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The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

On June 21, 2021, the Supreme Court issued a decision vacating the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). As we previously explained, the Federal Circuit in Arthrex held that the AIA was unconstitutional in that administrative patent judges (APJs) have the authority of principal officers, but the statute provides for their appointment by the Secretary of Commerce, rather than by the President with the advice and consent of the Senate.
Continue Reading The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision denying rehearing here. The Supreme Court, at the government’s recommendation, asks the parties to address the following two questions.
Continue Reading Supreme Court to Review the Arthrex Decision

The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an appeal for that.
Continue Reading The Arthrex Mulligan

After the Supreme Court’s decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the process last year (link) and received more than 4,000 responses (link)! The process has yet to be formalized via traditional notice and comment rulemaking, though someday, perhaps, it will. Until then, the Patent Office continues to offer new updates and information, most recently on July 24, 2023.Continue Reading PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte Appeals

Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link).

The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Mar. 23, 2020) (en banc). Apparently neither of the parties nor the government (PTO) found the original panel’s Halloween-day decision satisfying. Five separate opinions accompanied the order, which was hardly unanimous. One third of the circuit judges dissented, some having previously stated that aspects of the original panel decision were wrong.
Continue Reading A Fine Mess

If the Federal Circuit’s decision in Arthrex wasn’t sufficiently newsworthy, then look at what lurks in its wake. The day after the decision, the court issued precedential orders indicating that a timely Constitutional challenge apparently must be presented to the court in an opening brief. A few days after those orders, two of the court’s most senior active-service judges said that the court’s remedy in Arthrex (i) wasn’t required by Supreme Court precedent, (ii) imposed unnecessary burdens on all involved in AIA trials, (iii) requires hundreds of new proceedings, and (iv) involves decision-making that is itself unconstitutional. And a day later, another panel of the court issued an order soliciting briefing on those and other issues left in Arthrex’s wake, tacitly questioning the Arthrex panel’s decision.Continue Reading Haste Makes Waste?

In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel of APJs canceling claims in Arthrex’s patent in a recent inter partes review (IPR). But because that decision occurred while there was an Appointments Clause violation, the court vacated and remanded the IPR to be decided by a different panel of APJs.
Continue Reading Fixing an Appointments Clause Violation

In Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239 (Fed. Cir. Jan. 24, 2018), the Federal Circuit affirmed the PTAB’s entry of adverse judgment against Patent Owner Arthrex, before instituting inter partes review. Specifically, the PTAB entered judgment after Arthrex had disclaimed all challenged claims, but before the PTAB decided whether to institute a trial. As a result of the PTAB’s adverse judgment, the Patent Owner is estopped, under 37 C.F.R. § 42.73(d)(3)(1), from obtaining another claim in a continuation application, for example, that is “not patentably distinct” from a canceled claim. Estoppel would not have applied if the PTAB would have instead decided not to institute the IPR.
Continue Reading Patent Owner Estoppel May Apply When Patent Owner Cancels Claims Before IPR Institution

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.