Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Wed, 22 Jan 2020 09:23:03 +0000 Floodlight Design CMS In The Press:<br>NYIPLA Pod Bites - Amicus Brief: Peter v. NantKwest<br> http://www.arelaw.com/publications/view/01202020inthepress/ The NYIPLA posts recent podcast of&nbsp;interview with partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a> on the Peter v. Nanktwest decision.<br /><br />To listen to the podcast click <a href="https://soundcloud.com/user-659319321/pod-bites-amicus-brief-peter-v-nantkwest" target="_blank">here&gt;&gt;&gt;</a> Mon, 20 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/01202020inthepress/ Amster Rothstein & Ebenstein Expands Trademark and Patent Practices with Addition of Two Lawyers http://www.arelaw.com/publications/view/alert01092020/ January 9, 2020 (New York) &ndash; Amster Rothstein &amp; Ebenstein, a full-service intellectual property law firm has expanded its trademark and patent practices with the addition of two lawyers, continuing its strategic growth. <br /><br />The lawyers who have joined the firm are:<br /><br />&bull; <a href="https://www.arelaw.com/professional/clapolla/" target="_blank">Charles LaPolla</a> (Partner) specializes in the areas of trademark law including domestic and foreign prosecution, opposition and cancellation proceedings, Internet and domain name disputes, trademark litigation and other intellectual property litigation. Charles also has significant experience in copyrights, unfair competition, trade secrets and deceptive trade practices. His clients range from those in the fields of entertainment, including amusement and theme parks, to fashion, jewelry and cosmetics. He is a frequent lecturer at conferences and seminars.<br /><br />&bull; <a href="https://www.arelaw.com/professional/aboardman/" target="_blank">Albert Boardman</a> (Associate) is an intellectual property lawyer focusing on patent prosecution, preparation and litigation in the high-tech sector, particularly in the areas of computer software and consumer electronics. He is a registered patent attorney and has prepared and prosecuted patents in the fields of cloud computing, computer virtualization, computer graphics and electronic devices.<br /><br />&ldquo;We are excited to begin 2020 by welcoming these highly experienced lawyers to our firm who will add depth and breadth to our existing trademark and patent practices,&rdquo; said Managing Partner <a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony Lo Cicero</a>.<div style="text-align: center;"><br />***</div><br />About Amster, Rothstein &amp; Ebenstein LLP<br />Since 1953, Amster, Rothstein &amp; Ebenstein LLP has focused exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, fashion and retail, life sciences, medical devices, toys, entertainment, housewares, consumer electronics as well as blockchain and artificial intelligence. Our lawyers handle all facets of intellectual property law including: Patents, Trademarks, Copyrights and other related intellectual property law areas. Learn more about us at <a href="https://www.arelaw.com/" target="_blank">https://www.arelaw.com/</a>. Thu, 09 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert01092020/ In The Press: <br>Law360 Reports Further on NYIPLA Amicus Brief in Arthrex Prepared By Partner Charles R. Macedo and Associate David Goldberg<br> http://www.arelaw.com/publications/view/inthepress01092020/ Law360 reports on &quot;Everything You Need to Know About <em>Arthrex</em>&quot; including the amicus brief prepared by partner Charley Macedo and associate David Goldberg for the New York Intellectual Property Law Association:<br /> <div style="margin-left: 40px;"><br />The New York Intellectual Property Law Association filed an amicus brief in the case, putting its weight behind the way the USPTO framed the appeal.</div><br />A copy of the full article is available at: Dani Kass, <em>Everything You Need To Know About Arthrex</em>, LAW360 (Jan. 9, 2020), <a href="https://protect-us.mimecast.com/s/GAQ_CJ6PJ2cpMr8cG-mdP?domain=law360.com" target="_blank">https://www.law360.com/ip/articles/1232651/everything-you-need-to-know-about-arthrex?copied=1</a>) (subscription required).<br /><br type="_moz" /> Thu, 09 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress01092020/ In The Press: <br>IPWatchdog Provides Arthrex Update including Summary Of NYIPLA Amicus Brief Prepared By Partner Charles R. Macedo and Associate David Goldberg<br> http://www.arelaw.com/publications/view/inthepress192020/ IPWatchdog issued an <em>Arthrex </em>Update on January 9, 2020 including a summary of the amicus brief prepared by partner Charles R. Macedo and associate David Goldberg for the New York Intellectual Property Law Association.<br /> <br /> <div style="margin-left: 40px;"><a href="https://protect-us.mimecast.com/s/QK9bCM89M2cxmO5TQvGgP?domain=ipwatchdog.com" target="_blank">NYIPLA&rsquo;s amicus brief</a> argues that the Federal Circuit should grant <em>en banc</em> rehearing and adopt the formulation of the issues in <em>Arthrex</em> as articulated by the U.S. government&rsquo;s petition for rehearing.<br />&nbsp;</div>A copy of the full article is available at: Steve Brachmann, <em>Arthrex Update: With Responses Due Next Week, Amici Urge Federal Circuit to Grant Rehearing</em>, IPWATCHDOG (Jan. 9, 2020), <a href="https://www.ipwatchdog.com/2020/01/09/arthrex-update-amici-urge-full-federal-circuit-grant-petitions-rehear-arthrex/id=117714/" target="_blank">https://www.ipwatchdog.com/2020/01/09/arthrex-update-amici-urge-full-federal-circuit-grant-petitions-rehear-arthrex/id=117714/</a>. Thu, 09 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress192020/ Practical Law:<br>Appealing Patent Trial and Appeal Board Final Written Decisions<br> http://www.arelaw.com/publications/view/01082020practicallaw/ <div><strong>REVISED January 8, 2020 --</strong>&nbsp;<a href="/images/file/20200108%20Appealing%20Patent%20Trial%20and%20Appeal%20Board%20Final%20Written%20Decisions%20(W-006-9741).pdf" target="_blank">Appealing Patent Trial and Appeal Board Final Written Decisions</a></div> Wed, 08 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/01082020practicallaw/ Practical Law:<br>Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings<br> http://www.arelaw.com/publications/view/practicallaw01082020/ <strong>REVISED January 8, 2020 --&nbsp;<a href="/images/file/20200108%20Understanding%20PTAB%20Trials%20Key%20Milestones%20in%20IPR%20PGR%20and%20CBM%20Proceedings%20(3-578-8846).pdf" target="_blank">Understanding PTAB Trials: Key Milestones in IPR, PGR, and CBM Proceedings</a></strong> Wed, 08 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw01082020/ In The Press: <br>Law360 Reports on Amicus Brief Filed by Partner Charles R. Macedo and Associate David Goldberg for NYIPLA in Request for En Banc Review of Arthrex v. Smith & Nephew<br> http://www.arelaw.com/publications/view/inthepress01072020/ Law360 reports on amicus brief filed by Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> and Associate <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a> for the New York Intellectual Property Law Association in support of requests for en banc review by the full Federal Circuit in Arthrex v. Smith &amp; Nephew.