Earlier today the United States Patent and Trademark Office (USPTO) published a request for comments in the Federal Register relating to a proposed pilot program exploring the possibility of having a single Administrative Patent Judge (APJ) determine whether to institute an inter partes review (IPR). Presently the USPTO has a panel of three APJs decide whether to institute a trial, and then normally has the same three-APJ panel conduct the trial, if instituted. Under the proposed pilot program the single APJ making the IPR institution decision would be on the panel conducting the IPR trial, joined by two other APJs not associated with the IPR institution decision.
According to the Federal Register notice, “the USPTO is pro-actively looking for ways to enhance its operations for the benefit of stakeholders,” which is in part how and why this pilot proposal came into being. More specifically, this pilot program is being floated as the result of comments received from the public through the various public fora, as well comments in response to formal requests.
The USPTO explains in the notice that the Office “believes it is prudent to explore other potentially more efficient options [to review IPR petitions], especially given that the number of petitions filed may continue to increase.”
Notwithstanding this legitimate attempt to stay ahead of workflow increases, the USPTO has been criticized by at several high profile industry leaders questioned the procedural fairness of the PTAB. For example, Phil Johnson has explained that he wonders whether the PTAB is affording patent owners the required level of due process given the fact that a property right will be potentially stripped from the patent owner. One area of due process concern Johnson has raised includes that the PTAB is both deciding whether to initiate and conducting the trial. The issue of affording patent owners proper due process is particularly critical, according to Johnson, because “the PTAB is now both deciding on the institution of and the conduct of these IPRs and PGRs, and of course, they’re issuing the final decisions.” See Are PTAB Proceedings Fundamentally Unfair to Patent Owners?
There is no doubt that there would be efficiencies gained if the USPTO were able to have only a single APJ make IPR institution decisions. The Office explains:
Having a single judge decide whether to institute trial in a post grant proceeding, instead of a panel of three judges, would allow more judges to be available to attend to other matters, such as reducing the ex parte appeal backlog and handling more post grant proceedings.
Regardless of efficiencies, having a single APJ make institution determinations is fraught with due process concerns because decision whether to institute an inter partes review is not appealable. See 35 U.S.C. 314(d).
There seems to be something uniquely unfair about an agency decision that cannot be appealed to an Article III judge. Granting unelected agency officials ultimate, king-like decision-making powers runs counter to the spirit of the Constitution, if not the text of the Constitution itself. Agencies such as the USPTO are a part of the Executive Branch of government. If a USPTO decision cannot be appealed that means that the Judiciary is helpless to review actions by the Executive Branch. This upsets the delicate balance of power struck between the three branches of government. It is also an exceptionally dangerous precedent to set. A very strong argument could be made that such dictatorial powers granted to the PTAB (by and through the statute in conjunction with Federal Circuit interpretations) are unconstitutional.
I have no doubt that the Supreme Court will ultimately be asked to review the issue of whether institution decisions are appealable. In the meantime, we are left with a statute that absolutely insulates the PTAB from Judicial review. This is bad enough when three APJs are collectively considering whether to grant an IPR petition and hold a trial. To put decision-making authority for a non-appealable decision in the hands of a single person just doesn’t comport with traditional notions of fair play and justice. Truthfully, if this type of thing were to be taking place in another country we in the United States would ridicule the process and point to it as an example of the type of “justice” handed out in a Banana Republic.
I don’t doubt that the APJs making institution decisions are good people who are doing their best. These APJs are ordinary people just trying to do the best job they can, and frankly they are placed in a terribly awkward position. What would you do if you knew that a decision to institute couldn’t be reviewed or challenged on appeal? Could this account for the high rate of decisions to institute?
The argument is made that if the decision to institute was faulty the patent owner will prevail, but this misses at least three major points. First, the decision to institute will cost the patent owner between $500,000 to $1,000,000 in attorneys’ fees. Second, the PTAB is far more likely to weave references together to support an obviousness rejection than federal courts. Third, the deck is stacked against the patent owner in an IPR given that the patent right – a property right – can be stripped using standards of proof below what would be used by a district court judge during a patent litigation. This being the case, decisions to institute should be slanted toward the patent owner, not against the patent owner.
My protest is not about the decision-maker, but rather about process. Regardless of whether there is a single decision-maker or a panel of three decision-makers, it is fundamentally inappropriate for any agency decision to be absolutely insulated from Judicial review, period.