{"id":1943,"date":"2018-01-24T15:56:25","date_gmt":"2018-01-24T20:56:25","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1943"},"modified":"2018-02-03T16:26:22","modified_gmt":"2018-02-03T21:26:22","slug":"drag-things-out-disclaimer-creates-estoppel","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1943","title":{"rendered":"Drag things out? Disclaimer creates estoppel."},"content":{"rendered":"

In Arthrex, Inc. v.\u00a0Smith & Nephew, Inc.<\/a>, [2017-1239] (January 24, 2018), the Federal Circuit affirmed the Board’s entry of an\u00a0adverse judgment pursuant to 37 C.F.R. \u00a7 42.73(b) in an IPR, after patent owner Arthrex\u00a0disclaimed all claims that were the subject\u00a0of the petition, despite Arthrex’s\u00a0express request that no adverse judgment be entered.<\/p>\n

After first considering and concluding that the adverse judgment was appealable, the Federal Circuit then considered whether the entry of adverse judgment was proper.\u00a0 Although Arthrex\u00a0specifically\u00a0stated that it was not requesting an adverse\u00a0judgment, the Federal Circuit found that the application of the rule on its face does not\u00a0turn on the patentee\u2019s characterization of its own request.\u00a0 The rule gives the Board authority to construe\u00a0a patent owner\u2019s actions as a request for an adverse\u00a0judgment, suggesting the Board\u2019s characterization of the\u00a0action rather than the patent owner\u2019s characterization is
\ndeterminative.<\/p>\n

The Federal Circuit held that 37 C.F.R. \u00a7 42.73(b) permits the Board to enter an adverse\u00a0judgment when a patent owner cancels all claims at\u00a0issue after an IPR petition has been filed, but before an\u00a0institution decision.<\/p>\n

How this affects Arthrex remains to be seen.\u00a0 The Federal Circuit noted that at\u00a0 the time of the\u00a0adverse judgment, Arthrex had two pending continuation
\npatent applications that the estoppel provision would\u00a0impact, and that those two applications have since issued as\u00a0patents. However, Arthrex recently filed another continuation\u00a0application, which remains in prosecution and therefore is
\naffected by the adverse judgment.\u00a0 The Federal Circuit is indicating that the current prosecution is complicated by the adverse judgment, although it did not comment on the effect on the patents that issued from the applications that were pending at the time of the adverse judgment.<\/p>\n

The estoppel provisions prevent a patentee\u00a0\u201cfrom taking action inconsistent
\nwith the adverse judgment, including obtaining in any\u00a0patent . . . [a] claim that is not patentably distinct from a\u00a0finally refused or canceled claim.\u201d\u00a0 The estoppel provision prevents a patent owner from obtaining a patent on a pending application, but does it also prevent a patent owner from defending a claim an issued patent?\u00a0 If not, then Arthrex erred by doing the right thing and disclaiming unpatentable claims; instead it should have dragged out the proceedings while rushing to get its pending applications to issue.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Arthrex, Inc. v.\u00a0Smith & Nephew, Inc., [2017-1239] (January 24, 2018), the Federal Circuit affirmed the Board’s entry of an\u00a0adverse judgment pursuant to 37 C.F.R. \u00a7 42.73(b) in an IPR, after patent owner Arthrex\u00a0disclaimed all claims that were the subject\u00a0of … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-1943","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1943","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1943"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1943\/revisions"}],"predecessor-version":[{"id":1945,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1943\/revisions\/1945"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1943"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1943"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1943"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}