About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« U.S. v. Arthrex: Supreme Court Oral Argument | Main | PTAB Sets Preliminary Motions in CVC v. ToolGen Interference »

March 03, 2021


I'm not sure I get the argument. In Dickinson (forgive me for just going by your short description—I haven't studied up on the case details), wasn't it less that SCOTUS rejected historical practice and more that it recognized the intervening event of the APA superseded that practice? And if that's right, what is the comparable intervening event in this case?


See also the 'historical reliance' on Markings - which generated a correction by Congress.

Note in particular, that the ONLY proper remedy WAS the correction by Congress.

The history is all over the place. Until 1975, Board members were appointed by the President with advice and consent.

Very early on, the head of the Office actually was able to review a decision of the Board, under a “system of two appeals within the office, one from the examiner to a board of three examiners-in-chief, and another appeal from this board to the Commissioner of Patents.” In re Wiechert, 370 F.2d 927, 950-951 (C.C.P.A. 1967); see also Act of March 2, 1861, 12 Stat. 246.

Congress eliminated the ability of the then head of the Office, the Commissioner, to review Board of Examiners-in-chief decisions in 1927 by replacing “’the two appeals, to the Board of Examiners-in-chief and from the latter to the Commissioner, … [with] a single appeal, this single appeal being to a Board of Appeals.’” Wiechert, 370 F.2d at 952 (quoting Frederico, Evolution of Patent Office Appeals, 22 J.P.O.S. 838-920 (1940)); see also Act of March 2, 1927, ch. 273, § 3, 44 Stat. 1335.

Although the Board of Appeals included the Commissioner, the Act of 1927 required “that each appeal shall be heard by at least three members of the Board of Appeals,” and made clear that “[t]he Board of Appeals shall have sole power to grant rehearings.” Act of March 2, 1927, ch. 273, § 3, 44 Stat. 1335, 1336. As noted above, these limitations persist to today, see 35 U.S.C. § 6(c).

Indeed, the Supreme Court noted with respect to the previous head of the Office that “[a]s a member of the Board and the official responsible for selecting the membership of its panels, … the Commissioner may be appropriately considered as bound by Board determinations.” Brenner v. Manson, 383 U.S. 519, 523 n.6 (1966).

J. Doerre, thanks for this interesting background. In think in many cases the history being all over the place is a common occurrence, so this case is no exception. It just shows the limits of relying on past patterns of practice.

It seems to me that comparing interference practice with post-grant practice is not a good comparison, as interference practice impacted relatively few patents (albeit often important ones). Post-grant practice under the AIA is impacting almost all district court cases and thus having a tremendous impact on the patent system. While the intent of the AIA may have been intended to provide an efficient alternative to district court litigation, instead it has added another layer of litigation -- one in which APJs can trump the district court decision -- one by a judge who IS properly appointed under the Appointments Clause. I have not read the S.Ct. transcript but think the great impact the PTAB is having on the system must be a factor.

The comments to this entry are closed.

May 2024

Sun Mon Tue Wed Thu Fri Sat
      1 2 3 4
5 6 7 8 9 10 11
12 13 14 15 16 17 18
19 20 21 22 23 24 25
26 27 28 29 30 31