CAFC OKs Interim Director Actions

The first Arthrex battle at the SCOTUS was an attempt to pull down the PTAB system based upon a violation of the Appointments Clause. That effort failed, and instead, the Court simply allowed for a principal officer, the Director, to review Final Written Decisions (FWDs). Then, when Director Iancu stepped down, the interim Director took over the Director Review functions. Arthrex II argued that this was substitution was improper as the interim Director was not a political appointee (i.e., Senate confirmed).

Neither of these disputes were of much interest to to me. In my view the first challenge was always going to end in some kind of remedy that would have little impact on PTAB practice, and the second, at best, was just going to end up with a new signature on the same Director Review decision.

So, it was not surprising when Arthrex II fizzled out last week.Continue Reading Arthrex II Fizzles

New Director to Review Hirshfeld Decisions?

Patent Owners that had the option to avail themselves of the new Director Review process under former interim Director Hirshfeld have been crying foul to the Federal Circuit. Their argument being that the Arthrex holding required a Senate confirmed Director Review, and that an interim Director (promoted from within) did not meet that criteria. Argument was heard a month or so back at the Federal Circuit on this issue.

Since that time, Senate confirmed Director Vidal has finally taken the wheel. Realizing this, the gov’t now hopes to pull the plug on these appeals.Continue Reading More PTAB Arthrex Remands?

New Director Turns Attention to Rule Making

This past Friday, Director Vidal announced that the agency will be keeping the current interim Director review process that was put in place post-Arthrex.  The Director added that the process (or some variant thereof) will be formalized via Notice-and-Comment Rulemaking after collecting stakeholder input.  In the

Federal Circuit Gives Short Shrift to Bias Arguments

A number of due process theories have been floated over the past few months as the “next big thing” in potential constitutional challenges to the PTAB.  Some have been arguing that PTAB judges are financially incentivized to institute  Others have pointed out that judges that institute AIA trials are biased in favor of cancelling claims given it is the very same judges on the back-end.

Yesterday, the Federal Circuit shot down both theories.
Continue Reading Due Process Argument Against PTAB Funding Structure Fails

Director Adopts Panel Opinion

A few weeks back, I explained that the new Arthrex rehearing option— to the Director of the USPTO —was a non-event for practitioners. Reason being, the Director cannot just unilaterally reverse decisions “just because” he/she likes or dislikes patents.  Of course, any such decision would be reviewable on appeal by the Federal Circuit.

While I was initially concerned with such filings piling up during the tenure of an Acting Director, the Acting Director is able to perform these duties (and issue patents) for a limited period of time while a politically appointed Director is seated.  At least for now, that is how such rehearings will be decided.

Yesterday, the Acting Director issued his first two decisions, adopting the panel decisions in each as the final decision of the agency.
Continue Reading Director Rehearing Decisions: No Path for Delay

Arthrex Information Updated

The USPTO requested feedback on the interim Director review process and, in response to that feedback, has updated the Arthrex Q&As. In response to questions from the public, the current update revises several existing Q&As and adds new Q&As to clarify certain aspects of the interim Director review process. For example, the current update clarifies information about party requests and explains the process used internally at the Office.
Continue Reading PTAB Clarifies Director Rehearing Details

Government Claims in Arthrex Catch Eye of House Judiciary

As we await the SCOTUS outcome in Arthrex, the Government Accountability Office (GAO) has been tasked with investigating the degree to which the Director might influence individual PTAB outcomes.  In a letter to the GAO from House Judiciary IP Subcommittee Chairman Hank Johnson (D-Ga.) and Ranking Member Darrell Issa (R-Calif.), it was pointed out that the U.S. government has argued in Arthrex  that APJs are inferior officers because they are “subject to significant oversight and control by the Director of the USPTO” who has the ability to “control[] which APJs decide which cases” and “provid[e] policy directives that APJs are obligated to follow.”

The letter (here) expressed a concern that the government has effectively indicated that “PTAB cases may have been decided based on factors outside of the evidentiary record and public legal authority,” which they argued “raises potential due process concerns and would be inconsistent with the intent of Congress in enacting the AIA.” While political appointees are expected to drive overall policy, of course, they are not expected to meddle in individual outcomes. Accordingly, the Subcommittee has tasked the GAO with investigating eight questions designed to explore the Director’s ability to influence individual PTAB decisions, and any instances where the Director has actually influenced the outcome of a decision.
Continue Reading Congress Questions USPTO Director Input to PTAB Trial Outcomes

Court Explores Potential Outcomes in Arthrex

As I have discussed previously, Arthrex is more of an academic exercise for constitutional and administrative law nerds scholars than anything else.  Today’s oral argument has done nothing to disabuse me of that notion.  While it is a fool’s errand to speculate at a SCOTUS outcome based on oral arguments, I am the perfect man for the job 🙂Continue Reading USPTO Director May Soon Get Last Word at PTAB

Legislative Fix Enacted for Trademarks

On March 1st, the Supreme Court will hear its fifth PTAB related case in United States v. Arthrex Inc.  At issue in this latest dispute is whether, for purposes of the Constitution’s appointments clause, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the president with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head. While this may sound like a boring legal debate for administrative law nerds (and it kinda is), there are some real world consequences for us super cool PTAB practitioners.

But, as made clear by a recent change to the Trademark statutes in the Trademark Monetization Act (TMA), it all may end in a fizzle for PTAB practitioners.
Continue Reading Legislative Cure Provided for Potential Arthrex Deficiency

Review of APJ Appointments to Be Considered by SCOTUS

Back in November of 2019 the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the Federal Circuit solution pronounced in Arthrex was effective to cure the Appointments Clause defect.  While there was some debate over whether the “fix” would hold, all of the witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.

Today, Arthrex was granted cert.  I expect that Congress will now turn back to their earlier discussed legislative fix.
Continue Reading Arthrex Cert Likely to Spur Previously Discussed Legislative Fix