No. 19-1434
`
`IN THE
`
`Supreme Court of the United States
`
`
`
`UNITED STATES OF AMERICA,
`Petitioner,
`
`v.
`
`ARTHREX, INC., et al.
`
`Respondents.
`
`
`
`On Writ of Certitori to the United States
`Court of Appeals for the Federal Circuit
`
`BRIEF OF
`JASON V. MORGAN AS AMICUS CURIAE
`IN SUPPORT OF PETITIONER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JASON V. MORGAN
` Amicus and Counsel of Record
`2630 Skidmore Cir
`Vienna, VA 22180
`jvmorgan@gmail.com
`443-538-4338
`
`
`
`

`

`

`

`
`
`
`
`TABLE OF CONTENTS
`
`Table of Authorities .................................................... ii
`
`Interest of the Amicus Curiae .................................... 1
`
`Summary of Argument ............................................... 2
`
`Argument .................................................................... 5
`
`Removal protections for APJs do not improperly
`
`insulate APJs from Presidential control ................ 5
`
`The Director is the principal officer with final
`
`authority to act or refuse to act on PTAB decisions
`
`................................................................................ 12
`
`The Director can shape each APJ’s role on the
`
`PTAB to determine what judicial duties, if any,
`
`each APJ is authorized to fulfill ........................... 16
`
`Removal protections promote confidence that APJs
`
`are applying the law faithfully and rendering
`
`impartial, fact-based decisions ............................. 19
`
`Legislative and executive action, not judicial
`
`intervention, should shape any remedies needed to
`
`address Constitutional deficiencies to the extent
`
`practicable ............................................................. 23
`
`Conclusion ................................................................. 25
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
`
`(Fed. Cir. 2019), cert. granted sub nom., United
`
`States v. Arthrex, Inc., 592 U.S. ___ (Oct. 13, 2020)
`
`(No. 19-1434) .................................................. passim
`
`Edmond v. United States, 520 U.S. 651 (1997) .. 6, 15,
`
`16, 17
`
`Ex parte Hennen, 38 U.S. (13 Pet.) 230 (1839) .......... 6
`
`Free Enterprise Fund v. Public Company Accounting
`
`Oversight Bd., 561 U.S. 477 (2010) ............... passim
`
`Hamilton v. United States Postal Service, 123
`
`M.S.P.R. 404 (MSPB 2016) ................................... 24
`
`Humphrey’s Executor v. United States, 295 U.S. 602
`
`(1935)) .................................................................... 10
`
`In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) 13, 14, 22
`
`In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) 15, 22
`
`In re Boloro Global Ltd., 963 F.3d 1380 (Fed. Cir.
`
`July 7, 2020) .......................................................... 18
`
`Intercollegiate Broad. Sys. v. Copyright Royalty Bd.,
`
`684 F.3d 1332 (D.C. Cir. 2012) ...................... passim
`
`Kalaris v. Donovan, 697 F.2d 376 (D.C. Cir.1983) .... 7
`
`Morrison v. Olson, 487 U.S. 654, 693 (1988) ........... 10
`
`Oil States Energy Services, LLC v. Greene’s Energy
`
`Grp., LLC, 584 U.S. ___ (2018) ............................. 17
`
`Polaris Innovations Ltd. v. Kingston Tech. Co., No.
`
`2018-1831, slip op. 11–12 (Fed. Cir. Jan. 31, 2020) 6
`
`ii
`
`

`

`Railroad Retirement Bd. v. Alton R. Co., 295 U.S. 330
`
`(1935) ..................................................................... 24
`
`Constitutional Provisions
`
`U.S. Const. art. II........................................................ 7
`
`U.S. Const. art. II, § 2, cl. 2 (Appointments Clause)
`
`......................................................................... passim
`
`U.S. Const. art. III ........................................ 13, 14, 15
`
`Statutes
`
`10 U.S.C. § 837 .......................................................... 17
`
`15 U.S.C. § 1501 .......................................................... 8
`
`15 U.S.C. §§ 7213–15 (2006 ed. and Supp. II) ......... 20
`
`17 U.S.C. § 701 .......................................................... 21
`
`17 U.S.C. § 802 .......................................................... 21
`
`2 U.S.C. § 136 .............................................................. 7
`
`35 U.S.C. § 131 .......................................................... 20
`
`35 U.S.C. § 134 .......................................................... 20
`
`35 U.S.C. § 141 .......................................................... 17
`
`35 U.S.C. § 153 .............................................. 15, 19, 22
`
`35 U.S.C. § 3 .............................................. 8, 18, 23, 24
`
`35 U.S.C. § 314 .......................................................... 19
`
`35 U.S.C. § 318 .............................................. 13, 17, 22
`
`35 U.S.C. § 319 .......................................................... 17
`
`35 U.S.C. § 321 .......................................................... 19
`
`35 U.S.C. § 6 .................................................. 14, 16, 17
`
`5 U.S.C. § 7513 ......................................................... 18
`
`Act of Feb. 19, 1897, ch. 265, 29 Stat. 538 ................. 8
`
`iii
`
`

