In recent years, the topics of patent law and administrative law have become increasingly relevant and salient. With rapidly changing technologies, multiple executive orders seeking to enact major reforms in administrative agencies, and the Supreme Court’s growing interest in both, each of these two fields of law has independently become an extremely important legal topic.  Their intersection promises to be even more important and interesting.

 

Recognizing the significance of the intersection between these fields of law, the University of Iowa, Innovation, Business, and Law Center, and Iowa Law Review hosted a symposium on “Administering Patent Law” on Friday, October 5. The symposium gathered many of the best minds in administrative and patent law and featured lively discussion of today’s pressing questions about the administration of patent law.

 

The symposium featured four panels, with each panel comprised of four to five speakers, and ending with a follow-up discussion.

 

Panel 1: Constitutional Constraints on Administrative Innovation

 

  • Institutional Design and the Nature of Patents

Jonathan Masur, University of Chicago Law School

 

Professor Masur examined legal views of patents, as either property or regulatory licenses, and the shifting return to formalism in patent law at the Supreme Court.

 

  • Statutes, Common-Law Rights, and the Mistaken Classification of Patents as Public Rights

Adam Mossoff, Antonin Scalia Law School at George Mason

           

Professor Mossoff discussed Supreme Court Justice Clarence Thomas’s opinion in the recent Oil States Energy Services, LLC v. Greene's Energy Group, LLC case and its implications for patent law.

 

  • PTO Panel Stacking: Unblessed by the Federal Circuit and Likely Unconstitutional

John Golden, University of Texas at Austin School of Law

 

Professor Golden explored the USPTO’s greater emerging role in post-issuance patent litigation. Specifically, he examined the supervision and rehearings of PTAB decisions by panels of judges that are personally selected by the Director or Chief Judge. In doing so, Professor Golden argued that such “panel stacking” is constitutionally suspect, and that other mechanisms of supervision (such as rulemaking) may more effectively comport with the Constitution.            

 

  • Sovereign Immunity Before the PTAB

Tejas Narechania, Berkeley Law at University of California

 

Professor Narechania considered state sovereign immunity and the application of principles outlined in Federal Maritime Commission v. South Carolina State Ports Authority to proceedings at the Patent Trial and Appeal Board (“PTAB”).

 

  • Constitutional Tensions in Agency Adjudication

Christopher Walker, The Ohio State University Moritz College of Law

           

Professor Walker discussed constitutional issues related to the PTAB, including the appointment of its administrative law judges and decision-making related to the PTAB.

 

Panel 2: How the Patent Office Makes Decisions

 

  • Rational Ignorance vs. Reasoned Decisionmaking at the Patent Office

John Duffy, University of Virginia School of Law

 

Professor Duffy argued in favor of reasoned decision-making at the PTO, stating that it is consistent with legislative and judicial intentions for the PTO, and pointed out several flaws with the concept of a “rational ignorance” approach.

 

  • What Happens to PTO Decisions?

Jason Rantanen, University of Iowa College of Law

        

Professor Rantanen explained several new findings drawn from his “Compendium of Federal Circuit Decisions,” including empirical analyses of decisions at the PTAB, federal district courts, and the Court of Appeals for the Federal Circuit.

 

  • PTAB’s Consistency Enhancing Function

Melissa Wasserman, University of Texas at Austin School of Law, Co-authored with Michael Frakes

 

Professor Wasserman explained her and Professor Frakes’s statistical findings on the consistency and heterogeneity of patent examiners in patent office outcomes, while also providing methods for which the PTAB can increase the consistency of patent examiner patentability decisions.

           

  • Prior Art in Inter Partes Review

Stephen Yelderman, University of Notre Dame School of Law

           

Professor Yelderman discussed his analysis of inter partes review (“IPR”) decisions and the effects of different types of prior art on those decisions.

 

Panel 3: Administrative Innovations at the PTO

 

  • Coding Legal Code

Colleen Chien, Santa Clara University School of Law

 

Professor Chien proposed that scholars suggest experiments that administrative agencies could try as a means to drive innovation at the agencies, explained some examples of agency experiments, and discussed how experiments at the PTO might work.

 

  • AI at the Patent Office: Lessons for the Administrative State

Arti Rai, Duke University School of Law

           

Professor Rai discussed how artificial intelligence can be used for prior art searches and the difficulties encountered with the issue of transparency in applications of artificial intelligence.

 

  • Once is Enough: Rediscovering Collateral Estoppel at the PTAB

Dmitry Karshtedt, George Washington Law School

           

Professor Karshedt examined how collateral estoppel, or issue preclusion, affects the current patent system.

 

  • Renewed Efficiency in Administrative Patent Revocation

Saurabh Vishnubhakat, Texas A&M University School of Law

           

Professor Vishnubhakat examined the lasting implications for Patent Office efficiency that flow from SAS Institute v. Iancu, as well as the contrast between PTAB estoppel and ordinary res judicata and collateral estoppel principles.

 

Panel 4: The Balance of Power Between the PTO and the Courts

 

  • A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact

Rebecca Eisenberg, University of Michigan Law School

 

Professor Eisenberg provided a doctrinal and functional analysis of judicial review for PTAB decisions on non-obviousness and claim interpretation. In doing so, Professor Eisenberg specifically focused on the judicial review on mixed questions of law and fact, in relation to procedural requirements of the APA.

 

  • Elite Patent Law

Paul Gugliuzza, Boston University School of Law

 

Professor Gugliuzza explored the increasing interest that the Supreme Court has shown in patent cases, and how such an increase in interest may be attributable to the fact that the petitions for certiorari are being increasingly filed by what Professor Gugliuzza refers to as “elite lawyers” (attorneys who have argued in front of the Supreme Court numerous times in the previous 10 terms).

 

  • Patent Law’s Balance of Power

Sapna Kumar, University of Houston Law Center

           

Professor Sapna argued that, as a result of the Federal Circuit’s particularized specialization, the Federal Circuit has consolidated an increasing amount of power. Specifically, Professor Sapna raised concerns that the Federal Circuit’s power has risen to the point where there may be substantial issues in regards to the separation of powers doctrine, as no other branch of federal government is able to effectively act as a checks and balances system on the Federal Circuit.

 

  • The Patent Office and the Hamiltonian State

Robert Merges, Berkeley Law at University of California

           

Professor Merges provided a historical overview of the Patent Office, that the Patent Office does not fit into a contemporary model of an Executive Branch agency. In doing so, Professor Merges offered a solution that he suggested would both honor the legacy of the Patent Office’s original mission and enhance its coordination with the other branches of government.