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Effect of the Regulatory Accountability Act of 2017 On Inter Partes Review

Effect of the Regulatory Accountability Act of 2017 On Inter Partes Review:

A Look at Telebrands Corp., v. Tinnus Enters., LLC

Table of Contents

Introduction 1

I. Historical Foundation of the U.S. Patent Law System  2

A. Federal Leahy-Smith America Invents Act  3

i. Post-Grant Proceedings    3

II. Distinctions Among the Courts   5

A. Deference Afforded  6

i. Chevron Deference  6

ii. Auer Deference  7

iii. Skidmore Deference   8

B. Patentability Standards of Review  9

i. District Court and PTAB Patentability Standard of Review   9

ii. Federal Circuit Patentability Standard of Review   10

III. Due Process Violations in Telebrands Corp., v. Tinnus Enters., LLC   13

A. PTAB Final Written Decision   16

B. PTAB’s Rationale Behind Holding  17

IV. The Regulatory Accountability Act of 2017  19

A. Metes and Bounds of the Act   19

B. Ending the Doctrine of Judicial Deference   20

C. Effects on Inter Partes Review in view of Tinnus  21

i. Broadest Reasonable Interpretation   22

ii. Institution On a Subset of Grounds    24

iii. Institution On a Subset of Claims    25

V. Conclusion   27

Introduction

Josh Malone, a devoted and hardworking father, was looking for a means to entertain his children on the weekends.  Loving water balloon fights as a child, Josh thought his children would share in his childhood nostalgia, however Josh despised the process of filing each balloon with water.  Whenever Josh found a few minutes of free time, he contemplated creation of a machine to fill multiple water balloons at once.  Subsequent developing a prototype designed to fill one-hundred water balloons quickly, he sought patent protection for his invention.  Becoming the number one selling spring and summer toy for children had its downsides, as others quickly infringed on his patent, developing almost identical and cheaper versions of his invention.  Those other companies soon brought suit against Josh to challenge the validity of his granted patent through post-grant proceedings, in an attempt to avoid any liability for patent infringement.    Unfortunately, the same administrative panel and non-Article III forum which granted Josh a patent later found his patent invalid, showcasing a lack of definiteness and consistency in the administrative panels’ assessment of patentable subject matter.  The need for reform of this broken system and the associated post-grant proceedings has never been clearer.

This Note examines this alleged lack of due process at the referenced administrative panel, the Patent Trial and Appeal Board (hereinafter as “PTAB”).  Where Part I[1] discusses the historical foundation of the United States patent law system, Part II[2] discusses the differing patentability standards of review between the District Court, the United States Court of Appeals for the Federal Circuit, and the PTAB, which may lead to the alleged lack of due process.  Part III[3] discusses due process violations seen in a recent case, Telebrands Corp., v. Tinnus Enters., LLC,[4] when the PTAB refused to support Supreme Court precedent.  Moreover, Part IV[5] discusses the vanishing deference in response to the proposed legislation of the Regulatory Accountability Act of 2017.  Part V[6] discusses the proposed alternative outcome of Tinnus through passage of the Regulatory Accountability Act of 2017.

I. Historical Foundation of the U.S. Patent Law System

Federal recognition of intellectual property rights in the United States began with the adoption of the United States Constitution on September 17, 1787,[7] with Article I, Section 8 providing that, “[t]he Congress shall have Power. . . .  [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[8]  Since this adoption, the patent system in the United States has been a vehicle used to encourage competition and innovation, in exchange for granting inventors a limited duration monopoly to exclude others from making, using, offering for sale, or selling an invention in the United States or “importing” the invention into the United States.[9]

A significant change to the United States patent system came with the United States Patent Act of 1952,[10] which sought to, “foster[] innovation and competition primarily through examining patent applications and determining which inventions warrant the grant of a patent.”[11]  This Act simplified existing United States patent law by incorporating and codifying the obviousness requirement in 35 U.S.C. §103 and the judicial doctrine of contributory infringement in 35 U.S.C. §271.[12]

A. Federal Leahy-Smith America Invents Act[13]

The most significant change to the United States patent system since the U.S. Patent Act of 1952 came with the creation of the federal Leahy-Smith America Invents Act (hereinafter as “AIA”)[14] in 2012.  First and foremost, the AIA expanded the power of the USPTO and reshaped the United States patent litigation landscape.  The AIA additionally changed the way in which patent applications are examined and the number and scope of post-grant challenges (e.g., inter partes reviews, covered business method challenges, derivation proceedings, and post-grant reviews), akin to adjudicatory hearings, available to test the validity of an issued patent.[15]  Moreover, the AIA extinguished the main judicial body at the United States Patent and Trademark Office (hereinafter as “USPTO”), the Board of Patent Appeals and Interferences (hereinafter as “BPAI”), with the creation of the PTAB on September 16, 2012.[16]

i. Post-Grant Proceedings

Between September 16, 2012, and August 7, 2014, 1,793 post-grant proceedings were instituted to question the validity of granted patents, and of those challenges, 1,585 were inter partes reviews, 201 were covered business method challenges, six were derivation proceedings, and one was a post-grant review.[17]  Both trial proceedings conducted by the PTAB, post-grant review[18] and inter partes review, replaced inter partes reexamination on September 16, 2012.[19]  Though post-grant review and inter partes review differ with respect to several aspects,[20] both proceedings result in a, “final written decision with respect to the patentability of any [challenged] patent claim.”[21]

A challenger may petition the institution of an inter partes review within nine months of the issuance of a patent to review one or more claims on a patentability ground that could be raised under 35 U.S.C. §§ 102 or 103 on the basis of prior art (e.g., printed publications or patents).[22]  The USPTO will institute this proceeding if the USPTO Director determines that the challengers’ petition meets the threshold showing that there is a reasonable likelihood that the challenger will prevail with respect to at least one challenged claim.[23]

Alternatively, the scope of post-grant review is broader than that of inter partes review, as a post-grant review challenge may be sought on any ground challenging the validity of one or more claims in an issued patent (except for failure to disclose the best mode).[24]  For a post-grant review, bases to challenge the validity of an issued patent include: (a) other patents; (b) printed publications; (c) evidence of prior public use; (d) evidence of prior on-sale activity; and/or (e) other prior public disclosures.[25]  A post-grant review proceeding will be commenced if the USPTO Director determines the challenger’s petition reaches the threshold that it is more likely than not that at least one challenged claim will be found to be invalid.[26]

II. Distinctions Among the Courts

With the available post-grant proceedings in mind, one must next assess the varying levels of deference afforded and the differing patentability standards of review between the District Court, the United States Court of Appeals for the Federal Circuit, and the PTAB.[27]  These levels of deference and differing patentability standards of review lead to confusion for parties bringing claims.  Parties are often unsure of: (a) what court is bound by the decisions of another, (b) how the party may utilize these patentability differences to shape an outcome favorable to the party, and (c) what procedural ramifications occur due to these differences.  A firm grasp of these concepts will be an imperative tool to use during the assessment of alleged due process violations at the PTAB.

