No.
`In the Supreme Court of the United States
`
`
`
`UNITED STATES OF AMERICA, PETITIONER
`v.
`ARTHREX, INC., ET AL.
`
`
`
`UNITED STATES OF AMERICA, PETITIONER
`v.
`POLARIS INNOVATIONS LIMITED, ET AL.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`
`
`
` NOEL J. FRANCISCO
`Solicitor General
`Counsel of Record
`JOSEPH H. HUNT
`Assistant Attorney General
`MALCOLM L. STEWART
`Deputy Solicitor General
`JONATHAN C. BOND
`JONATHAN Y. ELLIS
`Assistants 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
`
`NICHOLAS T. MATICH
`Acting 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
`
`
`
`
`

`

`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 the court of appeals erred by adjudicat-
`ing an Appointments Clause challenge brought by a lit-
`igant that had not presented the challenge to the
`agency.
`
`
`
`
`
`
`(I)
`
`

`

`PARTIES TO THE PROCEEDING
`The petitioner in this Court is the United States of
`America, which intervened in the court of appeals in both
`Nos. 2018-2140 and 2018-1831 pursuant to 28 U.S.C.
`2403(a).
`The respondents in this Court are Arthrex, Inc., which
`was the appellant in the court of appeals in No. 2018-2140;
`Smith & Nephew, Inc., and Arthrocare Corp., which were
`the appellees in the court of appeals in No. 2018-2140;
`Polaris Innovations Limited, which was the appellant in
`the court of appeals in No. 2018-1831; and Kingston
`Technology Company, Inc., which was the appellee in
`the court of appeals in No. 2018-1831.
`RELATED PROCEEDINGS
`United States Court of Appeals (Fed. Cir.):
`Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140
`(Oct. 31, 2019)
`Polaris Innovations Limited v. Kingston Technol-
`ogy Company, Inc., No. 2018-1831 (Jan. 31, 2020)
`
`(II)
`
`

`

`TABLE OF CONTENTS
`
`Page
`Opinions below .............................................................................. 2
`Jurisdiction .................................................................................... 2
`Constitutional and statutory provisions involved ...................... 3
`Statement ...................................................................................... 3
`A. Statutory background ............................................... 3
`B. The present controversies ........................................ 8
`Reasons for granting the petition ............................................. 13
`I. The court of appeals’ holding that the Board’s
`administrative patent judges are principal off icers
`warrants this Court’s review ........................................ 14
`A. The Federal Circuit’s decision invalidates an
`act of Congress and will have substantial
`practical effects ....................................................... 14
`B. The Federal Circuit erred in holding that
`administrative patent judges are principal
`off icers ...................................................................... 16
`II. The court of appeals’ forfeiture holding warrants
`this Court’s review ......................................................... 26
`A. The Federal Circuit’s forfeiture ruling
`presents a question of substantial practical
`importance ............................................................... 27
`B. The Federal Circuit erred in excusing
`Arthrex’s failure to raise its Appointments
`Clause challenge before the USPTO..................... 28
`III. The Court should grant certiorari in both Arthrex
`and Polaris .................................................................................. 33
`Conclusion ................................................................................... 34
`Appendix A — Court of appeals opinion (Oct. 31, 2019) ...... 1a
`Appendix B — Court of appeals opinion (Jan. 31, 2020) .... 34a
`Appendix C — USPTO decision (May 10, 2017) ................. 60a
`Appendix D — USPTO f inal written decision
` (May 2, 2018) ............................................. 83a
`Appendix E — USPTO decision (Mar. 29, 2017) .............. 130a
`
`
`(III)
`
`

