[00:00:15] Speaker 02:
The next case for argument is 151091, NCM portfolio versus Hewlett-Packett.

[00:01:00] Speaker 04:
May it please the court.

[00:01:03] Speaker 04:
Edward Heller, representing MCM portfolio LLC.

[00:01:08] Speaker 04:
The first matter I'd like to bring to this court's attention is something new that we just realized that we have to bring to the court's attention.

[00:01:16] Speaker 04:
Because this case involves the Article III constitutional jurisdiction of the board to actually render a decision on the merits or any other decision under controlling Supreme Court

[00:01:30] Speaker 04:
authority, and under this court's case law, the constitutional issue must be decided first as a conditioned precedent for this court to actually consider and decide any other issue in this case.

[00:01:44] Speaker 05:
What constitutional issue?

[00:01:46] Speaker 05:
The jury trial issue?

[00:01:48] Speaker 04:
No, it's a matter of constitutional jurisdiction under Article III.

[00:01:54] Speaker 04:
But you didn't raise that issue in your brief, did you?

[00:01:56] Speaker 04:
No, but this is a new issue.

[00:01:58] Speaker 04:
that I frankly admit it's a new issue, but I'd like to bring it to the court's attention.

[00:02:03] Speaker 04:
In the Supreme Court case, it's Steel Company versus Citizens for a Better Environment, and this court's own holding in Mainz & Company versus McHugh.

[00:02:15] Speaker 02:
Is this something that you've just newly discovered?

[00:02:18] Speaker 02:
It's not based on anything that has occurred in the legal scheme?

[00:02:23] Speaker 04:
No, it's just something that

[00:02:25] Speaker 04:
I realized recently it's my fault for not bringing it to this court's attention earlier, but it's a requirement of the Supreme Court and it's a requirement of this court's jurisprudence.

[00:02:36] Speaker 04:
It's like a standing issue.

[00:02:37] Speaker 04:
It's something you can't waive.

[00:02:43] Speaker 04:
So moving on to, do you have any questions on this or is it?

[00:02:46] Speaker 03:
I'm not sure what you're talking about.

[00:02:49] Speaker 03:
That Myson case you're talking about, isn't that the CDA case?

[00:02:53] Speaker 04:
It's not really a patent case, but it has to do with standing.

[00:03:00] Speaker 05:
You're relying on it for the theory that this is jurisdictional.

[00:03:05] Speaker 05:
We have to decide it even though you didn't raise it.

[00:03:09] Speaker 04:
Well, we did raise the whole point of the constitutional argument that there is no constitutional... You didn't raise the Article III issue.

[00:03:16] Speaker 05:
You just admitted that.

[00:03:19] Speaker 04:
Oh, no, this particular aspect of the Article III issue.

[00:03:22] Speaker 04:
The whole point of the constitutional issue is the Article III issue.

[00:03:25] Speaker 03:
What aspect of mindset are you relying on?

[00:03:28] Speaker 04:
Well, it's the fact that the court must first find that there is constitutional jurisdiction if that issue is raised.

[00:03:37] Speaker 03:
Constitutional jurisdiction is where?

[00:03:40] Speaker 04:
Here?

[00:03:42] Speaker ?:
No.

[00:03:42] Speaker 05:
Here in your argument, it's a violation of Article 3 to put the validity issue before the board.

[00:03:49] Speaker 05:
You didn't raise that issue in your brief, but you say it's jurisdictional and we have to address it anyway.

[00:03:55] Speaker 04:
Correct?

[00:03:55] Speaker 04:
We did raise the constitutional issue.

[00:04:00] Speaker 05:
Yeah?

[00:04:02] Speaker 04:
We raised the constitutional issue.

[00:04:03] Speaker 05:
What about the jury trial issue?

[00:04:05] Speaker 04:
The jury trial issue is part of the Article 3 issue.

[00:04:11] Speaker 04:
The Article 3 issue is our main avenue of... I'm trying to help you clarify what your argument is.

[00:04:19] Speaker 04:
The Article 3 issue is whether the board has the constitutional authority to decide an IPR and whether issues like revocation of patents

[00:04:34] Speaker 05:
has to be tried in article three court as a matter of- You didn't raise that issue before, but you're saying we have to address it anyway because it's jurisdictional.

[00:04:43] Speaker 04:
You didn't raise it before.

