IPR Petitioners May Not Raise Appointments Clause Challenges Under Arthrex

| Aaron S. JohnsonAdam Powell


Before Moore, O’Malley, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Affirmatively petitioning for IPR waives the petitioner’s Appointments Clause challenge, such that the petitioner may not request remand and a new panel under Arthrex.

Ciena petitioned for IPR of Oyster’s patents. The PTAB instituted review, and then held that Ciena failed to establish that any of the claims were unpatentable. Ciena appealed based on the Federal Circuit’s Arthrex decision. Ciena argued that, under Arthrex, the PTAB’s decision must be vacated and remanded for a new hearing before a different panel because the original panel was not appointed in conformity with the Appointments Clause.

The Federal Circuit distinguished Arthrex because Ciena affirmatively petitioned for IPR, unlike the patent owner in Arthrex. Accordingly, the Federal Circuit held that Ciena waived its Appointments Clause challenge. The Court noted it could forgive waiver in certain circumstances, but declined to do so because Ciena affirmatively sought both IPR and a stay in related district court proceedings pending the outcome of the IPR.

Editor: Paul Stewart