Arthrex on Remand: Commissioner of Patents Drew Hirshfeld and the Problem of Shadow Acting Officials

Editors note – I invited Professor Nina Mendelson (University of Michigan Law School) to author a guest post after reading her 2020 Admin. Law Review article titled “The Permissibility of Acting Officials: May the President Work Around Senate Confirmation?”  The revived Arthrex case raises temporary appointments issues and asks whether Dir. Hirshfeld has the legal power to fulfill the expanded job as required by the Supreme Court’s decision. — Dennis Crouch

Guest post by Nina Mendelson,

Following one Supreme Court decision posing dangers for the integrity of all sorts of agency adjudication, the ongoing litigation in Arthrex v. Smith & Nephew, set for argument in the Federal Circuit next week on remand from the Court, may well spawn another ruling with important implications for the administrative state. That is the question of how much latitude agencies have to operate notwithstanding vacancies in principal officer positions. This post will cover the major statutory and constitutional questions raised in the case.

(1) The litigation background.

In Arthrex, a case arising out of the Patent Trial and Appeal Board’s invalidation of Arthrex’s patent claims, the Court’s majority found a constitutional violation in the statute’s allocation of inter partes review authority to the administrative patent judges (for the most part not-Senate-confirmed) who serve on PTAB, reasoning in part that, to assure political accountability, a Senate-confirmed principal officer must have final decision authority. A different coalition of Justices agreed on the remedy of severing the statutory review constraint on the PTAB’s inter partes review decisions. The Court figured this ruling would leave the Presidentially-appointed, Senate-confirmed US Patent and Trademark Office (“USPTO”) Director with full review authority in those cases.  (My colleague Rebecca Eisenberg and I have criticized United States v. Arthrex and its implications over at the Notice and Comment blog.)

Problem not solved, unfortunately.  Along with many other positions across the government requiring Senate confirmation, the USPTO Director post has been vacant since President Biden’s inauguration, now 14 months ago. Recent years have seen substantial delays in both presidential appointment and Senate confirmation of top officials, with plenty of blame to go around for widespread vacancies.

President Biden finally nominated Kathi Vidal as the next USPTO Director on January 13, 2022, and her confirmation is pending in the Senate. Meanwhile, Commissioner of Patents Drew Hirshfeld, appointed by the Secretary of Commerce and not Senate-confirmed, is presently claiming the office’s authority pursuant to a 2016 document executed by the then-USPTO Director Michelle Lee. The document, relying on the Director’s general management supervision authority, purports to grant the Commissioner of Patents the authority to carry out the “non-exclusive functions and duties” of the USPTO Director if both the Director and Deputy Director posts are vacant. On the agency’s website, Hirshfeld is not described as “acting USPTO Director,” but instead as “performing the functions and duties of the . . . Director.” In that capacity, Hirshfeld denied review of the PTAB decision invalidating Arthrex’s patent claims on October 15, 2021.

The parties have asked the Federal Circuit to address whether Hirshfeld’s claim to act based on the delegation document violates the main statute authorizing the selection and service of acting officials, which is the Federal Vacancies Reform Act (“FVRA”) of 1998, or the Appointments Clause. A lot turns on this issue, because, as I and others have written elsewhere, this tactic has been increasingly used to fill vacancies in Senate-confirmed posts without complying with the FVRA’s restrictions on “acting officials.” Officials have relied recently on delegations to claim the power to lead the Social Security Administration, Bureau of Land Management, and the Fish and Wildlife Service, not to mention to serve as the Deputy Director of Homeland Security. The result is a significant corps of shadow acting officials who use a title something like Hirshfeld’s:  not, “Acting Director” or “Acting Secretary,” say, but instead, “Performing the Duties and Functions of the [USPTO] Director.” Perhaps unlike Hirshfeld, these officials may have little experience and may claim the ability to serve long past the FVRA’s time limits. Professors Jody Freeman and Sharon Jacobs have characterized this practice as among those making agency personnel overly vulnerable to inappropriate Presidential staffing decisions. The Federal Circuit has an unusual opportunity to assess its legality.

(2) The statutory issue.

