January 31, 2018
Authored and Edited by Pier D. DeRoo; Kara Specht; Elizabeth D. Ferrill
During the early stages of an IPR proceeding initiated by Smith & Nephew, patent owner Arthrex disclaimed all patent claims challenged in the petition. Arthrex then filed a preliminary response contending that institution should be denied due to the disclaimer. To avoid the estoppel effects of 37 C.F.R. § 42.73(d), Arthrex also argued that an adverse judgment should not be entered. The PTAB, however, issued an adverse judgment against Arthrex, and the Federal Circuit affirmed.
Although the patent owner attempted to avoid the adverse judgment in its preliminary response, the Federal Circuit confirmed that § 42.73(b) permits the PTAB to interpret a disclaimer as a request for adverse judgment. As a result, the estoppel of § 42.73(d)(3)(i) attached.
Judge Newman dissented from this holding because § 42.73(b) requires that a disclaimer “such that the party has no remaining claim in the trial” be construed as a request for adverse judgment. Because no trial was instituted, Judge Newman believed that issuing an adverse judgment failed to comply with this rule.
The Federal Circuit also confirmed that a pre-institution adverse judgment is appealable under 35 U.S.C. § 1295. While § 319 only provides for review from a “final written decision” and § 314(d) prohibits appeals of institution decisions, the court found that neither statute precluded appellate review. Because an adverse judgment is a final decision disposing of an IPR proceeding, the patent owner has a statutory right of appeal under § 1295(a)(4)(A).
Copyright © 2018 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.