Posts Tagged: "Administrative Patent Judge"

What SCOTUS’ Decision to Scrutinize Social Security Act Appointments Clause Case Means for Arthrex

Last week, an order list issued by the U.S. Supreme Court indicated that the nation’s highest court had granted a pair of petitions for writ of certiorari which were then consolidated into Davis v. Saul. The petition in Davis asks the Supreme Court to determine whether claimants seeking disability benefits or supplemental security income under the Social Security Act (SSA) must exhaust their Appointments Clause challenges with the administrative law judge (ALJ) at the agency in order to obtain judicial review of that challenge in federal court. Given the Appointments Clause challenge to the Patent Trial and Appeal Board (PTAB) proceedings at issue in Arthrex v. Smith & Nephew, many patent practitioners are interested in the Supreme Court’s ultimate decision on whether such challenges can be brought up for the first time on appeal from agency proceedings when parties first claim that constitutional challenge while seeking judicial review in federal courts.

Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO

Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief. Thus begins an ex parte appeals process in which a panel of at least three administrative patent judges (APJs) considers patentability of the rejected claims. Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves. To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.

Askeladden Brief Asks SCOTUS to Grant U.S. Government’s Petition to Reconsider Whether PTAB APJs Are Principal Officers Under the Appointments Clause

On July 29, Askeladden LLC filed an amicus brief in support of the U.S. Government’s combined petition for a writ of certiorari in U.S. v. Arthrex, Inc., No. 19-1434. In particular, Askeladden asks the Supreme Court to accept the petition and address the threshold question raised by the U.S. Government: whether, for purposes of the Appointments Clause, U.S. Const. art. II, § 2, Cl. 2, administrative patent judges (APJs) of the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) 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.

Why We Need USPTO Examiners to Attend Inter Partes Reviews

Whoever wrote the America Invents Act (AIA) left out the U.S. Patent and Trademark Office (USPTO) examiners. The examiner on any given patent at issue in an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) agreed with the patent holder that the patent claims, as amended, were valid. Examiners are specialists, working under Supervisory Patent Examiners (SPEs), who are even more experienced, though in very narrow fields. As such, they knew the state of the art at the time a patent was being prosecuted.

Arthrex Update: With Responses Due Next Week, Amici Urge Federal Circuit to Grant Rehearing

In December, petitions for rehearing were filed at the U.S. Court of Appeals for the Federal Circuit by each party involved in Arthrex, Inc. v. Smith & Nephew, Inc., including the United States government as intervenor in the case. The panel decision in that case, rendered on October 31 of last year, severed a tenure provision protecting administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB). This severance was determined by the Federal Circuit to overcome a constitutional challenge brought by Arthrex that APJs were principal officers of the United States, and thus their appointments by the U.S. Secretary of Commerce, rather than the President of the United States, with the advice and consent of the Senate, didn’t pass muster under the Constitution’s Appointments Clause. In their petitions for rehearing, Arthrex argued that the removal of the tenure provision was an insufficient solution, Smith & Nephew contended that the fix was incorrect because APJs were already inferior officers, and the U.S. government urged rehearing so that several legal errors made by the original Federal Circuit panel could be corrected. On January 3, Federal Circuit Clerk Peter Marksteiner informed  the parties in Arthrex that they could file a single response to the petitions for rehearing. Those petitions are due by January 17 and the parties have been informed that no extensions of time for submitting responses will be granted. By the end of December, the Federal Circuit had received a pair of amicus briefs in the case, one from the Association for Accessible Medicines (AAM) and the other from the New York Intellectual Property Law Association (NYIPLA).