UNITED STATES v. ARTHREX, INC. ET AL. - Quick Read

[RICK NEIFELD]

The S.Ct. decided Arthrex today.  Basically, the majority found the limitation in 35 USC 6(c), that only the PTAB itself “may grant rehearings,” to be repugnant to the Constitution, and therefore effectively severed that limitation by granting the Director the power to review PTAB-IPR decisions.

 

The majority opinion states in most relevant part:

 

                We hold that the unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary to an inferior office. ***

In sum, we hold that 35 U. S. C. §6(c) is unenforceable as applied to the Director insofar as it prevents the Director from reviewing the decisions of the PTAB on his own. The Director may engage in such review and reach his own de­cision. When reviewing such a decision by the Director, a court must decide the case “conformably to the constitution, disregarding the law” placing restrictions on his review au­thority in violation of Article II. Marbury v. Madison, 1 Cranch 137, 178 (1803). We add that this suit concerns only the Director’s ability to supervise APJs in adjudicating pe­titions for inter partes review. We do not address the Di­rector’s supervision over other types of adjudications con­ducted by the PTAB, such as the examination process for which the Director has claimed unilateral authority to issue a patent. See Reply Brief for Arthrex, Inc. 6. ***

Today, we reaffirm and apply the rule from Edmond that the exercise of executive power by inferior officers must at some level be subject to the direction and supervision of an officer nominated by the President and confirmed by the Senate. The Constitution therefore forbids the enforcement of statutory restrictions on the Director that insulate the decisions of APJs from his direction and supervision. 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. In this way, the President remains responsible for the exercise of executive power—and through him, the exercise of executive power remains accountable to the people.

The judgment of the United States Court of Appeals for the Federal Circuit is vacated, and the cases are remanded for further proceedings consistent with this opinion.

 

 

This was not a unanimous decision. Instead:

 

ROBERTS, C. J., delivered the opinion of the Court with respect to Parts I and II, in which ALITO, GORSUCH, KAVANAUGH, and BARRETT, JJ., joined, and an opinion with respect to Part III, in which ALITO, KAVANAUGH, and BARRETT, JJ., joined. GORSUCH, J., filed an opinion concurring in part and dissenting in part. BREYER, J., filed an opinion concurring in the judgment in part and dissenting in part, in which SOTOMAYOR and KAGAN, JJ., joined. THOMAS, J., filed a dissenting opinion, in which BREYER, SOTOMAYOR, and KAGAN, JJ., joined as to Parts I and II.

 

Best regards, RICK

Rick Neifeld, Ph.D., Patent Attorney

Neifeld IP Law PLLC

9112 Shearman Street, Fairfax VA 22032-1479, United States

Mobile/Office: 7034150012

Fax: 15712810045

https://neifeld.com/

rnei...@neifeld.com

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