The Federal Circuit’s decision on May 27, 2022 in Arthrex Inc. v. Smith & Nephew Inc. et al., set forth that Patent Commissioner, Drew Hirshfeld, was within the bounds of the U.S. Supreme Court’s United States v. Arthrex...more
In Carr v. Saul, the U.S. Supreme Court unanimously held that a party can raise a challenge under the Constitution’s Appointments Clause to an Administrative Law Judge’s (“ALJ”) decision, even if the party did not raise the...more
An April 13, 2021 decision by the Federal Circuit denied a motion to vacate and remand PTAB decisions based on the Federal Circuit’s October 2019 decision in Arthrex v. Smith & Newman, Inc., et al., 941 F.3d 1320 (Fed. Cir....more
On Tuesday, the Supreme Court granted certiorari in the three appeals from the Federal Circuit’s Arthrex decision, consolidating those three cases for briefing and argument. The questions to be presented are as follows...more
On March 30, 2020, the Federal Circuit relied on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) to vacate and remand several related PTAB decisions, including in proceedings where the patent owner did...more
On March 23, 2020, the Federal Circuit issued a per curiam order denying rehearing and rehearing en banc in Arthrex. See Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order Denying Rehearing and Rehearing En Banc, Dkt....more
The Court of Appeals for the Federal Circuit (CAFC) has denied the United States Patent and Trademark Office’s (USPTO) unopposed motion to stay its mandate issued in Arthrex. The USPTO filed its motion seeking a 90 day stay...more
The full Federal Circuit denied rehearing in Polaris. Polaris Innovations Ltd. v. Kingston Technology Company, No. 2018-1831. As previously discussed, both the U.S. government and Polaris requested rehearing after the court...more
On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the...more
2/15/2020
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
USPTO ,
Vacated
January 17 Update: On January 17, each of the parties filed responses to the rehearing petitions -
As we have previously discussed on this blog and elsewhere, the Federal Circuit’s decision in Arthrex v. Smith & Nephew...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
The Federal Circuit and the patent world continues to grapple with the court’s decision in Arthrex v. Smith & Nephew. Since our last updates, the parties in Arthrex and other cases have continued the push for en banc...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
USPTO ,
Vacated
The Federal Circuit’s decision in Arthrex v. Smith & Nephew excited and disrupted the patent world... Inter partes review (IPR) reshaped patent law and patent litigation this decade after the America Invents Act took effect....more
12/17/2019
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Appellate Briefs ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit has held that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board ("PTAB") were in violation of the Appointments Clause of the U.S....more
Following on Judge Newman’s dissent in Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., parties are seeking to preserve their rights by challenging the Federal Circuit’s holding that a party’s failure to raise...more
Last Thursday, the Federal Circuit found the appointments of Patent Trial and Appeal judges unconstitutional, in part because the judges do not receive sufficient oversight from the Director of the United States Patent and...more
11/6/2019
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Officers of the United States ,
Patent Act ,
Patent Trial and Appeal Board ,
Presidential Appointments ,
Remand ,
Removal At-Will ,
Vacated
On Thursday, a panel of the Federal Circuit found that PTAB judges have to date been unconstitutional appointments. The panel thinks that it has cured that issue going forward by severing a portion of Title 35 that allows for...more
Rumors of the PTAB’s demise were greatly exaggerated, it turns out. In a 7-2 decision, the Supreme Court held on Tuesday that Inter Partes Reviews (IPRs) violate neither Article III nor the Seventh Amendment of the...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
On Monday, the Supreme Court heard arguments regarding the constitutionality of PTAB post-grant trials in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, No. 16-712 (U.S.). The question posed to the Court is...more
On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, to decide whether inter partes review (IPR) violates the Constitution by extinguishing patent rights...more
7/4/2017
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Invalidity ,
Patents ,
Private Property ,
Public Property ,
Right to a Jury ,
SCOTUS ,
Stays