[00:04:44] Speaker 04:
But what I'm trying to say now is that it's a little bit different aspect is that you have to decide this issue, the article three issue, which we did present first before you can decide other issues.

[00:04:59] Speaker 05:
That's the only nuance- What is the issue that you

[00:05:02] Speaker 05:
raised at the beginning of your argument, which you said you didn't raise in your briefs.

[00:05:07] Speaker 04:
Oh, it's the precedents.

[00:05:10] Speaker 04:
You have to do this one first.

[00:05:12] Speaker 03:
Let me see if I get it.

[00:05:14] Speaker 03:
All you're saying is, we can't decide this based just upon the board's obviousness findings.

[00:05:20] Speaker 03:
We actually have to rule on the constitutional.

[00:05:23] Speaker 04:
That's exactly correct.

[00:05:25] Speaker 04:
That's all I'm saying.

[00:05:28] Speaker 04:
Now, turning to the constitutional issue,

[00:05:32] Speaker 04:
Uh, the board did not actually decide that issue.

[00:05:35] Speaker 04:
They just decided they were bound by this discourse, of course, decisions in PatLex and joint technologies.

[00:05:42] Speaker 02:
This panel bound by those decisions as well?

[00:05:45] Speaker 04:
That's my next point.

[00:05:48] Speaker 04:
This court has the power under Troy V. Sampson to decide a prior panel decision is overruled by subsequent controlling authority and, um,

[00:06:00] Speaker 04:
I would like to then turn to what I believe is subsequent controlling authority.

[00:06:05] Speaker 04:
First, I'd like to talk about this court's holding in Lockwood.

[00:06:09] Speaker 04:
Lockwood was the holding of this court that patent validity declaratory judgment actions had a right to a trial by a jury in his Lockwood and Ambar case.

[00:06:23] Speaker 04:
That's a good point.

[00:06:24] Speaker 04:
It's not.

[00:06:25] Speaker 03:
Well, then how could it possibly overturn prior precedent?

[00:06:29] Speaker 03:
Isn't the rule that the earliest precedent is binding, even if the subsequent precedent is inconsistent?

[00:06:35] Speaker 04:
Then the answer to that is yes.

[00:06:39] Speaker 04:
And it was vacated after the Supreme Court took certiorari when it was mooted.

[00:06:45] Speaker 04:
But this court has consistently followed Lockwood's subsequent decisions, including the most recent case of technology licensing.

[00:06:52] Speaker 04:
But it's not in the bank.

[00:06:54] Speaker 04:
I agree.

[00:06:55] Speaker 04:
But if Pat Lex controls and Lockwood is not, then there is no right to a jury trial for patent validity.

[00:07:08] Speaker 04:
Three judges in this court in arguing for MBAC, in Lockwood, argued that very point that if there is a right to a jury trial for validity, that necessarily

[00:07:25] Speaker 04:
over rules, PatLex, because the administrative replication of a patent is inconsistent for invalidity.

[00:07:32] Speaker 04:
It's inconsistent with the right of the patent owner to have a jury trial on that issue.

[00:07:37] Speaker 05:
Suppose we were told that there's no jury trial right in Article III court on an invalidity issue.

[00:07:46] Speaker 05:
Just hypothetically.

[00:07:47] Speaker 05:
Would there be anything wrong with giving that issue to the PTO?

[00:08:00] Speaker 04:
Yes.

[00:08:02] Speaker 04:
That's the next case I want to talk about.

[00:08:04] Speaker 04:
This is the recent Supreme Court case of Stern v. Marshall, decided in 2011, which among other things reaffirmed

[00:08:14] Speaker 04:
that the prior authority that came out of Murray's left seat consistently held in the Kralby-Vinson, Northern Pipeline, Grant-Vinitierra, and Springfield-Marshall, reaffirmed that any case that was actually litigated in the common law courts that includes the common law courts, the courts of equity, or admiralty at common law are inherently Article III type cases and cannot be removed by Congress.

[00:08:44] Speaker 04:
and given to an administrative tribunal for the decision.

[00:08:49] Speaker 04:
So the question then becomes, is an IPR, which actually revokes a patent for invalidity, is that like any action that actually took place at common law?

[00:09:02] Speaker 04:
Because if it is under Stern v. Marshall, if it is under Stern v. Marshall, then that cannot be removed by Congress from the courts to

[00:09:13] Speaker 04:
the Patent Office.

[00:09:16] Speaker 04:
And it turns out that the common law did have a right to revoke a patent for invalidity, and that action was known as the action of scary fascias.

