appointments clause PTAB

CAFC Provides Last Word in PTAB Appointments Clause Debate

Given the remands that have been flowing back to the Patent Trial & Appeal Board (PTAB) from the Federal Circuit over the past few weeks, the writing has been on the wall as to en banc rehearing in Arthrex v. Smith & Nephew Inc.  The Court officially denied rehearing today.  Still, the 62 pages of differing viewpoints offered by the Court in its denial of rehearing essentially presented the Court’s collective reasoning anyway.

The per curiam opinion explained the earlier decision in the context of the dissenting views. That is, as between striking down the AIA and severing Title 5 protections for administrative patent judges, Congress was more likely to favor the latter.


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CAFC Holds Petitioner to PTAB Choice

While we await the en banc determination in Arthrex/Polaris, there have been a number of recent remands back to the PTAB (i.e., where the Appointments Clause issue was first raised in the opening appellate brief). Given this, it may be that the Federal Circuit remains unimpressed with the government’s argument that failure to raise the issue before the PTAB results in forfeiture of the argument.  Still, given the supplemental briefing in Polaris as to the sufficiency of the Arthrex remedy, I am still expecting that at least this aspect of the debate is taken up en banc.

In the meantime, the Federal Circuit has made clear that the Appointments Clause issue will not benefit failed PTAB petitioners.


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Arthrex Argument Being Added to Briefs

As detailed back in December, the government has sought en banc rehearing in Arthrex. In its petition, the government revisited the bases for the Court’s October decision and encouraged the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency).

In its Reply of last week, the government once again focuses on forfeiture, arguing that raising an Appointments Clause issue on appeal is too late.  To emphasize the issue, the Reply lists all of the newly filed appeals raising the issue for the first time.
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Gov’t Questions Fundamental Aspects of Court Decision

As promised, the government has now sought en banc rehearing in Arthrex. In its petition, the government revisits the bases for the Court’s October decision and encourages the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency)

I think it is safe to predict the CAFC takes this one up.


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Government Intervenes to Thwart Arthrex Remands

As expected, the government has informed the Federal Circuit of its intention to seek en banc rehearing in Arthrex Inc. v. Smith & Nephew, Inc.  Having intervened in a number of cases seeking remand post-Arthrex the government has now moved to stay these proceedings pending its en banc petition.
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Appointments Clause Argument Forfeited if Not Raised in Opening Brief

With the ink barely dry on Thursday’s Federal Circuit ruling that the Administrative Patent Judges (APJs) of the Patent Trial & Appeal Board (PTAB) were unconstitutionally appointed, Appellant Notices of Supplemental Authority began to roll into the Court Friday morning.  For Appellants that had appropriately raised the issue in their opening brief to the Court, some were remanded to the PTAB (Uniloc 2017 LLC. v. Facebook Inc.).  Other such appeals were allowed to proceed to oral argument based, in part, on DOJ involvement. (such as today’s argument in Polaris Innovations Limited v Kingston Technology Co. Inc.)

For Appellants hoping to take advantage of the Appointments Clause development who had not briefed it, the Court found such arguments forfeited.
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Well, that Escalated Quickly…

On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in  Arthrex Inc. v. Smith & Nephew, Inc.  The Court has vacated and remanded the decision, ordering  a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).

So, what does this mean for pending appeals?
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November Webinar to Focus on Appellate Hot Topics

The November edition of the PatentsPostGrant.com webinar series will be held Monday, November 4th@ 2-3PM (EST). The November program will focus on emerging appellate issues expected to drive PTAB practice in the months ahead.

The webinar is entitled: PTAB Reset 2020: Appointments Clause Turmoil & Appellate Docket

An Avalanche of FWD Do-Overs Imminent?

Back in June I explained the latest constitutional challenge to AIA Trial Proceedings under the Appointments Clause of the U.S. Constitution.  In a nutshell, the argument is that PTAB Administrative Patent Judges (APJ) are “superior officers” delivering the final word of the government in PTAB trial proceedings.  And that, as such, APJ actions are unconstitutional since they are not political appointees confirmed by the U.S. Senate — as the Appointments Clause requires.

That argument found its way to the Federal Circuit earlier this month in Arthrex Inc. v. Smith & Nephew, Inc.  At oral argument, the Court probed the Director’s ability to remove APJs, and seemed concerned that this deficiency was enough to violate the Appointments Clause.  An Order issued last week for additional briefing appears to reinforce the expectation that the Court will find the APJs functioning in violation of the Appointments Clause.


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