USPTO urges Vidal review of Arthrex petition
The US Patent and Trademark Office (USPTO) has argued against a bid by medical device maker Arthrex, which wants recognition that an ex-interim acting director lacked the power to refuse to review its petition.
This week, the agency asked the US Court of Appeals to decline a review of the former acting director Drew Hirshfeld’s power, and instead allow recently appointed USPTO director Kathi Vidal to revisit the issue.
The long-running legal saga emerged in 2017 after Arthrex appeared before the US Patent Trial and Appeal Board (PTAB) to defend one of its patents in an inter partes review requested by its rival Smith & Nephew.
When the tribunal cancelled the patent, Arthrex appealed to the Federal Circuit, arguing that the judges who had heard its case were principal officers and had been unconstitutionally appointed.
The Federal Circuit agreed with Arthrex and vacated the PTAB’s decision.
The US Supreme Court’s ultimate concluding decision in Arthrex v US (2020) also agreed with this decision, and transferred greater power to the USPTO director.
This role was temporarily held by Hirshfeld before Vidal assumed the permanent post in April.
According to the ruling, the director had the power to review an inter partes review decisions handed down by the PTAB.
Hirshfeld subsequently denied Arthrex's petition for review.
In January, Arthrex complained that it did not get the “remedy” ordered by the US Supreme Court in its landmark case against Smith & Nephew.
In an appeal brief before the US Court of Appeals for the Federal Circuit, the medical devices company claimed that no “presidentially appointed, senate-confirmed principal officer” denied its petition on remand.
It further claimed that the acting director was only an inferior officer.
Arthrex has asked the Federal Circuit to reverse the board’s decision and vacate Hirshfeld’s denial of its requested review.
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