FULL COURT PRESS: Arthrex Reconsideration Efforts Continue
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...
PTAB Statistics Through Four Months of 2020
By Matt Johnson – The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through January 31, 2020) stands at 56% compared to 63% in the previous fiscal year. While a relatively small sample size (204 instituted, 161 denied), this is a number...
PTAB Rules Certificate of Correction is Not Retroactive in IPR
By Kenny Luchesi - On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively. After the IPR petition was filed, the...
Same or Similar Art Mutes IPR Petition on Medical Device Patent
By Dave Cochran - 35 U.S.C. § 325(d) gives the PTAB discretion to deny a petition for inter partes review when the same or substantially the same prior art or arguments were previously before the Office – including during original examination, reexamination, or a...
CAFC Holds PTAB May Not Cancel Claims For Indefiniteness In An IPR
By Sue Gerber and Matt Johnson - The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., --- F.3d ---, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not cancel...