The cumulative effectsThe unforeseen consequences of the problems associated with the office’s use of the BRI standard adversely affect the pragmatic arguments in support of the non-reviewable provision of 35 U.S.C. § 314(d) in the first place. Hypothetically setting the constitutional concerns aside and focusing purely on pragmatism it would seem that if the USPTO used the same interpretive standard as the District Court they could be viewed as “partners” within the grander intellectual property scheme. Under the prevailing system they are distinct islands separated by miles of disputed territory.

While these two issues are problematic in their own right it is important to consider the combined cumulative effect they are having on property rights and innovation within this country. The question of whether judicial review exists for decisions of initiating post-grant proceedings is extremely important because the USPTO, an Article I court, may go wholly unchecked in its decisions and establish its own rules that are facially defiant of the plain and ordinary meaning of congressional statutes. To elaborate, the USPTO is currently riding the unstoppable wave of its very own preferred interpretations of petition requirements while citing its rule making authority as justification. The problematic tenure of this position is that the USPTO currently has unreviewable discretion to institute proceedings, and is the sole arbiter of what satisfies the procedural requirements of an institution in the first place. Currently, the agency is free to determine the interpretive standards and qualifications of prior art, affidavits, declarations, and expert opinions a petitioner and owner may rely on.

The full extent of this issue came to light most recently when the USPTO promulgated its latest rules on April 1st. The rules established that in instances of “disputed material facts” such as testimonial evidence or prior art the evidence will be construed in the light most favorable to the petitioner. This indicates that competing evidence will not be fully analyzed and the benefit of any doubt will virtually automatically be given to the petitioner. Here it is clear the USPTO does not want to have “trials within trials” but this decision appears to be mostly self-serving by easing institutional work load.

While problematic for Inter Partes Reviews and Post Grant Reviews alike we must not forget that the institution standard for a Post Grant Review is greater than that of an Inter Partes Review. The plain language of the statutory requirements to institute a PGR require that it is “more likely than not” that at least one claim in the petition is invalid. The troubling conclusion one can quickly reach is that when two parties submit competing evidence and the evidence is automatically presumed to favor one party over the other there simply cannot have been a showing that something is “more likely than not” because a full analysis was never performed. This glaring oversight showcases exactly why Article III court reviewability of an Article I court may be necessary. Consider the hypothetical situation where a petitioner puts forth a prior art reference from a lab journal or advertisement. That publication does not have a clear “time-stamp” and the petitioner attached sworn testimony swearing to a specific date. Likewise, the owner provides a prior art reference showing that they were in possession of the inventive concept but that prior art reference also lacks a clear “time-stamp.” Importantly, the owner swears behind the date of the reference and antedates the petitioner’s prior art reference. This scenario would lead to the institution of an administrative trial because the presumption favors petitioners and disfavors patent owners. On the other hand, the District Court would reach the exact opposite conclusion because there is a presumption favoring validity and anyone challenging validity has the burden to prove invalidity by “clear and convincing” evidence. Granted we are only referring to the institution of a trial rather than the final disposition this situation highlights how these nuances could play out.

Article III reviewability of the USPTO’s decisions, although timely and problematic in its own way, is the best mechanism we have to preserve concepts of “checks and balances” and “separation of powers” principles embodied in the Constitution and spirit of American Innovation. It seems that the USPTO is deviating from the authority granted it by Congress and is going it alone so to speak.

The Supreme Court is the final arbiter of the metes and bounds of the meaning of the Constitution and they therefore are the only governmental branch that can determine the interplay of the numerous competing concerns. If the past is any indication of the future The Federal Circuit will likely be overruled on at least one of the two issues. Rarely, if ever, does The Supreme Court formulate a completely orthogonal opinion but it is of course possible and has happened in technical patent related cases recently. It is possible that The Supreme Court will hold that the non-reviewability provision of the decision to institute an administrative hearing at the USPTO is unconstitutional and that the usage of the BRI standard stands in stark contrast to the “uniformity and predictability” policy goals they frequently enunciate.

    • January 2019
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