Affinity Labs Amicus Brief - Unified Patents

Case: 18-1920 Document: 49-2 Page: 1 Filed: 03/11/2019
2018-1920, 2018-2020
IN THE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
AFFINITY LABS OF TEXAS, LLC,

Appellant,
v.
NETFLIX, INC.,
Appellee,
UNITED STATES,
Intervenor.
Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board Nos. IPR2016-01701 and IPR2017-00122
BRIEF OF AMICI CURIAE UNIFIED PATENTS INC., HP INC., AND

ENGINE ADVOCACY IN SUPPORT OF APPELLEE NETFLIX, INC.
Jonathan Stroud James R. Barney

Chief Intellectual Property Counsel FINNEGAN, HENDERSON, FARABOW,
UNIFIED PATENTS INC. GARRETT & DUNNER, LLP
1875 Connecticut Avenue, NW 901 New York Avenue, NW
Washington, DC 20009 Washington, DC 20001-4413
(650) 999-0455 (202) 408-4400
Daniel C. Cooley
March 11, 2019 FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Two Freedom Square
11955 Freedom Drive, Suite 800
Reston, VA 20190-5675
(571) 203-2700
Counsel for Amici Curiae Unified

Patents Inc. and Engine Advocacy
Anthony J Baca
Senior IP Litigation Counsel
Global Legal Affairs
HP Inc.
11310 Chinden Blvd.
Boise, ID 83714
(208) 333-6333
Counsel for Amicus Curiae HP Inc.

CERTIFICATE OF INTEREST
Counsel for Amicus Curiae Unified Patents Inc. certifies the following:
1. The full name of every party or amicus represented by me is:

Unified Patents Inc.
2. The name of the real party in interest (if the party named in the caption is not
the real party in interest) represented by me is:
None
3. All parent corporations and any publicly held companies that own 10 percent
or more of the stock of the party or amicus curiae represented by me are:
None
4. The names of all law firms and the partners or associates that appeared for
the party or amicus now represented by me in the trial court or agency or are
expected to appear in this Court (and who have not or will not enter an
appearance in this case) are:
None
5. The title and number of any case known to counsel to be pending in this or
any other court or agency that will directly affect or be directly affected by
this court’s decision in the pending appeal. See Fed. Cir. R. 47.4(a)(5) and
14.5(b).
Affinity Labs of Texas, LLC v. Netflix, Inc., No. 1:15-cv-00849-RP (W.D.

Tex. filed Sept. 22, 2015).
Counsel for Amicus Curiae Engine Advocacy certifies the following:

Engine Advocacy
None
None
None
14.5(b).

Counsel for Amicus Curiae HP Inc. certifies the following:

HP Inc.
None
None
None
14.5(b).

March 11, 2019 Respectfully submitted,
/s/ James R. Barney

James R. Barney
FINNEGAN, HENDERSON, FARABOW,
901 New York Avenue, NW
Washington, DC 20001-4413
(202) 408-4400
Daniel C. Cooley
Two Freedom Square
Reston, VA 20190-5675
(571) 203-2700
Jonathan Stroud
Chief Intellectual Property Counsel
UNIFIED PATENTS INC.
1875 Connecticut Avenue, NW
Washington, DC 20009
(650) 999-0455
Counsel for Amici Curiae Unified Patents

Inc. and Engine Advocacy
/s/ Anthony J. Baca

Anthony J Baca
HP Inc.
11310 Chinden Blvd.
Boise, ID 83714
(208) 333-6333

TABLE OF CONTENTS
Page
I. STATEMENT OF THE INTEREST OF AMICI CURIAE............................ 1
II. SUMMARY OF THE ARGUMENT .............................................................. 3
III. ARGUMENT ...................................................................................................4

A. The Legislative History of 35 U.S.C. § 6(a) Shows That
Congress Acted Intentionally and Within Its Constitutional
Authority to Designate PTAB Judges as Inferior Officers
Appointed by the Secretary of Commerce ............................................ 4
B. The Director’s Supervisory Powers Confirm that PTAB

Judges Are Inferior Officers Constitutionally Appointed by
the Secretary of Commerce .................................................................10
IV. CONCLUSION..............................................................................................17
i
TABLE OF AUTHORITIES
Page(s)
CASES
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) ...................................14
Edmond v. United States, 520 U.S. 651 (1997) ................................................ 10, 16
Freytag v. Comm’r, 501 U.S. 868 (1991) ..................................................................5

Gen. Plastic Indus. Co. v. Kaisha, No. IPR2016-01357, (Paper 19) (P.T.A.B.
Sept. 6, 2017) ......................................................................................................13
Google LLC v. Network-1 Techs., Inc., 726 F. App'x 779 (Fed. Cir. 2018)............16
In re DBC, 545 F.3d 1373 (Fed. Cir. 2008) ...........................................................7, 9
In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) (No. 2006-
1192) .....................................................................................................................7
Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, -01130, (Paper 15)
(P.T.A.B. Feb. 25, 2019).....................................................................................15
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) .....................14
Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016)........................................14
Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct.
1365 (2018) .........................................................................................................10
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .........................................15
PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734
(Fed. Cir. 2016) ...................................................................................................16
Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015)...................14
St. Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322 (Fed. Cir.
2018) ...................................................................................................................10
ii
Stryker Spine v. Biedermann-Motech GmbH, 684 F.Supp.2d 68 (D.D.C.

