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PTAB Presses Pause On All Arthrex Remands

On Friday, May 1, 2020, Chief Administrative Patent Judge Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) paused all activity in the significant number of PTAB cases remanded to it from the Federal Circuit under Arthrex (discussed here).  CAPJ Boalick’s General Order will remain in effect until the U.S. Supreme Court considers the constitutional issue raised in Arthrex.  Specifically, with this General Order, the PTAB has ordered over 100 PTAB cases and any additional cases remanded to it under Arthrex to be held in abeyance “[t]o avoid burdening the Office and the parties” “until the Supreme Court acts on a petition for certiorari or the time for filing such petition expires.”

For background, last October, the Federal Circuit ruled that Administrative Patent Judges (“APJ”), who preside over all post grant proceedings at the PTAB, were appointed in violation of the Apportionments Clause because, among other things, both the Secretary of Commerce and Director of the United States Patent and Trademark Office lacked unfettered removal authority over the APJs.  To remedy this, the Federal Circuit severed the employment protections provided to APJs under the AIA, vacated the PTAB’s final decision, and remanded the case back to the PTAB for further proceedings under a new constitutionally-approved PTAB panel.

Since Arthrex, all decisions in post grant proceedings that were decided pre-Arthrex but have been appealed post-Arthrex are being vacated by the Federal Circuit and remanded back to the PTAB for further proceedings before newly-designated PTAB panels.  To date, this has resulted in over 100 decisions that have been vacated and remanded to the PTAB, with more such orders to be expected.

Accordingly, to avoid this flood of remanded cases, all cases current and future that are remanded under Arthrex are now put on hold until the Supreme Court has a chance to review the Federal Circuit’s Arthrex decision, which the Federal Circuit recently denied en banc review in March.  Assuming Arthrex appeals the decision to the Supreme Court, which it has said it intends to do, PTAB proceedings that were vacated and remanded in view of Arthrex may be on hold until this fall, if the petition for certiorari is denied, or the following calendar year if the Supreme Court takes the case.  Deadlines for petitions for certiorari have been extended from 90 days to 150 days by the Supreme Court in light of the COVID-19 pandemic, and thus any such petitions are now due in August.

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About this Author

Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm

Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked as a database...

Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.

Matthew S. Galica, Mintz Levin, Technology Specialist, Software Development lawyer, Application architect, Attorney

Matt focuses his intellectual property practice on patent litigation, strategic IP counseling, and patent valuation.  He has experience representing clients before the International Trade Commission (ITC), Federal district courts, and the Patent Trial and Appeal Board.  Matt’s practice covers complex technologies such as microprocessors, graphics processors, RF circuitry, LCD display systems, microelectromechanical systems, audio and video processing, VLSI design, consumer telecommunications systems, and DDR-compliant memory modules and DRAM.

Matt has held lead roles in multiple ITC...