Apple and Intel weigh in on SCOTUS Arthrex review
Apple and Intel, along with tech and IP groups, are urging the US Supreme Court to retain an administrative process for challenging patents.
The justices in Arthrex v Smith & Nephew are reviewing a US Court of Appeals for the Federal Circuit ruling in November 2019 which held that Patent Trial and Appeal Board (PTAB) judges were unconstitutionally appointed. According to the controversial decision, judges are “principal officers” under the US constitution and, as such, should be appointed by the US President, subject to confirmation by the Senate.
In its remedy, the Federal Circuit granted the US Patent and Trademark Office director the power to remove the administrative patent judges from office.
After handing down its decision, the Federal Circuit cancelled PTAB decisions in 39 cases, ordering them to be reheard after the constitutional dilemma was addressed.
In October, the Supreme Court granted certiorari in three petitions concerning constitutional challenges to the appointment of administrative patent judges.
If the Federal Circuit’s decision is upheld, the ruling could alter the PTAB’s inter partes review process, a cause of concern for tech companies, which frequently challenge patents at the board that they are accused of infringing.
In its amicus brief, Apple wrote that it has “has long advocated for a balanced, principled patent system, and that “from patent examination to post judgment litigation on attorneys’ fees, Apple has supported sensible rules and policies that promote innovation and competition”.
It pointed out that since the US Congress created the inter partes review (IPR) system as part of its 2011 America Invents Act that “no single party has used the IPR system more than Apple, likely because no party is as frequent a target of litigation as Apple is.”
It added that if the Supreme Court “decides that the IPR system is indeed in need of correction to comply with constitutional requirements, Apple respectfully urges the court to adopt available remedies that avoid significant disruption to the system’s functioning”.
Intel also vouched for the value of the existing process in its amicus brief. “Intel’s experience with inter partes review confirms that it is an invaluable means of combating weak and overbroad patents, particularly those asserted by non-practicing entities,” the company said.
It added that “in light of the increasing offensive assertion of invalid patents by third parties who are strangers to their issuance, especially in areas of emerging technology, Intel believes that [the] inter partes review performs a critical function within the patent system”.
Intel stated that it had been increasingly exposed to a spate of suits over the the last 15 years “brought by sophisticated non-practicing entities seeking return on litigation as a portfolio investment strategy,” and that, consequently, it “had a particular interest in ensuring that the remedy implemented by this court preserves the inter partes review system with minimal disruption”.
Intel asked the justices to reverse the Federal Circuit’s ruling that PTAB judges were unconstitutionally appointed, or alternatively that it “should take care to adopt a remedy that broadly preserves the post-issuance review system as Congress intended it to operate,” the brief said.
A number of tech and pharmaceutical groups and others also filed amicus briefs urging the US Supreme Court to reverse the decision including the High Tech Inventors Alliance, the Computer & Communications Industry Association and the US Manufacturers Association for Development and Enterprise. The American Intellectual Property Law Association, Unified Patents, and the Association for Accessible Medicines also filed briefs, also putting forward arguments for the retention of the existing process.
