News & Analysis as of

Patent Trial and Appeal Board Appointments Clause Appeals

McDermott Will & Emery

An Odyssey of Timeliness: Appointments Clause Arguments Must Be Preserved

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Citing forfeiture, the US Court of Appeals for the Federal Circuit upheld the dismissal of a complaint against the US Patent & Trademark Office (PTO). The complaint sought director review of a 2018 Patent Trial & Appeal Board...more

McDermott Will & Emery

Review Delayed Is Not Review Denied

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Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written...more

McDermott Will & Emery

The Board Is Back in Town: Arthrex Can’t Save Untimely Motions to Terminate

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) unpatentability finding and denial of a motion to terminate, finding that the Board had already issued final written decisions...more

McDermott Will & Emery

Not “Use It or Lose It”: Even if Unexercised, Director’s Authority over Institution Decisions Remains

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The US Court of Appeals for the Federal Circuit denied mandamus relief, finding that a party is not entitled to petition the director for review of a Patent Trial & Appeal Board (Board) decision denying institution of an...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022: Short Take: Latest Arthrex Update

On Friday May 27, 2022, the Federal Circuit added another opinion to the Arthrex line of cases. As a short refresher, Arthrex was back at the Federal Circuit after being remanded to the Board for Director Review after Patent...more

Fitch, Even, Tabin & Flannery LLP

Commissioner of Patents Had Authority to Review IPRs While Moonlighting as USPTO Director

On May 27, in Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit agreed that the Commissioner for Patents, performing the duties of the Director of the USPTO, had the authority to decide a request for rehearing of a...more

McDermott Will & Emery

Arthrex, Still Without Director Review, Gets Constitutional Review from Patent Commissioner

A panel of the US Court of Appeals for the Federal Circuit considered whether the Patent Commissioner, on assuming the role of the US Patent & Trademark Office (PTO) Director, can constitutionally evaluate the rehearing of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Fitch, Even, Tabin & Flannery LLP

PTAB’s Structure and Funding Pass Due Process Muster

On October 13, in Mobility Workx v. Unified Patents, LLC, the Federal Circuit rejected a series of due process challenges to the structure of the Patent Trial and Appeal Board (PTAB), leaving the PTAB to continue with...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2021: Potential Pecuniary Interest In Instituting More AIA Proceedings Not Enough To...

We previously published an article discussing patent owner’s due process challenges based on alleged pecuniary interests of the Office and Administrative Patent Judges instituting cases to meet production goals and increase...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

McDermott Will & Emery

PTO’s Financial Benefits from IPR Don’t Render PTAB Unconstitutional

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A split panel of the US Court of Appeals for the Federal Circuit concluded that the structure and functions of the Patent Trial & Appeal Board (PTAB) survived yet another constitutional challenge, this time based on the...more

Foley & Lardner LLP

Carr v. Saul – Has the Court Tired of Issue Exhaustion? Potential Effects on Arthrex

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On April 22, 2021, the Supreme Court decided Carr v. Saul, a case with interesting parallels to Arthrex, which deals with appointments clause challenges to the PTAB judges and which will be decided later this Term. In Carr,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Snell & Wilmer

Supreme Court Grants Certiorari to Decide if PTAB Judges Are Constitutional

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Are PTAB judges constitutional? This week the Supreme Court granted certiorari to answer this question. In Arthrex v. Smith & Nephew, the Federal Circuit considered whether the appointment of administrative patent judges...more

Mintz - Intellectual Property Viewpoints

Fate of PTAB Judges and Decisions Now in Hands of Supreme Court

On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions. First, did the...more

Foley & Lardner LLP

PTAB Waits as Supreme Court Considers Arthrex Certiorari Petitions

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It has been almost eleven months since the Federal Circuit held in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, that PTAB judges were principal officers appointed in violation of the Constitution, and held that the...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (September 7-11): Another Arthrex Follow-on

Maybe it was the end of summer and the start of fall, or the kids (kind of) going back to school. But whatever it was, last week the Court issued only one precedential decision, in a veteran’s benefits case. All said, the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2020: Appeals Raise Constitutional Challenge to PTAB Fee and Compensation Structure

Appellants in New Vision Gaming & Development v. SC Gaming, Inc. f/k/a Bally Gaming, Inc. and Mobility Workx, LLC v. Unified Patents, LLC challenge the constitutionality of the administrative patent judge (APJ) incentive...more

McDermott Will & Emery

Federal Circuit Extends Arthrex to Ex Parte Re-Examination Proceedings

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The US Court of Appeals for the Federal Circuit vacated and remanded a decision issued by the Patent Trial and Appeal Board (PTAB), holding that its decisions in Arthrex and VirnetX also apply to ex parte examinations at the...more

McDonnell Boehnen Hulbert & Berghoff LLP

U.S. Government Petitions for Certiorari in Arthrex Case

Last fall, the Federal Circuit decided in Arthrex, Inc. v. Smith & Nephew, Inc. that Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB) were principal officers and thus had been improperly...more

McDermott Will & Emery

Arthrex Extended to Inter Partes Re-examination

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The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board...more

Knobbe Martens

IPR Petitioners May Not Raise Appointments Clause Challenges Under Arthrex

Knobbe Martens on

CIENA CORPORATION v. OYSTER OPTICS, LLC - Before Moore, O’Malley, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Affirmatively petitioning for IPR waives the petitioner’s Appointments Clause...more

McDermott Will & Emery

“Waive” Goodbye to Belated Argument that Administrative Patent Judges’ Appointment is Unconstitutional

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Addressing whether a party can waive a challenge to the constitutionality of Administrative Patent Judges’ (APJs’) appointment, the US Court of Appeals for the Federal Circuit found that the issue is non-jurisdictional and...more

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