`

`Librarian of Congress Succession Modernization Act
`
`of 2015, Pub. L. 114-86, 129 Stat. 675 (Nov. 5,
`
`2015) ........................................................................ 8
`
`Title 5 ................................................................ 2, 5, 23
`
`Executive Orders
`
`Principles of Ethical Conduct for Government
`
`Officers and Employees, Exec. Order No. 12,731,
`
`55 Fed. Reg. 42,547 (Oct. 19, 1990) ........................ 2
`
`Regulations
`
`37 C.F.R. § 42.51 ....................................................... 17
`
`37 C.F.R. § 42.62 ....................................................... 17
`
`37 C.F.R. § 42.70 ....................................................... 17
`
`Briefs
`
`Brief for Federal Respondents in Opposition, No. 12-
`
`928 (Apr. 26, 2013) .................................................. 7
`
`Brief for Intercollegiate Broadcasting System as
`
`Petitioner, No. 12-928 (Jan. 25, 2013) ................ 7, 8
`
`Brief for John Duffy and Daniel R. Ortiz as Amicus
`
`Curiae in No. 12-928 (Feb. 25, 2013) .............. 6, 7, 8
`
`Brief for New York Intellectual Property Association
`
`as Amicus Curiae in Support of the United States’
`
`Petition for Writ of Certiorari (July 29, 2020) ....... 6
`
`Brief for Smith & Nephew, Inc., and Arthrocare
`
`Corp. as Respondents (July 23, 2020) .................. 18
`
`Brief for the United States (Nov. 25, 2020) ....... 20, 22
`
`Brief for the United States as Petitioner (June 25,
`
`2020 ........................................................................ 16
`
`iv
`
`

`

`Brief of Askeladden L.L.C. as Amicus Curiae in
`
`Support of Petitioner (July 29, 2020) ................... 23
`
`Opening Brief for Smith & Nephew, Inc. and
`
`Arthrocare Corp. (Nov. 25, 2020) .................. 1, 6, 13
`
`Other Authorities
`
`2019 Revised Patent Subject Matter Eligibility
`
`Guidance, 84 Fed. 50 (Jan. 7, 2019) ..................... 22
`
`29 Cong. Rec. 378 (1896) ............................................ 6
`
`Library of Congress, Jefferson’s Legacy: A Brief
`
`History of the Library of Congress, Librarians of
`
`Congress, http://www.loc.gov/loc/legacy/librs.html
`
`(Mar. 30, 2006) ........................................................ 6
`
`Library of Congress, Previous Librarians of Congress,
`
`https://www.loc.gov/about/about-the-librarian/
`
`previous-librarians-of-congress/ (last visited Nov.
`
`29, 2020) .................................................................. 9
`
`Manual of Patent Examination Procedure (9th ed.,
`
`rev. 10.2019) .......................................................... 14
`
`Standard Operating Procedure 2 (Revision 10),
`
`available at https://go.usa.gov/xwXem (Sept. 20,
`
`2018) ...................................................................... 22
`
`THE FEDERALIST NO. 10 (James Madison) ............... 21
`
`THE FEDERALIST NO. 78 (Alexander Hamilton) ....... 15
`
`THE FEDERALIST NO. 79 (Alexander Hamilton) ....... 19
`
`The Patent Trial and Appeal Board and the
`
`Appointments Clause: Implications of Recent Court
`
`Decisions Before the H. Comm. on the Judiciary,
`
`116th Cong., available at https://judiciary.house.
`
`v
`
`