&nbsp; Law360 also quoted Mr. Macedo regarding the submission:<div>&nbsp;</div> <div style="margin-left:.5in">&ldquo;We think it&rsquo;s not only important that the Federal Circuit takes the case, but that they properly frame the issues,&rdquo; Charles R. Macedo of Amster Rothstein &amp; Ebenstein LLP, representing the NYIPLA, told Law360.</div> <div>&nbsp;</div> <div><i>Arthrex</i> involves a determination that Patent and Trial Appeal Board (PTAB) Administrative Patent Judges (APJs) were &ldquo;principal officers&rdquo; who, according to the U.S. Constitution, must be appointed by the president and confirmed by the Senate.</div> <div>&nbsp;</div> For the full article, please click <a href="https://www.law360.com/ip/articles/1230769/generics-industry-urges-fed-circ-to-fix-arthrex-disarray-" target="_blank">here</a>&nbsp;(subscription required).<br /> Tue, 07 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress01072020/ Amster Rothstein & Ebenstein Promotes Brian Amos to Senior Counsel http://www.arelaw.com/publications/view/alert01072020/ January 7, 2020 (New York) &ndash; Amster Rothstein &amp; Ebenstein, a full-service intellectual property law firm, is pleased to announce the promotion of <a href="https://www.arelaw.com/professional/bamos/" target="_blank">Brian Amos, Ph.D.</a> to senior counsel. <br /><br />A former research neuroscientist who represents universities, research institutions and corporations in the preparation and prosecution of patent applications worldwide, predominantly in the fields of biotechnology, medical therapeutics and pharmaceuticals, Brian works closely with scientists, in-house counsel and Technology Transfer Offices to identify and inventory new patentable technologies; protect discoveries through patents; and commercialize intellectual property through licensing and development arrangements with other business entities.<br /><br />Brian&rsquo;s specific areas of patent procurement experience include artificial intelligence-based technologies, diagnostic technologies, antibodies and fusion proteins, engineered immune therapeutics and targeted therapies, immune checkpoint interventions, recombinant live vaccines, vaccine enhancers, cancer therapies, nucleic acid sequencing technologies, siRNAs, antisense oligonucleotides, stem cell-based therapies, cardiac treatments, neurological treatments, cellular delivery agents, nucleic acid-based nanotechnologies, small molecules, pharmaceutical formulations, complete syntheses of natural products, EEG-based methods and medical devices.<br /><br />Brian has published articles in Nature Biotechnology and for Oxford University Press on patent law issues and has been a webinar presenter to Tech Transfer professionals and other attorneys on subjects such as patentable subject matter in diagnostics and Bayh-Dole Act compliance.<br /><br />&ldquo;Brian&rsquo;s promotion reflects our firm&rsquo;s dynamic growth as we continue to expand in practice areas crucial to our clients. We are confident that Brian will continue to make important contributions to our clients in the years ahead,&rdquo; said Managing Partner <a href="https://www.arelaw.com/professional/alocicero/" target="_blank">Anthony Lo Cicero</a>.<br /><div style="text-align: center;">***</div><br /><strong>About Amster, Rothstein &amp; Ebenstein LLP</strong><br />Since 1953, Amster, Rothstein &amp; Ebenstein LLP has focused exclusively on representing clients in all facets of intellectual property law both domestically and internationally. The firm partners with clients to protect and maximize their intellectual property in a broad spectrum of industries such as financial services, fashion and retail, life sciences, medical devices, toys, entertainment, housewares, consumer electronics as well as blockchain and artificial intelligence. Our lawyers handle all facets of intellectual property law including: Patents, Trademarks, Copyrights and other related intellectual property law areas. Learn more about us at <a href="https://www.arelaw.com/" target="_blank">https://www.arelaw.com/</a>.<br /> Tue, 07 Jan 2020 00:00:00 +0000 http://www.arelaw.com/publications/view/alert01072020/ Brief For Amicus Curiae in Arthrex, Inc. v. Smith & Nephew, Inc., Arthrocare Corp. http://www.arelaw.com/publications/view/amicus12302019/ Click to dowload PDF:&nbsp;<a href="/images/file/Brief%20for%20Amicus%20Curiae%20Arthrex,%20Inc_%20v_%20Smith%20&amp;%20Nephew,%20Inc_%20et%20al_.pdf" target="_blank">Brief For Amicus Curiae in Arthrex, Inc. v. Smith &amp; Nephew, Inc., Arthrocare Corp.</a> Mon, 30 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus12302019/ NYIPLA Urges Federal Circuit to Review Arthrex En Banc http://www.arelaw.com/publications/view/article12302019/ On December 30, 2019, the New York Intellectual Property Law Association (&ldquo;NYIPLA&quot;) filed an amicus brief in support of a petition by the Intervenor United States for en banc review by the Federal Circuit in <em>Arthrex Inc. v. Smith &amp; Nephew Inc.</em>, No. 18-2140.&nbsp; The <em>Arthrex</em> panel decision addressed whether administrative patent judges (&ldquo;APJs&rdquo;) serving on the PTAB were appointed in violation of the Appointments Clause in Article II, Section 2, Clause 2 of the United States Constitution.&nbsp; The panel held that APJs are &ldquo;principal officers of the United States&rdquo; under the Patent Act (Title 35) as it has been enacted and structured.&nbsp; As such, the appointment of APJs by the Secretary of Commerce was held to be a constitutional violation.&nbsp; To &ldquo;fix&rdquo; the constitutional defect, the panel severed the portion of the Patent Act restricting removal of the APJs only &ldquo;for cause,&rdquo; thus purportedly rendering APJs &ldquo;inferior officers&rdquo; going forward and remedying the constitutional appointment problem.&nbsp;<br /><br /> Significantly, all parties to this action, including the United States as the Intervenor, sought review of the panel decision by the full Federal Circuit in three separate petitions for rehearing or rehearing <em>en banc</em> filed earlier this month.