This week’s decision basically incorporates a new chain or authority for patent appeals, established by the Supreme Court in another case last summer when it concluded that final authority given to the appeals board is not constitutional. That ruling said the patent office’s director should have the right to review appeals board decisions, so Infineum will now ask the office to order that the case be reheard.

The case revolves around a dispute that arose between Infineum and Oronite after the International Lubricant Standardization and Approval Committee introduced the GF-3 specification in 2001. Infineum, a chemical additive joint venture between ExxonMobil and Shell, filed a suit accusing Oronite of violating one of its patents, referred to as the 685 patent, for a lubricant formulation qualified as meeting GF-3.

In response, Oronite complained to the Patent and Trademark Office that Infineum’s patent should be invalidated because it did not clear a bar for obviousness, based on information that was then already in the public domain. After a long series of hearings, the Patent Trial and Appeals Board granted Oronite’s request. Infineum appealed the decision to the U.S. Court of Appeals for the Federal District, which upheld the decision on Jan. 21, 2021.

But then came the Supreme Court’s decision striking down the appeals board’s final authority. That case revolved around medical device manufacturer Arthrex Inc., and a patent it holds on a knotless suture assembly used in skin and tendon grafts. After the appeals board granted a request to invalidate that patent, Arthrex sued, claiming that method of selecting patent judges for the appeals board – they are appointed by Secretary of Commerce – violates the Appointments Clause of the U.S. Constitution, which states that principal officers must be appointed by the president with advice by the Senate.

In a 5-4 decision, the high court sided with that argument, finding that authority given to the appeals board is great enough for the Appointments Clause to apply. Its remedy was to give the Patent and Trademark Office director, who acts on behalf of the Secretary of Commerce, authority to review appeals board rulings and to make his or her own decisions.

The Infineum case is one of a number that the court has since directed to be sent to the director of the Patent and Trademark Office. Commissioner of Patents Drew Hirshfeld is current acting director. President Joseph Biden has not yet filled the office of Under Secretary for Intellectual Property and Director of the U.S Patent and Trademark Office, but he nominated Silicon Valley lawyer Kathi Vidal. Her appointment must be confirmed by the Senate.