2010), aff’d, 451 F. App’x. 954 (Fed. Cir. 2012) .................................................9
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) ............14
Ziegmann, N.P.Z., Inc. v. Stephens, No. IPR2015-01860, (Paper 13)

(P.T.A.B. Sept. 6, 2017) .....................................................................................13
STATUTES
35 U.S.C. § 2(b)(2)(A) .............................................................................................14
35 U.S.C. § 3(a) (1994) (repealed 1999) ...................................................................6

35 U.S.C. § 3(a) (2012) ..................................................................................... 10, 14
35 U.S.C. § 314(a) (2012) ........................................................................................10
35 U.S.C. § 316 (2012) ............................................................................................11

35 U.S.C. § 318(a) (2012) ..........................................................................................2
35 U.S.C. § 318(b) (2012) .......................................................................................11

35 U.S.C. § 328(a) (2012) ..........................................................................................2
35 U.S.C. § 6(a) ............................................................................................... passim
35 U.S.C. § 6(a) (2012) ..........................................................................................3, 8
35 U.S.C. § 6(a) (Supp. V 2011) (amended 2012) ....................................................8
35 U.S.C. § 7(a) (1994) (repealed 1999) ...................................................................5

Pub. L. No. 106-113, 113 Stat. 1536 (1999)..............................................................6
S. 1948, 106th Cong. (1999) ......................................................................................6
U.S. Const. art. II, § 2, cl. 2 ...................................................................................3, 5

OTHER AUTHORITIES
1158 Official Gazette Pat. Off. 347 (1994) ...............................................................6
154 Cong. Rec. 16,853 (2008) ...................................................................................8
iii
John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007

Patently-O Patent L.J. 21 (2007) (revised version 77 Geo. Wash. L. Rev.
904 (2009))........................................................................................................7, 9
Michelle K. Lee, Keynote Address at The George Washington University
School of Law (May 16, 2017) ...........................................................................12
Transcript of Public Patent Advisory Committee Meeting (Aug. 3, 2017).............13

Transcript of Remarks by Director Iancu at the American Intellectual
Property Law Association Annual Meeting (Oct. 25, 2018) ..............................16
RULES
Fed. R. App. P. 29(a)(4)(E)........................................................................................v
REGULATIONS
37 C.F.R. pt. 41 (2018) ............................................................................................12
83 Fed. Reg. 51340 (Oct. 11, 2018).................................................................. 15, 16
83 Fed. Reg. 54319 (Oct. 29, 2018).........................................................................15

USPTO, Standard Operating Procedure 2 (Rev. 10) (2018) ...................................14
iv
RULE 29(a)(4)(E) STATEMENT
Pursuant to Fed. R. App. P. 29(a)(4)(E), counsel for amicus curiae hereby states
as follows:
(i) The attorneys representing Appellee Netflix, Inc. in the present appeal
played no role in authoring this brief, either in whole or in part.
(ii) No party to this appeal, nor a party’s counsel, contributed money that was
intended to fund preparing or submitting this brief.
(iii) No person other than the amicus curiae contributed money that was
intended to fund preparing or submitting this brief.
March 11, 2019
/s/ James R. Barney

