USPTO urges Fed Circuit to wait for SCOTUS on Arthrex
The US Patent and Trademark Office (USPTO) wants a federal appeals court to hold off on a dispute over Patent Trial and Appeal Board (PTAB) fees until the US Supreme Court has resolved Arthrex.
The US Court of Appeals for the Federal Circuit issued its controversial Arthrex decision last October, in which it ruled that the way PTAB judges were appointed was unconstitutional.
Since then, the Federal Circuit has been met with a slew of appeals seeking to strike out PTAB rulings on the same constitutional grounds identified in Arthrex.
One of these is New Vision Gaming v SG Gaming. New Vision filed a brief in June setting out several grounds of appeal against the PTAB’s invalidation of a patent.
Perhaps the most notable of these is the claim that the PTAB’s fee structure incentivises it to institute inter partes review, rather than not.
But the appeal also contains a so-called ‘appointments clause’ challenge, which contends that the PTAB board who invalidated the patent was appointed unconstitutionally, citing Arthrex.
All of the parties involved in Arthex, meanwhile, including the USPTO, have appealed the decision to the Supreme Court.
The USPTO has now filed a brief in New Vision asking the Federal Circuit to hold off on the case until the Supreme Court has decided whether or not to hear Arthrex.
“It would be inefficient and burdensome for the court and the agency to engage in further proceedings in this case relating to Arthrex before the Supreme Court decides what to do with that decision,” the USPTO filing said.
The USPTO, which opposes the Arthrex ruling, doesn’t want to see PTAB judgments being overturned in light of Arthrex while its appeal is still pending.
“The court has since vacated and remanded dozens of board decisions on that basis, even though in the vast majority of those cases, the party appealing the board’s decision failed to raise an appointments clause challenge before the board,” the USPTO noted.
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