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New York University Annual Survey of American Law




The rise of administrative patent validity review since the America Invents Act has rested on an enormous expansion of Patent Office authority. A relatively little-known aspect of that authority is the agency's statutory ability to intervene in Federal Circuit appeals from adversarial proceedings in its own Patent Trial and Appeal Board. The Patent Office has exercised this intervenor authority frequently and with specific apparent policy objectives, including where one of the adverse parties did not participate in the appeal. Moreover, until recently, there has been no constitutional inquiry into the Article III standing that the Patent Office must establish in order to intervene in this way.

The Patent Office's pattern of strategic intervention intersects in important ways with the constitutional limits that the agency must observe. Thus far, every intervenor brief that the agency has filed has been in full or partial defense of the PTAB’s position or of some larger structural value associated with administrative adjudication, never in opposition to the PTAB's stance. Where the Patent Office did choose to intervene on appeal, the outcomes below were usually defeats for the patent owner (about 80%), and the agency's position was to affirm the defeat. And where the Patent Office intervened specifically to stand in for a litigant absent on appeal, the absent litigant was always a prevailing patent challenger — never a prevailing patent owner. Meanwhile, since the Patent Office began intervening in Federal Circuit appeals, the relative share of interventions by private parties has declined, and the remainder has shifted to a pattern of more concentrated, multi-party interventions. This suggests a net offloading onto the Patent Office of the responsibility to intervene.

The observed Patent Office preference for specific outcomes and policies is constitutionally important because the agency's ability to intervene will often rest on its ability to show Article III standing. Piggybacking on another party's standing will not always be enough, especially where the litigant in the case below is absent from the appeal or where the agency's position is different (especially broader) than what its friendly appellate party seeks. In light of these findings, the Federal Circuit's forthcoming decision in Knowles Electronics v. Matal, No. 2016-1954, can do much to clarify the constraints upon the use of intervenor authority as an instrument of Patent Office policy.

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New York University School of Law

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