For administrative law fans: an amicus brief
David Boundy
Last week, I filed an amicus brief in Apple v. Vidal that might be interesting to those of you that are interested in administrative law.
In 2018, Director Iancu tried to recalibrate standards for instituting IPRs and PGRs by specifying factors for “discretionary denial” of institution. That much is all well and good: agency heads can make rules like this to guide the discretion of agency employees. The Administrative Procedure Act says that the way to do that is to publish a notice in the Federal Register. 5 U.S.C. § 552(a). Other agencies issue this kind of guidance about 1000 times per year. But for some reason the PTO doesn’t want to do it that way. (In the brief, I note that the effect is evasion of oversight under the Paperwork Reduction Act, Regulatory Flexibility Act, and several executive orders. Of course I have no knowledge of subjective intent. But the effect smoke from the intent gun is pretty hard to miss.)
Instead, the PTO’s lawyers misled Director Iancu and advised him to invent a non-statutory end run: PTAB “precedential decisions” with the Director sitting as one APJ on the panel (the infamous “Precedential Opinion Panel” or POP). In the very first such decision, I filed an amicus brief warning that the PTAB was violating the law and building on a foundation of sand. https://ssrn.com/abstract=3836861. Nonetheless, the PTAB ignored me and went ahead with its illegal extrastatutory creation.
The most controversial of POP decisions has been Apple Inc. v. Fintiv Inc., which sets forth factors to be considered in discretionary denials of IPRs and PGRs. The big users of IPRs/PGRs—namely, the big techs and Unified Patents—aren’t fans of anything that gets in the way of IPRs and PGRs. So, unsurprisingly, they’ve been attacking Fintiv for years. They made several false starts, challenging through paths of review that any administrative law lawyer would have advised against. After wasted years and millions of dollars, the big techs finally followed the proper path of review, and the case is now at the Federal Circuit. And now they’re wrong on the merits.
My brief explains that both the appellants and the PTO are half right and 100% wrong. My goal is to get the PTO to follow the same law that all other agencies follow. For your reading delight, it’s at https://ssrn.com/abstract=5016833
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David Boundy | Partner | Potomac Law Group, PLLC
P.O. Box 590638, Newton, MA 02459
Tel (646) 472-9737 | Fax: (202) 318-7707
dbo...@potomaclaw.com | www.potomaclaw.com