IPR prompts US govt to double down on Arthrex rerun
The US government “strongly disagrees” with a recent US Court of Appeals for the Federal Circuit finding that the appointment of US Patent and Trademark Office (USPTO) patent review judges was unconstitutional.
However, in a brief filed on Monday, January 6, in a separate case, the government said that while it disagreed with the controversial Arthrex v Smith & Nephew ruling, the Federal Circuit’s remedy was sufficient.
In Arthrex, handed down in November last year, the Federal Circuit ruled that the appointment and oversight of the US Patent and Trademark Office (USPTO) patent review judges was unconstitutional.
As a result of this conclusion, the court expanded the powers of the office’s director to resolve the problem, allowing the USPTO director to remove administrative patent judges (APJs) from office. The government has since petitioned the court to rehear Arthrex.
Polaris Innovations v Kingston Technology
The same constitutional challenge is a key part of a separate case to which the government submitted its brief: Polaris Innovations v Kingston Technology.
The Polaris case stems from a final written decision of the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding in February 2018.
Kingston Technology Company petitioned for an IPR of Polaris’ patent and the board instituted review.
Before the board, Polaris argued that “the canceling of the claims in this proceeding would contravene the ... appointments clause of the US Constitution” as APJs are principal officers and so must be “nominated by the President and confirmed by Congress”.
But the PTAB found that the challenged claims were unpatentable, resulting in an appeal against the decision from Polaris, which argued that the APJs appointments violated the Constitution so the board’s decision should be set aside.
In concluding its brief, the US government argued: “Granting the government’s petition for rehearing en banc in Arthrex, and conducting initial hearing en banc in [Polaris], where the constitutional challenge was properly raised before the board, will provide the most appropriate setting for the court to address these questions.”
Arguments against Arthrex
Both Polaris and Kingston have also filed diverging briefs, with Kingston arguing that Arthrex had been “wrongly decided” in several regards.
Kingston said that APJs are inferior officers under Congress’s scheme because they are “subject to significant supervision, review, and removability”.
The Federal Circuit had concluded that because PTAB judges are powerful and not subject to direct supervision, they should be treated as ‘principal officers’ instead of ‘inferior officers’ and their appointments approved at a Senate confirmation vote. To circumvent this, the court granted the USPTO director the power to remove PTAB judges from office.
Meanwhile, Polaris argued that while Arthrex correctly found a constitutional violation, it claimed that there is no severance that can cure the constitutional defect with the appointment of APJs.
“The only cures are to have a principal officer who is presidentially-appointed and Senate-confirmed provide meaningful and substantive review of the APJs’ final written decisions or to properly appoint APJs. Both cures require Congressional action,” said Polaris.
It added that the court must declare the APJ system unconstitutional, dismiss this case, and leave Congress to craft a remedy.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories:
Sonos sues Google over ‘pervasive copying’ of speaker tech
Chinese patent figures beat country’s own targets, say officials
easyGroup takes on ‘pirate’ airline, sues Skyscanner and Kayak
