Nonparty Protective Relief in the Early Republic: Judicial Power to Annul Letters Patent

NONPARTY PROTECTIVE RELIEF IN THE EARLY REPUBLIC: JUDICIAL POWER TO ANNUL LETTERS PATENT

James E. Pfander & Mary E. Zakowski

ABSTRACT—Much of the debate over the constitutionality of universal or nonparty protective relief in the federal court system has focused on lessons drawn from historical practice. But with its emphasis on injunctive relief, the literature has largely ignored forms of adjudication that arose outside the courts of equity and led to judgments and decrees affecting the rights of nonparties. As a result, the story of nonparty protective relief has not yet been fully told.

This Article offers a more complete story, highlighting proceedings in which federal courts issued judgments that settled a matter once and for all. Some familiar examples include proceedings in admiralty and naturalization judgments, where a decree was understood to operate on those who did not appear in the litigation. We focus here on the power of federal courts, acting under the patent laws of the 1790s, to entertain individual suits to cancel or annul a patent for all purposes. Such cancellation proceedings, based on a practice that developed in England on the writ of scire facias, were understood to operate as a general matter and could confer benefits on artisans and manufacturers who did not appear in the litigation. Nonparty protective patent cancellation relief was later administered by federal courts of equity and remains a part of the federal judicial role today.

While the Supreme Court in Trump v. CASA, Inc. found that federal courts lacked statutory power to issue universal injunctions, it did not directly address the constitutional question. We show in a brief concluding section that early examples of nonparty protection make it challenging to argue on historical grounds that Article III of the Constitution bars federal courts from granting such relief today. We therefore suggest that assessments of nonparty protective relief focus on deciding whether lower federal courts have been authorized to decide legal issues once and for all. Such a focus helps distinguish free-floating universal injunctions from those based on such sources of legislative authority as the set-aside power conferred in § 706 of the Administrative Procedure Act.

AUTHORS—Owen L. Coon Professor of Law (Pfander) and J.D. 2024 (Zakowski) Northwestern Pritzker School of Law. We thank the faculty workshops at Northwestern and Duke Schools of Law for hosting early presentations of these ideas; Amy Tomaszewski and the Pritzker Legal Center for terrific help with obscure sources; Michael Judah for splendid research assistance; and Aditya Bamzai, Sam Bray, Christopher Buccafusco, Zach Clopton, Amanda Frost, Ben Johnson, Doug Laycock, Mark Lemley, Maggie Lemos, Dave Schwartz, Mila Sohoni, Tomás Gómez-Arostegui, and Ernie Young for comments that have helped us refine and improve (if not quite perfect) our claims. We bear responsibility for all remaining errors.

“[I]t is adjudged and decreed that the patent . . . is hereby, vacated, and declared null and void . . . . And it is further adjudged and decreed, that said David Michael Hughes be, and he is hereby, for ever enjoined from prosecuting any suit in law or equity on said patent as evidence of title.” —United States v. Hughes (1850)†

Close assessments of the history of Article III adjudication shape the modern debate over federal judicial power to issue universal injunctions and other forms of nonparty protective relief.1 True, arguments from sound judicial administration also make their way into the debate, often with telling effect.2 But much of the discourse sounds in the register of historical practice. Professor Sam Bray’s insightful work on nationwide or universal injunctions offers one good example.3 Professor Bray combines a theoretical critique of the judicial power to issue nonparty protective relief with an argument from history; he claims that the first universal or nonparty protective injunctions appear in the 1960s, a decade that comes too late to supply useful evidence of the traditional practice of the federal courts.4 Professor Mila Sohoni’s incisive response to Bray dates the first such injunction to the late nineteenth century.5 But even this lengthier pedigree

has yet to persuade those who interpret Article III in light of the practices of the courts of Westminster at the time of the founding.6

Consider the Court’s recent decision in Trump v. CASA, Inc., ruling as a matter of statutory interpretation that federal courts likely lack power to issue nonparty protective or universal injunctive relief.7 The Court’s methodology was self-consciously historical. Citing Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc. and its conclusion that the equity jurisdiction conferred on the federal courts was that of the “High Court of Chancery in England” during the Founding,8 the Court asked whether universal injunctions are sufficiently analogous to the relief afforded at the time the Constitution and the First Judiciary Act were adopted. The answer, the Court said, was no.9 The closest “founding-era antecedent” was the bill of peace, but the Court deemed that its limitations and later assimilation into class-action practice made it an inappropriate analog for universal injunctive relief.10 Basing its decision on a narrow interpretation of the grant of equity jurisdiction in § 11 of the Judiciary Act, as carried forward in later enactments, the Court left open the question whether Article III of the Constitution would permit a congressional assignment of broader injunctive authority.11

If and when the Court chooses to address the question of constitutional, rather than statutory, power, focusing on the history of nonparty injunctive relief may miss the real point. For the historical record clearly reveals that

the courts of Westminster, of the several states (before and after they were united), and of the early federal judiciary often dished out remedial orders that imposed burdens and benefits on nonparties. Consider a prize proceeding in admiralty: the action began with the seizure of a vessel owned by citizens or subjects of a country at war with the United States.12 While the admiralty court provided constructive notice to all prospective claimants (including the owners of the vessel and its cargo), the court’s power to decree did not depend on their appearance in the litigation.13 Even in an entirely ex parte proceeding, the admiralty court had power to adjudicate the claim, decree good prize, and award title to the captors, thereby decisively curtailing the rights of nonparties.14

Or consider a slightly less familiar example from the statutory framework governing federal invention patent litigation in the early Republic. In the nation’s first two patent statutes, enacted in 1790 and 1793, Congress instituted a proceeding based on English precursors and colonial practice in which any person was entitled to contest the validity of an invention patent.15 These challenges, if successful, would occasion the cancellation of the patent as a general matter, thereby conferring a benefit on all nonparties who might have wished to contest the patent’s legality had

they been confronted with a threatened suit for patent infringement.16 Orders quashing or annulling a federal patent, following a longstanding practice in England,17 nicely illustrate the power of federal courts to grant nonparty specific relief.18

In both the prize and patent litigation context, the nonparty features of the court’s decree flowed from the proceeding’s in rem character.19 The prize claim proceeded against the vessel as a fictional defendant; no specific notice

to or joinder of interested parties was required.20 The patent-invalidity claim grew out of an English proceeding founded on the writ of scire facias that enabled parties to challenge the legality of an ownership interest (in land, an invention, or an office) that the Crown had conferred by letters patent.21 In both cases, a decree upholding the plaintiff’s claim would operate against all the world.22 The prize decree would change the vessel’s title in a way that bound parties and nonparties alike; a decree cancelling and annulling a patent would deprive it of any future operative force as to anyone. One might suppose that such proceedings would offer useful insights into Founding Era conceptions of judicial power.

Yet those debating the constitutional power of federal courts to grant nonparty protective relief have viewed proceedings in rem as largely irrelevant to the historical inquiry. Professor Bray bracketed such matters by saying, in brief, that in rem proceedings “do not offer a basis for national injunctions.”23 True enough, at least to the extent that an eighteenth-century prize or patent court need not have bothered to enjoin anyone to effectuate its decision as to prize or patent validity. But the universal injunction puzzle, at its core (and, especially, post-CASA), concerns the nature of the judicial power under Article III, rather than the history of injunctive relief in courts of equity. So, one might suppose that both in rem and in personam proceedings would bear on historical assessments of the power of Article III courts to issue decrees binding or affecting the interests of nonparties.24

Indeed, neglecting in rem litigation may unduly narrow the historical inquiry into federal remedial authority.

The literature’s omission of relevant historical precursors owes much to the way the Supreme Court has come to conceptualize the federal judicial task in terms of the resolution of disputes. If we begin with the premise that Article III limits the judicial power to the adjudication of disputes between proper parties, then the strictures of the modern standing doctrine have necessarily seemed to restrict the available relief to the injuries in fact that set the litigation in motion. Many view the linkage between the standing of individual plaintiffs and the limited power of federal courts to redress their asserted injuries as foreclosing nonparty protective relief.25 But that limited conception of the judicial power did not emerge until the twentieth century, as the Supreme Court transformed a doctrine of equitable discretion into a hard and fast standing doctrine that was said to derive from the “case” and “controversy” language of Article III.26 To begin with an assumption that the historical power of the federal courts encompasses only adversarial adjudication poses a serious risk of anachronism.

This Article offers a more inclusive history of judicial practice and brings it to bear on the constitutional problem of nonparty protective adjudication. Part I describes a historical world in which the federal courts were empowered to adjudicate claims of right in the absence of party contestation. In many of these in rem or status-based proceedings, the courts acted within an inquisitorial framework to adjudicate a claim of right rather than to resolve a dispute.27 In some such proceedings, the courts would

transfer title to property, as in prize litigation.28 In others, such as proceedings to naturalize new citizens of the United States, the courts would adjudicate a claim of right to a particular status.29 In both instances, decrees upholding the claim were understood as conclusive, unless overturned on direct appeal. They were good against the whole world and were made effective through the doctrine of nonmutual preclusive effect.30 Individuals who did not appear in noncontentious litigation to settle property rights (as with prize litigation) or status determinations (as with naturalized citizenship) were nonetheless bound by the decrees. Such decrees would thus benefit or burden nonparties without any need for the entry of injunctive relief.31

Part I also shows in general how courts of equity came to exercise the in rem or once-and-for-all adjudicative authority that would come to characterize patent-validity litigation. This may seem puzzling, given that courts of equity were initially understood as acting in personam; the High Court of Chancery issued orders to individuals compelling compliance under threat of contempt but did not act in rem on property or a record.32 The ancient gap between law and equity has been thought to explain, for instance, how the administrator of a trust might have been thought to have one set of rights based on legal title to property but a very different set of obligations to the trust’s beneficiary, enforceable in a suit in equity.33 Over time, however, the strict separation of law and equity gave way and courts of equity came to act in rem.34 Or to put the matter a different way, the equity court’s legal determinations were accepted as controlling in general, rather than controlling only to the extent the threat of injunctive relief made them effective. Today, for example, we treat a judgment obtained by fraud as

invalid as a general matter, rather than as valid in a court of law and invalid in a court of equity.35

Part II explains why this history has continuing relevance for the problem of nonparty protective relief today, focusing on patent litigation in the early Republic. Under the Patent Act of 1793, federal courts had the power to adjudicate patent legality both in the context of infringement suits brought by the patent’s owner and in proceedings to quash or annul the patent as a general matter.36 Decisions quashing a patent operated to confer nonparty benefits, by eliminating any property interest in the patent and freeing nonparties from threatened infringement suits.37 Similar litigation to quash federal land patents arose during this period, often administered by federal courts of equity.38 Today, the federal judicial power to quash a patent has become an accepted feature of patent litigation.39 When a party threatened with an infringement suit succeeds in establishing a defense based on the patent’s invalidity, that decision has nonparty protective effects made operational through the doctrine of defensive nonmutual collateral estoppel under the Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation decision.40 Blonder-Tongue in turn relied on the in rem character of patent-validity determinations in concluding that the judgment of invalidity extended beyond the parties to the dispute.41

Part III draws more general conclusions from the history canvassed in Parts I and II. It shows that the key to nonparty protective relief lies in identifying authority for the entry of a decree or judgment that settles issues of property, status, or legality once and for all. Congress would certainly appear to have legislative authority to confer such conclusive adjudicative power, and the federal courts would appear to have power to exercise such authority; the history of prize, patent, and naturalization litigation makes that clear. Once a source of authority has been identified, analysis should focus on an appropriate mechanism for the enforcement of conclusive

determinations. A conclusive adjudication can be enforced through injunctions (as when federal equity courts assert jurisdiction over property and thereby stay all related proceedings to ensure unitary administration of a limited estate) and through nonmutual collateral estoppel as in BlonderTongue. Both remedies affect nonparties to the initial proceeding, and both operate to give effect to the nonparty implications of once-and-for-all statusor property-based adjudication.

Applying Part III’s framework may help to clarify the modern debate over the power of Article III courts to issue forms of nonparty protective relief in the wake of Trump v. CASA, Inc. In CASA, as in the typical suit for universal injunctive relief against disputed federal government activity, one struggles to identify any grant of authority that entitles a single district court to settle the question as a general matter for the country as a whole. Indeed, the tradition of seriatim contestation, percolation, and the rejection of offensive nonparty estoppel against the government all point to the conclusion that district courts have not been authorized to adjudicate once and for all in this setting, a conclusion the CASA Court reached through a narrow reading of the statute it deemed controlling.42 By contrast, the grant of power to quash or set aside agency action in § 706 of the Administrative Procedure Act (APA) may confer once-and-for-all adjudicative authority on the federal courts, especially a court like one in the District of Columbia that has been assigned a special role in overseeing agency action.43

We conclude with a short rumination on use of the historical method in debates over the legitimacy of federal adjudication. We question the wisdom of confining the constitutional power of federal courts to issue injunctive and other equitable relief by reference to the work of early courts of equity.44

True, the early federal courts administered a form of equitable relief that drew broadly on precursors from the days of the divided bench in England. But the federal courts were not confined to those forms. Time and again, we find that Congress redefined the power of federal courts sitting in equity; time and again, the courts themselves broadened the role of equity to ensure complete relief and a fuller record on which to resolve disputed claims. When we ask only what the federal courts of equity were doing by way of nonparty protective injunctive relief in the early Republic, we may miss the broader story about the forms of adjudication that underlay much of the federal docket.

In this Part, we offer an overview of the conventional case against nonparty protective injunctive relief and then explain why convention fails to offer a persuasive account of the history of federal adjudication. The first Section sketches the leading arguments against such relief, arguments predicated on the notion that early exponents of the judicial power embraced the same case-or-controversy assumptions that underlie the modern Court’s adversarial model of federal adjudication. The second Section refutes these assumptions, demonstrating that the history of federal adjudication included a host of uncontested or noncontentious forms of adjudication in which the court was empowered to enter a judgment or decree that settled a question of title or status as a general matter. The origins of some important nonparty effects lie in these in rem or status-based decrees. The final Section sets the stage for Part II’s analysis of patent litigation by examining the historical separation of law and equity. In the early United States, contrary to common assumptions, courts of equity could exercise the power to act in rem. This phenomenon renders patent litigation, one particularly prominent form of in rem litigation, especially relevant to how modern courts of equity exercise their power today.

A. The Modern Case Against Nonparty Protective Relief

The debate over the constitutionality of nonparty protective relief remains very much alive in scholarly literature and in the Supreme Court.45 Scholars base their criticisms of nonparty protective relief on the model of party-based, adversarial adjudication that underlies Article III’s case-orcontroversy requirement.46 Critics argue that federal courts can exercise remedial power only to redress the injuries of parties to the litigation; any decree that sweeps more broadly violates Article III.47 Other scholars defend the practice, pointing to historical evidence of broad nonparty protective relief48 and urging a less rigid understanding of the scope of federal remediation.49 To defenders of the universal injunction’s constitutionality, the debate should center on issues of practice and policy and the institutional competence of Congress and the courts to fashion a constructive set of guideposts for the issuance of such relief.50

For its part, the Court has declined so far to stake out a definitive position on the constitutionality of nonparty protective relief via universal injunctions. In the Trump travel ban litigation, the Court upheld certain aspects of a universal injunction but did not explain what factors informed its decision.51 By contrast, in a more recent case, the Court stripped a lower court decree of its universal elements, earning plaudits from concurring Justices but again failing to explain its rationale for doing so.52 Otherwise, the Court has followed the lead of federal statutes, foreclosing universal relief in the immigration context where the statute calls for individualized adjudication, affirming universal relief in the APA context where the statute seemingly authorizes it, but declining to offer guideposts for the wide range of cases in which federal statutes remain silent on the proper remedy.53

The Court’s diffidence has perhaps encouraged individual Justices in separate concurring opinions to set forth their own views as to the constitutionality of universal or nonparty protective decrees. Building on the work of Professors Sam Bray and John Harrison, Justice Neil Gorsuch has repeatedly expressed doubts about the possibility of federal judicial power to issue such decrees.54 For Justice Gorsuch, as for the scholars he invokes, Article III courts can do their work only in the context of adjudicating adversarial disputes between properly aligned opposing parties with a concrete stake in the dispute’s resolution. If Article III courts can adjudicate claims and grant relief only in relation to the parties that have been properly joined in the litigation, then a universal injunction (one entered in the absence of a certified class action) unconstitutionally confers benefits on individuals who have not appeared in the litigation.55

In contrast to Justice Gorsuch, Justice Brett Kavanaugh has defended such judicial authority, most thoroughly in his separate opinion in Corner Post.56 Drawing on the work of Professor Sohoni, Justice Kavanaugh argued that the APA’s provision for federal courts to “set aside” agency action was a proper grant of legislative authority to issue what was in effect nonparty protective relief.57 To set aside an agency rule or order, according to Justice Kavanaugh, meant to quash or annul agency action as a general matter. Such set-aside orders were essential to allowing unregulated parties to contest agency action and could, Justice Kavanaugh acknowledged, confer benefits on nonparties.58 While he did not tackle the case-or-controversy argument head on, Justice Kavanaugh found ample historical and precedential support for a nonparty protective interpretation of the set-aside power in the context of administrative law and no reason to question the validity of such a power under Article III.59

B. Questioning the Party-Based Framework for Analyzing Nonparty Protective Relief

In contrast to the presumed requirement of party-based, adversarial adjudication that underlies the critique from Article III, a range of early statutes empowered individuals to present a federal claim of right to the federal courts in the absence of any injury in fact or party-based contestation. Federal courts thus entertained such matters as uncontested petitions by foreign nationals seeking naturalized citizenship;60 uncontested applications by federal officials seeking the issuance of warrants to enable a search of specified premises;61 and uncontested applications in admiralty for the recognition of a property claim to a good prize or to a maritime find.62 In all these instances of noncontentious or nonadversarial adjudication, which one of us has chronicled in a series of articles culminating in a book-length treatment of the subject, the point of the litigation was to settle an individual’s claim of right, often a question of status, rather than to resolve a dispute between specified parties.63

Such noncontentious proceedings (based on an inquisitorial, rather than an adversarial, model of adjudication) had deep roots in civil law and were commonplace elements of legal practice in early state and federal courts.64

Importantly, the absence of a dispute over a redressable injury inflicted by the defendant on the plaintiff did not disable the federal courts from adjudicating. As Chief Justice John Marshall explained in Osborn v. Bank of the United States, the power to adjudicate required only the assertion of a claim of right in the form prescribed by law.65 So long as the right or status claimed was predicated on federal law and suit was authorized by Congress, uncontested proceedings (such as applications for naturalization) were understood as “cases” under Article III. Even today, federal courts adjudicate in uncontested proceedings such as voluntary bankruptcy petitions,66 certain habeas proceedings,67 petitions to waive the collection of fees for access to PACER files,68 entry of default issuance of consent decrees.70 Moreover, many status-based proceedings go forward in state court, such as petitions for the initiation of probate proceedings in

judgments,69 and

the common form71 and many matters of family law, including divorce, adoption, and support litigation.72

To be sure, injunctive relief was not essential to the effectuation of uncontested status decrees. But that reality does not make such proceedings irrelevant to the universal injunction debate. Uncontested decrees (such as good prize or naturalized citizenship) bound the whole world through doctrines of res judicata rather than through the issuance of injunctive relief.73 Customary international law obliged the courts of all countries to recognize the prize decrees of other nations, including those issued by the courts of countries at war with one another.74 Similarly, the law of res judicata foreclosed nonparties from relitigating a status decree such as one of naturalized citizenship.75 The availability of nonparty estoppel to ensure recognition and enforcement made injunctions unnecessary.76 Indeed, in

many cases the courts would have been hard pressed to identify the proper party to enjoin until a challenge to the decree arose.

Often the control over a thing or a record was central to the exercise of these forms of uncontested, status-based adjudication. The admiralty court’s decree of good prize, predicated on its control over the vessel, enabled the marshal to sell the vessel to the highest bidder and distribute the proceeds in accordance with law.77 In the naturalization statute, Congress empowered both state and federal courts “of record” to grant such uncontested petitions.78 The whole point of the proceeding was to create a permanent judicial record confirming the fact of naturalization on which all the world could rely. While a modicum of appellate review was available, either in mandamus proceedings to compel admission to citizenship or in proceedings to set aside naturalization decrees based on fraud or error,79 a final decree was said to represent a conclusive determination of the matter and was given conclusive effect against nonparties in later litigation.80

C. The Contested Power of Courts of Equity to Act In Rem

Prize and naturalization proceedings were in rem,81 and some may observe that courts of equity, which issued injunctions, tended to act only in personam. Skeptics might draw on this distinction to question how much in rem proceedings can teach us about courts’ equitable powers to issue universal injunctions. But although the barrier between in rem and in personam proceedings was well-established at common law, it was not impenetrable. This subsection recounts how the boundary became porous even before the formal merger of law and equity, and it brings us to the present day, in which the formal distinction between in rem versus in personam proceedings is, in many ways, a relic.

The hallmark feature of equity’s origin story—that it acts on individuals through decrees enforced by contempt sanctions—broadly distinguishes the historic remedial authority of courts of equity from that of courts of common

law.82 For at law, so the story goes, courts typically act on property through the issuance of judgments.83 The judgment runs against the individual, to be sure. Its enforcement, however, depends not on the common law court’s use of contempt sanctions to compel compliance, but rather on the sheriff’s authority to seize and sell the debtor’s property to satisfy the judgment or to put the rightful owner in possession.84 According to common understanding, then, courts of equity act on individuals, while courts of law act on property. The distinction between remedies at law and in equity explains several curious elements of early modern law. Courts of equity might enforce a trust by directing the trustee to manage property for the exclusive benefit of a beneficiary, recognizing that courts of law would allow a trustee to act for her own account as the party holding legal title to the entrusted property.85 Courts of equity might quiet title to real property by decree, even though the courts of common law would not respect the ownership interest underlying the decree.86 Courts of equity might restrain an individual from enforcing an inequitable or fraudulent judgment even though the common law courts, if left to their own devices, would allow the judgment to operate against the defrauded party.87 In all these instances, the conception of justice or legal

entitlement reflected in the equitable decree would differ, sometimes sharply, from that which common law courts would implement. Hence the persistent idea that equity’s role was to provide relief when remedies at law were inadequate.88

In the old days, well before the merger of law and equity began in the nineteenth century and culminated in the recognition of one civil action in the Federal Rules of Civil Procedure, the law–equity divide was animated by jurisdictional competition.89 The judges of the courts of law sought the fees that expanding judicial business would deliver to the judges’ personal account; similar pecuniary interests animated judges of the courts of equity.90 Common law courts thus urged the creation of barriers to equitable relief, insisting that equity could act only on the party rather than on the property or record underlying the dispute.91 Yet, courts of equity pressed these limits to the breaking point, using writs of assistance and writs of sequestration to take effective control of the property underlying a dispute to ensure its

equitable disposition.92 The equity receivership grew out of the writ of sequestration, based on the idea that property brought constructively within the control of a court of equity was to be managed and eventually distributed as equity might decree.93

One might suppose that the old jealousies between courts of law and equity would have diminished somewhat in the United States. Article III calls for one supreme court to oversee suits in law, equity, and admiralty, thereby proposing to unify justice throughout the nation.94 In implementing Article III, Congress gave Supreme Court Justices and lower federal court judges authority to act in both law and equity and chose to pay them through salaries rather than fees, thereby lessening the likelihood of jurisdictional competition over the law–equity division of business.95 Sure enough, the sharp lines between law and equity blurred over time, aided by the formal merger of law and equity in 1938 and the recognition that the availability of judicial relief should no longer depend on its historic character as legal or equitable.96

Well before the formal merger of law and equity, however, as Professor Walter Wheeler Cook showed in 1915, courts of equity had been acting in rem, rather than only in personam, as so many had assumed and argued.97 Cook demonstrated that courts of equity had the power to seize and sell property to satisfy an equitable decree for money; to put parties in possession of property; to act as courts of record; and to issue decrees that were entitled to res judicata effect in courts of common law.98 While he acknowledged that courts of common law once allowed suits on bonds that a court of equity had invalidated due to fraud, he asked with evident disbelief if the decision, rendered in 1459, is “still the law?”99 Much of his work went to show, persuasively, that it was no longer the law that a court of equity’s decree had no import in a court of law and certainly not in the United States, where courts of equity had been viewed as courts of record from an early date.

