Nos. 19-1434, 19-1452, and 19-1458
`In the Supreme Court of the United States
`
`
`
`UNITED STATES OF AMERICA, PETITIONER
`v.
`ARTHREX, INC., ET AL.
`
`
`
`ON WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`BRIEF FOR THE UNITED STATES
`
`
`
`
`
` JEFFREY B. WALL
`Acting Solicitor General
`Counsel of Record
`JEFFREY BOSSERT CLARK
`Acting Assistant Attorney
`General
`MALCOLM L. STEWART
`Deputy Solicitor General
`SOPAN JOSHI
`Senior Counsel to the
`Assistant Attorney General
`JONATHAN Y. ELLIS
`Assistant to the Solicitor
`General
`SCOTT R. MCINTOSH
`MELISSA N. PATTERSON
`COURTNEY L. DIXON
`Attorneys
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`DAVID L. BERDAN
`General Counsel
`THOMAS W. KRAUSE
`Solicitor
`FARHEENA Y. RASHEED
`Deputy Solicitor
`MOLLY R. SILFEN
`DANIEL KAZHDAN
`Associate Solicitors
`United States Patent and
`Trademark Office
`Alexandria, Va. 22314
`
`(Additional Captions On Inside Cover)
`
`
`
`

`

`
`
`SMITH & NEPHEW, INC., ET AL., PETITIONERS
`SMITH & NEPHEW, INC., ET AL., PETITIONERS
`’U.
`v.
`ARTHREX, INC., ET AL.
`ARTHREX, INC., ET AL.
`
`ARTHREX, INC., PETITIONER
`ARTHREX, INC., PETITIONER
`’1).
`v.
`SMITH & NEPHEW, INC., ET AL.
`SMITH & NEPHEW, INC., ET AL.
`
`
`
`
`
`

`

`QUESTIONS PRESENTED
`1. Whether, for purposes of the Appointments
`Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative pa-
`tent judges of the U.S. Patent and Trademark Office are
`principal officers who must be appointed by the Presi-
`dent with the Senate’s advice and consent, or “inferior
`Officers” whose appointment Congress has permissibly
`vested in a department head.
`2. Whether, if administrative patent judges are
`principal officers, the court of appeals properly cured
`any Appointments Clause defect in the current statu-
`tory scheme prospectively by severing the application
`of 5 U.S.C. 7513(a) to those judges.
`
`(I)
`
`

`

`PARTIES TO THE PROCEEDING
`
`Petitioner is the United States of America, which in-
`tervened in the court of appeals pursuant to 28 U.S.C.
`2403(a).
`Respondents are Arthrex, Inc., which was the appel-
`lant in the court of appeals; and Smith & Nephew, Inc.
`and Arthrocare Corp., which were the appellees in the
`court of appeals.
`
`(II)
`
`

`

`TABLE OF CONTENTS
`
`Page
`Opinions below .............................................................................. 1
`Jurisdiction .................................................................................... 2
`Constitutional and statutory provisions involved ...................... 3
`Statement:
`A. Statutory background ....................................................... 3
`B. The present controversy................................................... 8
`Summary of argument ............................................................... 13
`Argument:
`Administrative patent judges are inferior officers
`whose appointment Congress has validly entrusted to
`the Secretary of Commerce .................................................. 16
`A. Under the Appointments Clause, an officer whose
`work is subject to sufficient direction and
`supervision by Senate-confirmed officers is an
`inferior officer .................................................................. 17
`B. Administrative patent judges are inferior officers
`because their work is subject to significant direction
`and supervision by two different Senate-confirmed
`officers .............................................................................. 25
`C. The Federal Circuit’s contrary conclusion is
`incorrect ........................................................................... 33
`1. The court of appeals erred in its application of
`Edmond ..................................................................... 33
`2. History provides no sound basis for classifying
`administrative patent judges as principal
`officers ........................................................................ 41
`Conclusion ................................................................................... 45
`
`
`
`
`(III)
`
`

