Patent Office trials undergo further scrutiny across government

By Michael Rosen

As we have explored here on numerous occasions, the 2011 America Invents Act (AIA) established the Patent Trial and Appeals Board (PTAB) within the United States Patent and Trademark Office (USPTO) as a cheaper, easier, and faster avenue for invalidating patents, which it has indeed done successfully — perhaps too much so for its critics who sought greater balance in the system.

And now, all three branches
of the US government appear to be engaged in considering the future of PTO

First, earlier this month,
the Supreme Court heard argument in United States v. Arthrex, a case challenging the
authority of the administrative patent judges (APJs) who oversee PTAB trials.
As we explained several years ago —
when the case was working its way up the circuit — these judges are not
appointed pursuant to Article II of the Constitution, which requires the advice
and consent of the Senate.

Arthrex argued that because
the APJs are not Senate-confirmed, they do not qualify as “principal officers”
and should not constitutionally be permitted to deprive patent owners of their
property by rendering patents invalid. The Federal Circuit agreed, and after
several related cases were consolidated, the Supreme Court considered the

Meanwhile, changes on both
ends of Pennsylvania Avenue may mean a different approach to PTAB proceedings.

In Congress, unified
Democratic control could generally stymie the legislative push toward softening
standards in PTO trials. More specifically, Sen. Chris Coons (D-DE), along with
Rep. Steve Stivers (R-OH) (an AEI intellectual property panel keynote speaker), introduced the Support
Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER)
Patents Act in 2019 as an update to an earlier bill. That measure sought to
align the standards for invalidating patents in district courts and in PTAB
proceedings, effectively weakening the latter.

But Coons was ousted from
his perch at the Senate Judiciary Committee’s Intellectual Property
Subcommittee. His successor, Sen. Patrick Leahy (D-VT), played an instrumental
role in enacting the AIA and has been less than congenial to rolling back its

Senator Patrick Leahy (D-VT) presides over the Senate Judiciary Committee, March 1, 2021, via Reuters

“Leahy is likely to be more
supportive of the changes that were implemented via his namesake legislation
than perhaps Sen. Coons was,” Duke University School of Law Professor Arti
Rai told Law360 last month.
“So, I don’t think efforts to try to dramatically scale back the PTAB are as

Similarly, turnover in the
executive branch portends a possible reversal at the PTAB. Former Director
Andrei Iancu’s PTO, as we explored here, altered the standards for
claim construction in Patent Office proceedings and generally sought to restore
balance. But his replacement, once appointed, may not be similarly minded.

“The Trump administration
was more pro-patent, between Iancu at the Patent Office and [Makan] Delrahim at
the Justice Department,” Mike McKeon, my former law partner at Fish &
Richardson, told Law360 last month.
Looking ahead to the new administration, McKeon added:

I think this administration is going to move in a different direction. I think they’re going to go back to the AIA as it was when it got enacted. Big Tech and Silicon Valley were very much behind the AIA. I think they’re going to dial back what the prior administration had done at the PTAB.

Personnel is indeed policy,
and time will tell whom President Joe Biden appoints to handle intellectual
property issues in his administration. In the meantime, Patent Office trials
are being scrutinized all over Washington.