Arthrex: One Month Later

Following the Supreme Court’s decision in United States v. Arthrex, the Federal Circuit issued requests for briefing regarding the decision’s impact in pending PTAB appeals in which an Appointments Clause challenge had been raised. Those briefs have now been filed and the parties are awaiting action from the court of appeals. Here we provide a brief overview of the types of arguments we have seen from the parties and of likely next steps.

Responses from Patent Owner-Appellants who raised Appointments Clause challenges generally fall into two categories. The first category consists of responses that affirmatively waive the appellant’s right to relief under Arthrex and request that the Federal Circuit decide the appeal on the merits.[1] The second category consistent of responses that request a remand so that the patent owner can have the opportunity to request Director review.[2] At least one appellant proposed a hybrid approach under which the Federal Circuit would address the merits of the appeal first and then—if the merits are decided adversely to the appellant—remand the case to the PTAB to allow the appellant to ask for Director review.[3] In that case, the Federal Circuit responded with an order instructing the appellant to choose between (i) requesting a limited remand and (ii) waiving its right to seek Director review.[4]

Additionally, several appellants have suggested that the PTO cannot lawfully implement the Supreme Court’s Arthrex remedy given that the agency lacks a presidentially appointed and Senate-confirmed Director.[5] According to these appellants, the constitutional problem identified by Arthrex was the lack of principal-officer oversight of PTAB decisions, and there is at the very least a serious question whether Drew Hirshfeld, the Commissioner for Patents, who is currently “performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director,” is constitutionally able to perform the required layer of principal-officer review.

In cases where the appellant has affirmatively withdrawn its Appointments Clause challenge, the PTO has (unsurprisingly) agreed that the Federal Circuit should proceed to decide the merits. In cases where the appellant has requested a remand, the PTO has agreed that the appellant is entitled to that relief. But—and this is an important “but”—the PTO has argued that, “in issuing that remand, this Court should retain jurisdiction, thereby making it possible for this Court to reactivate this appeal in its current posture without the need for a new notice of appeal or otherwise duplicative proceedings.”[6] If Director review is granted, the PTO submits, it will at that time request a full remand; if Director review is denied, the appeal can “proceed from the point where it was before the remand.”[7] Finally, the PTO has contended that any challenge to Hirshfeld’s ability to conduct the required layer of Director review is premature because the reviews have not begun yet.

In appeals where the Appointments Clause argument has been withdrawn, we expect that the Federal Circuit will simply allow the case to proceed and decide the merits. In appeals where the appellant has requested a remand, we expect that the Federal Circuit will grant the remand. It is not clear whether the court will also retain jurisdiction as the PTO has requested. There are potential problems with that course of action: for example, in appeals that have already been fully briefed, it might prevent the appellant from raising any challenges to the PTO’s procedures for implementing Director review (since there would be no opportunity for further briefing after the limited remand).

Orders from the Federal Circuit will likely begin issuing in the next few weeks. We will be following the progress of these cases and will provide additional updates in future additions of the newsletter.

[1] Examples include Raytheon Technologies Corp. v. General Electric Co., No. 21-1166; IPA Technologies Inc. v. Google LLC, Nos. 21-1438, 21-1439; and Intuitive Surgical Operations, Inc., No. 21-1473.

[2] Examples include MobilePay LLC v. Unified Patents, LLC, No. 20-2102; and Cupp Computing AS v. Trend Micro Inc., Nos. 20-2262, 20-2263, 20-2264.

[3] See Teva Pharm. Int’l GmbH v. Eli Lilly & Co., No. 20-1747, Dkt. 73 (July 7, 2021).

[4] See id., Dkt. 76 (July 23, 2021).

[5] See, e.g., New Vision Gaming & Development, Inc. v. SG Gaming, Inc., No. 20-1399, Dkt. 104 at 14–15 (July 7, 2021); Cupp Computing, No. 20-2262, Dkt. 36 at 9–10 (July 7, 2021).

[6] E.g., New Vision Gaming, No. 20-1399, Dkt. 106 at 2–3.

[7] E.g., id.