Why are you here?

Back in June, Judge Newman took the USPTO to task for intervening in an appeal from an IPR proceeding in which the petitioner had withdrawn and the underlying district court case had been dismissed.  Judge Newman asked what in the world is the USPTO doing in the case and why is it squandering its time and talent in a case where the petitioner withdrew.

Judge Newman’s exchange with the USPTO was as follows:

Judge Newman:  What in the world is the Office doing in this case?  The petitioner withdrew — refuses to defend its win.  The district court case was dismissed. It’s over.  What is the interest of the Office in this conflict?  There’s no Article III conflict  between the Office and this Applicant.  Even if the Office prevails and there is an estoppel, it only affects this petitioner who has already withdrawn.  Why is the Office squandering its time and talent in this debate after the petitioner withdrew?

PTO:  Your Honor, the statute gives the Office the right to intervene in any appeal —

Judge Newman:  The statute can be interpreted as saying anything the Office wants to do, they can do.  I doubt very much that when the Director was authorized to intervene that that meant in anything that anybody felt like intervening in — but in a situation where you were defending some jurisdictional issue.  Here we have an expensive, heavily contested contest/appeal continuing, withdrawn in the district court, nobody seems to care except the Office.  Why should it matter?

PTO:  The Office cares because in large part this was a challenge to the procedures of the Office.  And, the Office has an interest in ensuring that its Board and the manner in which the Board is applying the AIA receives at least a counterpoint consideration.  And this court in many instances in which cases where the petitioner has dropped out has asked the PTO to participate or whether we will participate.  Now admittedly we do not have an order like that in this case.  But, the Director has exercised her statutory authority to participate in the appeal.  And, that is largely why.  It is to protect the integrity of the USPTO Office’s proceedings and the statute.

Judge Newman:  OK. We’ll see.  Thank you.


You can listen to Judge Newman’s exchange with the PTO here:


The entire oral argument is available here:


The court’s opinion in NFC v. Matal is available [here].


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