Caterpillar Paving Products, Inc. v. Wirtgen America, Inc., No. 20-1261 (Fed. Cir. 2020)

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Justia Opinion Summary

The Patent Trial and Appeal Board instituted inter partes review of Caterpillar’s patent and issued its final written decision on November 13, 2019. Caterpillar appealed, then moved to vacate and remand for a new hearing before a differently constituted panel in light of the Federal Circuit’s 2019 “Arthrex” holding that the administrative patent judges of the Patent Trial and Appeal Board were improperly appointed. The Federal Circuit denied the motion. Unlike prior cases, which have been remanded, Arthrex issued before the Board’s final written decision in Caterpillar’s case. The Arthrex holding was expressly limited “to those cases where final written decisions were issued.” The court rejected an argument that even if the panel members became constitutional immediately before issuing the final written decision, that “does not cure a year’s worth of constitutional violations influencing the Board’s thinking and conclusions.”

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Case: 20-1261 Document: 33 Page: 1 Filed: 05/06/2020 United States Court of Appeals for the Federal Circuit ______________________ CATERPILLAR PAVING PRODUCTS INC., Appellant v. WIRTGEN AMERICA, INC., JOSEPH VOGELE AG, Appellees ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________ 2020-1261 ______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR201801200. ______________________ ON MOTION ______________________ JOSHUA GOLDBERG, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for appellant. Also represented by DANIEL CRAIG COOLEY, Reston, VA. Case: 20-1261 2 Document: 33 Page: 2 CATERPILLAR PAVING PRODUCTS Filed: 05/06/2020 v. WIRTGEN AMERICA, INC. RALPH WILSON POWERS, III, Sterne Kessler Goldstein & Fox, Washington, DC, for appellees. Also represented by DONALD BANOWIT, TYLER DUTTON, JON WRIGHT; MARK ANDREW KILGORE, RYAN D. LEVY, SETH R. OGDEN, Patterson Intellectual Property Law, PC, Nashville, TN. MONICA BARNES LATEEF, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for intervenor. Also represented by THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED, DANIEL KAZHDAN. ______________________ Before LOURIE, DYK, and REYNA, Circuit Judges. DYK, Circuit Judge. ORDER At the behest of Wirtgen America, Inc., the Director of the United States Patent and Trademark Office, acting through the Patent Trial and Appeal Board, instituted inter partes review of Caterpillar Paving Products Inc.’s patent. The Board held a hearing on July 30, 2019 and issued its final written decision on November 13, 2019. Caterpillar has appealed and now moves to vacate and remand for a new hearing before a differently constituted panel in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) issued on October 31, 2019. The court concludes that Caterpillar has not demonstrated that Arthrex compels a remand. 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 Director and Wirtgen argue that the Board judges were constitutionally appointed as of the date that this court issued its decision in Arthrex and that no remand is required. Caterpillar contends that even if the panel members became constitutional immediately prior to issuing the final written decision, that “does not Case: 20-1261 Document: 33 CATERPILLAR PAVING PRODUCTS Page: 3 Filed: 05/06/2020 v. WIRTGEN AMERICA, INC. 3 cure a year’s worth of constitutional violations influencing the Board’s thinking and conclusions.” The court in Arthrex considered and rejected that argument, expressly limiting its holding “to those cases where final written decisions were issued.” 941 F.3d at 1340. See also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”). Accordingly, IT IS ORDERED THAT: (1) The motion to vacate and remand is denied. (2) Caterpillar’s opening brief is due within 30 days from the date of filing of this order. FOR THE COURT May 6, 2020 Date /s/ Peter R. Marksteiner Peter R. Marksteiner Clerk of Court
Primary Holding
Federal Circuit declines to remand a Patent Trial and Appeal Board decision on inter partes review that issued two weeks after the Federal Circuit's “Arthrex” holding that the administrative patent judges of the Board were improperly appointed.

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