CATERPILLAR PAVING PRODUCTS INC v. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor (2020)

ORDER

At the behest of Wirtgen America, Inc., the Director of the United States Patent and Trademark Office, acting through the Patent Trial and Appeal Board, instituted inter partes review of Caterpillar Paving Products Inc.’s patent. The Board held a hearing on July 30, 2019 and issued its final written decision on November 13, 2019. Caterpillar has appealed and now moves to vacate and remand for a new hearing before a differently constituted panel in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) issued on October 31, 2019.

The court concludes that Caterpillar has not demonstrated that Arthrex compels a remand. Unlike in prior cases in which this court has recently vacated and remanded, Arthrex issued before the Board’s final written decision in this case. The Director and Wirtgen argue that the Board judges were constitutionally appointed as of the date that this court issued its decision in Arthrex and that no remand is required. Caterpillar contends that even if the panel members became constitutional immediately prior to issuing the final written decision, that “does not cure a year’s worth of constitutional violations influencing the Board’s thinking and conclusions.” The court in Arthrex considered and rejected that argument, expressly limiting its holding “to those cases where final written decisions were issued.” 941 F.3d at 1340. See also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”).

Accordingly,

It Is Ordered That:

(1) The motion to vacate and remand is denied.

(2) Caterpillar’s opening brief is due within 30 days from the date of filing of this order.

Dyk, Circuit Judge.