Lawmakers Consider Fix as CAFC Deals With PTAB Appointments Clause Fallout

Orders Stave Off Further Remands….For Now

During last week’s argument in Polaris, appellant argued that the Court’s fix to the PTAB’s Appointments Clause problem was insufficient. According to appellant, “reviewability” is the touchstone of recent Appointments Clause precedent, and that as the proposed fix did not address the lack of reviewability over APJ decisions (because the Federal Circuit could not), it was up to Congress to fix.  During that same hearing, the Court contemplated additional briefing on this topic, which it recently solicited from the parties.

In the meantime, learning from its mistake in its recent Uniloc remand, the Federal Circuit is now allowing time for the government to intervene in parties seeking remand after Arthrex (here) and (here).

In the Polaris Order (here), the Court sought additional briefing on the following:

" (1) what level of supervision and review distinguish a principal from an inferior officer;

(2) whether severing the application of Title 5’s removal restrictions with respect to APJs under 35 U.S.C. § 3(c) sufficiently remedies the alleged unconstitutional appointment at issue in these appeals;

(3) whether, and how, the remedy for an Appointments Clause violation differs when it stems from an unconstitutional removal restriction, rather than an unconstitutional appointment itself; and

(4) whether severing the application of Title 5’s removal restrictions with respect to APJs under 35 U.S.C. § 3(c) obviates the need to vacate and remand for a new hearing, given the Supreme Court’s holdings on the retroactive application of constitutional rulings. E.g., Harper v. Virginia Dep’t of Taxation, 509 U.S. 86 (1993).

As the Federal Circuit considers further contours of this issue, the House IP Subcommittee on Courts, Intellectual Property, and the Internet will hold a hearing next Tuesday, November 19th entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” It is my expectation that a legislative change will be floated to allow the Director a review period at the conclusion of every Final Written Decision (FWD). Such a change would allow for enhanced Director reviewability, and, perhaps, the ability to restore the Title 5 employment protections stripped from APJs in Arthrex.

Stay tuned.

Scott A. McKeown is an author of the Patents Post Grant