A. Deference Afforded

i. Chevron Deference

As the patent system has maintained a strained relationship with administrative law, courts have traditionally been held responsible for defining and expressing patent policy.  Though courts generally fail to apply deference regimes to the USPTO, a groundbreaking and influential analytical deference framework was derived from Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc..[28]  In Chevron, the court developed a test governing judicial review of agency interpretations.[29]  Under the Chevron test, the court must first determine if Congress has answered a specific question at issue.  If Congress has done so and if there is no ambiguity in the Congressional intent of that decision, the court and agency must follow that intent.[30]  If the specific question has remained unanswered by Congress, the interpretive power shifts to the agency, where the agency may provide a reasonable interpretation of that statue and the court must defer to that interpretation.[31]  Essentially, Chevron’s “reasonableness” standardcreates a framework for appellate court review.  Though this review may remedy executive agency overreach, this review is not free from fault, as it additionally raises constitutional separation of powers concerns.[32]  In a famous concurrence, Circuit Judge Neil Gorsuch condemned this doctrine and heralded it as “a judge-made doctrine for the abdication of the judicial duty.”[33]

Shedding light on the Chevron framework, the court in United States v. Mead Corp.[34] held that an agency is entitled to the Chevron deference when it appears as if, “Congress [has] delegated authority to the agency generally to make rules carrying the force of law, and . . . the agency interpretation claiming deference was promulgated in the exercise of that authority,”[35] where this delegation may be shown by, “an agency’s power to engage in adjudication or notice-and-comment rulemaking, or by some other indication of comparable congressional intent.”[36]

As both inter partes review and post-grant review share characteristics with judicial proceedings, by their very nature one may contend that Congress fashioned these proceedings to trigger the standard articulated in Chevron.  This assumption is supported by the trial-like and adversarial manner of these AIA post-grant proceedings, as evidenced by a requirement for each party to have the right to: (a) an oral hearing,[37] (b) a discovery period, and (c) a right to be heard before an administrative patent judge.  Furthermore, it may be argued that Congress intended the USPTO to play a more significant policy-making function in these post-grant proceedings, since, for example, a post-grant review may be instituted on the ground that, “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”[38]  Despite these realizations, it remains unclear if application of the deferential Chevron standard to the USPTO would permit the USPTO to adopt any reasonable interpretation it chooses at any time, and if so, this leads one to question if de novo review is more appropriate to implement, placing interpretive power in the forum of federal courts.

ii. Auer Deference

Subsequent Chevron, the Supreme Court in Auer v. Robbins[39] analyzed the standard the Court should apply when reviewing an executive department’s interpretation of regulations established under federal legislation.  Specifically, the Court examined whether the Fair Labor Standards Act of 1938[40] overtime pay requirement for private-sector employees applied equally to public-sector employees in light of U.S. Department of Labor regulations.  The Court supported compliance with work rules in the public sector as a necessary component of an effective government, reinforcing the 1974 extension of the Fair Labor Standards Act of 1938[41] to cover a majority of the public sector employees.[42]

Though similar, Auer and Chevron differ in some respects.  Where Chevron utilizes a two-step standard of review, Auer utilizes a singular step standard of review.  Furthermore, where Chevron referred to the interpretation of an agency’s enabling statute, the Court in Auer gave the agency the highest level of deference to interpret the agencies’ own rules and regulatory schemes,[43] but deference was warranted only when the language of the regulation was ambiguous, unless it was “plainly erroneous” or inconsistent with the regulation. [44]  Ultimately, both deference standards have widespread implication in administrative law, and more specifically, with respect to the deference afforded to the USPTO in the creation of and interpretation of the USPTO’s own rules and regulations.

iii. Skidmore Deference

When the Chevron standard fails, the framework of Skidmore v. Swift & Co.[45] may be applied.  Though Chevron allows courts to defer to reasonable interpretations, Skidmore utilizes an ad hoc sliding-scale approach to determine the appropriate weight that should be afforded to an administrative interpretation based on, “the thoroughness evident in its consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade, if lacking power to control.”[46]  Essentially, Skidmore releases the court from being bound to a specified level of deference depending on the associated level of agency interpretation.[47]

 

B. Patentability Standards of Review

i. District Court and PTAB Patentability Standard of Review

Confusion additionally arises with regards to which standard of review may be applied in which court.  In Novartis AG v. Noven Pharms., Inc.,[48]at the United States Court of Appeals for the Federal Circuit, Appellants Novartis AG and LTS Lohmann Therapie-Systeme AG[49] argued that the PTAB unlawfully reached a differing conclusion from that reached by the U.S. District Court for the District of Delaware in addressing the same argument and evidence.[50]  The court responded by explaining that the Appellants argument would fail as a matter of law, as, “[t]he PTAB determined that a ‘petitioner in an inter partes review proves unpatentability by a preponderance of the evidence[51] rather than by clear and convincing evidence[] as required in district court litigation,’ meaning that the PTAB properly may reach a different conclusion based on the same evidence.”[52] (emphasis added).

The court further explained that this position corresponds to Supreme Court precedent in Cuozzo Speed Techs., LLC v. Lee,[53] which held that,

[a] district court may find a patent claim to be valid, and the [USPTO] may later cancel that claim in its own review. . . .  This possibility, however, has long been present in our patent system, which provides different tracks—one in the [USPTO] and one in the courts—for the review and adjudication of patent claims.  As we have explained . . . , inter partes review imposes a different burden of proof on the challenger.[54]

As such, differing standards exist for the petitioner to challenge the validity of and prove unpatentability of an issued patent in an inter partes review between the district court and the PTAB.  The court has further acknowledged that, “different evidentiary burdens mean that the possibility of inconsistent results is inherent to Congress’ regulatory design.”[55]

Further, the Supreme Court, in Cuozzo Speed Techs., LLC explained that, “the burden of proof in inter partes review is different than in the District Courts: [i]n inter partes review, the challenger (or the Patent Office) must establish unpatentability ‘by a preponderance of the evidence’; in District Court, a challenger must prove invalidity by ‘clear and convincing evidence.’”[56]  Additionally, in Versata Development Group, Inc. v. SAP America, Inc.,[57] the PTAB rejected Appellant Versata’s argument that stare decisis bound the PTAB to adopt the District Courts’ claim construction.[58]

ii. Federal Circuit Patentability Standard of Review

In a case arising from a district court proceeding, the Federal Circuit recently confirmed that claim construction is a question of law, reviewed de novo.[59]  But unlike district courts, the PTAB construes claims under a “broadest reasonable interpretation” standard in post-grant proceedings.[60]  However, Circuit Judge Plager noted that the Federal Circuit applies “one or the other of two (possibly three. . .) inconsistent standards, mostly without acknowledging that the other standard exists” when reviewing the PTAB’s “broadest reasonable interpretation” [61] of claim terms,[62] leading to inconsistent rulings.

