Principal Officers: Three En Banc Petitions in Arthrex v. Smith & Nephew

by Dennis Crouch

None of the parties were happy with the outcome in Arthrex v. Smith & Nephew (Fed. Cir. 2019) and all three have now petitioned for en banc review:

In its decision, the Federal Circuit held that the appointment process for PTAB judges (APJs) violates the Appointments Clause of Article II of the U.S. Constitution.  The court explained that these judges are principal officers under the constitution and thus, must be appointed by the President of the United States rather than merely the Head of Department.  However, the court issued a cy-près ruling in an attempt to limit the upset caused by its ruling. In particular, the court invalidated a portion of the statute that limited the PTO’s ability to remove APJs from the board. According to the court, that change was enough to reclassify the PTAB Judges as inferior officers that do not need presidential appointment.  Despite its proposed “cure”, the Federal Circuit held that – in this case – the PTAB decision must be vacated and reheard in front of a new panel of APJs. “We hold that a new panel of APJs must be designated to hear the inter partes review anew on remand.”

Why is no-one happy?:

  1. The Patentee would like the case wholly thrown out and argues that the CAFC’s savings-cut was both incorrect and insufficient to convert principal officers to inferior officers.
  2. Both the Patent Challenger and USPTO as intervenor want the original final written decision reinstated (cancelling the claims) and argue that the en banc court should find the APJs were already inferior officers.  They also argue that, if APJs are principal officers then the en banc court should reconsider the appropriate remedy for such an appointments clause violation.

More to come on this.

35 thoughts on “Principal Officers: Three En Banc Petitions in Arthrex v. Smith & Nephew

  1. 4

    Seems unlikely that this opinion is going stand for some of the reasons in the comments and in the briefs.

    The whole thing is just strange given that patent judges have been doing essentially the same thing in reexaminations for 30+ years.

    1. 4.1

      “The whole thing is just strange given that patent judges have been doing essentially the same thing in reexaminations for 30+ years.

      With few exceptions, laches does not apply to constitutional infirmities.

      1. 4.1.1

        I know NS II.

        But consider that Oil States just looked at the role of the patent judge in detail in relation to the AIA and the Scotus said nothing. And there have been other cases as well at the CAFC.

  2. 3

    We need real independent judges and juries and due process to decide these important issues. Most of these patents are not mistakes. These APJs do not understand the technical subject matter, do not know how to apply the law, and are not impartial when judging factual matters. They are just making up meanings of words and subjectively concluding that our claimed inventions “would have been obvious.”

    The AIA was a terrible mistake. This Appointments failure must not be swept under the rug as a harmless error.

    The Federal Circuit should grant the petition and declare their orders ultra vires. Give inventors their patents back and let the multi-billion dollar petitioners plead their cases in a real court. They don’t need legally suspect administrative judges to carry their water.

    1. 3.1

      The Scotus is no friend to patents and strongly supports the administrative state. Remember they just held in Oil States that patents are a public right.

      1. 3.1.1

        No friend to patents?

        Absolutely agree (and with a LONG history of that stance).

        Friend of the administrative state?

        Not so fast (notwithstanding the horrendous Oil States decision — which simply may be too shaded with the fact that that case presented a chance to diminish patent power).

        I will note that I had thought that the “anti-administrative state” view that I had of the Court did NOT rise to a level that I had expected for Oil States, but the Venn Diagram of “anti-patent” and “anti-administrative state” may only have a sliver of overlap.

        1. 3.1.1.1

          Oops – “anti-administrative” should read “pro-administrative.”

      2. 3.1.2

        Normal people aren’t “friends of patents” that are wielded and monetized by wealthy attorney s-c-u-m.

        Guess why.

        1. 3.1.2.1

          You do realize that patents are alienable property (and why), right?

          Or are your ISMs driving your emotions to the exclusion of an ability to reason?

        2. 3.1.2.2

          MM – could you elaborate?

          If “normal people” are not friends of patents that are wielded and monetized by wealthy attorneys… are there, in your view, any type of patents that “normal people” ARE friends of?

          Or are all patents bad?

