Federal Circuit Narrows Availability For IPR Appeals Under Arthrex

By recognizing a constitutional deficiency in the appointment of Patent Trial and Appeal Board ("PTAB") judges, the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) set the stage for numerous appeals by parties unhappy with a PTAB decision and seeking a do-over with a new panel.  PTAB action to pause a growing docket of remanded cases was previously reported here. 

Last week, the Federal Circuit issued a pair of precedential orders limiting the availability of appeals of inter partes review ("IPR") decisions in light of Arthrex.  The United States Patent and Trademark Office ("USPTO") had intervened in both appeals, in an apparent effort to limit the number of cases that would need to be readjudicated.  According to the Federal Circuit's orders, remand of USPTO decisions in view of Arthrex is not compelled in cases where: (1) appellant is the IPR petitioner, or (2) final written decision in the IPR was issued after Arthrex (i