James R. Barney
/s/ Anthony J Baca

Anthony J Baca
v
I. STATEMENT OF THE INTEREST OF AMICI CURIAE
Unified Patents Inc. (“Unified”) is a for-profit, member-based organization
who aims to deter abusive patent assertions in specific technology areas. Unified
collects annual fees from its members but acts independently in deciding whether
and how to challenge abusive patent behavior. In general, Unified monitors all
available information in deciding whether to publicly challenge entities or patents,
including using reissue protests, ex parte reexamination, inter partes review (“IPR”)
or post-grant review (“PGR”). By monitoring patent activity and strategically
challenging poor-quality patents in key technology sectors using publicly available
means, Unified provides a valuable service to the business community at large.
Because Unified is a frequent petitioner in PTAB proceedings and is uniquely
focused on ensuring that low-quality patents are permanently removed from the
public arena, it believes its views may be valuable to the Court in resolving the
Appointments Clause issue in this appeal.
HP Inc. (“HP”) is an American technology company focused on bringing
technological innovations to market in a variety of areas, including laptop and
desktop computers, printers, 3D printers, ink and toner, displays, and accessories.
HP has a keen interest in ensuring that the U.S. intellectual property system
maintains its historic integrity and remains a positive force for bringing innovations
1
to market. HP (formally Hewlett Packard Company) has been a petitioner and Patent
Owner in PTAB proceedings.
Engine Advocacy (“Engine”) is a non-profit technology policy, research, and
advocacy organization that bridges the gap between policymakers and startups,
working with government and a community of startups across the nation to support
entrepreneurship. Startups care deeply about the creation and protection of
intellectual property, and Engine works to support that mission.
This appeal has the potential to affect a wide variety of businesses, including
Unified’s and HP’s. Specifically, Appellant Affinity Labs of Texas, LLC
(“Affinity”) contends that the 250+ administrative patent judges currently
comprising the Patent Trial and Appeal Board (“PTAB”) all lack the constitutional
authority to issue final written decisions regarding the patentability of issued U.S.
patents. If true, this would prevent the PTAB from fulfilling its Congressionally
mandated statutory duty to “issue a final written decision with respect to the
patentability of any patent claim challenged by the petitioner and any new claim
added [by the patent owner]” in an instituted IPR, CBM, or PGR. 35 U.S.C. § 318(a)
(2012) (IPR); § 328(a) (2012) (PGR and CBM). This, in turn, would throw past final
written decisions of the PTAB into doubt, creating confusion and uncertainty
regarding the patentability and enforceability of many patent claims that have
already been adjudicated by the PTAB.
2
Accordingly, amici curiae Unified, HP, and Engine (“Amici Curiae”)
respectfully submit that their views may be helpful to the Court in deciding the
constitutional issues raised in this appeal.
II. SUMMARY OF THE ARGUMENT
Amici Curiae agree with the arguments set forth by Appellee Netflix, Inc.
(“Netflix”) in Section II.B of its principal brief and by Intervenor United States in
Section III of its brief. For the reasons explained in those briefs, PTAB judges are
inferior officers and therefore do not require Senate confirmation under the
Appointments Clause of the U.S. Constitution. Amici Curiae wish to support these
arguments by providing additional views regarding: (1) the legislative history of
35 U.S.C. § 6(a), which governs the appointment of PTAB judges; and (2) the
degree of supervision exercised by the United States Patent and Trademark Office
(“USPTO”) Director over PTAB judges.
First, the legislative history of 35 U.S.C. § 6(a) makes clear that Congress
acted with specific intent and within its discretion under the Appointments Clause
to designate administrative patent judges as inferior officers. As amended, § 6(a)
requires that PTAB judges must be appointed by the Secretary of Commerce—one
of the “Heads of Departments” permitted to make such appointments under the
Appointments Clause—in consultation with the USPTO Director. 35 U.S.C. § 6(a)
(2012); U.S. Const. art. II, § 2, cl. 2. Accordingly, there is no doubt that Congress
3
acted within its authority to designate PTAB judges as inferior officers properly
appointed under the Appointments Clause.
Congress’s intent is further evidenced by the PTAB judges’ relationship
with their superior—the Director. Through rulemaking and direct supervision, the
Director controls every aspect of PTAB proceedings, from start (institution) to
finish (issuance of the certificate). And the Director does not let this supervisory
power lie dormant. The Director has repeatedly exercised it to advance USPTO
policy, seek greater uniformity between panels, and correct or clarify issues in
individual cases. Thus, both the historical context provided by Congress’s intent
and the day-to-day application of that intent confirm that PTAB judges are
constitutional inferior officers under the Appointments Clause.
III. ARGUMENT
A. The Legislative History of 35 U.S.C. § 6(a) Shows That

Congress Acted Intentionally and Within Its Constitutional
Authority to Designate PTAB Judges as Inferior Officers
Appointed by the Secretary of Commerce
The Appointments Clause states:
[The President] shall nominate, and by and with the

Advice and Consent of the Senate, shall appoint
Ambassadors, other public Ministers and Consuls, Judges
of the supreme Court, and all other Officers of the United
States, whose Appointments are not herein otherwise
provided for, and which shall be established by Law: but
the Congress may by Law vest the Appointment of such
inferior Officers, as they think proper, in the President
4
alone, in the Courts of Law, or in the Heads of

