Brief of Amici Curiae Professors of Patent and Administrative Law in Support of Neither Party, Wi-Fi One, LLC v. Broadcom Corporation, No. 1551944, -1945, -1946 (Fed. Cir., Feb. 23, 2017)

Abstract

This case implicates a significant balance in the patent system between the competing powers of the federal courts and the U.S. Patent and Trademark Office to review patent validity. Although Congress already allocated these powers through various provisions of the America Invents Act, this Court’s decision in Achates Reference Publishing, Inc. v. Apple, Inc., 803 F.3d 652 (Fed. Cir. 2015), failed to take account of that balance of power and now threatens to obstruct this Court’s ability to safeguard the balance from further disruption. Intervening guidance from the Supreme Court in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), sheds new light on the court-agency balance of patent powers, whose scope and impact extend well beyond the USPTO Patent Trial and Appeal Board and into the courts. New empirical evidence reveals that litigants use the USPTO to a significant extent as a strategic substitute for courts in reevaluating patent validity. Strategic substitution is subject to important statutory constraints, especially the one-year bar of 35 U.S.C. § 315(b). These constraints promote repose for litigants, conservation of both court and agency resources, and inter-branch respect for the judgments of competing tribunals. Notably, these constraints appear to channel litigants into socially desirable collective action but may also foster undesirable harassment of patent owners and delay in adjudicating patent disputes. Accordingly, in deciding the judicial reviewability of USPTO determinations regarding timeliness under § 315(b), this Court should take careful account of the significant scope and impact that § 315(b) has beyond the inter partes review setting in preserving the balance of power that Congress has allocated to the USPTO and to the courts.