Remands Under Arthrex Limited to Final Written Decisions Issued Prior to Arthrex

| Andrea Cheek


Before Lourie, Dyk, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: Remand of an IPR based on Arthrex is not justified where the final written decision issued after the decision in Arthrex.

Wirtgen America, Inc. petitioned the Patent Trial and Appeal Board for inter partes review (“IPR”) of Caterpillar Paving Products Inc.’s (“Caterpillar”) patent, and the Board instituted review. Caterpillar appealed the final written decision issued in November 2019, arguing the decision should be vacated and remanded for a new hearing before a differently constituted panel in light of the Federal Circuit’s October 2019 decision in Arthrex v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), regarding the constitutionality of Board judges.

The Federal Circuit found Arthrex expressly limited to final written decisions issued prior to the issuance of Arthrex. Despite the majority of the IPR proceedings in the present case taking place prior to the issuance of Arthrex, the final written decision was issued by a constitutionally-appointed panel following Arthrex. Thus, a remand based on Arthrex was not justified.

Editor: Paul Stewart