“Lawyers React as Federal Circuit Takes on Constitutional Conundrum” (featured quotes)

November 8, 2019
Managing Intellectual Property

In an article published in Managing Intellectual Property on November 8, 2019, Partner and Chair, IP Litigation Benjamin Horton is quoted discussing the implications of the Federal Circuit’s ruling in Arthrex v. Smith & Nephew and the potential politicization of the USPTO.

The decision in this case may result in some PTAB cases being remanded after the Federal Circuit ruled that the appointment of PTAB judges was unconstitutional and the director of the USPTO cannot remove Administrative Patent Judges (APJs) without cause.

“The Federal Circuit has maybe politicised the USPTO a little bit more than it already was,” says Horton. For example, he says that if an executive branch has stacked the patent office with APJs with a more favourable view of patents, a party might think twice before challenging a patent through the inter partes review.

While many don’t think the judges’ decisions in future cases will be impacted by the APJ’s shift in employment status, Horton thinks there could be bigger issues that come up. However, he believes the court made the right decision.

“The court was very careful in its analysis, and was careful in crafting the narrowest possible remedy. It will remain to be seen whether Congress issues statutory revisions or whether the PTAB implements rule changes of its own to present a different solution, but for now, I think they got it right,” Horton concludes.

Subscribers may access the article in which Mr. Horton was quoted in, “Lawyers React as Federal Circuit Takes on Constitutional Conundrum,” on Managing Intellectual Property's website.

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