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PTAB Waits as Supreme Court Considers Arthrex Certiorari Petitions

It has been almost eleven months since the Federal Circuit held in Arthrex, Inc. v. Smith & Nephew, Inc.941 F.3d 1320, that PTAB judges were principal officers appointed in violation of the Constitution, and held that the proper remedy was to judicially eliminate their for-cause removal protections. 

Now, the Supreme Court is scheduled to consider four certiorari petitions on September 29, 2020. In anticipation of the Court’s decision, this article takes a brief look at the issues before the Supreme Court and looks back at the impacts of the Arthrex decision over the past year.

Certiorari petitions related to the Arthrex decision

After the Federal Circuit denied en banc reconsideration in Arthrex, the U.S. GovernmentArthrex and Smith & Nephew each filed separate petitions for writ of certiorari. An additional petition for a writ of certiorari was filed for a post-Arthrex case, Polaris Innovations Ltd. v. Kingston Technology Co., which was decided based on the holdings in Arthrex.

The questions presented in the petitions for writ of certiorari general fall into three general categories:

  • Consideration of the Appointments Clause as it relates to APJs,
  • Whether the Federal Circuit erred by adjudicating an Appointments Clause challenge that was not presented to the agency, and
  • Whether the Federal Circuit’s severance remedy is proper.

The government’s petition encompassed both Arthrex and Polaris and presented two questions relating to the first two categories above.  In particular, the government’s questions presented are as follows:

1.         Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head.

2.         Whether the court of appeals erred by adjudicating an Appointments Clause challenge brought by a litigant that had not presented the challenge to the agency.

The three subsequently-filed petitions by the private parties also presented questions that are the same as or closely related to those presented by the government.  Smith & Nephew’s petition seeks review of the same Appointments Clause question, while Arthrex’s and Polaris’s petitions both seek review of the Arthrex court’s severability holding.  For example, the first question presented by Arthrex is:

1.         Whether the court of appeals’ severance remedy is consistent with congressional intent, where Congress has long considered tenure protections essential to secure the independence and impartiality of administrative judges.

Each party has urged the Supreme Court to grant the petitions, and to frame a common set of questions presented.

Given the universal agreement amongst parties, and the impact of the Arthrex decision, it seems likely that the Court will grant certiorari, and the questions presented by the government along with the severance remedy question appear to present the most complete set of issues for consideration.

Impacts of the Arthrex decision over the past year

The impact of Arthrex was immediate and wide spread.  The Federal Circuit had vacated well over 100 PTAB decisions by May 2020, which caused the Chief Administrative Patent Judge to issue a general order holding in abeyance all cases remanded in light of Arthrex.  The order holds all cases remanded by the Federal Circuit under Arthrex in administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing such petitions expires.

The administrative abeyance will likely end after the Supreme Court acts on the petitions from the U.S. Government, Arthrex, Smith & Nephew, and Polaris.  In the event that the Supreme Court declines to grant certiorari, the Arthrex decision will stand, and the U.S. Patent Office will be forced to deal with the voluminous number of remanded cases, with even more expected to come.  Thus, patent practitioners will be closely watching this upcoming decision.

© 2020 Foley & Lardner LLPNational Law Review, Volume X, Number 273



About this Author

Daniel R. Shelton, Foley Lardner, Patent Reexamination Attorney, IP, Pharmaceuticals Lawyer
Senior Counsel

Daniel R. Shelton is an associate and intellectual property lawyer with Foley & Lardner LLP, where his practice includes the procurement of patents and related counseling in matters in the chemical arts. In addition, Mr. Shelton assists clients on reexamination and interference matters before the U.S. Patent Office, and advises clients on patent validity and freedom to operate inquiries. He is a member of the Chemical, Biotechnology & Pharmaceutical Practice.

Mr. Shelton assists clients on a technologically diverse range of matters,...