&nbsp;<br /><br /> In its brief, the NYIPLA did not take a position on the merits, but urged the full court to &ldquo;grant <em>en banc</em> review of this case and adopt the formulation of the issues as presented by the United States in its Petition, namely:&rdquo;<br /><br />1.Whether the administrative patent judges of the Patent Trial and Appeal Board are inferior officers of the United States under the Appointments Clause, U.S. CONST. art. II, &sect; 2, cl. 2, such that Congress permissibly vested their appointments in a department head, rather than principal officers who must be nominated by the President and confirmed by the Senate.<br /><br /> 2.Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency.<br /><br /> 3.How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.<br /><br /> The NYIPLA believes that each of the issues raised by the United States in its Petition are the subject of substantial debate and should be addressed by the full Court.&nbsp;&nbsp;<br /><br /> First, while there is no dispute that APJs are &ldquo;officer of the United States,&rdquo; a significant debate has erupted following <em>Arthrex</em> as to whether the APJs are &ldquo;principal officers,&rdquo; requiring appointment by the President with the advice and consent of the Senate, or &ldquo;inferior officers&rdquo; who may be appointed by the Secretary of Commerce.&nbsp; The NYIPLA pointed out that all Supreme Court cases relied upon by the federal circuit panel &ldquo;have concluded that the officers in question [in those cases] were &lsquo;inferior officers&rsquo; under the Appointments Clause:&rdquo;<br /><br />Second, even if APJs were properly held to be &ldquo;principal&rdquo; officers, the NYIPLA questioned &ldquo;whether the Opinion&rsquo;s solution is a proper and adequate remedy to the alleged Appointments Clause defect.&rdquo;&nbsp; The NYIPLA argued that, since <em>Arthrex</em>, a disagreement has arisen within the Federal Circuit itself as to &ldquo;whether the act was properly severed and applied prospectively, and, if so, whether it should also be applied retrospectively.&rdquo;&nbsp;<br /><br />Third, the NYIPLA urged the full Federal Circuit to confirm &ldquo;where and when a party must raise an Appointments Clause challenge in order for it to be heard, for the efficient administration of justice.&rdquo;&nbsp; The NYIPLA pointed out the apparent confusion as to which Appointments Clause challenges are properly raised by the parties to be adjudicated, and argued that the Court should &ldquo;provide guidance for litigants (and the PTAB) on the proper means and timing to raise the Appointments Clause challenges.&rdquo;<br /><br />Thus, the NYIPLA argued: &ldquo;The Opinion raises important issues at the heart of practice before the PTAB and has the potential to affect numerous PTAB decisions and this Court&rsquo;s determinations of appeals.&hellip;Prompt, efficient resolution of the issues presented is warranted and requires an analysis by the Court as a whole.&rdquo;&nbsp;&nbsp;<br /><br /><strong><span style="text-decoration-line: underline;"><a href="https://www.nyipla.org/images/nyipla/Amicus/Arthrexv.Smith&amp;Nephew.pdf" target="_blank">Read the Full Amicus Brief&gt;&gt;</a></span></strong><br /><br /> * <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a>, Co-Chair of the PTAB Committee, and <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a>, Co-Chair of the Amicus Briefs Committee, from Amster, Rothstein &amp; Ebenstein LLP, Robert M. Isackson, First Vice President and Board Liaison for the Amicus Briefs Committee, from Leason Ellis LLP, Robert J. Rando, NYIPLA Board Member, from The Rando Law Firm P.C., and Ksenia Takhistova, Amicus Briefs Committee Member, each appeared on behalf of the NYIPLA in this submission. Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP who worked on the brief.&nbsp; The NYIPLA thanks her for her assistance.<br /><br />For the full article, <a href="https://www.nyipla.org/NewsBot.asp?MODE=VIEW&amp;ID=28158" target="_blank">click here&gt;&gt;</a>. Mon, 30 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/article12302019/ In The Press: <br>Law360 Reports on Amicus Brief Filed By Partner Charles R. Macedo on Behalf of Askeladden LLC for POP Panel at PTAB<br> http://www.arelaw.com/publications/view/inthepress12242019/ Law360 reports on amicus brief filed by Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> on behalf of Askeladden LLC for Precedential Opinion Panel of the Patent Trial and Appeal Board in <em>Hunting Titan, Inc. v. DynaEnergetics GmbH &amp; Co. KG</em>. (IPR2018-00600):<br /><br /><div style="margin-left: 40px;">Askeladden LLC, a company in the business of challenging patents, noted in its brief that the decision otherwise calls on petitioners to perform as patent examiners, even though they have &ldquo;varying amounts of incentive, resources, or sophistication.&rdquo;<br /><span style="text-align: center;"><br />***<br /></span><span style="text-align: center;"><br /></span>While Askeladden and HTIA said that parties need to be able to respond to the grounds raised by the board under the APA, <em>amici </em>Google, eBay, HP and IAC disagreed.<br /><span style="text-align: center;"><br /></span>***<br />&nbsp;</div><div style="margin-left: 40px;">Askeladden is represented by Charles R. Macedo of Amster, Rothstein &amp; Ebenstein LLP.<br />&nbsp;</div>Dani Kass, <em>Give PTAB Leeway In Rejecting Amendments, Top Panel Told</em>, LAW360 (Dec. 23, 2019), <a href="https://www.law360.com/articles/1230517/give-ptab-leeway-in-rejecting-amendments-top-panel-told?copied=1 " target="_blank">https://www.law360.com/articles/1230517/give-ptab-leeway-in-rejecting-amendments-top-panel-told?copied=1</a> (subscription required).<br /><br />Askeladden's Amicus Brief is available <a href="/images/file/Askeladden%20Amicus%20Brief%20Hunting%20Titan%20v_%20DynaEnergetics.pdf" target="_blank">here</a>.<br /> Tue, 24 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress12242019/ ARE PTAB Law Alert:<br>Petitioners, Patent Owners and the Government Are All Asking the Full Court of the Federal Circuit to Reconsider Arthrex and its Progeny<br> http://www.arelaw.com/publications/view/alert12202019/ On Thursday, October 31, 2019, the U.S. Court of Appeals for the Federal Circuit held in <em>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</em> that Administrative Patent Judges (&ldquo;APJs&rdquo;) at the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;) are &ldquo;principal officers&rdquo; in light of how the Patent Act (Title 35) has been enacted and structured. As such, according to the panel, the appointment of APJs by the Secretary of Commerce as set forth in Title 35 violates the Appointments Clause, U.S. CONST., art. II, &sect; 2, cl. 2. <em>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</em>, 941 F.3d 1320 (Fed. Cir. 2019).