`

`gov/calendar/eventsingle.aspx?EventID=2249
`
`(Nov. 19, 2019) ....................................................... 23
`
`U.S. Dept. of Commerce, Secretaries of Commerce,
`
`https://www.commerce.gov/about/history/past-
`
`secretaries (last visited Nov. 29, 2020)................... 8
`
`USPTO, Past leaders of the USPTO, https://www.
`
`uspto.gov/about-us/past-uspto-leaders (last
`
`modified Feb. 26, 2019) ........................................... 8
`
`vi
`
`

`

`INTEREST OF THE AMICUS CURIAE
`Amicus curiae1 (“Amicus”), a graduate from the
`
`University of Utah and the George Washington Uni-
`
`versity Law School, has been involved in government
`
`service, either as a civil servant or as a government
`
`contractor, in the Washington, D.C., metropolitan
`
`area since 2002. He currently serves as an Adminis-
`
`trative Patent Judge (“APJ”) on the Patent Trial and
`
`Appeal Board (“PTAB”) at the United States Patent
`
`and Trademark Office (“USPTO”). He also is actively
`
`involved in service in organizations such as The Paul-
`
`ine Newman IP American Inn of Court and the Amer-
`
`ican Association of Patent Judges. But Amicus
`
`submits this brief in his personal, individual capacity
`
`to address matters of public concern. The opinions ex-
`
`pressed herein are his own and do not represent the
`
`views of the United States government or any other
`
`person or organization. No government time or re-
`
`sources were used in the preparation of this brief.
`
`The Appointments Clause issues presented in
`
`this case have far-reaching implications because they
`
`call “into question the appointments of hundreds of
`
`agency adjudicators across the Executive Branch.”
`
`Opening Brief for Smith & Nephew, Inc. and
`
`
`1 No counsel for any party authored this brief in whole or in
`part, nor did such counsel or party make a monetary contribu-
`tion intended to fund the preparation or submission of the brief.
`No one other than the amicus curiae made a monetary contribu-
`tion to the preparation or submission of this brief.
`
`1
`
`

`

`Arthrocare Corp. 20 (Nov. 25, 2020). Improperly
`
`applying the Appointments Clause could undermine
`
`public confidence in the ability of such adjudicators,
`
`not just APJs, to carry out their duties faithfully and
`
`impartially.
`
`Amicus believes that it is important to resolve
`
`the pending Appointments Clause issues in a manner
`
`that helps “ensure that every citizen can have com-
`
`plete confidence in the integrity of the Federal Gov-
`
`ernment.” Principles of Ethical Conduct
`
`for
`
`Government Officers and Employees, Exec. Order No.
`
`12,731, 55 Fed. Reg. 42,547 (Oct. 19, 1990). In
`
`particular, Amicus believes that this aspiration is
`
`undermined by the Federal Circuit’s holding “that the
`
`application of Title 5’s removal protections to APJs is
`
`unconstitutional.” Arthrex, Inc. v. Smith & Nephew,
`
`Inc., 941 F.3d 1320, 1338 (Fed. Cir. 2019), cert.
`
`granted sub nom., United States v. Arthrex, Inc., 592
`
`U.S. ___ (Oct. 13, 2020) (No. 19-1434).
`
`Because Amicus has an interest in contributing
`
`to an effective and sensible resolution of the pending
`
`Appointments Clause issues, Amicus has an interest
`
`in these proceedings.
`
`SUMMARY OF ARGUMENT
`Contrary to the Federal Circuit’s reasoning in
`
`Arthrex, APJs are not unconstitutionally insulated
`
`from Presidential control. The pertinent cases where
`
`2
`
`

`

`removal protection of officers were found unconstitu-
`
`tional involved officers who impermissibly benefited
`
`from (or were perceived as benefiting from) multiple
`
`layers of protection. The role of impermissible multi-
`
`layer protections was explicit in Free Enterprise Fund
`
`v. Public Company Accounting Oversight Bd., 561 U.S.
`
`477 (2010), where members of the Public Company Ac-
`
`counting Oversight Board (“PCAOB”) had removal
`
`protections and were overseen by Commissioners of
`
`the Securities and Exchange Commission who also
`
`had removal protections. But impermissible multi-
`
`layer protections were also an underlying, if underde-
`
`veloped, issue in Intercollegiate Broad. Sys. v. Copy-
`
`right Royalty Bd., 684 F.3d 1332 (D.C. Cir. 2012),
`
`because the Copyright Royalty Judge (“CRJ”) mem-
`
`bers of the Copyright Royalty Board are overseen by
`
`the Librarian of Congress, who at the time was per-
`
`ceived as having a lifetime appointment.
`
`The Federal Circuit’s decision in Arthrex did
`
`not take into consideration that the clear, at-will em-
`
`ployment of the Secretary of Commerce and the Direc-
`
`tor of the USPTO distinguishes the APJs from
`
`members of the PCAOB and the CRJs because APJs
`
`only benefit from a single-layer of removal protection.
`
`The Federal Circuit also did not fully appreci-
`
`ate that the Director, a principal officer of the United
`
`States, has final authority to act or refuse to act on
`
`PTAB decision. That is, the PTAB’s decisions are
`
`3
`
`