[00:09:28] Speaker 04:
The action was filed in the common law side of the Chancery.

[00:09:34] Speaker 04:
It had a right to a jury trial.

[00:09:37] Speaker 04:
It is a legal action.

[00:09:40] Speaker 04:
The Supreme Court in Maori

[00:09:43] Speaker 04:
versus Whitney recognized, discussed the actions under written scary fascias, identified three grounds for repeal of a patent, a replication of a patent, double patenting, fraud, and invalidity.

[00:10:02] Speaker 04:
The recent article by Lendley thoroughly discussed the scary fascias actions filed in the law side of Chancery.

[00:10:12] Speaker 04:
right to a jury trial.

[00:10:14] Speaker 04:
The John Paxton Norman treatise we gave you says the same thing.

[00:10:24] Speaker 04:
And I'd like to bring this court's attention to the Supreme Court case of ex parte Wood in Brunbridge, where the Supreme Court held that in actions, statutory actions, to revoke a patent for invalidity, there was a right to a jury trial.

[00:10:40] Speaker 04:
That was a hold-in.

[00:10:41] Speaker 04:
And why?

[00:10:42] Speaker 04:
Because the right to revoke a patent for invalidity was like the common law writ, scuri facis.

[00:10:52] Speaker 04:
That was the holding of the court.

[00:10:54] Speaker 04:
And they cited in that case, the Supreme Court cited in that case, the Seventh Amendment.

[00:10:58] Speaker 04:
So part of the basis of that holding of the Supreme Court was the Seventh Amendment.

[00:11:04] Speaker 04:
So reiterating, on a stern, if

[00:11:11] Speaker 04:
A case was actually litigated at common law, type of case.

[00:11:17] Speaker 04:
It must continue to be litigated in the courts.

[00:11:20] Speaker 04:
It cannot be resigned to administrative tribunal by Congress.

[00:11:26] Speaker 04:
That would be a constitutional violation of the structure of our government under Article III.

[00:11:30] Speaker 04:
And I think it's clear that an IPR, which invalidates, revokes in whole or in part as a result of invalidity,

[00:11:40] Speaker 04:
unpatentability of going to court.

[00:11:41] Speaker 04:
But invalidity is what the government calls it.

[00:11:45] Speaker 04:
It is exactly like the Ritz-Gurri-Fasciis at common law.

[00:11:49] Speaker 04:
And it has a right to a jury trial.

[00:11:50] Speaker 04:
And under Stern v. Marshall, it must be tried in an Article III court.

[00:11:58] Speaker 04:
I would like to reserve a balance by time in case the court wants to talk about anything else.

[00:12:19] Speaker 01:
On behalf of Sheila Packard, may it please the court?

[00:12:22] Speaker 01:
HP is sharing its time with the government, and we have divided up some of the issues.

[00:12:28] Speaker 01:
But there's three points I'd like to address today.

[00:12:31] Speaker 01:
First is something that Consolidation didn't address, and that's the obviousness decision of the board.

[00:12:38] Speaker 01:
The issue here is whether it was supported by substantial evidence, and it is.

[00:12:43] Speaker 01:
Second is the privity issue and whether HP's petition for an IPR

[00:12:49] Speaker 01:
with barred under section 315B, was it a time bar?

[00:12:54] Speaker 01:
The issue here, there are several sub-issues.

[00:12:56] Speaker 01:
One, is this issue even appealable?

[00:12:59] Speaker 01:
If it is appealable, then on the merits, was it correct?

[00:13:02] Speaker 01:
And is it subject to mandamus?

[00:13:05] Speaker 01:
And third, the third question is the constitutionality of the IPR statute.

[00:13:11] Speaker 01:
So turning first to the obviousness issue.

[00:13:14] Speaker 02:
Well, why don't you focus a little more on the constitutionality questions

[00:13:18] Speaker 01:
On the constitutionality question, the government is going to take the lead on that issue.

[00:13:24] Speaker 01:
We are aligned with the government.

[00:13:26] Speaker 01:
As far as Hewlett-Packard's position, we think it's fully addressed in the brief.

[00:13:30] Speaker 01:
We think IPRs are similar to reexaminations.

[00:13:35] Speaker 01:
And the issues that have been raised by MCM were decided by this court in the Patlicks case and in the Joy Technology case in the context of reexaminations.