`

`IV
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Page
`
`Bieber v. Department of the Army, 287 F.3d 1358
`(Fed. Cir.), cert. denied, 537 U.S. 1020 (2002) ................. 27
`BioDelivery Sciences Int’l, Inc. v. Aquestive
`Therapeutics, Inc., 935 F.3d 1362 (Fed. Cir. 2019),
`cert. denied, No. 19-1381 (Oct. 5, 2020) ............................ 31
`Brown v. Department of the Navy, 229 F.3d 1356
`(Fed. Cir. 2000), cert. denied, 533 U.S. 949 (2001) .......... 26
`Cobert v. Miller, 800 F.3d 1340 (Fed. Cir. 2015) ................ 27
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................... 7
`Edmond v. United States, 520 U.S. 651 (1997) .......... passim
`Financial Oversight & Mgmt. Bd. for Puerto Rico v.
`Aurelius Inv., LLC, 140 S. Ct. 1649 (2020) ...................... 42
`Free Enterprise Fund v. Public Co. Accounting
`Oversight Bd., 561 U.S. 477 (2010) ........................... passim
`Freytag v. Commissioner, 501 U.S. 868 (1991) .................. 18
`Lucia v. SEC, 138 S. Ct. 2044 (2018) ................................... 17
`Morrison v. Olson, 487 U.S. 654 (1988) ................... 27, 34, 36
`Myers v. United States, 272 U.S. 52 (1926) ........................ 24
`Powell v. USPS, 122 M.S.P.R. 60 (2014) ............................. 27
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) .................... 7
`Seila Law LLC v. Consumer Fin. Prot. Bureau,
`140 S. Ct. 2183 (2020) ................................................... 35, 36
`Siebold, Ex parte, 100 U.S. 371 (1880) ................................ 43
`Thryv, Inc. v. Click-to-Call Techs., LP,
`140 S. Ct. 1367 (2020) ..................................................... 7, 30
`United States v. Allred, 155 U.S. 591 (1895) ....................... 20
`United States v. Eaton, 169 U.S. 331 (1898) ....................... 19
`
`
`
`
`
`

`

`V
`
`Constitution, statutes, regulations, and rule:
`
`Page
`
`U.S. Const.:
`Art. II § 2, Cl. 2 ....................................................... passim
`Appointments Clause ....................................... passim
`Take Care Clause ...................................................... 36
`Vesting Clause ..................................................... 23, 36
`Act of July 27, 1789, ch. 4, 1 Stat. 28:
`§ 1, 1 Stat. 28 .................................................................... 19
`§ 2, 1 Stat. 29 .................................................................... 19
`Act of Aug. 7, 1789, ch. 7, § 2, 1 Stat. 50 .............................. 19
`Act of Sept. 2, 1789, ch. 12, § 1, 1 Stat. 65 ........................... 20
`Act of Feb. 20, 1792, ch. 7, § 3, 1 Stat. 234 .......................... 20
`Act of Apr. 30, 1798, ch. 35, 1 Stat. 553:
`§ 1, 1 Stat. 553 .................................................................. 20
`§ 2, 1 Stat. 554 .................................................................. 20
`Act of Jan. 2, 1975, Pub. L. No. 93-601, 88 Stat. 1956 ........ 44
`Patent Act of 1952, 35 U.S.C. 1 et seq. ................................... 3
`35 U.S.C. 1(a) ............................................................... 3, 27
`35 U.S.C. 2(a) ................................................................... 43
`35 U.S.C. 2(a)(1)................................................................. 3
`35 U.S.C. 2(b) ................................................................... 39
`35 U.S.C. 2(b)(2) ........................................................ 29, 43
`35 U.S.C. 2(b)(2)(A) ........................................................... 5
`35 U.S.C. 3 (1970) ............................................................ 43
`35 U.S.C. 3(a) (1976) ........................................................ 43
`35 U.S.C. 3(a) ............................................................. 26, 43
`35 U.S.C. 3(a)(1)..................................................... 4, 29, 39
`35 U.S.C. 3(a)(2)................................................................. 5
`35 U.S.C. 3(a)(2)(A) ......................................4, 5, 10, 29, 39
`35 U.S.C. 3(b)(1) ................................................................ 4
`35 U.S.C. 3(b)(2) ................................................................ 4
`
`
`
`

