Today in Biomet Orthopedics, LLC v. Puget Bioventures, LLC, __ Fed. App’x __ (Fed. Cir. 2016)(Moore, J.), in an inter partes reexamination of a patent that expired after the PTAB decision, the panel declined to review a PTAB unpatentability ruling as to amended claims as explained in the snippet quoted below.
From the Opinion: “[T]he [ ] patent expired *** after the Board’s decision but before our own. This event presents a problem for the Amended Claims because the PTO does not enter amendments made in inter partes reexamination after the expiration of the patent. 37 C.F.R. § 1.530(j) (‘no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent’). Amendments are not effective until the certificate issues, even though reexamination Office Actions treat the proposed amendments as though they have been entered. Id. § 1.530(k). Thus, the Amended Claims cannot issue. We therefore vacate the Board’s decision with respect to the Amended Claims ***.”