The final written decision is not solidified and an Applicant dissatisfied with the final decision, under 35 U.S.C. § 134(a), may seek judicial review by appealing the decision to the United States Court of Appeals for the Federal Circuit.[63]  Most appeals from post-grant proceedings take a traditional route to the Federal Circuit as direct appeals from final written decisions,[64] though, thus far, the Federal Circuit has generally declined to second-guess the PTAB decisions by means of extraordinary writ.[65]  The Federal Circuit reviews the PTAB determinations regarding questions of law, including enablement, obviousness, indefiniteness, and patentable subject matter, under the de novo standard without deference.[66]

Alternatively, for the PTAB’s question of fact regarding anticipation, written-description, obviousness, and enablement, the Federal Circuit applies the deferential “substantial evidence” test.[67]  Review using the “substantial evidence” standard asks whether a reasonable fact-finder could have arrived at the agency’s decision[68] and involves examination of the record as a whole, taking into account evidence that both justifies and detracts from an agency’s decision.[69]  The Supreme Court has described the “substantial evidence” standard as, “more than a mere scintilla.  It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. . . . Mere uncorroborated hearsay or rumor does not constitute substantial evidence.”[70]

Though the Federal Circuit explained that, “[o]n judicial review, the correctness of the decision appealed from can be defended by the [A]ppellee on any ground that is supported by the record. . . ,”[71] the Federal Circuit may, “affirm the Board on grounds other than those relied upon in rendering its decision, when upholding the Board’s decision does not depend upon making a determination of fact not previously made by the Board.”[72]  Additionally, pursuant to Supreme Court precedent in Cuozzo and the Federal Circuit precedent in In re Baxter, International, Inc.,[73] Federal Court validity decisions do not bind the PTAB as a matter of law,[74] since the burden of proof differs.

Moreover, additional case law shows that the Federal Circuit is bound by Congress and the Supreme Court in patentability standard of review under the AIA.[75]  For example, the Federal Circuit in Merck & Cie v. Gnosis S.P.A. et al.[76] recognized that they are bound by Supreme Court precedent in Dickinson v. Zurko[77]and their own precedent in In re Gartside. [78] In Merck & Cie, Judge O’Malley further explained that, “ [t]o the extent IPR proceedings were intended to replace district court litigation, it would make sense for this court to review factual findings by the Board in these new IPR proceedings under the same standard we employ when reviewing factual findings of district judges – for clear error.”[79]  As such, the courts, when authorizing post-grant proceedings, seem to be taking actions that coincide with legislative history of the AIA and Congressional intent of these post-grant proceedings as cost-efficient substitutes for litigation in federal district courts.[80]

III. Due Process Violations in Telebrands Corp., v. Tinnus Enters., LLC

Information regarding the available post-grant proceedings, varying deference standards, and differing patentability standards of review among the courts will be used to assess alleged due process violations in a recent decision.  In a 2015 decision,[81] the PTAB openly refused to follow Supreme Court precedent and ruled divergently from the district court.  On June 9, 2015, plaintiffs, Tinnus Enterprises, LLC (hereinafter as “Tinnus”) and ZURU Ltd. (hereinafter as ZURU”), commenced an action[82] against defendants, Telebrands Corp. (hereinafter as “Telebrands”) and Bed Bath & Beyond, Inc. (hereinafter as “Bed Bath”), alleging infringement of U.S. Patent No. 9,051,066 (hereinafter as “‘066 Patent”)[83] issued to Tinnus and entitled “System and Method for Filling Containers with Fluids,”[84] with the associated product named “Bunch O Balloons.”  Independent claim 1 of the ‘066 Patent is as follows:

1. An apparatus comprising:

a housing comprising an opening at a first end, and a plurality of holes extending through a common face of the housing at a second end;

a plurality of flexible hollow tubes, each hollow tube attached to the housing at a respective one of the holes at the second end of the housing;

a plurality of containers, each container removably attached to a respective one of the hollow tubes; and

a plurality of elastic fasteners, each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube, and each elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water, and to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube, such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers,

wherein the apparatus is configured to fill the containers substantially simultaneously with a fluid.[85]

The plaintiffs requested a preliminary injunction be issued,[86] contending that it is “more likely than not” that defendants’ Balloon Bonanza product infringed the ‘066 Patent.[87]  The United States District Judge John D. Love issued a report and recommendation to grant the plaintiffs a preliminary injunction,[88] as the district court found the following factors satisfied: “(1) the likelihood of the patentee’s success on the merits; (2) irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest.”[89]

On June 22, 2015, Telebrands Corp. filed a petition requesting post-grant review pursuant to 35 U.S.C. §§ 321–328 and C.F.R. § 42.200 et seq. of claims 1-14 of the ‘066 Patent.[90]  The patent owner, Tinnus Enterprises, LLC, filed a preliminary response,[91] as well as a statutory disclaimer disclaiming claims 7 and 9.  On January 4, 2016, the PTAB issued a decision to institute the post-grant review of claims 1-6, 8, and 10-14 on several grounds.[92]  Claims 1-6, 8, and 10-14 were alleged as indefinite under 35 U.S.C. § 112(b).[93]  Claims 1-4, 8, and 14 were challenged as unpatentable under 35 U.S.C. § 103(a) in view of the combination of the following references: U.S. Patent 5,826,803 (hereinafter as “‘803 Patent”),[94] U.S. Patent Application Publication 2013/0118640 A1 (hereinafter as “‘640 Publication”),[95] and U.S. Patent Application Publication 2005/0004430 A1 (hereinafter as “‘430 Publication”).[96]  Further, claims 11-13 were challenged as unpatentable under 35 U.S.C. § 103(a) in view of the combination of the following references: U.S. Patent 8,479,776 B2 (hereinafter as “‘776 Patent”),[97] the ‘803 Patent, the ‘640 Publication, and the ‘430 Publication.[98]

On December 2, 2015, the United States District Judge Robert W. Schroeder III issued an order[99] adopting the report and recommendation of June 9, 2015.  In that order, United States District Judge Robert W. Schroeder III explained that all outstanding objections were overruled and the plaintiffs’ motion for the preliminary injunction was granted.[100]  The Federal Circuit affirmed the district court’s judgment.

A. PTAB Final Written Decision

On December 30, 2016, a final written decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73 was granted in the post-grant review of claims 1-6, 8, and 10-14 of the ‘066 Patent.[101]   Instead of utilizing the standard for a post-grant review, the PTAB utilized the standard for an inter partes review, explaining that claim terms in an issued patent are given their “broadest reasonable interpretation” in light of the specification of the patent.[102]  As such, the validity of the final written decision is, at the very least, questionable.