[00:13:45] Speaker 01:
And those decisions apply equally to IPRs.

[00:13:49] Speaker 05:
And MCM has not shown... You guys are different at all from re-examination?

[00:13:53] Speaker 01:
Yes, it is different.

[00:13:54] Speaker 01:
It's not identical, but the same policy reasons behind the IPRs, behind re-examination and looking at public rights and patents and the government issuing patents and the government by Congress has the authority to correct mistakes in patents that are issued.

[00:14:13] Speaker 01:
Those are all the same reasonings that apply to IPR, and that's why it's our view that the Patlix Enjoy Technology decisions are binding and controlling on IPRs.

[00:14:27] Speaker 05:
You may not know the answer to this question, but at common law in 1787, was there a procedure in the Patent Office in Great Britain that allowed for something like re-examination?

[00:14:46] Speaker 01:
I don't know the answer to that.

[00:14:48] Speaker 01:
Perhaps my government counsel knows that.

[00:14:54] Speaker 05:
Yes, we divided up the issues to conserve the time allotted.

[00:15:05] Speaker 01:
If the panel does not have questions on the obviousness issue, I can go through it quickly, or I can address the privity issue.

[00:15:16] Speaker 01:
Because to some extent, the obviousness issue is unique to HP.

[00:15:21] Speaker 01:
And so our aspects of the privity determination or the decision under section 315B.

[00:15:28] Speaker 02:
Well, let me ask you about the privity issue, because why isn't, I mean, we've got two cases out now.

[00:15:33] Speaker 02:
One is Quozo, one is Versada, and they reach a somewhat different conclusion based on whether or not we're talking about a CDM or not.

[00:15:42] Speaker 02:
Right.

[00:15:42] Speaker 02:
So why does this case, when we're dealing with the one-year and the privity issue, not fall on the same line as COSO did with respect to CBMs and therefore allow for review in connection with the final decision?

[00:15:58] Speaker 01:
HB's view is that the time bar decision under 315B is not appealable under COSO.

[00:16:07] Speaker 01:
It's the same, it's a patentability decision.

[00:16:10] Speaker 01:
It is not, I'm sorry, it's not a patentability decision.

[00:16:13] Speaker 01:
And patentability decisions are appealable as part of the appeal right of the final decision from the board.

[00:16:19] Speaker 02:
But in Versado we said the question of whether or not this is a CBM is a matter that's reviewable.

[00:16:25] Speaker 02:
on appeal, because it's sort of like a jurisdictional question, kind of sort of a threshold issue, and why doesn't the time bar activity issue fall underneath that umbrella?

[00:16:40] Speaker 01:
Well, this is an issue that the government is also going to address, but for HP, we see the issue of the time bar as more akin to the issue in QUOTO.

[00:16:53] Speaker 01:
and not the CBM issue in Versata.

[00:17:03] Speaker 01:
The sections that allow, the sections of the statute for the inner party's review, section 314 in the appeal or the no appeal of the institution decision is written very broadly and it's written broad enough to cover

[00:17:23] Speaker 01:
the time bar decision under section 315B.

[00:17:28] Speaker 01:
And we think that the court's reasoning in Quozo applies to this issue.

[00:17:38] Speaker 01:
And the other issue that's been raised is whether the time bar issue is appealable or reviewable via a mandamus route.

[00:17:52] Speaker 01:
That decision has already been decided in this particular case because MCM filed a petition for mandamus on this issue when the board instituted the IPR.

[00:18:06] Speaker 01:
And there's nothing here, nothing since then that MCM has shown that establishes that it has the right to mandamus.

[00:18:15] Speaker 01:
There is no evidence that the board acted outside its authority and met the strict standard for mandamus.

[00:18:25] Speaker 01:
Council for MCM raised the case of the Minison Company case versus McHugh.

[00:18:36] Speaker 01:
And that case allows this court not to reach the appealability of the 315 time bar, but rather to go and look at the merits of the privity issue and decide it on the merits of what the board found.

[00:18:55] Speaker 01:
and the board found with regard to privity that MCM had not shown sufficient evidence to show that HP and PIN Digital were in privity together, such that an IPR would be barred.

[00:19:16] Speaker 01:
If the panel has any questions about the merits of the privity decision, I'm happy to address that.

[00:19:22] Speaker 02:
Otherwise, I could turn over the podium to the government.

[00:19:50] Speaker 00:
May I please, the court will have him in on behalf of the director of PTO.

