Mike Heim Interviewed by Law360 and BioWorld MedTech on Impact of Key Ruling About Selection Process of PTAB Judges

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Mike Heim Interviewed by Law360 and BioWorld MedTech on Impact of Key Ruling About Selection Process of PTAB Judges

A Federal Circuit ruling in Arthrex v. Smith & Nephew sent tremors through the patent bar last week with a finding that the process for selecting U.S. Patent Trial and Appeal Board judges has been unconstitutional. The appeals court ruling found that PTAB judges have had insufficient oversight under the appointments clause of the U.S. Constitution, noting that the director of the Patent and Trademark Office did not have authority to review or reverse their decisions and had limited ability to remove judges.

After the ruling, Law360 patent litigation reporter Ryan Davis and BioWorld MedTech editor Mark McCarty turned to Heim, Payne & Chorush’s Mike Heim analysis.

Observers told Law360 that it’s unlikely the USPTO director would use his new authority to conduct mass firings of PTAB judges to achieve certain results, but Heim noted that the judges likely will feel the weight of the ruling. From Law360 (subscription required):

Michael Heim of Heim Payne & Chorush LLP said it’s possible that the director could take action in relatively unusual circumstances where a “maverick” judge repeatedly flouts agency policy, so “I do think it gives you a little more control of people following directives than existed before.”

However, even if judges are rarely removed by the USPTO director, the possibility that it could happen is likely to creep into how judges think about a case. “They do become more subject to change in the politics at the patent office. Maybe it will be a concern for some,” Heim said. Giving the director, a presidential appointee, the ability to fire judges could make the judges feel they are under pressure to reach decisions their boss agrees with and aligns with his political and policy goals.

BioWorld MedTech (subscription required) also explored the ruling’s impact on pending inter partes review (IPR) appeals, as well as whether a new oversight structure will affect IPR decisions going forward.

The basis for an at-will dismissal of a PTAB judge might revolve around unusual findings that seem to fly against practice or the statute. “If [the agency] had the time to study some of these decisions, I do think that they could find some people that are outliers,” Heim said, which would give the PTO some way to control the IPR process. Whether any such tracking process is in play at PTO is unknown.

“The thing that is most interesting to me is that people are challenging these IPRs,” usually with little success, Heim said. “At a high level, this is at least a first chink in the [IPR] process,” he said, adding that PTO director Andrei Iancu is widely appreciated for his efforts to clean up the IPR process. Still, the statute is the issue, and so “the fix is a change in the statute and the regulation to allow a more enhanced review process.”

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