Richard Torczon is Senior Counsel in the Washington, D.C., office of Wilson Sonsini Goodrich & Rosati, where he is a member of the patent litigation practice. Prior to joining the firm, Richard was an Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB), where, since 1996, he worked on patent interferences and appeals. During his tenure at the PTAB, he wrote more than a thousand opinions and orders on patent appeals, petitions, motions, and briefs. Richard was an early member of the interference trial section and authored many of the PTAB’s rules. He has experience in the full spectrum of technologies reviewed by the PTAB, including computer-based inventions, biotechnology, pharmaceuticals, chemicals and medical devices, and plant and design patents.
Before serving as a judge, Richard was an associate solicitor in the U.S. Patent and Trademark Office’s (USPTO’s) Office of the Solicitor, where he represented the USPTO on patent and trademark matters, particularly before the U.S. Court of Appeals for the Federal Circuit. Additionally, Richard was an Honors Attorney at the U.S. Department of Commerce, and prior to joining the government, he worked at the Adachi International Patent Law firm in Nagoya, Japan.
Richard has spoken extensively on legal ethics, effective arguments, and board-related topics at programs for numerous organizations, including the American Bar Association, the American Intellectual Property Law Association, the Virginia State Bar, and the New York Intellectual Property Law Association. He was a lecturer at the Patent Academy of the USPTO, starting in 1999.
As most of us know by now, in Arthrex, Inc. v. Smith & Nephew, Inc., entered on Halloween 2019, a panel of the Federal Circuit held that the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were improperly appointed, and remanded the case for a new decision by a properly appointed panel. Almost immediately after, the court entered two orders dismissing motions for remand because the issue had not been timely raised. See Customedia Technologies, LLC v. Dish Network Corp., Nos. 18-2239 & 19-1001 (Fed. Cir., Nov. 1, 2019) (the motions were inferred from letters to the court). The Federal Circuit remanded a case in which the issue had been timely raised. Uniloc 2017 LLC v. Facebook, Inc., No. 18-2251 (Fed. Cir., Oct. 31, 2019). Predictions about the effect on pending cases overlook that the vast majority of PTAB final decisions come in appeals from the patent examining corps. Any of the hundreds of applicants dissatisfied with a recent PTAB appeal decision could appeal to the Federal Circuit and then promptly move for remand to a different panel. A reader could be forgiven for feeling a sense of déjà vu: in In re DBC, the Federal Circuit similarly found that APJs had been improperly appointed, but the issue was quickly resolved and now is remembered as a minor footnote in patent case law. In re DBC, 545 F.3d 1373 (Fed. Cir. 2008). Arthrex holds the potential to be far more significant. Indeed, Arthrex may prove more trick than treat.