PTO Panel Stacking: Unblessed by the Federal Circuit and Likely Unlawful

By Golden, John M. | Iowa Law Review, July 2019 | Go to article overview

PTO Panel Stacking: Unblessed by the Federal Circuit and Likely Unlawful


Golden, John M., Iowa Law Review


I. Introduction

In the past decade, the United States Patent and Trademark Office ("PTO") has emerged as a primary player in disputes over issued patent rights. In fiscal years 2015 through 2017, the PTO's Patent Trial and Appeal Board ("PTAB") has instituted about one thousand new proceedings per year to review the validity of issued patent claims.1 In the wake of the United States Supreme Court's recent rejection of general challenges to the constitutionality of such proceedings,2 the PTO will likely remain a leading trial forum for post-issuance patent challenges for the foreseeable future.3

This level of post-issuance activity at the PTO is a new phenomenon. It results from the 2011 America Invents Act ("AIA"),4 which created an expanded set of proceedings in which the PTO could revisit the patentability of granted patent claims.5 In association with this increased activity, the number of administrative patentjudges has increased to more than 200.6 The PTO still has work to do in figuring out how to manage the new workflow. Without a statutory mechanism for central review of PTAB judgments, the PTO Director and the Director's delegee, the ChiefJudge of the PTAB,7 have sometimes sought to reverse disfavored PTAB judgments by convening expanded panels of PTAB judges personally selected by the Director or Chief Judge to consider a request for rehearing-a practice commonly characterized as "panel stacking."8 For some, this practice has recalled President Franklin Roosevelt's notorious "court packing" plan of 1937.9

This Essay responds to the panel-stacking controversy by examining the legitimacy of the practice. Part II provides background on PTO panel stacking and its statutory context. Parts III and IV then discuss judges' reactions to the practice both in the pre-AIA case of In re Alappat10 and in post-AIA remarks and judicial opinions. Significantly, none of these judicial responses involve a definitive ruling on the practice's legality in any of its various actual or potential forms.11 For purposes of moving analysis forward, Part V classifies a certain class of panel-stacking situations as embodying the practice in its "strong form." The Essay then shows how strong-form panel stacking is constitutionally suspect under the Fifth Amendment's Due Process Clause.12 Under the current Patent Act, this constitutional doubt combines with the doctrine of constitutional avoidance to give cause for understanding the Patent Act to preclude the practice.13 Part VI, the Conclusion, observes that, even absent further congressional action, recognition of limits on panel stacking under the current Patent Act would not leave the PTO Director without means to guide PTAB decision-making.14 The statutory interpretation prescribed by this Essay would not lead to practical disaster. Moreover, to the extent the interpretation spurs Congress to consider revisiting the PTO's peculiar adjudicatory structure, that might be all to the good.

II. Background

This Part provides background on the patent system and the panelstacking controversy. Most significantly, this Part explains how judges, advocates, and commentators have commonly misused-or at least misdescribed-a decades-old decision of the United States Court of Appeals for the Federal Circuit in which the en banc court considered the legitimacy of panel stacking.

A. The Legal and Institutional Context for PTO Panel Stacking

1. Patent System Primer

United States patent rights are limited-term rights "to exclude others from making, using, offering for sale or selling [an] invention throughout the United States, or importing the invention into the United States."15 Patent rights do not attach automatically as a result of the development of an invention.16 Instead, a would-be patentee must file an application for a patent with the PTO, which employs examiners to screen applications for satisfaction of substantive patentability requirements such as utility, novelty, and nonobviousness. …

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