{"id":9565,"date":"2018-01-28T21:24:54","date_gmt":"2018-01-29T03:24:54","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=9565"},"modified":"2018-01-28T21:24:54","modified_gmt":"2018-01-29T03:24:54","slug":"going-rogue","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=9565","title":{"rendered":"Going Rogue"},"content":{"rendered":"

In this earlier post [link],<\/a>\u00a0I noted that a reader had pointed me in the direction of the pending Knowles v. Matal<\/em> case at the Federal Circuit. \u00a0In the briefing of that case, the DOJ and USPTO have indicated that in rare circumstances the USPTO might choose to take a position opposite to that rendered by the PTAB, when the PTAB’s decision is appealed to the Federal Circuit. \u00a0I thought it might be of interest to post the pertinent portion of the brief below (with footnotes moved to the end and emphasis added in bolded underlines):<\/p>\n

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C. The USPTO\u2019s statutory authority allows it to choose whether to intervene and, if so, what position to take<\/strong><\/p>\n

Because Article III of the Constitution \u201cposes no bar\u201d to the USPTO\u2019s participation in an appeal from a USPTO decision, see Ingalls, 519 U.S. at 264, we next address the USPTO\u2019s statutory authority to intervene and the extent of that authority. By statute, the Director of the USPTO has a right to intervene in every inter partes case arising from the USPTO. And the Director has statutory authority to take any position in those cases.<\/span><\/strong><\/p>\n

Before Congress passed the America Invents Act (AIA) in 2011, the Patent Act stated, \u201cIn an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.\u201d 35 U.S.C. \u00a7 143 (2002) (emphasis added). Thus, before the AIA, the USPTO was, by statute, a party to every appeal from an inter partes reexamination. The AIA amended that sentence, removing \u201cany reexamination case\u201d from the category of appeals in which the agency was obligated to appear. 35 U.S.C. \u00a7 143 (2012).<\/p><\/blockquote>\n<\/div>\n<\/div>\n

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Instead, Congress added a sentence addressing the agency\u2019s authority to intervene, at its discretion, in appeals from inter partes cases, including inter partes reexaminations. The new sentence states, \u201cThe Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board . . . in an inter partes or post-grant review under chapter 31 or 32.\u201d 35 U.S.C. \u00a7 143 (2012). Although that sentence does not specifically mention inter partes reexaminations, which were being phased out by the AIA, Congress explained elsewhere in the Act that \u201cthe Director\u2019s right under the fourth sentence of section 143\u201d\u2014the sentence just quoted\u2014\u201cto intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations.\u201d AIA, Pub. L. No. 112-29 \u00a7 7(e)(4), 125 Stat. 284, 315 (2011); see also 157 Cong. Rec. S1377 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (\u201cIn the effective-date provision at the end of section [7], various existing [appeal] authorities are extended so that they may continue to apply to inter partes reexaminations commenced under the old system.\u201d); see also Joseph Matal, Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539, 542 n.25 (2012).<\/p>\n

Furthermore, the Director\u2019s right to intervene in inter partes reexaminations extends to those reexaminations \u201cthat are requested . . . before the effective date\u201d of the AIA. Pub. L. No. 112-29 \u00a7 7(e)(4), 125 Stat. 284, 315. In other words, the change in the law was made applicable to all inter partes reexaminations that were requested before the AIA came into effect. Thus, the USPTO\u2019s participation in appeals from inter partes reexaminations went from an obligation to a right, even for inter partes reexaminations that were already pending.<\/p>\n<\/div>\n<\/div>\n<\/div>\n

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The statute thus spells out the situations in which the Director has the right to intervene, which include inter partes reexaminations, inter partes reviews, and other inter partes cases in the USPTO. This Court therefore routinely asks the USPTO if it plans to intervene in inter partes cases, particularly in cases like this one where the Court would otherwise lose the benefit of the adversarial process. The statute also clearly specifies the cases in which the Director is automatically a party\u2014ex parte cases. 35 U.S.C. \u00a7 143 (2012).<\/p>\n

The statute does not discuss or limit the positions the Director may take in any type of case.<\/span> <\/strong>In ex parte cases, the statute merely specifies that the Director must \u201caddress[ ] all of the issues raised in the appeal,\u201d 35 U.S.C. \u00a7 143 (2012); in inter partes cases, even that requirement does not exist. Although the Director typically intervenes on the side of the appellee, even in that posture, the Director may take any substantive position he likes<\/span><\/strong>.2<\/p>\n<\/div>\n<\/div>\n<\/div>\n

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Indeed, Ingalls directly addresses the Director\u2019s position in these appeals, not as a representative of the Board but as a representative of the agency as a whole. When the Board\u2014the USPTO\u2019s adjudicator\u2014makes a decision, the \u201corder of the agency\u2019s designated adjudicator is in reality an order of the agency itself.\u201d 519 U.S. at 268. The agency \u201cmay then be free to designate its enforcer\/litigator as its voice before the courts of appeals.\u201d Id. The agency\u2019s litigator\u2014in this case the USPTO Solicitor\u2014while appearing on the side of the appellee, \u201cis free to argue on behalf of the petitioner and to challenge the decision of the Board.\u201d<\/span><\/strong> Id. at 270. Thus, if the Director (or Solicitor) disagrees with the Board\u2019s decision, he need not argue in support of affirmance.<\/span><\/strong> This prevents \u201ca \u2018lopsided\u2019 scheme whereby the Director can appear only in defense of the [Board\u2019s] decisions.\u201d Id. (citations omitted).3<\/p>\n