In the post-grant review, the claim terms at issue included “filled” and “substantially filled” from the following limitation of claim 1:

a plurality of elastic fasteners, each elastic fastener clamping a respective one of the plurality of containers to a corresponding hollow tube, and each elastic fastener configured to provide a connecting force that is not less than a weight of one of the containers when substantially filled with water, and to automatically seal its respective one of the plurality of containers upon detaching the container from its corresponding hollow tube, such that shaking the hollow tubes in a state in which the containers are substantially filled with water overcomes the connecting force and causes the containers to detach from the hollow tubes thereby causing the elastic fasteners to automatically seal the containers,

wherein the apparatus is configured to fill the containers substantially simultaneously with a fluid. (emphasis added).[103]

Telebrands Corp. contended that the claim term “substantially filled” was indefinite under 35 U.S.C. § 112(b), as “[t]he lack of clarity of the term ‘filled’ is further enhanced by the modifier, ‘substantially,’ which is a term of degree.”[104]  The petitioner further asserted that, “[t]he specification and prosecution history do not provide objective boundaries for those of ordinary skill in the art for the term ‘filled,’ let alone the term ‘substantially filled.’”[105]  Tinnus Enterprises, LLC, argued that the meaning of “filled” in the context of the claims was “evident in the very experimental, plain and ordinary meaning of the word.”[106]

B. PTAB’s Rationale Behind Holding

In regards to which indefiniteness standard to apply, Telebrands Corp. argued that the most recent Supreme Court precedent of Nautilus, Inc. v. Biosig Instruments, Inc.[107] is inapplicable to proceedings before the PTAB under the AIA.[108]  Instead, Telebrands Corp. argued that the Federal Circuit standard of In re Packard[109] should be applied.[110]  The PTAB explained that they, “apply the test for indefiniteness approved by the Federal Circuit in In re Packard, i.e., ‘a claim is indefinite when it contains words or phrases whose meaning is unclear.’”[111]  The PTAB acknowledged,

We also recognize that subsequent to the Packard decision, the Supreme Court in Nautilus enunciated a differently worded definiteness requirement in the context of patent infringement litigation. We do not understand Nautilus, however, to mandate the Board’s approach to indefiniteness in patent examination or reexamination matters or in AIA proceedings, in which the claims are interpreted under the broadest reasonable interpretation standard, and an opportunity to amend the claims is afforded. The test for indefiniteness approved in Packard, which is applied by the USPTO in patent examination, sets a threshold for indefiniteness that demands at least as much clarity, and potentially more clarity, than the Nautilus definiteness requirement.[112]

Further, the PTAB explained their use of the In re Packard standard since the Applicant has an ability to amend the claims during prosecution to ensure the claim language is clear and definite.[113]  The PTAB argued that these differing approaches stem from the distinct roles that the USPTO and courts play in the patent system.  The PTAB ultimately found that Telebrands Corp. had established, by a preponderance of the evidence, that claims 1–6, 8, and 10–14 were indefinite under 35 U.S.C. § 112(b).[114]

The PTAB took the position that the limitation “substantially filled” was unclear and indefinite, as a person having ordinary skill in the art could not interpret the metes and bounds of the phrase so as to understand how to avoid infringement because the claims and the Specification both fail to provide any objective standard for measuring the scope of these terms.[115]  However, since the scope of a post-grant review is much broader than that of an inter partes review, the violation by the PTAB in utilizing the standard articulated for an inter partes review arguably renders the PTAB’s final written decision null and void.

Subsequently, the PTAB issued a brief supporting Telebrands Corp. in Tinnus Enterprises, LLCs’ appeal to the Federal Circuit.[116]  In this brief, the PTAB strongly urged the Federal Circuit to affirm the PTAB’s prior decision to apply the Federal Circuit standard on indefiniteness of In re Packard.  Further, the PTAB didn’t address that the In re Packard approach is only applicable to post-grant reviews and isn’t applicable against a patented claim subject to an inter partes review.

Though stare decisis does not bind the PTAB to follow the district court decision, the PTAB failed to follow Supreme Court precedent regarding indefiniteness.   However, even if the PTAB insisted on utilizing the In re Packard standard, one can argue that there is no reason why the PTAB could not additionally apply the Nautilus, Inc. standard, as there is nothing irreconcilably divergent with respect to the two standards.

Several cases follow a similar path as Tinnus.  In Personal Audio, LLC v. Electronic Frontier Foundation,[117] though the district court found validity for U.S. Patent No. 8,112,504,[118] the PTAB found the patent unpatentable[119] subsequent institution of an inter partes review.  The court of appeals further supported the PTAB’s finding.[120]  Further, though the PTAB, in Homeland Housewares LLC v. Whirlpool Corp.,[121] determined claims of U.S. Patent 7,581,688[122] as valid, the Federal Circuit invalidated several of these claims.[123]  These decisions lead one to question what remedies are available to reign in an agency, such as the PTAB, that has unyielding power to both invalidate and extinguish the rights associated with a patent.

IV. The Regulatory Accountability Act of 2017

A. Metes and Bounds of the Act

With the introduction of the AIA, the USPTO gained authority to interpret the guidelines in creating new post-grant challenges.  The PTAB was held to Chevron deference, as explained supra, since, “Congress [has] delegated authority to the [USPTO] generally to make rules carrying the force of law, and . . . the [USPTO] interpretation claiming deference was promulgated in the exercise of that authority,”[124] where this delegation may be shown by, “[the USPTO’s] power to engage in adjudication or notice-and-comment rulemaking, or by some other indication of comparable congressional intent.”[125]  However, this deference allows the PTAB to modify rules whenever they see fit, a power extinguishable by the passage of the proposed Regulatory Accountability Act of 2017.[126]

When the Senate received this proposed legislation in January of 2017, the Senate referred it to the Committee on Homeland Security and Governmental Affairs.  The proposed legislation passed the House of Representatives with a vote of 238-183 on January 11, 2017.  If passed and signed by the commander-in-chief, President Donald J. Trump, this legislation will have a profound effect on many areas of patent law, including post-grant proceedings before the PTAB and prosecution practice before the USPTO.

