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Despite the latest challenge to its legitimacy, the US Patent Trial and Appeal Board has survived—and survive it must, say David McCombs, Joe Matal, and Eugene Goryunov of Haynes and Boone.
With the June 21 decision in United States v Arthrex (June 21, 2021) the US Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) has made its sixth trip to the US Supreme Court and has survived its second constitutional challenge there—an impressive record for an agency adjudicatory body that is not even a decade old.
The remaining legal challenges to the board’s authority have been rejected by the US Court of Appeals for the Federal Circuit and appear to hold little promise. These challenges range from the implausible (arguments that Congress cannot update procedures for enforcing pre-existing patentability requirements [Celgene v Peter (2019); Genentech v Hospira (2020)]) to the ridiculous (that a company can evade validity review by transferring its patents to an Indian tribe [Saint Regis Mohawk Tribe v Mylan Pharms (2018)]).
The PTAB’s judges, and those who rely on the board to test patents asserted against them, may thus feel entitled to finally breathe a sigh of relief. At least those attacks on the board that have been mounted in the courts appear to have all run aground.
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Haynes and Boone, PTAB, Arthrex, USPTO, Board of Appeal, APJs, APA, patent validity, inter partes review