Federal Circuit Limiting Damage on the PTAB Appointments Clause Issue

Customedia Tech v. Dish Network (Fed. Cir. 2019)

Customedia … submits a notice of supplemental authority identifying this court’s recent decision in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019). That decision vacated and remanded for the matter to be decided by a new panel of Administrative Patent Judges (“APJs”) at the Patent Trial and Appeal Board after this court concluded that the APJs’ appointments violated the Appointments Clause. Customedia’s letters seek to assert the same challenge here, which the court construes as a motion to vacate the Board decisions here and remand in accordance with Arthrex.

We conclude that Customedia has forfeited its  Appointments Clause challenges. . . .  Customedia did not raise any semblance of an Appointments Clause challenge in its opening briefs or raise this challenge in a motion filed prior to its opening briefs. Consequently, we must treat that argument as forfeited in these appeals.

8 thoughts on “Federal Circuit Limiting Damage on the PTAB Appointments Clause Issue

  1. 5

    Over on Gene’s IPWatchdog blog, note the article “It Matters: A Former Administrative Patent Judge’s Take on Arthrex” by Richard Torczon, November 11, 2019, including another less draconian solution suggestion [in addition to that suggested by two other Fed. Cir. judges].
    [For what increasingly looks like a likely and needed en banc review, for a more considered review of a Constitutional issue that may well go to the Sup. Ct.?]

  2. 4

    Seems like the most prudent course of action would be to delay any drastic changes until the criminal n-u-t-c-a-s-e/fraud in the Oval Office is out of the system and resting in prison or under 6 feet of urine-soaked dirt.

  3. 3

    link to 717madisonplace.com

    The entire oral argument is worth a listen; however, here are some points of note:

    Polaris suggested that the court’s correction of the statute that was implemented in Arthrex is insufficient and recommended the nuclear option — invalidate the statute; then let Congress fix it.

    The government needs to check in with various agencies as well as the Solicitor General before deciding whether to request en banc review. It sounded as if the government might not reach a decision on whether to request en banc review for another 42 days.

    The lack of an issued mandate in Arthrex is causing procedural obstacles. Polaris v. Kingston is perhaps a better vehicle for en banc review given the issues at play; but, the Polaris court can’t apply Arthrex until the mandate issues. So, the timing of a decision in Polaris will be tricky to keep Arthrex and Polaris on relatively parallel tracks for en banc review requests. (Meanwhile, in Customedia v. Dish, decided last week, the CAFC applied Arthrex — prior to a mandate issuing in Arthrex !?!)

    There are lingering due process issues with respect to the Director’s instruments of persuasion for controlling Board members.

    This constitutionality challenge has been raised once before prior to the Arthrex case. Apparently, in one of the Trading Technologies cases, the issue was raised and the Federal Circuit issued a Rule 36 Judgment. I believe that panel was Judges Newman, Dyk, and Wallach.

    The government believes that it was not permitted to use a statutory right when the government was not given a chance to intervene in the Uniloc case that was remanded to the Board last week in view of Arthrex:

  4. 2

    Am I correct in thinking that the “claims-with-WD-support space” of an application is distinct and larger than the “disclosure space” of that same application for prior art purposes? Is there a reason why this should be true in a fair patent system?

    1. 2.1

      I don’t believe that what you wrote is correct, at least not for the otherwise unqualified class of published patent applications.

      1. 2.1.1

        I happily acknowledge that I could be wrong. Let me try to explain what I’m thinking.

        You disclose five separate embodiments in your application, with each embodiment getting an original claim describing the features of that embodiment.

        The way we treat 112(a), you have support for all the mixtures of the features of the separate embodiments. But for prior art purposes, your application only anticipates the original five embodiments.


          There is no single (or simple) answer to your question because it will be very technology and fact dependent. In some instances, if the various embodiments are extremely distinct and combining various aspects of them would not reasonably occur, then you might be right. In other aspects though, if it’s natural to mix and match the various elements of the different embodiments, then you might be wrong. The rejection you received during prosecution, or how a reference is used by an Examiner, could be based on anticipation and/or obviousness depending on (again) the nature of the technology and facts in support. The knowledge of a person skilled in the art would also come into play because that person might easily assume that the different elements can be readily substituted for one another (or that person might know they can’t be readily substituted). And that implicates the Doctrine of Equivalents, and there’s another can of worms for your question.

          So simply put, the answer to your question, and the answer that lawyers love to give and non-lawyers hate to hear, is “it depends.”

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