PTAB Actions and Deference
PTAB Actions, and Deference
Thereto
Arti K. Rai
Elvin R. Latty Professor
Faculty Director, The Center for Innovation Policy
Duke Law School
Sources: Historical Patent Data Files, Patent Examination
Research Dataset
Deference: Rulemaking
•
Pre-AIA
•
Section 2(b)(2)(a): “may establish regulations, not inconsistent with law,
which . . . shall govern the conduct of proceedings in the Office”
•
Post-AIA:
•
fee-setting (Stuart Graham yesterday)
•
(very) broad rulemaking authority regarding PTAB
•
Cuozzo v. Lee,
136 S.Ct. 2131
(2016)
Deference: Adjudication
•
Pre-AIA, no adjudication sufficiently “formal” under
Mead
to merit
Chevron
•
PTAB proceedings not APA “formal adjudications” (
cf.
CAFC position);
but still have lots of formal, trial-type aspects; certain proceedings
probably qualify under
Mead
•
Aqua Products v. Matal
(2017): review of PTO policy, (arguably)
enunciated in adjudication, that patent owner bears burden of
proving patentability of amendments
Concluding Thoughts
•
Sections 101,102,103,112: PTO has not even argued for
Chevron
(Benjamin & Rai,
Administrative Power in the Era of Patent Stare
Decisis
(2016))
•
But fact-finding key for many of those requirements (
Dickinson v. Zurko
)
•
Assuming PTAB constitutional, deference on fact-finding plus strong
estoppel give it a lot of power
•
Maybe enough to address “scaling” problem
•
What’s the future of
Chevron
?
Could talk for hours about deference. In the patent area, deference issues have gotten particularly interesting since the creation of the Patent Trial and Appeals Board in the America Invents Act.
Even before the America Invents Act, I think it’s fair to say that the view of patents as “private” rights that lie outside the administrative state was not really tenable. That’s why I see the AIA as a continuation of a trend that clearly started many decades before.
But as I argued back in 2007, in an article discussing what would happen if and when Congress enacted a robust system of post-grant evaluation of patents, the public, administrative piece of the puzzle has only grown since then.
Start by elaborating very briefly on what the prior panel talked out regarding the motivation for the PTAB.
Exploring the intricacies of PTAB actions and deference in the patent domain, discussing rulemaking authority, adjudication processes, and the future of Chevron deference within the Patent Trial and Appeal Board. The text delves into historical patent data and the regulatory landscape, shedding light on the power dynamics and evolving trends in patent examination. Notably, it underscores the significance of fact-finding and the implications for patent validity challenges and rulemaking in the post-AIA era.
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Presentation Transcript
PTAB Actions, and Deference Thereto Arti K. Rai Elvin R. Latty Professor Faculty Director, The Center for Innovation Policy Duke Law School
Sources: Historical Patent Data Files, Patent Examination Research Dataset
Deference: Rulemaking Pre-AIA Section 2(b)(2)(a): may establish regulations, not inconsistent with law, which . . . shall govern the conduct of proceedings in the Office Post-AIA: fee-setting (Stuart Graham yesterday) (very) broad rulemaking authority regarding PTAB Cuozzo v. Lee, 136 S.Ct. 2131(2016)
Deference: Adjudication Pre-AIA, no adjudication sufficiently formal under Mead to merit Chevron PTAB proceedings not APA formal adjudications (cf. CAFC position); but still have lots of formal, trial-type aspects; certain proceedings probably qualify under Mead Aqua Products v. Matal (2017): review of PTO policy, (arguably) enunciated in adjudication, that patent owner bears burden of proving patentability of amendments
Concluding Thoughts Sections 101,102,103,112: PTO has not even argued for Chevron (Benjamin & Rai, Administrative Power in the Era of Patent Stare Decisis (2016)) But fact-finding key for many of those requirements (Dickinson v. Zurko) Assuming PTAB constitutional, deference on fact-finding plus strong estoppel give it a lot of power Maybe enough to address scaling problem What s the future of Chevron?
