PTAB Appeals, Standing, and the PTO’s Voice as Intervenor

Guest Post by Matthew J. Dowd and Jonathan Stroud

Professor Saurabh Vishnubhakat’s recent well-reasoned post and longer article add much to the discussion about standing to appeal from the PTAB. Standing has recently garnered significant interest from the Federal Circuit. Building on existing scholarship, we have written a concise synopsis of standing law as applied to PTAB appeals, forthcoming in Catholic University of America Law Review.

Drawing from it, we offer a counterpoint to Professor Vishnubhakat’s view, as expressed in his post, of intervenor standing—with his permission (and we thank Prof. Crouch for the opportunity). Professor Vishnubhakat’s thesis asserts, in part, that while 35 U.S.C. § 143 grants the PTO “the right to intervene in an appeal,” separate and independent constitutional standing requirements should prevent it from doing so when an appellee fails to appear. He finds that the PTO’s “ability to intervene often will rest on its ability to show Article III standing” and that the PTO “as intervenor may be able avoid having to show its own standing—but only if (1) the agency has entered the case on the side of a party that does establish standing, and so long as (2) the agency does not seek relief that is different from what that friendly party seeks.” The PTO, he concludes, should not be able to intervene where a party does not appear.

In our view, as a matter of standing alone, the PTO can participate as an intervenor in virtually all AIA appeals from the PTAB—and many reasons are consonant with the principles on which Professor Vishnubhakat bases his reasoning. We make no judgment here on the merits of the positions the PTO solicitor has or will adopt, or the frequency of intervention. While there is a valid debate about the policy choices and the frequency with which the PTO has intervened, that debate is distinct from the legal question of whether the PTO has, or must have, standing as an intervenor beyond their express statutory grant. Professor Vishnubhakat reasons correctly; he just goes a bridge too far.

First, while no court has definitively held that each party to an appeal must establish independent Article III standing where appellants have standing, most courts and opinions suggest that if the party invoking the court’s jurisdiction establishes Article III standing, the inquiry is resolved. For instance, in Camreta v. Greene, 131 S. Ct. 2020 (2011), the Supreme Court found that any opposing party necessarily has an “ongoing interest in the dispute,” so that the case by nature features “that concrete adverseness which sharpens the presentation of issues.”

In ASCARCO Inc. v Kadish, 490 U.S. 605 (1989), the Supreme Court held that while the state-court plaintiffs-respondents lacked Federal Article III standing, the Court had jurisdiction, because the petitioners seeking review had suffered “a specific injury stemming from the [adverse] state-court decree.” Importantly, the Court took no issue with the respondents’ participation in the appeal; they found simply that “the parties remain adverse,” as the plaintiffs-respondents were defending the state court’s judgment, and an appeal would resolve a “genuine case or controversy.”

And the following year in Department of Labor v. Triplett, 494 U.S. 715 (1990),
the Department of Labor and the Committee on Legal Ethics appealed the claims of a third-party attorney below. The majority held that both appealing parties had standing. The government’s “Committee on Legal Ethics” had “the classic interest of a government prosecuting agency arguing the validity of a law upon which its prosecution is based.” There was “no question” the third-party defendant-respondent Triplett had standing, the court reasoned, given his claim that his clients were being deprived of due process. Justice Marshall, concurring, explained that where “respondent has not invoked the authority of any federal court, then, federal standing principles are simply inapplicable to him.” He went on: “Under this Court’s clear pronouncement in ASARCO, the only relevant question for us here is whether one of the petitioners has standing to seek review by this Court of the state court’s judgment.”

Those are a few in an extensive line of cases supporting the view that the party having to show standing is the one seeking to invoke the court’s jurisdiction. For instance, in Rumsfeld v. FAIR, Inc., 547 U.S. 47 (2006), the Supreme Court held that “the presence of one party with standing is sufficient to satisfy Article III’s case-or-controversy requirement.” At a minimum, any fulsome analysis of intervenor standing must consider this precedent.

Second, Town of Chester v. Laroe Estates, Inc., 137 S. Ct. 1645 (2017)—the Court’s most recent opinion on intervenor standing—comports with prior precedent and runs against the need for intervenors to establish standing independent from the parties to the matter, or to establish the standing of an underlying party whose position they support. In Town of Chester, the Court squarely held that “an intervenor must meet the requirements of Article III if the intervenor wishes to pursue relief not requested by a plaintiff.” The Court cited cases specifying that it is the “plaintiff” who needs to show standing, maintaining consistency with the cases discussed above. To read in a requirement that intervenors must establish standing for their positions—or for the parties they side with—even where they pursue the same relief requested by a party would impermissibly broaden the holding.

The Court further explained that, in multi-plaintiff cases, “[a]t least one plaintiff must have standing to seek each form of relief requested in the complaint.” That statement implicitly accepts that not every party needs to prove Article III standing if multiple parties are seeking the same relief and one party has standing. And it does not follow that at least one defendant must have standing to participate on appeal. The Court has deliberately distinguished between a plaintiff’s standing requirement versus a defendant’s.

Arizonans for Official English v. Arizona, 520 U.S. 43 (1997), is not to the contrary, as the good professor suggests. There, the Court held that standing “must be met by persons seeking appellate review, just as it must be met by persons appearing in courts of first instance.” The person seeking appellate review—and thus invoking the court’s jurisdiction—is the appellant, similar to the plaintiff below.

A third consideration—one noted in Professor Vishnubhakat’s post—further supports the PTO’s role as intervenor, and supports the bulk of, but not all of, his conclusions. He is right that, in cases where the PTO will be asking for relief different from one party with standing, the PTO may then have to demonstrate standing, consistent with Town of Chester. This would be true regardless of—and separate from—whether the underlying party has standing.

This matters little given the Chenery doctrine, which bars courts from accepting an agency’s post hoc rationalization as support for the agency’s decision. Chenery essentially precludes the PTO from asking the Federal Circuit for relief that is any broader than what the PTAB held or what the appellee might argue on appeal. In PTAB appeals, rarely will the PTO be seeking a different scope of relief than what the PTAB did or what an appellee will be seeking—usually affirmance. And if the intervening PTO does expand its argument beyond the scope of the original decision, then its argument is simply barred from doing so by Chenery, and the court need not concern itself with a standing analysis.

Fourth, as a practical matter, even if the PTO had to demonstrate standing, the PTO has a statutory right to participate in the appeal as an amicus. The PTO could advance the same arguments as amicus as if it were intervenor, rendering this debate somewhat academic. And the Federal Circuit, if it were so inclined, could grant the PTO leave to file a brief longer than the standard amicus brief, or any additional briefing it might seek. This point does not affect the Article III standing analysis directly, but it speaks to any practical effect of denying the PTO its statutory right to participate as intervenor. If the Federal Circuit is confronted with the choice of having only one side argued, as opposed to having both sides argued, we would suggest most judges, as a practical matter, would prefer to have the competing arguments for consideration, instead of a docket of one-sided, limited, or partially argued cases. The standing issue aside, the patent system and the public good are best served by arguments fully vetted by the adversarial process.

As a final point, we acknowledge the distinct policy concerns created by frequent intervention on one side of the “v.” Getting beyond the standing issue—which we don’t see as much of a hurdle for PTO participation in PTAB appeals—more significant questions arise about if, when, and how often the PTO intervenes. Indeed, George Washington University Law School Professor Dmitry Karshtedt has persuasively called for further exploration of whether the PTO solicitor must or should defend the Board’s decision. Dmitry Karshtedt, Acceptance Instead of Denial: Pro-Applicant Positions at the PTO, 23 B.U. J. Sci. & Tech. L. 319 (2017). This issue is the third question raised sua sponte in Knowles Electronics LLC v. Matal, currently pending at the Federal Circuit. Professor Karshtedt concludes that the PTO solicitor may disagree with the Board where it is plainly inconsistent with the public good. Although we take no position here, we recommend his paper and agree that it’s a debate well-worth having.

We leave these debates for another day, simply noting that a rough internal count reveals: As of September 2016, out of 179 cases decided, the PTO had intervened 98 times (~54% of decided cases); by September 2017, that percentage had fallen dramatically, to 144 out of the 408 then-decided (~35%). Overall, the PTO has said it has intervened in fewer than 25% of all appeals, and that number continues to fall. There may be several reasons for the decline, such as fewer fundamental legal issues as the AIA matures, or a change in PTO policy after thinking its frequent intervention may have irked some judges. Regardless of the precise reasons for the decline and the other policy concerns raised in Knowles, the question of the PTO’s standing to intervene is a distinct legal question. And we think precedent strongly supports the PTO’s ability to intervene in most, if not all, appeals from the PTAB.