The evolving handling of a fraudulent judgment illustrates the consequences of the law’s acceptance of the legitimacy of equitable adjudication. In the days of the divided bench, courts of equity would treat such judgments as a nullity, restraining their enforcement.100 Courts of law, by contrast, had but limited authority to nullify or annul existing judgments, treating them as matters of record that had a more durable quality.101 Equity could restrain the judgment’s enforcement but could not act on the record itself to secure its nullification, creating a gap between law and equity that might cause serious problems of judicial administration. Eventually, lawmakers conferred nullifying authority on courts of equity, and that authority persists today in procedural regimes that merge law and equity.102 Modern Federal Rule of Civil Procedure 60(b) empowers a federal court to

set aside a judgment obtained by fraud without questioning the power of a court acting in equity to nullify a common law judgment.103

To be sure, the divide between law and equity persists to some extent in American law. We preserve a conception of equitable intervention as limited to circumstances in which alternative remedies do not suffice, a precept that Professor Bray has sensibly defended as tending to discourage precipitous judicial innovation.104 But we no longer think of justice, legality, and judicial power in terms of separate powers of courts of law and equity. Federal courts can adjudicate in rem and in personam and no longer preserve a sharp distinction between what they do in law and equity.105 As a consequence, the power of federal courts to conduct some once-and-for-all forms of litigation no longer depends on the divide between law and equity, a conclusion that (as the next part demonstrates) was nicely anticipated in the history of patent nullification litigation in the federal courts of the early Republic.

With a history that reaches back to the middle ages,106 the writ of scire facias developed as a tool for the invalidation of the Crown’s letters patent.107 The first Section of this Part describes practice on the writ of scire facias in England, the migration of scire facias to the British colonies of North America, and the eventual incorporation of scire facias into the remedial toolkit of the federal courts of the early Republic. We show that in the United States, as in England, the writ of scire facias operated to annul or invalidate government action as a general matter, thereby extending the protections of a patent’s nullification beyond the parties to the dispute.

The remaining Sections of this Part examine the way practice on patent nullification shifted from the law to the equity side of the federal docket in the early Republic and eventually took hold in modern patent litigation. We must omit many important details in such an overview of hundreds of years of legal development. But we nonetheless attend carefully to the early federal patent laws, which set the stage for the modern form of patent cancellation relief. The Federal Circuit continues to administer similar relief today. We think the role of early federal courts in cancelling patents casts doubt on claims that nonparty relief lies beyond federal judicial authority.

A. Letters Patent, the Petty Bag Office, and Scire Facias

To understand the operation of the writ of scire facias, one must reckon with the function of letters patent in early modern England. The Crown issued letters patent by directing the Chancellor to affix the great seal to a legal document that was intended to operate as evidence of title.108

Letters patent or open letters were used to confer a broad range of rights, including market charters (monopolies),109 land grants,110 offices or commissions,111 and eventually monopoly rights to market an invention.112 The Chancellor oversaw both the issuance and the recordation of letters patent, providing a sealed document to the patent holder and making a record of the grant by having it enrolled in parchment rolls of the Petty Bag Office.113

The writ of scire facias initiated suit in the Petty Bag Office, also known as the common law or Latin “side” of Chancery, to invalidate letters patent.114 The Chancellor oversaw proceedings on the common law side, just as he did equitable proceedings before the High Court of Chancery. But unlike suits on the equity or English “side,”115 where the Chancellor found the facts based

on witness depositions and affidavits, suits initiated by writ of scire facias in the Petty Bag Office were triable to a jury as an action at law.116 The choice of the Petty Bag Office as the site of litigation reflects the fact that the enrolled records of letters patent were kept there;117 having the record on hand was essential to a successful scire facias suit, as patent cancellation entailed disfiguring the patent itself.118 Thus, the issuance, recordation, adjudication of legality, and cancellation of letters patent were seen as the responsibility of the Chancellor, acting at law instead of in equity.119

Legal proceedings to challenge letters patent by writ of scire facias were relatively straightforward, if sometimes momentous. The Crown, acting in its own interest or lending its name to suit brought on behalf of an interested claimant, would describe the patent’s alleged invalidity and demand the patent’s cancellation.120 The writ itself “command[ed] the Sheriff to warn the defendant to appear in Chancery,” to show cause both as to “why the patent should not be cancelled and vacated” and also “why the patent should not be restored into Chancery there to be cancelled.”121 The Chancellor decided legal questions and sent issues of fact, if any, to the

King’s Bench for the jury to resolve.122 Once the jury decided, the Chancellor was said to be “bound” by their judgment.123

The legal grounds for relief by way of scire facias evolved over time. Initially, the writ issued in three extraordinary circumstances: (i) to cancel letters patent in cases where title had been conferred on two different parties,124 cases described today as interfering patents; (ii) to cancel letters patent that had been obtained through fraud that was apparent on the face of the patent;125 and (iii) to cancel letters patent that the Crown lacked legal power to grant or confer.126 Initially, in the case of interfering patents, only the first patentee could seek cancellation through a writ of scire facias. In one of a series of new-world adaptations, the law of New York and other jurisdictions in the United States would come to accept that the second patentee could institute such a proceeding as well.127

If the Chancellor ruled against the patent’s validity, the remedy was dramatic and potentially far-reaching. One can see that impact in the form of words used to describe the cancellation remedy and in the physical actions taken to effectuate the remedy. The stated goal of the writ was to ensure that invalid letters patent be “revoked, cancelled, vacated and disallowed, annulled, void and invalid, and be altogether bad and held for nothing.”128 That required both the destruction of the patent itself and an amendment to the enrolled records.129 As for the records, cancellation occurred by “drawing strikes through [the enrolment of the patent] like a lettice.”130 Then, “the Master of the Rolls, as keeper of the records of the Court, [would] sign[] his name in the margin of the roll opposite the enrolment of the patent . . . to be cancelled.”131 As for the patent itself, “[t]he cancellation [was] effected by cutting or tearing the Great Seal from the instrument.”132

It followed that a patent’s cancellation might affect a variety of different parties and interests, depending on the nature of the title reflected in the patent. In some early cases, the Crown sought the writ to cancel land grants that had proven inconvenient; King James, for example, sued to reclaim title to manors conveyed by his predecessors, planning to sell them again and replenish the royal coffers.133 Such litigation would primarily benefit the government and primarily disadvantage those who claimed title to the property through the party named in the challenged patent.134 Other forms of scire facias litigation ramified more widely, especially after the industrial revolution took hold in England and Chancery took charge of patent revocation litigation.135 Cancellation of an invention patent would deprive

the owner of legal title and the monopoly it conferred. Such cancellation would thus protect all competing artisans and manufacturers from the threat of infringement suits, even though they were not parties to the scire facias litigation. In addition, cancellation of an interfering patent could lead to the recognition of legal rights in another inventor, whether a first or second patentee.

One can see the broad ramifications of patent cancellation by writ of scire facias in the well-known eighteenth-century case of Rex v. Arkwright.136 The case was brought in the name of the Crown to invalidate Arkwright’s patent of certain carding and spinning technology that was thought crucial to the English textile industry.137 In earlier litigation brought against an alleged infringer in King’s Bench, Arkwright lost when the jury concluded that a defective specification invalidated his patent. But because the rejection of a suit for infringement did not revoke or repeal the patent, Arkwright was free to threaten and bring subsequent infringement suits, including a successful suit in Common Pleas in which the carding patent was upheld. Northern manufacturers, dependent on the technology, asked the Attorney General to institute a scire facias proceeding in Chancery to settle the matter of validity.138 Ultimately, the jury’s verdict in the scire facias proceeding revoked the Arkwright patent, thereby blocking its enforcement against

anyone.139 The writ of scire facias, then, offers a paradigmatic example of the judicial provision of nonparty protective relief.140

The special potency of the nonparty protective relief afforded by the English writ of scire facias was well understood in the United States. Consider treatise-writer Nathan Dane’s account of the distinction between the remedial power of an action and the power of the writ of scire facias:

As Dane explained, the owner of letters patent might illegally use the patent to threaten a party with suit and extort a licensing payment, even where a court had previously declared the patent invalid.142 That possibility necessitated nonparty protective relief. Because, in Dane’s words, a patent owner’s threats could give rise to “a multiplicity of actions,” scire facias was an appropriate remedy to repeal the offensive grant. Notably, neither Dane nor the English authorities suggested that the proceeding required the joinder of all interested parties; instead, the suit, if successful, operated for the benefit of all.

B. Scire Facias in the United States: Colonial Land Grants and Invention Patents

As Dane’s comments make clear, letters patent and litigation to cancel them through writs of scire facias crossed the ocean to the colonies of British North America and took root in the law of the United States. We first briefly sketch colonial and early state litigation over land grants and then discuss the use of scire facias as the basis for land and invention patent litigation in the federal courts of the United States in the early Republic.

1. Scire Facias in the Colonies and States Early colonial references to the use of scire facias tended to focus on cancellation of charters, markets, and land grants, rather than invention patents.143 For example, lengthy proceedings over the revocation of the Massachusetts charter invoked both writs of quo warranto and scire facias.144 Similarly, in the 1705 Maryland case Beale v. Digges, which resolved a dispute over the scope of Lord Baltimore’s land holdings in the colony, the procedural background described use of a writ of scire facias to invalidate an early land grant in the chain of title.145 In New York, the colonial government toyed with the possible use of scire facias to better secure revenue from those who occupied land under the authority of the colony’s large landowners.146 In all such instances, the context makes clear that the parties were describing the prerogative form of the writ of scire facias.147

Both English and colonial practice were to shape the introduction of scire facias into early American state law, as Chief Justice James Kent’s influential 1813 opinion for the New York Supreme Court in Jackson ex dem. Mancius v. Lawton makes clear.148 The plaintiff in Mancius, holding the first land patent to a disputed piece of property, sued in ejectment to oust

a second patent holder.149 The defendant resisted ejectment, proposing to introduce evidence that would undercut the bona fides of the first patent.150 But the New York court refused to consider such evidence in an ejectment proceeding, explaining that in landed property disputes the established practice with respect to “all questions of title, [was] to look to the elder patent, and to give it effect”; in short, a court of law “can only look to the title under the great seal . . . .”151 For relief, the second patentee was obliged to proceed in another tribunal:

It was also, Chief Judge Kent explained, the course followed in Maryland, where suits to vacate patents were pursued “in chancery, founded on a proceeding by bill, information, or scire facias.”153

2. Scire Facias Practice in the Federal Courts of the Early Republic After the federal Constitution took effect, Congress met in New York to legislate the federal government into existence. Alongside its other chores, Congress set up a system of Article III courts: one Supreme Court staffed with six Justices; three peripatetic circuit courts staffed by circuit-riding Justices and local district court judges; and thirteen district courts, each with its own judge, operating within territorial districts that largely conformed to state boundaries.154 Among the powers conferred on these newly minted federal courts, § 14 of the Judiciary Act of 1789 explicitly authorized issuance of the writ of scire facias. It read:

One year later, Congress enacted the nation’s first patent law.156 In the short-lived 1790 statute, Congress assigned three cabinet officers (the Attorney General, Secretary of State, and Secretary of War) to a patent board, charged with reviewing and approving patent applications.157 The act authorized patentees to seek damages for infringement in the context of which the alleged infringer could contest the patent’s legality as a defense to liability.158 Moreover, the statute authorized any person to sue to cancel or revoke a patent that had been obtained surreptitiously or on false suggestion or where the patentee was not in fact the true inventor.159 Similar remedial provisions appeared in the Patent Act of 1793, which superseded the earlier law, relieved the cabinet officials of their patent review obligations, and remained largely in place until 1836.160

Many observers understood the offensive patent-cancellation suits authorized by the Acts of 1790 and 1793 to have been based on English scire

facias practice, and for good reason. By its terms, § 10 of the 1793 statute (closely modeled upon § 5 of the 1790 law) authorized individuals to initiate an offensive suit for repeal of an offending patent by making an oath or affirmation that challenged the patent’s legality. If the district court found ample basis, the court was to grant:

If the patentee failed to show sufficient cause “or if it shall appear, that the patentee was not the true inventor . . . judgment shall be rendered by such court for the repeal of such patent.”162 Although various procedural questions would arise over the statute’s life, including about the right to trial by jury,163 observers agreed that § 10 tracked scire facias in its reliance on an initial show-cause order and its provision for the repeal of the offending patent.164 The analogy to scire facias finds support both in the structure and history of the statute and in the way courts and lawyers interpreted the statute in early patent skirmishes. As for statutory structure, the drafters apparently sought to strike a balance between effective post-issuance review of unlawful patents and effective enforcement of legitimate patent rights. Commenting on an early draft of the 1793 statute, Thomas Jefferson raised both concerns.165 In Jefferson’s telling, if an initial suit in the nature of scire facias were conclusive of the patent’s validity as to all potential contestants, then

patentees would hasten to manufacture a collusive suit to test (and confirm) a patent’s legality. That possibility argued for leaving infringement defendants free to assert a defense of illegality even where a prior decision had upheld the patent. If, on the other hand, Congress were to assign controlling weight to any declaration of the patent’s invalidity, one random infringement suit and jury might rule for invalidate the patent tout court despite its having been repeatedly upheld in other proceedings.166

the defendant

in an

Congress tailored the statute to address these concerns. In § 10, Congress imposed a three-year limitation period (one year in the 1790 statute) on the right of any person to bring an offensive suit to repeal a patent, thereby limiting the threat of wholesale invalidation.167 Meanwhile, in § 6, Congress authorized defendants in retail-infringement suits to contest the legality of a patent throughout its fourteen-year term.168 One can best understand the statute as contemplating that a successful § 10 proceeding to repeal, like a proceeding in the nature of scire facias, would invalidate the patent for all purposes and occasion its cancellation and repeal. By contrast, the patentee’s unsuccessful infringement suit under § 6 (§ 4 in the 1790 statute) might produce less sweeping consequences. The text of § 10 calls for the “repeal” of the patent whereas § 6 authorizes a noninfringement judgment for the defendant and, where fraudulent concealment be properly pled and proven by the defendant at trial, a “declar[ation]” that the patent is “void.”169 Some successful defenses to an infringement action would leave the patent and its official record intact (as in the litigation preceding the scire facias suit in Arkwright); other successful § 6 defenses on a showing of fraud or concealment in the procurement of the patent would invalidate the patent more generally.170

Contemporary courts and lawyers understood this distinction between § 10’s provision for an offensive suit to repeal a patent and § 6’s recognition of defenses to an infringement suit. Thus, in recognizing a threat from what we now describe as patent trolls, Judge Joseph Hopkinson described the two sections as

The judge’s distinction between the community-wide or “public” effect of the time-limited § 10 proceeding and the defendant-specific focus of infringement suits under § 6 confirms that the judge understood that a successful suit to repeal an offending patent conferred nonparty protection. Other judges, including most notably Justice Joseph Story, drew analogies between the mode of litigation contemplated in § 10 and the common law writ of scire facias. Wrestling with the language of the statute as a Circuit Justice in Stearns v. Barrett, Justice Story had no occasion to address the nonparty protective quality of a patent’s repeal, but he evidently understood its operation in those terms; he likened the § 10 proceeding (despite notable differences) to “a scire facias at the common law to repeal a patent.”172 In exploring and harmonizing the two proceedings, Justice Story first observed that, in England, the patent was a record in the Chancery, whereas in the United States the patent records were kept at the Department of State.173 The absence of a judicial record in the forum would ordinarily make scire facias formally inapplicable, Justice Story explained, because “scire facias is a judicial process, issuing upon some record already enrolled

in the court.”174 Despite the imperfect fit, Justice Story concluded that Congress had created a modified scire facias proceeding in § 10, one that first called for a show-cause motion to bring the defendant before the court and then “a judicial writ in the nature of a scire facias at the common law” that necessarily preserved the defendant’s right to trial by jury, just as in England.175 Here we see the hybrid quality of § 10 at work: the proceeding operates against the defendant in personam but the relief operates on the patent in rem.

Justice Story returned to the meaning of § 10 in Ex parte Wood, writing for a unanimous Supreme Court that the right to trial by jury was guaranteed in a § 10 repeal proceeding, just as it was by a writ of scire facias in England.176 In the course of his opinion, moreover, Justice Story offered a telling account of the statute’s operation that confirmed his understanding that the § 10 repeal provision protected the public, broadly understood, rather than only the party initiating the suit. Justice Story acknowledged that trial by jury could make repeal proceedings more cumbersome than trial of such issues to the judge (as the lower court had proposed).177 But trial by jury posed no threat of “public mischiefs.”

Justice Story thus drew a distinction (similar to that offered by Judge Hopkinson) between the “public” protection afforded by the nonparty protective relief contemplated in the § 10 repeal proceeding and the partybased protections afforded to those who successfully defend a party-specific § 6 infringement action.179

Yet even the relief in § 6 suits could extend beyond the parties. In Grant v. Raymond,180 Chief Justice Marshall described § 6 as producing two possible outcomes for a successful defendant: The first, a judgment upholding a defense against infringement, would operate only as to the parties and leave the patent owner free to sue other infringers. The second, a judgment of “vacatur by the court,” would “require the court to enter a judgment not only for the defendant in the particular case, but one which declares the patent to be void.”181 The Court thus viewed the second option as a form of nonparty relief; it was available only on notice and proof to a jury’s satisfaction that the patent owner had procured the patent by fraud in concealing valuable information from the public.182

One might argue that, because they confer unitary relief cancelling letters patent for the public’s benefit, scire facias-type suits do not provide an example of the historic availability of nonparty protective relief. Critics admit that federal courts sometimes issue indivisible decrees that protect parties and confer incidental benefits on nonparties.183 As they see it, a school desegregation decree issued at the behest of a single plaintiff may affect the rights of nonparty schoolchildren; but the radiating effects of the decree and its impact on other schoolchildren do not entail the form of nonparty protection (or burden) to which the critics object.184 Similarly, if a landowner proves entitlement to an order abating a nuisance caused by the federal government’s use of a neighboring plot of land, the incidental benefit conferred on other neighboring landowners does not offend the critics of nonparty protective relief.185 When the impact on nonparties represents an

inescapable consequence of a decision awarding unitary relief, critics do not cry foul.

Whatever one makes of the critics’ acceptance of indivisible relief as a general matter, the federal patent laws of the 1790s did not treat judicial patent invalidation decrees in such terms. As Chief Justice Marshall observed in Grant, a federal court ruling for the defendant in a § 6 infringement proceeding need not cancel the patent or grant nonparty protective relief. When the federal court went further, cancelling a patent pursuant to § 6’s second remedial option, it provided relief to nonparties that was not strictly necessary to provide full protection to the defendant.186 Similarly, a successful § 10 proceeding operating in the nature of the writ of scire facias offered nonparty protective cancellation of the offending patent. Congress thus evidently took the position that the federal courts were competent to provide party-specific relief for invalid patents and, in a proper case, to provide more sweeping nonparty protective relief. The relief in question was not inherently indivisible.

Another feature of § 10 proceedings confirms that Congress did not understand federal judicial power as limited to the remediation of partybased injuries. As we explain at greater length below,187 § 10 empowered “any person, interested or not in the discovery or the patent,”188 to challenge the patent’s validity. We suspect that financial incentives would typically limit such litigation to those with a pecuniary interest in invalidating the patent. But Congress did not require such specific harm, thereby enabling patent cancellation proceedings that would operate primarily for the benefit of others. According to Judge Hopkinson, Congress enacted § 10 for this very purpose: to protect members of the public, such as the “ignorant smith,” from extortionate demands by fraudulent patentees.189 By proceeding on the

assumption that the remedy of patent cancellation was available as a general matter to all litigants, as a specific remedy for interested individuals, and as a specific remedy for defendants in infringement suits, Congress does not appear to have proceeded on the assumption that cancellation relief necessarily and indivisibly operated as a remedy for the injuries alleged by parties to the litigation.

To summarize the lessons so far, the writ of scire facias gave rise in England to a form of nonparty protective relief that operated for the benefit of all, including members of the public who did not enter an appearance in the litigation. Such litigation also appeared on the dockets of the state and federal courts of the early Republic, seeking to cancel or repeal letters patent by proceedings in the nature of scire facias. Both the structure of, and judicial practice under, the 1793 patent statute pointed to the issuance of relief in such proceedings that extended beyond the parties. In likening the § 10 proceeding for repeal of invention patents to its English precursor, Justice Story and Judge Hopkinson both understood that scire facias repeals operated broadly for the benefit of the public. In short, Congress deliberately authorized federal courts to enter both party-specific relief (through § 6) and nonparty protective relief (through §§ 6 and 10), and federal courts willingly accepted such adjudicatory duties. While they debated procedural incidents, such as the right to trial by jury, the judges of the early Republic, as far as we can tell, did not express any concern with the power of Article III courts to provide the nonparty protection contemplated in a § 10 proceeding.