[00:19:54] Speaker 00:
The director intervened to address two issues of institutional importance to PTO implicated by this appeal.

[00:20:00] Speaker 00:
If I may turn first to the question briefly of reviewability in response to Chief Judge Prost's question as to the bearing of Versada on this case.

[00:20:09] Speaker 00:
As the court is probably aware, the government believes that Rosada was incorrectly decided with respect to the question of reviewability.

[00:20:17] Speaker 00:
And we have petitioned this court for a hearing on the bank of that question.

[00:20:20] Speaker 00:
But even under the logic of Rosada, Rosada plainly does not apply in this case.

[00:20:25] Speaker 00:
And that's because A, Rosada took care to note that that was a case dealing with covered business method patents rather than with IPR, whereas Coza was a case about IPR.

[00:20:34] Speaker 00:
Second, that was a case, as Chief Judge Prost noted, about whether or not the question of whether a patent was, in fact, a covered business method patent was somehow a question that bared on the board's final written decision.

[00:20:47] Speaker 00:
And the court in Prostata made clear that this was an appeal from the board's final written decision, and that an appeal from the institution decision would be barred under the logic of quotas.

[00:20:58] Speaker 00:
And this court, in the St.

[00:21:00] Speaker 00:
Jude case, and more recently in the GTNX case,

[00:21:04] Speaker 00:
has made clear that the question whether a petition is time barred under section 315B is a question that goes only to institution as opposed to the final written decision.

[00:21:15] Speaker 00:
St.

[00:21:16] Speaker 00:
Jude was a case in which the board declined to institute inter partes searches under 315B and the petitioner in that case appealed to this court and argued that that was

[00:21:27] Speaker 00:
made many of the same arguments that MCM makes here and this court rejected that argument and it made clear that the time bar of section 315B bears on the institution question and that's plain from the text of 315B itself which says that an inter partes review quote may not be instituted if it is filed more than a year after the petitioner or someone in privity with the petitioner was sued for patent infringement.

[00:21:51] Speaker 00:
So even under the logic of Versada, this case is governed by quota.

[00:21:56] Speaker 00:
If there are no further questions, I'll proceed to the constitutional question.

[00:22:01] Speaker 00:
My colleague from MCM made a number of arguments with respect to the constitutional question.

[00:22:05] Speaker 00:
First, this court has already decided this issue in Pallex and Enjoy Technologies.

[00:22:10] Speaker 05:
This court has... Well, this side is about reexamining.

[00:22:13] Speaker 00:
That's right, Your Honor.

[00:22:15] Speaker 05:
Is reexamining the same as IPR?

[00:22:18] Speaker 00:
It's not the same, but it's the same for purposes of the Article 3 analysis.

[00:22:23] Speaker 00:
Well, as this court framed it in the Patlic case, the question is whether or not PTO under the authority assigned to it by Congress

[00:22:33] Speaker 00:
properly granted the patent in the first instance.

[00:22:35] Speaker 00:
And that's the exact same question that is at issue with respect to inter-partes review.

[00:22:41] Speaker 00:
That is whether or not the PTO acting under its constitutional authority was right to grant the patent in the first instance.

[00:22:48] Speaker 00:
And the fact that there are different procedures, attendance to an IPR rather than to an ex-parte re-examination does not make a difference

[00:22:55] Speaker 00:
And I don't actually understand MCM to be making an argument that those different procedures make a difference.

[00:23:01] Speaker 00:
Rather, MCM argues that Patlex was sub silencio overruled by some of this court's subsequent precedents and from Stern, but nothing could be further from the case.

[00:23:13] Speaker 00:
Stern, in fact, strongly supports the government's position with respect

[00:23:16] Speaker 00:
The article 3 question here.

[00:23:18] Speaker 02:
How is that right?

[00:23:20] Speaker 02:
I mean, how can a patent right be exclusively a public right under Stern if it involves the liability of one individual to another?

[00:23:29] Speaker 02:
Well, this court... Your view must be if this comes within the public right articulated... That's right.

[00:23:36] Speaker 00:
The government believes that a patent is a quintessential public right that may be adjudicated by a non-article 3 court or administrative agency.

[00:23:45] Speaker 00:
And that's because, as the Stern court itself put it, although the claim in Stern was deemed to be a claim that must be adjudicated in an Article III court, that was a claim that derived solely from common law.

