Case: 19-1956 Document: 127 Page: 1 Filed: 12/19/2022
`
`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`FALL LINE PATENTS, LLC,
`Appellant
`
`v.
`
`UNIFIED PATENTS, LLC, FKA UNIFIED PATENTS,
`INC.,
`Appellee
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2019-1956
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`00043.
`
`______________________
`
`Decided: December 19, 2022
`______________________
`
`MATTHEW JAMES ANTONELLI, Antonelli, Harrington &
`Thompson, LLP, Houston, TX, for appellant. Also repre-
`sented by ZACHARIAH HARRINGTON, LARRY D. THOMPSON,
`
`Instacart, Ex. 1052
`
`

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`Case: 19-1956 Document: 127 Page: 2 Filed: 12/19/2022
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`2
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`FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
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`JR.; SARAH RING, Porter Hedges LLP, Houston, TX.
`
` JAMES R. BARNEY, Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP, Washington, DC, for appellee.
`Also represented by DANIEL COOLEY, Reston, VA;
`JONATHAN R. BOWSER, Haynes & Boone, LLP, Washington,
`DC; JONATHAN RUDOLPH KOMINEK STROUD, Unified Pa-
`tents LLC, Washington, DC.
`
` SARAH E. CRAVEN, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, argued for
`intervenor. Also represented by DANIEL KAZHDAN, THOMAS
`W. KRAUSE, FARHEENA YASMEEN RASHEED.
` ______________________
`
`Before HUGHES, BRYSON, and STARK,1 Circuit Judges.
`Hughes, Circuit Judge.
`In the wake of United States v. Arthrex, Inc., 141 S. Ct.
`1970 (2021), we remanded to the U.S. Patent and Trade-
`mark Office to allow appellant Fall Line Patents, LLC to
`seek Director rehearing of a final written decision of the
`Patent Trial and Appeal Board. Then-Commissioner for
`Patents Andrew Hirshfeld, who had been delegated the
`functions and duties of the Director during a vacancy of the
`office, denied the request for rehearing. Fall Line chal-
`lenges whether Commissioner Hirshfeld had the constitu-
`tional and statutory authority to act on requests for
`Director review. Our recent decision in Arthrex, Inc. v.
`Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022), says
`that he did. Consequently, we affirm.
`
`
`1 Circuit Judge O’Malley retired on March 11, 2022.
`Circuit Judge Stark was added to the panel after Circuit
`Judge O’Malley retired from the Court.
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`

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`Case: 19-1956 Document: 127 Page: 3 Filed: 12/19/2022
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`FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
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`3
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`I
`Fall Line Patents, LLC was the respondent in an inter
`partes review proceeding that resulted in a final written
`decision by the Patent Trial and Appeal Board finding
`claims 16–19, 21 and 22 of U.S. Patent No. 9,454,748 B2
`unpatentable. Fall Line appealed that decision to this
`Court, and, on July 28, 2020, we issued a nonprecedential
`decision that rejected Fall Line’s real-party-in-interest
`challenge as unreviewable under 35 U.S.C. § 314(d) but va-
`cated and remanded in view of our then-binding precedent
`in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
`(Fed. Cir. 2019). Fall Line Pats., LLC v. Unified Pats., LLC,
`818 F. App’x 1014 (Fed. Cir. 2020). Following the Supreme
`Court’s decision in United States v. Arthrex, Inc., 141 S. Ct.
`1970 (2021), the Supreme Court granted certiorari and va-
`cated our decision in this case. Iancu v. Fall Line Pats.,
`LLC, 141 S. Ct. 2843 (2021).
`We then entered an order remanding the case to the
`U.S. Patent and Trademark Office for the limited purpose
`of allowing Fall Line the opportunity to request Director
`rehearing, which Fall Line did. The offices of Director and
`Deputy Director were vacant at the time, however, and so
`the responsibility of addressing Fall Line’s request fell to
`the Commissioner of Patents, Andrew Hirshfeld. Commis-
`sioner Hirshfeld ultimately denied the rehearing request.
`We then reinstated the appeal and granted Fall Line’s
`request for supplemental briefing to address whether Com-
`missioner Hirshfeld had the requisite authority to act on
`the request for further review. Fall Line argued that he did
`not, and that his exercise of the Director’s authority vio-
`lated the Appointments Clause and the Federal Vacancies
`Reform Act (FVRA). See Appellant’s Second Supplemental
`Brief at 2–4.
`After Fall Line submitted its supplemental brief, we
`held in Arthrex Inc. v. Smith & Nephew, Inc. (Arthrex II)
`that (1) “the Commissioner’s exercise of the Director’s
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`FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
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`authority while that office was vacant did not violate the
`Appointments Clause,” and (2) “the Commissioner’s order
`denying Arthrex’s rehearing request on the Director’s be-
`half did not violate the FVRA.” 35 F.4th 1328, 1335, 1339
`(Fed. Cir. 2022). Furthermore, we explained how “the Pa-
`tent Act broadly empowers the President, acting through
`the Director, to delegate the Director’s duties as he sees
`fit.” Id. at 1335. In light of that decision, we issued an order
`directing Fall Line to “show cause . . . as to why we should
`not summarily affirm in light of Arthrex [II].” ECF No. 124
`at 2.
