Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Arthrex, Inc. v. Smith & Nephew, Inc.

PTAB Recharacterization of Reference Was Not an APA Violation

Arthrex, Inc. v. Smith & Nephew, Inc., __ F.3d __, 2019 WL ___ (Fed. Cir. Aug. 21, 2019) (Dyk, Chen, STOLL) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR decision canceling two Arthrex patent claims. Arthrex’s claims recited structural details for a surgical suture anchor for reattaching soft tissue to bone. As to the first of the two claims, the PTAB did not violate Arthrex’s procedural rights when it found a motivation to combine based on a characterization of a key reference that was not literally present in Smith & Nephew’s petition. Though the PTAB characterized a technique in the reference as “preferred,” while Smith & Nephew had characterized it only as “well-known” or “accepted,” the PTAB was relying on the same section of the reference Smith & Nephew had cited, in the same combination, and the same basic theory of obviousness. Citing Sirona Dental Systems, 892 F.3d 1349 (Fed. Cir. 2018), and Genzyme, 825 F.3d 1360 (Fed. Cir. 2016), this was not an APA violation, and the opinion rejects Arthrex’s arguments and citations to the contrary. Substantial evidence supported the PTAB’s substantive analysis.

As to the second claim, the PTAB’s determination of the broadest reasonable interpretation for a key term was correct. The opinion rejects Arthrex’s proposal that the term should have been limited to performing a specific function.

The opinion exercises discretion to reach Arthrex’s argument that IPR is unconstitutional when applied to pre-AIA patents notwithstanding that Arthrex did not present it to the Board, citing In re DBC, 545 F.3d 1373 (Fed. Cir. 2008), and Harris, 417 F.3d 1241 (Fed. Cir. 2005). The patent in this appeal is not a pre-AIA patent because it issued in 2014; that underlying applications were filed pre-AIA is immaterial. And in any event, per Celgene, __ F.3d __, 2019 WL 3418549 (Fed. Cir. July 30, 2019), application of IPR to pre-AIA patents is constitutional.

KEYWORDS: ADMINISTRATIVE PROCEDURE ACT; BROADEST REASONABLE INTERPRETATION; CLAIM CONSTRUCTION; AMERICA INVENTS ACT; CONSTITUTIONALITY