Patent Law Practice Center

CAFC says same panel can decide institution and merits in IPR

Last month, the United States Court of Appeals for the Federal Circuit issued a decision in Ethicon Endo-Surgery, Inv. V. Covidien LP, an appeal from the United States Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (PTAB). The dispute arose as the result of a Covidien inter partes review (IPR) petition challenging claims of U.S. Patent No. 8,317,070 (“the ’070 patent”), which is owned by Ethicon. The PTAB granted the petition and the IPR proceeded to a decision on the merits. On the merits, the same panel that determined that the petition should proceed in the first place, found all challenged claims invalid as obvious over the prior art.

Ethicon appealed to the Federal Circuit, arguing that the PTAB’s final decision was invalid because the same Board panel made both the decision to institute and the final decision. Ethicon also argued that the Board erred in finding the claims obvious.

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