[00:23:59] Speaker 00:
It was a state law claim for tortious interference that did not originate from any statutory scheme.

[00:24:05] Speaker 00:
And it was not governed by an expert government agency.

[00:24:09] Speaker 00:
And the court in Stern made clear that if the claim derives from a federal regulatory scheme,

[00:24:15] Speaker 00:
Or if resolution of the claim by an expert government agency is deemed essential to a limited regulatory objective within that agency's authority, then that is a public right.

[00:24:24] Speaker 00:
And here a patent is solely a creature of statute.

[00:24:27] Speaker 00:
It is.

[00:24:28] Speaker 05:
Yeah, but I mean, Stern, it's not all that clear.

[00:24:36] Speaker 05:
And we have a very hard situation here in which

[00:24:39] Speaker 05:
questions are adjudicated both in the courts and before the PTO.

[00:24:47] Speaker 05:
And the argument is based on the cases following Lockwood that there's a jury trial right with respect to the

[00:24:56] Speaker 05:
issue when it's adjudicated in Article III court, but that it's okay to remove the issue entirely from the Article III court and put it into the administrative agency.

[00:25:09] Speaker 05:
That is not a situation, so far as I know, that has

[00:25:12] Speaker 05:
come up before in the public rights context, so it is a little different.

[00:25:18] Speaker 05:
And I think, for example, if we had a situation in which the district court were statutorily authorized to refer the imbility issue in the context of an infringement suit for adjudication of the agency, there'd be a real question as to whether that was permissible, right?

[00:25:41] Speaker 00:
I don't know, Your Honor.

[00:25:42] Speaker 00:
I think that your question raised a number of points.

[00:25:48] Speaker 00:
First, Congress did not take away from Article III Court's jurisdiction to hear invalidity claims.

[00:25:55] Speaker 00:
It provided parties with an alternative, less expensive, less time-consuming process for determining the question, the very same question that was at issue in PatLex and Joy Technologies, and that is whether the patent docus was correct in the first instance to issue the patent.

[00:26:10] Speaker 00:
And under the Supreme Court's public rights doctrine, a patent plainly falls under the ambit of a public right, whichever way the court characterizes it.

[00:26:19] Speaker 00:
A patent is a creature of statute.

[00:26:21] Speaker 00:
It is overseen by an expert government agency tasked by Congress with administering the patent scheme.

[00:26:27] Speaker 00:
And as the Supreme Court has emphasized, a patent by its very nature is affected with a public interest.

[00:26:33] Speaker 00:
And that's because it's a monopoly that operates against the public at large.

[00:26:38] Speaker 00:
And Judge Stike, you were referring earlier to the Seventh Amendment question, but I think that it's important to note that...

[00:26:46] Speaker 00:
The Seventh Amendment and Article 3 present two distinct inquiries.

[00:26:50] Speaker 00:
In the first question, when Congress decides to send a right into an administrative agency for adjudication, the first question, the only relevant question, is whether or not that right is a public right that Congress may authorize to be adjudicated in a non-Article 3 court.

[00:27:05] Speaker 00:
Now, if Congress decides to send a statutory right into a federal court,

[00:27:09] Speaker 00:
That raises the Seventh Amendment question.

[00:27:12] Speaker 00:
And the Supreme Court has decided a number of cases, including the Curtis v. Lothar case and the Cornell case from the 70s, in which the court was dealing with a statutory scheme that Congress sent to be adjudicated in Article III courts.

[00:27:26] Speaker 00:
And the Supreme Court found that a jury right attached in those cases, but in both cases made clear that nothing would have prevented Congress from sending those statutory rights to be adjudicated

[00:27:38] Speaker 00:
in a non-article 3 form in the first instance.

[00:27:41] Speaker 00:
So even if this court thinks that a jury trial right attaches in the validity case and even if this court believes that validity and the interpartite review processes implicate the same kinds of questions, that is not dispositive.

[00:27:57] Speaker 00:
That simply does not bear on the question whether Congress may send a right to be adjudicated in an agency in the first instance.

[00:28:05] Speaker 00:
and there's no support for the contention, which is raised by Amicus, that somehow the different procedures attendant to inter parte review and ex parte reexamination can distinguish those cases.

[00:28:18] Speaker 00:
The Supreme Court, and no court to my knowledge, has ever suggested

[00:28:22] Speaker 00:
that different procedures in an administrative process bear on the question of whether or not Congress may designate a right for adjudication in an administrative scheme.