In practice, the USPTO Director typically intervenes in appeals from inter partes cases in only two particular types of situations. Recognizing that the two parties can adequately represent the adverse sides of the dispute if both are present but not when the appellee has dropped out of the case, the Director will often intervene when the appellee has dropped out to preserve the adversarial presentation of the issues and to support the agency\u2019s decision. Other than that, the Director often intervenes when the dispute on appeal implicates broader USPTO or government interests. Those interests may involve the validity or interpretation of federal statutes, of the USPTO\u2019s procedures, or of USPTO regulations. So, for example, if an appellant argues that a regulation that the Board followed is contrary to the Patent Act, the Director may intervene to support the regulation. Although the Director could choose to intervene, under the statute, in every inter partes case, he instead selects cases in which his participation would be most important to the agency and helpful to the Court.<\/p>\n<\/div>\n<\/div>\n<\/div>\n

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The Director\u2019s presence is not required, however, for the appeal to proceed. As discussed above, the appellant has a justiciable controversy because it stands to lose its patent. The lack of USPTO participation does not moot the appellant\u2019s case any more than does the reexamination requester\u2019s declining to participate, discussed above.<\/p>\n

In the unlikely event that the government were to decline to defend the Board\u2019s decision in a case in which no other party was defending it, the Court could simply decide to hear the patentee\u2019s appeal without the benefit of an adverse party. Alternatively, the Court could appoint or invite an amicus to defend the Board\u2019s decision. The Supreme Court, for example, often chooses that route when the government confesses error and declines to defend a favorable decision from a lower tribunal. See, e.g., Becker v. Montgomery, 532 U.S. 757, 762 n.1 (2001) (\u201cWithout any party to defend the Sixth Circuit\u2019s position, we invited [attorney] Stewart A. Baker to brief and argue this case, as amicus curiae, in support of the judgment below. His able representation . . . permit[s] us to decide this case[,] satisfied that the relevant issues have been fully aired.\u201d (citations omitted)). Or, if the government confesses error and the Court concludes that, in consequence, there is nothing substantial remaining to be decided, the Court may simply vacate and remand. See Lawrence on Behalf of Lawrence v. Chater, 516 U.S. 163, 169-73 (1996); Florida Power & Light Co. v. Lorion, 470 U.S. 729, 744 (1985) (\u201cIf the record before the agency does not support the agency action, if the agency has not considered all relevant factors, or if the reviewing court simply cannot evaluate the challenged agency action on the basis of the record before it, the proper course, except in rare circumstances, is to remand to the agency for additional investigation or explanation.\u201d).<\/p>\n<\/div>\n<\/div>\n<\/div>\n

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Regardless, because the USPTO typically intervenes to defend the Board\u2019s decision and tries to avoid situations in which a Board decision that it disagrees with is heard on appeal, the situation rarely arises.<\/span><\/strong> Far more common, and preferable, is a situation like this, in which the USPTO Director chooses to intervene to support the Board\u2019s decision.<\/p>\n<\/div>\n<\/div>\n<\/div>\n<\/blockquote>\n

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Footnotes:<\/span><\/p>\n

2 Because the USPTO does not have independent litigating authority, the Director seeks and obtains authorization from the Solicitor General before intervening in this Court. See generally 28 U.S.C. \u00a7 516; 28 C.F.R. \u00a7 0.20(c)<\/p>\n

3 Practically speaking, the Solicitor would not often argue in support of reversal of a Board decision because the agency would likely handle those cases administratively.<\/span><\/strong> For example, the Director can ask the Board to reconsider a decision. If the decision has already been appealed and the Director then determines that it is somehow defective, the Solicitor can seek a remand for the Board to reconsider. See, e.g., In re Bursey, No. 2016-2675 (Fed. Cir. Apr. 28, 2017) (nonprecedential) (remanding appeal upon Solicitor\u2019s request to allow Board to reconsider); In re DiStefano, 562 Fed. App\u2019x 984 (Fed. Cir. June 4, 2014); In re Shield, No. 2013-1562 (Fed. Cir. Apr. 16, 2014); In re Motorola Mobility LLC, No. 2012-1470 (Fed. Cir. Mar. 5, 2013).<\/p><\/blockquote>\n<\/div>\n

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The entire brief is available here: [Link<\/a>].<\/p>\n<\/div>\n","protected":false},"excerpt":{"rendered":"

In this earlier post [link],\u00a0I noted that a reader had pointed me in the direction of the pending Knowles v. Matal case at the Federal Circuit. \u00a0In the briefing of that case, the DOJ and USPTO have indicated that in rare circumstances the USPTO might choose to take a position opposite to that rendered by […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9565"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=9565"}],"version-history":[{"count":1,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9565\/revisions"}],"predecessor-version":[{"id":9566,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9565\/revisions\/9566"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=9565"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=9565"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=9565"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}