`

`IV
`
`Table of Contents—Continued:
`
` Page
`
`Appendix F — USPTO f inal written decision
` (Feb. 13, 2018) ......................................... 165a
`Appendix G — USPTO general order (2019) .................... 223a
`Appendix H — Court of appeals order
` (Mar. 23, 2020) ......................................... 229a
`Appendix I — Court of appeals order
` (Mar. 16, 2020) ........................................ 296a
`Appendix J — Constitutional and statutory provisions .... 298a
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`
`
`BioDelivery Scis. Int’l, Inc. v. Aquestive
`Therapeutics, Inc., 935 F.3d 1362 (Fed. Cir. 2019) ......... 21
`Blodgett v. Holden, 275 U.S. 142 (1927) .............................. 15
`Brown v. Department of the Navy,
`229 F.3d 1356 (Fed. Cir. 2000),
`cert. denied, 533 U.S. 949 (2001) ....................................... 19
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ..................................................... 6, 32
`DBC, In re, 545 F.3d 1373 (Fed. Cir. 2008) .................... 8, 29
`Edmond v. United States, 520 U.S. 651 (1997) .......... passim
`Elgin v. Department of the Treasury,
`567 U.S. 1 (2012) ........................................................... 32, 33
`Free Enterprise Fund v. Public Co. Accounting
`Oversight Bd., 561 U.S. 477 (2010) .......................... 4, 19, 24
`Freytag v. Commissioner, 501 U.S. 868 (1991) ...... 29, 30, 31
`Hormel v. Helvering, 312 U.S. 552 (1941)..................... 28, 30
`McCarthy v. Madigan, 503 U.S. 140 (1992) .................. 28, 29
`Rostker v. Goldberg, 453 U.S. 57 (1981) .............................. 15
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) .................... 7
`
`
`
`
`
`

`

`V
`
`Page
`
`Cases—Continued:
`Thryv, Inc. v. Click-to-Call Techs., LP,
`140 S. Ct. 1367 (2020) ..................................................... 7, 21
`Trading Techs. Int’l, Inc. v. IBG LLC, 771 Fed.
`Appx. 493 (Fed. Cir. 2019), cert. denied,
`140 S. Ct. 955 (2020) ........................................................... 29
`Unemployment Compensation Comm’n v. Aragon,
`329 U.S. 143 (1946).............................................................. 28
`United States v. L. A. Tucker Truck Lines, Inc.,
`344 U.S. 33 (1952) ......................................................... 28, 29
`Woodford v. Ngo, 548 U.S. 81 (2006) ............................. 28, 29
`
`Constitution, statutes, and regulations:
`U.S. Const. Art. II, § 2, Cl. 2
`(Appointments Clause) ..................................... passim, 298a
`Patent Act of 1952, 35 U.S.C. 1 et seq. ......................... 3, 300a
`35 U.S.C. 1(a) ........................................................... 3, 300a
`35 U.S.C. 2(a)(1)....................................................... 3, 301a
`35 U.S.C. 2(b)(2) .................................................... 20, 302a
`35 U.S.C. 2(b)(2)(A) ................................................. 5, 302a
`35 U.S.C. 3(a) ......................................................... 18, 307a
`35 U.S.C. 3(a)(1)................................................. 3, 20, 307a
`35 U.S.C. 3(a)(2)....................................................... 5, 307a
`35 U.S.C. 3(a)(2)(A) .................................. 4, 5, 10, 20, 307a
`35 U.S.C. 3(b)(1) ...................................................... 4, 308a
`35 U.S.C. 3(b)(2) ...................................................... 4, 308a
`35 U.S.C. 3(c) ..................................................... 4, 19, 312a
`35 U.S.C. 6 ................................................................ 4, 314a
`35 U.S.C. 6(a) ................................................4, 16, 19, 314a
`35 U.S.C. 6(b) ..................................................... 4, 19, 314a
`35 U.S.C. 6(c) .................................. 5, 6, 7, 10, 19, 21, 315a
`35 U.S.C. 141 .................................................................... 15
`
`
`
`

