ARTICLE
19 February 2020

Federal Circuit Reluctantly Applies Arthrex Decision

JD
Jones Day

Contributor

Jones Day is a global law firm with more than 2,500 lawyers across five continents. The Firm is distinguished by a singular tradition of client service; the mutual commitment to, and the seamless collaboration of, a true partnership; formidable legal talent across multiple disciplines and jurisdictions; and shared professional values that focus on client needs.
On appeal to the Federal Circuit, Polaris Innovations Limited argued that the PTAB's final written decision in IPR 2016-01621 exceeded the scope of the PTAB's authority and violates the Constitution's Appointments Clause.
United States Intellectual Property

On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board ("PTAB") final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the remedy of the Arthrex panel decision.

On appeal to the Federal Circuit, Polaris Innovations Limited argued that the PTAB's final written decision in IPR 2016-01621 exceeded the scope of the PTAB's authority and violates the Constitution's Appointments Clause. The Federal Circuit noted this issue was already decided in Arthrex, which held that Administrative Patent Judges ("APJ") had been improperly serving as principal officers (who must be appointed by the President and confirmed by the Senate), since they did not have enough supervision from the USPTO's director to be considered inferior officers (who can be appointed by heads of departments).

Finding its hands tied by the Arthrex decision, the Federal Circuit vacated and remanded the PTAB's final written decision, but two judges on the Polaris panel also stated their view that PTAB APJs are properly appointed inferior officers because the USPTO Director has significant control over their activities. That control includes, for example, (1) unreviewable authority to institute IPR, (2) control over which PTAB APJs will hear any instituted IPR, and (3) providing substantial direction and supervision after the PTAB issues a final written decision, such as the ability to unilaterally designate a decision as precedential. The two judges also noted that if APJs are considered principal officers, the Arthrex remedy for fixing their unconstitutional appointment – i.e., divesting the APJs of their Title 5 removal protections – raises grave doubts because there is no legislative intent underlying this remedy.

We will continue to monitor this case and others applying Arthex for additional updates.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More