CAFC: Arthrex Inoculated IPRs that had not yet reached Final Written Decision

Caterpillar Paving Products Inc. v. Wirtgen America, Inc. (Fed. Cir. 2020)

In 2018, Wirtgen petitioned the USPTO Director to institute an inter partes review (IPR) against Caterpillar’s US9045871 (paving machine).  The PTO initiated the IPR, and eventually concluded that the challenged claims (as well as proposed substitute claims) were all unpatentable.

On appeal, Caterpillar asked the court to vacate and remand the decision for a new-hearing with a new-panel – citing Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).  However, the court has refused:

Unlike in prior cases in which this court has recently vacated and remanded, Arthrex issued before the Board’s final written decision in this case.

The theory of Arthrex is that the court’s cancellation of PTAB judge job security instantly cured the Constitutional appointments problem (making them inferior officers rather than principal offiers).  Here, the Arthrex cure (Oct 2019) came just before the Caterpillar final judgment (Nov 2019). Caterpillar argued that it suffered under “a year’s worth of constitutional violations.” On appeal, however, the Federal Circuit ruled that the inoculation was complete against any IPR that had not yet reached final judgement.

Caterpillar, coupled with Cienna Corp., look to place a hard limit on the number of cases requiring new paneling following Arthrex.

Now Precedential: IPR Petitioner who Waived Arthrex issue cannot Raise it on Appeal after Losing the IPR

2 thoughts on “CAFC: Arthrex Inoculated IPRs that had not yet reached Final Written Decision

  1. 2

    Bottom line lesson here: attorneys need to keep right up to date [via Dennis or otherwise] with Fed. Cir. decisions that might be useful to raise in their pending cases if done ASAP,

  2. 1

    I get the sense that this weakens rather than strengthens the permissible nature of such a Constitutional problem ‘fix.’

    I have not seen (and perhaps will now see) dissatisfied parties making the argument that the judicial branch lacks Constitutional authority to so objectively RE-write (rather than merely interpret) statutory law.

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