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14 October 2020PatentsRory O'Neill

Lawyers keenly-awaiting Arthrex showdown

The US Supreme Court’s decision to grant certiorari in US v Arthrex sets the stage for one of the most highly anticipated IP decisions of 2021, lawyers and stakeholders have told WIPR.

The court yesterday confirmed that it had agreed to review whether the appointment and oversight of Patent Trial and Appeal Board (PTAB) judges is unconstitutional.

Greg Morris, head of Honigman’s life sciences IP litigation practice, said the “high impact outcome would be a finding by the Supreme Court that the Federal Circuit’s fix of the law dealing with how PTAB judges can be removed from power is not valid”.

“We simply do not know what would happen next or if action would be required by Congress to right it,” Morris added.

In an impactful October 2019 decision, the US Court of Appeals for the Federal Circuit found that the appointment of administrative patent judges (APJs) was unlawful because they were not subject to sufficient oversight.

The decision has led to a slew of PTAB decisions being called into question and sent back by the Federal Circuit for review.

The Federal Circuit said it had solved the constitutional problem by giving the US Patent and Trademark Office (USPTO) director to remove APJs from office.

But that remedy was opposed by the USPTO itself, which pushed for the Supreme Court’s review into the Federal Circuit’s decision.

“The court’s decision has far-reaching ramifications, as it impacts numerous final written decisions by the PTAB,” Aziz Burgy, partner at Axinn, said.

A statement from the US Inventor group, which has campaigned against the PTAB, said the “hopes and dreams of inventors were rekindled” with the Supreme Court’s granting of certiorari.

Josh Malone, a member of US Inventor, claimed the USPTO had been “reconfigured to protect large corporations from the threat of inventors with better ideas—there is no justification for denying inventors the right to a hearing before a qualified and impartial judge”.

A statement from Finnegan said the court’s decision would likely arrive in June 2021, at the end of the court’s current term.

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More on this story

Patents
1 November 2019   The US Court of Appeals for the Federal Circuit yesterday, October 31 ruled that the appointment and oversight of the US Patent and Trademark Office patent review judges was unconstitutional, and expanded the powers of the office’s director to resolve the problem.
Patents
13 October 2020   The US Supreme Court has granted certiorari in three cases concerning constitutional challenges to the appointment of administrative patent judges.