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December 16, 2018


Thank you Mr. Boundy for your continued stewardship on important administrative law matters.

I read Mr. Boundy's well-argued paper, and I find it 90% convincing. Everything that he says about the policy infirmities of setting this sort of rule without Federal Register notice, and with only so very short a window for amici to make comment, makes fine sense.

My remaining 10% hang-up, however, concerns the paper's failure to engage with SEC v. Chenery Corp., 332 U.S. 194, 203 (1947) (Chenery II), which explains that "the choice made between proceeding by general rule or by individual, ad hoc litigation is one that lies primarily in the informed discretion of the administrative agency." If Mr. Boundy is reading these comments, I would be obliged if he might offer comment as to what he takes Chenery II to be saying here. I would also be obliged for explanation as to why the Court committing the choice between rule-making and adjudication to the agency's discretion does not tell against the paper's critique of the PTAB.

Hey David,

Excellent post, as always. Yeah, PTAB tries to "end run" proper rule making, as well as any other aspect of the APA, including "panel stacking" and "conflict of interest" issues. As you know well, the USPTO's "end running" of rule making goes back to the days of GSK/Tafas and even before that.

Greg --

Good question. As the Prego commercials say, "It's in there." Instead of Chenery, I used NLRB v Wyman-Gordon from 1969 for the same point.

Of course the PTAB has the authority to issue individual joinder decisions in the course of individual adjudications, and in the case of joinder, that authority is unusually broad. That's at § IV(B).

If this were an interpretation of an "active" ambiguity (my term) in a regulation, such as to resolve an ambiguous term, or resolve a clash, then the PTAB could issue a precedential decision eligible for Auer deference. But there is no such regulation.

There are a number of differences from Chenery II. For example, the SEC (and NLRB) has unified adjudicatory and rulemaking authority. The PTAB (even with the Director on the panel) doesn't. Those differences are all captured in the article at §§ III and IV.

A (much) longer discussion of when the PTAB can act by precedential decision, and when it can't, is in the Part 3 paper, at http://ssrn.com/abstract_id=3258694 Greg, I'd appreciate any comments on that paper -- it's in final edit phase, but I'd rather catch errors now than after it's in paper, immutable print.

Thanks for a good thoughtful question.

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