          1. 3.1.2.2.1

            re there, in your view, any type of patents that “normal people” ARE friends of

            Sure. Lots of them. The discussion here was about junk patents that the Supreme Court has accurately identified and tanked, and about patent monetization enterprises that the Supreme Court has likewise squelched (albeit very modestly).

            Normal people don’t believe that we should hand out patents on “new” correlations, or “new” instructions for existing computing machines or “new methods” of using old detection techniques to detect some newly discovered natural fact.

            The belief that more patents on that type of subject matter is going to (LOL) “promote progress” is a defect of the mind that is unique to a certain class of grifter and a certain class of desperate patent attorney (typically the class of attorney who has a degree in “writing instructions for computers” or something even less “technical”, assuming that’s even possible).

            1. 3.1.2.2.1.1

              Your feelings are noted.

            2. 3.1.2.2.1.2

              Thank you for your clarification, MM.

              It seems to me that whether you agree with the work of the PTAB (which I generally do) or not, the strongest argument is that Congress (via the AIA) intended to set up a cheaper and faster Alternative to federal court. While the idea had merit, it was a bit of a fool’s errand to think that this could be accomplished without significantly curtailing the due process provided to patent owners in federal court.

    2. 3.2

      We need real independent judges and juries and due process to decide these important issues. Most of these patents are not mistakes. These APJs do not understand the technical subject matter, do not know how to apply the law, and are not impartial when judging factual matters.

      How long did it take you completely to contradict yourself there? Four lines of text?

      Let me get this straight:

      * Because APJs do not understand the technical subject matter, we need to entrust the decision of these matters to juries? Do I understand you right?

      * Because APJs (who think about the law of patentability every day) do not understand the law of patentability sufficiently, we need to entrust these matters to district court judges (who often see no more than one patent case every other year)?

      Seriously? Who do you think is buying this nonsense?

      1. 3.2.1

        Those are excellent points Greg.

        I’ve said it from the beginning that the path forward is probably to give more power to the PTAB not less. Make the patent judges more independent and make it more like a DC trial with the patent judges being independent.

        The big issue here is that the by making the patent judges less independent one can argue that it defeats the AIA that Congress did not want patents invalidated people that are just clerks.

        1. 3.2.1.1

          [T]he path forward is probably to give more power to the PTAB not less. Make the patent judges more independent and make it more like a DC trial with the patent judges being independent.

          If PTAB critics were arguing in good faith (and I am sure that some ~15% of them are), then a compromise measure that I could happily join with them in supporting would be to create a special set of Art. III courts that handle nothing but patent validity issues. The judges for these courts would be obliged to have at least an undergraduate degree in some STEM discipline.

          In other words, this new set of Art. III courts would be much like the PTAB, only in the Art. III branch rather than the Art. II branch. The FRCP would also be amended—at the same time that this extra set of courts was being chartered—to provide for the same discovery rules in this branch of courts that currently apply in front of the PTAB.

          In theory, this would resolve many of the objections against the PTAB (Art. III judge tenure to ensure independence from the political branches, courts not being funded by fees taken in from the plaintiffs, etc). In practice, however, the real objection of most PTAB critics is that existence of the PTAB makes it harder to realize the nuisance value of a lawsuit. The reform that I am proposing does nothing to change that, so it will not satisfy many PTAB critics.

          1. 3.2.1.1.1

            Throw in the Congress acting on its Constitutional power of jurisdiction stripping of the non-original jurisdiction of patent cases from the Supreme Court and you have a winner.

            And I bet that far more than 15% would be in support.

      2. 3.2.2

        Yes, judges and juries are better than APJs. Judges understand and apply the law better. Juries are better ar resolving factual disputes. Take my case for example.

        1. 3.2.2.1

          Take my case for example.

          “Data” is not the plural of “anecdote.” Your experience is your experience, but we really cannot decide public policy questions on your experience alone. As it happens, (see fig. 2), the CAFC completely affirms PTAB decisions at essentially the same rate as it completely affirms district court decisions. There is, in other words, no evidence for the assertions that “[j]udges understand and apply the law better”or that “[j]uries are better ar resolving factual disputes.”