`

`VI
`
`Page
`Statutes and regulations—Continued:
`35 U.S.C. 141(c) ................................................................. 7
`35 U.S.C. 143 ............................................................ 7, 315a
`35 U.S.C. 144 ...................................................................... 7
`35 U.S.C. 314 .................................................... 21, 32, 316a
`35 U.S.C. 314(a) ................................................. 7, 21, 316a
`35 U.S.C. 314(d) ................................................. 7, 21, 317a
`35 U.S.C. 316 ...................................................... 7, 10, 317a
`35 U.S.C. 316(a) ....................................................... 7, 317a
`35 U.S.C. 316(a)(4) ................................................. 20, 317a
`35 U.S.C. 318(a) ....................................................... 7, 320a
`35 U.S.C. 318(b) ....................................................... 7, 320a
`35 U.S.C. 319 ............................................................ 7, 321a
`5 U.S.C. 7513(a) ............................................ 4, 10, 15, 19, 298a
`15 U.S.C. 1501 .............................................................. 18, 299a
`37 C.F.R. Pt. 42:
`Subpt. A .............................................................................. 7
`Section 42.4(a) ........................................................ 7, 21
`Subpt. C:
`Section 42.208 ............................................................. 21
`Subpt. E:
`Section 42.408(a) ........................................................ 21
`
`Miscellaneous:
`Patent Trial and Appeal Board:
`Standard Operating Procedure 1 (Revision 15),
`(Sept. 20, 2018), https://go.usa.gov/xwX6N .... 5, 6, 20
`Standard Operating Procedure 2 (Revision 10),
`(Sept. 20, 2018), https://go.usa.gov/
`xwXem .......................................................... 5, 6, 20, 22
`
`
`
`
`
`
`
`

`

`In the Supreme Court of the United States
`
`
`
` No.
`UNITED STATES OF AMERICA, PETITIONER
`v.
`ARTHREX, INC., ET AL.
`
`
`
`UNITED STATES OF AMERICA, PETITIONER
`v.
`POLARIS INNOVATIONS LIMITED, ET AL.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`
`
`
`The Solicitor General, on behalf of the United States,
`respectfully petitions for a writ of certiorari to review
`the judgments of the United States Court of Appeals for
`the Federal Circuit in these cases. Pursuant to this
`Court’s Rule 12.4, the United States is filing a “single
`petition for a writ of certiorari” because the “judgments
`* * * sought to be reviewed” are from “the same court
`and involve identical or closely related questions.”
`Sup. Ct. R. 12.4.
`
`
`
`
`(1)
`
`

`

`2
`
`OPINIONS BELOW
`The opinion of the court of appeals in Arthrex, Inc.
`v. Smith & Nephew, Inc., No. 2018-2140 (App., infra,
`1a-33a) is reported at 941 F.3d 1320. The final written de-
`cision of the Patent Trial and Appeal Board in that case
`(App., infra, 83a-129a) is not published in the United
`States Patent Quarterly but is available at 2018 WL
`2084866. The decision of the Patent Trial and Appeal
`Board (App., infra, 60a-82a) to institute inter partes re-
`view is not published in the United States Patent Quar-
`terly but is available at 2017 WL 1969743.
`The opinion of the court of appeals in Polaris Innova-
`tions Limited v. Kingston Technology Company, Inc.,
`No. 2018-1831 (App., infra, 34a-59a) is not published in
`the Federal Reporter but is reprinted at 792 Fed. Appx.
`820. The final written decision of the Patent Trial and
`Appeal Board in that case (App., infra, 165a-222a) is not
`published in the United States Patent Quarterly but is
`available at 2018 WL 914702. The decision of the Patent
`Trial and Appeal Board (App., infra, 130a-164a) to in-
`stitute inter partes review is not reported.
`JURISDICTION
`The judgment of the court of appeals in Arthrex was
`entered on October 31, 2019. Petitions for rehearing in
`that case were denied on March 23, 2020 (App., infra,
`229a-295a).
`The judgment of the court of appeals in Polaris was
`entered on January 31, 2020. Petitions for rehearing in
`that case were denied on March 16, 2020 (App., infra,
`296a-297a).
`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
`
`
`

