May 01, 2018 Feature

The PTAB Is Not an Article III Court, Part 2: Aqua Products v. Matal as a Case Study in Administrative Law

By David Boundy and Andrew B. Freistein

©2018. Published in Landslide, Vol. 10, No. 5, May/June 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Aqua Products, Inc. v. Matal1 illustrates a principle raised in two recent articles in Landslide®2—not every patent case is a patent law case. Aqua’s briefs presented the case as statutory interpretation of the Patent Act. The Federal Circuit en banc ruled against Aqua’s position. However, the court threw Aqua a remarkable lifeline: despite near-complete silence in Aqua’s briefs on administrative law principles, seven judges in three opinions sua sponte decided the case on those grounds. Only because of that lifeline did the court decide in Aqua’s favor—the U.S. Patent and Trademark Office’s (USPTO’s) attempt to give rulemaking authority to the Patent Trial and Appeal Board (PTAB) and the PTAB’s attempt to make law by mechanisms outside the Administrative Procedure Act (APA) were invalid.

Aqua Products, Inc. v. Matal1 illustrates a principle raised in two recent articles in Landslide®2—not every patent case is a patent law case. Aqua’s briefs presented the case as statutory interpretation of the Patent Act. The Federal Circuit en banc ruled against Aqua’s position. However, the court threw Aqua a remarkable lifeline: despite near-complete silence in Aqua’s briefs on administrative law principles, seven judges in three opinions sua sponte decided the case on those grounds. Only because of that lifeline did the court decide in Aqua’s favor—the U.S. Patent and Trademark Office’s (USPTO’s) attempt to give rulemaking authority to the Patent Trial and Appeal Board (PTAB) and the PTAB’s attempt to make law by mechanisms outside the Administrative Procedure Act (APA) were invalid.

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