The director of the USPTO has authority to delegate the tasks of instituting an IPR and rendering the final decision to the same PTAB panel

Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 2014-1771 (Fed. Cir. Jan. 13, 2016)

The patent holder appealed an inter partes review (IPR) finding all the challenged claims invalid on obviousness grounds. The patentee argued that the Patent Trial and Appeal Board’s (PTAB’s) decision violated both due process and the statute because the same PTAB panel made the decision to institute IPR proceedings and the final finding of invalidity. The patentee also argued that the PTAB erred in finding the claims obvious. The Federal Circuit affirmed.  

The Federal Circuit held that the director of the United States Patent and Trademark Office (USPTO) was authorized to delegate the investigative functions to the PTAB based on the longstanding recognition that “agency heads have implied authority to delegate to officials within the agency,” even when the same agency officials have other statutory duties. Additionally, the Federal Circuit concluded that nothing in the statute prevents the same PTAB panel that decided to institute IPR proceedings from making the final decision on the merits. Accordingly, the director’s actions did not violate the right of the patentee to due process.  

The court also affirmed the PTAB’s invalidity decision because the patentee’s evidence of secondary considerations did “not overcome the strong case of obviousness.” Specifically, the court found that the commercial success of petitioner’s products was attributable to a single feature present in the prior art and to the implementation of unclaimed features. Further, the court agreed with the PTAB’s finding that the patentee’s evidence “does not support the assertion that there was a long-felt but unresolved need in the industry” for the claimed invention.

A copy of the opinion can be found here