UNCERTAINTY IN US PATENT CASES FOLLOWING THE ARTHREX DECISION
On 31 October 2019, in Arthrex, Inc. v. Smith & Nephew, Inc. (2019), a panel of the Federal Circuit held that administrative patent judges (APJs) who serve on the Patent Trial & Appeal Board (PTAB) had been improperly serving as “principal officers” within the meaning of the US Constitution and thus struck down the Patent Act’s removal protections in order to make the APJs removable at-will and cure the purported constitutional defect. Concluding that this remedy made the APJs inferior officers, the court then remanded the case for a new hearing before a new set of APJs who had not previously decided the case.
Contested issues and unanswered questions after Arthrex
In the six months since Arthrex, there has been tremendous uncertainty in numerous cases pending before the Federal Circuit, with different panels of the court taking different approaches, leaving litigants with many questions about how to proceed. One panel of the court requested supplemental briefing on the constitutional issues, some panels have remanded pending appeals to the board to be reheard by a new set of APJs, and other panels have stayed appeals pending resolution of the issues. The full court is now considering en banc petitions from all three parties to Arthrex, as well as petitions in other cases decided in Arthrex’s wake. Those petitions have highlighted some of the questions that remain unanswered or hotly contested, including whether the Arthrex remedial cure is appropriate, when that remedy will take effect, and whether an appointments clause challenged must be raised before the PTAB to be raised on appeal. The answers to these questions have implications for both appeals at the Federal Circuit and PTAB proceedings.
Apr-Jun 2020 issue
Kirkland & Ellis LLP