Arthrex v. Smith & Nephew (Fed. Cir. 2018) [Anthrex Decision].

The dispute in this scenario is about what must come about when a patentee disclaims its patent promises prior to an inter partes critique institution determination.  The Arthrex patent at problem is U.S. Patent No. 8,821,541 which covers a suture anchor — comparable to a dry-wall anchor, but sticks into flesh.

Following Smith & Nephew submitted its IPR petition Arthrex disclaimed the challenged promises.  PTO guidelines point out that “No inter partes review will be instituted based on disclaimed promises.” 37 C.F.R. § 42.107(e). And, following the rule, the PTAB (acting pre-institution on in the shoes of the PTO director) terminated the petition without instituting the IPR.

Adverse Judgment: Pursuing the disclaimer, the Board also issued what it termed a “Judgment Granting [Patentee’s] Request for Adverse Judgment Just before Institution of Demo.”  The adverse judgment here is important due to the fact it carries with it estoppel in opposition to the patentee from “taking motion inconsistent with the adverse judgment, including obtaining in any patent . . . [a] declare that is not patentably distinctive from a lastly refused or canceled declare.”  37 C.F.R. § 42.73(d)(3)(i).  Anthrex is has continuation applications pending with comparable promises that would seemingly be impacted.

Request for Adverse Judgment. On appeal, Anthrex took problem with the Board’s willpower that it experienced “requested” an adverse judgment. Alternatively, in its preliminary reaction to the IPR, Anthrex particularly mentioned that it was not requesting an adverse judgment. On appeal although, the Federal Circuit sided with the PTO — giving influence to 37 C.F.R. § 42.73(b)’s assertion that “disclaimer of the included application or patent” will be “construed to be a request for adverse judgment.”

The key trouble I have with the determination here is that it intermingles pre- and post- institution language.  This is reflected in the guidelines adopted by the PTO, but not in the precise AIA that individually spells out authority and treatment for IPR institution selections as as opposed with IPR trial.  Below, Anthrex seems to have not right challenged the PTAB’s authority to problem an adverse judgment pre-institution.

Adverse Judgment Affirmed.

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Notice – in the scenario the courtroom also discusses why it has jurisdiction above this particular appeal.

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The determination for the courtroom was penned by Judge Dyk and evidently joined by Judge O’Malley.  Judge O’Malley also wrote a concurring feeling explaining:

I generate individually to stage out that I have doubts about no matter whether the Director experienced the authority beneath 35 U.S.C. § 316 (or any other statutory provision) to problem that regulation [i.e., 37 C.F.R. § 42.73(b)] or no matter whether, if so, the regulation was properly promulgated.

The feeling is only a concurring feeling due to the fact the patentee here did not increase a facial problem to the regulation.

In addition to Judge O’Malley’s concurring feeling, Judge Newman wrote in dissent – arguing that the regulation must be interpreted as only making use of when an IPR is instituted.

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