Bloomberg Law
July 8, 2021, 9:27 PM

Arthrex Requires Remands to Agency, Parties Tell Federal Circuit

Perry Cooper
Perry Cooper
Legal Reporter

Patent owners who argued to the Federal Circuit that administrative patent judges were unconstitutionally appointed say their cases should be sent back to the agency for further review by its director.

The briefs came in response to U.S. Court of Appeals for the Federal Circuit’s orders issued after the U.S. Supreme Court in United States v. Arthrex gave the patent office director the power to overturn decisions the Patent Trial and Appeal Board makes in the inter partes review process.

The Federal Circuit gave parties that had raised appointments clause arguments 14 days to explain how they think their cases should proceed. The court gave other parties and the patent office 14 days after that to respond.

Three patent owners filed briefs suggesting remand to the board is appropriate. PTAB leadership said the board can’t act on the cases pending at the Federal Circuit or Supreme Court until the courts send them back.

“We don’t have jurisdiction over those matters if they’re pending in those courts, so we have to wait until those cases are remanded, if indeed they are,” Vice Chief Administrative Patent Judge Scott Weidenfeller said at a July 1 event hosted by the agency.

Arthrex Narrow

The Supreme Court’s Arthrex decision laid out a remedy in that particular case: “the appropriate remedy is a remand to the acting director for him to decide whether to rehear the petition filed by Smith & Nephew.”

But the justices didn’t specify what should happen in other cases that raised the same appointments clause issue, so the Federal Circuit asked parties to weigh in.

Patent owner New Vision Gaming, whose appeal was remanded May 13 under the Federal Circuit’s original Arthrex decision, told the court that the remedy of sending it back to the agency “remains appropriate.”

“The Supreme Court’s decision in Arthrex confirms the result of the panel’s decision to vacate and remand,” it said. But it suggested that the appeals court could take the opportunity to reopen its case to address other procedural uncertainties, including a forum selection clause issue highlighted in Judge Pauline Newman’s dissent.

Patent owner Mobility Workx suggested remand as the appropriate remedy in its pending appeal.

“In view of Arthrex, Mobility submits that the PTAB panel’s decision should be vacated and the present case remanded to the PTO for the director to issue a certificate confirming the challenged claims,” it said. It argues the board erred by failing to reach a final determination in its case within the statutory 12- or 18-month period.

Patent owner Document Security Systems also argued that the Federal Circuit should remand its case.

“In accord with the Supreme Court’s holding, the APJs in this case were exercising power unconstitutionally under the appointments clause when they issued their final written decision, and the appropriate remedy for that violation is remand to the director to decide whether to rehear the petition and review the board’s decision to substitute his or her own opinion,” it said.

—Matthew Bultman contributed to this story.

To contact the reporter on this story: Perry Cooper in Washington at

To contact the editors responsible for this story: Renee Schoof at; Keith Perine at