Renewed Efficiency in Administrative Patent Revocation

By Vishnubhakat, Saurabh | Iowa Law Review, July 2019 | Go to article overview

Renewed Efficiency in Administrative Patent Revocation


Vishnubhakat, Saurabh, Iowa Law Review


I. Introduction

More than six years since Congress empowered the Patent and Trademark Office ("Patent Office") to reevaluate and revoke issued patents through administrative trials, the agency continues to seek an efficient structure for its system of review. Although administrative review of patent validity has existed in other forms since 1980, the 2011 America Invents Act ("AIA") created the first truly adversarial agency trial proceedings that could act as credible substitutes for the federal courts in adjudicating patent validity.1 Court-agency substitution is a central feature of all three AIA proceedings: inter partes review, covered business method review, and postgrant review.2 What makes these substitutes attractive are several salient differences from judicial process.

Modern Patent Office review is intended to make it systematically easier to invalidate patents generally-so that patents of questionable quality will be more likely to fall. For example, patent validity review under the AIA has no standing requirement, unlike court proceedings under Article III.3 AIA reviews also allow patents to be revoked by a preponderance of evidence rather than by clear and convincing evidence, as courts demand.4 And before deciding whether a patent is so broad as to be invalid, AIA reviews assumed until recently that the patent has broader scope than it would in litigation.5 Indeed, AIA proceedings have been so successful at their intended purpose that the very idea of supplanting the primacy of Article III courts has provoked fundamental constitutional disputes about who can properly revoke vested patent rights.6 Last Term, the Supreme Court resolved the major constitutional dispute in favor of allowing Patent Trial and Appeal Board ("PTAB") review to continue.7

Amid the grander debate, however, a quieter structural struggle has also been unfolding. Its focus is the efficient administration of Patent Office proceedings under the AIA and the agency's control over its own docket as both a policy lever and a case management lever. The agency's PTAB, which conducts all three types of reviews,8 has important institutional features that reflect how the agency has tried to fulfill its mandate from Congress and what normative choices it has made along the way. And in this more specific controversy, the Court in SAS Institute v. Iancu upended a cornerstone of PTAB administration-partial institution.9

Before SAS Institute, the PTAB did not always just institute or deny a petition for review. It routinely chose a third way, instituting petitions in part and denying them in part. The Patent Office view on this matter was straightforward. The authorizing statute was ambiguous about the criteria for instituting review, and the ability to pick and choose among patent claims arguments in a petition was a commonsense lever for efficiency. The power of partial institution let the PTAB focus on the most relevant and meritorious arguments, dispense up front with unavailing arguments, and proceed to trial as well as final judgment more quickly. This last point is especially important to case management, as the AIA imposes a deadline for PTAB reviews to conclude.10

As a result, the Court's reversal in SAS Institute-forbidding partial institution-has already received much criticism for sacrificing efficiency on the altar of wooden statutory interpretation.11 The Court's opinion drew two dissents, including a brief and important rejoinder by Justice Ginsburg and joined byjustices Breyer, Sotomayor, and Kagan.12 While detractors of the SAS Institute decision may have reasonable quarrels with the outcome, the charge of inefficiency is largely misplaced. In particular, Justice Ginsburg's mock proposal to illustrate a "uselessly" duplicative route that the Patent Office could take to neutralize the impact of SAS Institute is actually a sound approach that would yield meaningful systemic benefits.13

Ending partial institutions was the reasonable and appropriate thing for the Court to do. …

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