3. The Private Right to Pursue § 10 Cancellation Relief As noted above, § 10 litigation not only afforded nonparty protection but also authorized any member of the public to seek its cancellation. As Judge Hopkinson explained, § 10 gives “the power to any person, interested or not in the discovery or the patent, to call upon the patentee for an examination of his right, and have it repealed, if it shall be found that he is not entitled to it.”190 This striking feature of the early patent statutes— allowing suit by claimants who might lack standing under modern interpretations of Article III’s case-or-controversy requirement—was no anomaly. Other early federal statutes authorized plaintiffs with no injury in fact to pursue claims of right in federal court.191 That was often true of in rem proceedings. As we saw in Part I, neither the captor pursuing a prize decree

nor the foreign national seeking naturalized citizenship in federal court had suffered an injury in fact.192

Congress’s decision to permit any person to sue under § 10 applies republican principles to the implementation of an evolving prerogative writ practice in England. Prerogative writs in England, including scire facias, quo warranto, mandamus, and certiorari,193 were so called by virtue of their close connection to the Crown.194 In the early modern period, the Crown took the lead in the initiation of such suits; the Attorney General was empowered to sue in the name of the Crown to compel officials to perform obligatory duties (mandamus),195 to challenge title to an office or franchise (quo warranto),196 and to cancel letters patent (scire facias).197

Individuals interested in the forms of relief afforded by the prerogative writs came to file petitions with the Crown or Attorney General to initiate suits on their behalf.198 Individuals could pursue relief through prerogative writs as relators, styling the pleadings as brought by an individual suitor “on the relation” of (ex rel.) the Crown.199 By the eighteenth century, though nominally a matter of royal permission, petitions by interested parties for leave to prosecute prerogative writ claims, including those seeking scire

facias relief, were granted as a matter of course.200 Contemporary treatises and abridgments explain that the Attorney General was “bound” to grant the petition in a proper case.201 Legal historian S. A. De Smith confirms that individual suitors started with a petition in seeking the cancellation of prejudicial letters patent through the writ of scire facias.202

In contrast to prerogative-writ practice in England, the Patent Act of 1793 included no requirement that the individual pursuing such relief first petition the Attorney General for leave to proceed, nor did it explicitly require that the individual have a personal stake in the patent’s legality.203 Yet Congress’s decision to switch to an as-of-right model of litigation may have made sense for a Republic that was self-consciously seeking to distance itself from the trappings of the English monarchy.204 Perhaps that’s why observers referred to the practice as “in the nature of a scire facias”;205

several departures from English law were embedded in the United States statute. For instance, instead of a humble petition to the Crown,206 proceedings in the United States began with a show-cause motion, inviting the district court (instead of the executive) to assess the merits of the claim before requiring the defendant to respond.207 If individuals were to enjoy a legal right to secure the relief in question, as they were in England, republican legislators might sensibly dispense with the petition to the Crown or government as a vestige of monarchy.208 Thus, in the days of the early Republic, uninjured individuals could pursue a writ of scire facias without consulting the executive.

The failure of Congress to limit litigation to suitors with an injury or interest in the patent also seems less anomalous than one familiar with recent Article III doctrinal developments might assume. The incentive structure created by the patent regime would tend to limit litigation to suits brought by plaintiffs with a substantial personal interest in the patent’s legality. Litigation was expensive, then as now, and the patent law did not create any bounty or reward for those who successfully sued to cancel an unlawful patent.209 In addition, the patent statutes confronted the plaintiff with the very

real prospect of having to pay the defendant’s costs if the patent’s validity were upheld.210 It appears, then, that Congress was relying on financial self-interest to limit the range of potential suitors to individuals with a strong basis for contesting the patent and a strong interest in securing cancellation relief.211

In offering interested individuals a right to challenge newly issued patents, Congress transformed the nature of the cancellation proceeding from one controlled by the government to one that relied on private interest. That, indeed, was precisely the way Judge Hopkinson described the statute in the district of Pennsylvania.212 After a show-cause order issued to initiate cancellation proceedings, the plaintiff asked Judge Hopkinson to substitute the government of the United States as the plaintiff in the action.213 The judge refused to do so, explaining that the patent laws contained

The district judge thus recognized both the right of the individual to pursue cancellation relief without the government’s approval or participation and the very real prospect that such relief, if granted, would broadly affect the

public by restoring the interest in common property. As it was to do in many other statutes enacted in the early Republic, Congress sought to ensure the enforcement of federal patent laws by empowering private actors to initiate proceedings in federal court that were affected with a public interest.215

C. The Transition from Law to Equity

Over the course of the nineteenth century, suits for the repeal of patents that had once invoked the common law authority of the federal courts came to sound in equity.216 A variety of factors informed this change, including expanded statutory authority and a growing perception that suits in equity provided a more suitable litigation vehicle for the consideration of patent validity. Around the mid-nineteenth century, the switch from law to equity was complete and scire facias no longer played a central role in judicial cancellation of letters patent. By then, the nonparty protective elements of the scire facias proceeding had entered the remedial toolkit of courts of equity. This subsection sketches out this law-to-equity migration.

The drift to equity began in England. In the leading decision, AttorneyGeneral v. Vernon,217 the English High Court of Chancery ruled in 1684 that it would entertain a bill or information in equity to “set aside” letters patent obtained through fraud.218 The Attorney General had brought the complaint on behalf of the Crown, seeking to recover title to a sizable parcel of land.219 The complaint alleged that the grant had been acquired by “surprise” and “false particulars,” with “many things being omitted or not valued,” along

with other defects.220 The defendants objected to an equitable proceeding on a number of grounds: scire facias provided the exclusive remedy for such claims; equitable interposition would endanger all patents and deprive the King’s seal of its power.221 Without directly addressing all these arguments, the Lord Keeper offered a concise explanation of his decision to allow the claim to proceed: “The question is short, whether there be a fraud or not? If a fraud, it is properly relievable here.”222

The Lord Keeper’s decision to uphold equitable intervention to relieve against fraud left other questions unresolved.223 Perhaps most significantly, the Lord Keeper had no occasion to discuss the scope of equity’s remedial power in the event the patent were to be “set aside.” But the report indicates that the defendants understood that a decision upholding the Attorney General’s claim would result in the cancellation of their patent and the invalidation of their title to the land. One can see that assumption reflected in the defendants’ argument that a bill in Chancery had never before been used to “repeal” letters patent.224 The assumption also underlies the defendants’ unsuccessful argument that letters patent, as a “matter of record,” “cannot be disannulled” on the “English side of the Court of Chancery,” and therefore cannot “be vacated or cancelled by a decree on an English bill.”225

Building on the English decision in Vernon, Chief Justice James Kent’s opinion in Jackson ex dem. Mancius v. Lawton played an important role in persuading the courts of the United States to expand the scope of equitable relief to encompass the cancellation of letters patent. Ruling in an ejectment proceeding, Chief Justice Kent held that the defendant could not attack the legality of the plaintiff’s land patent as a defense to ejectment.226 Instead, such matters of record were properly contested in cancellation proceedings.227 Kent understood that cancellation in England often took the form of a scire facias proceeding.228 But Kent made clear that bills in equity were also available to private litigants for land patent challenges.229 He based this conclusion both on the authority of an earlier Maryland decision and on the decision of the English High Court of Chancery in Vernon to sustain a bill to “set aside [letters patent] by a decree.”230

Chief Justice Marshall embraced Kent’s preference for the use of bills in equity to contest land patent validity in the 1815 case Polk’s Lessee v. Wendal, which also arose as an ejectment suit that turned on the priority of conflicting land patents.231 In the opinion, Chief Justice Marshall noted that it was an open question whether, in some cases, “a party may, at law, go beyond the grant for the purpose of avoiding it”232—whether a court could look at the circumstances behind the grant’s procurement to determine its legality. Chief Justice Marshall reasoned that if no judicial body could examine “the means by which an elder title was acquired,” it would violate “the great principles of justice and law.”233 A court of equity was “better adapted” to this task,234 because it allowed the judge to “annex equitable conditions to its decree, or order what may be reasonable, without absolutely avoiding a whole grant.”235 Just as in Vernon, then, the Court in Polk’s Lessee invited courts of equity to look beyond the instrument itself to determine whether illicit means were used to obtain the patent, filling a gap

the common law left open.236 Notably, Chief Justice Marshall clearly contemplated both the possibility of annulling the “whole grant” and providing more limited relief.

Although the Court did not grant a cancellation remedy in Polk’s Lessee, Chief Justice Marshall’s embrace of the bill in equity for that purpose took hold. Consider United States v. Hughes, an 1850 case in which the Supreme Court, sitting in equity, provided nonparty protective relief through the cancellation of a land patent.237 In Hughes, the Attorney General brought a bill in equity on behalf of two citizens, Robert Sewall and Franklin Hudson, to challenge the land patent of David Hughes, contending that Hughes had obtained the patent through fraud.238 Concluding that Hughes had committed fraud, the Court first “decree[ed]” Hughes’s patent “vacated, and declared null and void.”239 It then “ordered and decreed” that, “within one calendar month from the time of filing and entering the mandate,” Hughes was to “surrender” the patent to the Circuit Court for the District of Louisiana.240 And the Court “further adjudged and decreed” that Hughes was “for ever enjoined from prosecuting any suit in law or equity on said patent, as evidence of title.”241

Such a proceeding plainly drew its inspiration from the writ of scire facias, as both Chief Justice Kent and Chief Justice Marshall contemplated. First, the plaintiff brought a bill in equity to prevent the use of the patent in

future cases, just as did a litigant suing out a writ of scire facias. Second, the legal basis for the patent challenge—that it had been “fraudulently obtained”—corresponded to one of the bases for granting a writ of scire facias at common law. Third, the proceeding was deliberately brought with the interest of other parties in mind; Sewall and Hudson were claiming under the prior ownership of another party (Goodbee) whose right Hughes had ignored. Most importantly, the scope of the remedy that the Court provided tracked scire facias in affording relief that extended to third parties. A successful scire facias suit struck the patent from the records and snipped the Great Seal off the patent. Likewise, the Hughes Court’s decree did not simply reject Hughes’s patent in the case at hand—it required him to surrender the patent and it permanently enjoined him from using the patent to prosecute any suit.

To be sure, the nonparty protective relief secured in Hughes came in the course of a suit brought by the government. But the Court did not view the government’s status as the petitioner in equity as affording it any special dispensation; to the contrary, the Court reasoned from the right of individuals to seek cancellation relief in equity to conclude that the government could invoke the same remedy:

Building on the analogy to private litigation, the Court “regretted” that the government had proceeded by an information in equity rather than a “simple bill in equity”;243 the information was said to have been an attempt to “assimilate[e] the proceeding to an information by the Attorney-General on

behalf of the crown, in England, to repeal a patent.”244 As the Court explained, private parties were entitled to equitable relief and “similar remedies may be employed by the United States as owners, that are applicable in cases of others.”245

While the federal courts, largely on their own, chose equity as the framework best suited for litigation of land patents, Congress more actively encouraged the use of equity for suits to cancel invention patents. In 1819, shortly after Chief Justice Marshall’s opinion in Polk’s Lessee, Congress passed a statute granting federal courts equity jurisdiction over invention patent matters.246 In 1836, Congress chose to subject new patents to judicial review in equity, moving away from its earlier reliance on scire facias proceedings for patent challenges.247 Section 16 of the Patent Act of 1836,

which governed interference suits, stated that an interested party “may have remedy by bill in equity,”248 thereby authorizing both the patent applicant and other inventors to contest the agency’s decision about the rights at issue. Following the lead of Polk’s Lessee, moreover, the statute explicitly conferred a substantial measure of discretion on the courts of equity. Instead of an all-or-nothing decision on writ of scire facias, the 1836 statute authorized the federal court to “adjudge and declare either the patents void in the whole or in part.”249 By the same token, the federal court could declare the patent in question “inoperative and invalid in any particular part or portion of the United States.”250 Both provisions seem obviously designed to allow the federal court to tailor relief to fit the particulars of the case.251

Congress may have seen other advantages in the switch from law to equity. Recall that Justice Story’s embrace of trial by jury in scire facias proceedings under the Act of 1793 had appeared to at least some judges to have encumbered the ready invalidation of weak or fraudulent patents.252 By 1836, Congress may have come to share that criticism of proceedings at law. According to the report accompanying the legislation, a primary goal of the Patent Act of 1836 was to reduce the number and untoward consequences of fraudulent patents.253 In other respects, however, patent reforms built upon

changes that Congress had already adopted. For example, the 1793 legislation innovated by authorizing suits in the nature of scire facias to proceed in the district of the defendant’s residence, rather than being “founded on some record.”254 Bills in equity similarly proceeded against the defendant as a party, rather than predicating suit on the court’s control of the record under review.255 Even this innovation, however, builds on the practice in England; the decision in Attorney General v. Vernon to authorize cancellation remedies in equity appears to have rested in part on the fact the records were inaccessible.256

Other changes occurred in the equity arena during the last half of the nineteenth century. As suits in equity became the preferred vehicle for patent repeals, the circumstances in which equity applied broadened. Recall that Chief Justice Kent relied on Vernon in concluding that litigants could bring a “bill in the equity side” of the Court of Chancery to “set aside letters patent obtained by fraud.”257 Embracing these ideas, Chief Justice Marshall in Polk’s Lessee emphasized the importance of empowering courts of equity to examine “the means by which an elder title was acquired.”258 In authorizing an examination of claims of fraud, Polk’s Lessee did not clearly authorize courts of equity to exercise broad or exclusive jurisdiction over claims to invalidate letters patent. Indeed, the Court explained that a patent was “necessarily examinable at law” if the grant was “absolutely void,” whether because “the state ha[d] no title to the thing granted” or “the officer had no

authority to issue the grant.”259 Polk’s Lessee thus helped to encourage the turn to equity while leaving other remedies intact.

In 1864, the Supreme Court would clarify that “fraud in the patentee [is not] the only ground upon which a bill will be sustained.”260 Writing in the context of a suit to cancel land grants that apparently conflicted with the claims of the Delaware tribe under federal treaties, the Court in United States v. Stone confirmed the distinctive role of courts of equity. For starters, the alteration of the record of land titles was a matter for resolution by a judicial tribunal, rather than an agent of the federal Executive Branch.261 Moreover, a suitor could bring a bill in equity to challenge a patent that was “issued unadvisedly or by mistake, or where the officer had no authority in law to grant them, or where another party has a higher equity and should have received the patent.”262 In short, the scope of equitable remediation had come to resemble that on a common law writ of scire facias, rather than being confined to the equity practices of the High Court of Chancery in 1789.

Further evolution occurred and much the same model of patent litigation came to govern invention patents as well as land patents. Thus, in Mowry v. Whitney, an invention case, the Court traced the evolution in practice as it had occurred to the date of its decision in 1871:

In describing the transition from law to equity and the expansion of equitable remedies, the Mowry Court by no means upheld judicial power to proceed in the teeth of congressional directions to the contrary. Indeed, the Court imposed meaningful restrictions on the scope of the equitable suit to cancel

invention patents that it traced to the text of the Patent Act of 1836.264 But a commentator’s account of these developments appears rightly to conclude that during the nineteenth century “equitable remedies . . . [had] taken the place of scire facias for the cancellation or annulment of patents on inventions and patents to land.”265

The migration of relief from the all-or-nothing cancellation order that was available through the writ of scire facias to the more tailored relief available through equity reveals that scire facias set the stage for the more discerning extension of nonparty protection that critics of the practice may find historically relevant. Equity was attractive, in Chief Justice Marshall’s telling, precisely because it allowed both a searching inquiry into the validity of the grant and a form of relief that extended only as far as necessary to provide appropriate relief. Similarly, the equitable power conferred in the Act of 1836 enabled courts to provide relief for the parties that might extend only to one part of the country or to an identified collection of legal interests, rather than operating as a total annulment or annihilation of the grant. Although courts of equity continued in land-patent cases to order the nullification or destruction of the patent and enjoin its enforcement against other nonparties, courts’ equitable flexibility to tailor relief reveals nonparty protective practices that did not simply inhere in the all-or-nothing cancellation that a writ of scire facias provided.

D. Modern Echoes of the Early Republic’s Reliance on Nonparty Protective Relief

Nonparty protective relief continues to characterize patent litigation today. In the well-known case of Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, the Supreme Court applied the doctrine of nonmutual collateral estoppel to extend the benefits of an initial patent-claim invalidity adjudication.266 In the Foundation’s first suit, naming Winegard as

the defendant, the U.S. Court of Appeals for the Eighth Circuit upheld a judgment declaring the foundation’s patent claim to antenna technology invalid.267 In the foundation’s second suit, brought against a different set of defendants (Blonder-Tongue and its customers), the U.S. Court of Appeals for Seventh Circuit affirmed a district court judgment upholding patent claim validity.268 Having granted review to resolve the validity question, the Court held that the doctrine of nonmutual estoppel should have been applied to block the second proceeding.269 In effect, then, the first invalidity determination in litigation against Winegard was held to invalidate the Foundation’s patent as a general matter and confer benefits on BlonderTongue and other nonparties to the earlier proceeding.270

In reaching that conclusion, the Court relied on changes in the law of claim and issue preclusion that had relaxed the requirement of mutuality and on the in rem nature of a decree of patent claim invalidity. Pointing to the report of a presidential commission on the patent system, the Court approvingly cited the idea that a “final federal judicial determination declaring a patent claim invalid shall be in rem, and the cancellation of such claim shall be indicated on all patent copies subsequently distributed by the Patent Office.”271 That bears some close resemblance to the form of relief available by proceedings in the nature of scire facias under the Patent Act of 1793. The Court further relied on the Commission’s suggestion that a patentee, having had his “‘day in court,’ . . . should not be allowed to harass others on the basis of an invalid claim. There are few, if any, logical grounds for permitting him to clutter crowded court dockets and to subject others to costly litigation.”272 While Congress did not immediately enact legislation to implement a once-and-for-all system of adjudication in response to the Commission’s report, the Court’s application of nonmutual estoppel

achieved much the same goal. Today, when the Federal Circuit reviews and finally decides the issue of patent claim validity on appeal from a federal district court or from the U.S. Patent and Trademark Office (USPTO), its judgment of invalidity will effectively cancel the patent claim in question.273 The history of scire facias shows that in doing so, the court provides relief to nonparties to the proceeding.

Cancellation also confers nonparty protection under the terms of the Smith–Leahy America Invents Act,274 which assigns many patent-claimvalidity issues to the Patent and Trademark Appellate Board (PTAB), an agency housed within the USPTO, pending review in the U.S. Court of Appeals for the Federal Circuit. After an initial grant, the PTAB can assess patent claim validity through either inter partes or post-grant review.275 The inter partes review process, by far the most common,276 bears some resemblance to proceedings in the nature of scire facias under the Patent Act of 1793. For starters, any person can initiate such review (without necessarily showing that they have standing to sue in an Article III court under current doctrine).277 In addition, the petition for inter partes review goes forward only after a discretionary determination (by the USPTO’s director) that the petition for review has a “reasonable likelihood” of success.278 Finally, if the PTAB invalidates one or more of the claims in the patent it does so for all purposes, issuing and publishing a certificate to that effect.279 Just as it did under the Patent Acts of 1790 and 1793, invalidation of the patent claim protects nonparties from any threat of an infringement suit.

In this concluding part of the Article, we draw on Parts I and II in suggesting a framework for the analysis of the constitutional power of federal courts to issue nonparty protective relief. The first Section of this Part distills what we regard as four lessons from the history of patent cancellation proceedings. Those lessons, we believe, cast serious doubt on any argument that the Constitution was understood by those making and enforcing law in

the Founding Era as a barrier to judicial issuance of nonparty protective relief. True, understandings of the Constitution’s meaning change over time,280 and critics might argue that the case-or-controversy doctrine imposes relevant limits on judicial authority. But we find little evidence that the architects of early Republican forms of nonparty protective relief shared such an understanding of Article III.

The second Section of this Part urges that, instead of imposing constitutional limits, courts evaluating the legality of nonparty protective relief should focus on the statutes that confer judicial authority. History teaches that Congress sometimes emphasizes the need for adversarial contestation and sometimes authorizes once-and-for-all adjudication of rights through in rem proceedings. Applying an approach that defers to congressional primacy would bolster the CASA Court’s statutory conclusion that the relevant authority had not been conferred. At the same time, an emphasis on legislative authority might help to distinguish CASA’s treatment of the general equitable power of federal courts from federal judicial power to annul agency action under the Administrative Procedure Act and other statutes that authorize nonparty protective relief.

A. Four Lessons from the Early Republic

Just-so stories about the history of Article III adjudication abound, stories that highlight continuities between current practice and the distant past. As participants in a common law discursive tradition, lawyers and jurists in the United States naturally attend to past practice as they argue about the best way forward.281 But the history remains messy and one cannot always draw a straight line from the past to the present. Our necessarily abbreviated account of patent cancellation litigation, originating in 1790 and remaining as modified on the books today, doubtless suffers from this justso quality and may gloss over many rough spots along the way.282

Yet the history of patent litigation, especially when coupled with other judicial practices in the late eighteenth and early nineteenth centuries, does establish at least four historical facts about the Founding Era’s conception of judicial power. First, like the courts at Westminster, federal courts in the United States were allowed and expected to adjudicate once and for all, issuing judgments that ramified beyond the parties to the litigation when authorized to do so by Congress. Often, this conclusive judgment occurred in connection with proceedings of an in rem character: adjudicating title to property (as in prize cases), the validity of a record (as in suits to cancel letters patent), and the status of an individual (as in petitions for naturalization). As we have seen, a more complete account of the historical power of Article III courts includes both in rem and in personam suits.283

Second, federal courts were allowed and expected when authorized by Congress to entertain suits by litigants asserting a claim of right that would not meet today’s Article III standing requirements. Historically accepted claims would include both no-injury suits by qui tam informers to collect a bounty for the enforcement of public law and suits to set up a claim of right under federal law, such as title to a captured vessel or title to naturalized citizenship.284 Unlike the modern insistence on limiting federal courts’ adjudicatory power to suits seeking redress of injuries in an adversarial context, Founding Era federal courts accepted congressional assignments to conduct their work in a nonadversarial or inquisitorial manner.

to entertain private suits

that effectively performed

Third, when authorized by Congress, federal courts were allowed and expected law enforcement chores for the benefit of the public. That was true in New England, where private parties enforced a federal law prohibiting citizens of the United States from participating in the international trade in enslaved people and in a range of similar proceedings nicely catalogued in a recent paper.285 Much the same thing was understood to have occurred in connection with patent cancellation, as Judge Hopkinson explained. Suits to cancel a patent under the Patent Act of 1793, if successful, were understood to confer a benefit on the public. But Congress was within its power to treat patent cancellation proceedings, though affected with a public interest, as a matter of private right. Hence, private parties could sue in the United States

to cancel a patent without, as in England, first securing the participation or permission of the government.286 Whether to rely on private litigation to enforce federal law, or to prefer enforcement suits instituted by public officials, was a choice for Congress to make.

Critics of nonparty protective relief may nonetheless seek to downplay the significance of these facts of historic practice. One possible line of argument might emphasize the distinctive role of injunctive relief, coupled with a claim that courts of equity did not as a matter of history operate in rem. But that claim leads us to a fourth lesson of history: Article III courts were empowered to hear all the forms of litigation available in secular English courts, including suits in law, equity, and admiralty.287 If a federal court exercised the power to decree on an all-or-nothing basis, as in admiralty or patent cancellation proceedings, then one struggles to identify a constitutional principle that would foreclose the same court from granting a similar all-or-nothing decree while sitting in equity. Even in seventeenthcentury England, where the line between law and equity was more sharply etched, the High Court of Chancery agreed in Vernon to hear a suit brought to set aside a patent for fraud despite an argument that such relief was available only in proceedings at law where the record was located.288 As Vernon suggests, and as we saw in Part I’s summary, courts of equity had come to exercise power to decree in rem well before the formal merger of law and equity.289

If anything, in the United States the line between law and equity was more fluid than that in England, even early on. While Justice Story understood proceedings in the nature of scire facias as suits at law to which the right to trial by jury attached, Congress was free to reconfigure those proceedings as suits in equity.290 And when a federal court heard a landpatent challenge upon a bill in equity, the power to cancel the patent as a general matter remained intact. Yet, the court also had the option to refrain from voiding the patent entirely; through its equitable powers, the court could “order what [was] reasonable” or modify its decree in light of

the circumstances.291 That flexibility might result in relief that extended only to the parties or relief that operated more generally. Such tailored relief was also contemplated in the nation’s early patent laws, where a successful defense of a patent infringement suit might operate only for the benefit of the defendant, or for the public at large.292 Certainly, the land patent decree in United States v. Hughes, as reproduced in this Article’s epigram, foreclosed the putative owner from bringing any suit to enforce the nullified patent.

