Arthrex, Inc. v. Smith & Nephew, Inc.


Question(s) Presented

1. “Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.”

2. “Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.”


1. “We hold that the unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary to an inferior office. The principal dissent repeatedly charges that we never say whether APJs are principal officers who were not appointed in the manner required by the Appointments Clause, or instead inferior officers exceeding the permissible scope of their duties under that Clause. But both formulations describe the same constitutional violation: Only an officer properly appointed to a principal office may issue a final decision binding the Executive Branch in the proceeding before us.”

2. “We conclude that a tailored approach is the appropriate one: Section 6(c) [of Title 35] cannot constitutionally be enforced to the extent that its requirements prevent the Director from reviewing final decisions rendered by APJs. Because Congress has vested the Director with the ‘power and duties’ of the PTO, § 3(a)(1), the Director has the authority to provide for a means of reviewing PTAB decisions. See also §§ 3(a)(2)(A), 316(a)(4). The Director accordingly may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board.”

Proceedings and Orders
July 20, 2020
Blanket Consent filed by Respondents, Smith & Nephew, Inc., et al. VIDED
July 20, 2020
Blanket Consent filed by Petitioner, Arthrex, Inc. VIDED
July 20, 2020
Blanket Consent filed by Respondent, United States VIDED
August 12, 2020
DISTRIBUTED for Conference of 9/29/2020.
October 5, 2020
DISTRIBUTED for Conference of 10/9/2020.
October 13, 2020
Petition GRANTED, the petition for a writ of certiorari in No. 19-1434 is granted as to Federal Circuit case No. 2018-2140, and the petition for a writ of certiorari in No. 19-1452 is granted, all limited to Questions 1 and 2 as set forth in the July 22, 2020 Memorandum for the United States. The cases are consolidated, and a total of one hour is allotted for oral argument. VIDED.
October 13, 2020
Because the Court has consolidated these cases for briefing and oral argument, future filings and activity in the cases will now be reflected on the docket of No. 19-1434. Subsequent filings in these cases must therefore be submitted through the electronic filing system in No. 19-1434. Each document submitted in connection with one or more of these cases must include on its cover the case number and caption for each case in which the filing is intended to be submitted. Where a filing is submitted in fewer than all of the cases, the docket entry will reflect the case number(s) in which the filing is submitted; a document filed in all of the consolidated cases will be noted as “VIDED.”
November 25, 2020
Brief of United States submitted.
December 31, 2020
SET FOR ARGUMENT on Monday, March 1, 2021. VIDED.
January 14, 2021
March 1, 2021
Argued. For United States: Malcolm L. Stewart, Deputy Solicitor General, Department of Justice, Washington, D. C. For Smith & Nephew, Inc., et al.: Mark A. Perry, Washington, D. C. For Arthrex, Inc.: Jeffrey A. Lamken, Washington, D. C. VIDED.
July 23, 2021