`

`insufficient to compel the Director to issue patent,
`
`withhold issuance of patents, or cancel claims of is-
`
`sued patents. Thus, the Director, not the PTAB, has
`
`the final authority to act. The Federal Circuit con-
`
`flated the normal course of events (i.e., the Director
`
`carries out the decisions of the PTAB) with the statu-
`
`tory mandates that give the Director more than mere
`
`ministerial powers.
`
`Furthermore, the Federal Circuit gave too little
`
`credence to the Director’s authority to shape the du-
`
`ties each APJ has in providing service on the PTAB.
`
`Rather than ascertaining whether the Director has
`
`sufficient authority to ensure that APJs are inferior
`
`rather than principal officers, the Federal Circuit set
`
`an arbitrarily high threshold of authority based on
`
`possible powers the Director could be granted.
`
`The Federal Circuit’s focus on ensuring that the
`
`Secretary and Director have unfettered removal au-
`
`thority undervalues the important role that removal
`
`protections have in strengthening public confidence
`
`that decisions of the PTAB accord with the law and
`
`are grounded in impartial fact-finding. Specifically,
`
`these rights promote transparency in any efforts the
`
`Secretary and the Director take to exercise control
`
`over PTAB decision-making. The PTAB is unlike the
`
`PCAOB and the Copyright Royalty Board because the
`
`PTAB inherently plays a role in ascertaining whether
`
`the Director has, in some manner, erred (e.g., through
`
`4
`
`

`

`the allowance of invalid claims or through the failure
`
`to demonstrate that an applicant is not entitled to a
`
`patent). Removal protections help ensure that the
`
`public can have full confidence that the decisions of
`
`the PTAB reflect the proper application of law and
`
`facts, not the will of the Director.
`
`Finally, the Federal Circuit’s remedy, revoking
`
`APJs of removal protections, may have been more
`
`than was necessary to cure the purported Constitu-
`
`tional deficiency in the framework of the PTAB. There
`
`would be clear benefits to ensuring that the Secretary
`
`and Director have discretion to continue recognizing
`
`APJ removal protections, even if the Constitution pro-
`
`scribes requiring that the Secretary and Director re-
`
`spect such protections. Therefore, if this Court agrees
`
`with the Federal Circuit that there is a Constitutional
`
`deficiency that must be remedied, the Court should
`
`seek to further limit the scope of judicial intervention
`
`to the fullest extent practicable.
`
`ARGUMENT
`REMOVAL PROTECTIONS FOR APJS DO NOT
`IMPROPERLY INSULATE APJS FROM PRESIDENTIAL
`CONTROL
`
`In concluding that APJ are principal officers,
`
`the Court of Appeals for the Federal Circuit found it
`
`significant that the “only actual removal authority the
`
`Director or Secretary have over APJs is subject to lim-
`
`itations by Title 5.” Arthrex, 941 F.3d at 1333. The
`
`5
`
`

