Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

SCOTUS vacates and remands Arthrex; preserves PTAB

adobestock-87599523.jpeg

In a five to four ruling, the US Supreme Court decided that PTAB judge appointments were unconstitutional, and issued a different fix to the Federal Circuit's

The US Supreme Court ruled today in a five to four judgment that the appointment of administrative patent judges at the Patent Trial and Appeal Board was unconstitutional, noting that the unreviewable authority they wielded was incompatible with their appointment as inferior officers.

In its judgment in US v Arthrex and Arthrex v Smith & Nephew, the high court held that this problem could be fixed by giving the USPTO director more power to overturn the PTAB’s decisions, thus leaving the board intact.

The court vacated the decision of the Court of Appeals for the Federal Circuit and remanded the matter for further proceedings consistent with its opinion.

The case will now be sent back to the acting director, Drew Hirshfeld, for him to determine whether to rehear the petition filed in this particular case.

Intellectual property stakeholders had worried that SCOTUS would find that the Federal Circuit’s remedy was not appropriate and not issue a fix of its own, which would throw all inter partes review (IPR) petitions into the realms of uncertainty.

This case started in 2015 when UK multinational medical equipment firm Smith & Nephew filed several IPRs against Germany-based medical device company Arthrex. The PTAB found Arthrex’s patent (number 9,179,907) to be invalid.

Arthrex appealed that decision to the Federal Circuit on the basis that the appointment of the board’s APJs by the secretary of commerce violated the appointments clause of the US constitution.

The Federal Circuit ruled in October 2019, in an opinion written by Judge Kimberly Ann Moore, that APJs were indeed principal officers, not inferior officers, and severed a tenure provision protecting these judges at the PTAB to remedy the problem.

The Federal Circuit denied a rehearing en banc of the case in March 2020.

more from across site and ros bottom lb

More from across our site

The IPO must change its approach and communicate with IP owners about its attempts at clearing up the trademark register
Counsel are looking at enforceability, business needs and cost savings when filing for patents overseas
James Perkins, member at Cole Schotz in Texas, reveals how smaller tech companies can protect themselves when dealing with larger players
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The EUIPO management board must provide the Council of the EU with a performance assessment before it can remove the executive director
The European Commission confirmed that plans for a unitary SPC will be published in April alongside reforms to the SEP system
The court held that SEP implementers could be injuncted or directed to pay royalties before trial if they are deemed to be unwilling licensees
Patentees should feel cautious optimism over the EPO Enlarged Board of Appeal’s decision in G2/21, say European patent attorneys
Significant changes to the standard of law are unlikely, say sources, who note that some justices seemed sceptical that the parties disagreed on the legal standard
Sources say the High Court of Australia’s ruling that reputation is immaterial in trademark infringement cases could stop famous brands from muscling out smaller players