Director Has Final Say…But Mostly More Busy Work
I’ve ignored the Arthrex decision for a few days, largely because it never really interested me (still doesn’t). Of course, if you geek out over the severability doctrine, or the viewpoints of liberal versus conservative justices on the growing administrative state — have at it. I just always saw it as an academic exercise that would have little impact on actual day-to-day PTAB practice. As I predicted back in March, the SCOTUS result in Arthrex wasn’t exactly surprising.
While the Arthrex outcome will not change much in terms of PTAB strategy, there will be a beautiful mess in the short term.
First, there is no politically appointed/senate confirmed Director at present— just an interim one. And it appears that there will be quite the tug of war to appoint a new Director given the recent statements of Senator Leahy (Senate Judiciary Chair). In addition to his role on the Judiciary Committee, keep in mind the AIA is the Leahy-Smith America Invents Act and he clearly did not agree with the last Director’s practices. It appears Senator Leahy would like a Director that will roll back some of the policies of the last Director, while others will seek a Director to continue them, especially Bio/Pharma. The longer the agency goes without a Director, the longer potential rehearing requests to the Director will pile up. (including the large pile already there)
Second, what will a Director rehearing cost? I can’t imagine that his review will be free. Indeed, the agency would be wise to add a hefty fee to avoid requests as a matter of course. And, what will the decisions look like? A summary affirmance incorporating the panels reasoning in most cases akin to a Rule 36 affirmance at the Federal Circuit? Only a written decision in a reversal? (which, of course, will be just as rare as it is today)
Third, what happens to recent FWDs? Does a request to a non-existent Director effectively stall a case from appeal until a Director is appointed? As to already pending CAFC appeals where the Appointment Clause issue was seasonably raised, the Federal Circuit is now seeking additional briefing from the parties on how to proceed, and inviting the views of the USPTO. Remands to a non-existent Director may be comin en masse.
As noted above, once we have a Director, she is not going to unilaterally reverse cases “just because.” This is because all such decisions will ultimately go to the Federal Circuit and be reviewed for substantial evidence. So, it is not so much the Director has more power, just more work.
I expect over time Director Rehearings will be no more successful than panel rehearings of the past. But, there is quite is a mess to sort out in the short term.