`

`VI
`
`Statutes, regulations, and rule:
`
`Page
`35 U.S.C. 3(c) ............................................................... 4, 26
`35 U.S.C. 6 (1970) ............................................................ 43
`35 U.S.C. 6 .................................................................... 4, 44
`35 U.S.C. 6(a) (1976) ........................................................ 43
`35 U.S.C. 6(a) ................................................... 4, 13, 26, 27
`35 U.S.C. 6(b) ............................................................... 5, 27
`35 U.S.C. 6(c) ............................................ 5, 6, 7, 10, 27, 31
`35 U.S.C. 7 (1970) ............................................................ 44
`35 U.S.C. 7 (1976) ............................................................ 44
`35 U.S.C. 135(a) ............................................................... 30
`35 U.S.C. 141 (1970) ........................................................ 44
`35 U.S.C. 141 (1976) ........................................................ 44
`35 U.S.C. 141 .................................................................... 44
`35 U.S.C. 141(c) ................................................................. 7
`35 U.S.C. 143 ...................................................................... 7
`35 U.S.C. 144 ...................................................................... 7
`35 U.S.C. 145 (1970) ........................................................ 44
`35 U.S.C. 145 (1976) ........................................................ 44
`35 U.S.C. 145-146............................................................. 44
`35 U.S.C. 314 .................................................................... 30
`35 U.S.C. 314(a) ........................................................... 7, 30
`35 U.S.C. 314(d) ........................................................... 7, 30
`35 U.S.C. 315(e) ............................................................... 31
`35 U.S.C. 316 ................................................................ 7, 10
`35 U.S.C. 316(a) ................................................................. 7
`35 U.S.C. 316(a)(4) ..................................................... 29, 39
`35 U.S.C. 318(a) ........................................................... 7, 31
`35 U.S.C. 318(b) ................................................................. 8
`35 U.S.C. 319 ...................................................................... 7
`35 U.S.C. 324(a) ............................................................... 30
`35 U.S.C. 324(e) ............................................................... 30
`
`
`

`

`VII
`
`Statutes, regulations, and rule:
`
`Page
`35 U.S.C. 325(e) ............................................................... 31
`35 U.S.C. 326(a)(4) ..................................................... 29, 39
`Sarbanes-Oxley Act of 2002, Pub. L. No. 107-204,
`116 Stat. 745 ........................................................................ 22
`Uniform Code of Military Justice, Art. 67(c),
`10 U.S.C. 867(c) (1994) ................................................. 22, 32
`5 U.S.C. 7513(a) ..................................................... 4, 10, 14, 26
`5 U.S.C. 7543(a) ....................................................................... 5
`15 U.S.C. 1501 ........................................................................ 26
`5 C.F.R. Pt. 359 ........................................................................ 5
`37 C.F.R. Pt. 42:
`Subpt. A ........................................................................ 7, 29
`Section 42.4(a) .............................................................. 7
`Section 42.108(a) .............................................................. 31
`Section 42.208(a) .............................................................. 31
`Section 42.408(a) .............................................................. 31
`Fed. Cir. Internal Operating Procedure 10(5) ................... 38
`Miscellaneous:
`
`1 Annals of Cong. (1789) (Joseph Gales ed., 1834):
`P. 372 ................................................................................ 19
`P. 582 ................................................................................ 24
`83 Fed. Reg. 29,312 (June 22, 2018) ....................................... 4
`3 Joseph Story, Commentaries on the Constitution
`of the United States (1833) ........................................... 24, 25
`2 The Records of the Federal Convention of 1787
`(Max Farrand ed., 1911)..................................................... 18
`U.S. Patent & Trademark Office, U.S. Dep’t of
`Commerce:
`Classification and Performance Management
`Record, Form CD-516, Administrative Patent
`Judge: FY19 Performance Appraisal Plan .......... 28
`
`
`
`

