Amicus curiae brief in support of Respondent: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.

INTEREST OF AMICI CURIAE

Amici curiae are non-profit organizations that seek to advance a balanced patent system that promotes the public interest.

Public Knowledge is a non-profit organization that is dedicated to preserving the openness of the Internet and the public’s access to knowledge, promoting creativity through balanced intellectual property rights, and upholding and protecting the rights of consumers to use innovative technology lawfully. Public Knowledge advocates on behalf of the public interest for a balanced patent system, particularly with respect to new and emerging technologies.

The Electronic Frontier Foundation is a non-profit civil liberties organization that has worked for over 25 years to protect consumer interests, innovation, and free expression in the digital world. EFF and its more than 38,000 dues-paying members have a strong interest in helping the courts ensure that intellectual property law serves the public interest.

Engine Advocacy has worked with Congress, federal agencies, and state and local governments to discuss pol- icy issues, write legislation, and introduce the tech community to Washington insiders. Engine Advocacy conducts research, organizes events, and spearheads campaigns to educate elected officials, the entrepreneur community and the general public on issues vital to fostering technological innovation.

The R Street Institute is a non-profit, non-partisan public-policy research organization. R Street’s mission is to engage in policy research and educational outreach that promotes free markets, as well as limited yet effective government, including properly calibrated legal and regulatory frameworks that support Internet economic growth and individual liberty. R Street’s particular focus on Internet law and policy is one of offering research and analysis that show the advantages of a more market- oriented society and of more effective, more efficient laws and regulations that protect freedom of expression and privacy.

NOTE ON HISTORICAL SOURCES

For purposes of readability, spelling and capitalization have been modernized in quotations from historical sources, without notation.

SUMMARY OF ARGUMENT

Where Congress places conditions upon the patent grant in furtherance of the public interest in individual liberty, Congress acts at the apex of its powers under the Constitution. Inter partes review is a legislative condition on the patent grant, designed for an innovative modern world, specifically crafted to dispose of erroneously issued patents that burden the public. It is the traditional place of Congress to make these balanced political judgments, and Article III poses no barrier to Congress executing its Article I obligation to protect the public by limiting patents.

To be as useful as possible to this Court, amici forgo recapitulation of Article III doctrine in favor of detailed, practical facts supporting the need for and permissibility of inter partes review. Those facts fall into two categories: historical evidence of the Framers’ intent, and modern evidence of the complex, administrative nature of the patent system today.

1. History confirms that Congress has the power and mandate to impose conditions on the patent grant that protect the public and individual liberties. Pre-ratification practices in England, the colonies, and the early states consistently treat patents as a privilege granted as a matter of sovereign discretion, with the objective in granting patents being not merely to reward inventors but also to induce economic productivity to the bene t of the state and the public. And as matters of sovereign discretion, the patents of England, the colonies, and the states included conditions intended to advance economic and public interests—including, in many cases, conditions for automatic, non-judicial revocation.

The Framers considered these antecedent practices when crafting the constitutional patent power. They also accounted for their aversion to government-granted exclusivities (“monopolies” in 18th-century parlance), which could be easily abused by ambitious leaders. The Patent Clause that emerged thus embodied in its text a limitation—“to promote the progress of science and useful arts”—intended at least to instruct Congress to issue patents only with conditions protecting the public from monopoly abuse. The early Congress took the Framers’ message to heart in enacting the first Patent Act, which included provisions for discretion in the decision to grant, and for revocation when that decision was mistaken.

History and original intent confirm that Congress may construct checks and balances on patents such as inter partes review, in order to protect the public from the odious monopolies that the Framers abhorred. More importantly, history reveals the danger of Article III interceding in matters of patent cancellation: To do so, this Court would have to usurp from Congress a political determination of the best procedures and mechanisms to balance the interests of patent owners and the public.

2. The complexities of patent law—including patent cancellation procedures—confirm Congress’s power and ability to shape those procedures. Indeed, the patent system resembles a classic administrative or regulatory scheme of the kind this Court has repeatedly held legitimate.

Patent law deals with highly technical fields of engineering and science. Rapid scientific and technological development have left the patent system struggling to keep pace: The Patent Offce is overwhelmed with patent applications, and examiners have insufficient resources to give each application the comprehensive review that would prevent incorrect issuance of patents. Inter partes review reflects a political choice—the latest in a long line of choices since 1790—to allow patents to issue somewhat under-examined, and then to correct errors post-issuance through a de ned administrative procedure. And like other Article I proceedings, inter partes review places a narrow domain of technologically-oriented questions before technologically-skilled adjudicators.

Patent cancellation also resembles permissible agency proceedings in another, more important way: It is a proceeding designed to vindicate a generalized public harm. An invalid patent is a regulatory tax on every American, prohibiting all individuals from exercising liberties they had prior to the wrongful patent. It is especially pertinent that inter partes review is arguably the sole effective avenue by which any member of the public may challenge a patent, and that the effect of cancellation inures not just to the challenger but to the whole public.

A proceeding designed in the public interest, for the public’s use, that works to the public’s benefit—that is a public right. Inter partes review is constitutional, and the judgment should be affirmed.

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