B. Nonparty Protective Relief as a Matter of Legislative Design

Congress’s apparent power to authorize courts to issue nonparty protective decrees and judgments, both in patent cancellation and other settings, suggests that Article III as historically understood may have little resolving power in the debate over current practice. But federal courts might nonetheless develop a doctrine that attends more closely to the question whether Congress has authorized such adjudication. Apart from explicit textual provisions that signal a desire to authorize or foreclose all-or-nothing adjudication,293 contextual clues might suggest a congressional desire to empower the federal courts to adjudicate decisively. Here, we explore the relevance of a handful of such clues, including legislation that consolidates adjudication in a single court and does so for the apparent purpose of encouraging that court to settle a question and, perhaps, to do so on the basis of expertise in the field.

Professor Bray rightly encouraged attention to the problem of dispersed litigation with his criticism of the pathologies of modern, multi-chancellor adjudication.294 Indeed, the CASA Court agreed with Professor Bray’s understanding of the problems that arise from dispersed litigation, including its tendency to create opportunities for forum shopping and to foreclose lower court percolation.295 In a litigation setting where the parties have broad

control over the locus of the litigation and can steer the matter to a welldisposed federal judge, empowering that judge to issue broad nonparty protective relief sets the stage for many of the concerns that have attracted the attention of modern critics.296 One might defend the CASA Court’s decision to exercise caution when confronted with an argument that Congress intended to authorize all-or-nothing litigation in that setting.297

Indeed, when we examine the history of patent-validity litigation, we find that Congress coupled all-or-nothing adjudicatory power with the consolidation of litigation in a single court.298 In the Patent Act of 1793, Congress chose one federal court—the district court where the patent owner resided—for the litigation of patent cancellation claims. Such a choice made sense in limiting the plaintiff to a single, reasonably convenient venue in which the defendant would presumably have ready access to any records necessary to defend patent validity. Today, Congress has consolidated patent-validity determinations in the Federal Circuit, on review of either federal district court or PTAB decisions.299 The congressional assignment was evidently meant to consolidate such decisions before an expert tribunal. Other tribunals specially designed by Congress have tended to understand the structural framework for consolidated litigation as a justification for all-or-nothing adjudication. Professor Sohoni reports that three-judge courts, constructed by Congress in the early twentieth century to hear Ex parte Young suits challenging the constitutionality of state laws,300 were sites for the early issuance of nonparty protective relief.301 Such courts were staffed with a view towards expertise: the panel was to include district judges from the state in question (judges presumptively familiar with that state’s laws) and a circuit judge (a judge presumptively familiar with the task

of finding the federal law applicable on appeal).302 These panels acted, moreover, in the shadow of mandatory Supreme Court review, and therefore understood that their decree would set the stage for a decision that would settle the matter once and for all.

The set-aside provision in § 706 of the APA bears some resemblance to other statutes that have been understood to confer all-or-nothing adjudicatory power.303 And while the D.C. Circuit does not enjoy a monopoly on APA setaside proceedings, it provides a natural forum for such litigation.304 In addition, Congress has addressed forum shopping concerns by taking some steps to harmonize and consolidate challenges to agency action.305 Courts concerned with forum shopping might choose to limit set-aside relief to

circumstances in which forum consolidation preferences tend to empower a single tribunal, preferably an appellate court. When no forum guidance has been supplied (as with the many collateral attacks on presidential action mounted on an Ex parte Young theory in the federal district courts), CASA requires that federal courts display greater circumspection in assessing their authority to grant nonparty protective relief.

Such circumspection will leave room for properly tailored injunctive decrees that have been structured less to settle the legal question once and for all than to provide complete relief to the parties. Scholars and jurists have defended the necessity of some nonparty protections to address the complexity of the administrative machinery and to prevent the confusion threatened by the mobility of the parties.306 CASA holds that federal courts without once-and-for-all settlement authority can continue to issue broad decrees if justified by such complete-relief concerns.

The CASA Court’s emphasis on statutory authority leaves open the question whether universal injunctions and other nonparty protective decrees exceed the bounds of Article III, as historically understood. This Article finds ample evidence that the legislative, executive, and judicial branches of government in the early Republic shared the view that federal courts could properly enter such relief. Along with other in rem proceedings, practice in the nature of scire facias was an accepted feature of common law litigation in England, was incorporated into colonial and state practice in America, and eventually was embedded in the nation’s first federal patent laws. In time, nineteenth-century federal courts of equity came to issue nonparty protective relief in patent cancellation proceedings and the writ of scire facias drifted into obscurity. Whatever the wisdom of such nonparty relief today, the argument that it inherently exceeds the scope of federal judicial power as historically understood strikes us as overstated.

Concluding that early and continuing forms of patent cancellation proceedings (among many other practices) cast doubt on the claim that history forecloses nonparty protective relief, we suggest an alternative analytical focus. Instead of emphasizing supposed Article III limitations on federal judicial power, the assessment of nonparty protection should center on whether Congress has authorized lower federal courts to adjudicate once and for all. Inquiry into that question of authority should highlight evidence that Congress meant for a lower court to settle a legal issue conclusively. Injunctions to effectuate such once-and-for-all decisions may well be

appropriate. But a focus on the relief’s injunctive nature may tend to distract attention from what should be a close assessment of the nature and scope of the adjudicative power with which Congress has entrusted the federal courts.

--- FOOTNOTES ---

Copyright 2025 by James E. Pfander & Mary E. Zakowski

Printed in U.S.A. Vol. 120, No. 3

INTRODUCTION ............................................................................................................. 625 I. RECOVERING THE HISTORY OF NONPARTY ADJUDICATION ................................... 634 A. The Modern Case Against Nonparty Protective Relief ............................... 635 B. Questioning the Party-Based Framework for Analyzing Nonparty

Protective Relief .......................................................................................... 637 C. The Contested Power of Courts of Equity to Act In Rem ............................ 640 II. SCIRE FACIAS: NONPARTY PROTECTION IN ENGLAND AND THE UNITED STATES ... 646 A. Letters Patent, the Petty Bag Office, and Scire Facias ............................... 646 B. Scire Facias in the United States: Colonial Land Grants and Invention

Patents ......................................................................................................... 652 C. The Transition from Law to Equity ............................................................. 667 D. Modern Echoes of the Early Republic’s Reliance on Nonparty

Protective Relief .......................................................................................... 676 III. SOME LESSONS FROM HISTORY ............................................................................ 678 A. Four Lessons from the Early Republic ........................................................ 679 B. Nonparty Protective Relief as a Matter of Legislative Design ................... 682 CONCLUSION ................................................................................................................ 685

INTRODUCTION

† 52 U.S. (11 How.) 552, 567 (1850). 1 Commentators differ on the proper terminology for the form of injunctive relief under consideration. Some say “nationwide,” Alan M. Trammell, Demystifying Nationwide Injunctions, 98 TEX. L. REV. 67, 67 (2019); others say “national,” Samuel L. Bray, Multiple Chancellors: Reforming the National Injunction, 131 HARV. L. REV. 417, 417 (2017). We share Professor Howard Wasserman’s view that the term “universal injunction” accurately conveys the scope of the injunction as one that extends its protection beyond the named plaintiffs to encompass all persons and entities. See Howard M. Wasserman, “Nationwide” Injunctions Are Really “Universal” Injunctions and They Are Never Appropriate, 22 LEWIS & CLARK L. REV. 335, 350 (2018).

2 See Mila Sohoni, The Lost History of the “Universal” Injunction, 133 HARV. L. REV. 920, 1001 (2020) (arguing against the claim that universal injunctions violate the Constitution but acknowledging that such relief may present policy concerns); Amanda Frost, In Defense of Nationwide Injunctions, 93 N.Y.U. L. REV. 1065, 1087–88 (2018) (same); Trammell, supra note 1, at 90 (viewing the issuance of universal injunctions as a matter of judicial “pruden[ce]”); Zachary D. Clopton, National Injunctions and Preclusion, 118 MICH. L. REV. 1, 10 (2019) (rejecting the view that values of percolation and mutuality of preclusion undermine the case for universal injunctions); cf. Samuel L. Bray, The Purpose of the Preliminary Injunction, 78 VAND. L. REV. 809, 864–865 (2025) (offering a detailed, internal critique of universal injunctions from within the law of remedies).

3 See Bray, supra note 1, at 428–45. 4 Id. at 420, 428–38. 5 Sohoni, supra note 2, at 937–43, 958–65, 958 n.241.

6 In one familiar version of this suggested reliance on history to explicate the meaning of Article III, Justice Felix Frankfurter argued that modern federal courts should understand the meaning of judicial power and other Article III constructs by consulting the judicial business conducted by “the courts of Westminster when the Constitution was framed.” Joint Anti-Fascist Refugee Comm. v. McGrath, 341 U.S. 123, 150 (1951) (Frankfurter, J., concurring); see also FEC v. Akins, 524 U.S. 11, 24 (1998) (describing controversies in the courts at Westminster as disputes involving a concrete harm); Vt. Agency of Nat. Res. v. United States ex rel. Stevens, 529 U.S. 765, 774 (2000) (citing Justice Frankfurter’s opinion in Coleman v. Miller, 307 U.S. 433, 460 (1939), for the rule that we look to courts at Westminster to understand Article III’s case-or-controversy requirement); Sprint Commc’ns Co. v. APCC Servs., Inc., 554 U.S. 269, 311–12 (2008) (Roberts, C.J., dissenting) (same).

7 145 S. Ct. 2540, 2561 (2025). 8 Id. at 2551 (quoting Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S.

308, 318 (1999 .

9 Id. 10 Id. at 2554. 11 The CASA Court did not address, let alone resolve, the broader question of universal injunctions’ constitutionality. Rather, its “decision rest[ed] solely on the statutory authority that federal courts possess under the Judiciary Act of 1789” and “express[ed] no view” as to whether “Article III forecloses universal relief.” Id. at 2550 n.4. It also noted that “[n]othing” in its decision “resolve[d] the distinct question” of whether federal courts may vacate federal agency action—i.e., grant universal relief—under § 706(2) of the Administrative Procedure Act, 5 U.S.C. § 706(2), a provision some read to confer the authority in question and to present the constitutional issue more directly. Id. at 2554 n.10; see infra notes 42, 55–58 and accompanying text.

12 See infra Section I.B (discussing prize actions); see also James E. Pfander & Daniel D. Birk, Article III Judicial Power, the Adverse-Party Requirement, and Non-Contentious Jurisdiction, 124 YALE L.J. 1346, 1368–70 (2015) (providing an overview of prize and salvage cases). In general, property was deemed to be hostile based off the enemy status of its owner; only hostile property could be adjudicated under prize law. RUFUS WAPLES, A TREATISE ON PROCEEDINGS IN REM 389–406 (1882); see also WILLIAM R. CASTO, FOREIGN AFFAIRS AND THE CONSTITUTION IN THE AGE OF FIGHTING SAILS 37–39 (2006) (describing prize courts and the need for a court decree to legitimate the sale of prize capture); Matthew P. Harrington, Rethinking In Rem: The Supreme Court’s New (and Misguided) Approach to Civil Forfeiture, 12 YALE L. & POL’Y REV. 281, 285–300 (1994) (providing an overview of in rem practices in the United States and, specifically, prize captures in admiralty law).

13 WAPLES, supra note 12, at 93–94 (“The law regards the seizure of things as constructive notice to all the world; and all persons concerned in interest are considered as affected by this constructive notice.” (quoting Hollingsworth v. Barbour, 29 U.S. (4 Pet.) 466, 475 (1830 ; ROBERT WYNESS MILLAR, CIVIL PROCEDURE OF THE TRIAL COURT IN HISTORICAL PERSPECTIVE 377–79 (1952). In rem prize cases were not designed to bring the enemy into court, but to provide notice to the enemy that they might disfavor the enemy characterization. If no other claimant brought a claim or defense against the property, potential claims by interested parties were “pronounced in contumacy and default.” WAPLES, supra note 12, at 127.

14 Professor Sohoni also pointed to in rem proceedings in admiralty as evidence of nonparty protective decrees and recognized that the debate over judicial power should encompass all forms by which federal courts adjudicate cases and controversies under Article III. Sohoni, supra note 2, at 931– 32, 935.

15 See infra Sections III.A, IV.A.; Patent Act of 1790, ch. 7, § 5, 1 Stat. 109, 111 (repealed 1793);

Patent Act of 1793, ch. 11, § 10, 1 Stat. 318, 323 (repealed 1836).

16 See Patent Act of 1793, ch. 11, § 10, 1 Stat. at 323. For recognition that in rem patent litigation confers a species of nonparty protective relief, see Merritt R. Blakeslee & Christopher V. Meservy, Seeking Adjudication of a Design-Around in Section 337 Patent Infringement Investigations: Procedural Context and Strategic Considerations, 35 AIPLA Q.J. 385, 387 (2007) (noting in passing that an in rem exclusion order under the Tariff Act of 1930 “functions effectively as a universal injunction”). In contrast to the patent-invalidity orders of the early republic, today’s litigation focuses on the validity of specific claims rather than of the patent as a whole. See 35 U.S.C. § 282 (“Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims . . . .”). The switch from patent-based to claim-based litigation took hold in the late nineteenth century; before then, most patents simply described the invention being patented. See Christopher Beauchamp, The First Patent Litigation Explosion, 125 YALE L.J. 848, 883–84 (2016) (remarking that “[t]he earliest patents possessed no claims at all in the modern sense, only a specification of the invention”); Karl B. Lutz, Evolution of the Claims of U.S. Patents, 20 J. PAT. OFF. SOC’Y 134, 134–35 (1938) (noting that patent claims were unheard of before the 1790s and recounting how they gradually emerged onto the American patent scene in the 1800s).

17 Historians date the English practice of nullifying letters patent through the writ of scire facias to the fourteenth century. See 1 W.S. HOLDSWORTH, A HISTORY OF ENGLISH LAW 452 (3d ed. 1922); 2 id. at 316 n.8.

18 Such orders bear more than a passing resemblance to modern decrees setting aside federal agency action as a general matter. See infra note 42 and accompanying text. For example, under modern practice courts “nullify,” “hold unlawful and set aside,” “annul,” or “vacate” agency actions under 5 U.S.C. § 706(2). See United States v. Texas, 143 S. Ct. 1964, 1981 (2023) (Gorsuch, J., concurring in the judgment) (questioning courts’ authority to render agency action “null and void”); Corner Post, Inc. v. Bd. of Governors of Fed. Rsrv. Sys., 144 S. Ct. 2440, 2460 (2024) (Kavanaugh, J., concurring) (concluding that the APA grants federal courts license to vacate unlawful agency action). The goal of scire facias was to ensure invalid patents were “revoked, vacated and annulled, and held as void and invalid, and for a (mere) nullity . . . .” The Prince’s Case (1606) 77 Eng. Rep. 496, 519; 8 Co. Rep. 13 b, 31 a. As we show below in Section II.A, infra, such relief required that the official “record” of the patent be amended to show the patent’s nullification. Professor Benjamin Johnson similarly reports that decisions of King’s Bench from the seventeenth and early eighteenth centuries ordered that prior judgments obtained by fraud be “set aside,” and that entailed addition of the “vacat” to the record, signifying vacatur of the judgment by judicial decree. See Benjamin B. Johnson, The Roberts Court’s (Other) Vacatur Revolution, 135 YALE L.J. (forthcoming 2026) (manuscript at 1, 17–18, 17 n.42) (citing Cotton’s Case (1610) 79 Eng. Rep. 219; Cro. Jac. 256 (KB . The linkage between judicial orders to set aside and to vacate thus has deep roots in English law.

19 Most students learn about the distinction between proceedings in rem and in personam when tackling the first-year civil procedure standard Pennoyer v. Neff, 95 U.S. 714 (1877). But the distinction traces to Roman law and was incorporated into English legal practice. JOSEPH STORY, COMMENTARIES ON EQUITY JURISPRUDENCE 21–25 (W.E. Grigsby ed., 1884). Courts of equity proceeded in personam, through decrees aimed at compelling individuals to act in accordance with the King’s conscience, as expressed by the Chancellor. 1 JOHN NORTON POMEROY, A TREATISE ON EQUITY JURISPRUDENCE § 55, at 72 (Spencer W. Symons ed., 5th ed. 1941); id. §§ 59–60, at 75–80. But that limited conception of equitable power gradually disappeared. See infra Section IV.B and accompanying notes.

20 See infra Section I.B; WAPLES, supra note 12, at 88–99; id. at 389–401. 21 See infra Section II.A; S. A. De Smith, The Prerogative Writs, 11 CAMBRIDGE L.J. 40, 41 (1951). 22 See W. M. HINDMARCH, TREATISE ON THE LAW RELATIVE TO PATENT PRIVILEGES FOR THE SOLE USE OF INVENTIONS 170 (1847) (noting that when a patent is repealed by scire facias against a patentee, it serves as a defense for all on a patent infringement suit by patentee); MILLAR, supra note 13, at 378 (remarking that “the judgment of condemnation [of a prize] is binding as against the world”).

23 Bray, supra note 1, at 420 n.7. 24 Article III invests federal courts with judicial power in “law,” in “equity,” and in “admiralty.” U.S. CONST., art. III, § 2. For much of the nineteenth century, federal courts heard both in rem and in personam matters and that distinction informed early jurisdictional landmarks. See, e.g., Pennoyer, 95 U.S. at 724 (1878) (recognizing jurisdiction in personam over individuals found and served with process in the state and jurisdiction in rem over property found and brought constructively before a court in the state). Over time, however, the sharp distinction between individual and property claims blurred. See Shaffer v. Heitner, 433 U.S. 186, 207 (1977) (holding that a state court cannot adjudicate based solely on the presence of corporate stock in the forum state; instead, the defendant must have contacts with the state that meet the contacts test for in personam jurisdiction); cf. Mullane v. Cent. Hanover Bank & Tr. Co., 339 U.S. 306, 313, 317 (1950) (holding that a state court may settle a trustee’s accounts and terminate the interests of nonresident beneficiaries in an in rem proceeding but must provide individualized notice to interested parties where reasonably practicable). Today, the in rem/in personam distinction continues to inform the coordination of concurrent state and federal litigation. See WILLIAM BAUDE, JACK GOLDSMITH, JOHN F. MANNING, JAMES E. PFANDER & AMANDA L. TYLER, HART & WECHSLER’S THE FEDERAL COURTS AND THE FEDERAL SYSTEM 1367–70 (8th ed. 2025) [hereinafter HART & WECHSLER].

But the Court has downplayed the distinction’s significance in other contexts. See Shaffer, 433 U.S. at 207 (describing the phrase “jurisdiction over a thing” as “a customary elliptical way of referring to jurisdiction over the interests of persons in a thing”).

25 William Baude & Samuel L. Bray, Proper Parties, Proper Relief, 137 HARV. L. REV. 153, 164– 72 (2023); Trump v. Hawaii, 138 S. Ct. 2392, 2427–29 (2018) (Thomas, J., concurring); Dep’t of Homeland Sec. v. New York, 140 S. Ct. 599, 600 (2020) (mem.) (Gorsuch, J., concurring) (“When a district court orders the government not to enforce a rule against the plaintiffs in the case before it, the court redresses the injury that gives rise to its jurisdiction in the first place. But when a court goes further than that . . . it is hard to see how the court could still be acting in the judicial role of resolving cases and controversies.”); see also Aaron-Andrew P. Bruhl, One Good Plaintiff Is Not Enough, 67 DUKE L.J. 481, 517 (2017) (explaining that the “requirement that every plaintiff in a case possess standing derives from the nature of judicial judgments”).

26 James E. Pfander, Standing, Litigable Interests, and Article III’s Case-or-Controversy Requirement, 67 UCLA L. REV. 170, 201–12, 228–30 (2018); see also Robert J. Pushaw, Jr., Article III’s Case/Controversy Distinction and the Dual Functions of Federal Courts, 69 NOTRE DAME L. REV. 447, 450–52 (1994) (observing that, until the late 1930s, federal courts did not view the doctrine of standing as a limit on their constitutional jurisdiction); Maxwell L. Stearns, Standing and Social Choice: Historical Evidence, 144 U. PA. L. REV. 309, 350 (1995) (ascribing standing’s origins to the New Deal era and attributing its current prominent status to developments in the Burger and Rehnquist Courts).

27 See infra Section I.B.

28 See infra note 61 and accompanying text. 29 See infra note 59 and accompanying text. 30 See infra note 73 and accompanying text. 31 On the relationship between judgments, preclusion, and the interests of nonparties, see generally Aditya Bamzai, The Path of Administrative Law Remedies, 101 NOTRE DAME L. REV. 2037 (2023), assessing the impact of judgments under the Administrative Procedure Act on the rights of nonparties.

32 See infra notes 81–88 and accompanying text. 33 See David J. Siepp, Trust and Fiduciary Duty in the Early Common Law, 91 B.U. L. REV. 1011, 1012, 1022–24 (2011) (acknowledging the conventional view that common law courts were hostile to the trust or use as a creature of equity but demonstrating that uses had long been accepted by common lawyers before a revenue-motivated political attack on the use during the reign of Henry VIII).

34 See infra notes 94–104 and accompanying text; cf. Henry E. Smith, Equity as Meta-Law, 130 YALE L.J. 1050, 1116–18 (2021) (acknowledging some relaxation of the principle that equity acts in personam but defending the continuing relevance of the maxim today).

35 See FED. R. CIV. P. 60(b)(3) (providing that “the court may relieve a party . . . from a final judgment, order, or proceeding for . . . fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party”). 36 See infra notes 157–164 and accompanying text. 37 See infra notes 169–181 and accompanying text; Delano v. Scott, 7 F. Cas. 378, 382 (E.D. Pa.

1835) (No. 3753) (interpreting the Patent Act of 1793). 38 See infra notes 225–244 and accompanying text. 39 Federal courts today can declare a patent invalid when a defendant asserts invalidity as a defense to infringement. See 35 U.S.C. § 271(e)(5). In addition, current law authorizes inter partes review and post-grant review which allows third parties to challenge the validity of a patent at the Patent Trial and Appeal Board and U.S. Patent and Trademark Office. Id. §§ 311–29. These decisions are appealable to the Federal Circuit. Id. §§ 141, 319, 329. 40 402 U.S. 313, 349–50 (1971). 41 See id. at 339–40.