`

`VIII
`
`Page
`
`Miscellaneous—Continued:
`Memorandum from Andrei Iancu, Undersecre-
`tary of Commerce for Intellectual Property &
`Director of the U.S. Patent & Trademark
`Office, Treatment of Statements of the Appli-
`cant in the Challenged Patent In Inter Partes
`Reviews Under § 311 (Aug. 18, 2020) ...................... 29
`Patent Trial and Appeal Board:
`Standard Operating Procedure 1
`(Revision 15), (Sept. 20, 2018),
`https://go.usa.gov/xwX6N ............................... 6, 28
`Standard Operating Procedure 2
`(Revision 10), (Sept. 20, 2018),
`https://go.usa.gov/xwXem ................. 5, 6, 7, 30, 32
`
`
`
`
`
`
`
`
`
`
`

`

`In the Supreme Court of the United States
`
`
`
`No. 19-1434
`UNITED STATES OF AMERICA, PETITIONER
`v.
`ARTHREX, INC., ET AL.
`
`
`
`No. 19-1452
`SMITH & NEPHEW, INC., ET AL., PETITIONERS
`v.
`ARTHREX, INC., ET AL.
`
`
`
`No. 19-1458
`ARTHREX, INC., PETITIONER
`v.
`SMITH & NEPHEW, INC., ET AL.
`
`
`
`ON WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`BRIEF FOR THE UNITED STATES
`
`
`
`
`
`OPINIONS BELOW
`The opinion of the court of appeals (Pet. App. 1a-33a)
`is reported at 941 F.3d 1320. The final written decision
`of the Patent Trial and Appeal Board (Pet. App. 83a-
`129a) is not published in the United States Patents
`
`(1)
`
`

`

`2
`
`Quarterly but is available at 2018 WL 2084866. The de-
`cision of the Patent Trial and Appeal Board (Pet. App.
`60a-82a) to institute inter partes review is not published
`in the United States Patents Quarterly but is available
`at 2017 WL 1969743.
`JURISDICTION
`The judgment of the court of appeals was entered on
`October 31, 2019. Petitions for rehearing were denied
`on March 23, 2020 (Pet. App. 229a-231a).
`On March 19, 2020, the Court extended the time
`within which to file any petition for a writ of certiorari
`due on or after that date to 150 days from the date of
`the lower-court judgment, order denying discretionary
`review, or order denying a timely petition for rehearing.
`The effect of that order was to extend the deadline for
`filing a petition for a writ of certiorari in this case to
`August 20, 2020.
`The United States filed its petition for a writ of cer-
`tiorari on June 25, 2020 (No. 19-1434); Smith & Nephew,
`Inc. and Arthrocare Corp. filed their petition on June
`29, 2020 (No. 19-1452); and Arthrex, Inc. filed its peti-
`tion on June 30, 2020 (No. 19-1458). On October 13,
`2020, the Court granted the petitions, limited to Case
`No. 18-2140 (Fed. Cir.) and the questions presented as
`formulated above, and consolidated the three cases.
`The jurisdiction of this Court rests on 28 U.S.C.
`1254(1).
`
`
`
`

