only applicable prospectively,” and claiming
`that this Court’s decision in Booker makes clear that
`severance is “necessarily a prospective act.” Arthrex,
`Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 768 (Fed.
`Cir. Mar. 23, 2020) (O’Malley, J., concurring in denial of
`rehearing en banc) (citing United States v. Booker, 543
`U.S. 220, 268 (2005)).
`
`These repeated assertions are contrary not only
`
`to retroactivity doctrine in general but also even to
`Booker itself, which in fact held that its judicial sever-
`ance did have to be considered retroactive. See Booker,
`543 U.S. at 268 (“we must apply . . . our remedial inter-
`pretation of the Sentencing Act – to all cases on direct
`review”) (citing Reynoldsville, 514 U.S. at 752; Harper,
`509 U.S. 86). Nothing in Booker carves out a judicial
`severance exception to foundational principles of judi-
`cial retroactivity.
`
`Remands did occur in Booker and Harper, but
`
`those cases are distinguishable from this one in an im-
`portant way that the Federal Circuit failed to notice.
`The reason that a remand for rehearing was appropri-
`ate in Booker (despite the retroactivity of the sever-
`ance) was that the prior statutory misrepresentation
`of law clearly made a difference, in that it led to Mr.
`Booker receiving a longer criminal sentence than he
`properly could have under the corrected statute. See
`Booker, 543 U.S. at 227, 245-46. Similarly in Harper,
`taxes had been collected under an invalid tax statute,
`so the Court remanded for state courts to consider re-
`funding the taxes. See Harper, 509 U.S. at 102. In both
`of these cases, governmental action had been taken
`
`
`
`9
`
`that adversely affected a party and could not have been
`taken under the law as correctly understood. Retroac-
`tivity doctrine provides for judicial discretion to
`remedy these situations. See, e.g., James B. Beam Dis-
`tilling Co. v. Georgia, 501 U.S. 529, 543-44 (1991) (opin-
`ion of Souter, J.) (“nothing we say here precludes
`consideration of individual equities when deciding re-
`medial issues in particular cases”).
`
`The key difference though is that in this case, the
`
`prior misrepresentation of law almost certainly had no
`such effect. There is no apparent reason to think that
`any of the remanded cases would have been decided
`differently if the relevant APJs had known that they
`were in fact removable at will, and any argument
`that actual harm is present would seem to be tenuous.
`Indeed, hardly an allegation of any such actual harm
`is present in any of the briefing on this matter. Absent
`some showing of actual harm, a discretionary remand
`was at most prudent in the Arthrex case itself as an
`incentive creating reward for first winning the Ap-
`pointments Clause challenge (and even that is ques-
`tionable), but not in the dozens of other remanded
`matters. The Federal Circuit should have at least rec-
`ognized that remands are discretionary given the ret-
`roactivity of the severance, and considered whether
`actual harm is present, rather than automatically re-
`manding roughly one hundred cases for rehearing
`based on the fact that the final written decision at is-
`sue was decided before the rather arbitrary panel re-
`lease date in this case.
`
`
`
`10
`
`Concurring in the denial of rehearing en banc,
`
`both Judge O’Malley and Judge Moore pointed to a
`government brief as having “rejected” Judge Dyk’s ret-
`roactivity argument. See Arthrex, 953 F.3d at 764 and
`n.3, 767 (citing Supp. Br. of United States, Polaris v.
`Kingston, Nos. 2018-1768, -1831, at 13-14). That brief
`asserts that the court’s as applied severance was not
`“sufficient to eliminate the impact of the asserted con-
`stitutional violation on the original agency decision,”
`but tellingly provides essentially no suggestion of what
`that impact might have been. In any event, the re-
`quirement of at least presumptive judicial retroactiv-
`ity
`is rooted
`in Article III and this Court’s
`jurisprudence, and cannot be overridden or waived by
`an executive branch brief. See James B. Beam, 501 U.S.
`at 549 (Scalia, J., concurring in the judgment) (“ ‘the
`judicial Power of the United States’ . . . Art. III, § 1,
`must be deemed to be . . . the power to say what the
`law is . . . not the power to change it”).
`
`Apart from the lack of even an assertion of any ac-
`
`tual harm caused by the prior statutory representation
`of removal restrictions, such harm should not simply
`be presumed because this Court has applied standing
`(specifically traceability) requirements rather loosely
`in the Appointments Clause context. See Free Enter-
`prise Fund v. Pub. Co. Accounting Oversight Bd., 561
`U.S. 477, 511-12 n.12 (2010). It is one thing to allow
`litigants to raise Appointments Clause challenges
`without a showing that these challenges would make
`a likely difference to their case, but it is another to
`retrospectively vacate prior agency actions that were
`
`
`
`11
`
`almost certainly unaffected by those issues, especially
`where doing so is not required by and in fact runs coun-
`ter to this Court’s retroactivity jurisprudence.