Departments.
U.S. Const. art. II, § 2, cl. 2 (emphasis added). The Appointments Clause allows
Congress to identify a class of inferior officers and vest their appointment in, inter
alia, a head of a department. Id. Congress’s authority to designate such inferior
officers is discretionary, i.e., “as they think proper,” so long as the appointment of
these inferior officers manifests a clear chain of command to the president, the
courts of law, or a department head. See Freytag v. Comm’r, 501 U.S. 868, 883-84
(1991) (noting that the Appointments Clause “limit[s] the distribution of the power
of appointment” but grants Congress “limited authority to devolve appointment
power on the President, his heads of departments, and the courts of law.”).
Prior to 2000, the Board of Patent Appeals and Interferences (“BPAI”)—the
PTAB’s predecessor—consisted of the USPTO Commissioner, the Deputy
Commissioner, the Assistant Commissioners, and the examiners-in-chief. See
35 U.S.C. § 7(a) (1994) (repealed 1999). The statute governing the composition of
the BPAI at that time provided that:
The examiners-in-chief shall be persons of competent

legal knowledge and scientific ability, who shall be
appointed to the competitive service. The Commissioner,
the Deputy Commissioner, the Assistant Commissioners,
and the examiners-in-chief shall constitute the Board of
Patent Appeals and Interferences.
5
Id. In 1994, the USPTO redesignated the examiners-in-chief who served as BPAI
members as “administrative patent judges.” See 1158 Official Gazette Pat. Off. 347
(1994). Prior to March 29, 2000, these administrative patent judges were appointed
by the Secretary of Commerce. See 35 U.S.C. § 3(a) (1994) (repealed 1999) (“The
Secretary of Commerce, upon the nomination of the Commissioner [of Patents and
Trademarks], in accordance with law shall appoint all other officers and
employees.”).
In November 1999, Congress enacted the American Inventors Protection
Act. Pub. L. No. 106-113, div. B, § 1000(a)(9) [title IV], 113 Stat. 1536, 1501A-
552 (1999). Among other things, this Act created the now-defunct inter partes
reexamination procedure and specified that appeals from inter partes
reexaminations would be heard by the BPAI. See S. 1948, 106th Cong. §§ 4601-08
(1999). The 1999 Act also modified Title 35 to vest authority for appointing
administrative patent judges solely in the USPTO Director:
Establishment and Composition.--There shall be in the

United States Patent and Trademark Office a Board of
Patent Appeals and Interferences. The Director, the
Commissioner for Patents, the Commissioner for
Trademarks, and the administrative patent judges shall
constitute the Board. The administrative patent judges
shall be persons of competent legal knowledge and
scientific ability who are appointed by the Director.
S. 1948, § 4717(2) (emphasis added).
6
In 2007, Professor John Duffy published an article questioning whether
administrative patent judges could properly be appointed by the USPTO Director
under the Appointments Clause. John F. Duffy, Are Administrative Patent Judges
Unconstitutional?, 2007 Patently-O Patent L.J. 21 (2007) (a revised version was
published at 77 Geo. Wash. L. Rev. 904 (2009) [hereinafter Duffy (revised)]).
Professor Duffy’s assertion was that administrative patent judges are inferior
officers and therefore can only be appointed by the President, the courts, or a
department head, pursuant to the Appointments Clause. See Duffy (revised), supra
at 910 (“Because the PTO Director is not the President or a court of law, the
validity of the appointment process turns on whether the Director can be viewed as
a ‘Head of Department.’”). Shortly thereafter, litigants began raising that same
argument in this Court. See, e.g., Combined Petition for Panel Rehearing &
Rehearing En Banc, In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007)
(No. 2006-1192), 2007 WL 3388523; In re DBC, 545 F.3d 1373, 1377-81 (Fed.
Cir. 2008).
In response to these challenges, Congress amended 35 U.S.C. § 6(a) in 2008
to make clear that the appointment of administrative patent judges who serve on
the BPAI must be made by the Secretary of Commerce, in consultation with the
USPTO Director:
There shall be in the United States Patent and Trademark

Office a Board of Patent Appeals and Interferences. . . .
7
The administrative patent judges [of the Board] shall be

persons of competent legal knowledge and scientific
ability who are appointed by the Secretary of Commerce,
in consultation with the Director.
35 U.S.C. § 6(a) (Supp. V 2011) (emphasis added) (amended 2012). The current
version of Section 6(a) likewise requires administrative patent judges to be
“appointed by the Secretary [of Commerce], in consultation with the Director.” 35
U.S.C. § 6(a) (2012).
Congress took this legislative action specifically to settle any argument that
administrative patent judges lack constitutional authority to decide patentability
issues under the Appointments Clause. As Representative Cohen explained on the
House floor:
In 1999, the process by which administrative patent and

