As expected, the government has informed the Federal Circuit of its intention to seek en banc rehearing in Arthrex Inc. v. Smith & Nephew, Inc. Having intervened in a number of cases seeking remand post-Arthrex the government has now moved to stay these proceedings pending its en banc petition.
Continue Reading Government Indicates En Banc Petition Forthcoming for Arthrex
During last week’s argument in Polaris, appellant argued that the Court’s fix to the PTAB’s Appointments Clause problem was insufficient. According to appellant, “reviewability” is the touchstone of recent Appointments Clause precedent, and that as the proposed fix did not address the lack of reviewability over APJ decisions (because the Federal Circuit could not), it was up to Congress to fix. During that same hearing, the Court contemplated additional briefing on this topic, which it recently solicited from the parties.
In the meantime, learning from its mistake in its recent Uniloc remand, the Federal Circuit is now allowing time for the government to intervene in parties seeking remand after Arthrex (here) and (here).
Continue Reading Lawmakers Consider Fix as CAFC Deals With PTAB Appointments Clause Fallout
With the ink barely dry on Thursday’s Federal Circuit ruling that the Administrative Patent Judges (APJs) of the Patent Trial & Appeal Board (PTAB) were unconstitutionally appointed, Appellant Notices of Supplemental Authority began to roll into the Court Friday morning. For Appellants that had appropriately raised the issue in their opening brief to the Court, some were remanded to the PTAB (Uniloc 2017 LLC. v. Facebook Inc.). Other such appeals were allowed to proceed to oral argument based, in part, on DOJ involvement. (such as today’s argument in Polaris Innovations Limited v Kingston Technology Co. Inc.)
For Appellants hoping to take advantage of the Appointments Clause development who had not briefed it, the Court found such arguments forfeited.
Continue Reading CAFC Quickly Shuts Down Belated Appointments Clause Arguments
On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in Arthrex Inc. v. Smith & Nephew, Inc. The Court has vacated and remanded the decision, ordering a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).
So, what does this mean for pending appeals?
Continue Reading CAFC: PTAB Judges Operating in Violation of Appointments Clause
As discussed last week, the Federal Circuit has requested supplemental briefing in Arthrex Inc. v. Smith & Nephew to assess how best to remedy a potential Appointments Clause violation. The supplemental briefing has now been submitted. While the Court deliberates whether it is appropriate to remand or vacate the Arthrex matter, the government’s brief and Appellee brief look to the potential impact in other PTAB appeals.
Continue Reading CAFC Warned Hundreds of PTAB Appeals Potentially Subject to Appointments Clause Fallout
The November edition of the PatentsPostGrant.com webinar series will be held Monday, November 4th@ 2-3PM (EST). The November program will focus on emerging appellate issues expected to drive PTAB practice in the months ahead.
The webinar is entitled: PTAB Reset 2020: Appointments Clause Turmoil & Appellate Docket
Back in June I explained the latest constitutional challenge to AIA Trial Proceedings under the Appointments Clause of the U.S. Constitution. In a nutshell, the argument is that PTAB Administrative Patent Judges (APJ) are “superior officers” delivering the final word of the government in PTAB trial proceedings. And that, as such, APJ actions are unconstitutional since they are not political appointees confirmed by the U.S. Senate — as the Appointments Clause requires.
That argument found its way to the Federal Circuit earlier this month in Arthrex Inc. v. Smith & Nephew, Inc. At oral argument, the Court probed the Director’s ability to remove APJs, and seemed concerned that this deficiency was enough to violate the Appointments Clause. An Order issued last week for additional briefing appears to reinforce the expectation that the Court will find the APJs functioning in violation of the Appointments Clause.Continue Reading Patent Owner Trick or Treat? – Appointments Clause Debate to Jolt PTAB
Since the Supreme Court’s decision in Cuozzo Speed, there has been speculation that there may be an opportunity to attack AIA trials on different constitutional grounds. Most recently, it was argued that cancellation of an improvidently granted patent constituted a 5th Amendment “taking.”
In Celgene Corporation v. Peter, perhaps not surprisingly, the Federal Circuit held that “IPRs do not differ significantly enough from preexisting PTO mechanisms for reevaluating the validity of issued patents to constitute a Fifth Amendment taking.”
While IPRs do not differ significantly from reexamination in scope, CBM proceedings do.
Continue Reading Will a Takings Challenge to CBM Proceedings Succeed?
The Supreme Court provided its most up-to-date guidance on the boundaries of Article III jurisdiction relative to acts of Congress in Patchak v. Zinke, No. 16-498. This decision, issued on February 27th, previews the varying perspectives that will drive the ultimate conclusion in Oil States.
Stating the holding of the Patchak plurality (6-3) most succinctly, and perhaps foreshadowing Oil States, Justice Ginsburg explained: “What Congress grants, it may retract.”Continue Reading Oil States Result Previewed by SCOTUS?