B. Ending the Doctrine of Judicial Deference

Specifically, this proposed legislation is aimed at ending the doctrine of judicial deference to agency legal interpretations for regulatory agencies.  Title II, Section 202 of the Regulatory Accountability Act of 2017[127] provides modification to the scope of judicial review of agency actions, which includes authorizing courts reviewing agency actions to decide de novo[128] all relevant questions of law.[129]  For example, if the reviewing court determines that a statutory or regulatory provision relevant to its decision contains an ambiguity, the court shall not interpret the ambiguity as: (1) an implicit delegation to the agency of legislative rulemaking authority or (2) a justification for interpreting agency authority expansively or for deferring to the agency’s interpretation on the question of law.[130]

Section 103 of the Regulatory Accountability Act of 2017[131] revises federal rulemaking procedures under the Administrative Procedure Act (hereinafter as “APA”)[132] enacted on June 11, 1946.  As a federal statute, the APA governs the way in which administrative agencies (e.g., the USPTO) of the federal government propose and establish regulations.  Further, the APA also grants the judiciary oversight over all agency actions.  Section 103 of the Regulatory Accountability Act of 2017 requires a federal agency to make all preliminary and final factual determinations based on evidence, while considering:

(1) the legal authority under which a rule may be proposed; (2) the specific nature and significance of the problem the agency may address with a rule; (3) whether existing rules have created or contributed to the problem the agency may address with a rule and whether such rules may be amended or rescinded; (4) any reasonable alternatives for a new rule; and (5) the potential costs and benefits associated with potential alternative rules, including impacts on low-income populations.[133]

This Act allows courts (e.g., the Federal Circuit) to more stringently review and modify the decisions from the PTAB.[134]  Further, this Act would instruct courts not to defer to agency cost-benefit analysis if the agency fails to conform to guidelines established by the White House’s Office of Information and Regulatory Affairs; rather, this Act would require reviewing courts to decide de novo all relevant questions of law, including interpretations of constitutional and statutory provisions.

 

C. Effects on Inter Partes Review in view of Tinnus

The result of the Tinnus case would differ under the Regulatory Accountability Act of 2017 for several reasons. In Tinnus, the PTAB instituted a post-grant review on claims 1-6, 8, and 10-14 of the ‘066 Patent on the grounds of indefiniteness under 35 U.S.C. § 112(b) and obviousness under 35 U.S.C. § 103(a) in light of several patent and patent application publication references. The post-grant review was instituted with the lower threshold to institute standard of inter partes review (e.g., the “reasonable likelihood” standard). It is unlikely that the petitioners would have unlikely met this higher threshold, the “more likely than not”[135] standard governing post-grant reviews. As such, this section assumes that an inter partes review was instituted initially in Tinnus to comply with the threshold standard utilized by the PTAB.

 

i. Broadest Reasonable Interpretation

The Regulatory Accountability Act of 2017 will have unforeseen impacts on other well-settled issues,[136] and will eliminate stare decisis over earlier court approval of USPTO rules.  For example, though affirmed in a recent decision,[137] it is unclear if the USPTO will continue to use the “broadest reasonable interpretation” standard to interpret patent claims in an instituted inter partes review,[138] as the Act will change the type of deference a court must give USPTO regulations.

As explained supra in Cuozzo, the court relied on Chevron in analyzing whether the USPTO’s imposition of the “broadest reasonable interpretation” standard during an inter partes review proceeding was a reasonable exercise of authority that Congress delegated to the USPTO.[139]  The Court in Cuozzo explained that, “[n]either the statute’s language, nor its purpose, nor its legislative history suggests that Congress decided what standard should apply in inter partes review.”[140]  Cuozzo further explained that the broadest reasonable interpretation, “helps ensure precision in drafting claims and prevents a patent from tying up too much knowledge, which, in turn, helps members of the public draw useful information from the disclosed invention and understand the lawful limits of the claim. The Patent Office has used this standard for more than 100 years and has applied it in proceedings which, as here, resemble district court litigation.”[141]

Following the rationale in Chevron and Mead, the court held that when an ambiguity or gap exists and no statutory provision directs the agency to use one standard of another, the statue then allows the agency (e.g., the USPTO) to, “express[ly] . . . engage in the process of rulemaking or adjudication that produces regulations or rulings for which deference is claimed” to address the ambiguity or gap.[142]  The court concluded that the USPTO regulation of selecting the “broadest reasonable interpretation” standard is reasonable in light of policy rationales and the Code of Federal Regulations,[143] and as such, the court, “do[es] not decide whether there is a better alternative as a policy matter.  That is a question that Congress left to the particular expertise of the Patent Office.”[144]

Moreover, assuming in light of this Act that the USPTO will no longer utilize the “broadest reasonable interpretation” standard to interpret patent claims in an instituted inter partes review, deference would be provided to the reviewing court to determine if terms, such as “filled” and “substantially filled” find support in the Specification or in the prosecution history. Removal of this standard may further allow the patent holder to argue the definitions bounds of specific claim terms more broadly and/or may allow the patent holder to introduce additional sources of evidence to support a definition. The methods and sources of proof for defining the scope of patent terms may be endless if this standard is recycled.

ii. Institution On a Subset of Grounds

Similar to the Supreme Court in Cuozzo, the Federal Circuit in Harmonic Inc. v. Avid Tech.[145] refrained from conducting de novo review over the USPTO guidelines on the subset of grounds question.  Further, with passage of the Regulatory Accountability Act of 2017, the question of lawfulness regarding institution of inter partes review on a “subset of challenge grounds” will be pried open.  Also, several recent decisions affirming the USPTO’s non-statutory institution on only a subset of grounds presented by an inter partes review petitioner may be undermined.[146]

Previously, the USPTO instituted an inter partes review petition on a subset of challenged grounds when the PTAB found that the inter partes review petition meets a threshold likelihood of success (e.g., there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition),[147] making additional grounds redundant to consider[148] and rendering them moot to litigate.  This is consistent with AIA ideology, which mandates the USPTO to, “consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings,”[149] providing for timely completion[150] of inter partes review petitions.

With passage of the Regulatory Accountability Act of 2017, this will no longer be settled law and may allow an appellate body to utilize de novo review on the subset of grounds question.  If the appellate body extinguishes this requirement, post-grant proceedings may only be instituted on a single ground, which may deter individuals lacking a sufficient basis to challenge a granted patent. Under these hypothetical circumstances, the inter partes review of Tinnus may not have been instituted in the first place, due to a lack of a singular ground to challenge the granted patent and lack of singular ground to meet the associated post-grant proceeding institution threshold.

iii. Institution On a Subset of Claims

Additionally, though the Federal Circuit has ruled it permissible for the USPTO to institute an inter partes review on a subset of grounds, the effect that introduction of the Regulatory Accountability Act of 2017 will have on institution of an inter partes review on a subset of claims is less clear.  For example, the Federal Circuit has approved the “subset of claims” rulemaking on statutory language grounds and merely resorted to a Chevron analysis in dictum.[151]

In Synopsys, Inc. v. Mentor Graphics Corp.,[152] the Federal Circuit explained that inter partes review proceeds in two stages.[153]  In a first stage, the PTAB reviews the inter partes review petition and any patent owner preliminary response to decide whether there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged in the petition,[154] where the USPTO has allowed the PTAB to initiate an inter partes review, “on all or some of the challenged claims.”[155]  Then, at the second stage, the PTAB conducts the inter partes review and issues a final written decision with respect to any patent claim challenged by the petitioner.[156]

