House Judiciary Told Legislative Fix to Arthrex Defect is Necessary

Unanimous Support for Legislative Fix

Today, the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the current Federal Circuit solution was effective in curing the Appointments Clause defect, while there was some debate over whether the “fix” would hold, all of today’s witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.

The  witnesses in today’s hearing were:

John F. Duffy  – Samuel H. McCoy II Professor of Law, University of Virginia School of Law (testimony here)
Robert A. Armitage – Consultant, IP Strategy & Policy (testimony here)
John M. Whealan – Intellectual Property Advisory Board Associate Dean for Intellectual Property Law Studies, George Washington Law School (testimony here)
Arti K. Rai – Elvin R. Latty Professor of Law and Faculty Director, The Center for Innovation Policy, Duke University School of Law (testimony here)

Throughout the testimony, all witnesses agreed that providing the Director of the USPTO the right to review any PTAB decision (akin to commission review at the ITC) would fix the constitutional infirmity. Given the rare unanimity, and the point that this debate will be litigated for years if Congress does not act, I would expect to see a technical fix easily passed in early 2020.  The hearing briefly explored other aspects of AIA trials that Congress might want to “look at” while working on this change, this discussion was mostly political theater. Any technical fix would need to happen quickly, and would not be weighed down by more controversial changes.

Scott A. McKeown is an author of the Patents Post Grant