`

`Federal Circuit cited multiple decisions extolling the
`
`power that unfettered removal authority has for con-
`
`trolling officers. Id. at 1332–34 (citing, e.g., Edmond
`
`v. United States, 520 U.S. 651 (1997); Free Enterprise
`
`Fund, 561 U.S. 477. But “the sole authority [explicitly]
`
`relied upon by the Arthrex panel to support its conclu-
`
`sion that APJs are principal officers” was “a decision
`
`by a three-judge panel of the D.C. Circuit, holding that
`
`Copyright Royalty Judges are principal officers.” Brief
`
`for New York Intellectual Property Association as
`
`Amicus Curiae in Support of the United States’ Peti-
`
`tion for Writ of Certiorari 8 (July 29, 2020) (citing In-
`
`tercollegiate, 684 F.3d at 1340).
`
`APJs are not analogous to the CRJs of Intercol-
`
`legiate for the reasons discussed in the Opening Brief
`
`for Smith & Nephew, Inc. and Arthrocare Corp. 38–40
`
`and in Polaris Innovations Ltd. v. Kingston Tech. Co.,
`
`No. 2018-1831, slip op. 11–12 (Fed. Cir. Jan. 31, 2020)
`
`(non-precedential) (Hughes, J., concurring). Moreo-
`
`ver, Intercollegiate addressed Appointments Clause
`
`deficiencies stemming from CRJ appointment by the
`
`Librarian of Congress, a Legislative Branch position
`
`that had become a de facto lifetime appointment2 to a
`
`
`2 Brief for John Duffy and Daniel R. Ortiz as Amicus Curiae in
`No. 12-928, pp. 3, 15 (Feb. 25, 2013 (citing Library of Congress,
`Jefferson’s Legacy: A Brief History of the Library of Congress,
`Librarians of Congress, http://www.loc.gov/loc/legacy/librs.html
`(Mar. 30, 2006); 29 Cong. Rec. 378 (1896)); but see Intercolle-
`giate, 684 F.3d at 1341 (citing Ex parte Hennen, 38 U.S. (13
`Pet.) 230, 259 (1839); Kalaris v. Donovan, 697 F.2d 376, 389
`
`6
`
`

`

`public servant who arguably was “far more likely to
`
`pay attention to the views of members of Congress”
`
`than to the President3.
`
`Although the D.C. Circuit panel did not con-
`
`sider the de facto (if not de jure) independence of the
`
`Librarian of Congress from the President in reaching
`
`a decision in Intercollegiate, such independence made
`
`the structure of the Copyright Royalty Board on which
`
`CRJs sit problematic under the Appointments Clause
`
`in a manner that is inapplicable to the structure of the
`
`PTAB.
`
`Specifically, removal protections that restrict a
`
`principal officer’s ability to remove an inferior officer
`
`are problematic when the “President [is also] re-
`
`stricted in his ability to remove [the] principal officer.”
`
`Free Enterprise Fund, 561 U.S. at 484. Such “multi-
`
`level protection from removal is contrary to Article II’s
`
`vesting of the executive power in the President.” Id.
`
`
`(D.C. Cir.1983)) (“the Librarian is appointed by the President
`with advice and consent of the Senate, 2 U.S.C. § 136, and is
`subject to unrestricted removal by the President”); Brief for
`Federal Respondents in Opposition, No. 12-928, pp. 16–17 (Apr.
`26, 2013) (citing, e.g., Brief for Intercollegiate Broadcasting Sys-
`tem as Petitioner, No. 12-928, pp. 28–29 (Jan. 25, 2013)) (argu-
`ing that the President has the authority to remove the
`Librarian of Congress and noting that Presidents Jackson and
`Lincoln had exercised such authority).
`3 Brief for Intercollegiate Broadcasting System as Petitioner,
`No. 12-928, p. 29.
`
`7
`
`

`

`At the time Intercollegiate was decided, no Li-
`
`brarian of Congress had been removed since at least
`
`1897.4 The Librarian of Congress at the time had, in
`
`fact, served for about 25 years. Brief for John Duffy
`
`and Daniel R. Ortiz as Amicus Curiae in No. 12-928,
`
`pp. 3, 12. Thus, the ability of the President to remove
`
`a Librarian of Congress, with or without cause, had
`
`gone untested for an inordinate amount of time.
`
`In contrast, the Secretary and Director, are not
`
`only both removable at will by the President5, but they
`
`also have historically been subject to significantly
`
`greater turnover than the Librarian of Congress6.
`
`
`4 Brief for John Duffy and Daniel R. Ortiz as Amicus Curiae in
`No. 12-928, pp. 3, 12; see also Act of Feb. 19, 1897, ch. 265, 29
`Stat. 538, 544 (establishing that the Librarian of Congress
`would “be appointed by the President, by and with the advice
`and consent of the Senate”). The Librarian of Congress is now
`“appointed for a [renewable] term of 10 years.” Librarian of
`Congress Succession Modernization Act of 2015, Pub. L. 114-86,
`129 Stat. 675 (Nov. 5, 2015). Although a fixed tenure defeats
`the presumption that the Librarian of Congress holds a lifetime
`appointment, the long tenure also suggests that the Librarian
`of Congress does not serve at the pleasure of the President.
`5 Brief for Intercollegiate Broadcasting System as Petitioner,
`No. 12-928, p. 4 (citing 35 U.S.C. § 3(a)(1)); 15 U.S.C. § 1501.
`6 The average tenure since 1802 has been less than four years,
`with only William Thornton (1802–28), Henry L. Ellsworth
`(1835–45), Thomas E. Robertson (1921–33), and Conway P. Coe
`(1933–45) having served approximately ten years or more.
`USPTO, Past leaders of the USPTO, https://www.uspto.gov/
`about-us/past-uspto-leaders (last modified Feb. 26, 2019). The
`average tenure of Secretaries of Commerce or Secretaries of
`Commerce and Labor have been a little more than two-and-a-
`half years. U.S. Dept. of Commerce, Secretaries of Commerce,
`https://www.commerce.gov/about/history/past-secretaries (last
`
`8
`
`

