The justices in Arthrex Inc. v. Smith & Nephew Inc. are reviewing a U.S Court of Appeals for the Federal Circuit decision that Patent Trial and Appeal Board judges were unconstitutionally appointed, and its remedy of removing certain job protections for those judges.
The high court could decide to fundamentally alter the PTAB’s inter partes review process. That worries tech companies, including Apple and Intel, who frequently challenge patents at the board that they are accused of infringing.
“No single party has used the IPR system more than Apple,” the iPhone maker wrote in its brief.
If the Supreme Court “decides that the IPR system is indeed in need of correction to comply with constitutional requirements, Apple respectfully urges the Court to adopt available remedies that avoid significant disruption to the system’s functioning,” the company said.
The Federal Circuit has since pointed to Arthrex in undoing dozens of PTAB decisions, leaving the validity of numerous patents uncertain. The U.S. Patent and Trademark Office tribunal is supposed to reconsider these disputes under Arthrex, though it paused them during the Supreme Court’s review.
Intel joined Apple and other tech companies to sue the U.S. Patent and Trademark Office over PTAB denials of validity challenges earlier this year.
“Intel’s experience with inter partes review confirms that it is an invaluable means of combating weak and overbroad patents, particularly those asserted by nonpracticing entities,” the company said in its high court brief.
Intel asked the justices to reverse the Federal Circuit’s ruling that PTAB judges were unconstitutionally appointed. If it doesn’t, the chipmaker is urging the justices to stick with the Federal Circuit’s solution of stripping job protections.
The high court “should take care to adopt a remedy that broadly preserves the post-issuance review system as Congress intended it to operate,” Intel said.
Tech, Pharma Views
A broad array of tech and pharmaceutical groups and others also filed briefs docketed Wednesday.
PTAB reviews are critical in weeding out bad patents asserted against tech companies in litigation, providing a vehicle “for the PTO to correct its own mistakes,” the High Tech Inventors Alliance wrote in its brief.
“By enabling PTO review of a patent grant when there is at least a reasonable likelihood that the patent will be determined to be at least partially invalid, inter partes review provides a remedy for unjustified patents that are most likely to obstruct innovation,” HTIA wrote.
The Computer & Communications Industry Association and U.S. Manufacturers Association for Development and Enterprise argued that PTAB judges don’t have enough clout to be classified as officials that should be subject to U.S. Senate confirmation.
PTAB judges do “exercise significant authority on behalf of the United States” the groups wrote in their joint brief. Still the patent office director “maintains the sole ability to formulate policy for the PTAB,” the groups said.
The American Intellectual Property Law Association, Unified Patents, and the Association for Accessible Medicines were among the others who filed briefs in the case. The latter group argued that patients greatly benefit from PTAB reviews to cancel “invalid patents” that stand in the way of bringing cheap drugs to market.
“It is because of successful IPR proceedings that cheaper generic and biosimilar alternatives to fight diseases like Alzheimer’s, Parkinson’s, and prostate cancer, have reached the market far more quickly than they otherwise would have,” the group said.
The case is: U.S. vs. Arthrex et al., U.S., No. 19-1434, Briefs docketed 12/2/20.