In re Cree: PTAB Incorporation-by-Reference of Findings Below, a Good Idea

Today in In re Cree, __ F.3d __ (Fed. Cir. 2016)(Bryson, J.), as part of an affirmance of a Board affirmance of a rejection in an ex parte reexamination proceeding, the panel endorsed the Board’s efficient use of its time through its adoption of proceedings at the Examiner level, Cree, __ F.3d at __ n.6, slip op. at 5-6 n.2 (excerpted below).

A Lesson for the PTAB: Given the horrific backlog of cases at the PTAB one may wonder why the practice inCree is not more widely used at the appellate body within the Patent Office.

A Lesson for the Court, Too: The Federal Circuit would do well to follow the practice endorsed by Judge Bryson in its own proceedings, where it could save time through incorporation by reference of portions of the proceedings below simply by referencing them through a hyperlink.

Does the Court need Roughly Fifty Law Clerks? The absence of this practice gives Congress an implicit signal that the staff of the Court should be pared down to a lower number. Does each Chamber actually need four (4) Law Clerks?

Regards,
Hal

From the opinion (n.2): “[Appellant says] that it was improper under the Administrative Procedure Act for the Board to incorporate substantial portions of the Examiner’s Answer into its opinion. There is no force to that argument. It is commonplace in administrative law for a reviewing body within an agency to adopt a fact-finding body’s findings. On judicial review, the adopted material is treated as if it were part of the reviewing body’s opinion.See, e.g., DHL Express, Inc. v. NLRB, Nos. 12-1072, -1143, 2016 WL 278075, at *8 (D.C. Cir. Jan. 21, 2016);Sanchez-Robles v. Lynch, 808 F.3d 688, 692 (6th Cir. 2015); Mike-Sell’s Potato Chip Co. v. NLRB, 807 F.3d 318, 321 (D.C. Cir. 2015).

“This court does the same in the case of Board opinions adopting patent examiners’ findings. See In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (‘The Board’s decision did not expressly make any independent factual determinations or legal conclusions. Rather, the Board stated that it ‘agree[d] with the examiner’s well reasoned, well stated and fully supported by citation of relevant precedent position in every particular, and any further comment which we might add would be redundant.’ Therefore, reference in this opinion to Board findings are actually arguments made by the examiner which have been expressly adopted by the Board.’) (internal citations omitted).

“Contrary to Cree’s suggestion, this court in In re Lee, 277 F.3d 1338 (Fed. Cir. 2002), did not vacate the Board’s decision on the ground that the Board adopted some portions of the examiner’s answer as its own opinion. Instead, we vacated the Board’s decision because ‘neither the examiner nor the Board adequately supported’ the rejection.”