Federal Circuit Extends Arthrex to Ex Parte PTAB Appeals

July 20, 2020 – Firm News
On behalf of their client, Boloro Global Limited (Boloro), Oblon attorneys earlier this month secured a remand to the Patent and Trial Appeal Board (PTAB) of the U.S. Patent and Trademark Office for all three of Boloro’s appealed patent applications by successfully arguing the unconstitutionality of the PTAB panel appointed to hear Boloro’s appeals. In a precedential opinion, a three-judge panel of the Federal Circuit for the first time extended the reasoning of Arthrex, Inc. v. Smith & Nephew to ex parte appeals for patent applications such as Boloro’s.  The decision culminates more than six months of arguments at the Federal Circuit including two sua sponte requests for additional briefing after Boloro’s Motion to Vacate and Remand was filed in January, 2020. 
 
Oblon attorneys, Michael R. Casey, Ph.D. and James Love, represented Boloro at the Federal Circuit.  Dr. Casey, who was lead counsel on the Federal Circuit appeal, attributed the success to Oblon’s use of interdisciplinary talents from both its litigation and prosecution groups.  As part of District Court and post-grant appeals, Dr. Casey also has represented a number of other clients at the Federal Circuit including Ramtron, Net2Phone, and General Electric.