My Nov. 14, 2019 blog concerned the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). In that decision, a three-judge panel held that the appointment process for administrative law judges violates the Appointments Clause of the U.S. Constitution.

The panel also crafted a remedy to save all of the existing Patent Trial and Appeal Board (the “PTAB”) decisions that were in danger of being declared void as a result of the panel’s opinion. The panel effectively demoted all of the PTAB judges by making it possible for the United States Patent and Trademark Office (the “USPTO”) Director to remove them from office without cause.

As I noted in my blog post, it was possible, at the time, that the entire Federal Circuit may rehear the decision or that either party will appeal the decision to the Supreme Court.

In fact, both parties appealed the case to the Supreme Court and, on June 21, 2021, the Supreme Court issued an opinion that addressed whether the appointment process for administrative law judges violates the Appointments Clause of the U.S. Constitution.[1]

The Supreme Court basically agreed that appointment process was unconstitutional. However, the Supreme Court crafted a different remedy – it required all decisions by the PTAB to be subject to review by the USPTO Director.

The case was remanded back to the (acting) USPTO Director, so that he could have the option to review the PTAB decision.

The USPTO has also set up an interim procedure to provide the USPTO Director with the ability to review other PTAB decisions on June 29, 2021. https://www.uspto.gov/about-us/news-updates/uspto-issues-information-implementation-supreme-courts-decision-us-v-arthrex.

 

[1] The Supreme Court case was actually three consolidated cases entitled “Arthrex, Inc. v. Smith & Nephew, Inc.”, “Smith & Nephew, Inc. v. Arthrex, Inc.”, and “U.S. v. Arthrex, Inc.”.

My Nov. 14, 2019 blog concerned the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). In that decision, a three-judge panel held that the appointment process for administrative law judges violates the Appointments Clause of the U.S. Constitution.

The panel also crafted a remedy to save all of the existing Patent Trial and Appeal Board (the “PTAB”) decisions that were in danger of being declared void as a result of the panel’s opinion. The panel effectively demoted all of the PTAB judges by making it possible for the United States Patent and Trademark Office (the “USPTO”) Director to remove them from office without cause.

As I noted in my blog post, it was possible, at the time, that the entire Federal Circuit may rehear the decision or that either party will appeal the decision to the Supreme Court.

In fact, both parties appealed the case to the Supreme Court and, on June 21, 2021, the Supreme Court issued an opinion that addressed whether the appointment process for administrative law judges violates the Appointments Clause of the U.S. Constitution.[1]

The Supreme Court basically agreed that appointment process was unconstitutional. However, the Supreme Court crafted a different remedy – it required all decisions by the PTAB to be subject to review by the USPTO Director.

The case was remanded back to the (acting) USPTO Director, so that he could have the option to review the PTAB decision.

The USPTO has also set up an interim procedure to provide the USPTO Director with the ability to review other PTAB decisions on June 29, 2021. https://www.uspto.gov/about-us/news-updates/uspto-issues-information-implementation-supreme-courts-decision-us-v-arthrex.

 

[1] The Supreme Court case was actually three consolidated cases entitled “Arthrex, Inc. v. Smith & Nephew, Inc.”, “Smith & Nephew, Inc. v. Arthrex, Inc.”, and “U.S. v. Arthrex, Inc.”.