On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) lifted a stay that he issued on May 1, 2020, pausing all activity in PTAB cases that were remanded to PTAB from the Federal Circuit under Arthrex.[1] Within the order lifting the stay, Chief APJ Boalick reiterated the purpose of its original stay order and summarized the Arthrex procedural history, which culminated in the Supreme Court’s decision regarding the Constitutional issue raised by this case.

As we previously discussed, Arthrex appealed a Final Decision from the PTAB invalidating its patent to the Federal Circuit, in part, by challenging the constitutionality of the appointment process of the APJs who preside over post grant proceedings before the PTAB. Subsequently, in October 2019, the Federal Circuit concluded that APJs were unconstitutionally appointed under the Appointments Clause of the U.S. Constitution.[2] The Federal Circuit provided the remedy to this constitutional defect by severing the APJs’ removal protections, thus making them “inferior officers” who can be removed at will by the Director of the USPTO (the “Director”). As we previously discussed, this Federal Circuit decision opened the door for over 100 decisions issued prior to Arthrex to be challenged in rehearings under the Appointment Clause.

In order “to avoid burdening the [PTAB] and the parties until all appellate rights have been exhausted,”[3] Chief APJ Boalick issued a general order in Spring 2020 holding all the rehearings in abeyance. That general order suspended PTAB’s Standard Operating Procedure 9 “Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings” (“SOP 9”), until the Supreme Court reviews Arthrex’s constitutional issue,[4] which it did on June 21, 2021.[5] In its decision, the Supreme Court vacated and remanded the Federal Circuit’s decision that APJs were unconstitutionally appointed. While the Supreme Court did come to the same conclusion as the Federal Circuit – that the pre-Arthrex PTAB system was incompatible with the Appointments Clause – it provided a different remedy: granting review authority to the Director.

Thus far, Arthrex appears not to have as big an impact on the PTAB post grant review process as some patentees may have hoped. To date, requests for Director Review have largely been denied under the interim procedure established after the Supreme Court’s ruling. This is consistent with the PTAB’s record of granting rehearings, which generally sit under 5%-15%. It is unclear however, if the low rate of Director Review is also affected by the fact that Andrew Hirshfeld is currently only an acting director of the USPTO (Acting Director), rather than a presidentially-appointed and Senate-confirmed Director. In fact, there are already some parties questioning the Acting Director’s authority to review final decisions made by the APJs.[6]

Nevertheless, not all cases have been denied Director Review. On November 1, the Acting Director issued the first decision granting a request for review. In this first case,[7] Samsung petitioned for Director Review of the PTAB’s Final Written Decision determining that “all challenged claims of U.S. Patent No. 9,819,057 B2 (“the ’057 patent”) [were] unpatentable.” Samsung challenged the PTAB’s Final Written Decision on four grounds, one of which argued that the PTAB’ final written decision was improper because it did not separately consider two claims that were entitled to a provisional priority date, which antedated the prior art reference at issue. In his review, the Acting Director agreed that priority should be awarded on a claim-by-claim basis, vacated the PTAB’s decision, and remanded the case back to PTAB to address the priority date issue.

Now that the PTAB has lifted its stay, we will likely get a better picture on how PTAB will handle its new Director Review procedure both substantively and procedurally.


[1] See General Order Lifting General Order in Cases Remanded Under Arthrex Inc. v. Smith & Nephew Inc., 941 F.3d 1320 (Fed. Cir. 2019) (PTAB Oct. 26, 2020). [Hereinafter General Order Lifting Stay].

[2] See Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).

[3] See General Order Lifting Stay, note 1, at 1.

[4] See General Order in Cases Remanded Under Arthrex Inc. v. Smith & Nephew Inc., 941 F.3d 1320 (Fed. Cir. 2019) (PTAB May 1, 2020).

[5] See United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021).

[6] See e.g., Appellant’s Response to Post-Anthrex Briefing Order at 3, Corephotonics, Ltd. v. Apple Inc., No. 20-1424 (Fed. Cir. Jul. 7, 2021), ECF No. 64.

[7] Ascend Performance Materials Operations LLC v. Samsung SDI Co., Ltd., IPR2020-00349, Paper No. 57 (Nov. 1, 2021).