A Cautionary Note to the PTAB: Proppant, Joinder, and PTAB’s Rulemaking-by-Adjudication — How to Avoid Brazen Defiance of the APA and a Rerun of Aqua Products

Abstract

The Patent Trial and Appeal Board recently requested briefing on joinder in inter partes reviews, in Proppant Express Investments, LLC v. Oren Technologies, LLC. Proppant initiates a rulemaking to formulate new rules on joinder of parties and claims in PTAB IPR proceedings. However, Proppant purports to substitute a "request for briefing" for the statutorily-required Notice of Proposed Rulemaking.

This article compares Proppant to last year's decision by the Federal Circuit, Aqua Products, Inc. v. Matal, 872 F.3d 1290, 124 USPQ2d 1257 (Fed. Cir. 2017). Recall that in Aqua, the en banc Federal Circuit set aside a rule that the PTAB had promulgated by precedential decision, with none of the incidents for statutory rulemaking. Of the nine judges that reached the issue, seven agreed on a simple principle: "[t]he Patent Office cannot effect an end-run around [the APA] by conducting rulemaking through adjudication."

Today's article notes several remarkable features of Proppant:

• Proppant seems to be setting up near-identical facts, perhaps with an eye to setting up a challenge or rematch on the Federal Circuit's Aqua decision.

• The PTAB gave no notice of Proppant, other than a "nothing special" order in PTABE2E—no notice in the Federal Register (as required by statute), no notice via email to those that had signed up for notice via the PTAB's email list, no mention on the PTAB's "precedential and informative decisions" page, no mention on the "Patent Trial and Appeal Board Alerts" widget on the MyUSPTO web page. The only mechanism by which the public gained any notice was the Patently-O blog. A blog is not a substitute for a statutory requirement.

• The PTAB's procedural lapses could have been prevented had the PTO implemented suggestions it received in past notice-and-comment periods. Past notice-and-comment letters that could have improved PTO's regulatory process selectively "disappear" from the PTO's web site.

Today's article shows that lapses of administrative law are not confined to Gil Hyatt, or only by low-level examiners. Rather, the PTO has an equal-opportunity practice of neglecting the administrative law for all applicants and parties before PTAB proceedings.

Keywords: patent law, administrative law, rulemaking, Administrative Procedure Act, Paperwork Reduction Act, Office of Management and Budget (OMB), Office of Information and Regulatory Affairs (OIRA), Patent Trial and Appeal Board (PTAB), Patent and Trademark Office (USPTO)