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

United States Court of Appeals, Federal Circuit.

DOCUMENT SECURITY SYSTEMS, INC., Appellant v. NICHIA CORPORATION, Cree, Inc., Appellees Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor

2020-1383

Decided: June 12, 2020

Before PROST, Chief Judge. Brian David Ledahl, Amy Hayden, Litigation Counsel, Paul Anthony Kroeger, Russ August & Kabat, Los Angeles, CA, Russ August & Kabat, Los Angeles, CA, Wayne Michael Helge, Attorney, Davidson Berquist Jackson & Gowdey, LLP, McLean, VA, for Appellant Thomas R. Makin, Litigation Counsel, Patrick Robert Colsher, Attorney, Eric Sebastian Lucas, Esq., Attorney, Shearman & Sterling LLP, New York, NY, Matt Berkowitz, Attorney, Shearman & Sterling LLP, Menlo Park, CA, for Appellee Nichia Corporation Blaney Harper, Esq., Jones Day, Washington, DC, Joshua R. Nightingale, Esq., Jones Day, Pittsburgh, PA, for Appellee Cree, Inc. Mary L. Kelly, Ph.D., Associate Solicitor, Thomas W. Krause, Solicitor, Maureen Donovan Queler, Attorney, Farheena Yasmeen Rasheed, Deputy Solicitor, United States Patent and Trademark Office, Office of the Solicitor, Alexandria, VA, for Intervenor

ON MOTION

ORDER

At the behest of Nichia Corporation and Cree, Inc., the Director of the United States Patent and Trademark Case: 20-1383 Document: 32 Page: 1 Filed: 06/12/2020 2 DOCUMENT SECURITY SYSTEMS, INC v. NICHIA CORPORATION Office, acting through the Patent Trial and Appeal Board, instituted inter partes review of Document Security Systems, Inc.’s (DSS) patent. The Board issued its final written decision on November 19, 2019. DSS has appealed and now moves to vacate and remand in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), which issued on October 31, 2019. Nichia and Cree oppose. The Director intervenes and opposes vacatur and remand. The Director also moves unopposed to file a corrected opposition to DSS's motion to vacate and remand.

In Caterpillar Paving Products Inc. v. Wirtgen America, Inc., 957 F.3d 1342, 1343 (Fed. Cir. 2020), this court rejected an Appointments Clause challenge under materially indistinguishable circumstances on the ground that the Board judges were deemed constitutionally appointed as of the date that this court issued its precedential decision in Arthrex. 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.”).

Contrary to DSS's arguments, it is of no moment that the mandate in Arthrex did not issue until after the Board issued its decision here on appeal. As courts have explained, “[t]he stay of [a] mandate in [a circuit case] merely delays the return of jurisdiction to the district court to carry out [the circuit's] judgment in that case. The stay in no way affects the duty of [the courts in the circuit] to apply now the precedent established by [the circuit case] as binding authority.” Martin v. Singletary, 965 F.2d 944, 945 n.1 (11th Cir. 1992). Because the Board's final written decision in this matter issued after the Arthrex decision, DSS has not demonstrated that Arthrex compels remand.

Accordingly,

IT IS ORDERED THAT:

(1) The Director is added as an intervenor. The revised official caption is reflected in this order.

(2) The Director's motion to file a corrected opposition is granted. ECF No. 31 is accepted for filing.

(3) DSS's motion to vacate and remand is denied. DSS's opening brief is due no later than 60 days from the date of filing of this order.