Certiorari granted in Arthrex

by Dennis Crouch

The Supreme Court has granted Certiorari in Arthrex on the questions of whether Administrative Patent Judges (APJs) were properly appointed under the U.S. Constitution and, if not, what is the proper remedy.

None of the appellants were satisfied with the Federal Circuit’s decision in the case and each petitioned for Supreme Court review. Subsequently, the U.S. Gov’t filed a memorandum walking through what it saw as the three unifying questions presented in the case. The court has granted hearing on only the first two questions.

Questions Presented:

1. Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head.

2. Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

3. Whether the court of appeals in Arthrex erred by adjudicating an Appointments Clause challenge that had not been presented to the agency.

July 22 Memorandum of U.S. Gov’t. I have marked-through the third question because the Court is directing its review only to the first two questions.

The case stems from an inter partes review (IPR) conducted by Administrative Patent Judges (APJs) at the Patent Trial & Appeal Board (PTAB).  Arthrex is the owner of U.S. Patent No. 9,179,907 — a patent claiming an assembly for securing soft tissue (such as a tendon) to a bone without requiring the surgeon to tie any knots.  Smith & Nephew successfully challenged the patent via IPR, with the PTAB APJs concluding that the challenged claims were unpatentable as anticipated.  On appeal, Arthrex challenged the decision on constitutional (appointments clause) grounds; Smith & Nephew defended the decision, and the USPTO (U.S. Gov’t) also intervened to support the decision of its PTAB judges.

At the Federal Circuit, the original decision was authored by Judge Moore and joined by Judge Reyna and Chen. The court subsequently denied en banc rehearing.  The denial include five separate opinions, including an additional opinion by Judge Moore defending her original opinion and a concurring opinion by Judge O’Malley. Judge Dyk wrote in dissent as did Judge Hughes and Judge Wallach.  Four of the Judges did not indicate their vote (Chief Judge Prost and Judges Lourie, Taranto, and Stoll). Based upon the result (en banc denial), at least two of them voted to deny rehearing.

32 thoughts on “Certiorari granted in Arthrex

  1. 3

    The questions is a coverup
    the precise question is :
    “Whether it was Congress intent that the PTO panel members of the Appeal Board consist of principle officers”
    The law that was pass by both houses (107thCongressSB320/SA2162)
    sections 2 & 3 went missing when reaching the President
    b happy

      1. 3.1.1

        If it were correct and relevant it would be in briefs in this case and would have been publicly noted earlier..


          Possibly – but importantly, possibly not.

          Just think back to the ‘Marking’ incidents. There, actual (and correct) interpretations did not “take hold” until, what, some 50-70 years after everyone thought otherwise (along your ‘if it were true, it would already be out there’ line of thought).

          I find that often such outright dismissal is NOT helpful.


            That is confusing a strange asserted FACT [in suspiciously non-attorney English] about allegedly lost legislation with a change in judicial interpretation of long-existing indisputably-statutory language.


              There is no “confusing” about it.

              It is drawing a direct parallel to the general pundit’s view of “it it were so, we would have already seen it” to two admittedly different legal circumstances.

              Yes, I can see why you would not like the parallel, but your liking is not a magic wand to make that parallel go away.

              (and the Markings incidents are by no means the only possible examples)


              I agree Paul. Sounds fishy to me. Could be checked fairly easily.

              Plus do we know if that violated the rules of Congress?


          107th Congress
          SB320 Nov 15 2001
          Law enacted Nov 5 2002
          HR 2215 it was part of a ominous bill that no ones read in fact it was the second to last sec 13201

  2. 2

    The Fed. Cir. en banc denial here was an appropriate punt to the Sup. Ct. to address an underlying legal issue far greater than just another patent issue : A law firm partner comment published today on Gene’s blog notes that:
    “..it presents the Supreme Court with an opportunity to clarify the notoriously murky line between a “principal” officer and an “inferior” one. As the Court observed in Edmond v. United States, the case law does “not set forth an exclusive criterion” for distinguishing between the two. The Court has stated that “‘inferior officers’ are officers whose work is directed and supervised at some level by others who were appointed by Presidential nomination with the advice and consent of the Senate,” and has provided three factors that courts should consider in making that decision: (i) whether the officer’s decisions are subject to review and reversal by a higher executive-branch official; (ii) the level of supervision to which the officer is subject; and (iii) whether the officer is removable at will. However, these factors are not necessarily exhaustive, and their relative weight in the analysis is not always clear. A decision in Arthrex could provide practitioners and the lower courts with significant guidance in this area.”
    [I.e., in case another legal academic’s article stirs up another circuit court panel as here?] {It amazes me that anyone could even seriously consider a PTO APJ employee a “principal” officer.
    They are not even federal ALJs.}
    Even Gene does not think this case is going to succeed [failed try three?] in getting the Sup. Ct. to throw out APJ IPR decisions. [Much less APJ application appeal decisions, reissue examiner decisions, etc.]

