DeLaney Brink is a technical advisor and law clerk at Suiter Swantz IP. DeLaney received a B.S. in Computer Science and a B.A. in Mathematics from the University of Nebraska-Omaha. She currently attends the University of Nebraska-Lincoln College of Law and is expected to receive her Juris Doctor in May 2023.

In 2011, President Obama signed the Leahy-Smith America Invents Act (“AIA”) with the goal of strengthening the United States Patent system. The AIA is the most significant legislative change to the U.S. Patent system since the Patent Act of 1952.

One change brought on by the AIA was the establishment of the Patent Trial and Appeal Board (“PTAB”). The PTAB allows for, among other things, a handful of proceedings to take place, including the ability for members of the public to challenge the patentability of claims in an issued patent. These proceedings include inter partes review, covered business method review (no longer available as of 9/16/2020), post-grant review, and the like. The purpose of these PTAB proceedings was to provide an alternative to litigating in district court.

The PTAB consists of statutory members, such as the Director of the United States Patent and Trademark Office (USPTO), as well as administrative patent judges (APJs). APJs are appointed by the Secretary of Commerce and have extensive legal and scientific abilities.

Since its establishment, many have been critical of the rate at which the PTAB has invalidated thousands of patents, even going so far as to refer to the PTAB as a “death squad”. This has led to many patent owners getting creative in order to shield their patent rights from this body. Interestingly, this desperate fight against the hand of the PTAB has resulting in arguments regarding the constitutional backing of the entity itself to emerge. These constitutional arguments have even found their way to the Supreme Court.

One such argument arose in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, where the Supreme Court addressed whether inter partes review violates Article III and the 7th Amendment. The appellant argued that the Constitution prohibits the Patent Office from resolving issues of validity post-issuance outside of an Article III Court. The Supreme Court held that inter partes review does not violate Article III or the 7th Amendment, arguing that inter partes review involves public rather than private rights.

Another challenge to the constitutionality of the PTAB came up in New Vision Gaming and Development, Inc. v. SG Gaming, Inc. The appellant argued that the way in which APJs are paid, given bonuses, and controlled by the director violate the right to due process. However, this argument was not evaluated by the Federal Circuit, as the case was vacated and remanded in light of the Arthrex case.

The United States v. Arthrex, Inc is the most recent case in which the Supreme Court addressed a challenge to the constitutionality of the PTAB. The appellant in the Arthrex case raised a constitutional question regarding the way in which APJs are appointed. APJs would have to be inferior officers for their appointment by the secretary of commerce to satisfy the Appointments Clause of the U.S. Constitution. The argument was made that the APJs have so much power that they are classified as principal officers, which in turn means they would need to be nominated by the president and confirmed by the Senate.

The fate of dozens of PTAB decisions on appeal hung in the balance until the Supreme court decided on Arthrex in June of 2021. Ultimately, the Supreme Court agreed that Congress violated the appointments clause with the manner in which the PTAB was set up. The ability of APJs to issue final decisions regarding patentability contradicted their status as inferior officers (e.g., officers not appointed by the president).

All that was left for the Supreme Court to do was decide on a remedy for this Constitutional violation. Leading up to the decision of the Supreme Court, many were left speculating on what type of remedy the Supreme Court might provide if it were found that the PTAB was in violation of the Appointments Clause. The controversial remedy put forth by the Federal Circuit was to eliminate protections against employment termination provided to APJs. Another possible remedy speculated on included requiring the chief PTAB judge to be confirmed by the senate and sign off on PTAB decisions. Some even thought that remedying this violation would be left to Congress, which is what Justice Gorsuch argued in a dissenting opinion. Ultimately, the Supreme Court remedied the Constitutional violation by granting the Director of the USPTO the discretion to review PTAB decisions.

The SCOTUS ruling on the Arthrex case has led many to speculate on how the remedy prescribed will affect the appeal process going forward. One view of this remedy is that allowing the Director of the USPTO to review PTAB decisions may result in greater uniformity and more issues getting resolved before they reach the Federal Circuit. Another view of this remedy is that the granting of power to the USPTO Director will further politicize this position and make the next USPTO Director appointment much more important and possibly controversial.

As of now, the USPTO has given little guidance as to what the Arthrex decision will mean for the appeal process going forward. As of now, an interim measure has been put in place for requesting review by the director. The UPSTO expects to give further guidance going forward.

In the coming years, it is likely that more Constitutional questions will arise with regard to the USPTO’s Patent Trial and Appeal Board. As of now, application and patent owners are left to wonder how Arthrex and future decisions might affect their ability to obtain or maintain patent rights.

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