[00:28:32] Speaker 00:
And as we note in our brief, it would be a very peculiar rule of constitutional law if that were the rule.

[00:28:38] Speaker 00:
Because as far as I understand the argument, it means that the more process parties have in an administrative process, the less constitutional that process would be.

[00:28:48] Speaker 00:
And that simply can't be correct.

[00:28:51] Speaker 00:
I see that I'm well over my time.

[00:28:52] Speaker 00:
If the court has any further questions, I'd be happy to answer them.

[00:29:07] Speaker 04:
Thank you.

[00:29:07] Speaker 04:
I would like to first address the issue of whether a patent, because it's statutorily granted by Congress, gives Congress plenary power over that duly created statutory right

[00:29:21] Speaker 04:
making a public right because it's a public interest or whatever theory the government has.

[00:29:27] Speaker 04:
That automatically makes it a public right.

[00:29:29] Speaker 05:
I mean, there's no question that Congress can allocate to an administrative agency the power to determine whether patents should be granted in the first place.

[00:29:39] Speaker 05:
Yes, we agree with that because that's consistent.

[00:29:43] Speaker 05:
And to rule on the validity question as part of that initial examination, right?

[00:29:48] Speaker 05:
No question.

[00:29:49] Speaker 05:
So why can't it essentially provide the reconsideration of that issue and place the reconsideration issue in the administrative agency which granted the patent in the first place?

[00:30:02] Speaker 04:
Because the Supreme Court has been consistent on this issue.

[00:30:06] Speaker 04:
Once the patent, or any right,

[00:30:09] Speaker 04:
the agency under the law has passed from the agency.

[00:30:13] Speaker 04:
It has no authority to reconsider the validity of that action.

[00:30:18] Speaker 04:
The validity of that action is exclusively a matter for the courts.

[00:30:21] Speaker 04:
The first Supreme Court case to actually decide this issue is Marbury versus Madison.

[00:30:26] Speaker 04:
That was the exact issue before the court in the Supreme Court on the mandamus petition there.

[00:30:31] Speaker 04:
They decided that the government had no authority to revoke the appointments.

[00:30:37] Speaker 04:
There's a change of presidency.

[00:30:38] Speaker 04:
The new president wanted to revoke the appointment to the prior president.

[00:30:42] Speaker 04:
The Supreme Court said no.

[00:30:44] Speaker 04:
The validity of the appointments was exclusively a matter for the courts.

[00:30:48] Speaker 04:
So this is not a new issue.

[00:30:51] Speaker 04:
This is an old issue.

[00:30:53] Speaker 04:
The Supreme Court has been consistent that if a right has issued from a right, not something else, but a right has issued from an agency, from the government, there's a property right in that and the only institution that can revoke that right

[00:31:08] Speaker 04:
is an Article III court.

[00:31:11] Speaker 04:
Now, of course, if the patent is a public right, there's a consequence.

[00:31:15] Speaker 04:
If a patent is a public right, there is no right to a trial in an Article III court at all.

[00:31:21] Speaker 04:
There's no right of anybody to say, I have an Article III jurisdictional right, because public rights and Article III jurisdictional rights are inconsistent.

[00:31:29] Speaker 04:
They're mutually exclusive.

[00:31:32] Speaker 04:
Similarly, there's no right to a jury trial with a public right, because

[00:31:36] Speaker 04:
Jury trials only stem to things that actually were legal actions in common law.

[00:31:43] Speaker 04:
And if it's a legal action in common law, the court has consistently ruled that they must be trialed in article 3 court.

[00:31:49] Speaker 04:
Therefore, there's no right to a jury trial if a patent is a public right.

[00:31:56] Speaker 04:
I would like to bring this court's attention that copyrights, trademarks, and patents are all granted by statutes.

[00:32:02] Speaker 04:
The Supreme Court has held in three different cases recently

[00:32:06] Speaker 04:
that each of these rights has a right to a trial by jury in actions in court.

[00:32:13] Speaker 04:
Dairy Queen cited that trademark rights have a right to a trial by jury in court.

[00:32:18] Speaker 04:
Feltner decided that copyrights have a right to a trial by jury in court.

[00:32:24] Speaker 04:
Markman decided that patents have a right to a trial by jury in court.

[00:32:28] Speaker 04:
Three Supreme Court cases.

