Janelle Waack Provides Insight on Arthrex Supreme Court Decision

June 22, 2021
Law360, IP Watchdog, World Intellectual Property Review

Bass, Berry & Sims attorney Janelle Waack provided insight for several media outlets covering the impact of the June 21 Arthrex Supreme Court decision. In the split 5-4 decision, the majority ruled that Administrative Patent Judges (APJs) for the U.S. Patent Trial and Appeal Board (PTAB) are unconstitutionally appointed under its current framework. While this ruling is in agreement with the previous appellate ruling, the Court’s ruling took a different approach to resolving the issue by giving the director of the U.S. Patent and Trademark Office (USPTO) the right to final review of PTAB decisions.

While some argue the Court took unprecedented action by severing part of the law rather than asking Congress to address the issue, many attorneys were grateful that the Supreme Court didn’t ship the entire PTAB back to Congress, a decision Janelle told Law360 would have been “entirely disruptive.”

Janelle discussed the uncertainty of how the USPTO director will conduct these reviews with World Intellectual Property Review. “What matters is that the director has the discretion to review decisions rendered by the APJs,” she said. “In that way, the U.S. president remains responsible for the exercise of executive power – and through him, the exercise of executive power remains accountable to the people. Currently, there is not a director in place, so the next appointment to that position will carry greater weight and responsibility due to Arthrex.

With IP Watchdog, Janelle shared greater insight on the overall impact of the ruling, saying:

Despite the divergence and abundance of opinions, the holding was fairly clean – to give the USPTO Director power to directly review PTAB decisions adjudicating petitions for inter partes review. The decision could have upended the PTAB review of U.S. patents and the hundreds of administrative judges who decide those cases as the Court found a Constitutional dilemma in the way that APJs are appointed by the Secretary of Commerce instead of by the U.S. president with confirmation by the Senate. But instead of scrapping IPRs, the Court maintained a workable patent system. APJs no longer have unreviewable authority in issuing decisions and the USPTO Director is tasked with reviewing those decisions.

What remains to be seen is the exact process by which the Director will review PTAB decisions. This additional authority also places more importance on the selection of the next USPTO director. The Arthrex decision will hopefully encourage sound, impartial decisions on the merits without bringing politics into the mix.

Janelle’s insight was included in the following articles: