"The SCOTUS decision will not have an impact as in previous decisions coming from the Federal Circuit, such as Thrv v. Click-To-Call Tech (2020), Alice Corp. (2014), or Festo (2002). It is more of a “slap on the Federal Circuit wrist” regarding the remedy provision, with “business as usual” for the PTAB. One of the arguments from the government is that the Director can intervene in the rehearing process to reverse the Board decision, whether is it by stacking the original panel or assigning an entirely new panel of APJs. Id. at 11. However, the majority deemed this to the problem, rather than the solution, since the Director is still not taking responsibility for the final decision on patentability. Id. at 11. However, the solution by SCOTUS of “[t]he Director accordingly may review final PTAB decisions and, upon review, may issue decisions himself” (Id. at 21) cannot possibly result in significant changes. Each IPR involves a detailed record full of briefs and deposition transcripts, and an understanding of the technology and prior art. It is hard to imagine understanding computer software in one case, and then monoclonal antibodies in another. How does the Director decide to review a case where the lead APJ has a track record of a high kill rate of patents, versus a case where the declaratory evidence was not given proper weight? And given the number of final written decisions, it is hard to imagine Arthrex changing the day to day reality, which may disappoint patent owners."
The SCOTUS justices held 5-4 that the unreviewable authority wielded by Administrative Patent Judges during inter partes review is incompatible with their appointment by the Secretary of Commerce to an inferior office.
Read the full article here.
Read the full decision here.