The Porous Court-Agency Border in Patent Law

Abstract

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office encroachments on powers Congress left to the courts. This Article traces the statutory roots of those encroachments, their initial encouragement by the Supreme Court’s 2016 Cuozzo decision, and the recent resistance to their further expansion by the en banc Federal Circuit’s 2018 Wi-Fi One decision.

Keywords: patent, agency, appeal, administrative, substitution, Cuozzo, Wi-Fi One, inter partes, covered business method, post grant, America Invents Act, IPR, CBM, PTAB, USPTO, AIA

JEL Classification: D23, D73, K41, O31, O34, O38