`

`Moreover, the Secretary and Director, being situated
`
`unambiguously in the Executive Branch (and not, at
`
`least facially, in the Legislative Branch) are more
`
`likely than the Librarian of Congress to be perceived
`
`as directly accountable to the President rather than to
`
`Congress.
`
`This dynamic means that APJs—who are ap-
`
`pointed by the Secretary and serve under the Direc-
`
`tor—are not improperly insulated from Presidential
`
`control. APJs who fail to execute their duties faith-
`
`fully can reasonably expect to be held accountable by
`
`the Secretary and Director, who themselves serve at
`
`the pleasure of the President.
`
`The at-will employment of the Secretary and
`
`Director, and its impact on the propriety of APJs being
`
`granted removal protections, is particularly clear
`
`when the PTAB framework is compared with the
`
`framework for the PCAOB, which was dispositive in
`
`Free Enterprise Fund. There, members of the PCAOB
`
`could not be removed by the Securities and Exchange
`
`Commission without a showing of good cause. 561
`
`U.S. at 486. But the parties agreed that the Commis-
`
`sioners overseeing the PCAOB also enjoyed removal
`
`protection and the case was decided “with that
`
`
`visited Nov. 29, 2020). In contrast, the average tenure of Librar-
`ians of Congress when Intercollegiate was decided was nearly
`16 years. Library of Congress, Previous Librarians of Congress,
`https://www.loc.gov/about/about-the-librarian/previous-librari-
`ans-of-congress/ (last visited Nov. 29, 2020).
`
`9
`
`

`

`understanding.” Id. at 487 (citing, e.g., Humphrey’s
`
`Executor v. United States, 295 U.S. 602, 620 (1935));
`
`but see Free Enterprise Fund, 561 U.S. at 545 (Breyer,
`
`J., dissenting) (asserting that the Court simply as-
`
`sumed “without deciding that the SEC Commissioners
`
`themselves [were] removable only ‘for cause’”). It was
`
`because of this “multilevel protection”—officers with
`
`removal protections being accountable solely to offic-
`
`ers who also enjoyed removal protections—that the
`
`Court concluded the PCAOB framework impermissi-
`
`bly interfered with the executive power of the Presi-
`
`dent:
`
`The President cannot “take Care that the Laws
`be faithfully executed” if he cannot oversee the
`faithfulness of the officers who execute them.
`Here the President cannot remove an officer
`who enjoys more than one level of good-cause
`protection, even if the President determines
`that the officer is neglecting his duties or dis-
`charging them improperly. That judgment is in-
`stead committed to another officer, who may or
`may not agree with the President’s determina-
`tion, and whom the President cannot remove
`simply because that officer disagrees with him.
`This contravenes the President’s “constitu-
`tional obligation to ensure the faithful execu-
`tion of the laws.”
`
`Free Enterprise Fund, 561 U.S. at 484 (quoting
`
`Morrison v. Olson, 487 U.S. 654 (1988)).
`
`10
`
`

