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Second Arthrex Petition Granted to Vacate PTAB Decision

Earlier this year, the Supreme Court held that the USPTO Director has the discretion to review decisions rendered by PTAB judges. United States v. Arthrex, 141 S. Ct. 1970 (2021). For the second time following that decision, the Acting USPTO Director has granted review of a Final Written Decision by the PTAB.

In Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00733, Paper No. 94, Oren Technologies petitioned the Director for review of the PTAB’s final written decision determining that all claims of challenged U.S. Patent No. 9,440,785 are unpatentable as obvious in light of the prior art. Relying on Oren Techs., LLC v. Proppant Express Invs LLC, No. 2019-1778, 2021 WL 3120819 (Fed. Cir. 2021), in which the Federal Circuit found that the Board’s failure to address the evidence of commercial success amounted to legal error, Oren argued that the Board failed to properly weigh the objective evidence of nonobviousness. Id. at 7-8.

Persuaded by this argument, the Director granted review of the Board’s decision. Ultimately, the Director vacated and remanded the case to the Board to issue a new decision addressing Oren’s objective evidence of nonobviousness regarding the commercial success and industry praise relating to Oren’s marketed product embodying the claimed features.

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 337
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About this Author

Law Clerk

Angeline Premraj is a law clerk in Finnegan’s Washington, DC office.

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Shannon Patrick focuses on patent litigation related to Abbreviated New Drug Applications (ANDA), patent prosecution, proceedings before the Patent Trial and Appeal Board (PTAB), and client counseling. She has technical experience in the chemical and mechanical fields, including technologies such as aluminum alloys and joining solutions, as well as a background in biology.

Shannon’s litigation experience with district court matters includes preparing motions, managing discovery efforts, and working with expert witnesses. She has participated in...

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Amanda Murphy IP Lawyer Finnegan
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Amanda Murphy, Ph.D., focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Amanda provides patentability opinions, prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has experience in prosecuting inter partes ...

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