Arthrex Petitions SCOTUS, Alleging Retroactive PTAB Review Unconstitutional

Medical device company Arthrex, Inc. filed a petition for a writ of certiorari on April 6 asking the Supreme Court to reconsider the legality of retroactive patent reviews, specifically for patents filed before the America Invents Act was enacted. The petition claims the inter partes review of an Arthrex patent violated Fifth Amendment principles against retroactivity.

Headquartered in Naples, Florida, Arthrex develops medical devices for orthopedic surgery. The company submitted a patent application in September 2006 for its new invention: a “suture anchor that surgeons can use to reattach torn soft tissue to bone.” This later became U.S. Patent Number 8,821,541 (the “ ’541 patent”). According to the petition, the ‘541 patent was finally issued in 2014 after pending for several years.

In 2011, Congress enacted the America Invents Act, a federal statute including several reforms to the U.S. patent system. The petition claims that the “statute created a new mechanism for more easily invalidating patents known as ‘inter partes review,’’ a procedure for challenging the validity of U.S. patents. Congress authorized the use of this mechanism even for cases in which the inventor applied for the patent prior to the statute’s enactment. The Patent Office allegedly “invoked [the] procedure to revoke Arthrex’s patent claims, even though a jury had already found them valid in litigation.” This process is conducted by the Patent Trial and Appeal Board (PTAB), an administrative law body founded as another part of the America Invents Act.

Arthrex’s concern about the inter partes review process stems from a June 2015 lawsuit against  Smith & Nephew, Inc., a subsidiary of ArthroCare Corp. The complaint claimed that the two companies infringed on several claims of the ‘541 patent. A jury rejected the defense that the patent’s claims were invalid as anticipated or obvious and awarded Arthrex over $12 million in damages. While the case was pending, Smith & Nephew and ArthroCare sought inter partes review of the ‘541 patent’s claims, arguing the same defense that they provided in court. The petition says, “In November 2017, after the district court litigation concluded, the Patent Trial and Appeal Board issued a final written decision finding the challenged claims unpatentable.”