`

`Although the specifics differ, the collective su-
`
`pervisory role the Secretary and Director hold with re-
`
`spect to APJs on the PTAB is at least superficially
`
`analogous to the collective supervisory role Commis-
`
`sioners of the Securities and Exchange Commission
`
`hold with respect to members of the PCAOB. But un-
`
`like the Commissioners, the Secretary and Director do
`
`not have removal protections.
`
`If the President determines that an APJ is ne-
`
`glecting his or her duties or discharging them improp-
`
`erly, and the Secretary and Director disagree, the
`
`President can at least remove the Secretary and Di-
`
`rector. Compare with id. Because of this critical differ-
`
`ence, APJs as officers of the United States do not
`
`benefit from unconstitutional multilevel removal pro-
`
`tection. Id.
`
`The Federal Circuit focused solely on whether
`
`the removal authority the Secretary and Director
`
`have with respect to APJs is unfettered without con-
`
`sidering what removal authorities (both as a matter of
`
`law and a matter of practice) the President has with
`
`respect to the Secretary and Director. Arthrex, 941
`
`F.3d at 1332–34. Therefore, the Federal Circuit erro-
`
`neously concluded that the removal protections en-
`
`joyed by APJs weigh in favor of APJs being principal
`
`rather than inferior officers. Id. at 1335.
`
`11
`
`

`

`THE DIRECTOR IS THE PRINCIPAL OFFICER WITH
`FINAL AUTHORITY TO ACT OR REFUSE TO ACT ON
`PTAB DECISIONS
`
`In concluding that APJs are principal officers,
`
`the Federal Circuit also found that there was no “pres-
`
`identially-appointed officer who can review, vacate, or
`
`correct decisions by the APJs.” Arthrex 941 F.3d at
`
`1335. In particular, the Federal Circuit found that
`
`“[p]anels of APJs issue final decisions on behalf of the
`
`USPTO, at times revoking patent rights, without any
`
`principal officers having the right to review those de-
`
`cisions.” Id. at 1331. But the Federal Circuit failed to
`
`identify any final decision-making authorities that
`
`APJs hold that are not subject to final control by the
`
`Director, a principal officer.
`
`The Federal Circuit, finding that “the Board
`
`has issued over 500 inter partes review final written
`
`decisions each year,” reasoned that the “relevant
`
`question is to what extent those decisions are subject
`
`to the Director’s review.” Id. at 1330 (emphasis
`
`added). But the Federal Circuit failed to recognize
`
`how critical it is that those final written inter partes
`
`review decisions are not self-executing. Rather, the
`
`Director must ultimately act for such decisions to take
`
`effect:
`
`If the Patent Trial and Appeal Board issues a
`final written decision . . . and the time for ap-
`peal has expired or any appeal has terminated,
`the Director shall
`issue and publish a
`
`12
`
`

`

`certificate canceling any claim of the patent fi-
`nally determined to be unpatentable, confirm-
`ing any claim of the patent determined to be
`patentable, and incorporating in the patent by
`operation of the certificate any new or amended
`claim determined to be patentable.
`
`35 U.S.C. § 318(b).
`
`The Federal Circuit correctly noted that in the
`
`typical case, “[o]nce the time for appeal of the decision
`
`expires or any appeal has been terminated, the Direc-
`
`tor issues and publishes a certificate canceling any
`
`claim of the patent finally determined to be unpatent-
`
`able.” Arthrex, 941 F.3d at 1326 (citing 35 U.S.C.
`
`§ 318(b)). But the Federal Circuit did not acknowledge
`
`that the Director is not subordinate to the PTAB—
`
`that issuing and publishing such a certificate is more
`
`than a ministerial act. See Opening Brief for Smith &
`
`Nephew, Inc. and Arthrocare Corp. 28 (“the final
`
`action in an IPR proceeding—the cancellation or
`
`confirmation of the patent claims—is by statute
`
`committed solely to the Director”). If the Director re-
`
`fuses to issue and publish a certificate, the PTAB has
`
`no authority to compel the Director to do so. Cf. In re
`
`Alappat, 33 F.3d 1526, 1535 (Fed. Cir. 1994) (“[o]nly a
`
`court can order the Commissioner [of Patents] to act,
`
`not the Board”).
`
`The power of the Director to acede to or reject
`
`decisions of the PTAB, unless compelled by an Article
`
`III court, creates the exact opposite situation that was
`
`13
`
`

