August 28, 2020

Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), has now been held to apply to PTAB panels in appeals from ex parte patent proceedings before the U.S. Patent & Trademark Office.  Specifically, ex parte reexamination proceedings (see In re JHO Intellectual Property Holdings, LLC, Appeal No. 2019-2330 (Fed. Cir. June 18, 2020) (nonprecedential)) and original prosecution proceedings (see In re Boloro Global Limited, 963 F.3d 1380 (Fed. Cir. 2020)).  Both decisions rely on VirnetX Inc. v. Cisco Systems, Inc., 958 F.3d 1333 (Fed. Cir. 2020), wherein the Court found that Arthrex applies in the context of inter partes reexaminations.  It seems, though, that IPR petitioners and reexamination requestors cannot seek remands under Arthrex, as parties seeking the PTAB as a forum to adjudicate the validity of a patent forfeit the right to challenge the legality of the PTAB’s ruling under the Appointments Clause. Ciena Corp. v. Oyster Optics, LLC, 958 F.3d 1157, 1161-62 (Fed. Cir. 2020).  Moreover, the Federal Circuit confirmed that Arthrex’s ruling is expressly limited to appeals from the PTAB where final decisions were issued prior to Arthrex, i.e., prior to October 31, 2019. Caterpillar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342 (Fed. Cir. 2020) (citing Arthrex, 941 F.3d at 1340).  Several petitions seeking review of the Arthrex holding are presently before the Supreme Court so the Arthrex line of cases is fluid and could shift in the coming months.