42 Trump v. CASA, Inc., 145 S. Ct. 2540, 2557 (2025). 43 Administrative Procedure Act, ch. 324, § 10(e), 60 Stat. 237, 243 (1946) (codified as amended in 5 U.S.C. § 706) (empowering a reviewing court to “hold unlawful and set aside agency action”). Scholars debate whether this statutory provision enables courts to nullify agency action. For Professor John Harrison, the APA does not give courts the ability to grant the universal remedy of declaring an administrative rule void. See John Harrison, Section 706 of the Administrative Procedure Act Does Not Call for Universal Injunctions or Other Universal Remedies, 37 YALE J. REG. BULL. 37, 42–47 (2020). Rather, “set aside” means merely that the court should disregard the unlawful agency action when making its decision. Id. at 45. Professor Sohoni has argued in response that “set aside” is synonymous with “vacate.” See Mila Sohoni, The Power to Vacate a Rule, 88 GEO. WASH. L. REV. 1121, 1173 (2020); see also Bamzai, supra note 31, at 2042–51 (tracing the statute’s history and skeptically assessing the claim that it confers a general set-aside authority); Ronald M. Levin, The National Injunction and the Administrative Procedure Act, REGUL. REV. (Sept. 18, 2018), https://www.theregreview.org/2018/09/ 18/levin-national-injunction-administrative-procedure-act/ [https://perma.cc/BX47-RZSK] (“Virtually everyone understands ‘set aside’ to connote total nullification of the unlawful agency action.”).

44 See Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308, 318 (1999) (remarking that “the equity jurisdiction of the federal courts is the jurisdiction in equity exercised by the

I. RECOVERING THE HISTORY OF NONPARTY ADJUDICATION

High Court of Chancery in England at the time of the adoption of the Constitution and the enactment of the original Judiciary Act” (quoting ARMISTEAD M. DOBIE, HANDBOOK OF FEDERAL JURISDICTION AND PROCEDURE 660 (1928 ; cf. Armstrong v. Exceptional Child Ctr., Inc., 575 U.S. 320, 326 (2015) (reaffirming without citation to Grupo the availability of a right to secure injunctive relief from preempted state law, unless the federal statute prescribes other remedies). For doubts that federal courts today should measure their equitable authority by reference to Founding Era practices of the English High Court of Equity, see James E. Pfander & Jacob P. Wentzel, The Common Law Origins of Ex parte Young, 72 STAN. L. REV. 1269, 1273, 1355–59 (2020); and Anna Conley, A Challenge to ‘Equitable Originalism’ - The History of Injunctions as a Principle-Based Adaptable Judicial Power, 17 N.Y.U. J.L. & LIBERTY 112, 114, 132–41 (2023). The critique rests on the idea that equity, as a supplemental body of law addressed to gaps in otherwise available remedies, may legitimately change in response to changes in those other remedies over time. See id. Pfander & Wentzel, supra, at 1276, 1355–57.

45 Although Trump v. CASA, Inc. foreclosed universal injunctive relief absent statutory authorization, it left unanswered the question of such relief’s constitutional status. 145 S. Ct. 2540, 2550 n.4 (2025); see supra note 11. For examples of scholarly debate, see Bray, supra note 1, at 428–45; and Sohoni, supra note 2, at 927–29.

46 See Bray, supra note 1, at 425, 471–72; Wasserman, supra note 1, at 360; Michael T. Morley, De Facto Class Actions? Plaintiff- and Defendant-Oriented Injunction in Voting Rights, Election Law, and Other Constitutional Cases, 39 HARV. J.L. & PUB. POL’Y 487, 524 (2016) (remarking that defendantoriented injunctions, like universal class actions, “violate . . . constitutional standing limitations”).

47 See Bray, supra note 1, at 471–72; Wasserman, supra note 1, at 339. 48 See Sohoni, supra note 2, at 935–43. 49 See Trammell, supra note 1, at 84–85; see also Frost, supra note 2, at 1082–83 (observing that

courts routinely grant authority broader than what is necessary to remedy the plaintiff’s harm).

50 See Sohoni, supra note 2, at 1006; Frost, supra note 2, at 1086–87; Trammell, supra note 1, at 89. 51 Trump v. Hawaii, 138 S. Ct. 2392, 2423 (2018); id. at 2424–25 (Thomas, J., concurring). 52 Labrador v. Poe, 144 S. Ct. 921, 921 (2024) (mem.); id. at 927–28 (Gorsuch, J., concurring). 53 See Garland v. Aleman Gonzalez, 142 S. Ct. 2057, 2063–65 (2022); 8 U.S.C. § 1252(f)(1); Dep’t of Homeland Sec. v. Regents of the Univ. of Cal., 140 S. Ct. 1891, 1916 & n.7 (2020); 5 U.S.C. § 706(2).

54 See United States v. Texas, 143 S. Ct. 1964, 1980–83 (2023) (Gorsuch, J., concurring in the judgment) (expressing doubt that the APA provides authority for the entry of nonparty protective relief). 55 Id. at 1980–81; Bray, supra note 1, at 421; Harrison, supra note 43, at 41. Indeed, in CASA, Justice Gorsuch joined Justice Thomas’s concurrence remarking that “serious constitutional questions would arise . . . if Congress purported to one day allow universal injunctions.” Trump v. CASA, Inc., 145 S. Ct. 2540, 2563 (2025) (Thomas, J., concurring).

56 See Corner Post, Inc. v. Bd. of Governors of Fed. Rsrv. Sys., 144 S. Ct. 2440, 2460–61 (2024)

(Kavanaugh, J., concurring).

57 Id. at 2462–64, 2467–68 (first citing Mila Sohoni, The Past and Future of Universal Vacatur, 133 YALE L.J. 2305, 2329–35, 2337 (2024); and then citing Mila Sohoni, The Power to Vacate a Rule, 88 GEO. WASH. L. REV. 1121, 1131–34 (2020 .

58 Id. at 2462–63. 59 Id.; cf. Griffin v. HM Florida-ORL, LLC, 144 S. Ct. 1, 2 & n.1 (2023) (mem.) (statement of Kavanaugh, J.) (questioning the power of federal courts to grant universal injunctions without statutory authority of the kind conferred in the APA).

60 A 1790 statute impliedly authorized state and federal courts to issue naturalization judgments. See Act of Mar. 26, 1790, ch. 3, § 1, 1 Stat. 103–04 (repealed 1795) (authorizing “any common law court of record” to hear naturalization proceedings, which included both state and federal courts). In 1795, a new statute conferred this power expressly on the federal courts. See Act of Jan. 29, 1795, ch. 20, § 1, 1 Stat. 414 (repealed 1802). After a petitioner submitted sufficient evidence to demonstrate the applicant’s good character and residence in the United States, the “court” would administer an oath and the proceeding would be memorialized with a record. The Act did not require the government to be named as an adverse party. See id.; Pfander & Birk, supra note 12, at 1361–63.

61 For example, Congress authorized “any court of the United States” to hear ex parte warrant proceedings to enforce a 1791 federal excise tax on distilled spirits. Act of Mar. 3, 1791, ch. 15, § 32, 1 Stat. 199, 207; see Pfander & Birk, supra note 12, at 1376–78. Today, magistrate judges, non-Article III judges, authorize search warrants. Edward S. Adams, Edward R. Adams & William C. Price Jr., An Empirical Constitutional Crisis: When Magistrate Judges Exercise De Facto Article III Power, 2023 MICH. ST. L. REV. 195, 210–13.

62 WAPLES, supra note 12, at 389–415; id. at 88–99; MILLAR, supra note 13, at 377–78; JOSEPH STORY, NOTES ON THE PRINCIPLES AND PRACTICE OF PRIZE COURT 13–27 (Frederic Thomas Pratt ed., 1854).

63 Pfander & Birk, supra note 12, at 1414; Pfander, supra note 26, at 228–30. See generally JAMES E. PFANDER, CASES WITHOUT CONTROVERSIES: UNCONTESTED ADJUDICATION IN ARTICLE III COURTS (2021) (documenting the various forms of uncontested adjudication in the early federal courts including probate and domestic relations proceedings and synthesizing them with the Court’s modern view of its Article III power).

64 Ancient Roman law divided judicial actions into iurisdictio contentiosa (contentious jurisdiction) and iurisdictio voluntaria (noncontentious jurisdiction). Voluntary jurisdiction allowed a magistrate to act in cases where there was “no quarrel between parties.” Adolf Berger, Encyclopedic Dictionary of

Roman Law, in 43 TRANSACTIONS OF THE AM. PHIL. SOC’Y 333, 524 (1953); ANTONIO FERNANDEZ DE BUJAN, JURISDICCION VOLUNTARIA EN DERECHO ROMANO [VOLUNTARY JURISDICTION IN ROMAN LAW] 20–23 (1986).

65 22 U.S. (9 Wheat.) 738, 819 (1824). 66 See DAVID G. EPSTEIN & STEVEN H. NICKLES, PRINCIPLES OF BANKRUPTCY LAW § 16.9, at 219– 20 (2007); Ralph Brubaker, On the Nature of Federal Bankruptcy Jurisdiction: A General Statutory and Constitutional Theory, 41 WM. & MARY L. REV. 743, 837 n.352 (2000); Ralph E. Avery, Article III and Title 11: A Constitutional Collision, 12 BANKR. DEVS. J. 397, 419 (1996).

67 Though the custodian acts as an adverse party in habeas proceedings, all federal habeas petitions begin with an ex parte proceeding. Federal courts review the habeas petition and can reject it, without requiring the custodian to specify the cause for confinement. 28 U.S.C. § 2243 (“A court . . . shall forthwith award the writ or issue an order directing the respondent to show cause why the writ should not be granted, unless it appears from the application that the applicant or person detained is not entitled thereto.”).

68 See id. § 1913; Departments of Commerce, Justice, and State, the Judiciary, and Related Agencies Appropriations Act of 1992, Pub. L. No. 102-140, § 303, 105 Stat. 782, 810 (“The Judicial Conference shall hereafter prescribe reasonable fees, pursuant to sections 1913, 1914, 1926, and 1930 of title 28 . . . . These fees may distinguish between classes of persons, and shall provide for exempting persons or classes of persons from the fees, in order to avoid unreasonable burdens and to promote public access to such information.”); Electronic Public Access Fee Schedule, U.S. CTS (Dec. 31, 2019), https://www.uscourts.gov/court-programs/fees/electronic-public-access-fee-schedule [https://perma.cc/ HFL5-A2MM] (creating criteria per the 2020 Act on which Courts can adjudicate PACER fee exemption petitions); see also In re Application for Exemption from Elec. Pub. Access Fees by Jennifer Gollan & Shane Shifflett, 728 F.3d 1033, 1035, 1039 (9th Cir. 2013) (observing that district courts can determine PACER fee exemptions even though such determinations occur in a nonadversarial proceeding).

69 See FED. R. CIV. P. 55(b)(2). 70 Agency actions often result in litigation from states and other interest groups. If, during litigation, a new administration assumes control of the federal government and does not wish to pursue the former administration’s challenged agency action, the new administration often willingly enters into consent decrees with the like-minded litigants. See Michael T. Morley, Consent of the Governed or Consent of the Government? The Problems with Consent Decrees in Government-Defendant Cases, 16 U. PA. J. CONST. L. 637, 646–57 (2014) (disagreeing with the constitutionality of consent decrees while providing an overview of this process); see also Swift & Co. v. United States, 276 U.S. 311, 325–26 (1928) (upholding a consent decree).

71 In explaining why the Supreme Court did not have jurisdiction over probate claims, the Court stated that “the reason lies in the nature of the proceeding to probate a will as one in rem, which does not necessarily involve any controversy between parties.” Gaines v. Fuentes, 92 U.S. 10, 21 (1875).

72 James E. Pfander & Emily K. Damrau, A Non-Contentious Account of Article III’s Domestic Relations Exception, 92 NOTRE DAME L. REV. 117, 128–32 (2016) (providing an overview of the states’ exclusive jurisdiction on family law matters, including those of consensual status changes in the areas of marriage, divorce, and adoption). See generally MILLAR, supra note 13, at 380 (describing divorce proceedings as involving jurisdiction over a res, marital status, and as resulting in “a judgment in rem, binding inter partes and against the whole world”).

73 WAPLES, supra note 12, at 200 n.1 (quoting the language of Justice Story when discussing prize cases: “the decree of a court of competent jurisdiction in rem is, as to the points directly in judgment, conclusive upon the whole world” (quoting Gelston v. Hoyt, 16 U.S. (3 Wheat.) 246, 320 (1818 . This sentiment was also repeated by Chief Justice Marshall, once again discussing prize decrees: “It appears to be settled in this country that the sentence of a competent Court, proceeding in rem, is conclusive with respect to the thing itself, and operates as an absolute change of the property . . . . No Court of coordinate jurisdiction can examine the sentence.” Williams v. Armroyd, 11 U.S. (7 Cranch) 423, 432 (1813).

74 For example, consider England’s treatment of French prize decrees. In 1793, France declared war against Great Britain. During the war, France captured British vessels along America’s coast. The prizes were brought to French consular officials in America to conduct condemnation and sales proceedings. See Kevin Arlyck, The Courts and Foreign Affairs at the Founding, 2017 BYU L. REV. 1, 8–10. Although such decrees were seen as “irregular and unjust,” English Courts still acknowledged the well-established rule that once a foreign court of competent jurisdiction condemns hostile property, the judgment “is so entirely conclusive of the fact so decided, that it can never be controverted, directly or collaterally, in any other court having concurrent jurisdiction.” Croudson v. Leonard, 8 U.S. (4 Cranch) 434, 436 (1808).

75 When discussing a previous ex parte naturalization judgment, Chief Justice Marshall said, “It seems to us, if it be in legal form, to close all inquiry; and, like every other judgment, to be complete evidence of its own validity.” Spratt v. Spratt, 29 U.S. (4 Pet.) 393, 402, 408 (1830); see also Johannessen v. United States, 225 U.S. 227, 235–38 (1912) (concluding that a certificate of naturalization, even one procured ex parte, could not be collaterally attacked and could be directly attacked only with congressional authorization).

76 The Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008), reiterating a restrictive view of virtual representation and nonmutual estoppel, might seem to cast doubt on the continuing relevance of early applications of the rule of nonmutual estoppel in prize and other inquisitorial forms of adjudication. Yet the rule announced in Taylor addressed only “judgment[s] in personam” in litigation between specified parties and did not address the conclusive effect of judgments in rem. Id. at 884.

77 WAPLES, supra note 12, at 389; see STORY, supra note 62, at 13–15. 78 Naturalization Act of 1790, ch. 3, § 1, 1 Stat. 103, 103 (repealed 1795) (noting that a noncitizen “may be admitted to become a citizen [of the United States], on application to any common law court of record, in any one of the states wherein he shall have resided”); Naturalization Act of 1795, ch. 20, § 1, 1 Stat. 414, 414 (repealed 1802) (requiring a noncitizen seeking naturalization to “have declared [an] oath or affirmation, before the supreme, superior, district or circuit court of some one of the states, or of the territories northwest or south of the river Ohio, or a circuit or district court of the United States”).

79 PFANDER, supra note 63, at 37; Tutun v. United States, 270 U.S. 568, 578 (1926) (“If a [naturalization] certificate is procured when the prescribed qualifications have no existence in fact, it may be canceled by suit.”).

80 PFANDER, supra note 63, at 37; Spratt, 29 U.S. (4 Pet.) at 408; Johannessen, 225 U.S. at 238. 81 See supra notes 19–20 and accompanying text; Alexander Porter Morse, Citizenship by

Naturalization (Concluded), 27 U. PA. L. REV. 665, 674 (1879).

82 1 POMEROY, supra note 19, §§ 56, 68–73, at 73, 92–100 (distinguishing between property (legal) and personal rights (equitable ; see STORY, supra note 19, at 2–4; C.C. LANGDELL, A BRIEF SURVEY OF EQUITY JURISDICTION 5–7 (1905).

83 See 1 POMEROY, supra note 19, §§ 109, 112, at 140–41, 147; LANGDELL, supra note 82, at 2; id. at 27 (“The relief given in common-law actions in rem is also always the same, namely, the recovery of the res.”).

84 LANGDELL, supra note 82, at 24–29 (detailing the difference in remedies available at law and

equity and how judgments or decrees are enforced).

85 STORY, supra note 19, at 628 (“This is particularly the case in matters of trust and confidence, of which the ordinary courts of law, in a vast variety of instances, take no cognizance. The positive law being silent on the subject, courts of equity, considering the conscience of the party entrusted, as bound to perform the trust, have, to prevent a total failure of justice, interfered to compel the performance of it.”); LANGDELL, supra note 82, at 11 (observing that remedies at law would prevent a donor from imposing an obligation on the donee and then noting that “[e]quity, however, can secure most of the objects of the donor and yet avoid the mischiefs of real obligations, by imposing upon the donee (and upon all persons to whom the property shall afterwards come without value or with notice) a personal obligation with respect to the property; and accordingly this is what equity does. It is in this way that all trusts are created, and all equitable charges made”).

86 4 POMEROY, supra note 19, §§ 1393–94, at 1021–22 (describing the origins of the quiet title action and noting the bill of equity can be used by a party in possession against a single defendant “ineffectually seeking to establish a legal title by repeated actions of ejectment,” but also noting that in such cases, one previous successful trial at law was necessary to establish jurisdiction in equity); see also STORY, supra note 19, at 569–70 (similarly noting that a quiet title action enjoins plaintiffs at law from continually bringing ejectment claims after having previously been unsuccessful).

87 The debate over the power of a court of equity to restrain the enforcement of a judgment at law dates to the 1600s. It was resolved in England in favor of equity’s power. See Charles M. Gray, The Boundaries of the Equitable Function, 20 AM. J. LEG. HIST. 192 (1976); 4 POMEROY, supra note 19,

§ 1364, at 983–84; see STORY, supra note 19, at 574. Because they viewed the judgment as a “record,” common law courts understood their power to modify or vacate a judgment as limited to the term of court during which the judgment was entered. See Johnson, supra note 18, at 19–20.

88 A showing of the inadequacy of alternative remedies remains part of the equitable inquiry today, both for preliminary and permanent injunctive relief. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006); see Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). For the view that closer attention to that factor might play an important role in encouraging district courts to make more thoughtful use of universal injunctive relief, see Bray, supra note 2, at 814.

89 On the merger of law and equity in the nineteenth-century Field Code and in the Federal Rules’ identification of one “civil action” in 1938, see infra notes 91, 96. Before merger occurred, courts of common law typically refused “to exercise any coercive control over the person of the litigants,” acting instead through the sheriff on the property of the parties. CHARLES ANDREW HUSTON, ENFORCEMENT OF DECREES IN EQUITY 74 (7th ed. 1915). By contrast, punishment for contempt of an equity decree “was the original and characteristic feature of the process of the court of Chancery.” Id. at 76.

90 G.E. ALYMER, THE KING’S SERVANTS: THE CIVIL SERVICE OF CHARLES I 1625–1642, at 44–57 (rev. ed. 1974) (discussing the growth of different courts throughout the early to mid-1600s as courts competed for business); JOHN BAKER, AN INTRODUCTION TO ENGLISH LEGAL HISTORY 114–18 (5th ed. 2019) (same); NICHOLAS R. PARRILLO, AGAINST THE PROFIT MOTIVE: THE SALARY REVOLUTION IN AMERICAN GOVERNMENT, 1780–1940, at 78 (2013) (“Because each court wanted more business, it was upon that account, willing to take cognizance of many suits which were not originally intended to fall under its jurisdiction, and each judge sought to give in his own court, the speediest and most effectual remedy . . . .”); see also Letter from Centinel to the Freemen of Pennsylvania (Oct. 5, 1787), in 2 THE COMPLETE ANTI-FEDERALIST 140 (Herbert J. Storing ed., 1981) (“[P]erson[s] acquainted with the history of the courts in England, know[] by what ingenious sophisms they have, at different periods, extended the sphere of their jurisdiction over objects out of the line of their institution . . . .”).

91 See Walter Wheeler Cook, Powers of Courts of Equity, Part I, 15 COLUM. L. REV. 37, 37–39 (1915) [hereinafter Cook, Part I] (describing the widely held view that equity acts in personam only); Walter Wheeler Cook, Powers of Courts of Equity, Part II, 15 COLUM. L. REV. 106, 112–15 (1915) [hereinafter Cook, Part II] (refuting the view that equity acts only in personam).

92 Huston’s treatise on decrees in equity devotes a chapter to the “development of equitable procedure in rem.” HUSTON, supra note 89, at 71–86. Huston traces the gradual way courts of equity came to exercise in rem authority over property, culminating in sequestration, equity receiverships, and equitable decrees setting aside judgments procured by fraud. As Huston explains, instead of merely enjoining one party from enforcing an inequitable judgment, modern law has come to treat the equitable decree as “cancel[ling] the judgment and wip[ing] it from the record of the court.” Id. at 85.

93 1 RALPH EWING CLARK, TREATISE ON THE LAW AND PRACTICE OF RECEIVERS §§ 4–6 (3d. ed. 1992) (describing how, when courts were not confident of an enjoined party’s ability to care for real or personal property, the courts would appoint sequestrators or receivers to act for the court in protecting the property for the beneficiary). On the origins of the writ of sequestration, a development the “courts of common law bitterly resented” because it represented a more effective remedy “than a proceeding strictly in personam could ever secure,” see HUSTON, supra note 89, at 82. In time, the equity receivership brought property before a court of equity for administration, including a decision about how to distribute limited assets among various creditors. While courts of common law might continue to liquidate claims against the debtor, see Riehle v. Margolies, 279 U.S. 218, 224 (1939), the satisfaction of such claims was a matter for the court of equity to resolve in distributing the limited fund. See generally HART & WECHSLER, supra note 24, at 1367–70 (describing the role of a court in administering claims to a limited fund).

94 JAMES E. PFANDER, ONE SUPREME COURT: SUPREMACY, INFERIORITY, AND THE JUDICIAL DEPARTMENT OF THE UNITED STATES 25 (2009) (observing that Article III requires that “Congress must provide for the existence of a single Supreme Court; the requirement of unity bars Congress from setting up coordinate superior courts (such as the courts of law, equity, and admiralty . . .) and from denying the Court a role in unifying federal law”); James E. Pfander, The Supreme Court, Article III, and Jurisdiction Stuffing, 51 PEPP. L. REV. 433, 440–42 (2024); Aaron-Andrew P. Bruhl, Law and Equity on Appeal, 124 COLUM. L. REV. 2307, 2337–38 (2024) (noting the institutional pressures toward unification in the structure of the federal judiciary).

95 James E. Pfander, Judicial Compensation and the Definition of Judicial Power in the Early

Republic, 107 MICH. L. REV. 1, 5 (2008).

96 Samuel L. Bray, Getting into Equity, 97 NOTRE DAME L. REV. 1763, 1766–68 (2022) (detailing the effect that the procedural merger of equity and legal forms in one civil action had on the federal

judiciary); Douglas Laycock, The Triumph of Equity, 56 LAW & CONTEMP. PROBS. 53, 78 (1993) (“The merger of law and equity ought to mean that the choice between law and equity is no longer all-ornothing.”). See generally Kellen Funk, Equity Without Chancery: The Fusion of Law and Equity in the Field Code of Civil Procedure, New York 1846–76, 36 J. LEGAL HIST. 152 (2015) (providing insight into New York’s merger of law and equity between 1846–1876).

97 See Cook, Part I, supra note 91, at 37–38, 106, 228 (quoting the adage aequitas agit in personam or “equity acts in personam,” as embraced by such figures as Langdell, Beale, and Ames, and then exploring the many ways in which courts of equity had come to act in rem).

