Does the PTAB Precedential Opinion Panel (POP) get Chevron Deference?

Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2019)

In a sua sponte order, the Federal Circuit asked the parties to and the U.S. Gov’t to answer the following question:

[W]hat, if any, deference should be afforded to decisions of a Patent Trial and Appeal Board Precedential Opinion Panel (‘POP’), and specifically to the POP opinion in Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019).

The Federal Circuit requested briefing from the U.S. Gov’t (filed on Sept 17, 2019) followed by party briefs within 14 days (October 1, 2019).  David Boundy has also already submitted an amicus brief on the topic.

In its brief, the Gov’t argues that the PTAB-POP decisions should be given deference–Chevron Deference–when interpreting AIA Trial provisions of the Patent Act. “The POP’s interpretations of the Leahy-Smith America Invents Act (AIA) qualify for deference under Chevron U.S.A. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).”

The POP’s precedential opinions readily qualify for Chevron deference. . . . Congress has expressly delegated authority to adjudicate IPRs, see 35 U.S.C. §§ 311-319, as well as authority to enact regulations “establishing and governing inter partes review under this chapter,” id. § 316(a)(4). Thus, both of the quintessential forms of lawmaking authority discussed in Mead, “adjudication [and] notice-and-comment rulemaking,” are present here. Moreover, the AIA is a complex, specialized statutory regime implicating a “vast number of claims” with a “consequent need for agency expertise and administrative experience.” Barnhart.

In his brief, Boundy focuses on the grant of rulemaking authority found in the AIA — that the PTO Director “shall prescribe regulations.”  35 U.S.C. 316(a) & 326(a).  Those provisions indicate ordinary notice-and-comment rulemaking procedures.  He explains:

Many agencies have a propensity to avoid rulemaking, because of the workload and oversight that comes with it. . . . The POP process takes that avoidance to a new level. Over the last seven months, instead of “prescribing regulations,” the POP has issued eighteen precedential decisions, mostly on issues that are recurring and predictable. This avoidance of rulemaking process denies all parties the benefits and predictability of careful, informed “regulation,” evades oversight by OIRA and the Small Business Administration, and as this case demonstrates, poses entirely novel legal questions. The PTAB’s shortcutting creates uncertainty for the public, and will burden this Court as procedural breaches get litigated.

Boundy Brief.

This particular case involves a quirky question of joinder under 35 U.S.C. 315(c) that allows the director to join someone “as a party.” In Proppant, the PTAB POP concluded that “§ 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party.”  Absent deference, I’m betting that the Federal Circuit will reject that rule.

= = = =

The consolidated case on appeal involves seven inter partes review proceedings filed by Facebook against four different patents owned by Windy City.  Facebook filed successive petitions against several of the patents and then requested joinder under § 315(c). The PTAB granted those requests. The final written decision cancelled some claims three of the patents, but upheld claims in all four.


24 thoughts on “Does the PTAB Precedential Opinion Panel (POP) get Chevron Deference?

  1. 6

    My brief is basically a condensation of my much larger article on PTAB precedential opinions, David Boundy, The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions, link to

    The most relevant portion, discussing Chevron deference, is at section II(C), pages *21 to *26.

      1. 6.1.1

        That’s what I’m working on today Sunday Sep 22. I found some really sleazy stuff.

        — The higher fee for “2nd and subsequent RCE” — last year, in the costing information provided to PPAC, the PTO conceded that its cost for “2nd and subsequent RCE” is lower than first RCEs. Several people commented on the incongruity. The Notice of Proposed Rulemaking addresses the incongruity by leaving out the embarrassing costing data. The current cost estimate documents only estimate costs for “no RCE” applications and “one RCE applications” but there’s no discussion whatsoever for “2nd and subsequent RCE” applications. If the data is incongruous, drop the data.

        — The PTO points to two standards to support the DOCX proposal. The standard documents don’t say what the PTO says they say. In fact, the standards documents say the opposite.

