A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact

By Eisenberg, Rebecca S. | Iowa Law Review, July 2019 | Go to article overview

A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact


Eisenberg, Rebecca S., Iowa Law Review


I. Introduction

During the heyday of Chevron deference to agencies' interpretations of the laws they administer,1 the Court of Appeals for the Federal Circuit ("Federal Circuit") took a notably less deferential approach toward the Patent and Trademark Office ("PTO").2 Treating the PTO the same as federal district courts, the Federal Circuit reviewed its factual findings for clear error and its legal conclusions de novo.3

The Supreme Court held that the Administrative Procedure Act ("APA") requires greater deference to PTO factual findings in its 1999 decision in Dickinson v. Zurko.4 After that, the Federal Circuit recited that it reviews such findings for "substantial evidence" in the administrative record rather than for clear error.5 But it continued to review the PTO's conclusions of law de novo, reasoning that Chevron deference was not appropriate because the Patent Act did not give the PTO rulemaking authority over substantive issues of patent law.6 Meanwhile, the Federal Circuit defined an expanding list of disputed issues in patent matters as questions of law.7

A potential game changer occurred in 2011 when Congress expanded the PTO's authority to engage in both rulemaking and adjudication in the Leahy-Smith America Invents Act ("AIA").8 Concerned about the impact of patents of dubious validity on innovation, Congress sought to provide a quicker, cheaper, and more expert alternative to federal district courts for adjudicating validity challenges.9 The AIA authorizes the PTO to resolve such challenges in adjudicatory proceedings before the Patent Trial and Appeal Board ("PTAB"),10 and to prescribe regulations for the conduct of these proceedings.11 Some commentators argue that these new delegations of authority call for greater deference to the PTO's interpretations of ambiguous provisions in the Patent Act.12 On the other hand, some Federal Circuit judges argue that administrative factfinding in the AIA PTAB proceedings should get less deference than the Supreme Court required in Dickinson v. Zurko.13

An important category of PTAB determinations falls outside much of this discourse: rulings that apply general legal standards to particular cases. Arguably such rulings amount to statutory gap-filling under implicit delegation of authority to the PTO from Congress, and are thus entitled to Chevron deference.14 But the Federal Circuit calls these determinations "conclusions of law" and reviews them de novo.15 In their specificity and grounding in the evidence, these "legal conclusions" resemble fact finding more than statutory interpretation, and they may indeed rest on subsidiary findings that the Federal Circuit codes as factual.16 The Federal Circuit recites that it reviews the underlying factual findings for substantial evidence, while it reviews the ultimate rulings de novo.

Such issues predominate in inter partes review proceedings ("IPR(s)"), which account for more than 90% of filings to date seeking AIA adjudications before the PTAB.17 Although the PTAB may consider a broader set of issues in other proceedings, the AIA limits the use of IPRs to challenges under sections 102 and 103 of the Patent Act (i.e., lack of novelty and obviousness) based on prior art consisting of patents and printed publications.18 Both determinations compare the challenged patent claim(s) to the prior art, often raising disputes about the meaning of the claim language.19 Most IPRs thus involve rulings on three issues: novelty, nonobviousness, and claim interpretation. The Federal Circuit codes novelty as a question of fact, reviewing agency findings for substantial evidence.20 But it codes nonobviousness and claim interpretation as legal conclusions that it reviews de novo (although it reviews subsidiary factual findings for substantial evidence).21 This approach leaves considerable scope for appellate review of two of the three principal issues in IPRs.

The AIA provides for Federal Circuit review of PTAB decisions,22 without specifying standards of review. …

The rest of this article is only available to active members of Questia

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Buy instant access to cite pages or passages in MLA 8, MLA 7, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

(Einhorn 25)

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Note: primary sources have slightly different requirements for citation. Please see these guidelines for more information.

Cited article

A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Help
Full screen
Items saved from this article
  • Highlights & Notes
  • Citations
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

matching results for page

    Questia reader help

    How to highlight and cite specific passages

    1. Click or tap the first word you want to select.
    2. Click or tap the last word you want to select, and you’ll see everything in between get selected.
    3. You’ll then get a menu of options like creating a highlight or a citation from that passage of text.

    OK, got it!

    Cited passage

    Style
    Citations are available only to our active members.
    Buy instant access to cite pages or passages in MLA 8, MLA 7, APA and Chicago citation styles.

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

    1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

    Cited passage

    Thanks for trying Questia!

    Please continue trying out our research tools, but please note, full functionality is available only to our active members.

    Your work will be lost once you leave this Web page.

    Buy instant access to save your work.

    Already a member? Log in now.

    Search by... Author
    Show... All Results Primary Sources Peer-reviewed

    Oops!

    An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.