Appellant, Synopsys, Inc., challenged the scope of the final written decision, not the decision to institute the inter partes review, and as such, Synopsys, Inc. argued that statutory language[157] requires the PTAB to issue a final written decision with respect to any patent claim challenged by the petitioner.[158]  The Federal Circuit dismissed this assertion, holding that the statutory text discloses that the claims the PTAB must address in the final decision are different than the claims raised in the petition.[159]  The Federal Circuit explained that since Congress explicitly chose to use differing phrases when describing claims raised in the petition for inter partes review under 35 U.S.C. § 314(a)[160] and claims on which inter partes review has been instituted under 35 U.S.C. § 318(a),[161] the two statutes have differing meanings.[162]

The Federal Circuit further held that, “the statute would make very little sense if it required the [PTAB] to issue final [written] decisions addressing patent claims for which inter partes review had not been initiated,”[163] since partial institution is one tool to manage effective AIA reviews.[164]  Based on these rationales, the Federal Circuit held that inter partes review institution is allowable on a subset of claims, as the statutory language, “authorize[s] the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”[165] Following the apparent legislative intent associated with managing effective AIA reviews, passage of this Act would likely maintain institution of an inter partes review on a subset of claims, which would uphold the Tinnus decision.

V. Conclusion

Eliminating agency deference will create substantial uncertainty, while erasing decades of jurisprudence.  This proposed legislation will shift the balance of power from the administrative branch to the judicial branch, and as a result, agencies will no longer be able to freely interpret statutes and regulations they create.  Instead, where there is a gap or ambiguity that Congress has previously allowed agencies to regulate, appellate review of agency actions (involving questions of law) will occur via de novo review.  This will allow for appellate review of the PTAB’s final written decision in Tinnus.  Furthermore, passage of the Regulatory Accountability Act of 2017 will empower the reviewing court to take a more active role in reigning in alleged agency abuse.


[1] See infra Part I.

[2] See infra Part II.

[3] See infra Part III.

[4] Telebrands Corp., v. Tinnus Enters., LLC, No. PGR2015-00018 (PTAB Dec. 30, 2016).

[5] See infra Part IV.

[6] See infra Part V.

[7] Louis Gentilucci, The Day the Constitution was Adopted, Nat’l Const. Ctr. (Jun. 25, 2015), https://constitutioncenter.org/blog/the-day-the-constitution-was-adopted.

[8] U.S. Const. art. I, § 8.

[9] 35 U.S.C. § 154(a)(1) (2018).

[10] Patent Act of 1952, Pub. L. No. 82-593, 66 Stat. 792 (1952) (codified as amended at 35 U.S.C. §§ 1–376 (2018)).

[11] Samiyyah R. Ali, The Great Balancing Act: The Effect of the America Invents Act on the Division of Power Between the Patent and Trademark Office and the Federal Circuit, 69 Vand. L. Rev. 217, 222 (2016).

[12] Id.

[13] Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).

[14] Id.

[15] Id.

[16] Id.  See also Gene Quinn, PTAB Judges Shockingly Inexperienced Compared to District Court Judges, IPWatchdog (Mar. 6, 2018), http://www.ipwatchdog.com/2018/03/06/ptab-judges-shockingly-inexperienced/id=94438/ (describing that approximately 12.64% of Administrative Patent Judges (hereinafter as “APJ”) of the PTAB were appointed with less than five years of experience (where “experience” is defined as the number of years after one graduated from law school) and approximately 46.55% of APJs were appointed while they were still senior associates.  It seems quite troubling that these PTAB judges who hold the power to both grant a patent and extinguish the property rights a patent asserts have little and significantly less experience than District Court judges).

[17] Gene Quinn, The Past, Present and Future of Post Grant Administrative Trials, IPWatchdog (Sep. 18, 2014), http://www.ipwatchdog.com/2014/09/18/the-past-present-and-future-of-post-grant-administrative-trials/id=51298/.

[18] Introduced by the AIA as a counterpart to inter partes review.

[19] Post-Grant Proceedings: Inter Partes Review, Fish & Richardson, http://fishpostgrant.com/inter-partes-review/.

[20] Id.  (including (a) the time frame in which these mechanisms are available; (b) the threshold showing to be made to institute the proceeding; (c) the time given to the USPTO to reach a final determination on the instituted matter; (d) invalidity arguments available to the challenger; and (e) the trier of the determination).

[21] 35 U.S.C. § 328(a) (2018).

[22] 35 U.S.C. § 311(b) (2018); 37 C.F.R. § 42.104(b)(2) (2017); Inter Partes Review, USPTO (May 9, 2017), https://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/inter-partes-review.

[23] 35 U.S.C. § 314(a) (2018); 37 C.F.R. § 42.108(c) (2017).

[24] Post-Grant Proceedings: Inter Partes Review, supra note 20; 37 C.F.R. § 42.208 (2017); Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents: Final Rule, 77 Fed. Reg. 48,680, 48,717 (Aug. 14, 2012).

[25] Post-Grant Proceedings: Inter Partes Review, supra note 20.

[26] 37 C.F.R. § 42.208(c) (2017); Eugene T. Perez and Kelly E. Rose, Starting an AIA Post-Grant Proceeding: The Different Threshold Standards, Birch, Stewart, Kolasch & Birch, LLP (2017), http://www.postgrantproceedings.com/resources/procedures/Threshold_Standards.html.

[27] Kean J. DeCarlo and Russell B. Dunlap, What Standard Should the Patent Trial and Appeal Board Apply in Interpreting Patent Claims During Inter Partes Review? Is the Institution of Inter Partes Review Ever Appealable?, Taylor English (Apr. 25, 2016), https://www.taylorenglish.com/newsroom-publications-297.html; Samuel Kassa, PTAB v. District Court — Finality of Findings of Fact, Lexology (Jun. 1, 2016), https://www.lexology.com/library/detail.aspx?g=5eb57a68-0e83-402a-bbb1-961f7664aedd; Jacob Oyloe, Claim Constructions In PTAB Vs. District Court, Law360 (Oct. 6, 2014),  https://www.law360.com/articles/581715/claim-constructions-in-ptab-vs-district-court.

[28] Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837, 837 (1984).

[29] Id. at 842–43.

[30] Id.

[31] Id. at 843.

[32] Michigan v. EPA, 135 S. Ct. 2699, 2712 (2015) (Thomas, J., concurring).

[33] Gutierrez-Brizuela v. Lynch, 834 F.3d 1142, 1152 (10th Cir. 2016) (Gorsuch, J., concurring).

[34] United States v. Mead Corp., 533 U.S. 218 (2001).

[35] Id. at 226–27.