trademark judges are appointed was modified as part of
the American Inventors Protection Act. That act, which
provided greater accountability and efficiencies at the
Patent and Trademark Office, transferred the power to
appoint these judges from the Secretary of Commerce to
the Director of the U.S. PTO.
Recently, however, concerns have been raised as to the

constitutionality of the Director making such
appointments. Already, at least two U.S. PTO decisions
have been challenged on this basis.
We firmly believe that appointments made by the Director

are constitutional. Nevertheless, in order to remove any
doubts, the House and Senate has reached identical bills to
respond to these concerns.
154 Cong. Rec. 16,853 (2008).
8
In In re DBC, this Court recognized that the “remedial action” taken by
Congress in 2008 eliminated the Appointments Clause concern. See In re DBC,
545 F.3d at 1380 (“On August 12, 2008, the President signed into law legislation
that redelegated the power of appointment to the Secretary, thereby eliminating the
issue of unconstitutional appointments going forward.”) (emphasis added).
Professor Duffy likewise agreed that Congress’s 2008 amendment resolved the
problem. See Duffy (revised), supra at 919 (“[T]he appointment structure
mandated by the 2008 statute is plainly constitutional . . . .”).
As this Court correctly recognized in In re DBC, and as Professor Duffy
agreed, Congress’s 2008 amendment to 35 U.S.C. § 6(a) eliminates the
Appointments Clause issue because, in amending the statute, Congress exercised
its discretion to identify administrative patent judges as inferior officers, duly
appointed by a department head, i.e., the Secretary of Commerce, as required by
the Appointments Clause. Cf. Stryker Spine v. Biedermann-Motech GmbH, 684
F.Supp.2d 68, 87-88 (D.D.C. 2010) (holding that the reappointment of an
administrative patent judge by the Secretary of Commerce following the 2008
amendment to § 6(a), cured any constitutional defect in his previous appointment
by the USPTO Director), aff’d, 451 F. App’x. 954 (Fed. Cir. 2012), 2012 WL
178376.
9
B. The Director’s Supervisory Powers Confirm that PTAB

Judges Are Inferior Officers Constitutionally Appointed by
the Secretary of Commerce
In addition to Congress’s correction, PTAB judges are constitutional “inferior
officers” under Supreme Court precedent because they have “a superior.” Edmond
v. United States, 520 U.S. 651, 662 (1997). The Director is a constitutional
“superior” to PTAB judges not only by rank, but also as one “appointed by
Presidential nomination with the advice and consent of the Senate” who “direct[s]
and supervise[s] at some level.” Id. at 663. As constitutional “inferior officers,”
PTAB judges fall in line behind the Director in both rule and practice.1
The Director’s statutory authority touches every aspect of the PTAB’s work
in AIA proceedings, providing “policy direction and management supervision.”
35 U.S.C. § 3(a)(2)(A) (2012). The Director has authority and discretion whether to
institute proceedings. See 35 U.S.C. § 314(a) (2012) (the Director may “authorize
an inter partes review to be instituted”); see Oil States Energy Servs., LLC v.
Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1371 (2018) (“The decision whether
to institute inter partes review is committed to the Director’s discretion.”). See also
St. Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322, 1327 (Fed. Cir. 2018)
1
As the Intervenor’s brief explains in Section III at pages 29-32, the Director has
authority to terminate a non-compliant PTAB judge, a “powerful tool for control.”
Edmond, 520 U.S. 651, 664.
10
(finding the Director “possesses broad discretion in deciding whether to institute
review. Although this is only one decision, it embraces the entirety of the
proceeding. If the Director decides to institute, review occurs. If the Director decides
not to institute, for whatever reason, there is no review. In making this decision, the
Director has complete discretion to decide not to institute review.”) (citations
omitted). The Director is the official who concludes the proceedings. See 35 U.S.C.
§ 318(b) (2012) (“[T]he Director shall issue and publish a certificate canceling any
claim of the patent finally determined to be unpatentable, confirming any claim . . .
determined to be patentable, and incorporating . . . any new or amended claim
determined to be patentable.”) And the Director has authority to “establish[] and
govern[]” everything between these two endpoints by promulgating regulations. See,
e.g., 35 U.S.C. § 316 (2012) (the Director may prescribe regulations that: “establish[]
procedures for the submission of supplemental information after the petition is
filed”; “set[] forth standards and procedures for discovery of relevant evidence”;
“prescrib[e] sanctions for abuse of discovery, abuse of process, or any other
improper use of the proceeding”; “provid[e] for protective orders governing the
exchange and submission of confidential information”; “provid[e] for the filing by
the patent owner of a response to the petition under section 313 after an inter partes
review has been instituted”; “set[] forth standards and procedures for allowing the
patent owner to move to amend the patent”; and “provid[e] either party with the right
11
to an oral hearing as part of the proceeding”); see also 37 C.F.R. §§ 41.1–.208
(2018). The regulations promulgated by the Director bind PTAB judges and govern
how they conduct their official duties.
The Director’s statutory and regulatory powers gather no dust; the Director
routinely uses them to supervise PTAB judges and effectuate PTO policy. In May
2017, Director Michelle Lee explained that the USPTO’s “top priority” was “to
make sure the Patent Trial and Appeal Board’s AIA proceedings are as effective and
as fair as possible--within our Congressional mandate.” Michelle K. Lee, Keynote
Address at The George Washington University School of Law (May 16, 2017),
https://www.uspto.gov/about-us/news-updates/remarks-director-michelle-k-lee-
george-washington-university-school-law. Director Lee identified several areas of
potential change that directly impact how PTAB judges conduct their proceedings,
including:
1). Multiple petitions, and how best to curb abusive