<br /><br />In an effort to remedy the purported constitutional violation, the Court severed the protections of 35 U.S.C. &sect; 3(c) as applied to APJs, which had restricted the removal of APJs only &ldquo;for cause.&rdquo; The Court held that, effective as of October 31, 2019, APJs could be removed &ldquo;at will&rdquo; and, with this modification to the statutory framework, the Court found that APJs would be considered inferior officers and the constitutional appointment problem would thus purportedly be remedied going forward. <em>See, e.g.</em>, Charles R. Macedo, <em>Federal Circuit Declares PTAB APJs To Be Superior Officers Appointed In An Unconstitutional Manner, But Offers A Fix Going Forward With Limited Relief Going Back</em>, ARE PTAB Law Alert, available at <a href="https://www.arelaw.com/publications/view/alert11042019/" target="_blank">https://www.arelaw.com/publications/view/alert11042019/</a>.<br /><br />As we reported in our prior ARE PTAB Law Alert on this case, a number of follow-on decisions were issued soon thereafter. These decisions feature varying twists on the <em>Arthrex </em>holding, including at least one panel decision questioning the scope and effectiveness of the remedy, and another panel decision asking for further briefing on the core questions raised by <em>Arthrex</em>.<br /><br />On Monday, December 16, 2019, all three parties involved in the <em>Arthrex </em>matter submitted separate petitions for rehearing and/or rehearing <em>en banc</em>, with respect to the following questions:<br /><br /><strong>&bull; Arthrex, Inc. (Appellant and Patentee) &ndash; Combined Petition for Panel Rehearing &amp; Rehearing En Banc<br /><br /></strong><div style="margin-left: 40px;">1. Whether Congress would have enacted the IPR statute, 35 U.S.C. &sect; 311 <em>et seq.</em>, creating quasi-judicial review of issued patents, without tenure protections for APJs necessary to ensure their independence and impartiality; and<br />&nbsp;</div><div style="margin-left: 40px;">2. Whether APJs remain principal officers under the Constitution even without tenure protections when they still have the power to issue Final Written Decisions absent meaningful review by an officer nominated by the President and confirmed by the Senate.<br />&nbsp;</div><strong>&bull; Smith &amp; Nephew, Inc. &amp; ArthroCare Corp. (Appellees and Petitioners) &ndash; Petition for Rehearing En Banc<br /></strong><br /><div style="margin-left: 40px;">1. Whether Administrative Patent Judges are inferior or principal officers of the United States; and <br /><br />2. If APJs are principal officers, what remedy is warranted for any defect in their appointment.<br />&nbsp;</div><strong>&bull; United States (Intervenor) &ndash; Petition for Rehearing En Banc <br /></strong><br /><div style="margin-left: 40px;">1. Whether the administrative patent judges of the Patent Trial and Appeal Board are inferior officers of the United States under the Appointments Clause, U.S. CONST. art. II, &sect; 2, cl. 2, such that Congress permissibly vested their appointments in a department head, rather than principal officers who must be nominated by the President and confirmed by the Senate;<br /><br />2. Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency; and<br /><br />3. How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.<br />&nbsp;</div>These three petitions, however, are not the only rehearing petitions that have been filed with respect to the Appointments Clause and APJs. For instance, in <em>Uniloc 2017 LLC v. Facebook, Inc.</em>, No. 2018-2251 (Fed. Cir. Oct. 31, 2019), another panel vacated a PTAB decision and remanded the case for further proceedings based on Arthrex. Additionally, appellees Facebook, Inc. and WhatsApp, Inc. filed a combined petition for rehearing and rehearing <em>en banc</em> on Monday, December 2, 2019, presenting the following questions:<br /><br /><div style="margin-left: 40px;">1. Whether the appointment of Administrative Patent Judges (APJs) to the Patent Trial and Appeal Board (PTAB) violates the Appointments Clause of the U.S. Constitution, U.S. CONST., Art 2, &sect; 2, cl. 2, as the panel in <em>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</em>, 941 F.3d 1320 (Fed. Cir. 2019) concluded; and <br /><br />2. If the answer to question (1) is &ldquo;yes,&rdquo; what appropriate judicial remedy, if any, can be fashioned to ameliorate the constitutional violation?<br />&nbsp;</div>These questions show that there is significant disagreement as to the court&rsquo;s decision in <em>Arthrex</em>. Other pending appeals from the PTAB have also been impacted by the <em>Arthrex </em>decision and are likely to result in further percolation at the Federal Circuit.<br /><br />We will continue to monitor and report on developments in these matters. In the meantime, please feel free to contact us to learn more. <br /><br />*Charles R. Macedo is a Partner and Chandler Sturm is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. The authors may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>. Fri, 20 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/alert12202019/ Brief of Askeladden L.L.C. as Amicus Curiae in Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG http://www.arelaw.com/publications/view/amicus12202019/ Click to dowload PDF: <a href="/images/file/Askeladden%20Amicus%20Brief%20Hunting%20Titan%20v_%20DynaEnergetics.pdf" target="_blank">AMICUS BRIEF OF ASKELADDEN LLC AS AMICUS CURIAE</a><br type="_moz" /> Fri, 20 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus12202019/ In The Press: <br>LES Reports on 2019 Meeting and Calls Out Partner Charles Macedo For His Introduction of Makan Delrahim<br> http://www.arelaw.com/publications/view/inthepress12132019/ LES Reports on 2019 Meeting and Calls Out Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a> For His Introduction of Makan Delrahim, Assistant Attorney General at the U.S. Antitrust Division, Department of Justice, for his talk, &ldquo;<em>The Times They Are a&rsquo;Changin</em>&rsquo;<em>: the Nine No-No&rsquo;s in 2019</em>&rdquo;: <br /><br /><div style="margin-left: 40px;">Charles Macedo, partner at Amster, Rothstein &amp; Ebenstein, LLP, the New York intellectual property law firm that sponsored Delrahim&rsquo;s speech, took the podium to outline the speaker&rsquo;s career.<br />&nbsp;</div>Meredith Holmes, <em>Evolution Of Innovation, IP Licensing,And Antitrust Law, LES VIEWPOINTS</em>, available at <a href="https://issuu.com/lesusacanada/docs/les_viewpoints_12_19_120519" target="_blank">https://issuu.com/lesusacanada/docs/les_viewpoints_12_19_120519</a>. Fri, 13 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress12132019/ ARE Patent Law Alert:<br>The US Supreme Court Holds that the USPTO Cannot Be Reimbursed for Salaries of Its Legal Personnel in Appeals Under § 145 of the Patent Act<br> http://www.arelaw.com/publications/view/alert12112019/ Supreme Court of the United States unanimously held in <i>Peter v. NantKwest, Inc.