Under the FVRA, the most recent iteration of the federal vacancies law first enacted in 1868, Congress carefully delimited who can serve as an “acting officer,” and for how long, when a Presidentially-appointed, Senate-confirmed (“PAS”) post is vacant. Appointments and confirmation take time under the best of circumstances, and Presidents need some ability to ensure the government can continue to operate. The FVRA authorizes acting service in a vacant PAS post by a “first assistant” or else a Presidentially-selected senior agency official (GS-15 level or the equivalent) or other official Senate-confirmed for a different post. The FVRA allows an acting official to serve for 210 days, extended to 300 days after a President’s first inauguration (or while a nomination is pending in the Senate and in some other circumstances).  But Hirshfeld is not qualified to “act” under these categories. He is not a “first assistant.” And although he likely was eligible to act under the FVRA as a senior agency official, the President did not select him.

Does the 2016 USPTO document authorize Hirshfeld to act even if the FVRA does not?  The FVRA’s main text suggests it cannot, because the statute’s “exclusivity provision” states that the statute is the “exclusive means for temporarily authorizing an acting official,” except for another statute “expressly” authorizing an acting official. The exclusivity provision specifically bars reliance on a statute “providing general authority” to an agency head to “delegate” or “reassign” duties. The FVRA’s legislative context also supports the conclusion that the delegation strategy is impermissible. At the time Congress took up the vacancies law for reform, Clinton Administration Attorney General Janet Reno had invoked the Justice Department’s organic statute to delegate the responsibilities of the Solicitor General and multiple Assistant Attorneys General, offices requiring Senate confirmation, to individuals whom the Senate had declined to confirm. That raised Congress’s ire. Besides the FVRA’s “exclusivity” provision discussed above, legislative history included statements that the bill was meant to clarify that this sort of reliance on general management statutes was foreclosed, (see p. 17), and to “restore [the] constitutionally mandated procedures” of Presidential appointment and Senate confirmation (see p. 8).

Some have argued that other language in the FVRA nonetheless implicitly permits the delegation strategy.  The argument here is based on the FVRA’s complex enforcement provision, 5 U.S.C. 3348. Section 3348 specifies – bear with me here — that an action taken “in the performance of any function or duty” that is not in conformity with the FVRA “shall have no force or effect” and, furthermore, may not be ratified later by a legally serving officer. But Section 3348 then defines “function or duty” “[i]n this section” as “any function or duty” that is “established by statute [or regulation]”—and “required by statute [or regulation] to be performed by the applicable officer (and only that officer).” For such a function or duty, the enforcement provision specifies that if the office is vacant, “only the head of such Executive agency” may perform it. Defenders of the delegation strategy have pointed out that the “required . . . to be performed by the applicable officer (and only that officer)” language means that the enforcement provision voids only nondelegable functions when carried out by an improperly selected official. In spite of statutory text limiting the special “function or duty” definition to “this [enforcement] section” (rather than the entire Act), delegation defenders go on to argue that delegable functions should be understood as broadly exempt from all the FVRA’s requirements. On that view, responsibilities of a vacant Senate-confirmed office may be delegated to any official notwithstanding the Act, unless they are functions vested by a statute or regulation in a particular “officer (and only that officer).” The government persuaded the D.C. Circuit to accept this argument in one recent case, but in a different agency setting, a D.C. district judge saw things differently. The main selling point of such a reading is that it would surely increase the flexibility of agency heads to get the government’s work done notwithstanding confirmation delays. Its advocates also claim support in some legislative history statements (e.g., p. 18).

On the other hand, legitimating the delegation strategy could largely eliminate the FVRA’s application and undercut the President’s incentive to formally appoint PAS officials and seek Senate confirmation. This is because courts have repeatedly found subdelegation of agency functions to be presumptively permissible, whether by statute or regulation. Meanwhile, statutory and regulatory provisions that restrict such delegations by assigning duties exclusively to a particular officer are very rare. This reading also would make trivial the language in the Act’s exclusivity provision specifically barring reliance on general delegation statutes. It would render the FVRA ineffective to address the concerns that motivated the 1998 Congress–the Clinton Administration Justice Department’s use of delegations to empower unconfirmed officials to carry out PAS office responsibilities. Some might be concerned that the FVRA would not be enforceable against delegations of PAS office authority because its main enforcement provisions apply to nondelegable functions. But the FVRA’s enforcement provision is not the sole means of enforcing the FVRA. Courts can set aside any agency action taken by unauthorized officials as contrary to law under the Administrative Procedure Act, though the action could still be upheld if it were ratified later by a properly serving official, as one federal district judge has explained.

