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Arthrex's Fallout - How is the Supreme Court Decision Affecting Appeals?

The Supreme Court rendered its decision in Arthrex v. Smith & Nephew back in June and now the impact of that decision is becoming more clear. Arthrex had challenged the constitutionality of the appointment of administrative patent judges (APJs) who make up the Patent Trial and Appeal Board (PTAB). The Court determined that, in order for the appointment of APJs to be constitutional, the decisions rendered by APJs must be subject to review by the Director of the USPTO.

To comply with the decision, the USPTO created an interim procedure through which parties may petition to have a case reheard by the Director.1 The interim guidance allows for a party in an IPR to petition the Director within 30 days of the entry of a final written decision. The Director may also initiate a review sua sponte. A party in an appeal before the CAFC may request the court to remand the case to the USPTO to request a rehearing before the Director, so long as the party properly preserved the issue in its appeal. According to the guidance given by the USPTO, Director review is performed de novo and may address any issue, either of fact or of law.

Cases that had been stayed awaiting the Arthrex decision are beginning to move forward again, and are providing an early indication on what effect the Arthrex decision may have in practice. So far, it appears that Arthrex will have less impact than many had hoped. Though official statistics are unavailable at this time, requests for rehearing have largely been denied. 

Two Examples

The first example of how the guidance is playing out comes from the Arthrex case itself.  Prior to the Supreme Court decision, the CAFC had vacated and remanded the final written decision of the PTAB. After the Supreme Court decision, the CAFC issued a per curiam order reinstating the appeal.3 The court also remanded the case to the USPTO for the limited purpose of requesting a rehearing from the Director—this case is still pending before the USPTO.   

Next, in Teva Pharmaceuticals v. Eli Lilly and Co., the Federal Circuit limited the options of an appellant seeking relief under Arthrex.4 Here, Teva had appealed a final written decision by the PTAB that found several claims of three challenged Teva patents invalid. Upon the request of Teva, the court stayed the case to await the decision in Arthrex. When the case resumed, Teva argued that the court should decide the appeal on the merits with the caveat that, if the court decided to not reverse or remand the case to the PTAB, the court should remand for the limited purpose of allowing Teva to request rehearing from the Director. 

Instead, the court asked Teva to select which of the two forms of relief to pursue: either remand to the USPTO to seek a rehearing before the Director or continue the appeal before the CAFC. Forced to choose between the two, Teva elected to waive its right to a request rehearing and pursued the appeal, which it then lost.5

An Unsatisfactory Ending?

Even for those who properly preserved the issue in appeal, it’s looking as though the Arthrex decision is not providing the opportunity many patentees had hoped it would. The right to request rehearing from the Director will be of little comfort to patentees already involved in an appeal before the CAFC if the patentees may have to choose between continuing with the appeal process or withdrawing in order to seek a rehearing. And requesting rehearing from the Director has thus far been unsuccessful. However, it is possible that requests for rehearing from the Director will have a higher chance of success once a new Director is appointed—because the Director has considerable discretion in how to handle such requests, it is possible that a new Director will be more likely to grant requests for rehearing. 

1 See USPTO, USPTO implementation of an interim Director review process following Arthrex (2021).

2 PTAB, USPTO issues first Director review decisions (denying first two petitions in IPR2020-00081 and IPR2020-00320).

3 CAFC-18-2140 Dkt. #144 (July 28, 2021).

4 Teva Pharmaceuticals Int’l GMBH  v. Eli Lilly and Co. Appeal Nos. 2020-1747, -1748, -1750 (Fed. Cir. Aug. 16, 2021).

5 If Teva had elected to remand the appeal to request rehearing, Teva would have still had the right to appeal to the Federal Circuit.

© 2023 Foley & Lardner LLPNational Law Review, Volume XI, Number 242

About this Author


Randy (Rand) Pummill is an associate in the Intellectual Property department with Foley & Lardner LLP. He is a member of the firm’s Mechanical & Electromechanical Technology Practice.

Prior to joining Foley, Rand worked as a senior engineer at an internationally recognized consulting firm. In this position, Rand collaborated with other engineers to provide research proposals and technical reports to commercial clients, academic bodies and government entities. Rand developed computational modeling tools to predict the flow back of hydraulic fracturing fluid after a...

Bradley Roush, Foley, Electromechanical Patent Litigation Attorney, Intellectual property Lawyer,

Bradley Roush is an associate and intellectual property lawyer with Foley & Lardner LLP where he focuses on electromechanical patent litigation. His experience includes various stages of U.S. district court litigations and International Trade Commission (ITC) Section 337 investigations. Technologies Mr. Roush has litigated include video display, computer software, narcotics and explosives detection, semiconductor materials, mobile phones, and hybrid automobiles. He is a member of the firm’s IP Litigation Practice.

Prior to joining Foley, Mr...