`

`3
`
`CONSTITUTIONAL AND STATUTORY
`PROVISIONS INVOLVED
`The Appointments Clause of the U.S. Constitution
`provides:
`[The President] shall nominate, and by and with the
`Advice and Consent of the Senate, shall appoint Am-
`bassadors, other public Ministers and Consuls,
`Judges of the supreme Court, and all other Officers
`of the United States, whose Appointments are not
`herein otherwise provided for, and which shall be es-
`tablished by Law: but the Congress may by Law
`vest the Appointment of such inferior Officers, as
`they think proper, in the President alone, in the
`Courts of Law, or in the Heads of Departments.
`U.S. Const. Art. II, § 2, Cl. 2.
`Pertinent statutory provisions are reprinted in an
`appendix to the United States’ petition. Pet. App. 298a-
`321a.
`
`STATEMENT
`This case concerns whether, under the Appoint-
`ments Clause, U.S. Const. Art. II, § 2, Cl. 2, administra-
`tive patent judges of the United States Patent and
`Trademark Office (USPTO) are principal officers who
`must be appointed by the President with the advice and
`consent of the Senate, or “inferior Officers” whose ap-
`pointment Congress may vest in a department head.
`A. Statutory Background
`1. The Patent Act of 1952 (Patent Act), 35 U.S.C. 1
`et seq., establishes the USPTO as an executive agency
`within the United States Department of Commerce
`“responsible for the granting and issuing of patents and
`the registration of trademarks.” 35 U.S.C. 2(a)(1); see
`35 U.S.C. 1(a). Congress has “vested” “[t]he powers and
`
`
`

`

`4
`
`duties” of the USPTO in its Director, who is “appointed
`by the President, by and with the advice and consent of
`the Senate,” and is removable at will by the President.
`35 U.S.C. 3(a)(1). Congress has charged the Director
`with providing “policy direction and management su-
`pervision for the [USPTO] and for the issuance of pa-
`tents.” 35 U.S.C. 3(a)(2)(A). The Act additionally au-
`thorizes the Secretary of Commerce to appoint a Dep-
`uty Director, a Commissioner for Patents, and a Com-
`missioner for Trademarks, all of whom serve under the
`Director. 35 U.S.C. 3(b)(1) and (2).
`The Patent Trial and Appeal Board (Board) is an ad-
`ministrative tribunal within the USPTO. 35 U.S.C. 6.
`The Board consists of the Director, the Deputy Direc-
`tor, the Commissioners for Patents and Trademarks,
`and “administrative patent judges.” 35 U.S.C. 6(a). Ad-
`ministrative patent judges are “persons of competent
`legal knowledge and scientific ability who are appointed
`by the Secretary [of Commerce], in consultation with
`the Director.” Ibid.
`There are currently more than 250 such administra-
`tive patent judges. Like other “[o]fficers and employ-
`ees” of the USPTO, most administrative patent judges
`are “subject to the provisions of title 5, relating to Fed-
`eral employees.” 35 U.S.C. 3(c). Under those provi-
`sions, members of the civil service may be removed
`“only for such cause as will promote the efficiency of the
`service,” 5 U.S.C. 7513(a).1
`
`
`1 A small subset of administrative patent judges serve as mem-
`bers of the Senior Executive Service, see 83 Fed. Reg. 29,312, 29,324
`(June 22, 2018), and therefore are subject to removal “for miscon-
`duct, neglect of duty, malfeasance, or failure to accept a directed
`reassignment or to accompany a position in a transfer of function,”
`
`
`
`

`

`5
`
`2. The Board conducts several kinds of patent-
`related administrative adjudications, including appeals
`from adverse decisions of patent examiners on patent
`applications and in patent reexaminations; derivation
`proceedings; and inter partes and post-grant reviews.
`35 U.S.C. 6(b). The Board hears each appeal, derivation
`proceeding, inter partes review, and post-grant review
`in a panel of “at least 3 members * * * designated by
`the Director.” 35 U.S.C. 6(c). It “enters thousands of
`decisions every year.” Patent Trial and Appeal Board,
`Standard Operating Procedure 2 (Revision 10) at 3
`(Sept. 20, 2018) (SOP2), https://go.usa.gov/xwXem. Un-
`less designated as precedential, each decision is binding
`only “in the case in which it is made.” Ibid.
`The Patent Act establishes several mechanisms by
`which the Director can direct and supervise the Board
`and the administrative patent judges serving on it.
`35 U.S.C. 3(a)(2). For example, the Director may prom-
`ulgate (on behalf of the USPTO) regulations to “govern
`the conduct of proceedings” in the agency. 35 U.S.C.
`2(b)(2)(A). And he may issue policy directives to govern
`the Board’s implementation of various Patent Act pro-
`visions, including directives regarding the proper appli-
`cation of those statutory provisions to sample fact pat-
`terns. 35 U.S.C. 3(a)(2)(A); SOP2, at 1-2.
`The Director also has plenary authority to decide
`which Board members will hear each case. See 35 U.S.C.
`6(c). Exercising that authority, the Director has estab-
`
`
`5 U.S.C. 7543(a); see 5 C.F.R. Pt. 359. Neither the court of appeals
`nor any party has urged that these officials would have a different
`status for Appointments Clause purposes. See 19-1434 Arthrex
`Resp. 18 n.3; 19-1452 Pet. 3-4. In any event, none served on the
`panel that decided the Board proceeding at issue here.
`
`
`

