717 Madison Place

It seems as though the decision in Facebook v. Windy City Innovations (CJ Prost, O’Malley, Plager) should be handed down soon. I noted the oral argument of this case back in August; but, you might want to check out the oral argument if you missed that earlier post. It is an interesting and well-argued oral argument. The case concerned statutory interpretation of the AIA’s joinder statute.

A few of the issues that cropped up in the oral argument were:

1. Why didn’t the PTO intervene in the case to address whether its precedential opinion should be given Chevron deference?
2. Should the PTO’s precedential opinion panel (POP) decisions be given Chevron deference?
3. Did Congress error by referring to infringement of a patent vs. infringement of a patent claim(s) in the AIA?
4. Is the statute ambiguous?
5. Is there a clerical error in the statute?
6. Should the court ask the PTO for its thoughts — even though the PTO chose not to weigh-in in the first instance? (Note: I seem to recall that the court did later ask the PTO for its thoughts.)

Judge Plager expressed the view that the USPTO’s precedential opinion panel decisions were not entitled to Chevron deference:

You can listen to the entire oral argument here:

The briefing in an earlier iteration of this case is available at this prior post: [ https://www.717madisonplace.com/?p=9474 ].

I stumbled across this quote this evening and thought it was interesting:

It is quite true that the Revised Statutes, in the title which establishes and regulates the Department of Justice, simply declares, in § 346, that “there shall be at the seat of government an Executive Department to be known as the Department of Justice, and an Attorney General, who shall be the head thereof.” There is no very specific statement of the general duties of the Attorney General, but it is seen from the whole chapter referred to that he has the authority, and it is made his duty, to supervise the conduct of all suits brought by or against the United States, and to give advice to the President and the heads of the other departments of the government. There is no express authority vested in him to authorize suits to be brought against the debtors of the government, 279*279 or upon bonds, or to begin criminal prosecutions, or to institute proceedings in any of the numerous cases in which the United States is plaintiff; and yet he is invested with the general superintendence of all such suits, and all the district attorneys who do bring them in the various courts in the country are placed under his immediate direction and control. And notwithstanding the want of any specific authority to bring an action in the name of the United States to set aside and declare void an instrument issued under its apparent authority, we cannot believe that where a case exists in which this ought to be done it is not within the authority of that officer to cause such action to be instituted and prosecuted. He is undoubtedly the officer who has charge of the institution and conduct of the pleas of the United States, and of the litigation which is necessary to establish the rights of the government.

United States v. San Jacinto Tin Co., 125 U.S. 273, 278-79 (1888).

Does the Federal Circuit have all the information that it needs to evaluate whether PTAB judges are Principal officers versus Inferior officers? If en banc review is granted in Arthrex, perhaps the court should instruct the government to explain in its brief the behind-the-scenes operations of the PTAB. For example, are other judges allowed to comment on a draft opinion? Are there any levels of review that take place on a draft opinion? Are draft opinions circulated for review by other judges? Are judges assigned randomly? Has non-conformance with agency memos affected any PTAB judge’s pay or promotion? Does the Solicitor’s Office have any input on PTAB decisions, particularly after remand from the Federal Circuit? Does PAIR reflect all the steps taken by the PTAB or is there a non-public database that reflects additional steps or processes? If so, what are those additional steps or processes?

At the very least, the Federal Circuit needs to know the full process that goes on at the PTAB so that it can thoroughly evaluate the supervisory power of the Director. Right now, the court seems to be assuming that it knows the process. One issue that I have been wondering about is whether the Director has been acting with “apparent” authority. Fo example, if the Director and his subordinates have been reviewing draft opinions prior to issuance without any pushback from the PTAB judges, that might be a relevant factor in deciding whether the Director has been acting with “apparent” supervisory authority. If judges have been reviewed based on their conformance with agency policy, that, too, might be indicative of “apparent” supervisory authority. Whether “apparent” supervisory authority is sufficient to answer the underlying question in Arthrex is another matter.

If there are indeed additional steps going on behind the scenes, it would be an interesting question of whether the government attorneys have a duty of candor to inform the court of those processes regardless of whether the government is requested to do so by the court.