</i> that the term &ldquo;expenses&rdquo; in 35 U.S.C. &sect; 145 does not include attorney&rsquo;s fees, and that the United States Patent and Trademark Office (&ldquo;USPTO&rdquo;) cannot recover the salaries of its attorneys and paralegals in appeals brought under that section of the Patent Act. 589 U.S. ___, slip op. (2019).&nbsp;<div>&nbsp;</div> <div>As background, an adverse decision of the USPTO may be challenged via mutually exclusive pathways created by the Patent Act. &ldquo;Unlike &sect; 141, &sect; 145 permits the application to present new evidence&hellip;not presented to the PTO.&rsquo;&rdquo; <i>NantKwest</i>, 589 U.S., at ___ (slip op. at 2).&nbsp;A challenge pursuant to &sect; 145 may result in a drawn-out litigation, as there is no limit on an applicant&rsquo;s ability to introduce new evidence. Thus, the Patent Act &ldquo;requires applicants who avail themselves of &sect;145 to pay &lsquo;[a]ll the expenses of the proceedings.&rsquo;&rdquo; <i>Id</i>. &nbsp;Today&rsquo;s ruling clarifies that the phrase &ldquo;[a]ll expenses&rdquo; does not mean that parties appealing patent rulings under this provision must also pay pro-rata portions of the salaries of the USPTO attorneys and paralegals involved in such appeals.&nbsp;Accordingly, such appeals will now be considerably more affordable.</div> <div>&nbsp;</div> <div><b><u>The American Rule Applies to All Statutes</u></b></div> <div>When considering the award of attorney&rsquo;s fees, a fundamental principle, known as the &ldquo;American Rule,&rdquo; states that &ldquo;each litigant pays his own attorney&rsquo;s fees, win or lose, unless a statute or contract provides otherwise.&rdquo; <i>Id</i>. at 3-4.&nbsp;The Government argued that &ldquo;[b]ecause the American Rule presumption is most often overcome when a statute awards fees to a &lsquo;prevailing party,&rsquo;&hellip;the presumption applies only to prevailing-party statutes.&rdquo; <i>Id</i>.&nbsp;Thus, the Government reasoned that because Section 145 requires a party to pay all expenses, regardless of the outcome, the presumption doesn&rsquo;t apply.</div> <div>&nbsp;</div> <div>However, the Supreme Court held that this view is incorrect. The Court pointed to its decision in <i>Sebelius v. Cloer</i>, 569 U.S. 369 (2013), which confirmed that the presumption against fee shifting applies to <b><i>all</i></b> statutes, whether or not they explicitly award fees to prevailing parties.</div> <div>&nbsp;</div> <div><b><u>Congress Did Not Intend to Depart from the American Rule </u></b></div> <div>In determining that the American Rule did, in fact, apply to Section 145, the Court examined whether Congress intended to depart from the American Rule. There must be a sufficient &ldquo;specific and explicit&rdquo; indication of Congress&rsquo; intent in order to overcome the presumption; the absence of a specific reference to attorney&rsquo;s fees is not enough. <i>Id</i>.</div> <div>&nbsp;</div> <div>First, the Court looked to the text of the statute, specifically analyzing the meaning of the term &ldquo;expenses.&rdquo; <i>Id</i>. &nbsp;&ldquo;Reading the term &lsquo;expenses&rsquo; alongside neighboring words in the statute&hellip;supports a conclusion excluding legal fees from the scope of &sect;145.&rdquo; <i>Id</i>. at 7.&nbsp;Traditionally, attorney&rsquo;s fees have not been included in the class of expenses referred to in the phrase &ldquo;expenses of the proceeding,&rdquo; suggesting that the use of &ldquo;expenses&rdquo; would not have been understood to include attorney&rsquo;s fees at the time of the statute&rsquo;s enactment.&nbsp;<i>Id</i>. &nbsp;Thus, the Court held, Section 145&rsquo;s plain text does not overcome the American Rule&rsquo;s presumption against fee shifting to permit the USPTO to recover attorney&rsquo;s fees.</div> <div>&nbsp;</div> <div>The Court then looked to &ldquo;the record of statutory usage&rdquo; to demonstrate that the term &ldquo;expenses&rdquo; alone does not include attorney&rsquo;s fees. <i>Id</i>. at 8.&nbsp;&ldquo;That &lsquo;expenses&rsquo; and &lsquo;attorney&rsquo;s fees&rsquo; appear in tandem across various statutes shifting litigation costs indicates that Congress understands the two terms to be distinct and not inclusive of each other.&rdquo; <i>Id</i>. &nbsp;Thus, the common statutory usage of the term &ldquo;expenses&rdquo; alone has &ldquo;never been considered to authorize an award of attorney&rsquo;s fees with sufficient clarity to overcome the American Rule presumption.&rdquo; <i>Id</i>.</div> <div>&nbsp;</div> <div>Finally, the Court pointed to the history of the Patent Act. Citing a number of sections under Title 35, the Court reasoned that &ldquo;when Congress intended to provide for attorney&rsquo;s fees in the Patent Act, it stated so explicitly.&rdquo; <i>Id</i>. at 9. &nbsp;Thus, since Congress did not make its intent similarly clear in Section 145, the statute does not authorize the PTO to recover its attorney&rsquo;s fees.&nbsp;</div> <div>&nbsp;</div> <div><b><u>Involvement &amp; Going Forward</u></b></div> <div><b><u>&nbsp;</u></b></div> <div>In June 2019, the New York Intellectual Property Law Association (&ldquo;NYIPLA&rdquo;), represented by Amster, Rothstein &amp; Ebenstein and others, submitted an amicus brief in this case advocating for the position taken by the Supreme Court here.&nbsp;</div> <div>&nbsp;</div> <div>In May 2019, the NYIPLA also filed an amicus brief in the Supreme Court in <i>Booking.com B.V. v. United States Patent and Trademark Office</i>, No. 18-1309, to address the similar issue of whether a trademark applicant must pay the PTO&rsquo;s attorney&rsquo;s fees as &ldquo;expenses&rdquo; pursuant to 15 U.S.C. &sect; 1071(b)(3).&nbsp;The Supreme Court has indicated that it will consider this case at its conference of December 13, 2019.&nbsp;We suspect the Court will take that opportunity to grant the Petition for Certiorari, vacate the Fourth Circuit&rsquo;s contrary decision, and remand the case for further consideration in accordance with today&rsquo;s decision in <i>NantKwest</i>.<br /><br />* Anthony Lo Cicero and Charles R. Macedo are partners, David Goldberg is an associate and Chandler Sturm is a law clerk pending admission at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. Messrs. Macedo and Goldberg represented the NYIPLA as an amicus in this case. They may be reached at <a href="mailto:alocicero@arelaw.com">alocicero@arelaw.com</a>, <a href="mailto:cmacedo@arelaw.com" onclick="window.open(this.href,'','resizable=no,location=no,menubar=no,scrollbars=no,status=no,toolbar=no,fullscreen=no,dependent=no,status'); return false">cmacedo@arelaw.com</a>, <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a> and <a href="mailto:csturm@arelaw.com">csturm@arelaw.com</a>.