A New Twist on the Application of Arthrex, Inc. v. Smith & Nephew Arises—Does it Extend to PTAB Decisions in Ex Parte Examination?

February 4, 2020

By: Sheri L. Gordon

This question is presently before the Court in three consolidated appeals taken by Boloro Global Limited after the PTAB affirmed § 101 rejections issued in original prosecution of three Boloro patent applications.  The same PTAB panel heard Boloro’s appeals, and the same majority of that panel affirmed the examiner’s rejections and denied Boloro’s requests for rehearing.  Boloro moved to have the PTAB decisions on appeal vacated and the cases remanded to the PTAB for new hearings before a newly constituted panel in light of Arthrex just days before the January 6, 2020, deadline for its opening appellate brief.  The Director filed an opposing brief on January 13.  On February 5 the Court ordered the Director to file a supplemental brief to specifically address whether Arthrex should be extended to ex parte examination cases.  That brief is currently due February 19, though the Director recently filed an unopposed motion to extend that deadline to March 20.  Whatever the filing date of the Director’s brief, Boloro will have a week thereafter to file its response—absent any extension of time that may be granted.  The case is In re Boloro Global Limited, Consolidated Appeal Nos. 2019-2349, -2351, and -2353.