`
`Finally, concurring in the denial of rehearing en
`
`banc, Judge Moore downplayed the disruption of the
`unnecessary rehearings, stating that the Arthrex deci-
`sion would result in at most eighty-one remands. See
`Arthrex, 953 F.3d at 764 n.4 (Moore, J., concurring in
`denial of rehearing en banc). Squaring this statement
`with the Patent Trial and Appeal Board (PTAB) gen-
`eral order issued on the first of May staying over one-
`hundred remanded matters (and expecting more to
`come) pending certiorari petitions would seem to be
`more than trivial. General Order in Cases Remanded
`Under Arthrex, Inc. v. Smith & Nephew, Inc., at *1
`(PTAB May 1, 2020) (“These Orders have already va-
`cated more than 100 decisions by the Patent Trial and
`Appeal Board (“Board”), and more such Orders are ex-
`pected.”). Ninety-four of the 103 remanded matters
`stayed in the PTAB’s May 1 order were in the particu-
`larly expensive and contested Inter Partes Review
`(IPR) proceedings. See id. at *1-6.
`
`Regardless of the precise number of remands, even
`
`if the PTAB chooses not to reopen briefing or the rec-
`ord, a new hearing before a new panel of APJs plus a
`new final written decision subject to a new appeal, in
`each of the dozens of remanded matters, is not without
`significant delay, disruption, and waste. The remanded
`PTAB proceedings are lengthy and expensive, often
`costing in the six figures per party. See, e.g., e-Watch
`Inc. v. Avigilon Corp., 2013 U.S. Dist. LEXIS 176807, at
`
`
`
`12
`
`*5 n.3 (S.D. Tex. Dec. 17, 2013) (Atlas, J.) (“Avigilon’s
`counsel explained during the hearing that it is expen-
`sive to pursue inter partes review. The filing fee for the
`IPR petition is $25,000.00. Additionally, the petitioner
`incurs very substantial attorneys’ fees for the petition,
`discovery, trial before the PTAB, and all associated
`briefing.”); RPX, 2015 REPORT: NPE LITIGATION, PATENT
`MARKETPLACE, AND NPE COST 5 (2016) (“IPR petition
`costs are generally in the six figures: $200 thousand on
`the low end, and $700 thousand on the high end, for
`those that reach a final decision.”).
`
`This Kafkaesque multiplication of administrative
`
`hearings is not only unnecessary but also is legally
`improper; it does not cast the patent system, or the
`legal system in general, in a positive light. This Court
`has an opportunity to put a stop to these wasteful re-
`hearings, while also clarifying the law of retroactivity.
`
`
`II. Lucia Does Not Support The Federal Cir-
`cuit’s Remands Because Any Fix In Lucia
`Was Administrative Rather Than Judicial
`The Federal Circuit apparently viewed the re-
`
`mands as required by this Court’s decision in Lucia.
`See Arthrex, 941 F.3d at 1325, 1340 (citing Lucia v.
`S.E.C., 138 S. Ct. 2044, 2055 n.5 (2018)); Arthrex, 953
`F.3d at 764 n.3 (Moore, J., concurring in denial of re-
`hearing en banc) (“Per the Supreme Court’s decision in
`Lucia, Arthrex, and the other appeals with preserved
`Appointments Clause challenges, were vacated and re-
`manded for hearings before new panels of APJs, who
`
`
`
`13
`
`are now properly appointed.”) (emphasis added). But
`the Federal Circuit failed to recognize the key differ-
`ence between that case and this one: the fix came from
`a different branch of government.
`
`In Lucia, if there was a fix to the Appointments
`
`Clause issue, the fix came from the agency itself, in
`that the agency ratified the prior appointments after
`the case at issue had been heard before the agency. See
`Lucia, 138 S. Ct. at 2055 n.6 (“While this case was on
`judicial review, the SEC issued an order ratifying the
`prior appointments of its ALJs.”). This agency fix is
`properly considered prospective only, for the executive
`branch, unlike the judicial branch, generally acts pro-
`spectively rather than retroactively. See, e.g., FCC v.
`Fox TV Stations, Inc., 556 U.S. 502, 517 (2008) (“There
`is no doubt that the Commission knew it was making
`a change.”); FCC v. Fox TV Stations, Inc., 567 U.S. 239,
`258 (2012).
