Smith & Nephew, Inc. v. Arthrex, Inc., No. 18-2140 (Fed. Cir. 2022)Annotate this Case
Arthrex sued S&N, alleging infringement. S&N sought inter partes review (IPR). The Patent Trial and Appeal Board found that prior art anticipated several claims. Arthrex challenged the decision on the merits and argued that the Board lacked constitutional authority to issue the final decision because its Administrative Patent Judges (APJs) were not nominated by the President and confirmed by the Senate, as the Appointments Clause requires for principal officers.
The Federal Circuit severed the statutory limitations on the removal of APJs and remanded for rehearing by a new panel. The Supreme Court vacated and remanded, finding that the appropriate remedy was to exempt the Director from 35 U.S.C. 6(c), which precludes anyone but the Board from granting rehearing of a Board decision, and remand to the Acting Director for a decision on whether to rehear the case. The offices of the Director and Deputy Director were vacant. Agency Organization Order 45-1 states, “If both the [Director] and the Deputy [Director] positions are vacant, the Commissioner for Patents . . . will perform the non-exclusive functions and duties of the [Director].” The Commissioner denied rehearing and ordered that the Board’s decision “is the final decision of the agency.”
The Federal Circuit affirmed, rejecting arguments that the Commissioner violated the Appointments Clause, the Federal Vacancies Reform Act, 5 U.S.C. 3345, or the Constitution’s separation of powers in denying Arthrex’s rehearing request. The court agreed that prior art anticipated the challenged claims.
This opinion or order relates to an opinion or order originally issued on October 31, 2019.