By: Robin Gentry
Lilenfeld PC

Back in 2011, the America Invents Act (AIA) created  the United States Patent Trial and Appeal Board (PTAB) to strengthen the U.S. Patent System by providing an efficient system for challenging patents. Recently, the United States Supreme Court heard oral arguments in a case dealing with the power of judges appointed to the PTAB. PTAB judges hear appeals by patent applicants who have had their claims rejected by a patent examiner and also conduct trials in cases brought by challengers to patent claims that have already been granted. In ruling on issues in these trials, PTAB judges have cancelled (invalidated) thousands of issued patents.

The problem, according to Arthrex is that PTAB judges are appointed by the Director of the U.S. Patent Office. They are not appointed by the President and confirmed by the Senate like other federal judges. According to Arthrex, this violates the Appointments Clause of the U.S. Constitution.

The Solicitor General’s Office counters that the U.S. Patent Office Director has sufficient authority and control over PTAB judges making them “inferior Officers” that do not need to be appointed by the President.

If the Supreme Court agrees with Arthrex, it is possible that a large number of previous PTAB decisions will be voided with cancelled patent claims potentially being revived. The Supreme Court could possibly find that PTAB judges should have been appointed by the President but may fashion a “fix” that would allow the previous decisions of the PTAB judges to remain in place.

A decision is expected during the current term of Supreme Court which ends in September 2021, so we will be monitoring this case closely to determine the effect it could have on not only our Clients, but registered and challenged patents moving forward.