`

`6
`
`lished default procedures for the assignment of admin-
`istrative patent judges to Board panels based on factors
`such as seniority, workload, and expertise; for their
`reassignment when necessary, for example, to avoid con-
`flicts of interests; and for the expansion of panels in spec-
`ified circumstances. See Patent Trial and Appeal Board,
`Standard Operating Procedure 1 (Revision 15) at 1-16
`(Sept. 20, 2018) (SOP1), https://go.usa.gov/xwX6N.2
`The Director may designate any decision by any
`Board panel as precedential and thus binding in future
`USPTO proceedings. “No decision may be designated
`as precedential without the Director’s approval.” SOP2,
`at 8. The Board’s current operating procedures estab-
`lish a process to designate a decision as precedential (or
`to de-designate a decision that had previously been
`made precedential). Id. at 8-12. Those procedures “do[ ]
`not limit the authority of the Director” to determine, “in
`his or her sole discretion,” whether a decision should be
`precedential. Id. at 1.
`The Director may also convene a Precedential Opin-
`ion Panel, consisting of at least three Board members
`whom the Director selects, to determine whether to re-
`hear a decision. SOP2, at 3-8; see 35 U.S.C. 6(c). Under
`current operating procedures, the Precedential Opinion
`Panel presumptively consists of the Director, the Com-
`missioner for Patents, and the Chief Administrative Pa-
`tent Judge; but the Director has reserved the authority
`
`
`2 Under those procedures, an expanded panel might be used, for
`example, “to secure and maintain uniformity of the Board’s deci-
`sions * * * in related cases ordinarily involving different three
`judge panels.” SOP1, at 15. Despite that authority and the Direc-
`tor’s plenary authority over panel composition more broadly, the Di-
`rector primarily relies on the other mechanisms outlined here to di-
`rect agency policy on patent rights. See, e.g., SOP1, at 15 n.4.
`
`
`

`

`7
`
`to alter the composition of the Precedential Opinion
`Panel at any time. SOP2, at 4.
`3. This case arises out of an inter partes review pro-
`ceeding conducted by the Board. Inter partes review
`allows third parties to “ask the [USPTO] to reexamine
`the claims in an already-issued patent and to cancel any
`claim that the agency finds to be unpatentable.” Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2136 (2016).
`Although the Patent Act imposes a host of requirements
`on a petition for an inter partes review, the Director’s
`decision whether to institute, refuse to institute, or de-
`institute particular reviews is “final and nonappeala-
`ble.” 35 U.S.C. 314(d); see 35 U.S.C. 314(a); Thryv, Inc.
`v. Click-to-Call Techs., LP, 140 S. Ct. 1367, 1373-1375
`(2020). By regulation, the Director has delegated to the
`Board his authority to determine whether particular
`inter partes reviews should be instituted. 37 C.F.R.
`42.4(a). The Director also may promulgate regulations
`for the conduct of such proceedings. 35 U.S.C. 316(a).
`When an inter partes review is instituted, the Board
`determines the patentability of the claims at issue
`through a proceeding that has “many of the usual trap-
`pings of litigation.” SAS Inst. Inc. v. Iancu, 138 S. Ct.
`1348, 1354 (2018); see 35 U.S.C. 316; 37 C.F.R. Pt. 42,
`Subpt. A. At the end of the proceeding (unless it has
`been de-instituted), the Board issues a final written de-
`cision addressing the patentability of the challenged
`claims. 35 U.S.C. 318(a). All such decisions are subject
`to rehearing by the Board. 35 U.S.C. 6(c).
`“A party dissatisfied with the final written decision
`of the Patent Trial and Appeal Board under [S]ection
`318(a) may appeal the decision” to the Federal Circuit.
`35 U.S.C. 319; see 35 U.S.C. 141(c), 144. The Director
`may intervene in any such appeal, 35 U.S.C. 143, and
`
`
`
`

