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.