98 Id. at 229, 233. 99 Id. at 247. 100 See supra note 86. 101 See supra note 86. 102 See HUSTON, supra note 89, at 83–86 (describing the transition from a world where equity acted only on parties to restrain them from enforcing an inequitable judgment to a world where equity acts in rem in wiping the judgment from the record).

103 See FED. R. CIV. P. 60(b)(3) (allowing federal courts to “relieve a party . . . from a final judgment, order, or proceeding for . . . fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party”).

104 Samuel L. Bray, The Supreme Court and the New Equity, 68 VAND. L. REV. 997, 1036–40 (2015) (noting that the exceptionalism of equitable remedies requires courts to find that no alternative legal remedy suffices and not to rely on categorical presumptions); cf. Bray, supra note 2, at 851–54 (stating that preliminary injunctions are meant to maintain the status quo and limiting their uses to this purpose “responds directly to th[e] danger” of courts going “far afield . . . in optimizing [their] remedial options”). 105 The modern bankruptcy discharge serves as an example of this, as well as of equity’s power to confer nonparty effects. The discharge order forecloses creditors from initiating any suit against a debtor whose debts were discharged by a bankruptcy decree. It originated, and continues to operate, as an injunction to prohibit creditors from attempting to collect or to recover the former debt. 11 U.S.C. § 524(a)(1), (2); 3 W. NORTON, BANKRUPTCY LAW AND PRACTICE § 58:3 (3d ed. 2008). But it has also come to be understood as operating on an in rem basis on property brought before the bankruptcy court, rather than against parties as such. Thus, as the Court explained in Tennessee Student Assistance Corp. v. Hood, a bankruptcy court can provide a “debtor a fresh start in this manner, despite the lack of participation of all of his creditors.” 541 U.S. 440, 447 (2004). This in rem power permits a bankruptcy court to “determin[e] all claims that anyone, whether named in the action or not, has to the property or thing in question. The proceeding is ‘one against the world’” and thereby analogous to an admiralty proceeding. Id. at 448 (alteration in original) (quoting 16 J. MOORE ET AL., MOORE’S FEDERAL PRACTICE § 108.70[1], at 108–106 (3d ed. 2004 .

II. SCIRE FACIAS: NONPARTY PROTECTION IN ENGLAND AND THE UNITED STATES

106 Mark A. Lemley, Why Do Juries Decide If Patents Are Valid, 99 VA. L. REV. 1673, 1683 (2013)

(citing Statute of Westminster, 2d 1285, 13 Edw., c. 11, 39 (Eng. .

107 In early common law, the writ of scire facias performed two functions. One function was to revive a judgment that had “bec[o]me abated,” calling on the defendant to appear in court to explain why the action should not be taken. JOSEPH STORY, COMMENTARIES ON EQUITY PLEADINGS, AND THE INCIDENTS THEREOF, ACCORDING TO THE PRACTICE OF THE COURTS OF EQUITY IN ENGLAND AND AMERICA 327 (John Gould ed., 9th ed. 1879); see 6 NATHAN DANE, A GENERAL ABRIDGMENT AND DIGEST OF AMERICAN LAW 462 (1823); 1 ALEXANDER HAMILTON, THE LAW PRACTICE OF ALEXANDER HAMILTON: DOCUMENTS AND COMMENTARY 101 (Julius Goebel Jr. ed., 1964). The second form of scire facias—the one relevant to our historical inquiry—was a prerogative writ used to challenge the validity of letters patent granted by the Crown. See JOSEPH CHITTY, TREATISE ON THE LAW OF THE PREROGATIVES OF THE CROWN 330–31 (1820); RICHARD GUDE, THE PRACTICE OF THE CROWN SIDE OF THE COURT OF KING’S BENCH 233–34 (1828); HINDMARCH, supra note 22, at 234; JOHN CORYTON, A TREATISE ON THE LAW OF LETTERS-PATENT, FOR THE SOLE USE OF INVENTIONS IN THE UNITED KINGDOM OF GREAT BRITAIN AND IRELAND 165 (1855); De Smith, supra note 21, at 41.

108 THOMAS CAMPBELL FOSTER, A TREATISE ON THE WRIT OF SCIRE FACIAS 237 (1851); Pfander & Wentzel, supra note 44, at 1325; cf. E. Wyndham Hulme, Privy Council Law and Practice of Letters Patent for Invention from the Restoration to 1794 II, 33 LAW Q. REV. 63, 183–84 (1917).

109 Ira Milton Jones, United States Patent Law System, 17 MARQ. L. REV. 125, 125 (1933); BAKER,

supra note 90, at 481.

110 See 2 CHARLES VINER, A GENERAL ABRIDGMENT OF LAW AND EQUITY 193 (2d ed. 1791) (describing King Richard II of England as granting land by letters patent to an individual); 1 HAMILTON, supra note 107, at 180 (remarking that Chancery was the forum where improvidently granted land patents were subject to repeal); Lemley, supra note 106, at 1692 (“[M]ost patents in the colonies were grants of government privilege over land or markets, not patents for invention.”); Polk’s Lessee v. Wendal, 13 U.S. (9 Cranch) 87, 94 (1815) (referencing a grant of land as a land patent).

111 CHRISTINE MACLEOD, INVENTING THE INDUSTRIAL REVOLUTION: THE ENGLISH PATENT SYSTEM, 1660–1800, at 2 (1988); 1 MATTHEW BACON, A NEW ABRIDGMENT OF THE LAW 7 (5th ed. 1786); 6 DANE, supra note 107, at 473–74. For an example, consider the language President George Washington used when installing federal judges and others in federal office: “In Testimony whereof I have caused these Letters to be made Patent, and the Seal of the United States to be hereunto affixed.” Letter from President George Washington to the U.S. Senate (Sept. 24, 1789), reprinted by NAT’L ARCHIVES: FOUNDERS ONLINE, https://founders.archives.gov/documents/Washington/05-04-02-0053 [https://perma.cc/D4R5-UA3W].

112 MACLEOD, supra note 111, at 2; FOSTER, supra note 108, at 238–39; cf. Lemley, supra note 106, at 1692 n.78 (“[T]he practice of issuing patents of monopoly to founders of new industries . . . never took deep root in the colonies.”).

113 FOSTER, supra note 108, at 237; HINDMARCH, supra note 22, at 24; see Christopher Beauchamp,

Repealing Patents, 72 VAND. L. REV. 647, 656 (2019).

114 FOSTER, supra note 108, at 226–27; CHITTY, supra note 107, at 331; BAKER, supra note 90, at 109. The “Latin side” of Chancery got its name from the fact that it housed records written in Latin. Id. On the origins of the Petty Bag Office, see WILLIAM BLACKSTONE, ABRIDGMENT OF BLACKSTONE’S COMMENTARIES 308 (William Sprague ed., 6th ed. 1903) (“The ordinary legal court is much more ancient than the court of equity. Its jurisdiction is to hold plea upon a scire facias to repeal and cancel the king’s letters-patent, when made against law or upon untrue suggestions; and to hold plea of petitions monstrans de droit, traverses of offices, and the like; when the king hath been advised to do any act, or is put in possession of any lands or goods in prejudice of a subject’s right.”).

115 The English side of Chancery was the jurisdiction of the King’s Council, and it got its name because bills and pleadings were written in the “vernacular tongue.” BAKER, supra note 90, at 109. As early as the fourteenth century, bills of complaint were filed in the English side of Chancery to “complain[] of interference with the common law.” Id. Initially, the Chancellor would not provide relief himself but rather direct the pleadings to other courts to facilitate their resolution. Id. Over time, however, bills sought specific relief from the Chancellor. Id. By the fifteenth century the Chancellor heeded such calls, “grant[ing] decrees in the Court of Chancery instead of redirecting petitions elsewhere.” Id.

116 Beauchamp, supra note 113, at 657; Ex parte Wood & Brundage, 22 U.S. (9 Wheat.) 603, 605, 607 (1824); see BLACKSTONE, supra note 114, at 309 (noting that the Chancellor could not adjudicate factual disputes, since he had no power to summon a jury, so the record would be delivered to the King’s Bench where the dispute could be tried).

117 FOSTER, supra note 108, at 218–19; CHITTY, supra note 107, at 331; BAKER, supra note 90, at

109; Beauchamp, supra note 113, at 656.

118 See HINDMARCH, supra note 22, at 233 (observing that having the actual record on hand was essential to the execution of a successful scire facias proceeding); CORYTON, supra note 107, at 163 (noting the “importance of the physical possession of letters-patent” in scire facias proceedings).

119 According to Blackstone’s Commentaries,

[t]he high court of chancery . . . has its name of chancery, cancellaria, from the judge who presides here, the lord chancellor, or cancellarius; who Sir Edward Coke tells us, is so termed a cancellando, from cancelling the king’s letters-patent when granted contrary to law, which is the highest point of his jurisdiction.

BLACKSTONE, supra note 114, at 308.

120 CHITTY, supra note 107, at 331; see Nikolas Bowie, Why the Constitution Was Written Down, 71 STAN. L. REV. 1397, 1455 (2019) (noting that the attorney general, who acted on behalf of the Crown, pursued a writ of scire facias).

121 HINDMARCH, supra note 22, at 255 (emphasis removed); see United States v. Am. Bell Tel. Co., 128 U.S. 315, 360 (1888) (“[W]rits of scire facias in the name of the king [required the patentee] to show cause why the patent[] should not be repealed or revoked . . . . [I]t appears to have been the practice to do this in the court of king’s bench, or in the court of chancery, where the record of the patent always remained in what was called the ‘Petty Bag Office.’”).

122 BLACKSTONE, supra note 114, at 309; 6 HOLDSWORTH, supra note 17, at 452; Brief for Tomás Goméz-Arostegui and Sean Bottomley as Amici Curiae in Support of Neither Party at 26, Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 584 U.S. 325 (2018) (No. 16-712) [hereinafter Brief for Goméz-Arostegui and Bottomley].

123 Brief for Goméz-Arostegui and Bottomley, supra note 122, at 12–13. 124 2 WILLIAM C. ROBINSON, THE LAW OF PATENTS FOR USEFUL INVENTIONS 475 (1890); JOHN DAVIES, A COLLECTION OF THE MOST IMPORTANT CASES RESPECTING PATENTS OF INVENTION 432 (1816); CHITTY, supra note 107, at 330.

125 2 ROBINSON, supra note 124, at 475; DAVIES , supra note 124, at 432; CHITTY, supra note 107, at 330; see also Bladen’s Lessee v. Cockey, 1 H. & McH. 230, 233 (Md. Prov. 1766); Doe v. Winn, 24 U.S. (11 Wheat.) 380, 382 (1826); Jackson ex dem. Mancius v. Lawton, 10 Johns. 23, 26 (N.Y. Sup. Ct. 1813); People v. Clarke, 10 Barb. 120, 134 (N.Y. Sup. Ct. 1850); Mowry v. Whitney, 81 U.S. (14 Wall.) 434, 439 (1871). It is unclear whether scire facias suits always required that the fraud be on the face of the patent or whether they adopted this feature following the introduction of the bill in equity for patent repeals. The bill in equity allowed a court of equity to look beyond the instrument itself to determine whether it had been obtained through fraud. See Polk’s Lessee v. Wendal, 13 U.S. (9 Cranch) 87, 99 (1815). Based on the Attorney General’s arguments in Vernon, it seems the requirement that the fraud be on the face of the patent predated the bill in equity. In Vernon, the Attorney General argued that “the deceit ought to appear within the body of the patent” for a scire facias suit, whereas a bill in equity could remedy frauds in procurement of the patent. Attorney-General v. Vernon (1684) 23 Eng. Rep. 468, 470; 1 Vern. 277, 281.

126 2 ROBINSON, supra note 124, at 475; DAVIES, supra note 124, at 432; CHITTY, supra note 107,

at 330; Mowry, 81 U.S. (14 Wall.) at 439–40.

127 6 DANE, supra note 107, at 462 (“Scire facias, in chancery in New York, is a proper remedy by a second patentee, to vacate the first letters patent of the State granting land. So a bill or information . . . .”); see also Mancius, 10 Johns. at 25 (assuming without deciding that a second patentee could initiate a writ of scire facias in chancery court to secure cancellation of a prior interfering grant); Overton’s Lessee v. Campbell, 6 Tenn. (5 Hayw.) 165, 169 (1818) (“[B]efore any title set up under the younger grant can be acknowledged, the elder grant must be impeached and disposed of; the question therefore necessarily turns upon the validity of the elder grant.”); Gallipot ex dem. Bruner v. Manlove, 2 Ill. (1 Scam.) 156, 161 (1834) (“The elder patent must be impeached and vacated before any title can be set up under the younger one . . . .”). On the use of scire facias to challenge land grants in New York, see 1 HAMILTON, supra note 107, at 180, stating that “[Chancery] was also the forum where land patents, often improvidently granted, were subject to scire facias proceedings for repeal.”

128 See HINDMARCH, supra note 22, at 259 (quoting EDWARD COKE, THE FOURTH PART OF THE

INSTITUTES OF THE LAWS OF ENGLAND 88 (5th ed. 1671 .

129 Id. at 234 (observing that having the actual record on hand was essential to the execution of a successful scire facias proceeding); CORYTON, supra note 107, at 163 (noting the “importance of the physical possession of letters-patent” in scire facias proceedings).

130 HINDMARCH, supra note 22, at 261 (quoting EDWARD COKE, THE FOURTH PART OF THE INSTITUTES OF THE LAWS OF ENGLAND 88 (5th ed. 1671 ; FOSTER, supra note 108, at 275; 2 HERBERT PARKER, COURTS AND LAWYERS OF NEW ENGLAND 351 (1931) (quoting Horace Gray Jr.).

131 HINDMARCH, supra note 22, at 261; FOSTER, supra note 108, at 275. 132 HINDMARCH, supra note 22, at 261. 133 See infra note 197. 134 The judicial proceeding offered some protection to patent owners from arbitrary royal cancellation of their titles, a function that trial by jury on disputed facts may have been thought to support. 135 Scholars report that much litigation to revoke invention patents took place before the Privy Council up to the mid-eighteenth century. See MACLEOD, supra note 111, at 19; Sean Bottomley, Patent Cases in the Court of Chancery, 1714–58, 35 J. LEGAL HIST. 27, 27–28 (2014). The Privy Council was “a body of the King’s advisors who had the power both to enforce patents and to revoke a royal patent for ‘inconveniency’”—that is, for general matters of public policy or granular issues of patent validity. Lemley, supra note 106, at 1681 (quoting Statute of Monopolies 1623, 21 Jac. c. 3, § 6 (Eng. . Thereafter, suits for revocation shifted to the Chancery via writ of scire facias. See id. at 1683.

136 Rex v. Arkwright (1785) 1 Carp. P.C. 53 (KB). On the importance of the Arkwright cancellation both in England and the United States, see Beauchamp, supra note 113, at 658–60. Cf. Bottomley, supra note 135, at 34 n.48 (noting that Arkwright was the first reported case of patent revocation by a writ of scrie facias, although perhaps it was not the first such case).

137 Arkwright, 1 Carp. P.C. at 53–56. The Crown apparently prosecuted the matter before a jury in King’s Bench, but one historian reports that the “minor but not uninteresting question of who applied for the writ [of scire facias] remains a mystery.” J. Hewish, Rex vs Arkwright, 1785: A Judgment for Patents as Information, 8 WORLD PAT. INFO. 33, 36–37 (1986). Having reviewed a history of Manchester, England, where the members of the association of manufacturers were listed by name, the author could find “no confirming evidence . . . in the public records.” Id.

138 For a detailed reconstruction of Rex v. Arkwright, see Beauchamp, supra note 113, at 658–60, 658 n.64. Beauchamp reports that Arkwright was not the first but was the most salient early suit to cancel inventions letters patent. Id. at 657. On the distinction between infringement and cancellation litigation, see FOSTER, supra note 108, at 243–44 , which states: “[U]ntil the grant be actually cancelled, the patentee may proceed by action against different parties, and take his chance of being again beaten. The mode of proceeding to cancel the grant, as will be shortly shown, is by writ of scire facias.” See also Pfander & Wentzel, supra note 44, at 1304 (classifying the writ of scire facias as a “proceeding that might cancel the patent and operate for the benefit of the public at large”). Below, we discuss Congress’s decision to eliminate the attorney general’s role in initiating such proceedings and to empower private litigation instead. See infra Section II.B.3.

[I]f one illegally uses a patent-right to the prejudice of another [as Arkwright had allegedly done], [the victim’s] usual remedy is an action; but if the wrong be such as to produce a multiplicity of actions, it is conceived a remedy may be had here, as in England, by such scire facias; and where a patent is prejudicial to the subject, a scire facias is held to be a writ of right, to repeal it.141

139 Beauchamp, supra note 113, at 659; FOSTER, supra note 108, at 243 & n.q. See generally 2 ROBINSON, supra note 124, at 478 (observing that “the invalidity of a patent [could be] established by repeated decisions of the courts,” at which point proceedings should be initiated to revoke the patent so that it could no longer be a “mere instrument of oppression against citizens”).

140 See OBSERVATIONS ON THE UTILITY OF PATENTS, AND ON THE SENTIMENTS OF LORD KENYON RESPECTING THAT SUBJECT 23 (2d ed. 1791) (“If persons of the same trade find themselves aggrieved by Patents taken for any thing already in use, their remedy is at hand. It is by a writ of Scire Facias . . . .”).

141 6 DANE, supra note 107, at 474. 142 Cf. Delano v. Scott, 7 F. Cas. 378, 382–83 (E.D. Pa. 1835) (No. 3753) (explaining the risk of a

fraudulent patentee pressuring unwitting individuals into paying fees).

143 Lemley, supra note 106, at 1691–92 (“Patents existed in the colonies well before the revolution, though patents for invention were rare . . . . [M]ost patents in the colonies were grants of government privilege over land or markets, not patents for invention.”).

144 For an account of the Massachusetts charter fight, see Bowie, supra note 120, at 1454–55 (reporting that the ongoing dispute over the charter in the 1680s led the Crown to pursue a writ of scire facias in Chancery, aimed at compelling the chartered company to “shew cause unto the Court” why the charter should not be vacated); see also 2 PARKER, supra note 130, at 351 (quoting the opinion of Horace Gray Jr., “that a writ of scire facias was the appropriate and effective process for the cancellation of the proscribed charter” of the Massachusetts Bay Colony, inasmuch as “a judgment for the crown upon a quo warranto would have been only for the seizure of the franchises into the King’s hands; but the judgment upon scire facias was not merely that the charter should be declared forfeited, but also that it should be cancelled, vacated, and annihilated, and restored into Chancery there to be cancelled”).

145 1 H. & McH. 26, 26 (Md. Prov. 1705). The facts of the scire facias action were as follows: Lord Baltimore “did surmise and set forth” that certain land was “a reserve formerly laid by his Lordship.” Id. He brought a scire facias in the High Court of Chancery, requiring the owner to show cause why the patent should not be canceled. Id. The respondent did not defend the patent but instead “delivered the said patent to the Court” and the Court “decreed the same to be canceled and of no force.” Id.

146 Letter from Cadwallader Colden, N.Y. Lieutenant Governor, to Bd. of Trade (Apr. 13, 1764), (on file with Nat’l Archives) (reporting that the governor’s council had advised initiation of a scire facias proceeding against a major landowner in the colony).

147 See infra note 155. 148 10 Johns. 23, 24 (N.Y. Sup. Ct. 1813). On the decision’s stature as a “leading authority on the subject of [patent cancellation],” see Bell v. Hearne, 60 U.S. (19 How.) 252, 258 (1856) (quoting defense counsel). On its influence with the Court, see Noble v. Union River Logging Railroad Co., 147 U.S. 165, 174 (1893); Doe v. Winn, 24 U.S. (11 Wheat.) 380, 384 (1826); United States v. American Bell Telephone Co., 128 U.S. 315, 364 (1888); Oil States Energy Services, LLC v. Greene’s Energy Group, 138 S. Ct. 1365, 1375 n.2 (2018) (Gorsuch, J., dissenting).

Letters patent are matter of record, and the general rule is, that they can only be avoided in chancery, by a writ of scire facias sued out on the part of the government, or by some individual prosecuting in its name. This is the settled English course, sanctioned by numerous precedents . . . .152

And be it further enacted, That all the before-mentioned courts of the United States, shall have power to issue writs of scire facias, habeas corpus, and all other writs not specially provided for by statute, which may be necessary for the exercise of their respective jurisdictions, and agreeable to the principles and usages of law.155

149 Mancius, 10 Johns. at 23. 150 Id. 151 Id. at 24 (citing Jackson ex dem. Winthrop v. Ingraham, 4 Johns. 163 (N.Y. Sup. Ct. 1811 . 152 Id. 153 Id. at 26. 154 See HART & WECHSLER, supra note 24, at 31–38 (describing the construction of the first federal

judicial system).

155 Judiciary Act of 1789, ch. 20, § 14, 1 Stat. 73, 81–82. As an aside, the statute’s explicit authorization to issue writs of scire facias poses something an interpretive puzzle. At common law, the

writ performed both a prerogative function in the cancellation of letters patent and a somewhat more prosaic function in requiring parties to show cause why various judicial records, such as judgments, should not be renewed or extended for the benefit (or burden) of judgment creditors (or debtors) and their successors in interest. This second, nonprerogative form of the writ was sensibly added to the remedial toolkit of the federal courts, but one might ask why it was not subsumed within the § 14 power to issue “all writs necessary” for the exercise of federal jurisdiction. It may be that the drafters understood the writ, both in its prerogative and more prosaic form, to authorize original adjudication. See CORYTON, supra note 107, at 169 (describing scire facias as in the nature of an original writ); 1 BACON, supra note 111, at 36 (same). If viewed as a tool for securing jurisdiction, rather than a writ for use after jurisdiction attaches (and thereby available under the all-writs provision), explicit provision for issuance of scire facias makes sense. Notably, when Congress adopted the Patent Act of 1790, it gave the office of the Secretary of State responsibility for maintaining the records of invention patents. See Patent Act of 1790, ch. 7, § 1, 1 Stat. 109, 109–10 (repealed 1793). That may explain why the Patent Act created a proceeding in the nature of scire facias to facilitate patent cancellation litigation; without a record in the courts, the § 14 writ of scire facias was apparently unavailable. See Attorney-General v. Vernon (1684) 23 Eng. Rep. 468; 1 Vern. 277 (upholding equitable relief to cancel a patent where the record was kept in the provinces rather than in the Chancery).

156 See Patent Act of 1790, ch. 7, § 1, 1 Stat. at 109; see N.J. Brumbaugh, History and Purpose of Claims in United States Patent Law, 14 J. PAT. OFF. SOC’Y 273, 276 (1932) (observing that the Act of 1790 was the first federal patent statute); P.J. Federico, Operation of the Patent Act of 1790, 18 J. PAT. OFF. SOC’Y 237, 237 (1936) (same).

157 See Patent Act of 1790, ch. 7, § 1, 1 Stat. at 109–10; Federico, supra note 156, at 238 (identifying Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph as the first patent board).