[36] Id. at 230–31.

[37] 35 U.S.C. § 325(a)(10) (2018).

[38] 35 U.S.C. § 324(b) (2018).

[39] Auer v. Robbins, 519 U.S. 452 (1997).

[40] Fair Labor Standards Act of 1938, 75 P.L. 718 (Jun. 25, 1938).

[41] Pub. L. 93-259, § 6, 88 Stat. 58-62.

[42] Auer, 519 U.S. at 457.

[43] Id. at 461 (“Because the salary-basis test is a creature of the Secretary’s own regulations, his interpretation of it is, under our jurisprudence, controlling unless ‘plainly erroneous or inconsistent with the regulation.’”) (citing Robertson v. Methow Valley Citizens Council, 490 U.S. 332, 359 (1989)).

[44] Id.

[45] Skidmore v. Swift & Co., 323 U.S. 134 (1944).

[46] Id. at 140.

[47] Id. at 139–40.

[48] Novartis AG v. Noven Pharms., Inc., 853 F.3d 1289 (Fed. Cir. 2017).

[49] Id. at 1291.

[50] Id. at 1293–94.

[51] 35 U.S.C. § 316(e) (2018).

[52] Novartis, 853 F.3d, at 1294; and see Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00549, 2015 Pat. App. LEXIS 12259, at *2 (PTAB Sep. 28, 2015).

[53] Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131 (2016).

[54] Id. at 2146.

[55] Id.Cf. One Lot Emerald Cut Stones v. United States, 409 U.S. 232, 235–38 (1972) (per curiam).

[56] Id. at 2144.

[57] Versata Development Group, Inc. v. SAP America, Inc. 793 F.3d 1306 (Fed. Cir. 2015).

[58] Id. at 1327.

[59] Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1281 (Fed. Cir. 2014) (en banc).

[60] 37 C.F.R. § 42.300(b) (2017).

[61] MPEP 2111; 37 CFR 1.75(d)(1) (where during patent examination, the pending claims must be given their “broadest reasonable interpretation” consistent with the specification); See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (where the court explained that the USPTO determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in view of the specification as it would be interpreted by a person having ordinary skill in the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1316 –17 (Fed. Cir. 2005) (“application claims must ‘conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.’”).

[62] Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1376 (Fed. Cir. 2012).

[63] The Federal Circuit is the only appellate-level court with jurisdiction to hear patent appeals and its rulings are binding on all United States District Courts.  See 35 U.S.C. § 141(a) (2018).

[64] 35 U.S.C. § 319 (2018); 35 U.S.C. § 329 (2018).

[65] Cf. In re MCM Portfolio, LLC, No. 2014-104, 2014 WL 595366 (Fed. Cir. Feb. 18, 2014) (denying writ of mandamus without prejudice where MCM sought relief from institution of review on privity grounds).

[66] Daniel C. Cooley et al., , Navigating PTAB Appeals Before the Federal Circuit, Finnegan (Jun. 2014), https://www.finnegan.com/en/insights/navigating-ptab-appeals-before-the-federal-circuit.html.

[67] In re Gartside, 203 F.3d at 1315–16 (Fed. Cir. 2000); In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011).

[68] In re Gartside, 203 F.3d at 1312; Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229 (1938); See 3 Charles H. Koch, Jr., Administrative Law and Practice § 10.3[1], at 22–26 (2d ed. 1997).

[69] Universal Camera Corp. v. NLRB, 340 U.S. 474, 487–88 (1951).

[70] Consolidated Edison, 305 U.S. at 229–30; see also AK Steel Corp. v. United States, 192 F.3d 1367, 1371 (Fed. Cir. 1999); In re Gartside, 203 F.3d at 1312.

[71] Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1356 (Fed. Cir. 2013).

[72] Killip v. Office of Pers. Mgmt., 991 F.2d 1564, 1568–69 (Fed. Cir. 1993); see also In re Skvorecz, 580 F.3d 1262, 1267 n.2 (Fed. Cir. 2009).

[73] In re Baxter, Int’l, Inc., 678 F.3d 1357 (Fed. Cir. 2012).

[74] Id. at 1365; see also Robert Schaffer and Joseph Robinson, Federal Court Validity Decisions Do Not Bind the PTAB,IPWatchdog (Apr. 14, 2017), http://www.ipwatchdog.com/2017/04/14/federal-court-validity-decisions-do-not-bind-ptab/id=82071/.

[75] Parithosh K. Tungaturthi, Federal Circuit Confirms That it is Bound By Congress And Supreme Court in its Standard Of Review Of Appeals Under The AIA, BIOLOQUITUR, (May 3, 2016), https://www.bioloquitur.com/federal-circuit-confirms-that-it-is-bound-by-congress-and-supreme-court-in-its-standard-of-review-of-appeals-under-the-aia/.

[76] Merck & Cie v. Gnosis S.P.A., 820 F.3d 432 (Fed. Cir. 2016).

[77] Dickinson v. Zurko, 527 U.S. 150 (1999).

[78] In re Gartside, 203 F.3d 1305, 1313 (Fed. Cir. 2000).

[79] Merck & Cie v. Gnosis S.P.A. et al., Case No. 2014-1779, at *4 (Fed. Cir., Apr. 26)

[80] 157 Cong. Rec. S5319 (daily ed. Sept. 6, 2011) (statement of Sen. Kyl); 157 Cong. Rec. S1053 (daily ed. Mar. 1, 2011) (statement of Sen. Whitehouse) (“[T]he bill will improve administrative processes so that disputes over patents can be resolved quickly and cheaply without patents being tied up for years in expensive litigation.”); 157 Cong. Rec. S1326 (daily ed. March 7, 2011) (statement of Sen. Sessions) (“This will allow invalid patents that were mistakenly issued by the USPTO to be fixed early in their life, before they disrupt an entire industry or result in expensive litigation.”).

[81] Telebrands Corp., v. Tinnus Enters., LLC, PGR2015-00018, Paper 75 (PTAB Dec. 30, 2016).

[82] Tinnus Enterprises, LLC v. Telebrands Corp., No. 6:15-cv-00551 RWS-JDL, 2015 WL 11089479 (E.D. Tex. Sep. 11, 2015).

[83] U.S. Patent No. 9,051,066 (filed Sep. 22, 2014).

[84] Tinnus, No. 6:15-cv-00551 RWS-JDL, at *1.

[85] U.S. Patent No. 9,051,066 at *6 (filed Sep. 22, 2014).

[86] Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018, Paper 2002 (PTAB Oct. 7, 2015).

[87] Id.

[88] Id. at *10.

[89] Id. at *2; see also Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1298 (Fed. Cir. 2009) (citing Erico Int’l Corp. v. Vutec Corp., 516 F.3d 1350, 1353–54 (Fed. Cir. 2008)).

