The U.S. Patent and Trademark Office (PTO) has responded to the Supreme Court ruling in the so-called Arthrex case, which affects how the agency will handle inter partes reviews (IPR) decided by administrative patent judges (APJs). PTO said litigants to IPRs can request a review by the director of the agency only in limited circumstances, however, potentially limiting litigants to one administrative path following an unfavorable IPR outcome.

In a split decision delivered June 21, the U.S. Supreme Court resolved the dilemma created by the constitutional non-reviewability of decisions rendered by the Patent Trial and Appeal Board (PTAB). The Supreme Court’s solution is to make those PTAB decisions reviewable by the director of the Patent and Trademark Office (PTO), although the PTO director’s discretion regarding which PTAB cases should be reviewed may itself prove highly controversial in the months and years to come.

Roughly four years after Intuitive Surgical Inc. petitioned for an inter partes review for a patent owned by Ethicon Endo-Surgery Inc., the Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) finding that the first 14 claims in Ethicon’s 9,585,658 patent are invalid. While the fate of two other claims are still up in the air pending remand to the PTAB, the net effect of the hearing was significantly damaging to an Ethicon patent for surgical staplers that has been in place for only four years.

The case of Arthrex v. Smith & Nephew at the U.S. Court of Appeals for the Federal Circuit was something of a nuclear option for the patent dispute at hand, as it raised a constitutional question regarding the appointment of administrative patent judges (APJ) at the Patent Trial and Appeal Board (PTAB). The Supreme Court has agreed to hear a consolidation of three petitions for cert arising from the Arthrex case, the outcome of which could force the reopening of a number of cases already decided by the PTAB.