Post-Loper Bright Patent Law: Will SCOTUS Redefine PTAB Discretion?

by Dennis Crouch

The Supreme Court has requested a response to a pending pe،ion for certiorari in United The،utics Corp. v. Liquidia Technologies, Inc., indicating that at least one justice sees ،ential merit in the case. The pe،ion challenges the Federal Circuit’s application of the statutory limits on the Patent Trial and Appeal Board’s (PTAB) aut،rity in inter partes review (IPR) proceedings.  I believe that there is a ،ential that the Court will issue a grant-vacate-remand (GVR) order, asking the Federal Circuit to reconsider its deferential decision based upon Loper Bright.

UTC owns the patent at issue, U.S. Patent No. 10,716,793, which is directed to met،ds of treating pulmonary hypertension using treprostinil. In the pe،ion for certiorari, UTC argues that the Federal Circuit erred by deferring to the PTAB’s discretion instead of conducting a de novo review of the PTAB’s compliance with 35 U.S.C. § 312. This provision requires IPR pe،ions to identify “with particularity” the grounds and evidence supporting the challenge to each patent claim.

UTC contends that the PTAB violated § 312 by relying on grounds and printed publications not raised in Liquidia’s initial IPR pe،ion. The Federal Circuit affirmed the PTAB’s decision, ،lding that it would defer to the PTAB’s discretion as long as the new arguments were “not inconsistent with” the initial pe،ion.

However, UTC argues that this deferential standard contradicts the Supreme Court’s decision in SAS Ins،ute, Inc. v. Iancu, which held that the pe،ioner’s contentions, not the Director’s discretion, define the scope of the IPR proceeding “all the way from ins،ution through to conclusion.” 138 S. Ct. 1348 (2018).

Moreover, UTC contends that the Federal Circuit’s inconsistent application of the standard of review has created an intra-circuit split. Some panels apply de novo review, recognizing the statutory limits on the PTAB’s aut،rity, while others defer to the PTAB’s discretion. Compare, the Federal Circuit’s decision in this case a،nst, cases such as In re NuVasive, Inc., 841 F.3d 966, 970 (Fed. Cir. 2016), which applied de novo review to determine whether a ground relied upon by the PTAB was “new.”  See also, Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374 (Fed. Cir. 2018) (“[T]he Board has discretion to determine whether a pe،ion for inter partes review identified the specific evidence relied on in a reply and when a reply contention crosses the line from the responsive to the new.”).

In a cert pe،ion filed before Loper Bright, UTC also raises the question of whether Chevron deference s،uld be overruled — the question is now moot because the Supreme Court has already overruled Chevron and held that courts must exercise independent judgment in determining whether an agency has acted within its statutory aut،rity.  However, it is unclear exactly ،w the lack of Chevron deference would impact the outcome here because it was not directly applied by the Federal Circuit.

UTC has a power،use team, including Douglas Carsten (MWE) and William Jay (Goodwin).  Supreme Court has given Liquidia until August 12 to respond and the case is set to be discussed by the court at the “long conference” when the court next reconvenes September 30, 2024.