Naples, Florida-based Arthrex, Inc. is challenging the legality of retroactive patent reviews in the United States Supreme Court.
Arthrex Asks Supreme Court to Stop Retroactive Patent Reviews
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The dispute involves an Arthrex patent that was litigated in court and disputed before the Patent Trial and Appeal Board (PTAB).
The patent in question, U.S. Patent No. 8,821,541, “explained how to make a suture anchor with a rigid support that was ‘molded into’ the anchor structure—a feature designed to prevent suture failure.” In September 2014 Arthrex was issued the patent.
In 2015, Arthrex sued Smith & Nephew, Inc. and subsidiary ArthroCare Corp. for patent infringement. The jury sided with Arthrex and awarded Arthrex “over $12 million in damages.” However, while the case was still pending, Smith & Nephew and ArthroCare sought “inter partes review” of the patent claims. Arthrex claims that PTAB “issued a final written decision finding the challenged claims unpatentable” in late 2017, after the case was concluded.
Inter partes review is a relatively new law. In 2011, Congress enacted the Leahy-Smith America Invents Act (America Invents Act). The America Invents Act took effect on September 16, 2012 and replaced inter partes reexamination with inter partes review. Inter partes review allows PTAB to review the patentability of issued patents. According to the United States Patent and Trademark Office, the procedure for conducting inter partes review “applies to any patent issued before, on, or after September 16, 2012.”
Arthrex appealed and challenged PTAB’s finding of unpatentability. The court of appeals affirmed PTAB’s decision. Arthrex is now petitioning the Supreme Court regarding, “Whether the retroactive application of inter partes review to patents that were applied for before the America Invents Act violates the Fifth Amendment.”
In its petition, Arthrex argues that, “Retroactive application of inter partes review violates longstanding constitutional principles.” Arthrex asserts retroactive application of inter partes review violates the Fifth Amendment which “protects the interests in fair notice and repose that may be compromised by retroactive legislation.”
The petition is still pending.
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This is a fascinating development. In my practice we've seen similar outcomes with the revised protocol. The key differentiator seems to be patient selection criteria. Has anyone else noticed the correlation with BMI thresholds?
Great point. I'd push back slightly on the conclusion, the sample size in the cited study is too small to draw population-level inferences. That said, the directional signal is compelling and worth a larger RCT.
We implemented a similar approach last year. Early results are promising but we're still gathering 12-month follow-up data. Happy to share our protocol if anyone is interested.
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