practices.
2). Whether to provide other opportunities to amend

claims later in the proceedings when patent owners may
have a better sense of where their claims stand, [and]
3). Whether to reevaluate our claim construction

standards in view of new data and experiences . . . .
Id. Since that time, the Director has made substantive and policy changes in each of
these areas that instruct PTAB judges how to conduct AIA trials.
12
The issue of serial petitions provides a first example that highlights the
constitutional superior/inferior relationship between the Director and PTAB judges.
After Director Lee raised the issue of serial petitions, Interim Director, Joseph Matal,
explained that the PTAB would “refine the way that it exercises its discretion to
regulate these [petitions] and prevent . . . harassing behavior.” Transcript of Public
Patent Advisory Committee Meeting at 13 (Aug. 3, 2017),
https://www.uspto.gov/sites/default/files/documents/PPAC_Transcript_20170803.
pdf. Within two months, the PTAB issued two key decisions: Gen. Plastic Indus.
Co. v. Kaisha, No. IPR2016-01357, (Paper 19) (P.T.A.B. Sept. 6, 2017) (decision
denying petitioner’s requests for rehearing) and Ziegmann, N.P.Z., Inc. v. Stephens,
No. IPR2015-01860, (Paper 13) (P.T.A.B. Sept. 6, 2017) (decision on request for
rehearing). Consistent with the Director’s objective of preventing “harassing
behavior,” Chief Judge Ruschke expanded both panels on this issue of “exceptional
importance,” see Gen. Plastic Indus. Co., slip op. 4–5; Ziegmann, N.P.Z., slip op. 2–
3, and provided a framework to address “[m]ultiple, staggered petitions challenging
the same patent and same claims [that] raise the potential for abuse,” Gen. Plastic
Indus. Co., slip op. 17.
The Director’s supervisory role was highlighted again when addressing
motions to amend. The Director, by way of the Office of the Solicitor, intervened in
various PTAB cases on appeal that included motions to amend. See, e.g., Aqua
13
Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292 (Fed. Cir. 2015); Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d
1353 (Fed. Cir. 2015); Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed.
Cir. 2016); Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016). This allowed
the Director to review PTAB decisions in individual cases and clarify or defend the
USPTO’s positions. After the Federal Circuit issued its en banc decision in Aqua
Products, Director Iancu approved a new precedential opinion pursuant to Standard
Operating Procedure 2, 2 Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-
2
Standard Operating Procedure 2 emphasizes the Director’s oversight and control
of the PTAB. USPTO, Standard Operating Procedure 2 (Rev. 10), at 1 (2018) (“No
decision will be designated or de-designated as precedential or informative without
the approval of the Director.” (emphasis added)); id. at 2 (“The Under Secretary of
Commerce for Intellectual Property and Director of the United States Patent and
Trademark Office (Director), who is a statutory member of the Board (35 U.S.C. §
6(a)), is ‘responsible for providing policy direction and management supervision
for the Office’ (35 U.S.C. § 3(a)(2)(A)), and has ‘the authority to govern the
conduct of proceedings in the Office’ (35 U.S.C. § 2(b)(2)(A)).” (emphasis
added)); id. at 4 (“The Precedential Opinion Panel members are selected by the
Director, and by default shall consist of the Director, the Commissioner for
Patents, and the Chief Judge.” (emphasis added)); id. at 5 (“The Director may
convene a Precedential Opinion Panel to review a decision in a case and determine
whether to order sua sponte rehearing, in his or her sole discretion and without
regard to the procedures set forth herein.” (emphasis added)); id. at 6-7 (“A
Screening Committee will review the recommendations for Precedential Opinion
Panel review . . . .” “The Screening Committee will forward its recommendations
to the Director.” (emphasis added)); id. at 10 (“The Executive Judges Committee
will provide a recommendation to the Director on whether or not to designate a
decision, or a portion thereof, as precedential or informative.” (emphasis added));
id. at 12 (“If the Director determines that the particular Board decision should no
(continued…)
14
01129, -01130, (Paper 15) (P.T.A.B. Feb. 25, 2019), which provides guidance
regarding motions to amend. This precedent is now binding upon all PTAB judges.
The Director has proposed additional changes to PTAB procedure for motions to
amend, see 83 Fed. Reg. 54319 (Oct. 29, 2018), and, if finalized, such regulations
would further control how PTAB judges conduct AIA proceedings.
A third example of the Director supervising the PTAB was the decision to
change the claim construction standard from broadest-reasonable-interpretation
(“BRI”) to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc). Concerns had persisted for years about the disparity between the
BRI standard applied by the PTAB and the standard used in district courts. 83 Fed.
Reg. 51340, 51342 (Oct. 11, 2018). PTAB judges were powerless to change the
USPTO’s policy decision to use BRI. Change could only come through their
superior—the Director. Upon changing the standard, Director Iancu explained that
the Phillips standard would control all AIA proceedings before PTAB judges:
[O]n October 11, we published the final rule for claim

