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Supreme Court rule On Monday, more than 200 administrative patent judges at the US Patent and Trademark Office must be subject to greater supervision by the director of the agency to comply with the constitutional appointment provisions.

The decision is United States v. Arthrex, Inc. Was torn apart. The court ruled 5 to 4 that the powers exercised by the patent judge were not constitutional because the patent judge was not nominated by the president and confirmed by the Senate. The court also ruled on a 7-2 score that the appropriate remedy for this constitutional issue is to give the Director of the United States Patent and Trademark Office the ability to review and change the decision of the patent judge. Chief Justice John Roberts wrote an opinion for the court. Justice Clarence Thomas disagreed. The four judges partly agreed and partly disagreed in each part of the decision.

Ten years ago, Congress passed the Leahy-Smith American Inventions Act, creating a new administrative litigation system in which almost anyone can question the validity of existing patents. In order to monitor the litigation, Congress established the Patent Trial and Appeal Board (PTAB) within the United States Patent and Trademark Office (an agency of the Department of Commerce). The adjudicators of this committee are called administrative patent judges. Unlike the third judge and other “principal officials” appointed by the president and confirmed by the Senate, patent judges are appointed by the Secretary of Commerce without confirmation by the Senate.

Arthrex’s patent was challenged by Smith & Nephew and was declared invalid by the board of directors. In the appeal, it was argued that the appointment of the patent judge was unconstitutional. The U.S. Court of Appeals for the Federal Circuit agreed, ruling that the appropriate remedy is to cancel the term protection of the patent judge and conduct a new hearing before the board of directors. Arthrex, Smith & Nephew, and the government all asked the Supreme Court to weigh in. Arthrex argued that the Federal Circuit’s remedies did not resolve constitutional issues and Congress should determine appropriate remedies. Arthrex also argued that the invalidation decision of the board of directors should therefore be overturned. Smith & Nephew and the government both argued that patent judges were appointed in accordance with the Constitution, but they disagreed with how the court should deal with remedies if the court considers that there are constitutional flaws.

In Monday’s ruling, the five judges believed that the patent judges’ “unexamineable authority” in patent litigation was inconsistent with their appointment by the Secretary of Commerce. Roberts wrote that only appropriately appointed principal officials can exercise this power. Justices Samuel Alito, Neil Gorsuch, Brett Kavanaugh, and Amy Coney Barrett also joined him.

Regarding remedies, Roberts wrote: “A tailor-made approach is appropriate.” The American Inventions Act “cannot be enforced constitutionally to the extent that its requirements prevent [the USPTO director] Final decision from review [administrative patent judges],” Roberts wrote. And since Congress has delegated the power of the USPTO to directors, the appropriate remedy is that the directors “can review the final decision of the PTAB accordingly and issue the decision on behalf of the committee after the review. Alito, Kavanaugh, and Barrett joined the holding. Gorsuch did not. Justice Stephen Breyer (joined by Justices Sonia Sotomayor and Elena Kagan) wrote a consent form, Disagreed with the reservation of the appointment clause, but agreed with Roberts’ remedy, thus providing a total of seven votes for the remedy.

Importantly, the decision will not overturn the previous decision of the administrative patent judge panel. It only provides an opportunity for litigants to request discretionary review of the decision of the patent judge of the United States Patent and Trademark Office.

Please continue to pay attention to the in-depth analysis of the decision.