Federal Circuit Rules that PTAB Judges are Unconstitutionally Appointed

In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., Oct. 31, 2019), a three Judge Fed. Cir. panel of Moore, Reyna and Chen took a deep dive into the appointments clause of the constitution and held that PTAB judges (“ APJ’s”) are unconstitutionally appointed “principal officers” of the U.S., who cannot validly be appointed by the Director of the Commerce Department, in consultation with the PTO Director. While the PTAB is mostly made up of APJ’s, the Director, the Deputy Director, and the Commissioners  of Patents and of Trademarks are also considered to be members of the Board.

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October 2019 Update: Subject Matter Eligibility – A Closer Look

Guest post from Edward Sandor. Warren Woessner also posted a blog about the Updated Guidance on October 21.

On October 17, 2019, the USPTO published an October 2019 Patent Eligibility Guidance Update to the earlier 2019 Revised Patent Subject Matter Eligibility Guidance published in January, 2019.

From the practitioner standpoint, the message continues to be encouraging.

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PTO Releases New Guidelines on Subject Matter Eligibility

On Oct. 17th, the PTO published Guidelines intended to supplement the Jan. 2019 Subject Matter Eligibility Guidelines (“2019 PEG”). The Guidelines and associated Examples are extensive. Only two of the Examples (43 and 44) are concerned with the life sciences. Example 43 is a method of medical treatment claim and 44 is a claim to a packaged natural product, that contains the natural product in a self-injectable patch to control diabetes, or combines it with another natural product.

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OSI v. Apotex – Christmas in October!

In OSI v. Apotex, Appeal no. 2018-1925 (Fed. Cir., October 4, 2019), the panel reversed the PTAB and found that the method of treatment claims in U.S. Pat. No. 6,900,221 were not obvious over a primary reference taken with each of two secondary references. The claims were to a method of treating non-small cell lung cancer by administering to a mammal a therapeutically effective amount of erlotinib (Tarceva®). The panel found that the cited combinations of references, Schnur in view of Gibbs or OSI’s Form 10-K as it was presented in its 10-K submission, would not provide a reasonable expectation of success in treating NSCLC to the POSA.

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