          In fact, if you look closely at those data, you will see that the CAFC completely affirms the PTAB slightly more often than it completely affirms district courts, which indicates that the PTAB is slightly better than district court judges at adjudicating patent validity disputes. When you factor into the analysis that in many of those district court disputes, the judge willingly gave up the right to decide the validity question because s/he knew that s/he was not up to the task, it would appear that the PTAB is actually much better than district courts at resolving these questions.

          1. 3.2.2.1.1

            Excellent points as usual. I also think it is important to note that any analysis of the quality of judges and/or juries requires some benchmark for comparison. Often times the benchmark utilized is the commentator’s personal feelings. While your reliance on CAFC affirmances is reasonable, one can simply claim that the CAFC is wrong to affirm the PTAB as much as it does. (see comments).

    3. 3.3

      Josh Malone is a dishonest rich white crybaby from Texas who will never, ever stop whining about his precious patent rights and how he isn’t making as much money as he used to boo hoo hoo.

      Guess his party affiliation.

        1. 3.3.1.1

          Yup.

          Did you ever hear of statistics, Bildo?

          Question: what percent of those m0uth-breathing bros who burned their patents “in protest” were wealthy white glibertarian/Repuk-k-k-kes?

          Was it closer to 10%? Or closer to 100%?

          Everybody knows what the reality is when it comes to correlating patent monetizing p-i-g-s and their political affiliations. It’s no mystery.

          Are you ashamed, perhaps?

          You should be. But we all know you aren’t.

          1. 3.3.1.1.1

            You do realize that you are playing the “R” card and then trying to “rationalize” it, just like (exactly like) a certain President is apt to do, eh?

            Any shame here (and who should be feeling it, but is not) is quite the opposite of what you have in mind — another Trump characteristic.

  3. 2

    ” . . . if APJs are principal officers then the en banc court should reconsider the appropriate remedy for such an appointments clause violation.”

    Be careful what you wish for Arthrex and PTO . . . be very careful . . .

  4. 1

    Is the current state akin to a judicial “line-item veto” legislative (re)-writing power with Separation of Powers implications?

    1. 1.1

      Yes. (here’s a cookie. now go away.)

    2. 1.2

      [Sigh]. Ok, I’ll bite.

      (1) What is your current state?

      (2) Do you know what “judicial” means?

      (3) You must know that “line-item veto” has an objective definition?

      (3a) Right?

      (3b) Why are you using a term that has an objective definition?

      (4) What “legislative” are you talking about?

      (5) Did you know that legislatures (local and Federal) can re-write statutes?

      (5a) How is that relevant?

      (6) Do you know who tried to recapture the Governor’s Office with the Separation of Powers argument? He was blind at the time. Extra credit for which State. You won’t find it in Wikipedia.

      (7) Do you know what Separations of Powers means?

      (8) What, exactly, are Separations of Powers “implications.” Cite?

      (9) What is your current line of work?

        1. 1.2.1.1

          Use your words. How many years have you been doing this? Shouldn’t you be better at it by now?

    3. 1.3

      Courts have used this kind of remedy many times before, even the Supreme Court has done exactly this relatively recently. Look at the Affordable Care Act and how SCOTUS just removed the individual mandate for health insurance. This kind of remedy, whether you like it or not, fits into what the courts have done on many occasions. Whether or not they should is a different question entirely. It could easily implicate separation of powers issues. The problem becomes the size of bills that get passed in Congress. They can have hundreds of pages encompassing many different topics; some budget bills have run into thousands of pages. Does one bad provision in the entire bill mean that everything in it gets cancelled by the courts, or should the courts be able to surgically remove the offending provision? If anyone has a good answer to that, I’d love to hear it.

      1. 1.3.1

        Whether or not they should is a different question entirely

        That “should” is based on the structure of the checks and balances — the foundation — of our government.

        Clearly, the score board is broken (how things are actually done).

        The point IS that the score board is broken.

        One cannot begin to fix the broken score board UNTIL it is recognized and accepted that the score board is broken.

        1. 1.3.1.1

          Shorter Bildo: “DERP!”

          1. 1.3.1.1.1

            Yay, it’s been awhile since we all enjoyed a good ‘ol Malcolm Derp Dance.

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