construction in AIA proceedings before the PTAB. The
same standard will now be applied in AIA Trials before
the Board as in civil actions in district courts, and in
longer be designated as [precedential or informative], the subject Board decision

will be de-designated. The Chief Judge will notify the Board that the decision has
been de-designated. The decision will be removed from the Board’s Precedential
and Informative Decisions Web page and the public will be notified that the
decision has been de-designated.” (emphasis added)).
15
proceedings at the International Trade Commission

(ITC).
Transcript of Remarks by Director Iancu at the American Intellectual Property Law
Association Annual Meeting (Oct. 25, 2018), https://www.uspto.gov/about-
us/news-updates/remarks-director-iancu-american-intellectual-property-law-
association-annual; see also 83 Fed. Reg. 51340 (Oct. 11, 2018) (to be codified at
37 C.F.R. pt. 42). Changing the claim construction standard affected all PTAB
proceedings, including cases where the standard would be outcome determinative.
See, e.g., PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d
734, 740–42 (Fed. Cir. 2016) (“[t]his case hinges on the claim construction standard
applied”); see also Google LLC v. Network-1 Techs., Inc., 726 F. App'x 779, 784
(Fed. Cir. 2018) (“In order to be found reasonable, it is not necessary that a claim be
given its correct construction under the framework laid out in Phillips.”). PTAB
judges now apply the Phillips standard in every new case.
Serial petitions, motions to amend, and the proper claim construction standard
are just some of the many examples of how the Director supervises and directs PTAB
proceedings and the judges who operate within them. As a result, there is no doubt
that PTAB judges are constitutional “inferior officers” within the meaning of
Edmond. See 520 U.S. at 661.
16
IV. CONCLUSION
For the reasons set forth above, Amici Curiae respectfully submit that PTAB
judges are constitutional inferior officers appointed by the Director under the
Appointments Clause.
17
March 11, 2019 Respectfully submitted,
/s/ James R. Barney

Jonathan Stroud James R. Barney
Chief Intellectual Property Counsel FINNEGAN, HENDERSON, FARABOW,
UNIFIED PATENTS INC. GARRETT & DUNNER, LLP
1875 Connecticut Avenue, NW 901 New York Avenue, NW
Washington, DC 20009 Washington, DC 20001-4413
(650) 999-0455 (202) 408-4400
Daniel C. Cooley
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
Two Freedom Square
Reston, VA 20190-5675
(571) 203-2700
Counsel for Amici Curiae Unified Patents

Inc. and Engine Advocacy
/s/ Anthony J. Baca

Anthony J Baca
HP Inc.
11310 Chinden Blvd.
Boise, ID 83714
(208) 333-6333
18
CERTIFICATE OF COMPLIANCE
This brief complies with the type-volume limitation of Fed. R. App. P. 32(a)
and Fed. R. App. P. 29(a)(5), because this brief contains 3,766 words, excluding the
parts of the brief excepted by Fed. R. App. P. 32(f) and Fed. Circ. R. 32(b).
This brief complies with the typeface requirements of Fed. R. App. P. 32(a)(5)
and type style requirements of Fed. R. App. P. 32(a)(6) because this brief has been
prepared in a proportionally spaced typeface using Microsoft Word 2016 in Times
New Roman 14-point font.
Date: March 11, 2019 Respectfully submitted,
/s/ James R. Barney

