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September 14, 2020 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (September 7-11): Another Arthrex Follow-on

Last Week in the Federal Circuit (September 7-11): Another Arthrex Follow-on

Maybe it was the end of summer and the start of fall, or the kids (kind of) going back to school. But whatever it was, last week the Court issued only one precedential decision, in a veteran’s benefits case. All said, the Court released 15 decisions, although 6 were Rule 36 summary affirmances in cases argued during the September sitting. And remarkably, just 1 of the 9 opinions was from an argued case. Other than the Arthrex remand we examine below, all the decisions were affirmances; that’s perhaps less remarkable, given that appellees do particularly well when argument is cancelled (as we’ve previously discussed). Given the slim pickings, we’re going to go non-precedential this week. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 1

Non-precedential opinions: 8

Rule 36: 6 (all in argued cases)

Longest and shortest pending case from argument (i.e., the only case this week decided after argument): Batcher v. Wilkie, No. 19-2116 (102 days)

Case of the week: Snyders Heart Valve LLC v. St. Jude Medical, LLC, No. 19-2111 (Sept. 9, 2020) (non-precedential)

Panel: Judges Newman, O’Malley, and Taranto, with the opinion issued per curiam.

You should read this case if: You have a PTAB appeal involving an Arthrex issue.

Federal Circuitry readers are no doubt familiar with Arthrex, which we’ve written about in several previous posts, here and here. As a quick reminder, last October, the Federal Circuit held that the administrative patent judges who decide inter partes reviews were unconstitutionally appointed principal officers. To remedy that violation, the Court severed the portion of the Patent Act restricting those judges’ removal and remanded for a new hearing before a constitutionally appointed PTAB panel. Since then, the Federal Circuit has vacated many IPR final written decisions issued before Arthrex and remanded them for another hearing before a new panel of PTAB judges.

In our case of the week, the Federal Circuit rejected one patentee’s argument that the “unique circumstances” of its case required greater relief—outright dismissal of the IPR rather than vacatur and remand for a new hearing. The Patent Office’s current Director, Andre Iancu, had represented the IPR petitioner in district court litigation involving the challenged patent before his appointment as Director. He thus was recused from the IPR. The Board held all challenged claims unpatentable.

On appeal (which included full briefing), the patent owner argued that the PTAB judges who decided the IPR were unconstitutionally appointed under Arthrex. But it argued that the standard Arthrex remedy would be inadequate—and the IPR should be dismissed rather than a new hearing held—because no properly appointed PTAB panel could be convened on remand. In particular, the patent owner argued that the Director’s conflict should be imputed to all Patent Office employees, as they could be biased against the patent owner due to “their loyalty to their boss, Director Iancu.”

The Federal Circuit disagreed. It noted that the PTO’s Deputy Director has statutory authority to assume the Director’s responsibilities in case of the Director’s “incapacity,” which includes a conflict requiring recusal. The Court concluded that the Deputy Director’s involvement “sufficiently removes any potential taint of the Director’s conflict.” And it saw no reason why “the Director’s lack of participation otherwise impacts the Arthrex remedy analysis.” Thus, the Court held that the patent owner was “entitled to the same relief given to the Arthrex appellant and no more”: vacatur of the Board’s decision and remand for a hearing before a properly appointed panel.

Of course, the Federal Circuit’s decision may not be the final say on the matter. As we previously mentioned, there are now multiple petitions for certiorari challenging different aspects of Arthrex. Some of those petitions contend that Arthrex’s remedy did not cure the constitutional defect and that PTAB judges are still unconstitutionally appointed principal officers, even without removal protections. We may not have to wait long to see whether the Supreme Court will grant review: several Arthrex-related petitions are scheduled for consideration on September 29, at the first conference of the Supreme Court’s upcoming Term.

Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.