`Fall Line submits that it has an additional argument—
`not considered by us in Arthrex II—as to why delegation to
`Commissioner Hirshfeld was improper. We have jurisdic-
`tion under 28 U.S.C. § 1295(a)(4)(A).
`II
`Fall Line argues “that the Patent Act does not author-
`ize delegations to the commissioners,” even if the Act au-
`thorizes delegations to other inferior officers. Appellant’s
`Response to Show Cause Order at 1 (emphasis in original)
`(citing Appellant’s Second Supplemental Reply Brief at 3–
`5). This argument is premised on the language of 35 U.S.C.
`§ 3(b)(3), which allows the Director to appoint officers and
`employees to the agency (under § 3(b)(3)(A)) and delegate
`duties to them (under § 3(b)(3)(B)). See 35 U.S.C. § 3(b)(3)
`( “The Director shall . . . appoint such officers . . . as the Di-
`rector considers necessary to carry out the functions of the
`Office, . . . and delegate to them such of the powers vested
`in the Office as the Director may determine.”).
`The office of the Commissioner, however, is established
`by 35 U.S.C. § 3(b)(2). See 35 U.S.C. § 3(b)(2)(A) (“The Sec-
`retary of Commerce shall appoint a Commissioner for Pa-
`tents . . . .”). Fall Line argues that because the office of
`Commissioner is created by § 3(b)(2)—as opposed to
`§ 3(b)(3)—the delegation authority found in “[§] 3(b)(3)
`does not apply to Commissioner Hirshfeld at all[.]”
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`Case: 19-1956 Document: 127 Page: 5 Filed: 12/19/2022
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`FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
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`5
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`Appellant’s Second Supplemental Reply Brief at 4. See also
`id. (“[C]ommisioners are uniquely not authorized to per-
`form the duties of the Director.” (emphasis in original)).
`We disagree with Fall Line’s argument for two reasons.
`First, we held in Arthrex II that the Patent Act—specifi-
`cally 35 U.S.C. § 3(b)(3)(B)—authorized the delegation of
`the Director’s duties to the Commissioner:
`Congress did authorize the President to select the
`Commissioner to temporarily perform the Direc-
`tor’s duties. That is because the Patent Act broadly
`empowers the President, acting through the Direc-
`tor, to delegate the Director’s duties as he sees fit.
`See 35 U.S.C. § 3(b)(3)(B) (“The Director shall . . .
`delegate to [officers and employees] such of the
`powers vested in the Office as the Director may de-
`termine.”); Patent and Trademark Office Efficiency
`Act, Pub. L. No. 106-113, § 4745, 113 Stat. 1501,
`1501A-587 (1999) (codified at 35 U.S.C. § 1 note)
`(The Director “may delegate any of [his] functions
`. . . to such officers and employees . . . as [he] may
`designate.”).
`. . .
`The Patent Act bestows upon the Director a general
`power to delegate “such of the powers vested in the
`[PTO] as the Director may determine.” 35 U.S.C.
`§ 3(b)(3)(B). There is nothing in the Patent Act in-
`dicating that the Director may not delegate this re-
`hearing request review function.
`Arthrex II, 35 F.4th at 1334–35, 1338 (all emphases and
`alterations in original). Our determination that § 3(b)(3)
`authorized the delegation to the Commissioner forecloses
`Fall Line’s argument to the contrary. Deckers Corp. v.
`United States, 752 F.3d 949, 959 (Fed. Cir. 2014) (“In this
`Circuit, a later panel is bound by the determinations of a
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`FALL LINE PATENTS, LLC v. UNIFIED PATENTS, LLC
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`prior panel, unless relieved of that obligation by an en banc
`order of the court or a decision of the Supreme Court.”).
`Second, we have already considered and rejected the
`argument that the delegation authority of § 3(b)(3)(B) is
`limited to delegates appointed by the Director under
`§ 3(b)(3)(A). In arguing that delegating the authority to de-
`cide whether to institute inter partes review to the Board
`was improper, the appellant in Ethicon Endo-Surgery, Inc.
`v. Covidien LP argued that “the existence of 35 U.S.C.
`§ 3(b)(3)(B), which allows the Director to delegate duties to
`officers and employees she appoints, evidences a congres-
`sional purpose to cabin the Director’s authority with re-
`spect to delegation.” 812 F.3d 1023, 1032 (Fed. Cir. 2016).
`We disagreed, holding that Ҥ 3(b)(3) cannot be read to
`limit the ability of the Director to delegate tasks to agency
`officials not mentioned in § 3(b)(3).” Id. at 1033.
`III
` Having considered Fall Line’s final argument and
`found it unpersuasive, we affirm the Board’s decision find-
`ing claims 16–19, 21, and 22 of the ’748 patent unpatenta-
`ble.
`
`AFFIRMED
`
`