CAFC OKs Interim Director Actions

The first Arthrex battle at the SCOTUS was an attempt to pull down the PTAB system based upon a violation of the Appointments Clause. That effort failed, and instead, the Court simply allowed for a principal officer, the Director, to review Final Written Decisions (FWDs). Then, when Director Iancu stepped down, the interim Director took over the Director Review functions. Arthrex II argued that this was substitution was improper as the interim Director was not a political appointee (i.e., Senate confirmed).

Neither of these disputes were of much interest to to me. In my view the first challenge was always going to end in some kind of remedy that would have little impact on PTAB practice, and the second, at best, was just going to end up with a new signature on the same Director Review decision.

So, it was not surprising when Arthrex II fizzled out last week.Continue Reading Arthrex II Fizzles

New Director to Review Hirshfeld Decisions?

Patent Owners that had the option to avail themselves of the new Director Review process under former interim Director Hirshfeld have been crying foul to the Federal Circuit. Their argument being that the Arthrex holding required a Senate confirmed Director Review, and that an interim Director (promoted from within) did not meet that criteria. Argument was heard a month or so back at the Federal Circuit on this issue.

Since that time, Senate confirmed Director Vidal has finally taken the wheel. Realizing this, the gov’t now hopes to pull the plug on these appeals.Continue Reading More PTAB Arthrex Remands?

Court Explores Potential Outcomes in Arthrex

As I have discussed previously, Arthrex is more of an academic exercise for constitutional and administrative law nerds scholars than anything else.  Today’s oral argument has done nothing to disabuse me of that notion.  While it is a fool’s errand to speculate at a SCOTUS outcome based on oral arguments, I am the perfect man for the job 🙂Continue Reading USPTO Director May Soon Get Last Word at PTAB

Remands Held in Abeyance Until Arthrex Exhausts Appeals

Last Friday, the Chief Judge of the Patent Trial & Appeal Board (PTAB) issued a general order directed to the growing number of Arthrex remands, now totaling over 100 cases. The order (here) explains:

Several parties in Board matters that have been subject to [remand

CAFC Provides Last Word in PTAB Appointments Clause Debate

Given the remands that have been flowing back to the Patent Trial & Appeal Board (PTAB) from the Federal Circuit over the past few weeks, the writing has been on the wall as to en banc rehearing in Arthrex v. Smith & Nephew Inc.  The Court officially denied rehearing today.  Still, the 62 pages of differing viewpoints offered by the Court in its denial of rehearing essentially presented the Court’s collective reasoning anyway.

The per curiam opinion explained the earlier decision in the context of the dissenting views. That is, as between striking down the AIA and severing Title 5 protections for administrative patent judges, Congress was more likely to favor the latter.Continue Reading Arthrex & 81 PTAB Remands

CAFC Holds Petitioner to PTAB Choice

While we await the en banc determination in Arthrex/Polaris, there have been a number of recent remands back to the PTAB (i.e., where the Appointments Clause issue was first raised in the opening appellate brief). Given this, it may be that the Federal Circuit remains unimpressed with the government’s argument that failure to raise the issue before the PTAB results in forfeiture of the argument.  Still, given the supplemental briefing in Polaris as to the sufficiency of the Arthrex remedy, I am still expecting that at least this aspect of the debate is taken up en banc.

In the meantime, the Federal Circuit has made clear that the Appointments Clause issue will not benefit failed PTAB petitioners.Continue Reading No Arthrex Relief for Failed PTAB Petitioners

Arthrex Argument Being Added to Briefs

As detailed back in December, the government has sought en banc rehearing in Arthrex. In its petition, the government revisited the bases for the Court’s October decision and encouraged the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency).

In its Reply of last week, the government once again focuses on forfeiture, arguing that raising an Appointments Clause issue on appeal is too late.  To emphasize the issue, the Reply lists all of the newly filed appeals raising the issue for the first time.
Continue Reading Gov’t Warns CAFC Over Growing Arthrex Docket

Gov’t Questions Fundamental Aspects of Court Decision

As promised, the government has now sought en banc rehearing in Arthrex. In its petition, the government revisits the bases for the Court’s October decision and encourages the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency)

I think it is safe to predict the CAFC takes this one up.Continue Reading En Banc CAFC to Debate PTAB Appointments Clause Issue