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IP professionals react after Supreme Court’s Arthrex decision preserves PTAB and its inter partes review decisions

By Jesse Schwartz
Published: June 23rd, 2021

The Supreme Court on Monday issued a decision in the closely followed Arthrex case that challenged the constitutionality of the Patent Trial and Appeals Board’s appointments of Administrative Patent Judges. The case could have thrown the patent world into chaos had the justices determined that PTAB rulings could be thrown out based on the improper appointment of those judges. But while agreeing on constitution grounds that the appointments were not proper, the decision provided a “fix” rather than dismantling the IPR entire system.

By redrafting the law to give the USPTO Director authority to review all PTAB final decisions in order to vest that power in a person appointed by the President, unlike the APJs who are appointed by the Director.

An excellent post on the PatentlyO website provides a wide range of expert reactions and predictions. As the post states, “while the decision is not likely to have any immediate impact, it does raise questions about implications down the line, including how the USPTO and its new Director will address the ruling.”

E-News has picked out a selection of those expert comments below:

Erik Belt, McCarter & English – “Nobody in patent circles seriously expected that the Supreme Court would invalidate the whole regime of inter partes reviews  and other post-grant proceedings…. Doing so would have thrown away nearly 10 years of PTAB rulings upholding or invalidating patents. That would have been chaos. Instead, the Court created chaos of a different sort…. Under the Court’s Constitutional fix, disappointed parties in IPRs will now have more incentive to file petitions for rehearing, hoping that the Director will view the case differently. Rehearings, however, will extend the time it takes to decide whether the challenged patent is valid or not. Even after a rehearing, there could still be an appeal to the Court of Appeals for the Federal Circuit. As a result, what was originally conceived as a relatively quick and inexpensive way to confirm or invalidate a patent will now be longer and more expensive.”

Peter J. Brann, Brann & Isaacson – “…. It is hard to believe that unless the PTO Director now is going to spend all of his or her time reviewing APJ decisions that this decision will make much practical difference. Or, as Peggy Lee famously asked: ‘Is that all there is?’”

Case Collard, Dorsey & Whitney – “…. Patent challengers will be pleased with the result that keeps the PTAB’s IPR process in their toolbox. There is some concern that by allowing a political appointee to oversee the decisions, it could inject an element of politics that had previously been absent.”

Jeremy C. Doerre, Tillman Wright, PLLC – “…. The Court’s decision to grant the Director explicit review authority is a win for transparency and due process, as it allows the Director to review decisions in the open, obviating any need to influence decisions in other more problematic ways. It is also a win for the decisional independence of administrative patent judges, as the Director can leave a panel to reach its own decision, and then review the decision under his own authority.

Robert Greenspoon, Flachsbart & Greenspoon, LLC“…. I told my friends (and victims at cocktail parties who would listen) that no one ever complained to me that the PTAB wasn’t political enough. I just cannot understand why our highest court would turn that dial up to the max, intentionally and open-eyed handing trillions (yes, trillions) of dollars of decision-making authority to one nonelected individual—the USPTO Director….”

Charles R. Macedo, Amster, Rothstein & Ebenstein, LLP – “…. It will be interesting to see how the new Director, when one is appointed, takes on this role of adjudication and final review. In the meantime, the PTAB APJ saga will no doubt continue to linger.”

William H. Milliken, Sterne, Kessler, Goldstein & Fox – “Practically speaking, the primary effect of this decision will be to require that the Director have the opportunity to review PTAB decisions before they become final. The Court was clear, however, that the Director “need not review every decision by the PTAB” — he need only be able to do so. Accordingly, we do not expect this decision to cause a major disruption to the current post-grant proceeding regime. It is possible that the Office will in the near future issue guidance concerning the mechanics of this new layer of potential review.”

Source: Patently-O

Posted under: Tech Transfer e-News

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