1-Hour Program

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On June 21, 2021, the Supreme Court issued its decision in United States v. Arthrex, Inc., No. 19-1434, vacating a ruling by the Federal Circuit that had sought to remedy a violation of the Appointments Clause by removing civil service protections from the Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB).  The case produced several fractured opinions, with Chief Justice Roberts writing the lead opinion, joined by Justices Alito, Kavanaugh, and Barrett.  The Chief Justice received his fifth vote for the result on the merits from Justice Gorsuch, who wrote a solo opinion disagreeing with the remedy that the Chief Justice’s opinion set forth.  The dissenting Justice Breyer, joined by Justices Sotomayor and Kagan, gave the remaining votes needed for the Chief Justice’s remedy.  All three of those Justices also joined part of Justice Thomas’s dissent from the Chief Justice’s opinion.

The Supreme Court’s ruling, which was the latest in a string of decisions scrutinizing the power and procedures of the PTAB, hands a good deal of authority over the decisions of the PTAB to the Director of the Patent and Trademark Office.  However, the decision does not appear likely to radically alter, much less to do away with, the inter partes review process.

Specific topics covered by the Briefing, to be given by Eugene M. Paige of Keker, Van Nest & Peters LLP, will include:

  • A review of the statutory history, relevant prior decisions, and legal proceedings leading up to the decision (20 minutes)
  • A discussion of the arguments made by the parties and a summary of the opinions of the Justices, including:
    • the reasoning behind the Chief Justice’s opinion holding that the APJs had been operating in an unconstitutional manner and that the Director must have authority to unilaterally review APJ decisions
    • Justice Gorsuch’s fifth vote for the Chief Justice’s ruling on the status of the APJs, and his objections to the remedy crafted by the Chief Justice
    • Justice Breyer’s opinion rejecting the Chief Justice’s framework for determining status as a principal or inferior officer
    • Justice Thomas’s opinion arguing that APJs could not be other than inferior officers and suggesting that Appointments Clause jurisprudence may need to be re-examined (25 minutes)
  • The potential impact of the case on future PTAB proceedings and future challenges to those proceedings (15 minutes)




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