James R. Barney
901 New York Avenue NW
Telephone: (202)408-4000
CERTIFICATE OF SERVICE
I hereby certify that copies of the foregoing BRIEF OF AMICI CURIAE
UNIFIED PATENTS INC., HP INC., AND ENGINE ADVOCACY IN SUPPORT
OF APPELLEE NETFLIX, INC., was served upon registered counsel by operation
of the Court’s CM/ECF system on this March 11, 2019:
/s/ James R. Barney

James R. Barney
901 New York Avenue, NW
Telephone: (202) 408-4400

Affinity Labs Amicus Brief - Unified Patents

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Affinity Labs Amicus Brief - Unified Patents

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Case: 18-1920 Document: 49-2 Page: 1 Filed: 03/11/2019

AFFINITY LABS OF TEXAS, LLC,

Appeal from the United States Patent and Trademark

BRIEF OF AMICI CURIAE UNIFIED PATENTS INC., HP INC., AND

Jonathan Stroud James R. Barney

Counsel for Amici Curiae Unified

Counsel for Amicus Curiae HP Inc.

1. The full name of every party or amicus represented by me is:

Affinity Labs of Texas, LLC v. Netflix, Inc., No. 1:15-cv-00849-RP (W.D.

Counsel for Amicus Curiae Engine Advocacy certifies the following:

1. The full name of every party or amicus represented by me is:

Affinity Labs of Texas, LLC v. Netflix, Inc., No. 1:15-cv-00849-RP (W.D.

Counsel for Amicus Curiae HP Inc. certifies the following:

1. The full name of every party or amicus represented by me is:

Affinity Labs of Texas, LLC v. Netflix, Inc., No. 1:15-cv-00849-RP (W.D.

March 11, 2019 Respectfully submitted,

/s/ James R. Barney

Counsel for Amici Curiae Unified Patents

/s/ Anthony J. Baca

Counsel for Amicus Curiae HP Inc.

II. SUMMARY OF THE ARGUMENT .............................................................. 3

III. ARGUMENT ...................................................................................................4

B. The Director’s Supervisory Powers Confirm that PTAB

Freytag v. Comm’r, 501 U.S. 868 (1991) ..................................................................5

In re DBC, 545 F.3d 1373 (Fed. Cir. 2008) ...........................................................7, 9

Stryker Spine v. Biedermann-Motech GmbH, 684 F.Supp.2d 68 (D.D.C.

Ziegmann, N.P.Z., Inc. v. Stephens, No. IPR2015-01860, (Paper 13)

35 U.S.C. § 3(a) (1994) (repealed 1999) ...................................................................6

35 U.S.C. § 316 (2012) ............................................................................................11

35 U.S.C. § 318(b) (2012) .......................................................................................11

35 U.S.C. § 6(a) (Supp. V 2011) (amended 2012) ....................................................8

35 U.S.C. § 7(a) (1994) (repealed 1999) ...................................................................5

S. 1948, 106th Cong. (1999) ......................................................................................6

U.S. Const. art. II, § 2, cl. 2 ...................................................................................3, 5

1158 Official Gazette Pat. Off. 347 (1994) ...............................................................6

154 Cong. Rec. 16,853 (2008) ...................................................................................8

John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007

Transcript of Public Patent Advisory Committee Meeting (Aug. 3, 2017).............13

83 Fed. Reg. 54319 (Oct. 29, 2018).........................................................................15

RULE 29(a)(4)(E) STATEMENT

played no role in authoring this brief, either in whole or in part.

intended to fund preparing or submitting this brief.

intended to fund preparing or submitting this brief.

March 11, 2019

/s/ James R. Barney

/s/ Anthony J Baca

I. STATEMENT OF THE INTEREST OF AMICI CURIAE

Unified Patents Inc. (“Unified”) is a for-profit, member-based organization

available information in deciding whether to publicly challenge entities or patents,

or post-grant review (“PGR”). By monitoring patent activity and strategically

challenging poor-quality patents in key technology sectors using publicly available

means, Unified provides a valuable service to the business community at large.

Because Unified is a frequent petitioner in PTAB proceedings and is uniquely

Appointments Clause issue in this appeal.

HP Inc. (“HP”) is an American technology company focused on bringing

technological innovations to market in a variety of areas, including laptop and

Owner in PTAB proceedings.

Engine Advocacy (“Engine”) is a non-profit technology policy, research, and

entrepreneurship. Startups care deeply about the creation and protection of

intellectual property, and Engine works to support that mission.

Unified’s and HP’s. Specifically, Appellant Affinity Labs of Texas, LLC

(“Affinity”) contends that the 250+ administrative patent judges currently

already been adjudicated by the PTAB.

Accordingly, amici curiae Unified, HP, and Engine (“Amici Curiae”)

constitutional issues raised in this appeal.

II. SUMMARY OF THE ARGUMENT

arguments by providing additional views regarding: (1) the legislative history of