Arthrex, Inc. v. Smith & Nephew, Inc. was the subject of the first meeting of the Case Law Club of the Boston Patent Law Association this year, held on February 13, 2020, and hosted by the New England School of Law. Fundamentally at issue in the case was whether appointment of Administrative Patent Judges (APJs) to the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA) is in violation of the Constitution. On appeal, the Court of Appeals for the Federal Circuit (Federal Circuit) held that APJs, by virtue of a three-part test derived from precedent, would be “principal officers,” requiring nomination and appointment by the President with the “Advice and Consent of the Senate” under the Appointments Clause, but for the court’s application of the doctrine of severability. In this case, the court avoided scrapping the entire statute by selectively excepting APJs from protection against removal under a single provision. The decision by the PTAB was vacated and remanded. The parties and the government are petitioning for rehearing en banc, and the issues being put forth as bases are myriad. In the meantime, the parties to several other cases are asking that decisions rendered before Arthrex was decided also be remanded in light of the holding by the Federal Circuit.
After a brief introduction and summary of the case by Michelle Nyein of Wolf, Greenfield & Sacks, P.C., the group addressed the larger issues of: waiver/forfeiture by Arthrex (because the issue of constitutionality under the Appointments Clause was raised for the first time on appeal); the three-part test employed by the court to distinguish “principal officers” (who require appointment by the President) and “inferior officers” (who don’t); and the legal doctrine of severability, at least as applied in this case. Discussion of each of these topics prompted their own questions. For example,
  1. If raising constitutionality for the first time is permissible as an “exceptional case” because the competency of the members of the panel below is at issue, then how far back, if at all, should the ruling be applied to cases already decided by panels of the PTAB?
  2. Regarding each of the factors of the three-part test, namely the “power to review and reverse the officers’ decision,” the “level of supervision and oversight an appointed official has over the officers,” and the “appointed official’s power to remove the officers,” how much is enough? How do you balance these factors with any kind of predictability? How should these factors be weighted relative to each other if not evenly?
  3. What about the solution arrived at by the court, of severing APJs from statutory removal protections? All of the parties and the government agreed that the functions of APJs are adjudicatory. If so, then is it contrary to Congressional intent to subvert the independence conferred on them by statute in order to secure political accountability in the execution of those functions? And what significance should that determination have, if any?
Case Law Club
The Case Law Club Kicks Off 2020 with
Arthrex v. Smith & Nephew
These are questions that may have implications for administrative agencies beyond the United States Patent and Trademark Office. Some of the issues even touch upon notions of separation of powers, fundamental to our form of government.
Bob Asher, Committee Co-chair David Thibodeau, Kathleen Ranney and Kristina Cary
Committee co-chair Michelle Nyein, who led the discussion, considers a question
Committee co-chair Scott Pierce
The views expressed in this article do not necessarily represent those of the authors’ respective Firms or any of their clients.
Volume 51, Issue 1
2019 Ⓒ Boston Patent Law Association
Message from the President Michael Bergman
Foreign Counsel Membership Invitation
Minutes of the Annual Meeting
Brief for Amici Curiae Boston Patent Law Association in USPTO v.
2020 Diversity and Inclusion Roundtable
2019 Writing Competition Winner - Synopsis of "Hazards in Obviousness-Type Double Patenting"
Creating Stronger Chemical Patents to Capture the Investment in Innovation: Best Practices
Message from the Editor-in-Chief
New Report on Underrepresented Groups in Patenting
Making Connections Event Summary
What makes Massachusetts small but mighty?
2019 Annual Meeting
The Case Law Club Kicks Off 2020 with Arthrex v. Smith & Nephew
Officers and Board of Governors
Job listings
Community Calendar
Legislative Meeting Summary
Spring IP Symposium
David Gooder Appointed USPTO Commissioner for Trademarks