Federal Circuit backs PTAB to make both IPR decisions
Washington DC | 20 January 2016

The same panel of judges that institute an inter partes review (IPR) proceeding against a patent can also make the final decision on the validity of the disputed claims, according to the US Court of Appeals for the Federal Circuit.

In a 2-1 ruling issued on 13 January, the Federal Circuit dismissed Ethicon Endo-Surgery’s claim that the IPR procedure raises “serious due process concerns” by failing to bifurcate the institution and final decision processes.

Ethicon took its appeal to the Federal Circuit after the Patent Trial and Appeal Board (PTAB) invalidated 14 claims in its patent for a surgical device used to staple, secure and seal tissue that has been incised. Rival Covidien argued in 2013 that they were obvious.

The medical device maker clamed that the America Invents Act (AIA) does not give the head of the US Patent and Trademark Office (USPTO) the power to delegate the institution decision to the PTAB, while “the statutory text and structure, guided by constitutional principles, require that the decision to institute not be made by the same panel” that makes the final determination.

Federal Circuit judges Richard Taranto and Timothy Dyk, writing as the majority, did not see a difference between how the PTAB and district courts decide cases.

“The [PTAB] first decides whether a petition demonstrates a likelihood of success on the merits, and, if it does, makes a decision to institute inter partes review. During the merits, the board decides whether the petition actually succeeds. Both the decision to institute and the final decision are adjudicatory decisions and do not involve combining investigative and/or prosecutorial functions with an adjudicatory function.”

“The inter partes review procedure is directly analogous to a district court determining whether there is ‘a likelihood of success on the merits’ and then later deciding the merits of a case.”

They concluded: “On the merits we hold that neither the statute nor the Constitution precludes the same panel of the [PTAB] that made the decision to institute inter partes review from making the final determination.”

Writing the dissent, Judge Pauline Newman argued that the purpose of the AIA is to provide “premium decisional objectivity, in order to restore public confidence in the reliability of the patent”.

“The bifurcated design of post-grant review is clear not only from the language of [the AIA], but pervades the structure of these post-grant proceedings.”

“Congress unambiguously placed these separate determinations in different decision makers, applying different criteria. The majority’s endorsement of the USPTO’s statutory violation departs not only from the statute, but also from the due process guarantee of a ‘fair and impartial decision-maker’.”

Author: Tammy Facey

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