`

`3
`
`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 Arthrex to
`August 20, 2020, and to extend the deadline in Polaris
`to August 13, 2020.
`In both Arthrex and Polaris, the jurisdiction of this
`Court is invoked under 28 U.S.C. 1254(1).
`CONSTITUTIONAL AND STATUTORY
`PROVISIONS INVOLVED
`The pertinent constitutional and statutory provi-
`sions are reprinted in an appendix to this petition. App.,
`infra, 298a-321a.
`
`STATEMENT
`These cases concern 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 “re-
`sponsible 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 duties” of the USPTO in its Director, who is “ap-
`pointed 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 manage-
`ment supervision for the [USPTO] and for the issuance
`
`
`
`

`

`4
`
`of patents and the registration of trademarks.”
`35 U.S.C. 3(a)(2)(A). The Act additionally authorizes
`the Secretary of Commerce to appoint a Deputy Direc-
`tor, a Commissioner for Patents, and a Commissioner
`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 200
`such judges. Like other “[o]fficers and employees” of
`the USPTO, administrative patent judges are “subject
`to the provisions of title 5, relating to Federal employ-
`ees,” 35 U.S.C. 3(c), under which civil servants may be
`removed “only for such cause as will promote the effi-
`ciency of the service,” 5 U.S.C. 7513(a). Here, because
`the Secretary appoints the judges, that removal author-
`ity belongs to the Secretary. See Free Enterprise Fund
`v. Public Co. Accounting Oversight Bd., 561 U.S. 477,
`509 (2010) (“Under the traditional default rule, removal
`is incident to the power of appointment.”).
`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 panels of “at least 3 members * * * designated by
`
`
`
`

`

`5
`
`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) 3 (Sept.
`20, 2018) (SOP2), https://go.usa.gov/xwXem. Unless
`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). He may issue policy directives to govern the
`Board’s implementation of various Patent Act provi-
`sions, 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, and he may
`alter a panel’s composition at any time. See 35 U.S.C.
`6(c). Exercising that authority, the Director has estab-
`lished procedures for the assignment of administrative
`patent judges to Board panels based on factors such as
`seniority, workload, and expertise; for their reassign-
`ment when necessary, for example, to avoid conflicts of
`interests; and for the expansion of panels in narrow cir-
`cumstances. See Patent Trial and Appeal Board,
`Standard Operating Procedure 1 (Revision 15) 1-16
`(Sept. 20, 2018) (SOP1), https://go.usa.gov/xwX6N.*
`
`
`* Under these 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
`
`
`
`

`

`6
`
`The Director may designate any decision by any
`Board panel as precedential and thus binding in future
`USPTO proceedings. Conversely, “[n]o decision may be
`designated as precedential without the Director’s ap-
`proval.” SOP2, at 8. The Board’s current operating
`procedures establish a process to designate a decision
`as precedential (or to de-designate a decision that had
`previously been made precedential). Id. at 8-12. But
`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, SOP2, at 4; but the Director has reserved
`the authority to alter the composition of the Preceden-
`tial Opinion Panel at any time, ibid.
`3. These cases arise out of inter partes review pro-
`ceedings 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, Congress has
`
`
`judge panels.” SOP1, at 15. Despite this 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., id. at 15 n.4.
`
`
`

`

`7
`
`vested in the Director generally unreviewable discre-
`tion to institute, refuse to institute, or de-institute par-
`ticular reviews. 35 U.S.C. 314(a) and (d); see 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 in-
`ter 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, 1353-1354 (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
`frequently does so. After “the time for appeal has ex-
`pired or any appeal has terminated, the Director shall
`issue and publish a certificate canceling any claim of the
`patent finally determined to be unpatentable, confirm-
`ing any claim of the patent determined to be patentable,
`and incorporating in the patent by operation of the cer-
`tificate any new or amended claim determined to be pa-
`tentable.” 35 U.S.C. 318(b).
`
`
`
`