(Arthrex also argues that the Court’s holding requiring a principal officer decision renders the USPTO Director’s review authority statutorily nondelegable under the FVRA, so that Hirshfeld cannot receive the authority by delegation. This argument is unpersuasive, however, because the Arthrex holding establishing directorial review is rooted in the Appointments Clause. The opinion eliminates statutory language rather than interpreting it.)

In assessing the challenge to Commissioner Hirshfeld’s review of the PTAB’s invalidation of Arthrex’s patent claims, the Federal Circuit thus has an important opportunity to weigh in on whether agencies can legally delegate around vacant PAS offices, without concern for the qualifications of the official or the length of time they serve, or whether, instead, the FVRA precludes the creation of such shadow acting officials.

All this said, if the Senate confirms Kathi Vidal as USPTO Director soon, the Administration has a chance to make this statutory issue disappear. Because the statute and regulations do not appear to preclude a USPTO Director from revisiting review of a PTAB decision, Vidal could independently reconsider and potentially ratify the October 15, 2021, Hirshfeld decision rejecting directorial review of the PTAB decision invalidating Arthrex’s patents.

(3)  The constitutional issue.

Arthrex also challenges Hirshfeld’s service as an Appointments Clause violation. Despite that clause’s requirement of Presidential appointment and Senate confirmation for principal officers, constitutional doctrine has long tolerated at least some “acting” service by unconfirmed officials. Although the courts have yet to decide precisely how much service the Appointments Clause permits—or for how long—the likelihood that Arthrex will succeed in establishing a constitutional violation is small. The leading Supreme Court decision, United States v. Eaton, decided in 1898, approved as constitutional an unconfirmed acting general consul’s service in Bangkok. The consul general took a leave of absence for illness, and a missionary was designated to “act” by the consul general (with the State Department’s approval) for roughly ten months until a properly commissioned vice consul arrived. The Court upheld the acting officer’s service in the principal officer role as constitutional, noting that the officer was doing the work “under special and temporary conditions.” (The Court later described the acting official as a properly serving inferior officer.)

The precedential reach of Eaton today is unclear. Although the Court permitted ten months of acting service in Eaton, one might consider consular work comparatively lower impact and the need to cover the post significant, given the difficulties of travel from the U.S. to Bangkok at the time. Perhaps ten months of acting service would not be constitutionally tolerable for highly consequential domestic positions. But Justice Roberts, writing for a majority in National Labor Relations Board v. SW General, also commented that the FVRA represents “Congress . . . account[ing] for [the] reality” that a Senate-confirmed office’s responsibilities may go unperformed if a vacancy arises, thus giving the President “limited authority to appoint acting officials to temporarily perform” those responsibilities. (emphasis added). This was dicta, since the Court found that the service of the official in question violated the FVRA and did not reach the Appointments Clause issue. But the Court may have been hinting that the FVRA’s identification of eligible acting officials and minimum authorization of 210 days of service might be generally constitutionally acceptable. Justice Thomas, concurring, was the only Justice to argue that the official’s service of more than three years without Senate confirmation should be considered an Appointments Clause violation as well. Lower court rulings have offered little guidance, generally rejecting Appointments Clause challenges to acting officials, although one district court found an Appointments Clause violation in an unconfirmed official running the Bureau of Land Management for fourteen months pursuant to a delegation document that the court also found to be invalid.

