IN RE: BOLORO GLOBAL LIMITED (2020)

ORDER

Boloro Global Limited moves to vacate and remand the underlying decisions of the Patent Trial and Appeal Board in these appeals from the Board's decisions in ex parte appeals, affirming the examiner's rejection of claims in Boloro's patent applications. The Director of the United States Patent and Trademark Office opposes the motion. Both parties have filed supplemental briefing in support of their respective positions.

The Director acknowledges that, under the reasoning of this court's decisions in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), and VirnetX Inc. v. Cisco Sys., Inc., 958 F.3d 1333 (Fed. Cir. 2020), the administrative patent judges (APJs) were not constitutionally appointed at the time the Board's final decision on appeal was issued. See Director's 2d Suppl. Resp. at 3–4 (conceding that it follows under the reasoning of the Supreme Court's decision in Freytag v. Comm'r, 501 U.S. 868, 882, 111 S.Ct. 2631, 115 L.Ed.2d 764 (1991), as understood in VirnetX, that “APJs were principal officers for purposes of all governmental functions of their office”); see also id. at 4 (conceding that, even if the Director could refuse to issue a patent if the Board approves an application, that would not render an APJ an inferior officer).

In both Arthrex and VirnetX, this court held that the appropriate remedy for such a constitutional violation was to vacate the Board's decision and to remand for the purpose of reassigning the matter to a different panel of APJs for a new hearing and decision. Arthrex, 941 F.3d at 1338–39; VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, slip op. at 2, 2020 WL 2511116 (Fed. Cir. Jan. 24, 2020). The Director urges that the same remedy should not be extended to ex parte proceedings because, according to the Director, he possesses “complete control over the initial examination” and could at any time prior to the Board proceedings have directed the issuance of Boloro's patents but did not, consistent with the Board's subsequent decisions. But the Director having conceded that the APJ's appointments were unconstitutional, we see no principled reason to depart here from the resulting remedy applied in Arthrex and VirnetX.

Accordingly,

It Is Ordered That:

(1) Boloro's motion to vacate and remand is granted. The Patent Trial and Appeal Board's decision is vacated, and the case is remanded to the Board for proceedings consistent with this court's decision in Arthrex.

(2) Each side shall bear its own costs.

Dyk, Circuit Judge.