In this second edition of Orrick’s quarterly series on the PTAB, we summarize the Arthrex decision, walk through the PTO’s post-Arthrex interim procedure for reviewing PTAB decisions, and discuss potential post-Arthrex challenges to the acting Director and the interim procedure. For many months, commentators wondered whether Arthrex could reverse hundreds of PTAB decisions that invalidated patents and fundamentally change Inter Partes Review proceedings. Now, it appears that Arthrex will have little practical effect on PTAB procedure. It also seems highly unlikely that future attacks on PTAB practice in view of Arthrex will be successful.

On June 21, 2021, the Supreme Court issued its long-awaited decision in Arthrex. See United States v. Arthrex, 141 S. Ct. 1970 (2021). That case arose out of an appeal to the Federal Circuit of an inter partes review decision invalidating a medical technology patent that Arthrex owned for a particular method of reattaching soft tissue to bone. Disappointed with the PTAB’s decision, Arthrex appealed to the Federal Circuit, where it argued for the first time that the manner of appointment that Congress prescribed for administrative patent judges (APJs) in the America Invents Act (AIA)— specifically, their appointment by the Secretary of Commerce, as opposed to by the President with the Senate’s advice and consent— violates the Appointments Clause of the U.S. Constitution.