Maier & Maier

USPTO Awaits Arthrex En Banc Rehearing Decision As PTAB Judges Remain In Flux

Final briefing from Appellant Arthrex, Inc., Appellees Arthrocare Corp. and Smith & Nephew, Inc., and the Intervening United States Government was filed January 17, 2020 on the request for en banc rehearing. The decision at issue centered on the constitutionality of the appointment process for the PTAB Administrative Patent Judges (APJs) and whether PTAB proceedings as a whole were unconstitutional.

Currently, APJs are appointed by the U.S. Secretary of Commerce. In the original challenge, Arthrex Inc. argued that PTAB proceedings are unconstitutional because this appointment proceeding is insufficient for principal officers. Under the U.S. Constitution, principal officers must be appointed by the President of the United states, with the advice and consent of the Senate.

In the decision last fall, the Federal Circuit severed a tenure provision for the APJ, determining that this would convert them from principal officers to inferior officers. As inferior officers, their appointment by the Secretary of Commerce would be constitutional.

In the briefings filed last week, all parties found flaws in this decision. Arthrex argued that the severance was not sufficient to make the appointments constitutional. Smith & Nephew argued that APJs were already inferior officers and the severance of tenure was unnecessary. Finally, the intervening U.S. found several flaws in the decision, including both the finding that APJs were not subject to sufficient direction or supervision and an alleged misunderstanding of the default federal-employee removal standard.

The three parties’ filings were joined by amici briefs by both the New York Intellectual Property Law Association and the Association for Accessible Medicines, both writing in opposition to the APJs being labeled principal officers and in support of the importance of the PTAB, citing the widespread ramifications of the constitutionality issue.

With the briefings all submitted, the USPTO along with patent owners and petitioners alike await the decision.

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