`

`8
`
`B. The Present Controversies
`In these cases, patent owners challenged final writ-
`ten decisions issued by the Board in inter partes review
`proceedings. The patent owners argued that the admin-
`istrative patent judges who had served on the Board
`panels in those proceedings had been unconstitutionally
`appointed. They contended that, under the Appoint-
`ments Clause, administrative patent judges are princi-
`pal 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 Patent Act provides. In each case, the Fed-
`eral Circuit agreed, vacated the Board’s final written
`decision, and remanded the case to be reheard by a dif-
`ferent panel of the Board. App., infra, 1a-33a; id. at
`34a-59a.
`1. a. In Arthrex, the patent owner raised its Ap-
`pointments Clause challenge for the first time in its
`opening brief in the court of appeals. The court recog-
`nized that, as a general rule, “a federal appellate court
`does not consider an issue not passed upon below.”
`App., infra, 4a (citation omitted). The court also noted
`that it had previously applied that principle to an Ap-
`pointments Clause challenge involving administrative
`patent judges and had “decline[d] to address” the chal-
`lenge as “waived.” Id. at 5a (citing In re DBC, 545 F.3d
`1373 (Fed. Cir. 2008)).
`The Arthrex court held, however, that the constitu-
`tional issue warranted resolution here “despite Arthrex’s
`failure to raise its Appointments Clause challenge before
`the Board.” App., infra, 4a. The court found that the
`case “implicates the important structural interests and
`separation of powers concerns protected by the Ap-
`pointments Clause,” and that “[t]imely resolution [wa]s
`
`
`
`

`

`9
`
`critical to providing certainty to rights holders and com-
`petitors alike.” Id. at 4a-5a. The court stated that here,
`unlike in DBC, the Board could not have “corrected the
`Constitutional infirmity,” id. at 5a, and it concluded that
`resolving the issue would be “an appropriate use of [the
`court’s] discretion,” id. at 6a.
`b. The Arthrex court held that administrative patent
`judges are principal rather than inferior officers. App.,
`infra, 6a-22a. The court recognized 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 were appointed by Presiden-
`tial nomination with the advice and consent of the Sen-
`ate.” App., infra, 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 offi-
`cial has the power to review and reverse the officers’
`decision; (2) the level of supervision and oversight an
`appointed official has over the officers; and (3) the ap-
`pointed official’s power to remove the officers.” Ibid.
`The court of appeals concluded that the first factor it
`articulated (review authority) suggested that adminis-
`trative patent judges are principal officers, because
`“[n]o presidentially-appointed officer has independent
`statutory authority to review a final written decision by
`the [ judges] before the decision issues on behalf of the
`United States.” App., infra, 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 confirmed by the Sen-
`ate.” Id. at 10a. The court stated that “[t]here is no
`provision or procedure providing the Director the
`
`
`
`

`

`10
`
`power to single-handedly review, nullify or reverse a fi-
`nal 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.” App., infra, 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 the authority to “des-
`ignate[ ] or de-designate[ ]” panel decisions as “prece-
`dential decisions of the Board [that] are binding on fu-
`ture panels”; and may determine which judges will de-
`cide each inter partes review. Id. at 14a-15a (citing
`35 U.S.C. 3(a)(2)(A), 6(c), 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.
`App., infra, 15a; see id. at 15a-21a. The court concluded
`that the Secretary’s authority to remove administrative
`patent judges from federal service for “such cause as
`will promote the efficiency of the service,” 5 U.S.C.
`7513(a), was insufficient because those judges cannot be
`“remov[ed] without cause.” App., infra, 21a; see id. at
`17a-21a & nn.4-5. It similarly concluded that, for Ap-
`pointments Clause purposes, the Director’s “authority
`to assign certain [ judges] to certain panels” is “not the
`same as the authority to remove an [administrative pa-
`tent judge] from judicial service without cause.” Id. at
`17a; see id. at 16a-17a.
`
`
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`

