By Pablo Hendler –
On May 1, 2020, the PTAB’s Chief Administrative Patent Judge Scott R. Boalick issued a General Order holding in administrative abeyance more than 100 matters and “any other matters remanded by the Federal Circuit under Arthrex.”
As was previously reported here, in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), the Federal Circuit found the appointments of Patent Trial and Appeal judges unconstitutional. The Federal Circuit refused to stay that decision, and denied panel rehearing and rehearing en banc.
Since Arthrex, the Federal Circuit has applied its decision to order the remand of a number of PTAB decisions. Indeed, the instant General Order describes that,
The United States Patent and Trademark Office (“Office”) has received from the [CAFC] numerous Orders that rely on the Federal Circuit’s [Arthrex] decision. Those Orders have already vacated more than 100 decisions by the [Board], and more such Orders are expected. The Orders instruct the Board to conduct further proceedings on remand before newly-designated Board panels.
(General Order at 1.) In addition to the remanded decisions, “parties are contacting the Board to schedule teleconferences [per SOP 9] with the appropriate Board panel in their proceeding.” (Id.)
To avoid burdening the Office and the parties until all appellate rights have been exhausted, [Chief Judge Boalick] decided to exercise [his] discretion to: (1) suspend the requirements in SOP 9 in cases remanded by the Federal Circuit under Arthrex; and (2) hold all such cases in administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing such petitions expires.
(Id. at 1-2.) The General Order goes on to hold in abeyance 103 specifically-identified matters, including pending applications, CBMs and IPRs, as well as “any other matters remanded by the Federal Circuit under Arthrex.” (Id. at 2-6.)