Arthrex’s Plan to Resolve PTAB Challenge Backfires in Federal Circuit

The U.S. Court of Appeals for the Federal Circuit upheld a decision from the Patent and Trademark Office to bar devicemaker Arthrex from ever again patenting claims similar to those the company invalidated in an attempt to thwart infringement arguments.

The first nine claims in patent No. 8,821,541, describing a device for anchoring a surgical suture to a patient’s bone, were challenged by Smith & Nephew in 2016, and later disclaimed by Arthrex — a move patent owners can make if they come to realize that patented claims were too broad to be justifiably patentable in the first place.

Smith & Nephew petitioned the PTO’s Patent Trial and Appeal Board to consider Arthrex’s disclaimer as a request for an adverse judgement in an inter partes review. The board decided in Smith & Nephew’s favor and said “it would be unfair” for Arthrex to avoid the challenge and be able to pursue patentably indistinct claims in the future.