[00:32:31] Speaker 04:
They are all going to be overruled if somehow

[00:32:34] Speaker 04:
just by merely granting, the government granting the right, having the power to grant the right, makes it a public right, all those cases are not properly decided.

[00:32:45] Speaker 04:
They're all overruled.

[00:32:46] Speaker 04:
The Supreme Court could overrule all those cases.

[00:32:49] Speaker 04:
I doubt it.

[00:32:51] Speaker 04:
I severely doubt it.

[00:32:52] Speaker 04:
There's something inconsistent with the government's argument and Pat Lex with controlling Supreme Court authority, and it's quite clear.

[00:33:00] Speaker 04:
I'd like to briefly

[00:33:03] Speaker 04:
turn to the merits argument and bring this Court's attention to A220 in the appendix.

[00:33:16] Speaker 04:
Could you please turn to that page, A220 in the appendix?

[00:33:21] Speaker 04:
It's a diagram.

[00:33:25] Speaker 04:
This diagram was not in their petition.

[00:33:29] Speaker 04:
This diagram was in HP's

[00:33:32] Speaker 04:
This is the sole evidence and argument that Takuchi teaches that Kobayashi could be reconstructed into a controller chip.

[00:33:46] Speaker 04:
We objected in our argument that that was an improper argument to make for the first time in the reply brief.

[00:33:55] Speaker 04:
We cited the rule 42.22.

[00:34:00] Speaker 05:
We did raise it in our briefs.

[00:34:16] Speaker 04:
So we did raise it.

[00:34:18] Speaker 04:
And at this point I get out here again that that's what we were saying that that argument was not presented in the petition.

[00:34:25] Speaker 04:
And there was no evidence in the petition.

[00:34:27] Speaker 04:
I'm showing you that where the board's idea, the reconstructed Kobayashi came from, it came from the HP reply brief.

[00:34:35] Speaker 04:
We objected below, and we objected here.

[00:34:39] Speaker 04:
We knew that objection.

[00:34:41] Speaker 04:
That's not proper evidence.

[00:34:42] Speaker 04:
It's not proper argument.

[00:34:46] Speaker 04:
Briefly on the 315B issue, I'd like to refer this court's attention to the GTNX case, which held

[00:34:55] Speaker 04:
where the board had held that the May Not Institute language is jurisdictional.

[00:35:03] Speaker 04:
If it's jurisdictional like we believe it is jurisdictional, it's always appealable under Supreme Court case law.

[00:35:10] Speaker 04:
I would like to specifically refer to the Hinkler case, which said that denials of institutions are generally not appealable, but when

[00:35:23] Speaker 04:
an agency does institute the jurisdiction of that agency to the jurisdiction of that agency is always appealable.

[00:35:34] Speaker 04:
So there's no question that if the shall not institute language is jurisdictional and is always appealable in our mandamus.

[00:35:46] Speaker 04:
The government argued that

[00:35:50] Speaker 04:
the 315B issue could be raised on appeal.

[00:35:52] Speaker 04:
That was the basic argument they had made to this court for the reason to deny the petition.

[00:35:59] Speaker 04:
This court said that we had the opportunity to raise the petition on appeal.

[00:36:06] Speaker 04:
So they denied the mandamus without prejudice to our raising it on appeal based upon the argument of the government that we could.

[00:36:15] Speaker 04:
The government, when they said that at the time,

[00:36:20] Speaker 04:
They must have believed that there was a reasonable construction that you could raise the 315B issue on appeal.

[00:36:27] Speaker 04:
There was nothing in the statutory framework of construction that was inconsistent with that argument at that time.

[00:36:35] Speaker 02:
Now, in our order denying the mandamus, what did our order say?

[00:36:40] Speaker 04:
It said, we deny it without prejudice to MCM being

[00:36:48] Speaker 04:
attempting to raise the issue on his appeal from the final written decision.

[00:36:55] Speaker 04:
So this court believed that we could.

[00:36:59] Speaker 04:
The argument of the government in denying the mandamus is that we could.

[00:37:03] Speaker 04:
We did.

[00:37:05] Speaker 04:
And now they change their position and says no.

[00:37:09] Speaker 04:
But the counter to that is it's jurisdictional.

[00:37:12] Speaker 04:
And because it's jurisdictional, it must be appeal on the Supreme Court case law.

[00:37:17] Speaker 02:
Any further questions?

[00:37:25] Speaker 03:
All rise.

[00:37:26] Speaker 03:
The Honorable Court is adjourned from day to day.