</div> Wed, 11 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/alert12112019/ In The Press:<br>IPWATCHDOG turns to Associate David Goldberg For Views on SCOTUS Decision in Peter v. Nantkwest<br> http://www.arelaw.com/publications/view/inthepress12112019/ IPWatchdog turns to <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a>, an associate at the firm and Co-Chair of the NYIPLA Amicus Brief Committee for his views on the U.S. Supreme Court Decision in Peters v. Nantkwest:<br /><br /><div style="margin-left: 40px;">&quot;And David Goldberg, Associate Attorney at Amster, Rothstein &amp; Ebenstein LLP and Co-Chair of the Amicus Briefs Committee for the New York Intellectual Property Law Association (NYIPLA), which submitted amicus briefs in the Shammas, NantKwest, and Booking.com cases on this issue, said that NYIPLA has long &ldquo;taken the position that the American Rule clearly applies to trademark appeals under 15 U.S.C &sect; 1071(b) and patent appeals under 35 U.S.C. &sect; 145.&rdquo; Goldberg added that NYIPLA is pleased with the decision and expects the Justices to &ldquo;make a similar clarification on the trademark side when they consider the <a href="https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/18-1309.html" target="_blank">Booking.com</a> appeal (no. 18-1309) in their conference of December 13, 2019.&rdquo;<br />&nbsp;</div><strong>SCOTUS Holds in NantKwest that USPTO Cannot Be Reimbursed for Salaries of Legal Personnel</strong><br />By Eileen McDermott (December 11, 2019)<br /><br />Available at: <a href="https://www.ipwatchdog.com/2019/12/11/scotus-holds-nantkwest-uspto-cannot-reimbursed-salaries-legal-personnel/id=116951/" target="_blank">https://www.ipwatchdog.com/2019/12/11/scotus-holds-nantkwest-uspto-cannot-reimbursed-salaries-legal-personnel/id=116951/</a> <br /><br />Partner <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> and associate <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a> submitted an Amicus Brief on behalf of the NYIPLA in Peter v. Nantkwest to the Supreme Court as well as other related petitions in Shammas and Booking. Copies of those amicus briefs are available at <a href="https://www.arelaw.com/downloads/ARElaw_AmicusBrief_2015_15-563nyipla.pdf" target="_blank">Shammas Amicus Brief </a>and <a href="https://www.arelaw.com/images/file/18-1309%20Motion%20For%20Leave%20To%20File%20Amicus%20Curiae%20Brief%20and%20Brief%20of%20New%20York%20Intellectual%20Property%20Law%20Association%20As%20Amicus%20Curiae%20In%20Support%20of%20Petitioner.pdf" target="_blank">Booking Amicus Brief</a>. For more information on this decision, please see our ARELAW Alert <a href="https://www.arelaw.com/publications/view/alert12112019/" target="_blank">here</a>.<br /><br /><span style="font-size:11.0pt;Calibri" new=""><a href="https://www.ipwatchdog.com/2019/12/11/scotus-holds-nantkwest-uspto-cannot-reimbursed-salaries-legal-personnel/id=116951/" target="_blank"><span style="color: blue; text-decoration-line: none;"><img border="0" width="240" height="187" id="LPThumbnailImageId758685" src="https://www.ipwatchdog.com/wp-content/uploads/2017/08/5986083_s-e1504133080464.jpg" style="display:block" alt="" /></span></a></span><table class="MsoNormalTable" border="1" cellpadding="0" width="100%" style="width:100.0%;mso-cellspacing:1.5pt;border:solid #C8C8C8 1.0pt;&#10; mso-border-alt:solid #C8C8C8 .75pt;mso-yfti-tbllook:1184;mso-padding-alt:9.0pt 27.0pt 9.0pt 9.0pt"> <tbody><tr> <td width="100%" valign="top" style="width:100.0%;border:none;padding:9.0pt 27.0pt 9.0pt 9.0pt"><p class="MsoNormal"><span style="font-size: small;"><span style="font-family: " segoe="" ui=""><a href="https://www.ipwatchdog.com/2019/12/11/scotus-holds-nantkwest-uspto-cannot-reimbursed-salaries-legal-personnel/id=116951/" target="_blank">SCOTUS Holds in NantKwest that USPTO Cannot Be Reimbursed for Salaries of Legal Personnel</a></span></span><span style="font-size:16.0pt;font-family:" segoe="" ui="" new=""><o:p></o:p></span></p><p class="MsoNormal"><span style="font-size: small;"><span style="font-family: " segoe="" color:="">The Supreme Court ruled in Peter v. NantKwest today that the U.S. Patent and Trademark Office (USPTO) cannot recover the salaries of USPTO attorneys and paralegals who work on civil actions ...</span></span><span style="font-size:10.5pt;font-family:" segoe="" new=""><o:p></o:p></span></p><p class="MsoNormal"><span style="font-size: small;"><span style="font-family: " segoe="" color:=""><a href="http://www.ipwatchdog.com" target="_blank">www.ipwatchdog.com</a></span></span><span style="font-size:10.5pt;font-family:" segoe="" new=""><o:p></o:p></span></p></td> </tr> </tbody></table> Wed, 11 Dec 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress12112019/ ARE PTAB Alert:<br>PTAB Judges Deny Institution of IPRs and Reject Their Role as “Archeologists” of the Record<br> http://www.arelaw.com/publications/view/alert11262019/ On November 18, 2019, the Patent Trial and Appeal Board (the &ldquo;PTAB&rdquo;) denied institution of a series of <i>inter partes </i>review (&ldquo;IPR&rdquo;) proceedings brought by Petitioner Lifescan Global Corporation (&ldquo;Petitioner&rdquo;) against Patent Owner PHC Holdings Corporation&rsquo;s (&ldquo;Patent Owner&rdquo;) biosensor patents: Patent Nos. 8,480,878 B2 (the &ldquo;&rsquo;878 patent&rdquo;) and 8,349,157 B2 (the &ldquo;&rsquo;157 patent&rdquo;). (IPR2019-01127, and -01128). &nbsp;ARE represented the Patent Owner in both proceedings.<div>&nbsp;</div> <div>Both the &rsquo;878 and &rsquo;157 Patents disclose particular arrangements of the specimen supply path, reagent layer, and electrodes formed using a simple manufacturing method to increase the accuracy of each biosensor.</div> <div>&nbsp;</div> <div>Petitioner had raised 14 grounds of unpatentability based on alleged anticipation and/or obviousness. &nbsp;However, the PTAB&rsquo;s Administrative Patent Judges determined that Petitioner failed to meet the low standard of establishing a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.</div> <div>&nbsp;</div> <div>The PTAB&rsquo;s denial of Petitioner&rsquo;s arguments for unpatentability of independent claim 1 of the &rsquo;878 Patent, and independent claim 16 of the &rsquo;157 Patent are discussed below.</div> <div>&nbsp;</div> <div>Claim 1 of the &rsquo;878 Patent and claim 16 of the &rsquo;157 Patent require a biosensor comprised of a &ldquo;spacer layer&rdquo; that covers part of a reagent layer, where the spacer layer defines a supply path for bringing the sample liquid into contact with the reagent layer, and where the supply path formed by the spacer layer is narrower than the reagent layer.