A Federal Circuit court vacated a re-examination decision related to a knee surgery patent which expired on December 24, before the case was complete.
The court upheld some claims from Bioventures, and affirmed the validity of others, but said that as the U.S. Patent and Trademark office does not enter amendments made in re-examinations after patent expiration, it could not issue its amended claims.
The federal court said the case presented an “unusual procedural issue,” and sent it back to the PTO to “take whatever action it deems appropriate,” according to court documents.
Bioventures originally sued Biomet over the total knee replacement-related patent in Indiana Federal Court in 2010. Biomet pushed the USPTO to re-examine the case later that year, and all claims from Bioventures were rejected, and later amended by Bioventures.
After another re-examination and rejection, the case was appealed to the PTAB, who held that 8 amended and 8 unamended claims were patentable. Biomet responded with its own appeal.
No amendments have been confirmed, as no re-examination certificate was issued before the patent expired.