`

`in place in Intercollegiate: “CRJs’ rate determinations
`
`[were] not reversible or correctable by any other
`
`officer or entity within the executive branch” and the
`
`CRJs issued “decisions that [were] final for the
`
`executive branch, subject to reversal or change only
`
`when challenged in an Article III court.” 684 F.3d at
`
`1340. That is, the decision-making authority held by
`
`CRJs was self-executing, unlike the decision-making
`
`authority held by APJs, which requires execution by
`
`the Director and thus is subject to reversal or change
`
`(by the Director) without having to be challenged in
`
`an Article III court.
`
`To be sure, it would be unusual for the Director
`
`to refuse to carry out the final action after inter partes
`
`review proceedings are complete. But it is not
`
`unprecedented for decisions of the PTAB or its
`
`predecessors to be made ineffectual.
`
`For example, in ex parte proceedings during
`
`patent prosecution, if the Director disagrees with a
`
`PTAB decision favorable to a patent applicant, the
`
`Director can designate an expanded panel “to consider
`
`a request for reconsideration of a decision rendered by
`
`[the] original panel.” Alappat, 33 F.3d at 1532; 35
`
`U.S.C. § 6(a); see also Manual of Patent Examination
`
`Procedure (9th ed., rev. 10.2019) § 1214.04 (June
`
`2020) (detailing the procedure by which “[t]he
`
`examiner may request rehearing of the Board
`
`14
`
`

`

`decision”).7 Or if the Director disagrees with a PTAB
`
`decision adverse to a patent applicant, the Director
`
`may agree with the patent applicant’s position and,
`
`having conceded, extinguish any case or controversy
`
`with the patent applicant. In re Beauregard, 53 F.3d
`
`1583, 1584 (Fed. Cir. 1995). Regardless the dispute,
`
`the PTAB cannot compel the Director—the pricipal
`
`officer with final authority to act or refuse to act—to
`
`issue a patent or withold his signature. 35 U.S.C.
`
`§ 153.
`
`Because the PTAB alone cannot act, but must
`
`rely on the Director to exercise his authority, the
`
`finality and authority of PTAB decision-making is a
`
`fiction, albeit a useful one. Although situated in the
`
`Executive Branch, APJs, like their Article III judicial
`
`colleagues, “may truly be said to have neither FORCE
`
`nor WILL, but merely judgment.” THE FEDERALIST
`
`NO. 78 (Alexander Hamilton). That is, similar to their
`
`Article III colleagues, who “must ultimately depend
`
`upon the aid of the executive arm even for the efficacy
`
`of its judgments,” id., APJs ultimately depend upon
`
`the aid of the Director—the principal officer with final
`
`
`7 The Director’s authority to call for a rehearing on a new,
`expanded panel is even greater than the authority, discussed in
`Edmond, of the Judge Advocate General to order review of
`Court of Criminal Appeals decisions by the Court of Appeals for
`the Armed Forced because the Director does not have to order
`review of decisions by “another Executive Branch entity.”
`Edmond, 520 U.S. at 664.
`
`15
`
`

`

`authority to act or refuse to act—to give efficacy to the
`
`decisions of the PTAB.
`
`THE DIRECTOR CAN SHAPE EACH APJ’S ROLE ON THE
`PTAB TO DETERMINE WHAT JUDICIAL DUTIES, IF
`ANY, EACH APJ IS AUTHORIZED TO FULFILL
`
`Even before the PTAB renders a decision,
`
`whether in an inter partes review or ex parte
`
`proceeding, the Director has plenary authority to
`
`shape the duties of each APJ so as to determine what
`
`panels, if any, a particular APJ is assigned to fullfill.
`
`Brief for the United States as Petitioner, p. 5 (June 25,
`
`2020) (citing 35 U.S.C. § 6(c)). Thus, like judges of the
`
`Court of Criminal Appeals, APJs “have no power to
`
`render a final decision on behalf of the United States
`
`unless permitted to do so” by a principal officer.
`
`Edmond, 520 U.S. at 665.
`
`The Federal Circuit did not agree that the Di-
`
`rector’s designation power was analogous “to the
`
`Judge Advocate General’s power in Edmond” because,
`
`“[r]emoving an APJ from an inter partes review is a
`
`form of control [that] is not nearly as powerful as the
`
`power to remove from office without cause.” Arthrex,
`
`941 F.3d at 1332–33. But the Federal Circuit’s reason-
`
`ing—that the power the Director has to control APJs
`
`is insufficient because more powerful forms