June 7, 2023

Volume XIII, Number 158


June 07, 2023

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June 06, 2023

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PTAB Orders All Cases Remanded in Light of Arthrex Held in Abeyance

Earlier this month, the Chief Administrative Patent Judge issued a general order holding in abeyance all cases remanded in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).  As we previously covered, on October 31, 2019, the Federal Circuit held in Arthrex, Inc. v. Smith & Nephew, Inc.941 F.3d 1320, that PTAB judges (i.e., administrative patent judges, or APJs) were principal officers appointed in violation of the Constitution, and held that the proper remedy was to judicially eliminate their for-cause removal protections.  The Federal Circuit subsequently, on March 23, 2020, denied the parties’ petitions for rehearing en banc.  

In light of the sweeping nature of Arthrex¸ the Federal Circuit has already vacated more than 100 PTAB decisions “and more such Orders are expected.”  Further, several parties have informed the PTAB that they intend to petition the Supreme Court of the United States for a writ of certiorari.    

To avoid unnecessarily burdening the PTAB should the Supreme Court grant such a petition, the general order holds “all such cases in administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing such petitions expires.”  As a result, in all likelihood any case remanded in light of Arthrex will not be acted upon by the PTAB until 2021 at the earliest.  

© 2023 Foley & Lardner LLPNational Law Review, Volume X, Number 141

About this Author

George C. Beck, Foley Lardner, Patent Lawyer, Post Grant Proceedings Attorney,

George C. Beck is a partner and intellectual property lawyer with Foley & Lardner LLP. His practice extends to all aspects of intellectual property law. He currently focuses his practice on patent counseling, procurement and post-grant proceedings before the U.S. Patent & Trademark Office.

Mr. Beck has prepared and prosecuted patent applications in a variety of technical areas, including consumer electronics, liquid crystal display technology, telecommunications, semiconductor devices and manufacturing, semiconductor manufacturing test...

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...