By Steph Brooker and Matt Johnson

The Court of Appeals for the Federal Circuit (CAFC) has denied the United States Patent and Trademark Office’s (USPTO) unopposed motion to stay its mandate issued in Arthrex.  The USPTO filed its motion seeking a 90 day stay on March 26 while awaiting Supreme Court review of any petition for a writ of certiorari.  Appellant Arthrex filed its response in support of the stay motion a day later.  While no writs have been filed to date, based on the papers both the USPTO and Arthrex intend to file them.

In its motion, the USPTO stressed that the remands associated with Arthrex pose considerable burdens on both the USPTO as well as the private parties involved.  In denying the motion, the unpersuaded CAFC reiterated that the Arthrex decision impacts “no more than 81 cases” and that the Patent Trial and Appeal Board (PTAB) “has more than 250 members” who can handle these remands.

The CAFC’s denial prompts the question – when will the USPTO adjudicate the remands for those Arthrex impacted decisions?  There are indications that the PTAB may be inclined to wait until after the Supreme Court reviews any writs.  In its stay motion, the USPTO mentions the possibility of delaying remands until the constitutional issue is addressed by the Supreme Court at least twice.  While discussing possible burdens associated with the CAFC mandate, the USPTO acknowledged that if “the agency instead defers the remanded proceedings until the constitutionally issue has been finally resolved” burdens will accrue.  The USPTO also noted that burdens would further accrue to the CAFC if the USPTO chooses to “exercise[] its discretion to hold remanded case in administrative abeyance until it is clear whether [Arthrex] will undergo further review in the Supreme Court.”  In both statements, the USPTO stresses that it has discretion to delay the remands.  The order denying the motion to stay the mandate includes at least a tacit agreement from the CAFC that the PTAB has discretion to wait to begin tackling Arthrex remands.  Specifically, the order notes in its denial that “the question of timing of such proceedings, at least as an initial matter, [is] in the Board’s hands.”

We will continue to monitor and report on developments.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.