Parties seek redress under Arthrex, despite “waiver”

In Sanofi-Aventis Deutschland GMBH, V. Mylan Pharmaceuticals Inc. Appeal Nos 2019-1368 and 2019-1369, decided November 19, 2019 Sanofi-Aventis v Mylan, a majority of the Federal Circuit rejected Sanofi’s request to vacate the Board’s decision and remand to a different Board panel under Arthrex, in a footnote.  Slip opinion, footnote 4.   Arthrex, Inc. v. Smith and Nephew, Inc., No. 2018-2140, —F.3d — (Fed. Cir. Oct. 31, 2019).  Judge Newman dissented, disagreeing with the majority not only on their obviousness analysis, but also their denial of the motion:

However, at the time these appeals were filed, there was no holding of illegality of appointments of the PTAB’s Administrative Patent Judges.  It is well established that when the law changes while a case in on appeal, the changed law applies.  Thorpe v. Hous. Auth. of Durham, 393 U.S. 268, 282 (1969)


While the law of case doctrine stands for the idea that when a court decides a matter of law or fact, its decision controls those same issues in subsequent stages of the same case, Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 815-816 (1988) here an administrative ruling is on appeal to the court.  As this court observed in Dow Chem Co. v. Nova Chems. Corp. (Can.) 803 F.3d 620, 629 (Fed. Cir. 2015), a change in governing law applies to the pending appeal when the change occurs while the case is on appeal.

Thus, Sanofi is entitled to the same benefit of the Arthrex decision as are the Arthrex parties.  The foundation of a nation ruled by law is that the same rules, as well as the same law, will be applied in the same way to parties in pending litigation.

Customedia – whose previous motion for leave to amend to address the appointments clause issue was denied (the day after the Arthrex decision) based on its failure to raise the challenge in its opening documents –  has filed a request for a rehearing en banc based largely on Judge Newman’s dissent.  Customedia