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Three More Disputes Go Back to Patent Office Under Arthrex

Jan. 23, 2020, 8:02 PM

The Federal Circuit returned three patent validity disputes to the U.S. Patent and Trademark Office for another look by a new panel of judges, part of the continued fallout from the court’s landmark ruling on administrative appointments.

The orders came in separate appeals arguing the administrative patent judges that heard the cases were unconstitutionally appointed after the court’s Oct. 31 ruling in Arthrex Inc. v. Smith & Nephew Inc.

The U.S. Court of Appeals for the Federal Circuit is continuing to apply Arthrex to constitutional challenges while it considers the parties’ requests for a full court rehearing. Orders to vacate and remand patent cases are under scrutiny and could be addressed by the full Federal Circuit if it grants en banc review.

The appeal court’s orders Thursday came in three cases with similar postures.

Uniloc 2017 LLC had challenged PTAB decisions in favor of Cisco Systems Inc. that invalidated parts of its patent on using voice-over-internet-protocol technology for collaborative text, media, audio, and video communications.

Vaporstream Inc. challenged PTAB decisions in favor of rival Snap Inc. that invalidated parts of Vaporstream’s electronic messaging patent.

Document Security Systems challenged PTAB decisions in favor of Seoul Semiconductor Co. that invalidated parts of its semiconductor packaging device patent.

The Federal Circuit granted the motions to vacate and remand in all three cases. It canceled a scheduled March 3 oral argument in the Uniloc case. Arguments weren’t yet scheduled in the other two cases.

The appeals court in Arthrex said PTAB judges were principal officers who should have been nominated by the president and confirmed by the Senate. As a fix, the court severed part of the law preventing the judges from being fired without cause.

Since Arthrex, a slew of parties have raised constitutional challenges in Federal Circuit appeals of PTAB decisions. The court has pointed to Arthrex in sending disputes back to the patent board for redos, such as in November’s Bedgear, LLC v. Fredman Bros. Furniture Co.

In Bedgear, Judge Timothy B. Dyk took issue with Arthrex’s vacate-and-remand remedy. In a concurrent opinion joined by Judge Pauline Newman, Dyk wrote that new PTAB hearings before a new panel imposed “large large and unnecessary burdens on the system of inter partes review.”

Fredman Bros. in January asked the full Federal Circuit to reconsider the outcome of that case. The outcome of Arthrex itself could also potentially be undone, as both the parties and the patent office have pushed the full Federal Circuit to reconsider the decision.

The cases are Uniloc 2017 LLC v. Cisco Sys., Inc., Fed. Cir., No. 18-2431, order vacating and remanding 1/23/20, Vaporstream, Inc. v. Snap Inc., Fed. Cir., No. 19-2231, order vacating and remanding 1/23/20, and Document Sec. Sys., Inc v. Seoul Semiconductor Co., Fed. Cir., No. 19-2281, order vacating and remanding 1/23/20.

To contact the reporter on this story: Perry Cooper in Washington at pcooper@bloomberglaw.com and Ian Lopez in Washington at ilopez@bloomberglaw.com.

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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