Steven E. Roberts, Partner

Publications & Media

Federal Circuit Court Decisions For Week Ending January 15, 2016

Biomet Orthopedics, LLC v. Puget Bioventures, LLC, No. 2015-1468, January 14, 2016 (nonprecedential); Patent No. 7,344,541

Key point(s):

  • The USPTO cannot enter claim amendments made in inter partes reexamination after expiration of a patent.

Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 2014-1771, January 13, 2016 (precedential) (2-1); Patent No. 8,317,070

Key point(s):

  • It is lawful under the AIA for the same PTAB panel to both institute the decision for inter partes review and to render the review decision.
  • Commercial success as evidence of nonobviousness is relevant only if the commercial success is due to a claimed feature and if this feature is novel.