Recent USPTO Supreme Court Decision, U.S. v. Arthrex, Inc.

A recent U.S. Supreme Court decision was handed down on June 21st involving the Patent Trial and Appeal Board (PTAB) which oversees USPTO appeals and Inter Partes Reviews (colloquially IPRs, or third-party patent challenges). 

This case, US v. Arthrex, involved the appointment of Administrative Patent Judges (APJs) by the Secretary of Commerce, as well as authority vested in APJs, and accountability of APJs.  Since 2013, APJs made final decisions on appeals and IPRs. These decisions could only be appealed in the federal courts.  APJs are not appointed by the President, nor were they fully supervised by the Director of the USPTO, who did not have practical power to remove APJs.

The Federal Circuit Court of Appeals initially ruled that APJs were granted too much power, and appointment of the APJs was “unconstitutional because neither the Secretary nor Director can review their decisions or remove them at will.” However, the Supreme Court has now decided that the APJ appointments can stand, but the Supreme Court will grant additional authority to the Director.

Based on this decision, the USPTO Director has been granted the authority to review all PTAB appellate and IPR hearings. In addition, as of June 29th, the USPTO has implemented an interim Director review process.  Appellants will now have the opportunity to request a rehearing and/or review by the Director for all final decisions at the PTAB.  Applicants may request review, so long as their case was either pending on appeal, or the deadline for appeal had not passed.  Furthermore, the Director is allowed to reopen old cases and review them.

I expect the Director will likely only reopen a select number of high-profile IPR matters.  Decisions that bear greater political import may have a foothold here, but this will have little practical effect on the bulk of past PTAB cases. I see this Supreme Court decision, and challenges to the powers of APJs, as a step in the right direction, and am hopeful that future cases will be more carefully decided.