Arthrex petitions Fed Circ again over ‘inferior officers’
Arthrex says that it did not get the “remedy” ordered by the US Supreme Court in its landmark case against Smith & Nephew.
In its latest appeal brief to the US Court of Appeals for the Federal Circuit, the medical devices company claims that no “presidentially appointed, senate-confirmed principal officer” denied its petition on remand, claiming that the person who denied the petition— US Patent and Trademark Office (USPTO) acting director Drew Hirshfeld—was only an inferior officer.
An “inferior officer” describes a position appointed by congress without senate or president oversight.
Arthrex argues that this decision violates the Appointments Clause, which holds that only presidentially-appointed principal officers may issue final decisions in this case, consistent with the Supreme Court’s ruling.
“The USPTO repeated the exact same error that led to the Supreme Court’s decision by allowing someone appointed as a mere inferior officer to conclusively resolve Arthrex’s case,” Arthrex claimed.
It also held that the decision to deny the petition violates the Federal Vacancies Reform Act, which permits an “acting officer” to exercise functions of a principal office temporarily “only if the acting officer was the principal officer’s deputy or was personally selected by the president”.
Finally, Arthrex argued that the decision violates the separation of powers, which states that the president must be able to remove the heads of executive agencies “at will”, but Hirshfeld has “tenure protections” that deny the president that authority.
Arthrex asks the Federal Circuit to reverse the board’s decision and vacate Hirshfeld’s denial of review.
Case background
The dispute arose from Arthrex’s US Patent 9,179,907, which covers a novel surgical device for reattaching soft tissue to bone. The ‘907 patent stems from the ‘280 application it had filed in 2001.
Arthrex sued Smith & Nephew for infringing the ‘907 patent in 2014. The parties eventually settled litigation but while the lawsuit was pending, Smith & Nephew petitioned for an inter partes review of the patent, arguing that it was anticipated by the inventors own original 2001 patent application.
The Patent Trial and Appeal Board (PTAB) agreed, finding new applications of the “generic eyelet” detailed in the ‘907 patent insufficient. This led Arthrex to appeal the decision to the Federal Circuit.
On appeal, Arthrex argued that the administrative patent judges who decided its case were appointed in violation of the Appointments Clause. The Federal Circuit agreed with this claim without reaching the other three arguments Arthrex had laid out.
The Supreme Court later confirmed this decision finding the PTAB judges guilty of a constitutional violation, granting the USPTO director “unilateral authority” over PTAB judgments.
On remand, the USPTO was “unable to provide the principal-officer review” directed by the Supreme Court due to the office of the director and deputy director being vacant, and was instead run by the commissioner for patents, Drew Hirshfeld.
“Commissioner Hirshfeld is not a principal officer appointed by the president and confirmed by the Senate. He was appointed by the secretary of commerce—a method appropriate only for inferior officers,” Arthrex said in its brief.
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