</div> <div>&nbsp;</div> <div>Petitioner argued that the spacer layer limitation was anticipated by the cited Heller reference, and relied upon Figures 1 and 3 to support its conclusion. &nbsp;However, Figure 3 does not show the spacer covering the sensing layer. &nbsp;Instead, the PTAB found that Petitioner was relying on <b><i>&ldquo;an imaginary adaption&hellip;of the figure.&rdquo;</i></b> &nbsp;This imaginary adaptation was rejected because it was contradicted by an actual figure that was not addressed by Petitioner or its experts.&nbsp; Specifically, Petitioner failed to address Figure 4, which depicts an unexploded view of the sensor and shows that the spacer layer does not cover any part of the sensing layer.</div> <div>&nbsp;</div> <div>Petitioner similarly alleged anticipation of the spacer layer limitation by the Ohara reference. &nbsp;Petitioner relied on Figure 5 of Ohara, another exploded view of a sensor. &nbsp;The PTAB rejected Petitioner&rsquo;s reliance on a <b><i>&ldquo;visual inspection&rdquo;</i></b> of the exploded view of the sensor in Figure 5 since &ldquo;Petitioner does not direct us to an image of an assembled version of Ohara&rsquo;a sensor that would allow us to determine whether spacer layer [ ] actually covers the reagent layer, as opposed to simply being arranged above it in an exploded view.&rdquo;</div> <div>&nbsp;</div> <div>Petitioner next argued that the claims were anticipated by the Liamos reference. &nbsp;The PTAB rejected this argument because the Petitioner did not point to any portion of the reference that &ldquo;explicitly teaches, or otherwise anticipates, the spacer covers part of the reagent layer.&rdquo; &nbsp;In addition, Petitioner had failed to demonstrate that the &ldquo;dielectric or other insulating material deposited on an electrode&rdquo; in Liamos can be the spacer layer. &nbsp;Instead, the PTAB found that the spacer and the &ldquo;dielectric or other insulating material&rdquo; appear to &ldquo;comprise two different components&hellip;that perform two different functions.&rdquo;&nbsp; Thus, Petitioner did not adequately demonstrate that a <b><i>single</i></b> component in the reference satisfies <b><i>both</i></b> limitations.</div> <div>&nbsp;</div> <div>Lastly, Petitioner argued that each element of the claims was obvious by the Blatt reference, in view of seven other listed references. &nbsp;This argument was rejected because Petitioner failed to follow the PTAB&rsquo;s Trial Practice Guide&rsquo;s admonition that parties should &ldquo;avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.&rdquo; &nbsp;</div> <div>&nbsp;</div> <div>Petitioner failed to provide reasoning as to &ldquo;how each of the eight references are to be combined or which teaching from each reference are relied upon to suggest each limitation of the claims.&rdquo; &nbsp;Instead, Petitioner&rsquo;s arguments amounted to an &ldquo;invitation for [the PTAB] to <b><i>cobble together arguments</i></b>, search for pertinent facts, and inject [the PTAB&rsquo;s] own reasoning.&rdquo; &nbsp;The PTAB concluded that this was not their &ldquo;role&rdquo;, as they are <b><i>not &ldquo;archeologists&rdquo; of the record</i></b>. &nbsp;Thus, Petitioner had again failed to show a reasonable likelihood of demonstrating the claims were invalid.</div> <div>&nbsp;<br />* Kenneth George and Brian Comack are partners at Amster, Rothstein &amp; Ebenstein LLP. They represented the Patent Owner in both proceedings. Their practice specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes. They may be reached at <a href="mailto:kgeorge@arelaw.com">kgeorge@arelaw.com</a> and <a href="mailto:bcomack@arelaw.com">bcomack@arelaw.com</a>.</div> Tue, 26 Nov 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/alert11262019/ In The Press: <br>BCC Research quotes Partner Charles Macedo from AUTM Eastern Region Meeting discussing Blockchain Technology:<br> http://www.arelaw.com/publications/view/inthepress11082019/ &ldquo;Blockchain was built on the philosophy that we don&rsquo;t trust the government, but we trust math and technology. How do we build a trustless system which inspires trust built on Libertarian philosophies?&rdquo; - Charles Macedo, AUTM 2019 Eastern Region Meeting<br /><br />Clara Mouawad, Understanding Blockchain Technology, BCC Research, Nov. 8, 2019 (available at <a href="http://blog.bccresearch.com/understanding-blockchain-technology?utm_content=105319839&amp;utm_medium=social&amp;utm_source=twitter&amp;hss_channel=tw-106360602" target="_blank">http://blog.bccresearch.com/understanding-blockchain-technology?utm_content=105319839&amp;utm_medium=social&amp;utm_source=twitter&amp;hss_channel=tw-106360602</a>) <br /> Fri, 08 Nov 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress11082019/ ARE PTAB Law Alert:<br>FEDERAL CIRCUIT DECLARES PTAB APJs TO BE SUPERIOR OFFICERS APPOINTED IN AN UNCONSTITUTIONAL MANNER, BUT OFFERS A FIX GOING FORWARD WITH LIMITED RELIEF GOING BACK<br> http://www.arelaw.com/publications/view/alert11042019/ <div>&nbsp;</div><div><strong>Updated: November 18, 2019</strong><br /><br />On Thursday, October 31, 2019, in <em>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</em>, the U.S. Court of Appeals for the Federal Circuit issued a 30-page decision declaring that Administrative Patent Judges (&ldquo;APJs&rdquo;) at the Patent Trial and Appeal Board (&ldquo;PTAB&rdquo;) are &ldquo;principal officers&rdquo; as the Patent Act (Title 35) has been enacted and structured. As such, the appointment of APJs by the Secretary of Commerce, as set forth in Title 35, violates the Appointments Clause, U.S. CONST., art. II, &sect; 2, cl. 2. <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2140.Opinion.10-31-2019.pdf"><em>Arthrex, Inc. v. Smith &amp; Nephew, Inc., No. 2018-2140, slip op. (Fed. Cir. Oct. 31, 2019)</em></a><em>. </em><br /><br />Notwithstanding this sweeping holding, after rejecting other alternatives, <em>Arthrex </em>provided as a &ldquo;fix&rdquo; to this constitutional flaw, severing the portion of the Patent Act restricting removal of the APJs only &ldquo;for cause&rdquo; as sufficient to render APJs inferior officers going forward and remedy the appointment problem. In this regard, <em>Arthrex </em>relied upon the Supreme Court&rsquo;s holding: &ldquo;[T]he power to remove officers at will and without cause is a powerful tool for control of an inferior.&rdquo; <em>Free Enterprise Fund. v. Public Company Accounting Oversight Board</em>, 561 U.S. 477, 501 (2010). Arthrex summed up its conclusion that &ldquo;severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.