Bloomberg Quotes Rachel Elsby on Federal Circuit’s Review of Administrative Law in Patent Cases

Bloomberg has quoted Akin Gump intellectual property partner Rachel Elsby in the article “Cisco, Apple Rebuffed by Fed. Cir. in Battle Over Patent Reviews.” The article looks at the rise of administrative law in patent cases and how it has changed patent practice.

The U.S. Court of Appeals for the Federal Circuit, the article says, rejected several appeals last week by tech companies that argued that Patent Trial and Appeal Board (PTAB) precedent on instituting patent review trials when parallel litigation is pending oversteps both patent law and the Administrative Procedure Act.

Elsby said she wasn’t surprised, given the recent Supreme Court case Thryv Inc. v. Click-to-Call Technologies LP that put the decision on whether to institute “solely within the board’s discretion.”

“At this point, IPR petitioners will likely need to find a way to maneuver the Fintiv factors or seek congressional intervention,” she said, referring to Apple Inc. v. Fintiv Inc. from earlier this year, which lays out a list of factors for PTAB judges to balance when considering discretionary denial of institution because of parallel infringement litigation in district court.

Given the high bar on judicial review, the article notes that the appeals faced tough odds at the Federal Circuit, with Elsby observing that upcoming rulemaking was also likely to trip up the appeals. The argument that had the best chance for review, she said, is that the agency engaged in improper rulemaking when it adopted the Fintiv factors as a precedential test for denying institution. The Federal Circuit, though, appeared skeptical that the board’s adoption of the Fintiv rule amounted to improper rulemaking.

“Even if a district court is more receptive, that argument is likely to be moot given the PTO’s recent request for comments on the Fintiv factors,” Elsby said.