1. “Whether Arthrex should be extended to ex parte examination cases.” 2. “Whether the Director’s purported ability to refuse to issue a patent if the Patent Trial and Appeal Board approves an application amounts to sufficient control or review over the Board’s exercise of authority to render them inferior officers?” 3. “Whether, under the Supreme Court’s reasoning in Freytag v. Commissioner, 501 U.S. 868, 882 (1991) that if the special trial judge in question was ‘an inferior officer for purposes of’ some responsibilities, then ‘he is an inferior officer within the meaning of the Appointments Clause and he must be properly appointed,’ can an administrative patent judge’s appointment be unconstitutional with regard to inter partes reviews as was determined in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) and yet constitutional for reviewing initial examination?”
“The Director acknowledges that, under the reasoning of this court’s decisions in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), and VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, 2020 WL 2462797 (Fed. Cir. May 13, 2020), the administrative patent judges (APJs) were not constitutionally appointed at the time the Board’s final decision on appeal was issued. . . . In both Arthrex and VirnetX, this court held that the appropriate remedy for such a constitutional violation was to vacate the Board’s decision and to remand for the purpose of reassigning the matter to a different panel of APJs for a new hearing and decision. . . . [W]e see no principled reason to depart here from the resulting remedy applied in Arthrex and VirnetX.”