    1. 2.1

      You misstate what Gene is saying. He is only saying that it is foolhardy to think that Congress won’t step in to fix any issue threatening the PTAB — and NOT that this legal attack itself is meritless.

      Put your pom poms down.

    2. 2.2

      It amazes me that anyone could even seriously consider a PTO APJ employee a “principal” officer.

      In the vague abstract, I can understand this view. Back in 2011, when the AIA was passed, I would not have thought that APJs were officers. I cannot see, however, a meaningful distinction between APJs hearing an IPR and ALJ Elliot in Lucia v. SEC, 138 S. Ct. 2044, 2047 (2018). If the Court is going to hold that APJs are not officers without overturning its own very recent precedent, it will need to be willing (in Justice Kagan’s immortal phrase) to slice the bologna very thin.

      1. 2.2.1

        Greg, as noted, PTO APJs are not ALJs, and the real issue for the PTO, as I understand it, is not if they are “officers” but what kind.
        I.e., if they are junior or inferior officers that can be appointed by a principal officer like the Secretary of Commerce and not just by the President. That is also discussed in in Lucia v. SEC.


          Fine, but the distinction between “superior officers” and “inferior officers” is not the hinge around which the case turned in Lucia. Rather, the important distinction in Lucia was between “officers” (both superior and inferior) and “employees.”

          As I said above, if you had asked me in 2011 if APJs were officers or civil servants, I would have said that they are civil servants. Everything about the ALJs in Lucia, however, that made them “officers” are equally true of APJs (viz., the APJs can reach conclusions affecting property rights that amount to final agency actions). If this is what it means to be an “officer,” then it follows that the APJs are “officers,” not civil servants.


            Greg, if you look up the requirements for Federal ALJs you will see that they are quite different from APJs.

  3. 1

    I predicated they would take it and overturn it. Too strange to stand.

    Moore’s solution is just way too odd and flies in the face of employment law.

    It will be overturned. The PTAB will remain but Moore’s solution will fall.

    1. 1.1

      Glad to be able to fully concur with you.
      [But I wonder if at least one justice [as G. did in a prior patent case] will use it as a dicta concurrence opportunity for a soapbox rant about administrative law in general?]

      1. 1.1.1

        [I meant the dicta rant on administrative proceedings in general in the Gorsuch dissent in Thryv, Inc. v. Click-to-Call Technologies on the IPR institution appeals denial statute.]


          Their elimination of Question 3 seems to desirably indicate that they are taking the case on the merits, and not entertaining arguments that the case should be dismissed or remanded on procedural or un-ripeness grounds?


            Agree; which makes sense. This is clearly an issue that needs to be addressed at some point – why delay when the PTAB is in limbo.

      2. 1.1.2

        Wouldn’t surprise me if there was a dissent that said that the PTAB should fall, but I would guess the numbers will be about what they were in Oil States.


          Yes, the dissent in Oil States to strike down the whole IPR administrative procedural system [and by the same logic all others for any other government granted rights?] was only by Gorsuch, with Roberts concurring.

    2. 1.2

      How does Arthrex “fl[y] in the face of employment law”?

      Genuine question, not a rhetorical question.

      1. 1.2.1

        Moore changed the employment to at will for the patent judges.

        So the order literally changes the employment contract of the patent judges with the federal government.


          [Yes, or to put it another way, all PTO APJs had government employee civil service protection like other PTO employees until the Fed. Cir. decision.]


          Our US Inventor amicus in 19-1458 explains that the panel’s remedy abrogated vested property rights in federal employment held by APJs, without their participation in the litigation. “The Arthrex remedy appears to replace one type of unconstitutionality with another. It thus cannot be correct.” (Amicus, p.6)

          link to supremecourt.gov


            Excellent brief Robert.

            For the good of all of American innovation — past, present, and future — I hope you and USI prevail.


            Well stated – as items in that particular fora should be.

            For this particular fora, I was one of the first to point out that the court was violating Separation of Powers by re-legislating that piece of Legislative Branch writing, and with the ultra weak “we think that this is what Congress would have wanted” rationale.

            None of the regulars here that often attempt to denigrate my points of view were willing or able to pick up that dialogue.

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