The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions

When the Patent Trial and Appeal Board (PTAB) designates a decision as “precedential,” “informative,” “representative,” or “routine,” what is the legal effect? What do the Administrative Procedure Act and the rest of the administrative law say? What does the Patent and Trademark Office (PTO) officially state the effect to be? How does the PTAB actually treat these decisions? These four questions should have the same answer—and this article should be very short. Instead, we have an abundance of differences. Each difference illustrates an important principle arising under the Patent Act, Administrative Procedure Act, related administrative law statutes, and Supreme Court decision. Each principle is important to applicants, PTAB trial participants, and to the PTAB itself, to ensure the “reasoned decisionmaking” required by the Administrative Procedure Act and Supreme Court. Section II of the article catalogs various laws that govern rulemaking and adjudication throughout the federal executive branch, and integrates them to explain the role of, and limits on, federal agency rulemaking-by-adjudication. Section III applies those general principles to the PTAB and its Standard Operating Procedures to identify potential areas of improvement for the agency, and for appeal by parties. Section IV analyzes a number of specific example PTAB decisions through the lenses of Sections II and III, to identify situations where the PTAB is acting within its authority and for the public interest, and where otherwise. Finally, Section V concludes with recommendations for the patent bar, for the PTO, and for the PTAB. What tools do lawyers have to guide the PTAB to better decisionmaking, and to appeal from bad decisionmaking? What could the PTO and PTAB do to improve compliance with law? After this article went to press, the Supreme Court decided Kisor v. Wilkie, 139 S.Ct. 2400 (Jun. 2019). Kisor confirmed some of the predictions in the October 2018 edition of this article, and filled in a few more details. Revisions after June 2019 incorporate the new analysis of Kisor.