Why Should Trial Section Decisions Be Given Any Deference During District Court Review?

Feb 2005IP Law Bulletin (Feb 28, 2005)

Decisions of the Trial Section of the Board of Patent Appeals and Interferences and its predecessors were once said to be entitled to deference during district court review under 35 USC 146 because of the statutorily presumed technical expertise of the APJs and their familiarity with interference law. Then, in Winner International Royalty Corp. v. Wang, 202 F.3d 1340, 53 USPQ2d 1580 (Fed. Cir. 2000), the Federal Circuit ruled that the district courts need not defer to the board where (1) the district court received live testimony on an issue and (2) the board did not. I would now like to propose that the district courts need not defer to the board where (1) the district court received evidence obtained through discovery (which, of course, is usually the case) and (2) the board had refused to authorize the same or similar discovery.