`11
`
`Finding no other factors indicating that administra-
`tive patent judges are inferior officers, the court of ap-
`peals concluded that those judges must “be appointed
`by the President and confirmed by the Senate,” and that
`“the current structure of the Board violates the Ap-
`pointments Clause.” App., infra, 22a; see id. at 21a-22a.
`c. The court of appeals determined 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. App., infra, 27a; see id. at 22a-29a. The court
`concluded that making administrative patent judges re-
`movable at will by the Secretary would “render[ ] them
`inferior rather than principal officers,” and that doing
`so is the “narrowest viable approach to remedying the
`[constitutional] violation.” Id. at 26a, 28a.
`Based on its conclusion that “the Board’s decision in
`this case was made by a panel of [ judges] that were not
`constitutionally appointed at the time the decision was
`rendered,” the court of appeals “vacate[d] and re-
`mand[ed] the Board’s decision.” App., infra, 29a. The
`court reiterated its view that relief was appropriate, de-
`spite Arthrex’s failure to raise its Appointments Clause
`challenge before the Board, because “the Board was not
`capable of providing any meaningful relief to this type
`of Constitutional challenge.” Id. at 30a. The court
`stated that vacatur and remand would also be appropri-
`ate in all other inter partes review cases “where final
`written decisions were issued and where litigants pre-
`sent an Appointments Clause challenge 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.
`
`
`
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`

`12
`
`2. In Polaris, the court of appeals applied its Arthrex
`holding to a case in which the patent owner had timely
`raised its Appointments Clause challenge before the
`Board. App., infra, 34a-35a. In a per curiam summary
`order, the court vacated the final written decision of
`the Board and remanded the case “for proceedings
`consistent with th[e] court’s decision in Arthrex.” Id.
`at 35a.
`Judge Hughes, joined by Judge Wallach, issued a
`concurring opinion, noting that the panel was bound by
`Arthrex but expressing disagreement with that deci-
`sion. App., infra, 36a-59a. Judge Hughes expressed the
`view that, given “the Director’s significant control over
`the activities” of the Board and its members, adminis-
`trative patent judges “are inferior officers already
`properly appointed by the Secretary of Commerce.” Id.
`at 37a. He criticized the Arthrex panel for paying “in-
`sufficient attention to the significant ways in which the
`Director directs and supervises the work of the [admin-
`istrative patent judges] and, instead, focus[ing] on
`whether the Director can single-handedly review and
`reverse Board decisions, and whether [administrative
`patent judges] are removable at will” from federal ser-
`vice. Id. at 38a.
`3. The court of appeals subsequently denied peti-
`tions for rehearing en banc in both cases. App., infra,
`229a-231a; id. at 296a-297a. Arthrex produced five sep-
`arate opinions, joined by a total of eight judges, concur-
`ring 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 alternative remedial solutions offered in
`
`
`
`

`

`13
`
`Judge Dyk’s dissent from the court’s rehearing order.
`App., infra, 232a-241a. Judge O’Malley, joined by Judges
`Moore and Reyna, separately concurred to express fur-
`ther disagreement with Judge Dyk’s opinion. Id. at
`242a-248a.
`Judge Dyk, joined in full by Judges Newman and
`Wallach and joined in part by Judge Hughes, dissented
`from the denial of en banc review. App., infra,
`249a-275a. They stated that the panel’s merits decision
`was “open to question,” and they disagreed with the
`panel’s invalidation of administrative patent judges’ re-
`moval protections and the panel’s vacatur-and-remand
`remedy. Id. at 273a. Judge Hughes, joined by Judge
`Wallach, dissented from the denial of rehearing en
`banc, reiterating the points made in their Polaris con-
`currence. Id. at 276a-291a. Judge Wallach separately
`dissented, emphasizing that he found “the Director’s
`ability to select a panel’s members, to designate a
`panel’s decision as precedential, and to de-designate
`precedential opinions” to be particularly significant
`tools for directing and supervising administrative pa-
`tent judges. Id. at 292a; see id. at 292a-295a.
`REASONS FOR GRANTING THE PETITION
`The court of appeals held that the administrative pa-
`tent judges who sit on Board panels are principal officers
`who must be, but by statute are not, appoint