The USPTO May Intervene on an Appeal in Its Own Right

In Knowles Elecs. LLC v. Iancu, No. 2016-1954 (Fed. Cir. April 6, 2018), the Federal Circuit affirmed a PTAB decision in an inter partes reexamination, which affirmed the examiner’s findings that the claims of U.S. Patent No. 8,018,049 were unpatentable as anticipated and obvious.  The issue on appeal was whether the PTO has standing to intervene to defend its decision, even when the requestor has withdrawn from the case.

The majority held that the PTO Director has standing because “[t]he director of the USPTO has an unconditional statutory right to intervene in an appeal from a PTAB decision,” even when the petitioner withdraws on appeal.  The Federal Circuit then affirmed the PTAB’s claim construction of a term, which was nearly identical to the Court’s construction in another case, holding that it was consistent with the term’s broadest and reasonable interpretation.  The Federal Circuit also held that the PTAB did not rely on a new ground of rejection in its obviousness analysis and that Knowles had a fair opportunity to respond to the rejection.

Judge Newman dissented, contending that the PTO Director failed to meet the standing requirements of Article III.  Judge Newman also noted that if important new evidence is introduced on appeal, the case should be remanded to the agency to give the other party an opportunity to respond.