`

`8
`
`frequently does so. The Board’s decision does not take
`effect until “the time for appeal has expired or any ap-
`peal has terminated.” 35 U.S.C. 318(b). At that point,
`“the Director shall issue and publish a certificate can-
`celing any claim of the patent finally determined to be
`unpatentable, confirming any claim of the patent deter-
`mined to be patentable, and incorporating in the patent
`by operation of the certificate any new or amended
`claim determined to be patentable.” Ibid.
`B. The Present Controversy
`In this case, the patent owner, Arthrex, Inc., ap-
`pealed a final written decision issued by the Board in an
`inter partes review proceeding, finding several claims
`of Arthrex’s patent anticipated by prior art. Pet. App.
`83a-129a. Arthrex argued that the administrative pa-
`tent judges who had served on the Board panel in that
`proceeding had been unconstitutionally appointed. Ar-
`threx contended that, under the Appointments Clause,
`administrative patent judges are principal officers of
`the United States and therefore must be appointed by
`the President with the advice and consent of the Senate,
`rather than appointed by the Secretary alone as the Pa-
`tent Act provides. The Federal Circuit agreed, vacated
`the Board’s final written decision, and remanded the
`case to be reheard by a different panel of the Board. Id.
`at 1a-33a.
`1. a. After excusing Arthrex’s failure to raise its
`Appointments Clause challenge during the administra-
`tive proceeding, Pet. App. 4a-6a, the Federal Circuit
`held that administrative patent judges are principal ra-
`ther than inferior officers, id. at 6a-22a. The court rec-
`ognized that, under Edmond v. United States, 520 U.S.
`651 (1997), inferior officers are “officers whose work is
`directed and supervised at some level by others who
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`9
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`were appointed by Presidential nomination with the ad-
`vice and consent of the Senate.” Pet. App. 9a (quoting
`Edmond, 520 U.S. at 663). It distilled from Edmond
`three non-exclusive factors for determining whether a
`sufficient degree of direction and supervision exists:
`“(1) whether an appointed official has the power to re-
`view and reverse the officers’ decision; (2) the level of
`supervision and oversight an appointed official has over
`the officers; and (3) the appointed official’s power to re-
`move the officers.” Ibid.
`The court of appeals concluded that the first of those
`factors (review authority) suggested that administra-
`tive patent judges are principal officers, because “[n]o
`presidentially-appointed officer has independent statu-
`tory authority to review a final written decision by the
`[administrative patent  judges] before the decision is-
`sues on behalf of the United States.” Pet. App. 9a-10a;
`see id. at 9a-14a. The court observed that a minimum
`of three Board members must decide each inter partes
`review, and that “[t]he Director is the only member of
`the Board who is nominated by the President and con-
`firmed by the Senate.” Id. at 10a. The court stated that
`“[t]here is no provision or procedure providing the Di-
`rector the power to single-handedly review, nullify or
`reverse a final written decision issued by a panel of [the
`Board].” Ibid.
`In contrast, the court of appeals viewed the second
`factor (supervisory authority) as “weigh[ing] in favor of
`a conclusion that [administrative patent judges] are in-
`ferior officers.” Pet. App. 15a; see id. at 14a-15a. The
`court explained that the Director is empowered to “pro-
`vide instructions that include exemplary applications of
`patent laws to fact patterns”; has authority to “desig-
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`10
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`nate[ ] or de-designate[ ]” panel decisions as “preceden-
`tial decisions of the Board [that] are binding on future
