Today the Federal Circuit issued, but did not publish on its website, two important nonprecedential orders in patent and trademark cases. These orders represent the continuing fall out from the Federal Circuit’s opinion in Arthrex, Inc. v. Smith & Nephew, Inc. that the Secretary of Commerce’s appointment of Administrative Patent Judges to the Patent Trial and Appeal Board violates the Appointments Clause of the U.S. Constitution. Hat tip to Sharon Israel at Shook, Hardy & Bacon L.L.P. for alerting us about these orders.
The first order issued in an appeal from the Trademark Trial and Appeal Board. In the order, the Federal Circuit certified to the United States Attorney General a constitutional challenge to the appointments of Administrative Trademark Judges (ATJs).
The second order issued from from an appeal of an inter partes reexamination. In this order, the Federal Circuit vacated and remanded in view of Arthrex.
The orders signal that the appointment clause issue first brought up in Arthrex may well extend beyond the PTAB and beyond inter partes review proceedings. Here is the text of the orders. As always, red font indicates links, and here the links are to the orders themselves.
Soler-Somohano v. Coca-Cola Co. (Nonprecedential Order)
It appears that Alberto Soler-Somohano submits a motion to vacate and remand this appeal from the Trademark Trial and Appeal Board in light of this court’s recent decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Mr. Soler-Somohano also notices the court that he is challenging the Board’s decision as rendered by a panel of administrative trademark judges who were appointed in violation of the Appointments Clause of the Constitution.
Upon notice of the fact that “a party questions the constitutionality of an Act of Congress in a proceeding in which the United States . . . is not a party,” the clerk of this court must “certify that fact to the Attorney General.” Fed. R. App. P. 44(a); see also 28 U.S.C. § 2403(a) (“In any action . . . in a court of the United States to which the United States . . . is not a party, wherein the constitutionality of any Act of Congress affecting the public interest is drawn in question, the court shall certify such fact to the Attorney General, and shall permit the United States to intervene . . . for argument on the question of constitutionality.”).
Upon consideration thereof,
IT IS ORDERED THAT:
(1) Notice of Mr. Soler-Somohano’s constitutional challenge is hereby certified to the Attorney General.
(2) The United States’ request to intervene and any response by the United States to the motion is due no later than January 27, 2020. Any reply in support of the motion is due no later than February 3, 2020.
(3) The briefing schedule is stayed. See Fed. Cir. R. 31(c).
Luoma v. GT Water Products, Inc. (Nonprecedential Order)
Eugene H. Luoma moves to vacate the decision of the Patent Trial and Appeal Board and remand for further proceedings in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Mr. Luoma states that GT Water Products, Inc. “neither consents nor objects” to the motion and “takes the position that the patent should remain invalid.” The Director of the United States Patent and Trademark Office intervenes and opposes.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The Director of the United States Patent and Trademark Office is added as an intervenor. The revised official caption is reflected above.
(2) Mr. Luoma’s motion to vacate and remand is granted. The Patent Trial and Appeal Board’s decision is vacated, and the case is remanded to the Board for proceedings consistent with this court’s decision in Arthrex.
(3) Each side shall bear its own costs.