&rdquo; <em>Arthrex</em>, slip op. at 2. <br /><br />For the patentee in <em>Arthrex</em>, because the Board&rsquo;s decision was rendered by a panel of APJs that were not constitutionally appointed, this decision resulted in the Final Written Decision being vacated and the case remanded for a new panel of properly appointed APJs &ldquo;to hear &hellip; anew on remand&rdquo; without reaching the merits, as the Supreme Court instructed in <em>SEC v. Lucia</em>, 138 S. Ct. 2044 (2018). <em>Arthrex</em>, slip op. at 29-30. <br /><br />Significantly, even <em>Arthrex </em>put limits on its holding:<br />&nbsp;</div><div style="margin-left: 40px;">1. &ldquo;To be clear, on remand the decision to institute is not suspect; we see no constitutional infirmity in the institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. &sect; 314.&rdquo; <em>Id</em>. at 30.<br />&nbsp;</div><div style="margin-left: 40px;">2. &ldquo;[W]e see no error in the new panel proceeding on the existing written record but leave to the Board&rsquo;s sound discretion whether it should allow additional briefing or reopen the record in any individual case.&rdquo; <em>Id.</em></div><div><br />In Lucia, as <em>Arthrex </em>noted, &ldquo;[t]o cure the constitutional error, another ALJ &hellip; must hold the new hearing.&rdquo; Id. at 30 (quoting Lucia, 138 S. Ct. at 2055). <em>Arthrex </em>does not appear to decide if a new oral hearing must be held on remand. <br /><br /><em>Arthrex </em>recognized that a waiver of an Appointments Clause challenge does not arise by the failure to raise it before the Administrative Agency, here in the PTAB proceeding below. <em>Id</em>. at 5. But the panel also noted that such challenges are not &ldquo;jurisdictional&rdquo;. <em>Id</em>. at 29. Thus, <em>Arthrex </em>confirmed its holding was &ldquo;only that this case, where the final decision was rendered by a panel of APJs who were not constitutionally appointed and where the parties presented an Appointments Clause challenge on appeal, must be vacated and remanded.&rdquo; <em>Id</em>. <br /><br />Thus, while <em>Arthrex </em>recognized that the patentee in that case did not waive its challenge by waiting until its Appeal to raise the issue, subsequent decisions have clarified that to preserve the argument on appeal, the argument must be raised in the opening brief or be forfeited. See, e.g., <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2239.Order.11-1-2019.1.pdf"><em>Customedia Technologies, LLC v. Dish Network Corp</em>.</a>, No. 2018-2239, Order (Fed. Cir. Nov. 1, 2019) (denying motions to vacate and remand because &ldquo;Customedia did not raise any semblance of an Appointments Clause challenge in its opening brief or raise this challenge in a motion filed prior to its opening brief&rdquo;); <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1001.Order.11-1-2019.1.pdf"><em>Customedia Technologies, LLC v. Dish Network Corp.</em></a>, No. 2019-1001, Order (Fed. Cir. Nov. 1, 2019). <br /><br />In sum, it appears that:<br />&nbsp;</div><div style="margin-left: 40px;">1. Any Final Written Decision of the PTAB issued by APJs appointed prior to October 31, 2019 by the Secretary of Commerce is at risk of being vacated and remanded to be decided by a new panel of properly appointed APJs on appeal, to the extent that a challenge is made on appeal either by motion before an opening brief is filed or in an opening brief on appeal. <em>See, e.g.</em>, <a href="http://www.cafc.uscourts.gov/sites/default/files/Uniloc_Order_18-2251.pdf"><em>Uniloc 2017 v. Facebook, Inc.</em></a>, No. 2018-2251, Order (Fed. Cir. Oct. 31, 2019) (vacating and remanding PTAB decision to the Board &ldquo;consistent with this court&rsquo;s decision in Arthrex&rdquo;). <br /><br />2. Any institution decisions or records developed before or after October 31, 2019, remain in force and effect and unscathed by <em>Arthrex</em>.</div><div style="margin-left: 40px;"><br />3. Any final written decisions in which the challenge was not timely made on appeal in a pre-Opening Brief motion or on a motion, remain in force and effect.</div><div>Presumably, future decisions by the PTAB will include APJs that are reappointed by the Secretary of Commerce that can be removed at will and thus made by inferior officers in accordance with the Appointments Clause. <br /><br />Since the decision in <em>Arthrex</em>, the Court in <em>Polaris Innovations Ltd. v. Kingston Tech. Co.</em>, No. 18-2140 (Fed. Cir.), has requested additional briefing on essentially whether the Arthrex decision was correct. In addition, in two unrelated cases, the government has indicated its intent to seek rehearing en banc by moving to stay proceedings involving cases seeking remand post-<em>Arthrex</em>. <em>See </em><em>Steuben Foods, Inc. v. Nestle USA, Inc.</em>, No. 20-1082, -1083 (Fed. Cir.); <em>VirnetX Inc. v. Cisco Systems, Inc.</em>, No 19-1671 (Fed. Cir.). Thus, it seems that in due time, other judges at the Federal Circuit will address the Arthrex holding. <br /><br />We will continue to monitor and report on developments in this area. In the meantime, please feel free to contact us to learn more.<br />&nbsp;</div> *<a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is a Partner at Amster Rothstein &amp; Ebenstein LLC, which specializes in intellectual property issues, including litigating patent, trademark and other intellectual property disputes.&nbsp;The author may be reached at&nbsp;<a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>. Mon, 04 Nov 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/alert11042019/ In The Press: <br>US Supreme Court hears argument on whether Patent Office can collect employees’ salaries in defending district court actions<br> http://www.arelaw.com/publications/view/inthepress10092019/ Los Angeles &amp; San Fransico's Daily Journal (October 9, 2019) -- publishes Amster, Rothstein &amp; Ebenstein's Charles Macedo, Christopher Lisiewski and Chandler Sturm's article on the Supreme Court Hearing Whether Patent Office Can Collect Employees&rsquo; Salaries In Defending District Court Actions &ndash; Even When The Patent Office Is Wrong.<br /><br />The latest term of the Supreme Court began with the high court answering the peculiar question of whether the Government can recoup the salaries of its staff attorneys and paralegals from an adversary in a district court proceeding challenging an adverse decision by the U.S. Patent and Trademark Office (&ldquo;Patent Office&rdquo;) in Federal Court&ndash;even when the adversary wins the challenge. See Peters v. Nantkwest, Inc., No. 18-801 (U.S. argued October 7, 2019).<br /><br />For the full article, please click <a href="/images/file/Amster%20(DJ%2010-14-19).pdf" target="_blank">here</a>.<br type="_moz" /> Mon, 14 Oct 2019 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress10092019/