November 8, 2019

Post-Grant for Practitioners: Arthrex v. Smith & Nephew – What Did the Federal Circuit Do?

A three-judge panel of the Federal Circuit held last week in Arthrex v. Smith & Nephew that PTAB administrative patent judges (APJs) are “principal officers” who must be nominated by the President with the advice and consent of the Senate under the Appointments Clause. The decision effectively renders all prior PTAB panels unconstitutional and throws their rulings into doubt. However, the court remedied this constitutional defect by severing the federal protections in 35 U.S.C. 3(c) from APJs, establishing them as “inferior officers” not subject to the Appointments Clause. It remains to be seen how the Director of the USPTO will implement the court’s decision.

In this Post-Grant for Practitioners webinar, Fish Senior Principal John Dragseth, Principals and Post-Grant Practice Group Co-Chairs Karl Renner and Dorothy Whelan, and Principal Rob Courtney discuss the case’s potential impact on post-grant practice, including:

• What the Federal Circuit did
• What to expect from the USPTO
• What companies should do now
• What companies should do going forward

The Arthrex decision likely will affect a large number of pending post-grant cases and could potentially reshape the future of post-grant practice.

John Dragseth
Karl Renner
Dorothy Whelan
Rob Courtney
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