USPTO Explains Intervenor Standing

Some weeks back in Knowles Electronics v. Matal, the Federal Circuit, sua sponte, asked the following of the parties (order here):

When the prevailing party in an inter partes reexamination proceeding before the USPTO’s Patent Trial and Appeal Board (“Board”) declines to appear before this court to defend the decision below, is the USPTO’s Director required to possess Article III standing in order to intervene?

If yes, does the Director possess such standing in this appeal?

Additionally, if the Director does in fact possess standing; must the Director defend the Board’s decision? Alternatively, what are the ramifications if the Director declines to defend the Board’s decision?

The debate has obvious ramifications for appeals from PTAB trial proceedings. Whether intervening when a petitioner drops out/settles its dispute with a patentee, or intervening on appeals deemed to touch upon a significant practice issues, USPTO intervention is quite commonplace. Indeed, the only AIA trial dispute decided by the Supreme Court was a case in which the USPTO intervened at the appellate level, In re Cuozzo Speed Technologies.

Yesterday, the government explained the origin of its standing, as well as its propriety under Article III.

Of course, the government has explicit statutory authority to intervene, much like a petitioner has an explicit statutory right to appeal from an adverse judgment of the PTAB. However, as recently clarified in Phigenix, Inc. v. ImmunoGen, Inc., Article III standing requires an injury in fact, an additional hurdle for some. In this same vein, the Court seeks reassurance that the agency is not running afoul of Article III standing requirements.

The government brief (here) points out, first and foremost that intervenors do not need Article III standing, explaining:

Article III of the Constitution limits the courts to adjudicating cases or controversies. Thus, a party seeking relief from a federal court must show that there is a justiciable case or controversy, which requires a demonstration that the party has a direct and concrete stake in the outcome of the case. The courts do not inquire into the standing of a party that is not seeking separate affirmative relief, such as an intervenor seeking to oppose the plaintiff or appellant. Because the USPTO here has intervened in support of the agency’s decision and does not seek affirmative relief of its own, no separate Article III inquiry is necessary.

One might argue that this reasoning makes sense when there are adverse parties still in the case and the relief sought by the Intervenor is that of another. On the other hand, when an Intervenor steps in the shoes of an adverse party to continue an appeal it essentially adopts the affirmative relief of another — the supporting is over. The more compelling view to me is the simple explanation that in the "substitute party" scenario, the agency can piggyback off of the Article III standing of the appellant (which is virtually all cases for the Solicitor). In this regard, the government explains that the standing inquiry is directed at those who invoke the court's jurisdiction. (citing Roeder v. Islamic Republic of Iran, 333 F.3d 228, 233 (D.C. Cir. 2003)

The government also argues that even if Article III standing where required, defense of agency decisions and practices would suffice:

It is not the matter that was before the agency which constitutes the Article III case or controversy, but rather the dispute between Knowles and the agency concerning the lawfulness of the agency action.

(internal quotes and citations omitted)

The government also points to the interest in representing the public interest and pursuing relief on behalf of the public, presumably from improvidently granted patents. Policy positions that will be explored further by the Supreme Court in Oil States Energy Services v. Greene’s Energy Group.

The Knowles brief is due 8/14 with government's reply due on 8/28.

Scott A. McKeown is an author of the Patents Post Grant.