In this case, Hirshfeld’s significant power to decide, unilaterally, the validity of patent claims challenged in inter partes review weighs in favor of a stricter reading of the Appointments Clause. Hirshfeld is not Senate-confirmed even in the Commissioner position. On the other hand, Hirshfeld is not exercising Cabinet-level powers, and President Biden submitted a nomination for Senate consideration less than a year after Hirshfeld began exercising the Director’s powers. Other officials serving based on delegation documents have served far longer than Hirshfeld. A ruling that Hirshfeld’s service violates the Appointments Clause could disrupt the operation of numerous agency offices, since many officials have served for similarly lengthy periods. I have argued that the Appointments Clause ought be interpreted to permit only very short periods of acting service for Cabinet-level principal officers and roughly four months for below-Cabinet-level principal officers such as the Director, far shorter than Hirshfeld’s service. But under current doctrine, as vague as it is, Arthrex’s Appointments Clause argument looks to be a long shot. If Kathi Vidal is confirmed and undertakes an independent review of the PTAB’s decision on the Arthrex patent claims, that may obviate the need to address the Appointments Clause issue altogether.

Otherwise, however, the Arthrex litigation is one of the rare cases in which a court may have the opportunity to address the legality of the in-the-weeds strategy of delegating powers around vacant PAS offices. To make the FVRA effective and to encourage the President’s proper use of the confirmation process, the Federal Circuit should interpret the FVRA to prohibit the practice.

Nina A. Mendelson is the Joseph L. Sax Collegiate Professor of Law at the University of Michigan Law School. 

Does the Temporary PTO Director have Arthrex Authority?


32 thoughts on “Arthrex on Remand: Commissioner of Patents Drew Hirshfeld and the Problem of Shadow Acting Officials

  1. 6

    Vacancies Act and APA are helpful to highlight and confirm that the USPTO Director is a political appointee with total power to pick winners and losers in the patent public franchise game. It’s not the merit-based patent system our Founders gave us. It’s the elitist system of Big Tech, Justice Clarence Thomas, and the British Crown.

    If you want to profit from patents you must predict or influence the President and the Director of the USPTO, capturing your gains in that 2 to 4 year window.

    It has nothing whatsoever to do with “promoting progress in the useful arts…”

  2. 5

    The Appointments Clause issue, at this point, is nothing more than a trendy academic issue for law school professors and constitutional scholars. It has no significance to anyone who actually practices patent law for real clients. I don’t think the argument has changed the outcome in a single case.

    Patent owners appealing adverse IPR decisions today do not seem to be raising Arthrex issues, notwithstanding the obvious issue with acting Director Hirshfeld, and the reasons seem obvious. After the Supreme Court decision, patent owners know that the argument about Hirshfeld, if successful, would just result in another remand to the PTAB so the patent owner can request rehearing. The case would then sit at the PTAB until a properly appointed PTO Director is appointed, who will almost certainly deny the rehearing request. The patent owner is back to square one with their appeal, as they continue to lose term on their patent.

    1. 5.1

      I think that is pretty much the size of it. Good summary.

      It is a hail Mary at best.

    2. 5.2

      Agree. It is a Hail Mary that is very unlikely to succeed. While interesting to academics, it has little real-word impact.

    3. 5.3

      I agree that the Appointments Clause argument is a long shot under current doctrine in this particular case. But make no mistake, however significant the FVRA issue is in the patent setting overall, it could matter a great deal in other settings. In the previous Administration, FVRA violations impacted the legality of asylum directives, oil and gas leases, and other land management decisions. The Supreme Court has set aside an NLRB unfair labor practice judgment because of an FVRA violation (though not one involving delegations). And the delegations issue was raised in a congressional hearing earlier this month.

      1. 5.3.1

        Fair enough Nina. You are, though, in the world of the beaten down group of people called patent attorneys where patent law is watered down more and more every year. It may have consequences outside patent law, but the odds of it mattering to us is very small.


          Meh, I tend to take an opposite view.

          While it’s “impact” is not highly visible, it is an extremely winnable legal battle to be had, and CAN “push back” against an administrative agency that by and large remains more “anti” than “pro” innovation.

          There be a bit of “Domino Theory” of sorts to be gained.


            anon, what are the consequences, though? None.

            No one will get docked for this. Nothing will happen.


              I agree that no one person will likely be held to account.

              But that is just not the same thing as putting a stop to the attempted advance of illicit power grabbing by the administrative agency.

              Perhaps a better analogy would be the camel’s nose under the tent.

