The main issue presented in Ethicon vs. Coviden is whether 35 U.S.C. § 314(d) precludes the federal circuit from hearing Ethicon’s challenge to the authority of the Board of the Patent office to render a final decision. The statute at issue states that the Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. The federal circuit held that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination.
This case is related to US8317070. The ‘070 patent is directed towards surgical staples. In 2010 Covidien started to sell surgical stapes that were similar to those described in the claims of the ‘070 patent. These staples were one of Covidien’s most successful product lines, with sales exceeding 1 billon dollars.
In 2013, Coviden filed a petition with the Patent Office requesting an inter partes review, stating that the claims were obvious. The board granted the petition, and found that the claims of the ‘070 patent were obvious under 35 U.S.C. § 103.
Ethicon appealed the Patent Office Board’s decision to the federal circuit. Ethicon challenged the final decision of the Board, arguing that the final decision of the board should be set aside because it was made by the same panel that made the decision to institute inter partes review. The America Invents Act1 (“AIA”) gives the Director the authority to determine whether an inter partes review should be initiated, and the Director has delegated this authority to the Board. The statute specifically gives the Board the power to decide the ultimate question of patent validity. The PTO has determined that, in the interest of efficiency, the decision to institute and the final decision should be made by the same Board panel, in line with the purposes of the AIA, which requires the Director consider the “efficient administration of the [PTO], and the ability of the [PTO] to timely complete proceedings” in promulgating regulations.
Ethicon contends that this combination of functions is improper because the statutory text and structure requires that the decision to institute not be made by the same panel of the Board that makes the ultimate decision.
The federal circuit rejected Ethicon’s arguments. The federal circuit stated, In short, both as a matter of inherent authority and general rulemaking authority, the Director of the Patent and Trademark office had authority to delegate the institution decision to the Board. There is nothing in the Constitution or the statute that precludes the same Board panel from making the decision to institute and then rendering the final decision.
As such, the federal circuit affirmed the Board at the Patent and Trademark office’s ruling.
Houston Patent Attorney’s Takeaway:
- When dealing with the Patent Office, inventors will likely disagree with the Examiner over whether claims should be allowed or not. Sometimes this disagreement leads to an appeal, a pre-appeal brief, or a call with the Examiner and his supervisor. In these circumstances, it is likely that the examiner will have some influence on the end result. It is atypical for a case to be transferred to a new examiner due to a disagreement with the examiner. Similar to this case, the examiner in your case may be reviewing your application at different stages. Thus, it is helpful to get on your examiner’s good side.
- It makes sense from an efficiency standpoint to allow the same parties to review the validity of patent applications at various stages.