`
`But in this case, the Federal Circuit’s “fix,” i.e., the
`
`striking of the removal protections on APJs, came from
`the judiciary rather than the agency, and so under this
`Court’s jurisprudence, it must at least presumptively
`be considered retroactive rather than prospective only.
`That is, assuming the Federal Circuit was correct to
`declare the removal restrictions as applied to APJs
`unconstitutional and to sever them, the APJs were in
`effect always removable at will. One way to think
`about it is: if an APJ had in fact been fired and tried
`to invoke the statutory removal restrictions as protec-
`tion, that attempt would have been unsuccessful be-
`cause the restrictions would have ultimately been
`
`
`
`14
`
`found unconstitutional (if this Court agrees that they
`are).2 Thus the statutory removal restrictions were
`always a mirage-like misrepresentation of law.
`
`The retroactivity doctrine is rooted in the “declar-
`
`atory theory of law . . . according to which the courts
`are understood only to find the law, not to make it.”
`James B. Beam, 501 U.S. at 535-36 (opinion of Souter,
`J.). Although it might initially seem strange to say that
`the APJs were always without removal restrictions
`and thus were always constitutional, the alternative of
`an effective date on which they suddenly became con-
`stitutional is even worse. When exactly would that
`date be? The Federal Circuit seemed to treat it as Hal-
`loween 2019, the date the panel decision happened to
`be released. See Arthrex, 953 F.3d at 764 n.4 (Moore, J.,
`
`
`
`2 Admittedly, this approach could be called inherently for-
`
`malistic in that it seems to presuppose that there is a single right
`answer to legal questions. Cf. Harper, 509 U.S. at 105 (Scalia, J.,
`concurring) (stating that prospective decisionmaking “was formu-
`lated in the heyday of legal realism”). Nevertheless, although ret-
`roactivity may be based on the partial legal fiction of a single right
`answer, it is a fiction that is thought to be useful. Cf. Mishkin, 79
`HARV. L. REV. at 63 n.29 (“Though I know that judges are human
`and quite distinct individuals, I am not in favor of their doffing
`their robes, for I think there is value in stressing, for themselves
`and for others, the quite real striving for an impersonality I know
`can never be fully achieved.”); James B. Beam, 501 U.S. at 549
`(Scalia, J., concurring in the judgment) (“I am not so naïve (nor
`do I think our forebears were) as to be unaware that judges in a
`real sense ‘make’ law. But they make it as judges make it, which
`is to say as though they were ‘finding’ it – discerning what the law
`is, rather than decreeing what it is today changed to, or what it
`will tomorrow be.”).
`
`
`
`15
`
`concurring in denial of rehearing en banc). But the ar-
`bitrariness of that choice is highlighted by the fact the
`case remained subject to petitions for rehearing en
`banc, and petitions for certiorari, and ultimately now
`review in this Court. One of the primary benefits of the
`retroactivity doctrine is that it allows courts to avoid
`confronting the question of the effective date of their
`decisions, a confrontation that “smacks of the legisla-
`tive process.” Mishkin, 79 HARV. L. REV. at 65.
`
`As this Court has repeatedly recognized, another
`
`primary benefit of the retroactivity doctrine is that it
`strengthens stare decisis – by forcing judges to write
`under the fiction that their current statement of the
`law was always the law, retroactivity requires that
`judges adhere closely enough to precedent that they
`may plausibly do so. See, e.g., Flood v. Kuhn, 407 U.S.
`258, 278-79 (1972) (adhering to precedent in part be-
`cause of the “flood of litigation that would follow its re-
`pudiation, the harassment that would ensue, and the
`retroactive effect of such a decision”); Harper, 509 U.S.
`at 105 (Scalia, J., concurring) (“Prospective deci-
`sionmaking is the handmaid of judicial activism, and
`the born enemy of stare decisis.”).
`
` Where the fix comes from the judiciary as it did
`in this case (unlike in Lucia), it must at least pre-
`sumptively be considered retroactive. One example of
`such a case is Free Enterprise Fund, where this Court
`fixed a constitutional problem with the structure of
`the Security and Exchange Commission’s Public Com-
`pany Accounting Oversight Board, by striking removal
`protections on the Board members, leaving them
`
`
`
`16
`
`removable by the Commission at will. Free Enter.
`Fund, 561 U.S. at 492, 509 (severing 15 U.S.C.
`§§ 7211(e)(6), and 7217(d)(3)). The Court clarified that,
`with the tenure restrictions excised, the Act remained
`“fully operative as law.” Id. at 509.
`
`The petitioners (Free Enterprise) had also argued
`
`that th
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
