Confirming that the same panel of judges at the Patent Trial and
Appeal Board (PTAB or Board) has the authority to institute America
Invents Act (AIA) reviews and make a final determination on the
merits, the US Court of Appeals for the Federal Circuit denied the
patent owner’s petition to rehear the issue en banc.
Ethicon Endo-Surgery, Inc. v. Covidien LP, Case No.
14-1771 (Fed. Cir., June 22, 2016) (Newman, J, dissenting).
Ethicon Endo-Surgery owns a patent for
a surgical stapler. Covidien challenged claims of the patent in an
inter partes review (IPR) as being obvious over certain
prior art. A three-member PTAB panel decided to institute the IPR,
and that same panel later issued a final written decision finding
the challenged claims invalid for obviousness. The patent owner
appealed, challenging the authority of the same panel to both
institute and try the case to a final written decision. On appeal,
the Federal Circuit affirmed that the AIA permits the same