    4. 5.4

      A Hail Mary, yes. Yet, when your claims are “on their way to h.e.l.l.” on the merits . . . hailing Mary be the only option you’ve got.

      (not saying such is the case here)

    5. 5.5

      > The case would then sit at the PTAB until a properly appointed PTO Director is appointed, who will almost certainly deny the rehearing request.

      The normal game is to hope that new Director will be appointed by a ‘better’ President…

      …which, even here, is not inconceivable if the R’s take over the Senate and want to play the tit-for-tat wrt blocking appointments. Side note: the fact that any appointments are still open is very sloppy governance.

      1. 5.5.1

        You’re barking up the wrong tree to expect the outcome of a request for rehearing, in any particular case, to depend on political party/partisan issues. The denial rate for requests for rehearing is well into the 90-95% rate, and that has stayed fairly consistent through the Obama and Trump years, and continued in to the Biden tenure. Regardless of which party controls the White House, or the Senate, you can expect that very few, if any, of these post-Arthrex requests for rehearing are going to be successful. And that’s why the Arthrex is only of interest to academics like Professor Mendelson, and not to anyone who actually practices patent law.


          IDK. The next R nominee is likely to be anti-Big-Tech. And filing a motion for rehearing is pretty cheap…essentially just cut-and-paste one of your IPR briefs.

          The bigger issue with the strategy, imho, is that the next election is 2.5 years away and the Never-Trump R’s are likely to break party ranks wrt the tit-for-tat strategy.


          It is also of interest to those who follow administrative law (yes that impact patent law — need I remind you of Tafas and the Appeal Rules fiascos of yesteryear)?

  3. 4

    OT, but is not Dyfan LLC v. Target (3/24/22) the first Fed. Cir. appeal decision on any merits [not venue] decision from Judge Alan D. Albright of Waco WDTX? It got reversed:
    “The district court held the claims invalid as indefinite under 35 U.S.C. § 112 based on its view that certain claim limitations are in
    means-plus-function format under § 112 ¶ 6 and that the specification does not disclose sufficient structure corresponding to the recited functions. Because we conclude that the disputed claim limitations are not drafted in means-plus-function format, we reverse the district court’s judgment of invalidity and remand for further proceedings.”

    1. 4.1

      I find it suspicious that Albright would construe “code, when executed, further configured to…” as a means plus function. That’s not exactly within the patent Overton window.

      1. 4.1.1

        This was an early decision from Judge Albright; he hadn’t gotten the message yet on the location of the Overton Window on Williamson/Citrix issues. His decision was right and it’s still silly that the CAFC continues to pretend that “code configured to [x]” is somehow more structural and less functional than “means for [x].”


          “he hadn’t gotten the message yet on the location of the Overton Window on Williamson/Citrix issues”

          He hadn’t gotten the message as of December 2019? That seems strange for a guy who was practicing patent law before he was appointed.


          it’s still silly that the CAFC continues to pretend that “code configured to [x]” is somehow more structural and less functional than “means for [x]

          I suggest you read the decision. Page 8 of the slip opinion is a good start. I’ll summarize the legal principal:

          1) presumption of not invoking 112, 6th paragraph when word “means” not used.
          2) that presumption is rebuttable with “nonce words” that are “tantamount to using the word ‘means.'”
          3) the issue involves whether the words have a sufficiently definite meaning as a name for structure to persons of ordinary skill
          4) this issue can be resolved using intrinsic and/or extrinsic evidence
          5) claim terms need not describe a singular structure but can describe a class of structures
          6) a term connoting “some structure” to one skilled is enough

          Turning to page 10 of the slip opinion, the the Court applies those legal principles to the claims. The key findings are as follows:
          7) regarding “code/application,” “the district court erred by ignoring
          key evidence—unrebutted deposition testimony from Target’s own expert, Dr. Goldberg—regarding how a person of ordinary skill would have understood the “code”/“application” limitations.”
          8) the testimony is that the word “code” coupled with the language describing its operation connotes structure.
          9) based upon this testimony “the claim limitation do not recite ‘purely functional language.'”

