January 19, 2015 – On January 14, the Federal Circuit Court of Appeals vacated claim amendments made by the Patent Trials and Appeals Board during inter partes reexamination, because the patent expired after allowance of the amended claims by the Board but before the Federal Circuit could rule on the appeal from allowance. Reasoning that “the PTO does not enter amendments made in inter partes reexamination after the expiration of the patent,” and “Amendments are not effective until the [reexamination] certificate issues,” the Federal Circuit remanded to the Board for review of the claims in their unamended form. The Federal Circuit affirmed the validity of other unamended claims of the patent which had been found allowable by the Board.
The case is captioned Biomet Orthopedics, LLC v. Puget Bioventures, LLC, Docket No. 15-1468 (Fed. Cir. 2016). The patent at issue is U.S. Patent No. 7,344,541, titled “Method and Apparatus for Femoral and Tibial Resection.” Patent owner Puget Bioventures asserted the patent against Biomet in 2010 in the District Court of Indiana; that case remains stayed pending the reexamination.
By: Sean C. McDonagh