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Supreme Court of the United States
March 1, 2021, Argued; June 21, 2021, Decided 1
Nos. 19-1434, 19-1452 and 19-1458.
Chief Justice Roberts delivered the opinion of the Court with respect to Parts I and II.
The validity of a patent previously issued by the Patent and Trademark Office can be challenged before the Patent Trial and Appeal Board, an executive tribunal within the PTO. The Board, composed largely of Administrative Patent Judges appointed by the Secretary of Commerce, has the final word within the Executive Branch on the validity of a challenged patent. Billions of dollars can turn on a Board decision.
] Under the Constitution, “[t]he executive Power” is vested in the President, who has the responsibility to “take Care that the Laws be faithfully executed.” Art. II, §1, cl. 1; §3. The Appointments Clause provides that he may be assisted in carrying out that responsibility by officers nominated by him and confirmed by the Senate, as well as by other officers not appointed in that manner but whose work, we have held, must be directed and supervised by an officer who has been. §2, cl. 2. The question presented is whether the authority of the Board to issue decisions on behalf of the Executive Branch is consistent with these constitutional provisions.
The creation of a workable patent system was a congressional priority from the [*9] start. The First Congress established the Patent Board—consisting impressively of Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph—to issue patents for inventions they deemed “sufficiently useful and important.” §1, 1 Stat. 109-110. Jefferson, a renowned inventor in his own right, “was charged with most of the responsibility” to administer the new patent system. Federico, Operation of the Patent Act of 1790, 18 J. Pat. Off. Soc. 237, 238-239 (1936). The Patent Board was a short-lived experiment because its members had much else to do. Jefferson candidly admitted that he had “been obliged to give undue & uninformed opinions on rights often valuable” without the “great deal of time” necessary to “understand & do justice by” patent applicants. Letter from T. Jefferson to H. Williamson (Apr. 1, 1792), in 6 Works of Thomas Jefferson 459 (P. Ford ed. 1904).
In 1793, Congress shifted to a registration system administered by the Secretary of State. See 1 Stat. 319-321. The Secretary no longer reviewed the substance of patent applications but instead issued patents through a routine process “as a ministerial officer.” Grant v. Raymond, 31 U.S. 218, 6 Pet. 218, 241, 8 L. Ed. 376 (1832). The courts would make the initial determination of patent [*10] validity in a subsequent judicial proceeding, such as an infringement suit. See 1 Stat. 322. This scheme unsurprisingly resulted in the Executive Branch issuing many invalid patents and the Judicial Branch having to decide many infringement cases. See S. Doc. No. 338, 24th Cong., 1st Sess., 3 (1836). Judge William Van Ness—who before taking the bench had served as second to Aaron Burr in his duel with Alexander Hamilton—lamented that Congress had left the door “open and unguarded” for imposters to secure patents, with the consequences of “litigation and endless trouble, if not total ruin, to the true inventor.” Thompson v. Haight, 23 F. Cas. 1040, 1041-1042, F. Cas. No. 13957 (No. 13,957) (CC SDNY 1826). Congress heeded such concerns by returning the initial determination of patentability to the Executive Branch, see 5 Stat. 117-118, where it remains today.
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
2021 U.S. LEXIS 3124 *
UNITED STATES, PETITIONER v. ARTHREX, INC., ET AL.; SMITH & NEPHEW, INC., ET AL., PETITIONERS v. ARTHREX, INC., ET AL.; ARTHREX, INC., PETITIONER v. SMITH & NEPHEW, INC., ET AL.
Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.
Prior History: [*1] ON WRITS OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 2019 U.S. App. LEXIS 32613, 2019 WL 5616010 (Fed. Cir., Oct. 31, 2019)
Disposition: 941 F. 3d 1320, vacated and remanded.
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Constitutional Law, The Presidency, Appointment of Officials, Governments, Federal Government, Executive Offices, Administrative Law, Separation of Powers, Executive Controls, Patent Law, US Patent & Trademark Office Proceedings, Appeals, Congressional Duties & Powers, Copyright & Patent Clause, Business & Corporate Compliance, Patent Law, Reexamination Proceedings