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Delegating Authority | Patently-O



CustomPlay, LLC v. Amazon.com, Inc. (Supreme Court 2022)

New challenge to inter partes review. In this case, the patentee argues: (1) anti-delegation and (2) due process. Questions:

  1. Whether the Patent and Trademark Office (PTO) violated the statutory text and legislative intent of the America Invents Act (AIA) by delegating the PTO Director’s responsibility to determine whether to institute inter partes review (IPR) of issued patents to the Patent Trial and Appeal Board (PTAB), which is the entity that the AIA directs to render final decisions in instituted proceedings.
  2. Whether the PTO’s administration of IPR proceedings violates a patent owner’s constitutional right to due process by having the same decisionmaker, the PTAB, render both the institution decision and the final decision.

On question 1, remember that the statutory language calls for the USPTO “Director” to decide whether to institute an IPR, and then for the “Patent Trial and Appeal Board” to actually conduct the review.  35 U.S.C. 314, 316.  But, in its rulemaking, the USPTO gave authority to the PTAB to both institute and review.

https://www.supremecourt.gov/DocketPDF/21/21-1527/225545/20220516181434359_21-Petition.pdf

 




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