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Polaris Innovations Ltd. v. Kingston Tech. Co.

United States Court of Appeals for the Federal Circuit

January 31, 2020, Decided

2018-1831

Opinion

 [*820]  Per Curiam.

In its opening brief, Polaris Innovations Limited argues that the final written decision at issue in this appeal exceeds the scope of the [**2]  Patent Trial and Appeal Board's authority and violates the Constitution's Appointments Clause. See Appellant's Br. 53 (citing U.S. Const. art. II, § 2, cl. 2). This court recently decided this issue in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Accordingly, the Board's decision in No. IPR2017-00116 is vacated, and the case is remanded to the Board for proceedings consistent with this court's decision in Arthrex.

VACATED AND REMANDED

Costs

No costs.

Concur by: HUGHES

Concur

HUGHES, Circuit Judge, concurring, in which WALLACH, Circuit Judge, joins.

I concur because we are bound by the prior panel decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).1 However, I write separately to note that I disagree with the  [*821]  merits and question the remedy of the Arthrex panel decision. I believe that viewed in light of the Director's significant control over the activities of the Patent Trial and Appeal Board and Administrative Patent Judges, APJs are inferior officers already properly appointed by the Secretary of Commerce.

But if APJs are properly considered principal officers, I have grave doubts about the remedy Arthrex applied to fix their unconstitutional appointment. In the face of an unconstitutional statute, our role is to determine whether severance of the unconstitutional portion would be consistent with Congress's intent. Given the federal employment [**3]  protections APJs and their predecessors have enjoyed for more than three decades, I find no legislative intent to divest APJs of their Title 5 removal protections to cure any alleged constitutional defect. Because the bar to find non-severability is so high, though, I reluctantly agree with Arthrex's remedy.

None of the parties here or in Arthrex dispute that APJs are officers who exercise "significant authority pursuant to the laws of the United States." Buckley v. Valeo, 424 U.S. 1, 126, 96 S. Ct. 612, 46 L. Ed. 2d 659 (1976) (per curiam). But "significant authority" marks the line between an officer and an employee, not a principal and an inferior officer. Despite being presented with the opportunity to do so, the Supreme Court has declined to "set forth an exclusive criterion for distinguishing between principal and inferior officers for Appointments Clause purposes." Edmond v. United States, 520 U.S. 651, 661, 117 S. Ct. 1573, 137 L. Ed. 2d 917 (1997).

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792 Fed. Appx. 820 *; 2020 U.S. App. LEXIS 3019 **; 2020 WL 504974

POLARIS INNOVATIONS LIMITED, Appellant v. KINGSTON TECHNOLOGY COMPANY, INC., Appellee UNITED STATES, Intervenor

Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017-00116.

Polaris Innovations Ltd. v. Kingston Tech. Co., 2019 U.S. App. LEXIS 35050 (Fed. Cir., Nov. 8, 2019)

CORE TERMS

appointment, removal, inferior officer, protections, supervision, decisions, severance, principal officer, Patent, employees, cases, powers, discipline, precedential, inter partes, examiners-in-chief, designate, USPTO, binding, power to remove, panel decision, special master, trial judge, Presidential, confirmation, de-designate, predecessors, proceedings