In U.S. v. Arthrex, Inc. (S. Ct. June 21, 2021), the Court held that decisions by Administrative Patent Judges (APJs) appointed to the Patent Trial and Appeal Board (PTAB) were unconstitutional because they were not previously reviewable by a principal executive officer, such as the Director, of the U.S. Patent and Trademark Office (USPTO). However, the Court remedied this problem by providing the USPTO Director with discretion to review PTAB decisions. As explained by Chief Justice Roberts: “To be clear, the Director need not review every decision of the PTAB. What matters is that the Director have the discretion to review decisions rendered by APJs.”
The Court’s solution leaves intact the current Inter Partes Review (IPR) system, with now the possibility of review by the USPTO Director prior to the right to appeal final written decisions of the PTAB to the Court of Appeals for the Federal Circuit.
The Court’s decision is accessible at: https://www.supremecourt.gov/opinions/20pdf/19-1434_ancf.pdf
Lerner David has successfully represented its clients in IPRs and other post-grant proceedings since the enactment of such proceedings in 2012 by the America Invents Act.
Update: The USPTO has implemented interim procedures for requesting Director review of PTAB final written decisions. See https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/uspto-implementation-interim-director-review. On July 20, 2021, the USPTO also updated its Q&As to clarify that after a PTAB panel issues a final written decision in an IPR or PGR a party may request either Director review or rehearing by the original PTAB panel, but may not request both. See https://www.uspto.gov/subscription-center/2021/uspto-updates-arthrex-qas.