[90] Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018, Paper 1 (PTAB Jun. 22, 2015).

[91] Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018, Paper 6 (PTAB Oct. 7, 2015).

[92] Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018, Paper 7 (PTAB Jan. 4, 2016).

[93] Id. at *6.

[94] U.S. Patent No. 5,826,803 (filed May 12, 1997).

[95] U.S. Patent Application Serial No. 13/556,346 (filed Jul. 24, 2012) (published on May 16, 2013 as U.S. Patent Application Publication 2013/0118640 A1).

[96] Telebrands, PGR2015-00018, at *6; U.S. Patent Application Serial No. 10/867,511 (filed Jun. 14, 2004) (published on Jan. 6, 2005 as U.S. Patent Application Publication 2005/0004430 A1).

[97] U.S. Patent No. 8,479,776 (filed Nov. 30, 2012).

[98] Telebrands, PGR2015-00018, at *6.

[99] Tinnus Enterprises, LLC v. Telebrands Corp., No. 6:15-cv-00551 RWS-JDL, 2015 WL 11089480 at *2 (E.D. Tex. Dec. 02, 2015).

[100] Id. at *10.

[101] Telebrands Corp., v. Tinnus Enters., LLC, PGR2015-00018, Paper 75 (PTAB Dec. 30, 2016).

[102] Id. at *8.  See, 37 C.F.R. § 42.100(b) (2017); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016).

[103] Telebrands, PGR2015-00018, at *10.

[104] Id. at *10–11.

[105] Id.

[106] Id. at *11.

[107] Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).

[108] Telebrands, PGR2015-00018, at *13.

[109] In re Packard, 751 F.3d 1307 (Fed. Cir. 2014).

[110] Telebrands, PGR2015-00018, at *13.

[111] Id. at *16.

[112] Id. at *16–17.  See MPEP § 2173.02(I).

[113] Id. at *17 n. 11.

[114] Id. at *34.

[115] Id. at 25.

[116] Tinnus Enterprises, LLC v. Telebrands Corp., No. 2017-1726, 2017 WL 4157040 (Fed. Cir. Aug. 29, 2017).

[117] Personal Audio, LLC v. Electronic Frontier Foundation, Case No. 2:13–CV–00013–JRG–RSP, 2014 WL 2796795 (E.D. Tex. 2014).

[118] U.S. Patent No. 8,112,504 B2 (Filed Mar. 4, 2009).

[119] Electronic Frontier Foundation v. Personal Audio, LLC, Case IPR2014-00070 (PTAB Apr. 10. 2014).

[120] Personal Audio, LLC v. Electronic Frontier Foundation, 867 F.3d 1246 (Fed. Cir. 2017).

[121] Homeland Housewares LLC v. Whirlpool Corp., Case IPR2014-00877 (PTAB Oct. 30, 2014).

[122] U.S. Patent 7,581,688 (Filed Mar. 12, 2007).

[123] Homeland Housewares LLC v. Whirlpool Corp., 865 F.3d 1372 (Fed. Cir. 2017).

[124] United States v. Mead Corp., 533 U.S. 218,226–27 (2001).

[125] Id. at 230–31.

[126] See, e.g., Republican Policy Committee, Comments on H.R. 5, Regulatory Accountability Act of 2017,

https://policy.house.gov/legislative/bills/hr-5-regulatory-accountability-act-2017 (“Repeals

the Chevron and Auer doctrines to end judicial deference to bureaucrats’ statutory and regulatory

interpretations”).

[127] H.R. 5, Regulatory Accountability Act of 2017, Title II, Section 202 (hereinafter “Regulatory Accountability Act”).

[128] Without giving deference to the agency’s interpretation.

[129] This includes de novo review of interpretations of: (1) constitutional and statutory provisions and (2) rules made by agencies.

[130] Regulatory Accountability Act, supra note 123.

[131] Id. at § 103.

[132] Administrative Procedure Act (APA), Pub. L. 79–404, 60 Stat. 237 (1946).

[133] Regulatory Accountability Act, supra note 123.

[134] Id.

[135] The USPTO will institute a post-grant review if the USPTO director determines that the challengers’ petition meets the threshold showing that more likely than not at least one challenged claim will be found to be invalid.

[136] Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1033 (Fed. Cir. 2016).

[137] Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016).

[138] Id.

[139] Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144 (2016).

[140] Id. at 2135.

[141] Id.

[142] Id. at 2142 (quoting United States v. Mead Corp., 533 U.S. at 230).  See also EEOC v. Arabian American Oil Co., 499 U.S. 244 (1991) (where the Court did not apply Chevron deference to agency guidelines where congressional delegation did not include the power to “promulgate rules or regulations”) (quoting General Elec. Co. v. Gilbert, 429 U.S. 125, 141 (1976); Christensen v. Harris County, 529 U.S. 576, 596–597 (2000) (Breyer, J., dissenting) (where the court held that if it is in doubt that Congress actually intended to delegate particular interpretive authority to an agency, Chevron deference is inapplicable, but Skidmore retains vitality).

[143] 37 C.F.R. § 42.100(b) (which represents a reasonable exercise of the rulemaking authority that Congress delegated to the USPTO, allowing for a claim in an unexpired patent to be construed via its “broadest reasonable interpretation” in light of the Specification of the patent in which it appears).

[144] Cuozzo, 136 S.Ct. 2131 at 2146.

[145] Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1356 (Fed. Cir. 2016).

[146] Id.

[147] 35 U.S.C. § 314(a).

[148] See, e.g., Harmonic, 815 F.3d at 1367 (where subsequent the PTAB finding that the petitioner had a reasonable likelihood of success in prevailing to at least one challenged claim in the inter partes review petition with a combination of references, the PTAB held that other grounds for institution of the inter partes review petition were redundant).

[149] 35 U.S.C. § 316.

[150] 35 U.S.C. § 316(b).

[151] Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1316 (Fed. Cir. 2016) (“Although we find that the [statutory] language is clear, if there were any doubt about the Board’s authority and the statute were deemed ambiguous, the PTO has promulgated a regulation allowing the Board to institute as to some or all of the claims.”).

[152] Id.

[153] St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375 (Fed. Cir. 2014).

[154] 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a).

[155] 37 C.F.R. § 42.108(a).

[156] 35 U.S.C. § 318(a).

[157] Id.

[158] Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1315 (Fed. Cir. 2016).

[159] Id.

[160] Describing that the PTAB may not institute an inter partes review unless “the information presented in the petition . . . and any response filed . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”

[161] In describing the final written decision, Congress stated that the PTAB must issue a final written decision with respect to any “claim challenged by the petitioner.”

[162]  Bailey v. United States, 516 U.S. 137, 146 (1995).

[163] Synopsys, 814 F.3d at 1315.

[164] Id. at 1330.

[165] Id. at 1316.  See  37 C.F.R. § 42.108(a).



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