PTAB Litigation – The Changing Rules of the Road

Contributors: Vince Galluzzo

January 12, 2022

[Article PDF]

The PTAB now has a new review process and broader discretionary denial power—and a solid constitutional foundation for the future

Two decisions have reshaped basic processes at the USPTO’s Patent and Trial Appeal Board (PTAB), but exactly what that will mean is still being worked out.

In one of these cases, Arthrex Inc. v. Smith & Nephew Inc., Arthrex defended its challenged patent by claiming that the structure of the PTAB was unconstitutional. This argument, made at the PTAB and then later before a Federal Circuit panel, claimed that the power of the administrative patent judges (APJs) who oversee inter partes review (IPR) and post-grant review proceedings violated the Appointments Clause of the U.S. Constitution. The unreviewable authority given to those judges, Arthrex said, should be given only to direct appointees of the president.

Read the complete article in the Litigation Forecast 2022. 

Index: Litigation Forecast 2022

• The Intersection of Technology, Litigation, and IP – “When the Disruptors Get Disrupted” — Warrington Parker
• BioPharma – “The Calm Between the CRISPR Storms” — Anne Elise Herold Li
• Copyright/Software – “Fair Use: When Clarification Isn’t Necessarily Clear” — Gabriel M. Ramsey
• International Trade Commission – “A Sledgehammer for Fighting Knockoffs” — Joshua Pond
• PTAB Litigation – “The Changing Rules of the Road” — Vincent J. Galluzzo
• Patent Cases – “An Open Door for MOT Patent Litigation” — Laura A. Lydigsen
• Trade Secrets – “Expect Claims to Keep Rising” — Astor Heaven
• Trademark – “Conflicting Decisions Raise Uncertainty” — Andrew J. Avsec

Litigation Forecast Archive:
2021, 2020, 2019, 2018, 2017

Regulatory Forecast Archive: 2020, 2019, 2018, 2017