SCOTUS Grants PTAB More Oversight in Patent Case

Patent Trial and Appeal Board judges are unconstitutionally appointed, and granting the Patent and Trademark Office director more discretion to review PTAB decisions would cure the problem, the Supreme Court ruled Monday in U.S. v. Arthrex (19-1434). The Constitution “forbids the enforcement of statutory restrictions on the Director that insulate the decisions of [administrative patent judges] APJs from his direction and supervision,” Chief Justice John Roberts wrote for the majority. “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.” Justices Samuel Alito, Neil Gorsuch, Brett Kavanaugh and Amy Coney Barrett joined Roberts in the majority opinion on parts I and II. Alito, Kavanaugh and Barrett joined Roberts for an opinion on part III. Justices Stephen Breyer, Sonia Sotomayor, Elena Kagan, Clarence Thomas and Gorsuch dissented to varying degrees. Gorsuch filed an opinion concurring in part and dissenting in part. Breyer filed an opinion concurring in the judgment in part and dissenting in part, with Sotomayor and Kagan joining. Thomas filed a dissenting opinion with Breyer, Sotomayor and Kagan joining for parts I and II. The high court ruled the appointments unconstitutional on the question of whether the authority of APJs to “issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” Arthrex argued “APJs were principal officers who must be appointed by the President with the advice and consent of the Senate, and that their appointment by the Secretary of Commerce was therefore unconstitutional,” according to the filing. Computer & Communications Industry Association Patent Counsel Josh Landau disagreed that “PTAB judges were not already subject to sufficient supervision by the Director” but welcomed the court’s “simple, common-sense revision that provides for Director review.” DOJ and an attorney for the company didn’t comment.