In
Background
In
In
In
Two days before the one year deadline for the PTAB's Final Written Decision in the PGR, the Chief Administrative Patent Judge found good cause to grant a six month extension so the bankruptcy court could assess whether the automatic stay applied to PGRs. Neither party sought guidance from the bankruptcy court nor asked the bankruptcy court to lift the stay during the six-month extension period.
On
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On
Purdue appealed the PTAB's Final Written Decision to the Federal Circuit.
Issue
Did the PTAB have authority to issue a Final Written Decision in the PGR after the prescribed statutory deadline?
Holding
The PTAB had authority to issue a Final Written Decision in the PGR after the prescribed statutory deadline because 35 U.S.C. § 326(a)(11) (i.e., the applicable statutory deadline provision) does not specify any consequences for missing the deadline and
Reasoning (focused on the precedential issue of whether the PTAB has authority to issue a Final Written Decision in a PGR after the prescribed statutory deadline)
The Federal Circuit noted that this PGR presented the first instance where the PTAB failed to meet the deadline prescribed in 35 U.S.C. § 326(a)(11) - rendering this a matter of first impression.
The Federal Circuit first determined that 35 U.S.C. § 326(a)(11) does not specify any consequences for missing the deadline.
In
Following the above precedent in this case, the Federal Circuit determined "the [PTAB] has authority to issue a Final Written Decision even after the deadline proscribed in the statute has passed absent any contrary indication in the language, structure, or legislative history of the statute."
Regarding the statute's language and structure, the Federal Circuit determined:
- consistent with the
Supreme Court's decision in Brock v.Pierce Cnty .,476 U.S. 253 , 266 (1986), the use of "shall" and "requirement" in 35 U.S.C. § 326(a)(11) (i.e., "Director shall prescribe regulations- . . . requiring that the final determination in any post-grant review be issued not later than 1 year") does not deprive the PTAB of authority to issue a Final Written Decision after the deadline; - consistent with Liesegang the negative words of "not later than 1 year" and "by not more than 6 months" in 35 U.S.C. § 326(a)(11) "are at best precatory rather than mandatory" - and thus such language does not deprive the PTAB of authority to issue a Final Written Decision after the deadline;
- the mere mention that PGRs shall be conducted "in accordance" with section 6 of 35 U.S.C. Section 326(c) or that PGRs be conducted "pursuant to" chapter 32 does not rise to the level of a clear statement that section 326(a)(11) is jurisdictional - and thus such language does not deprive the PTAB of authority to issue a Final Written Decision after the deadline;
- consistent with Barnhart v.
Peabody Coal Co. ,537 U.S. 149 , 159 (2003), the exceptions in 35 U.S.C. § 326(a)(11) for "good cause" and "joinder" do not strip the PTAB of authority to issue a Final Written Decision after the deadline passed; and - the mandate that the PTAB issue a Final Written Decision prescribed 35 U.S.C. § 328(a) demonstrates that "[h]ad
Congress meant to deprive the agency of power in section 326(a)(11), it knew how to do it, and, significantly, it did not use language in section 326(a)(11) similar to that used in other sections."
Regarding legislative history, the Federal Circuit noted that the AIA provided for PGRs "designed to allow parties to challenge a granted patent through a[n] expeditious and less costly alternative to litigation." Introduction of Patent Reform Act, 153 Cong. Rec. E774 (
Nonetheless, the Federal Circuit noted that the PTAB "may not ignore statutory deadlines" and that the "appropriate remedy" for the parties would have been mandamus to compel a decision from the PTAB by the deadline. Notably, neither party sought this remedy.
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