PTAB Snapshot – A Quarterly Report on Trends and New Precedent at the PTAB – Q3

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. 

Key Takeaways:

• Arthrex seemingly will have little impact on prior and future IPR Final Written Decisions (“FWDs”).
• Parties will now have the ability to seek Director review of IPR FWDs, but there is no requirement for the Director to actually substantively review FWDs.
• The new Director review process may provide a vehicle for the PTAB to better address panel splits and uncertainty over PTAB application of the law and statutes.
• New challenges similar to those made by Arthrex are likely to be made, but such challenges are likely to be unsuccessful.