158 Patent Act of 1790, ch. 7, § 4, 1 Stat. at 111. 159 Id. § 5. 160 See Patent Act of 1793, ch. 11, §§ 6, 10, 1 Stat. 318, 320, 323 (repealed 1836). The relative ease with which individuals could secure patents was thought to necessitate searching judicial oversight. See, e.g., McGaw v. Bryan, 16 F. Cas. 96, 99 (S.D.N.Y. 1821) (No. 8793) (stating that where “patents [are] freely and gratuitously given to all who present themselves in the character of inventors or discoverers, there should be some easy and summary mode of investigating their merits and deciding on their validity”). The 1836 Patent Act changed course, tightening the administrative review of the patent’s issuance and narrowing the judicial role. See Patent Act of 1836, ch. 357, § 16, 5 Stat. 117, 124.

[A] rule, that the patentee . . . show cause, why process should not issue . . . to repeal such patent. And if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the said judge shall order process to be issued against such patentee, or his executors, administrators or assigns . . . .161

161 See Patent Act of 1793, ch. 11, § 10, 1 Stat. at 323. 162 Id. 163 See infra notes 174–78 and accompanying text. 164 Beauchamp, supra note 113, at 680 (“One early organic development was that some parties, in their pleadings, began to refer to statutory repeal actions [in the 1793 Act] as scire facias suits.”); see Patent Act of 1793, ch. 11, § 10, 1 Stat. at 323; infra notes 171–74.

165 In a sophisticated assessment of remedial choices, Jefferson offered the following comments in a

letter about an early draft of the 1793 legislation:

Will you make the first trial against the patentee conclusive against all others who might be interested to contest the patent? If you do he will always have a collusive suit brought against himself at once. Or will you give everyone a right to bring actions separately? If you do, besides running him down with the expenses & vexations of lawsuits, you will be sure to find some jury in the long run, who from motives of partiality or ignorance, will find a verdict against him, tho’ a hundred should have been before found in his favor. I really believe that less evil will follow from leaving him to bring suits against those who invade his right.

Patent Act of 1793, 18 J. PAT. OFF. SOC’Y (SPECIAL ISSUE) 77, 78 (July 1936). See generally William I. Wyman, Thomas Jefferson and the Patent System, 85 J. PAT. & TRADEMARK OFF. SOC’Y 46 (2003) (recounting Jefferson’s keen involvement in the early patent system, which reflected his general interest in the advancement of the arts and sciences).

essentially different in their objects and provisions. The sixth section declares the defences that shall be available for a party against whom a patentee has brought suit for the invasion of his right; but no process or means are given for the examination of a patent right, however false and fraudulent it may be, if the

166 See Patent Act of 1793, supra note 165, at 78 (reproducing Jefferson’s letter in pertinent part). 167 Patent Act of 1793, ch. 11, § 10, 1 Stat. 318, 323. 168 Id. § 6. 169 Id. §§ 6, 10. 170 See infra notes 179–81 and accompanying text.

patentee will be content to forbear to bring a suit against those who use it. He may thus avoid all examination of his right, and he may go on imposing upon the ignorant or timid [by forbearing to bring a suit against those who use it] . . . . A case is recorded of a patent for using the common stone coal in a common blacksmith’s forge. The patentee went through the country exhibiting his parchment patent with the great seal of the department of state, and the signatures of the high officers of government appended to it. This would naturally alarm an ignorant smith, and as the patentee would sell him a right for two or three dollars, or for whatever he could get for it, a prudent man would prefer paying so small a sum, rather than go to law with an adversary apparently so well armed. To protect the public from such impositions, this tenth section was enacted, and gives the power to any person, interested or not in the discovery or the patent, to call upon the patentee for an examination of his right, and have it repealed, if it shall be found that he is not entitled to it. This proceeding, however, must be instituted within three years; for if the public acquiesces for that period in the claim of the patentee, it shall only be questioned by one against whom a suit is brought for a violation of it, when the defendant will always have the benefit of the defence provided for him by the sixth section of the act.171

171 Delano v. Scott, 7 F. Cas. 378, 382–83 (E.D. Pa. 1835) (No. 3753) (emphasis added) (interpreting the Patent Act of 1793). On considering the evidence (which indicated that the defendant had learned about the technology he later patented while working in the plaintiff’s shop), the jury returned a verdict of repeal.

172 22 F. Cas. 1175, 1178 (Story, Circuit Justice, C.C.D. Mass. 1816) (No. 13,337). 173 Id.

If a patent has been fraudulently obtained, or upon false suggestions, it may be repealed within three years, if a jury, upon a trial, shall be satisfied of the fact. If such a repeal be not had, still the public have a perfect security. They may violate the patent with impunity, and if sued for the violation, any person may show the same facts in his defence, and they will constitute a complete bar to the suit, by the express provisions of the 6th section of the patent act.178

174 Id. 175 Id. at 1179. The location of the patent record in the nation’s capital and the absence of a central court of chancery with nationwide original jurisdiction may explain why Congress adopted a modified version of scire facias. By assigning cancellation litigation to the district court of the defendant’s residence, see Patent Act of 1793, § 10, 1 Stat. 318, 323 (repealed 1836), the statute provided for original jurisdiction at a forum convenient to the defendant but potentially far removed from the relevant records at the Department of State. The defendant’s response to the plaintiff’s § 10 proceeding, contesting the suit to repeal the patent, would reliably bring the relevant patent record (and a defense of its legality) to the court’s attention and set the stage for the judicial writ in the nature of scire facias to try the patent’s validity that Justice Story described.

176 See 22 U.S. (9 Wheat.) 603, 615 (1824). William P. Van Ness, the lower court judge, was no stranger to § 10 of the 1793 Act. In a prior patent case, he suggested that § 10 authorized district courts to hold summary proceedings to “investigat[e] and determin[e] the validity of a patent.” McGaw v. Bryan, 16 F. Cas. 96, 97, 99 (S.D.N.Y. 1821) (No. 8793). This interpretation would have provided a solution to anxieties Judge Van Ness had expressed in another patent law opinion: “The very great and very alarming facility with which patents are procured [was] producing evils of great magnitude” and some means were needed “to arrest this torrent of fraud and imposition.” Thompson v. Haight, 23 F. Cas. 1040, 1041–42 (C.C.S.D.N.Y. 1826) (No. 13,957).

177 Ex parte Wood, 22 U.S. (9 Wheat.) at 608–09. 178 Id. at 613–14.

179 The Court later suggested that some early courts may not have fully understood the distinction between § 6 defenses that protected only the defendant and those that operated more broadly. See Grant v. Raymond, 31 U.S. (6 Pet.) 218, 246 (1832).

180 Id. 181 Id. at 246–47. 182 Id. at 247; see also Odiorne v. Winkley, 18 F. Cas. 581, 583 (Story, Circuit Justice, C.C.D. Mass. 1814) (No. 10,432) (upholding jury verdict of patent invalidity in a § 6 infringement suit and entering judgment “upon the records of a vacatur of the patent”).

183 See, e.g., Bamzai, supra note 31, at 2060–61 (offering various scenarios in which nonparties may

benefit incidentally from injunctions).

184 Id. 185 Id. at 2060; Sohoni, supra note 2, at 932 (recognizing that nuisance abatement benefits nonparties

to a suit).

186 See, e.g., Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 425 (1822) (explaining that, should the defendant provide “special notice” in an infringement suit under § 6 of the Act of 1793, an appropriate jury finding “might authorize the Court to adjudge the patent void”). Notably, however, the prospect of such a judgment did not disqualify a witness who had used the patented machine and would benefit from the patent’s invalidation. Id. at 425–26. Justice Story explained that only witnesses with a definite interest in the case’s outcome were incompetent to testify. Id. at 426. Yet the witness who had previously used the patented machine had only a contingent interest: the witness (as a nonparty) would not be bound by a judgment for the plaintiff upholding the patent and could, in a subsequent infringement suit, relitigate the issues of patent validity on providing the requisite notice. Id. at 425–26. The witness’s interest, therefore, was contingent on the defendant’s success in voiding the patent. Justice Story’s reasoning demonstrates that the Court was not troubled by the asymmetric effects that critics identify as a reason to doubt judicial power to issue nonparty protective relief. See, e.g., Bray, supra note 1, at 460 (articulating the asymmetry critique).

187 See infra Section II.B.3. 188 Delano v. Scott, 7 F. Cas. 378, 382 (E.D. Pa. 1835) (No. 3753). 189 Id.

190 Id. 191 See, e.g., Naturalization Act of 1790, ch. 3, 1 Stat. 103 (repealed 1795) (permitting an alien to petition a federal court for naturalization); Naturalization Act of 1795, ch. 20, 1 Stat. 414 (repealed 1802) (same); Act of Mar. 1, 1817, ch. 22, § 4, 3 Stat. 347, 348 (creating an action in civil forfeiture for certain violations of export regulations).

192 See supra notes 60–71 and accompanying text. 193 See De Smith, supra note 21, at 40–41 (identifying mandamus, certiorari, quo warranto, and scire facias as prerogative writs; explaining that all writs issue in the name of the Crown but “only writs that were conceived as standing in a special relationship with the Crown came to be regarded as ‘prerogative’ writs”).

194 See id. 195 Pfander & Wentzel, supra note 44, at 1301; 3 WILLIAM BLACKSTONE, COMMENTARIES ON THE

LAWS OF ENGLAND 110 (Edward Christian ed., 13th ed. 1796).

196 See Bowie, supra note 120, at 1423–24, 1452. 197 Thus, in The Prince’s Case, Attorney General Edward Coke brought suit on behalf of the Crown to cancel certain land grants with a view toward recovering title to landed property for the benefit of King James. See The Prince’s Case (1606) 77 Eng. Rep. 496, 519; 8 Co. Rep. 13b, 31a (adjudging that letters patent by Queen Elizabeth should “be revoked, vacated, and annulled, and had and held as void and invalid, and for a (mere) nullity; and also that the enrolment thereof as to the same manors, be quashed and annihilated, and that those manors with the appurtenances be taken and seised into the hands of the said lord and now King”). For the suggestion that the writ of scire facias was early used “when the sovereign had personal interest in the repeal of royal grants,” see CORYTON, supra note 107, at 164.

198 See RICHARD GODSON, A PRACTICAL TREATISE ON THE LAW OF PATENTS FOR INVENTIONS AND

OF COPYRIGHT 271 (1840); De Smith, supra note 21, at 41; CORYTON, supra note 107, at 168.

199 See CORYTON, supra note 107, at 165 (explaining that “the prerogative writ of scire facias to repeal [letters patent] may be sued out either directly by the crown or with the consent of the crown, on the relation of an individual who may be the relator, and in subsequent proceedings it is wholly immaterial whether the scire facias, which in all cases must be in the name of the king, is issued with or without a relator”); see also Jackson ex dem. Maucius v. Lawton, 10 Johns. 23, 24 (N.Y. Sup. Ct. 1813) (noting that the proper way to test title conferred by letters patent was “by a writ of scire facias sued out on the part of the government, or by some individual prosecuting in its name”).

200 See GODSON, supra note 198, at 271; De Smith, supra note 21, at 41; CORYTON, supra note 107, at 166. For Blackstone’s account of the way in which the fiat of the attorney general maintained the fiction of royal consent, see James E. Pfander, Sovereign Immunity and the Right to Petition: Toward a First Amendment Right to Pursue Judicial Claims Against the Government, 91 NW. U. L. REV. 899, 901 n.6, 921–26 (1997), acknowledging the formal doctrine of Crown immunity from suits for redress but quoting Blackstone’s view that “the law hath furnished the subject with a decent and respectful mode of removing that invasion, by informing the king of the true state of the matter in dispute: and, as it presumes that to know of an injury and to redress it are inseparable in the royal breast, it then issues as of course, in the king’s own name, his orders to his judges to do justice to the party aggrieved.”

201 See CHITTY, supra note 107, at 330–31 (“If a Crown grant prejudice and affect the rights of third persons, the King is by law bound on proper petition to him, to allow a subject to use his royal name, to repeal it in a scire facias. And it is said that in such case the party prejudiced may, upon the inrolment of the grant in Chancery, have a scire facias to repeal it, as well as the King; as in the instance of an unfounded patent for an invention, or where the specification is incorrect.”); CORYTON, supra note 107, at 166 (“A scire facias, it said, may be sued by any person who is prejudiced by a patent as well as by the crown. No matter whence the movement for its suppression, the crown is bound to lend its support.”); 6 DANE, supra note 107, at 473–74 (explaining that the remedy to cancel letters patent may be had in the United States “as in England, by such scire facias; and where a patent is prejudicial to the subject, a scire facias is held to be a writ of right, to repeal it”); GUDE, supra note 107, at 233–34 (“[I]f the grant be injurious to a subject, the King is bound of right to permit him (upon his petition) to use his royal name for repealing the patent in a scire facias.”).

202 De Smith, supra note 21, at 41 (reporting that the prerogative writs, including “[s]cire facias for the purpose of rescinding royal grants, charters, and franchises,” were “obtained by subjects in the sixteenth century” upon the approval of the attorney general); see also FOSTER, supra note 108, at 249 (stating that a writ of scire facias issues upon fiat of the attorney general, which “is obtained as a matter of course”).

203 See Patent Act of 1793, ch. 11, § 10, 1 Stat. 318, 323 (repealed 1836) (requiring only that an “oath

or affirmation be[] made, before the judge of the district court”).

204 See, e.g., THE FEDERALIST NO. 69 (Hamilton) (describing America’s burgeoning government as one that placed power “in the hands of the elective and periodical servants of the people,” while describing the British government as “an aristocracy, a monarchy, and a despotism”).

205 Ex parte Wood, 22 U.S. (9 Wheat.) 603, 614 (1824); Stearns v. Barrett, 22 F. Cas. 1175, 1179 (Story, Circuit Justice, C.C.D. Mass. 1816) (No. 13,337); 2 FRANCIS J. TROUBAT & WILLIAM W. HALY, THE PRACTICE IN CIVIL ACTIONS AND PROCEEDINGS, IN THE SUPREME COURT OF PENNSYLVANIA, AND

IN THE DISTRICT COURT AND COURT OF COMMON PLEAS FOR THE CITY AND COUNTY OF PHILADELPHIA; AND ALSO IN THE COURTS OF THE UNITED STATES 385 (1837).

206 For examples of the style of humble petitioning common in such submissions, see Pfander, supra

note 200, at 910–11 n.37.

207 See Patent Act of 1793, ch. 11, § 10, 1 Stat. at 323 (providing that the defendant need not “show cause[] why process should not issue against him” until “the matter alleged shall appear to [the district court] to be sufficient”).

208 Thomas Jefferson proposed a similar adaptation when he introduced English practice on the petition of right into the revised, republicanized laws of the Commonwealth of Virginia. Instead of beginning with a petition to the executive, practice on Jefferson’s republicanized version of the English petition of right authorized suit in law or equity by any party with a demand on the state. See 9 WILLIAM WALLER HENING, STATUTES AT LARGE: BEING A COLLECTION OF ALL THE LAWS OF VIRGINIA, FROM THE FIRST SESSION OF THE LEGISLATURE, IN THE YEAR 1619, at 540 (1821) (“[A]ny person [who] shall think himself aggrieved . . . shall be at liberty to petition the high court of chancery or the general court, according to the nature of his case, for redress, and such court shall proceed to do right thereon . . . .”). On Jefferson’s interest in updating the laws of Virginia to conform to republican norms, see THOMAS JEFFERSON, WRITINGS OF THOMAS JEFFERSON: BEING HIS AUTOBIOGRAPHY, CORRESPONDENCE, REPORTS, MESSAGES, ADDRESSES, AND OTHER WRITINGS, OFFICIAL AND PRIVATE 36, 42 (Taylor & Maury eds., 1854), explaining the need for revision of Virginia’s laws, which contained “many very vicious points which urgently required reformation” and remarking that “our whole code must be reviewed, adapted to our republican form of government; and, now that we had no negatives of Councils, Governors, and Kings to restrain us from doing right, that it should be corrected, in all its parts, with a single eye to reason, and the good of those for whose government it was framed.”

209 On the use of bounties to induce informers to enforce federal law, see Evan Caminker, The Constitutionality of Qui Tam Actions, 99 YALE L.J. 341 (1989); and James E. Pfander, Public Law Litigation in Eighteenth Century America: Diffuse Law Enforcement in a Partisan World, 92 FORDHAM L. REV. 469 (2023). Cf. Act of March 22, 1794, ch. 11, § 2, 3 Stat. 347, 349, providing that anyone found to have violated the law must pay “one moiety . . . to the use of him or her who shall sue for and prosecute” the suit.

no indication of an intention, that the United States are to be brought in as a party to a litigation, respecting the validity of any rights claimed or denied under those laws. On the contrary, these rights are considered as the private rights of the party who has duly obtained them, and are afterwards to be impeached and defended as such . . . . It is a controversy strictly between these parties, although the public may have an eventual interest in it. [If the patent] be defeated, the pretended invention becomes a common property.214

210 See Patent Act of 1793, ch. 11, § 10, 1 Stat. at 323. 211 Wood v. Williams, 30 F. Cas. 485, 486 (E.D. Pa. 1834) (No. 17,968). This fee-shifting structure reflects a practice in scire facias suits at common law that was meant to “prevent patentees [from] being vexatiously harassed by actions of scire facias.” FOSTER, supra note 108, at 250. According to Thomas Foster, the Attorney General would only grant the requisite fiat “on [the] condition that [the prosecutor] enters into a bond of indemnity . . . to pay the patentee the amount of his costs taxed as between attorney and client, if the action against him should fail.” Id. It is unclear when the attorney general adopted this practice.

212 See Williams, 30 F. Cas. at 485–86. 213 See id. at 485. The report does not explain the plaintiff’s motive in seeking the government’s inclusion as a plaintiff. Notably, however, the statute obliged the plaintiff to pay the defendant’s costs if the patent’s validity was upheld. See Patent Act of 1793, ch. 11, § 10, 1 Stat. at 323. The district court pointedly quoted these provisions, explaining that “the party, (so he is denominated,) at whose complaint the process issued, shall have judgment against him, he shall pay all such costs as the defendant shall be put to, in defending the suit.” Williams, 30 F. Cas. at 486.

214 Williams, 30 F. Cas. at 486. In support of its conclusion, the district judge reported that:

[The] clerk of this court has examined its records, and produced several actions for the repeal of patents. Some of them are upon motions for process, and some after the scire facias has issued. In all, the parties are stated on the record to be the complainant, as the plaintiff; and the patentee, as the defendant. Not an instance, in which the United States were introduced as the plaintiffs.

Id. at 487.

215 See infra note 283 and accompanying text; cf. Pfander, supra note 209, at 479–80 (describing the role of the New England Quakers in enforcing public laws prohibiting American involvement in the international slave trade).

216 Though administered in England by the High Court of Chancery, proceedings on a writ of scire facias were decidedly legal in character. Once issues of fact were identified, the Chancellor sent the suit to a common law court where a jury was empaneled to decide the case. See Beauchamp, supra note 113, at 657. In the well-known patent cancellation proceeding, Rex v. Arkwright, for example, Justice Francis Buller presided as a judge of King’s Bench and the jury returned a verdict in favor of cancellation. DAVIES, supra note 124, at 61, 104–05. The same historical practice doubtless informed Justice Story’s early conclusion that proceedings in the nature of scire facias under the Patent Act of 1793 were triable to a jury, a conclusion the Court would later embrace in Ex parte Wood, 22 U.S. (9 Wheat.) 603, 614 (1824).

217 General v. Vernon (1684) 23 Eng. Rep. 468; 1 Vern. 277. 218 The meaning of “set aside” in § 706 of the APA plays a central role in the current debate over

whether the APA grants federal courts the power to nullify administrative action. See supra note 43.

219 Vernon, 23 Eng. Rep. at 468; 1 Vern. at 277. The report suggests that the defendants had paid £7000 for the land granted in the seventeenth century; the Crown sought to vacate the grant at least in part because it had charged too little for the land in question. Valued in current dollars, £7000 in the seventeenth century would be worth some $1.4 million today. See Eric Nye, Pounds Sterling to Dollars: Historical Conversion of Currency, UNIV. OF WYO., https://www.uwyo.edu/numimage/currency.htm [https://perma.cc/M6UQ-CHDP] (enter “1650” for source year, “2025” for target year, and “7000” for old value in pounds).

220 Vernon, 23 Eng. Rep. at 468; 1 Vern. at 277. 221 Id. at 469; 1 Vern. at 278. 222 Id. at 470; 1 Vern. at 282. Suitors in scire facias proceedings could challenge a deceit or fraud that appeared in the body of the patent. But the frauds for which the Crown sought relief had been used to secure the grant. Id. at 470; 1 Vern. at 281.

223 Among other unresolved questions, the Attorney General observed that the defendant’s argument based on the location of the records, if correct, would deprive the Crown of any remedy. The patents in question were not records of “this court,” meaning that the King “could have no remedy by scire facias.” Id. at 470; 1 Vern. at 281. According to Professor Mark Lemley, the record was “in the records of the Chancellor of the Duchy of Lancaster.” Lemley, supra note 106, at 1684 n.46.

224 Vernon, 23 Eng. Rep. at 469; 1 Vern. at 278. 225 Id.; 1 Vern. at 277. The report of the decision does not include any direct ruling on the breadth of any set aside order. But assumptions as to the conclusive nature of the equity decree repealing the patent have been shared in scholarly assessments of the decision. See Lemley, supra note 106, at 1684 n.46; see also Brief for Goméz-Arostegui & Bottomley, supra note 122, at 28 n.89 (describing the remedy in Vernon as an annulment of the patent). A court of equity might afford relatively complete relief by enjoining the defendants to refrain from asserting title to the property in question, without necessarily directing the cancellation or destruction of the patent itself. In a bilateral dispute, a simple injunction might amply protect the Crown.

Apart from cancellation suits, Professors Tomás Goméz-Arostegui and Sean Bottomley report that the High Court of Chancery came to play a more significant role in patent infringement litigation in eighteenth-century England, superseding the Privy Council. See Brief for Goméz-Arostegui & Bottomley, supra note 122, at 32–37. What’s more, Bottomley explains that the patent-validity calculus in these proceedings changed from the Privy Council’s all-things-considered evaluation of the patent’s economic and policy justifications to Chancery’s more legalistic (and classically equitable) emphasis on protecting the property rights of private parties. Id. at 37–42.

226 Jackson ex dem. Mancius v. Lawton, 10 Johns. 23, 23–24 (N.Y. Sup. Ct. 1813). 227 Id. at 24. 228 Id. 229 Id. at 25. 230 Id. at 25–26. 231 13 U.S. (9 Cranch) 87, 98 (1815). 232 Id. 233 Id. at 99. 234 Id. In a later Supreme Court case, United States v. Stone, the Court expressed a similar opinion, stating that, although in England annulling a patent “was originally done by scire facias,” in the United States a “bill in chancery [was] found a more convenient remedy.” 69 U.S. (2 Wall.) 525, 535 (1865).

235 Polk’s Lessee, 13 U.S. (9 Cranch) at 99; see also Jones v. White, 2 Va. Ch. Dec. 111, 113 (Va. High Ct. Ch. 1791) (“[I]n controversies of this nature, where fraud is suggested and proved, courts of equity have competent jurisdiction, are most usually and properly resorted to, and can afford ample and adaequate relief . . . .”).