`panels”; and may designate which judges will decide each
`inter partes review. Id. at 14a-15a (citing 35 U.S.C.
`3(a)(2)(A), 6(c), and 316).
`Finally, the court of appeals held that the third fac-
`tor (removal authority) weighed in favor of viewing ad-
`ministrative patent judges as principal officers, because
`neither the Secretary nor the Director has “unfettered”
`authority to remove those judges from federal service.
`Pet. App. 15a; see id. at 15a-21a. The court concluded
`that the Secretary’s power to remove administrative pa-
`tent judges from federal service for “such cause as will
`promote the efficiency of the service,” 5 U.S.C. 7513(a),
`was insufficient because they cannot be “remov[ed]
`without cause.” Pet. App. 21a; see id. at 17a-21a & nn.4-
`5. It similarly concluded that, for Appointments Clause
`purposes, the Director’s “authority to assign certain
`[ judges] to certain panels” is “not the same as the
`authority to remove an [administrative patent judge]
`from judicial service without cause.” Id. at 17a; see id.
`at 16a-17a.
`Finding no other factors indicating that administra-
`tive patent judges are inferior officers, the court of
`appeals briefly turned to history. The court observed
`that, “prior to [a] 1975 amendment,” administrative pa-
`tent judges’ predecessors—examiners-in-chief—were
`nominated by the President and confirmed by the Sen-
`ate. Pet. App. 21a. The court concluded that today’s
`administrative patent judges “wield significantly more
`authority than their Examiner-in-Chief predecessors,”
`but the “protections ensuring accountability to the
`President for th[eir] decisions on behalf of the Execu-
`tive” have been reduced. Ibid.
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`11
`
`In light of these considerations, the court of appeals
`concluded that administrative patent judges “are prin-
`cipal officers” who must “be appointed by the President
`and confirmed by the Senate,” and that “the current
`structure of the Board violates the Appointments
`Clause.” Pet. App. 22a; see id. at 21a-22a.
`b. The court of appeals held that it could cure the
`Appointments Clause violation going forward by
`“sever[ing] the application of Title 5’s [efficiency-of-the-
`service] removal restrictions” to administrative patent
`judges. Pet. App. 27a; see id. at 22a-29a. The court con-
`cluded that making administrative patent judges re-
`movable at will by the Secretary would “render[ ] them
`inferior rather than principal officers,” and that sever-
`ance of the Title 5 restrictions on removal is the “nar-
`rowest viable approach to remedying the [constitu-
`tional] violation.” Id. at 26a, 28a.
`Based on its conclusion that “the Board’s decision in
`this case was made by a panel of [administrative patent
` judges] that were not constitutionally appointed at the
`time the decision was rendered,” the court of appeals
`“vacate[d] and remand[ed] the Board’s decision.” Pet.
`App. 29a. The court stated that vacatur and remand
`would also be appropriate in all other inter partes review
`cases “where final written decisions were issued and
`where litigants present an Appointments Clause chal-
`lenge on appeal.” Id. at 33a. The court ordered that on
`remand, “a new panel of [administrative patent judges]
`must be designated and a new hearing granted.” Ibid.
`2. The court of appeals subsequently denied the pe-
`titions for rehearing en banc filed by all three parties to
`the appeal. Pet. App. 229a-231a; id. at 296a-297a. The
`court issued five separate opinions, joined by a total of
`
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`12
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`eight judges, concurring in or dissenting from the court’s
`order. Id. at 232a-295a.
`Judge Moore, joined by Judges O’Malley, Reyna,
`and Chen, concurred in the denial of rehearing en banc.
`They defended the Arthrex panel’s decision and disa-
`greed with the alternative remedial solutions offered in
`Judge Dyk’s dissent from the court’s