IP News

On Jan. 13, 2016, a Federal Circuit panel consisting of Judge Newman, Judge Dyk, and Judge Taranto issued a majority opinion, authored by Judge Dyk, in Ethicon Endo-Surgery v. Covidien LP, Case No. 2014-1771. The majority held that 35 U.S.C. '314(d) does not bar the Federal Circuit from hearing Ethicon's challenge to the authority of the Patent Trial and Appeals Board (PTAB) to render a final inter partes review (IPR) decision, and that neither the Constitution nor the American Invents Act (AIA) precludes the PTAB panel that instituted an IPR from making a final determination on the merits. Judge Newman wrote a separate opinion, dissenting.

Ethicon owns U.S. Patent No. 8,317,070 (the '070 patent), which contains claims directed to a surgical device used to staple, secure, and seal tissue that has been incised. Covidien sells surgical staplers that Ethicon accused of infringement. On March 25, 2013, Covidien petitioned the United States Patent and Trademark Office (PTO) for inter partes review of claims of the '070 patent. A PTAB panel instituted an IPR 'on behalf of the Director' under 37 C.F.R. '42.4(a), and on June 9, 2014, the same panel issued a final determination invalidating the claims at issue as obvious. Ethicon appealed, arguing that the U.S. Constitution and the AIA requires setting aside the final decision because it came from the same panel that instituted the IPR. Ethicon also challenged the panel's finding of obviousness.