Did the Supreme Court's 'Arthrex' Decision Open Pandora's Box?
The Patent and Trademark Office has indicated that guidance on discretionary denials at the PTAB will be released soon, clarifying how different factors are applied when patent judges use their discretion to turn away cases.
July 11, 2022 at 02:40 PM
5 minute read
What You Need to Know
- In June 2021, the Supreme Court ruled in U.S. v. Arthrex that the statutory scheme appointing Patent Trial and Appeal Board administrative patent judges to adjudicate IPRs violates the appointments clause of the U.S. Constitution.
- The Court concluded that because APJ decisions in IPR proceedings are not reviewable by a presidentially appointed and Senate-confirmed officer, such determinations are not compatible with the powers of inferior officers.
- The PTO later decided that it would not accept requests for director review of institution decisions. This policy is now also being questioned in Arthrex's wake.
This article appeared in The Intellectual Property Strategist, an ALM/Law Journal Newsletters publication that provides a practical source of both business and litigation tactics in the fast-changing area of intellectual property law, including litigating IP rights, patent damages, venue and infringement issues, inter partes review, trademarks on social media – and more.
In June 2021, the Supreme Court issued its decision in U.S. v. Arthrex, Inc., Nos. 19-1434, 19-1452, 19-1458 (June 21, 2021) (slip opinion). Authored by Chief Justice Roberts, the Court ruled that the statutory scheme appointing Patent Trial and Appeal Board (PTAB or Board) administrative patent judges (APJs) to adjudicate IPRs violates the appointments clause of the U.S. Constitution. Specifically, the Court concluded that because APJ decisions in IPR proceedings are not reviewable by a presidentially appointed and Senate-confirmed officer, such determinations are not compatible with the powers of inferior officers.
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