September 12-14, 2021 | Renaissance Dallas Richardson

The Future of the PTAB Post Arthrex

The Future of the PTAB Post Arthrex

The Future of the PTAB Post Arthrex

RegisterThe United States Supreme Court has issued its long anticipated decision in United States v. Arthrex, Inc., the case that challenged whether Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) were hired consistent with the Appointments Clause of the Constitution.

On appeal to the Federal Circuit, Arthrex claimed that the structure of the PTAB violated the Appointments Clause, which specifies how the President may appoint officers to assist in carrying out his responsibilities. Art. II, §2, cl. 2. Arthrex argued that the APJs were principal officers who must be appointed by the President with the advice and consent of the Senate, and that their appointment by the Secretary of Commerce was therefore unconstitutional. To remedy this constitutional violation, the Federal Circuit invalidated the APJs’ tenure protections, making them removable at will by the Secretary. The Supreme Court vacated this decision and remanded the case for further consideration.

In a deeply divided decision, a majority of the Supreme Court concluded that “the unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary of Commerce to an inferior office.” A majority also determined that “35 U. S. C. §6(c) is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own.” However, the Director accordingly may, but need not, review final PTAB decisions.

Many questions remain unanswered, as pointed out by the dissents, and as with every Supreme Court decision the meaning of what has truly been decided will be discussed and debated for months. This panel will discuss what the Supreme Court actually decided, how the USPTO will implement the Director review envisioned by the Supreme Court, the limits of the Supreme Court holding, and the future of the PTAB (i.e., discretionary denials, etc.) during a Biden Administration.

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