by Dennis Crouch
Back when he was a law professor here at Mizzou, I recall taking with Sen. Josh Hawley about his favorite Supreme Court case – Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803). The case has come to stand for the principle of judicial review, establishing the Supreme Court’s authority to determine the constitutionality of laws and executive actions.  In the recent Federal Circuit case Xerox v. Facebook, Xerox relied on Marbury in a novel constitutional argument challenging the relationship between the PTAB and and Article III courts when it comes to claim construction — arguing that the executive branch (the PTAB) is violating separation of powers principles by ignoring Article III court opinions. If you recall, the USPTO and PTAB have historically interpreted claims using broadest reasonable interpretation (BRI) rather than the standard approach outlined in Phillips v. AWH. But, the USPTO changed its approach a few years ago and linked the standards — with the result that the issue should not simply be ducked.
The basic question: does the PTAB have to follow a district court’s prior claim construction of a patent term under principles of stare decisis?