236 Though the Court in Polk’s Lessee viewed courts of equity as preferable to courts of law, courts of law could hear challenges to land grants if the patent was “absolutely void.” Polk’s Lessee, 13 U.S. (9 Cranch) at 99. A court of law was able to preside over the patent challenge because, when a patent was “absolutely void, (or inoperative[]),” a litigant could try to impeach it in a collateral proceeding, such as an ejectment action. Doe ex dem. Patterson v. Winn, 24 U.S. (11 Wheat.) 380, 384 (1826). In Polk’s Lessee, Chief Justice Marshall elaborated on circumstances that would make a patent “absolutely void”: (1) when a state lacked “title to the thing granted” or (2) when “the officer had no authority to issue the grant.” Polk’s Lessee, 13 U.S. (9 Cranch) at 99. In the later case of Doe v. Winn, the Court added a third example: if the issuance of the patent “was prohibited by statute.” Doe, 24 U.S. (11 Wheat.) at 384. The Doe Court thus described the “settled doctrine” as:

“[I]f a patent is absolutely void upon its face, or the issuing was without authority, or was prohibited by statute, or the State had no title, it may be impeached collaterally, in an action of ejectment. But, in general, other objections and defects complained of must be put in issue, in a regular course of proceedings, on a direct proceeding to avoid the patent.”

Id. These conditions giving rise to void patents had one thing in common: the State lacked the power to grant the patent in the first place. In this way, the proceedings mimicked one of the bases for obtaining a writ of scire facias at common law—that it was not within the Crown’s power to grant the patent. See 2 ROBINSON, supra note 124, at 475.

237 52 U.S. (11 How.) 552 (1850). 238 Id. at 567 239 Id. at 569. 240 Id. 241 Id.

[T]he United States, as owner, having been paid for the land, was bound to make [Goodbee] a title, in the same manner that an individual would have been bound under similar circumstances . . . .

[But the government stands] divested of the legal title, and therefore cannot fulfil their engagement with Goodbee . . . until the grant to Hughes is annulled.

It is manifest that, if the agents of an individual had been thus imposed on, the conveyance could be set aside because of mistake on part of such agents, and fraud on part of the second purchaser, in order that the first contract could be complied with. Nor can it be conceived why the government should stand on a different footing from any other proprietor.242

242 Id. at 568. 243 An information in the nature of a bill in chancery was a filing by the attorney general to “annul a patent to lands granted by the state to an individual, in a case in which the matter involved in the suit immediately concern[ed] the rights and interests of the state.” JAMES M. KERR, A TREATISE ON THE LAW OF PLEADING AND PRACTICE UNDER THE PROCEDURAL CODES 821 (1919). An information was distinct from a simple bill in equity, because the former was carried out by a government actor and imbued with a public purpose, whereas the latter was brought by a private individual.

244 United States v. Hughes, 52 U.S. (11 How.) 552, 568 (1850). Only because the suit, “[i]n substance, [was] a bill in equity,” did the Court “not dismiss it for want of form.” Id. The Court’s attempt to distance American practice from English practice, by requiring less government control over patent litigation, is reminiscent of the early patent statutes’ lower threshold for standing. See supra notes 202– 207 and accompanying text.

245 Hughes, 52 U.S. (11 How.) at 568 (emphasis added). 246 In the statute, Congress provided that federal circuit courts “upon any bill in equity, filed by any party aggrieved in such cases, shall have authority to grant injunctions . . . to prevent the violation of the rights of any authors or inventors . . . on such terms and conditions as the said courts may deem fit and reasonable.” Act of Feb. 15, 1819, ch. 19, 3 Stat. 481. For accounts, see James Ryan, A Short History of Patent Remedies, 6 CYBARIS 150, 161 (2015); 1 TROUBAT & HALY, supra note 205, at 93–94; AND Chauncey Smith, A Century of Patent Law, 5 Q. J. ECON. 44, 46 (1890).

247 Patent Act of 1836, ch. 357, 5 Stat. 117. The 1836 Act made several consequential changes. To improve the quality of initial patent grants, the Act assigned the decision to a commissioner, followed by review before a patent appeal board. If dissatisfied with the board’s decision, parties could contest the outcome by suit in equity in federal court under § 16 to challenge either the agency’s grant or denial of the patent. Apart from authorizing relatively searching administrative and judicial review of the initial patent decision, the 1836 Act authorized defendants targeted in § 15 infringement suits to contest the validity of the patent, just as they can today (and could under the 1793 statute). Id. Yet the 1836 Act made no provision for a scire facias-type action—unlike the 1793 statute, it “contained no provision” allowing individuals to offensively challenge a patent that had been obtained surreptitiously or on false suggestion. See Attorney General v. Rumford Chem. Works, 32 F. Cas 608, 622 (C.C.D.R.I. 1876). As a result, the relief contemplated in the 1836 Act was party-specific; § 16 expressly provided that “no such judgment or adjudication shall affect the rights of any person except the parties to the action.” Patent Act of 1836, ch. 357, § 16, 5 Stat. 117, 124; see Mowry v. Whitney, 81 U.S. (14 Wall.) 434, 441 (1871) (stating that judgments of patent invalidity operated only “between the parties to the suit”). Offensive suits to cancel invalid patents were thus “left to the protection of the government and its officers.” Id.

One might argue that Congress’s apparent rejection of nonparty protective relief in 1836 casts doubt on the historical significance of the 1793 patent law’s authorization of such relief. But we have seen no evidence that Congress made the change out of a sense of constitutional compulsion based on the supposed limits of judicial power. Rather, Congress decided to improve the quality of initial patent issuance by switching from the registration model in 1793 (under which petitioners could secure patent rights by registration) to an examination model in 1836 (under which experts assessed patent applications). Congress apparently expected that, with closer initial scrutiny by the patent board and by a federal court of equity at the suit of interested parties, fewer poor-quality patents would be issued, and fewer cancellation suits would be needed.

248 Patent Act of 1836, ch. 357, § 16, 5 Stat. 117, 124. The following section of the 1836 Act, § 17, also mentioned bills in equity as an available remedy, further marking a shift towards equity practice in patent law. It stated that circuit courts “shall have [the] power, upon bill in equity filed by any party aggrieved, . . . to grant injunctions . . . to prevent the violation of the rights of any inventor.” Id. § 17. These provisions in the 1836 Act for suits in equity depart from the 1793 Act, which nowhere mentioned proceedings in equity. Compare id., with Patent Act of 1793, ch. 11, 1 Stat. 318 (repealed 1836).

249 Patent Act of 1836, ch. 357, § 16, 5 Stat. 117, 124 (emphasis added). 250 Id. (emphasis added). The power to tailor the remedy geographically may shed light on Professor Morley’s criticism of nationwide injunctions for having effect outside the district court’s circuit. See Michael T. Morley, Nationwide Injunctions, Rule 23(b)(2), and the Remedial Powers of the Lower Courts, 97 B.U. L. REV. 615, 623, 649 (2017) (criticizing district courts’ use of universal injunctions to issue relief to nonparties and declare what the law is for areas outside the circuit in which the district court sits). 251 As noted above, the 1836 Act limited relief to the parties. See supra note 247. One might posit that this limitation undermines the power of courts of equity to provide nonparty protective relief. We believe it cuts the other way: Congress’s decision to expressly provide that the relief would not extend to nonparties suggests that, absent such language, the court’s ruling would have affected nonparties. In other words, Congress specified the limited scope of the relief because Article III itself did not provide such boundaries. Though perhaps one could argue that Congress was legislating around a constitutional hazard, contemporary courts’ practice of canceling land patents upon bills in equity indicates otherwise.

252 Judge Van Ness opposed Justice Story’s interpretation for that very reason—he wanted to

facilitate, not encumber, patent repeals. See supra note 176.

253 S. REP. NO. 24-338, at 1–15 (1836). According to the report, the 1836 Act targeted the following problems: (1) many patents were “worthless and void” because they conflicted and interfered with others; (2) there was an excessive amount of patent monopolies and bona fide patentees lacked adequate protection of their rights; (3) this overflow of illegitimate patents led to excessive lawsuits; and (4) the current system enabled frauds who could travel the country, seeking payment for use of their patent. Id.

at 3. To address these issues, the report found it of utmost importance to “establish a check upon the granting of patents.” Id. at 4.

254 6 DANE, supra note 107, at 462; see also HINDMARCH, supra note 22, at 233; CORYTON, supra note 107, at 163. During the early Republic, the Department of State housed invention patent records. Federico, supra note 156, at 237–38; McGaw v. Bryan, 16 F. Cas. 96, 100 (S.D.N.Y. 1821) (No. 8793). And land patent records changed locations over the nineteenth century, moving from the Department of Treasury, to the Department of State, back to the Department of Treasury, and finally to the Department of the Interior. See MILTON CONOVER, THE GENERAL LAND OFFICE; ITS HISTORY, ACTIVITIES AND ORGANIZATION 14, 16, 25 (1923).

255 See, e.g., United States v. Hughes, 52 U.S. (11 How.) 552, 568–69 (1851) (describing a bill in equity as a suit against the defendant and ordering the defendant to surrender his patent to the clerk for cancellation within one month of the judgment’s filing).

256 See Attorney General v. Vernon (1684) 23 Eng. Rep. 468; 1 Vern. 277, 281 (holding that the alleged fraud was properly relievable in the English side of equity after hearing argument that the Crown would have no remedy outside of that tribunal, as there “[wa]s no remedy to be had in the Dutchy Court”). Recall that the disputed record in Vernon was “in the records of the Chancellor of the Duchy of Lancaster.” See Lemley, supra note 106, at 1684 n.46. That the Attorney General could not obtain relief in the court holding the disputed record, therefore, seemingly counseled in favor of the equity side of Chancery remedying the alleged fraud.

257 Jackson ex dem. Mancius v. Lawton, 10 Johns. 23, 26 (N.Y. Sup. Ct. 1813). 258 Polk’s Lessee v. Wendal, 13 U.S. (9 Cranch) 87, 99 (1815).

The scire facias to repeal a patent was brought in chancery where the patent was of record. And though in this country the writ of scire facias is not in use as a chancery proceeding, the nature of the chancery jurisdiction and its mode of proceeding have established it as the appropriate tribunal for the annulling of a grant or patent from the government. This is settled so far as this court is concerned by the case of the United States v. Stone, in which it is said that the bill in chancery is found a more convenient remedy. A bill of this character was also sustained in the English chancery in the case of the Attorney-General v. Vernon, on the ground of the equitable jurisdiction in matters of fraud. And in the case of Jackson v. Lawton, Ch[ief Justice] Kent says that in addition to the writ of scire facias, which has ceased to be applicable with us, there is another remedy by bill in the equity side of the court of chancery.263

259 Id. 260 United States v. Stone, 69 U.S. (2 Wall.) 525, 535 (1865). 261 Id. 262 Id. 263 Mowry v. Whitney, 81 U.S. (14 Wall.) 434, 440 (1872).

264 Thus, the Court explained that, except as to the individual suits in equity authorized by § 16 of

the Act of 1836, only the government could bring suit to cancel invention patents. Id. at 440–41.

265 Burke Shartel, Federal Judges: Appointment, Supervision, and Removal: Some Possibilities Under the Constitution, 28 MICH. L. REV. 870, 884–85, 884 n.38 (1930); see also Lemley, supra note 106, at 1699 (indicating that by 1871, it was established that relief previously available via scire facias was now offered by proceedings in equity); United States v. Schurz, 102 U.S. 378, 404 (1880) (remarking, in a case that compelled the delivery of a land patent to an individual, that “if there be any equitable reason why . . . he should not have it . . . the United States can, by a bill in chancery, have a decree annulling the patent, or possibly a writ of scire facias”).

266 402 U.S. 313, 350 (1971). The switch to a focus on the validity of patent claims, rather than patents as a whole, stemmed from Congress’s decision in the 1830s to allow patent holders to disclaim some portion of their patent and bring infringement suits on the valid remainder. For an account, see P.J. Federico, Commentary on the New Patent Act, 75 J. PAT. OFF. SOC’Y 161, 208 (1993) (tracing the arc of

the disclaimer from the common law rule of wholesale patent invalidity; Congress’s creation of a right to disclaim in 1837; the resulting confusion as to the status of particular patent claims; and the ultimate decision of Congress to clarify in the Patent Act of 1952 that patent holders could enforce any valid portion of their patent claims, without any necessity to disclaim).

267 Blonder-Tongue, 402 U.S. at 314–15. 268 Id. at 313–317. 269 Id. at 350. 270 On the relevance of consolidated adjudication to the application of principles of nonmutual estoppel of the kind approved in Blonder-Tongue, see Bamzai, supra note 31, at 2052–54. Subsequent legislation has consolidated patent appeals in the U.S. Court of Appeals for the Federal Circuit. See 28 U.S.C. § 1295(a). Such consolidation virtually eliminates circuit conflicts as to patent validity and the need for nonmutual estoppel, since the Federal Circuit’s judgment on patent validity will operate nationally unless reversed by the Supreme Court.

271 Blonder-Tongue, 402 U.S. at 339 (quoting PRESIDENTIAL COMM’N ON PAT. REFORM, TO

PROMOTE THE PROGRESS OF USEFUL ARTS, S. DOC. NO. 90-5, at 38 (1966 .

272 Id. at 339–340 (quoting PRESIDENTIAL COMM’N ON PAT. REFORM, TO PROMOTE THE PROGRESS

OF USEFUL ARTS, S. DOC. NO. 90-5, at 39 (1966 .

III. SOME LESSONS FROM HISTORY

273 See Fresenius USA, Inc. v. Baxter Int’l, Inc., 733 F.3d 1369, 1371–72 (Fed. Cir. 2013);

Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1580 (Fed. Cir. 1994).

274 See Pub. L. No. 112-29, 125 Stat. 284 (2011) (codified in scattered sections of 35 U.S.C.). 275 See 35 U.S.C. §§ 311–319, 321. 276 See CHRISTOPHER T. ZIRPOLI & KEVIN J. HICKEY, CONG. RSCH. SERV., R48016, THE PATENT TRIAL AND APPEAL BOARD AND INTER PARTES REVIEW 17 (2024) (reporting that of the petitions seeking PTAB review of patent issuance, 97.6% invoke the process of inter partes, as opposed to post-grant, review).

277 See 35 U.S.C. § 311(a). 278 See id. § 314(a). 279 See id. § 318(b).

280 See, e.g., Dobbs v. Jackson Women’s Health Org., 142 S. Ct. 2228 (2022) (overruling Roe v. Wade, 410 U.S. 113 (1973 ; Lawrence v. Texas, 539 U.S. 558 (2003) (overruling Bowers v. Hardwick, 478 U.S. 186 (1986 ; Brown v. Board of Education, 347 U.S. 483 (1954) (overruling Plessy v. Ferguson, 163 U.S. 537 (1896 .

281 See Richard H. Fallon, Jr., The Many and Varied Roles of History in Constitutional Adjudication,

90 NOTRE DAME L. REV. 1753, 1753–55 (2015).

282 For example, we have not attempted to offer a complete chronicle of the development of patent cancellation litigation and have omitted many details of the practice as it evolved after the Patent Act of 1836. See supra notes 246–255 and accompanying text. On the other hand, our account of the adaptive nature of federal equity fits well within the framework other scholars have defended. See, e.g., Owen W. Gallogly, Equity’s Constitutional Source, 132 YALE L.J. 1213, 1222–23 (2023) (arguing that equitable remedies were anchored to a core set of legal principles yet designed to modestly adapt to novel circumstances); Anna Conley, The Inevitability of Adaptability – Comparative Contributions to

Understanding Originalism, 39 EMORY INT’L L. REV. 467, 509 (2025) (“The original meaning of ‘equity’ in the 1780s was a principle-based judicial power that could and should adapt to societal changes.”).

283 See supra notes 80–98 and accompanying text. 284 See supra notes 59–79 and accompanying text. 285 See Pfander, supra note 209, at 474. See generally Nitisha Baronia, Jared Lucky & Diego Zambrano, Private Enforcement at the Founding and Article II, 114 CALIF. L. REV. (forthcoming 2026) (recounting the historical pedigree of Congress authorizing and incentivizing private actors to enforce public laws).

286 See supra notes 188–215 and accompanying text. 287 With its references to suits in law, equity, and admiralty, Article III omits the power of English courts to hear cases of ecclesiastical jurisdiction. The church courts in England enforced their judgments with decrees of excommunication, a remedial option inapplicable to the courts of a nation lacking an established church. See James E. Pfander & Michael J.T. Downey, In Search of the Probate Exception, 67 VAND. L. REV. 1533, 1545–46 (2014).

288 See supra notes 216–224 and accompanying text. 289 See supra notes 85–105 and accompanying text. 290 See supra notes 246–250 and accompanying text.

291 Polk’s Lessee v. Wendal, 13 U.S. (9 Cranch) 87, 99 (1815); see also supra notes 230–235 and

accompanying text (explaining the reasoning of the opinion). 292 See supra notes 167–170 and accompanying text. 293 For an example of foreclosure, see Biden v. Texas, 142 S. Ct. 2528, 2532 (2022), interpreting

8 U.S.C. § 1252(f)(1) as a bar to nonparty protective relief.

294 See Bray, supra note 1, at 457–65 (identifying forum shopping, distorted decisionmaking, conflicting injunctions, and doctrinal tensions as some harmful consequences of the multi-chancellor system).

295 See Bray, supra note 2, at 813, 860 nn.307–08 (highlighting forum-shopping concerns); Gregg Costa, An Old Solution to the Nationwide Injunction Problem, HARV. L. REV. BLOG (Jan. 25, 2018), https://harvardlawreview.org/blog/2018/01/an-old-solution-to-the-nationwide-injunctionproblem/ [https://perma.cc/K57F-2FQW] (promoting three-judge panels to decrease the risks and harms of forum-shopping); Howard M. Wasserman, Concepts, Not Nomenclature: Universal Injunctions,

Declaratory Judgments, Opinions, and Precedent, 91 U. COLO. L. REV. 999, 1025 (2020) (recounting how universal injunctions minimize input from lower courts on an issue by, for the time being, giving the first to speak the final say).

296 For a recitation of such concerns, see Labrador v. Poe, 144 S. Ct. 921, 927–28 (2024) (mem.)

(Gorsuch, J., concurring).

297 One can defend the result in CASA without embracing its methodology. By limiting the federal courts to the exercise of equitable authority that derives from an appropriate antecedent in the practice of the High Court of Chancery, circa 1789, the Court extended Grupo Mexicano’s diversity-based limitation on federal equity to public law litigation and thereby set in motion a potentially disruptive measure of the potential scope of federal equitable remedies. For a more detailed assessment, see James E. Pfander & Samy Abdelsalam, Pulp Fiction? A Reappraisal of Ex parte Young (Oct. 20, 2025) (unpublished manuscript) (draft on file with Northwestern University Law Review).

298 Cf. Bamzai, supra note 31, at 2052–54, 2067 (identifying consolidation in a lower court as one

factor that may tend to support arguments for the issuance of nonparty protective relief).

299 See supra note 172 and accompanying text. 300 On the rise of three-judge courts in response to the decision in Ex parte Young, 209 U.S. 123

(1908), see HART & WECHSLER, supra note 24, at 1416–17.

301 See Sohoni, supra note 2, at 997–98.

302 See Act of June 18, 1910, ch. 309, § 17, 36 Stat. 539, 557. For an account of the history of threejudge courts, see Michael E. Solimine, Congress, Ex parte Young, and the Fate of the Three-Judge District Court, 70 U. PITT. L. REV. 101 (2008). On the relative specialization of the judges of the three-judge court, see John E. Lockwood, Carlyle E. Maw & Samuel L. Rosenberry, The Use of the Federal Injunction in Constitutional Litigation, 43 HARV. L. REV. 426, 450–51 (1930), describing the federal courts as “specialists” in interpreting the federal Constitution but viewing state courts as “best designed” to explicate the issues of state law involved in Ex parte Young litigation.

303 Justice Kavanaugh has understandably emphasized that factor in urging the validity of all-ornothing relief in the APA context. See Corner Post, Inc. v. Bd. of Governors of the Fed. Rsrv. Sys., 144 S. Ct. 2440, 2462 (2024) (Kavanaugh, J., concurring) (noting that “Congress used the phrase ‘set aside’ in many pre-APA statutes that plainly contemplated the vacatur of agency actions”); see also id. at 2466 (listing examples of suits that “often arise under statutory provisions that, like the APA, authorize courts to ‘set aside’ agency actions” and that “depend on the availability of vacatur as a remedy”).

304 See id. at 2463 (noting that the D.C. Circuit “handles the lion’s share of the country’s administrative law cases”). The D.C. Circuit has exclusive or concurrent jurisdiction over many agency appeals. Eric M. Fraser, David K. Kessler, Matthew J.B. Lawrence & Stephen A. Calhoun, The Jurisdiction of the D.C. Circuit, 23 CORNELL J.L. & PUB. POL’Y 131, 148–52 (2013) (cataloging statutes that confer exclusive jurisdiction on the D.C. Circuit and describing them as implicating aliens and nationality, public health and welfare, taxes, and foreign relations); see also, e.g., 42 U.S.C. § 7607(b) (requiring all appeals of national Clean Air Act regulations to be filed in the D.C. Circuit). On the D.C. Circuit’s position as the “second most important court” due to its outsized docket of administrative law cases, see Aaron L. Nielson, D.C. Circuit Review – Reviewed: The Second Most Important Court?, YALE J. REGUL.: NOTICE & COMMENT (Sept. 4, 2015), https://www.yalejreg.com/nc/d-c-circuit-reviewreviewed-the-second-most-important-court-by-aaron-nielson/ [https://perma.cc/X567-DP3A]. As Chief Justice Roberts observed, “lawyers frequently prefer to litigate in the D.C. Circuit because there is a far more extensive body of administrative law developed there than in other circuits.” John G. Roberts, Jr., What Makes the D.C. Circuit Different? A Historical View, 92 VA. L. REV. 375, 389 (2006). In addition, the D.C. Circuit affirms agency decisions less often than other circuits. See Richard J. Pierce Jr., What Do the Studies of Judicial Review of Agency Actions Mean?, 63 ADMIN L. REV. 77, 90 (2011) (reporting 11% lower affirmation rate).

305 To curb forum shopping in agency review, Congress enacted 28 U.S.C. § 2112. It provides that if two or more petitions for review are filed against an agency, “[t]he judicial panel on multidistrict litigation shall, by means of random selection, designate one court of appeals, from among” those where petitions were filed to hear the appeal. 28 U.S.C. § 2112(a)(3); see also Mila Sohoni, The Past and Future of Universal Vacatur, 133 YALE L.J. 2305, 2323 n.96 (2024) (describing the statute as resolving an increasingly expensive “race to the courthouse”); Thomas O. McGarity, Multi-Party Forum Shopping for Appellate Review of Administrative Action, 129 U. PA. L. REV. 302, 322–23 (1980) (noting that courthouse races could cost parties $100,000 in 1980).

CONCLUSION

306 See supra note 2 and accompanying text.