        — The PTO claims to be exempt from several rulemaking laws because there’s some “transfer payment” embedded in there somewhere. (A “transfer payment” is money ghat flows from one private sector payor to other private sector payees, like Social Security. This rule is almost all payments from the private sector to government — that’s not a “transfer payment.”) They don’t identify what that transfer payment might be. Even if there’s one “transfer payment” in there somewhere, that doesn’t exempt the entire rule package.

        Geeze louise.


          Dave, is one “transfer payment” the subsidies large applicant PTO fees pay to subsidize the greatly reduced fees that small entities pay?


            BTW, one suggestion that has been made re the proposed new PTO patent attorney and patent agent fees {with CLE} is to make it every 2-5 years instead of every year. That would save time and money for both registrants and the PTO.


            No. A “transfer payment” is money that flows from one private sector payor to other private sector payees, like Social Security. In the example you gave, the money is consumed by government, not paid to another private sector party.


              I’m looking forward to seeing what “greater” looks like, given that I already think this is great. 😀

  2. 5

    Just to avoid some apparent confusion, note that this is a serious question of Chevron deference or not to an administrative tribunal legal interpretation of a statute on a PTO tribunal procedure, if that interpretation was reasonable.
    Not to be confused with mere PTO letters to examiners merely interpreting a Fed. Cir. decision re a Sup. Ct. decision. [Like Burkheimer]. Obviously there is no Chevron doctrine for telling the Fed. Cir. how it should interpret its own decisions.

    1. 5.1

      What exactly is the “apparent confusion” that you think that you are dispelling with a reference to Berkheimer?

      What is apparent is that you are confused as to why the reference to Berkheimer was made, and what that reference entails. The over-polite genuflection to Random was a tip-off, as this merely reflects your agreement with another that can be “politely” referenced as being against strong patent protection.

  3. 4

    The government brief loses a lot of its impact in its efforts to not have its argument apply to any other issues (with the explicit example of 101).

    1. 2.1

      A reasonable system would allow two different actions involving the same parties to be joined together for efficiency and justice; and you might also call that process “joinder.” My problem with the PTO approach is that the statute at issue (315(c)) is about joining “a party”, not joining together two actions.

      1. 2.1.1

        This is not about this specific case, which is unusual in that the Fed. Cir. may well be considering the higher than usual odds of the politically charged issue of Chevron agency deference re its enabling statutes in general [here to a PTO patent law statutory interpretation] being taken up by the Supreme Court.
        This is just to observe that, due to IPR petitioner page limits and/or the number or complexity of the claims and prior art needed, that some petitioners filed dual petitions and requested their joinder. Also, there have been a few cases in which the petitioner’s prior art search or a third party turned up even better prior art against the same claims early in an IPR. Perhaps there is a better way to handle the latter other than another petition and joinder?
        Another need for joinder has been in situations where several defendants were being sued on the same patent but their attorneys refused to cooperate for a single IPR.


          The government brief certainly reflects a very “manicured” response that parses through application very much limited to THIS case — the very opposite of what you post here Paul (and this comment should not be taken as disagreeing with the thrust that THIS case may very well be a type of “canary in a coal mine” and indicator for a much larger issue to a Supreme Court some would say is looking for the chance to apply a more “Republican” stamp on the Administrative State.

      2. 2.1.2

        That’s consolidation. The PTAB sometimes consolidates two different IPRs, and in my cases, it hasn’t called that joinder.

  4. 1

    Would love to see the g@rbage claims that were tanked, as well as the junky ones that weren’t.

    Pretty much everything associated with Facebook is, of course, total cr@p.

    1. 1.1

      Amazing how, with a wave of your wand from up on high, you are able to weigh in on the both the eligibility and “intrinsic worth” of patent claims you have, admittedly, not even taken the time to read.

      Throwing shells from the peanut gallery is not critical thought.


          I don’t think Malcolm is the sort of creature that has legs that can be used to kick dust or anything else.

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