By Emily Tait and Nate Andrews –

The Federal Circuit continues to be flooded with petitions to revisit its panel decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, No. 2018-2140 (Fed. Cir. 2019).  As previously discussed, all three parties in Arthrex filed petitions for en banc rehearing—and those petitions remain pending.  Parties in other cases also have asked the full Court to address issues related to ArthrexSee e.g., Bedgear, LLC v. Fredman Bros. Furniture Company, Inc., No. 2018-2082 (petition filed Jan. 8); Customedia Technologies, LLC v. Dish Network Corp., No. 2019-1001 (petition filed Jan. 7); Sanofi-Aventis Deutschland v. Mylan Pharmaceuticals Inc., No. 2019-1368 (petitions filed Dec. 19 & 20); Duke University v. BioMarin Pharmaceutical Inc., No. 2018-1696 (petition filed Dec. 11).

This past week, petitions were filed by the U.S. government (as intervenor) and Polaris Innovations (the appellant and patent owner) in Polaris Innovations Ltd. v. Kingston Technology Company, No. 2018-1831.  See government petition and Polaris petition.  In Polaris, the panel vacated and remanded a PTAB final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits (i.e., the holding that Administrative Patent Judges on the PTAB are unconstitutionally appointed “principal officers”) and questioned the remedy of the Arthrex panel (i.e., severing their removal protections so as to render them constitutionally appointed “inferior officers”).  Notably, the government argues that the Court should rehear Polaris “in tandem with Arthrex” because Polaris (unlike the patent owner in Arthrex) “preserved its Appointments Clause challenge before the Board[]” and thus Polaris provides “a vehicle for this Court to address the merits of the constitutional question in the event the Court agrees with the government that the patent owner’s forfeiture of the Appointments Clause challenge in Arthrex should not have been excused.”  U.S. Polaris Pet. at 6.  Citing clarity and fairness, the government argues that “[a]ddressing the merits of the constitutional question in the context of a preserved challenge such as this one would provide clarity going forward, while not affording a windfall to litigants who may have remained silent before the agency for strategic reasons.”  Id. at 6-7.

It is worth noting that some other petitions for rehearing have taken the opposite position on the forfeiture issue—for example, the petitions in the Customedia, Duke, and Sanofi cases each argue that Arthrex represents a “significant change in law” and thus the Appointments Clause challenge is not waived when it was not raised in the opening brief on appeal.  The petitions in Duke and Sanofi have been rejected, but the petition in Customedia is still pending.

Whether and to what extent the full Federal Circuit revisits the various issues raised by Arthex remains to be seen.  We will continue to monitor and report on Arthrex-related developments.

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Emily Tait

Emily J. Tait has 15 years of experience counselling clients in all facets of intellectual property law including patent, trademark, copyright, and trade secret litigation in federal courts across the United States, as well as cases involving cybersecurity breaches, software theft, and data piracy.