          Turning to page 14 of the slip opinion, the Court make the observation that:
          Unlike in the mechanical arts, the specific structure of
          software code and applications is partly defined by its function.

          Like it or not, this is the law of the land. Although not a precedential opinion, similar analysis was presented today (March 25, 2022) in the decision of VCPP v. Vizio and involved the language of “a storage adapted to” and “a processor adapted to.”

    2. 4.2

      No, he was appealed in the MV3 noninfringement verdict by the plaintiffs (36’d, I believe that’s the case the Court sanctioned counsel over for trying to attend oral with too many people).

  4. 3

    anon has been saying this ever since Hirshfeld took over operation of the PTO and then emphatically after Arthrex.

    So this is old news. You should have written your own article anon.

    Looking at all the facts, I think it is pretty clear that Hirshfeld does not have the authority to rule on the rehearing requests for IPRs. This is just more of the same where government (power) takes and does whatever it can.

    1. 3.1

      While I was certainly the first, and perhaps the most vocal, I have been by no means the only — and this is a very easy legal call to make.

  5. 2

    A question re “But Hirshfeld is not qualified to “act” under these categories. He is not a “first assistant.”
    Why not, and if he was not, who is, or was? No one?
    Hirshfeld is the properly appointed “Commissioner of Patents,” which is the traditional, historical head of all patent operations in the Patent and Trademark Office.
    Also, “Hirshfeld’s significant power to decide, unilaterally, the validity of patent claims challenged in inter partes review” is not what he has been doing. He has not decided or reversed PTAB panel decisions. He has only been deciding whether or not the requests made to him for reconsideration of PTAB panel decisions raise sufficient grounds of panel legal or factual error to justify their reconsideration.

    1. 2.1

      [As Commissioner of Patents, Hirshfeld was also by far the most important direct report to the PTO Director.]

    2. 2.2

      The Commissioner was the Head of the Patent Office for 100+ years — but during that time the Commissioner position was Nominated by the President and Confirmed by the Senate. The structure changed decades ago and now the Commissioner is no longer presidentially appointed.

      The “first assistant” to the Director is clearly the Deputy Director, who goes through the Presidential Appointment/Senate Confirmation process. What happened here is that both the Director and Deputy Director resigned.

      Even then, the Vacancies Act permits the President to hand-select another ranking individual (such as Hirshfeld) to serve as Acting Director. However, the President never made that selection.

      = = = =

      In some ways, all of this is quite minor — but the Constitution is pretty clear about its importance, and the Supreme Court in Arthrex walked through why it mattered — in particular, we are looking to have an individual whose actions are directly tied to the President so that the people can have accountability.

      1. 2.2.1

        Thanks Dennis, I see that the Deputy Director presidential appointment position, as well as Director, was created by the Patent and Trademark Office Efficiency Act of November 29, 1999. He or she is so rarely heard from that I had forgotten about it. But since both, and almost all other, presidential appointments in all other federal agencies resign when president of a different party are elected, and presidential appointments and Senate confirmations take longer and longer, how unique is the PTO’s situation?
        Will not the most likely outcome be the Fed. Cir. be tempted to just wait until the newly appointed PTO Director renders this issue moot by reconsidering Hirshfeld’s relatively small number of reconsideration decisions? Especially with the real possibility that any Fed. Cir. decision on this subject will get disrespected by the Sup. Ct. like their original Arthrex decision was.


          The issue will NOT become moot even with the new director taking the realm.

          Paul, this has been pointed out to you already by both myself and Dave Boundy — follow the link to the Prof.’s earlier post.

    3. 2.3

      Although the FVRA doesn’t define “First assistant,” that would be understood to be the Deputy Director of the USPTO. But that post is also vacant.

  6. 1

    asks whether Dir. Hirshfeld has the legal power to fulfill the expanded job as required by the Supreme Court’s decision

    Easy answer: “No.”

    Clearly – as the thrust of the immediate question has to do with someone who has passed appropriate vetting, and Hirshfeld not only does NOT have that, the Patent Office decided to play games in order to get around timing limitations by NOT naming Hirshfeld “Acting.”

    This is not only a lack of clean hands, this is being caught red-handed.

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