United States v. Arthrex Inc.
Issues
Are administrative patent judges principal officers of the United States under the Appointments Clause, and if so, how should the Court remedy their unconstitutional appointment?
This case asks the Supreme Court to decide whether administrative patent judges are principal or inferior officers under the Appointments Clause. If administrative patent judges are principal officers, the court must also determine the proper remedy for the Appointments Clause violation. Administrative patent judges are executive officers in the U.S. Patent and Trade Office (“USPTO”) who are appointed by the Secretary of Commerce in consultation with the Director of the USPTO (the “Director”). Petitioners United States and Smith & Nephew argue that the Federal Circuit erred in holding that the APJs are principal officers. The United States and Smith & Nephew contend that they are inferior officers because the Director—a principal officer—extensively supervises their work. The United States contends that the Federal Circuit’s remedy of severing the portion of the statute that protected the APJs from being removed except for good cause was appropriate. In contrast, Smith & Nephew contend Arthrex is only entitled to a declaratory judgment, but if the Court grants relief beyond a declaratory judgment, Smith & Nephew agree with the Federal Circuit’s severance remedy. Respondent Arthrex counters that APJs are principal officers because they render decisions on behalf of the United States that are not subject to review by a superior Executive officer. Arthrex further argues that if APJs are principal officers, the Court’s remedy should be to invalidate the entire inter partes review system and allow Congress to fix it as they see fit. This case has drastic implications for past patentability decisions and how patents are reviewed moving forward.
Questions as Framed for the Court by the Parties
(1) Whether, for purposes of the Constitution’s appointments clause, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the president with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head; and (2) whether, if administrative patent judges are principal officers, the court of appeals properly cured any appointments clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.
Arthrex Inc. (“Arthrex”), a medical device company, owned the ’907 patent over a surgical assembly used to repair bone tissue. United States v. Arthrex Inc. at 1325. In 2018, Smith & Nephew, Inc.
Written by
Edited by
Additional Resources
- Dion M. Bregman, Maria E. Doukas, & Vishal J. Parikh, Supreme Court Will Review Arthrex Cases Regarding Whether PTAB Judges Are Constitutional, Morgan Lewis (Oct. 16, 2020).
- Doug Nemec & Cassandra Baloga, In Arthrex, Supreme Court To Review Constitutionality of Patent Board’s Structure, Skadden, Arps, Slate, Meagher & Flom (Dec. 22, 2020).