The U.S. Supreme Court recently issued a decision involving the Patent Trial and Appeal Board (PTAB) system used for challenging patents. Specifically, in the case of United States v. Arthrex , the court heard a challenge by a patent holder, alleging that the judges hired by the Patent Office to hear Inter Partes Review cases did not have statutory authority.
The judges who hear Inter Partes Review cases are called Administrative Patent Judges, or APJ’s. The APJ’s sit on PTAB panels of three. The legal question was whether these APJ’s are principal officers or inferior officers. If they are inferior officers, then their decisions must be reviewed by the USPTO Director or other principal officer. On the other hand, if they are principal officers, then all current APJ appointments are a nullity because they were not made by the President upon the advice and consent of the Senate.
The Court found that the APJ’s serve as inferior officers rather than as principal officers. The Court further found that the USPTO had the authority to review PTAB panel decisions as they are made. In other words, instead of the Director being subject to the decisions of otherwise inferior officers, those officers’ decisions must be supported by their superior.
So what does this mean for every inventor who sought a patent only to be told post-issuance (e.g., at an inter partes review) that their innovation was unpatentable? Will the Arthrex decision result in a litany of dissatisfied applicants rushing to the CAFC’s doorstep to seek decisions compelling the PTAB to take another look? Perhaps, at least at first, and only for those who are not otherwise barred by time. It is unlikely, however, that the long-term implications will be a mass invalidation of recent PTAB decisions. It would appear that the Director can simply institute a review of recent decisions and decide whether to affirm or to revisit (at least for those patents for which the Director has not already issued a certificate of unpatentability). Cases that are not time-barred, where the PTAB has already decided not to rehear the issue, may need to be adjudicated in the CAFC.
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