SCOTUS vacates and remands Arthrex; preserves PTAB

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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 SHARED ros bottom lb

More from across our site

Attorneys explain why there are early signs that the US Supreme Court could rule in favour of ISP Cox in a copyright dispute
A swathe of UPC-related hires suggests firms are taking the forum seriously, as questions over the transitional stage begin
A win for Nintendo in China and King & Spalding hiring a prominent patent litigator were also among the top talking points
Rebecca Newman at Addleshaw Goddard, who live-reported on the seminal dispute, unpicks the trials and tribulations of the case and considers its impact
Attorneys predict how Lululemon’s trade dress and design patent suit against Costco could play out
Lawyers at Linklaters analyse some of the key UPC trends so far, and look ahead to life beyond the transition period
David Rodrigues, who previously worked at an IP boutique, said he may become more involved in transactional work at his new firm
Indian smartphone maker Lava must pay $2.3 million as a security deposit for past sales, as its dispute with Dolby over audio coding SEPs plays out
Powell Gilbert’s opening in Düsseldorf, complete with a new partner hire, continues this summer’s trend of UPC-related lateral movement
IP leaders at Brandsmiths and Bird & Bird, who were on opposing sides at the UK Supreme Court in Iconix v Dream Pairs, unpick the landmark case and its ramifications
Gift this article