Brief of Saurabh Vishnubhakat as Amicus Curiae in Support of Petitioner, Baxter Corp. Englewood v. Becton, Dickinson & Co., No 21-819, (Sup. Ct., Feb. 17, 2022)

Abstract

Nearly 80 years ago, this Court set forth “a simple but fundamental rule of administrative law”: “a reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency.” SEC v. Chenery Corp., 332 U.S. 194, 196 (1947) (“Chenery II ”) (citing SEC v. Chenery Corp., 318 U.S. 80 (1943) (“Chenery I ”)). The Court should grant the petition as to the second question presented because the Federal Circuit routinely ignores that rule’s equally fundamental corollary, the ordinary remand rule, in its review of decisions by the Patent Trial and Appeal Board (“PTAB”).

The ordinary remand rule provides that, if a court concludes that the grounds given for agency action are erroneous, it generally should remand to the agency any unsettled issues committed to it by statute. As petitioner explains (at 28-33), the Federal Circuit has made an unreasoned departure from that principle – taking it upon itself to decide questions of patentability that rightly are the PTAB’s to resolve. It has never reconciled that practice with this Court’s precedent, and that cannot be done. That the Federal Circuit has once again broken from the “uniform approach to judicial review of administrative action” to which this Court has long been committed, Dickinson v. Zurko, 527 U.S. 150, 154 (1999), is reason enough to grant review.

But the reasons to do so extend well beyond the restoration of uniformity for its own sake. As this Court recognized in the Chenery cases and has repeatedly underscored since, the ordinary remand rule’s roots run to a constitutional principle that is no less vital for its obviousness: where Congress has exercised its prerogatives to assign a particular judgment to an administrative agency, a court cannot exercise that judgment without arrogating to itself power it does not have. That the Federal Circuit has nevertheless taken to deciding disputes that Congress entrusted to the PTAB is thus no mere patent-law curiosity. It instead threatens core separation-of-powers values – and it echoes prior instances in which the Federal Circuit has erroneously exceeded generally applicable limitations on appellate courts’ powers. Because that error requires correction, the Court should grant certiorari.

Keywords: patent, administrative, inter partes review, America Invents Act, IPR, PTAB, USPTO, AIA

JEL Classification: D23, D73, K23, K41, O31, O34, O38