June 21, 2021 – Article
In a closely watched case, the Supreme Court decided today United States v. Arthrex, holding that the “unreviewable authority wielded by the APJs during inter partes review is incompatible with their appointment by the Secretary to an inferior officer” and, therefore, something had to change. But rather than wait for Congress to fix the issue as Justice Gorsuch would have liked, Justices Roberts, Alito, Kavanaugh, Barrett, Breyer, Sotomayor, and Kagan agreed that there is a simple fix: make decisions by APJs subject to review by the Director.
Going forward, “[t]he Director  may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board.” What this means for Arthrex is that rather than getting the entirety of the IPR process declared unconstitutional (as it had hoped), or requiring the PTAB to rehear its prior decisions with a properly appointed panel of APJs (as previously determined by the Federal Circuit), the Director has the ability to review the PTAB’s final written decision and reach his or her own decision. Now, “acting Director” Drew Hirshfeld will have to decide whether to review the final written decision issued against Arthrex's patent.
We will have to wait and see how the USPTO plans to implement the Supreme Court’s contemplated “Director Review.” But no matter how implemented, the USPTO Director’s job has gotten busier and the appointment process potentially subject to more political lobbying.