A Motion Every Patent Owner Should File in Pending IPRs | LinkedIn
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`A Motion Every Patent Owner Should
`File in Pending IPRs
`
`Published on November 9, 2019
`
`Michael Shore
`Michael Shore, Inventor
`
`2 articles
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`Follow
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`Every Patent Owner with a pending inter partes review petition ("IPR") on file should
`consider filing an objection to the administrative patent judges ("APJs") hearing their case
`and seek the termination of the IPRs. Article II, Section 2, Claus 2 is the Constitution's
`"Appointments Clause", and APJs have been found by the Federal Circuit to have been
`officers appointed in violation of that clause. The only remedy that is constitutionally
`permissible when a judicial officer's appointment is found to have violated the Appointments
`Clause is to completely start the proceedings over from scratch with a different and properly
`appointed judicial officer. That required remedy makes almost every pending IPR unable to
`meet the deadlines in the America Invents Act ("AIA"), and failing to meet those deadlines
`requires the IPRs to be terminated.
`
`I.
`
`APJ Panels are Composed of Unconstitutionally Appointed Judicial Officers
`
`On October 31, 2019, the Federal Circuit Court of Appeals issued its opinion in Arthrex,
`Inc. v. Smith & Nephew, Inc., Case No. 2018-2140. In Arthrex, the Federal Circuit held
`“that APJs are principal officers under Title 35 as currently constituted. As such, they must
`be appointed by the President and confirmed by the Senate; because they are not, the current
`structure of the Board violates the Appointments Clause.” Arthrex at 20.
`
`II.
`
`Administrative Patent Judges are Judicial Officers
`
`IPRs replaced the previous reexamination procedure by converting the process from an
`examinational to an adjudicative one. See Abbott Labs. v. Cordis Corp., 710 F.3d 1318,
`1326 (Fed.Cir.2013) (quoting H.R.Rep. No. 112–98, pt. 1, at 46–47 (2011)). An federal
`adjudicative proceeding is necessarily presided over by a federal judicial officer.
`Administrative Patent Judges (“APJs”) are, by the act of Congress that created them, judicial
`officers of the United States. The Federal Circuit confirmed APJ’s status as judicial officers
`in Abbot Labs. To hold otherwise would make APJs simply re-titled patent examiners.
`
`III.
`
`APJs Actions Do Not Qualify for De Facto Officer Doctrine
`
`https://www.linkedin.com/pulse/motion-every-pending-ipr-patent-owner-should-file-michael-shore/
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`A Motion Every Patent Owner Should File in Pending IPRs | LinkedIn
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`In Arthrex, Judge Moore effectively applied the de facto officer doctrine in an attempt to
`save all rulings made by the original APJ panel that was unconstitutionally appointed by
`remanding the case to the Patent Trial and Appeal Board (“PTAB”) with instructions that a
`new APJ panel properly appointed could decide the case on the same record. See Arthrex at
`30 (“Finally, we see no error in the new panel proceeding on the existing written record but
`leave to the Board’s sound discretion whether it should allow additional briefing or reopen
`the record in any individual case.”) Judge Moore’s allowance of the prior orders and
`decisions of the unconstitutionally appointed APJ panel to stand (but not the final
`ruling) was effectively a ruling that the de facto officer doctrine applied to all such non-final
`rulings by unconstitutionally appointed APJ panels.
`
`But the United States Supreme Court has repeatedly ruled that the de facto officer doctrine
`does not apply to judicial officers of the United States. Nguyen v United States, 539
`US 69, 77 (2003). The Nguyen holding is consistent with and relies upon Ryder v United
`States, 515 US 177 (1995). The rule that the de facto officer doctrine does not apply to
`Article II administrative law judges (“ALJs”) was made clear in Lucia v. S.E.C., 138 S.Ct.
`2044, 2055-56 (2018). APJs should not be treated any differently than ALJs.
`
`The Federal Circuit has unconditionally ruled current APJ panels’ decisions to institute
`pending IPRs were made by unconstitutionally appointed judicial officers of the United
`States. Arthrex at 20. Those decisions to institute were therefore void from their inception.
`Nguyen at 78 (“This Court succinctly observed: ‘If the statute made him incompetent to sit
`at the hearing, the decree in which he took part was unlawful, and perhaps absolutely void,
`and should certainly be set aside or quashed by any court having authority to
`review it by appeal, error or certiorari.’)(citing American Constr. Co. v. Jacksonville,
`T. & K.W.R. Co., 148 U.S. 372, 387)(emphasis added).
`
`IV.
`
`Remand is Only Option and Renders the Proceedings Time-Barred
`
`The only option when a judicial officer is found unconstitutionally appointed is a remand to
`have the matter reheard in its entirety by a judicial officer appointed in accordance with
`the Appointments Clause or by a newly appointed lesser officer whose appointment is not
`subject to Senate confirmation. Nguyen at 83; Lucia at 2055-56. In most pending IPRs
`however, remand and rehearing before a new APJ panel would be futile because the time for
`an institution decision by a properly appointed APJ panel has in most pending IPRs long
`since passed. 35 U.S.C.A. § 314(b)(2). See PersonalWeb Tech., LLC v. FaceBook, Inc.,
`2014 WL 116350 *2 (N.D. Cal. January 13, 2014)(“The PTO must decide whether to
`institute IPR within three months of the patent owner's preliminary
`response, or in the event no response is filed, by the last date on which the response could
`have been filed.”)(emphasis added). Even if new APJ panels were allowed to decide to
`institute long-pending IPRs after remand in direct violation of 35 U.S.C. § 314(b)(2), the
`final decision could not possibly be reached by such newly appointed panels within the 18-
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`A Motion Every Patent Owner Should File in Pending IPRs | LinkedIn
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`month deadlines of 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)(this assumes a six month
`extension were sought and granted before the 1 year deadline passed). Those deadlines, like
`the institution deadline, are not extendable by the express language of the AIA.
`
`In almost every pending IPR no possibility now exists of an institution decisions being made
`by a newly appointed APJ panel within the deadlines mandated by the AIA, nor is there any
`possibility of final written decisions being issued within the AIA final decision deadlines.
`Because the new panels cannot possibly meet the mandatory deadlines, every pending IPR
`must be terminated with prejudice. Any other result would thwart the fundamental purpose
`of the AIA that created IPRs for the purposes of “providing quick and cost-effective
`alternatives to litigation.” H.R. Rep. No. 112–98, pt. 1, at 48 (2011), 2011 U.S.C.C.A.N. 67,
`78; 77 F. Reg. 48680–01 (Aug. 14, 2012); Universal Elecs., Inc. v. Universal Remote
`Control, Inc., 943 F.Supp.2d 1028, 1029-30 (C.D. Cal. 2013).
`
`Patent Owners should all objects to any pending IPR proceedings as being held before
`judicial officers that were unconstitutionally appointed and asks that their proceedings be
`terminated with prejudice because no possibility exists that the mandatory deadlines to
`institute and/or decide this IPR can be met.
`
`Michael W. Shore
`
`Published by
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`Michael Shore
`Michael Shore, Inventor
`Published • 1mo
`How to Kill Pending IPRs Under Anthrex
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`Michael Shore
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