Wednesday, October 13, 2021

Mobility Workx case at the CAFC

The outcome:

Mobility Workx (“Mobility”) appeals a decision of the Patent Trial and Appeal Board (“Board”) determining that claims 1, 2, 4, 5, and 7 of U.S. Patent No. 8,213,417 (the “’417 patent”) were unpatentable as obvious. In addition to requesting a remand under United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), and challenging the merits of the Board’s decision, Mobility raises for the first time on appeal several additional constitutional challenges, including a challenge to the structure of the Board. We first address these other constitutional challenges because a determination that the Board is unconstitutionally structured or that the proceedings are otherwise unconstitutional would dispose of the case and make consideration of the Arthrex issue or the merits unnecessary. We conclude that Mobility’s constitutional arguments are without merit. Without reaching the merits of the Board’s decision, in light of Arthrex, we remand to the Acting Director to determine whether to grant rehearing.

Judge Newman said

The Court in Arthrex did not discuss any other aspect of this new (since 2012) system whereby issued patents are subject to review and cancellation by the Patent and Trademark Office (PTO). Mobility Workx raises several issues concerning this system, including constitutional issues. In addition, the Court’s Arthrex decision now raises another possible Appointments Clause concern, stemming from the PTO’s conduct of the procedure of “institution.” From my colleagues’ endorsement of the status quo, I respectfully dissent.

The procedure called “institution” was established by the America Invents Act in response to concerns that the proposed system of agency review would be subject to abuses such as harassment, delay, and opportunistic attacks on valuable patents, for there is no requirement of an Article III controversy for these agency proceedings, although the statute provides for cancellation (or enforcement) of property rights. The procedure of “institution” is intended to provide a safeguard against unwarranted agency procedures by requiring petitioners to meet an “elevated threshold” and establish “serious doubts about the patent’s validity” before subjecting the patent owner to the burden and delay of this new procedure. 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). Senator Kyl explained:


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