The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an appeal for that.

In Ciena Corporation v. Oyster Optics LLC, Appeal 2019-2117 (Fed. Cir. May 5, 2020) (precedential order), Ciena, successfully petitioned the Board to institute an IPR but ultimately failed to persuade the Board that the challenged claims were unpatentable. During Ciena’s ensuing appeal, the Federal Circuit decided Arthrex. But because the Board’s decision in Ciena issued while there was an Appointments Clause violation, Ciena asked the court to vacate and remand the IPR so it could be re-decided by a different panel of APJs. After all, that’s the remedy the court offered the Arthrex patent owner and many other patent owners since.

The court refused, noting “[t]he problem with Ciena’s request is that, unlike the patent owner in Arthrex, Ciena requested that the Board adjudicate its petition. It, thus, affirmatively sought a ruling from the Board members, regardless of how they were appointed. Ciena was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it. Under those circumstances, we find that Ciena has forfeited its Appointments Clause challenge.” Ciena not only petitioned the IPR but obtained, as a result of the IPR institution, a stay of federal district court litigation where Oyster Optics accused it of infringing the patent challenged in the IPR. Ciena thus could have had that court adjudicate validity (based on printed publication prior art), but affirmatively petitioned the Board to do so. These facts, noted the court, implicate no structural constitutional concerns that warrant forgiving Ciena’s forfeiture. Arthrex thus offers similarly-situated IPR petitioners no mulligan.

The Federal Circuit’s Arthrex decision effectively rewrote the relevant statutory provision to not only fix the Appointments Clause violation but also minimize disruptions to AIA trials generally. Since Arthrex, said the court in a recent order, “APJs are constitutionally appointed and inter partes reviews may proceed according to Congress’ initial intent.” What happens, however, when the Board administers an AIA trial before the Arthrex decision, but issues its final written decision canceling claims shortly after the Arthrex decision? Well, there’s an appeal for that too.

In Caterpillar Paving Products Inc. v. Wirtgen America Inc., Appeal 2020-1261 (Fed. Cir. May 6, 2020) (precedential order), the Federal Circuit, denied a motion to vacate a post-Arthrex Board final written decision canceling claims challenged in an IPR. The movant-appellant, Caterpillar, argued that at least the Board’s IPR institution decision, trial, and oral hearing—all transpiring before the Arthrex decision—are no less defective, thus requiring the same vacatur offered the Arthrex patent owner. The court disagreed, noting “the court in Arthrex considered and rejected that argument, expressly limiting its holding ‘to those cases where final written decisions were issued.’” For Caterpillar and similarly-situated patent owners, that’s bad timing and bad luck. Arthrex thus offers them no mulligan.

In April, the Federal Circuit refused to stay its mandate in Arthrex. There remains a potential that the Patent Office and the Arthrex parties might seek the Supreme Court’s review of the Arthrex judgment. On May Day, the Board’s Chief APJ issued a General Order applicable to more than one hundred AIA trials in which the Board’s final written decisions were vacated in view of Arthrex and await new Board decisions. The General Order answers the mayday calls of several parties, apparently uninterested in enduring the Arthrex mulligan,* who plan to ask the Supreme Court to review the Federal Circuit’s post-Arthrex summary vacatur orders. The Board will thus “hold all such cases in administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing such petitions expires.” So, stay tuned because there may well be more appeals!

* Keep in mind that a mulligan is a casually-courteous do-over offered to a golfer whose first tee shot has gone awry. If you’ve been privy to one, recall how often it ever made a difference in the outcome of the game.