from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2016-00917.
Anthony P. Cho, Carlson, Gaskey & Olds, P.C., Birmingham,
MI, argued for appellant. Also represented by David J.
R. Speed, Wolf, Greenfield & Sacks, PC, Boston, MA,
argued for appellees. Also represented by Richard Giunta,
Michael N. Rader.
Newman, Dyk, and O'Malley, Circuit Judges.
pending inter partes review proceeding ("IPR")
before the Patent Trial and Appeal Board ("the
Board"), Arthrex, Inc. disclaimed all claims that were
the subject of the petition. The disclaimer occurred before
the Board issued an institution decision. The Board then
entered an adverse judgment pursuant to 37 C.F.R. §
42.73(b). Ar-threx appeals. Because we conclude that the
Board acted within the scope of the regulation, we affirm.
April 19, 2016, Smith & Nephew, Inc. and Arthro-care
Corp. filed an IPR petition challenging claims 1-9 of U.S.
Patent No. 8, 821, 541 ("the '541 patent"),
which is owned by Arthrex. On July 22, 2016, Arthrex
disclaimed claims 1-9 of the '541 patent as permitted
under 37 C.F.R. § 42.107(e). Arthrex then filed a
Preliminary Response, arguing that an IPR should not be
instituted because 37 C.F.R. § 42.107(e) states
"[n]o inter partes review will be instituted
based on disclaimed claims." At that point, Arthrex
confronted 37 C.F.R. § 42.73(b), which provides:
A party may request judgment against itself at any time
during a proceeding. Actions construed to be a request for
adverse judgment include:
(1) Disclaimer of the involved application or patent;
(2) Cancellation or disclaimer of a claim such that the
party has no remaining claim in the trial;
(3) Concession of unpatentability or derivation of the
contested subject matter; and
(4) Abandonment of the contest.
37 C.F.R. § 42.73(b) (emphasis added). In order to avoid
the entering of an adverse judgment pursuant to 37 C.F.R.
§ 42.73(b), the Preliminary Response stated that
"[b]y filing the statutory disclaimer, Arthrex, Inc. is
not requesting an adverse judgment." J.A. 17.
further briefing, the Board entered an adverse judgment
against Arthrex pursuant to 37 C.F.R. § 42.73(b),
concluding that "our rules permit the Board to construe
a statutory disclaimer of all challenged claims as a request
for adverse judgment, even when the disclaimer occurs before
the Board has entered a decision on institution."
Smith & Nephew, Inc. v. Arthrex, Inc., No.
IPR2016-001917, slip op. at 6 (P.T.A.B. Sept. 21, 2016).
the Board entered an adverse judgment, an estoppel effect
attached, as 37 C.F.R. § 42.73(d)(3)(i) precludes a
patent owner "from taking action inconsistent with the
adverse judgment, including obtaining in any patent . . . [a]
claim that is not patentably distinct from a finally refused
or canceled claim." At the time of the adverse judgment,
Arthrex had two pending continuation patent applications that
this estoppel provision would impact. Those two applications
have since issued as patents. Arthrex recently filed another
continuation application, which remains in prosecution and
therefore is affected by the adverse judgment.
timely appealed. Smith & Nephew and Ar-throCare Corp.,
the petitioners in the IPR proceeding, moved to dismiss the
appeal for lack of subject-matter jurisdiction, arguing that
35 U.S.C. § 319 (providing for appeal from a "final
written decision") created the exclusive means of appeal
and that the Board did not issue a "final written
decision" as required by that section. This court denied
the motion, directing the parties "to address in their
briefs whether the order on appeal is reviewable as a final
decision." Arthrex, Inc. v. Smith & Nephew
Corp., No. 17-1239, Dkt. No. 18 (Fed. Cir. Jan. 31,
first issue is whether the adverse final judgment is
appealable. There is no contention that the statutory
appeal-bar provision applies here. See 35 U.S.C.
§ 314(d) (stating that institution decisions "shall
be final and nonappealable"); see also Cuozzo Speed
Techs., LLC v. Lee, 136 S.Ct. 2131, 2139-42 (2016).
Rather, the question is whether a statute provides a right to
approach this question in light of the general rule that
judicial review is presumed to be available with respect to
final agency action. The Supreme Court has recognized
"the strong presumption that Congress intends judicial
review of administrative action." Mach Mining, LLC
v. EEOC, 135 S.Ct. 1645, 1651 (2015); see also
Cuozzo, 136 S.Ct. at 2140; Administrative Procedure Act
§ 10, 5 U.S.C. §§ 701, 704 (providing judicial
review for final agency actions unless precluded by statute).
the language of 28 U.S.C. § 1295 appears to provide for
appeal. Section 1295(a)(4)(A) provides the Federal
Circuit with jurisdiction over "an appeal from a
decision of-the Patent Trial and Appeal Board of the United
States Patent and Trademark Office with respect to . . .
inter partes review under title 35." The adverse
judgment in this case is a decision of the Board, and the
decision is "with respect to" an inter partes
review pro- ceeding. The judgment is also final, as the
judgment terminated the IPR proceeding. See In re
Arunachalam, 824 F.3d 987, 988 (Fed. Cir. 2016) (holding
that § 1295(a)(4)(A) incorporates a finality
requirement); Copelands' Enters., Inc. v. CNV,
Inc., 887 F.2d 1065, 1067-68 (Fed. Cir. 1989) (en banc)
& Nephew argues, however, that the more specific
reference to appeal rights in § 319 should govern; that
§ 319 only provides for review from a final written
decision; and that there has been no final written decision
here. Section 319 provides, "A party dissatisfied with
the final written decision of the Patent Trial and Appeal
Board under section 318(a) may appeal the decision pursuant
to sections 141 through 144." 35 U.S.C. § 319.
face, § 319 does not cabin the appeal rights conferred
by § 1295. However, Smith & Nephew points to
language in our previous decision, St. Jude Medical,
Cardiology Division, Inc. v. Volcano Corp., 749 F.3d
1373 (Fed. Cir. 2014). St. Jude stated that §
1295(a)(4)(A) "is most naturally read to refer precisely
to the Board's decision under section 318(a) on the
merits of the inter partes review, after it
'conducts' the proceeding that the Director has
'instituted.'" Id. at 1376. It also
stated "[t]he final written decision is the only
decision that the statute authorizes a dissatisfied party to
appeal." Id. at 1374. However, St.
Jude did not involve a similar situation, and the
availability of appeal of final adverse judgment decisions
was not directly addressed in that case.
St. Jude, the issue was whether § 1295(a)(4)(A)
authorized review of a Board decision declining to institute
an IPR or whether such an appeal was barred by § 314(d),
which provides, "[t]he determination by the Director
whether to institute an inter partes review under this
section shall be final and nonappealable." 35 U.S.C.
§ 314(d). St. Jude found that non-institution
decisions fall within the "broadly worded bar on
appeal" under § 314(d). 749 F.3d at 1376. Thus, the
question there was whether the appeal bar foreclosed
appellate jurisdiction-a question not involved here. Under
these circumstances, we are not bound by the language in
St. Jude. When a prior decision does not
"squarely address[ ] [an] issue, " a court remains
"free to address the issue ...