Federal Circuit backs PTAB but Newman dissents

The US Court of Appeals for the Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB) in a dispute concerning a suture anchor patent.

Suture anchors are devices used to fix tendons and ligaments to bone.

In April 2016, medical equipment company Smith & Nephew filed an inter partes review (IPR) petition, challenging claims 1-9 of US patent number 8,821,541.

The patent, owned by Arthrex, is called “Suture anchor with insert-moulded rigid member”.

Arthrex had disclaimed and given up rights to all the claims that were the subject of the petition before the board had issued an institution decision.

The PTAB then entered an adverse judgment. An estoppel effect was attached to the adverse judgment, meaning that Arthrex was precluded from attempting to obtain a patent with claims that aren’t distinct from the cancelled claim.

Arthrex appealed against the decision.

Yesterday, in a 2-1 precedential opinion, the Federal Circuit affirmed the board’s decision to enter the adverse judgment.

The PTAB entered the judgment under 37 CFR section 42.73(b), concluding that “our rules permit the board to construe a statutory disclaimer of all challenged claims as a request for adverse judgment, even when the disclaimer occurs before the board has entered a decision on institution”.

According to the Federal Circuit, the decision could be appealed but the board had acted within the scope of the 37 CFR section 42.73(b) regulation.

“Because we believe the board’s interpretation of the rule is consistent with its language, and because there has been no challenge to the board’s authority to adopt the rule, we sustain the board’s reading of the regulation,” said Circuit Judge Timothy Dyk, on behalf of the court.

Circuit Judge Pauline Newman dissented, claiming that because no challenged claims remained in the patent, the PTAB’s “authority to render adverse judgment did not arise”.

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