Abstract

The elaborate adjudicatory proceedings set up by the America Invents Act of 2011 (AIA) have thrust the U.S. Patent and Trademark Office (PTO) squarely into the patent-litigation process. The AIA proceedings, conducted by the newly formed PTO Patent Trial and Appeal Board (PTAB), are now a formidable competitor to district court litigation. The executive branch has further enhanced PTO and PTAB power by vigorously asserting the agency’s prerogatives with respect to certain aspects of these proceedings. Despite the formality of the AIA proceedings, the agency’s lawyers have steered clear of asking for Chevron deference on legal issues decided in these proceedings. Although the executive branch’s caution may reflect the unusual institutional structure of the PTAB, PTAB decisionmaking could be structured in a manner that should, under conventional administrative law principles, merit Chevron deference. In all likelihood, the chief roadblock to Chevron is not formal administrative law but specific challenges within the patent regime. Many judges on the Court of Appeals for the Federal Circuit, which reviews all appeals from PTO decisions, have long been reluctant to apply conventional administrative law. Perhaps more surprisingly, the Supreme Court’s recent decisionmaking in the area has emphasized its own earlier cases (including cases predating the Administrative Procedure Act) and stare decisis over conventional administrative law. Given potentially hostile courts, the costs of the PTO leadership expending the political capital necessary to embed the PTO more fully into the administrative state may exceed the benefits. At best, in those cases where stare decisis is not implicated or is on the agency’s side, the PTO may be able to exercise indirect influence on the Court through the Office of the Solicitor General.

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