The PTAB and the Constitution

Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., October 31, 2019)

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John P. Isacson

Since the inception of inter partes review at the Patent Trial and Appeals Board (PTAB), there have been a number of constitutional challenges to these type of proceedings.  This latest challenge concerned the very formation of the PTAB itself.

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Updated Guidance on Section 101 Subject Matter Eligibility

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John P. Isacson

On October 17, 2019, the U.S. Patent and Trademark Office issued a 22-page updated guidance document on subject matter eligibility under 35 USC §101.  Subject matter eligibility is becoming increasingly important in the computer and life sciences areas.

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What Belongs to the Director Stays With the Director

Honeywell Int’l v. Arkema, Inc., Appeal No. 2018-1151, -1153 (Fed. Cir., October 1, 2019)

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John P. Isacson

Arkema filed two petitions for post-grant review of a Honeywell patent pertaining to fluoroalkene compounds used in refrigerator systems.  During the proceedings, Honeywell discovered that it had an error in its priority claim and sought authorization from the Board to file a motion for leave to petition the Director for a Certificate of Correction.  The Board denied authorization to file a motion on the grounds that Honeywell had not satisfied 35 USC §255.

The Federal Circuit vacated the Board’s decision and stated as follows:

On the merits of Honeywell’s appeal, we conclude that the Board abused its discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate.

Slip op. at 6.

Section 255 does not grant the Board authority to determine whether a mistake in an issued patent is of “minor character” or “occurred in good faith.” 35 U.S.C. § 255. That authority is expressly granted to the Director. Id. The Director has not delegated its Section 255 authority to the Board, but has instead promulgated procedures by which patentees may seek the Board’s leave to petition the Director for a Certificate of Correction.  37 C.F.R. § 1.323; MPEP § 1485.

Slip op. at 7.

In past practice, the Board had reviewed motions for leave to seek a Certificate of Correction to determine whether the Patent Owner established a sufficient basis to seek correction, which the court approved of.  Here, the Federal Circuit faulted the Board for not even allowing Honeywell to file the motion.  Slip op. at 8.  The Federal Circuit considered the refusal of authorization to be an abuse of discretion. Slip op. at 9.  The Federal Circuit vacated and remanded the decision, and instructed the Board that it “should authorize Honeywell to file a motion….”   Slip op. at 10-11.