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Volume XI, Number 55


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Arthrex Amicus Briefs – Novel Arguments for the Court To Consider

On December 2nd, amicus briefs in support of Smith & Nephew and the United States were filed with the Supreme Court in the Arthrex cases. There were also several amicus briefs filed in support of no party.  Previous articles have discussed the decision by the Federal Circuit, the Supreme Court’s grant of certiorari (currently docketed as 19-1434), and the initial briefs from Smith & Nephew and the United States. 

The amicus briefs present a wide range of arguments related to whether or not Administrative Patent Judges (APJs) are principal officers or inferior officers, and if they are principal officers what remedy should apply. John Harrison, a professor at the University of Virginia School of Law, questions the constitutionality of the CAFC decision to strike the down the part of the statute giving the patent judges for-cause removal protection.1  The Niskanen Center draws a distinction between public rights and private property, argues that patents are a public right and not private property, and advocates for a stricter interpretation of patent rights in general.2  Professor Andrew Michaels of the University of Houston Law Center, argues that if the Court finds APJs are principal officers, any fix that is applied must be retroactive to avoid creating huge inefficiencies.3

Some of the briefs offer arguments that closely align with those presented in the initial briefs from Smith & Nephew and the United States.4  Several other amicus briefs focus on the inter partes review (IPR) process and express concern that the Court’s decision here may jeopardize IPRs.  For example, while first urging the Court to find that patent judges are inferior officers, Intel also states that, in any event, the Court “should take care to adopt a remedy that broadly preserves the post-issuance review system as Congress intended it to operate.”5  Similarly, Cross-Industry Groups argue that the IPR system created by Congress is itself evidence that Congress intended patent judges to be inferior officers, while urging the Court to ensure that any remedy leaves IPR procedures intact.6 

Further briefs were submitted by AcushnetApple, Inc.Coalition Against Patent AbuseComputer & Communications Industry Assoc.AIPLAHigh Tech Inventors AllianceIntellectual Property Law Associtation of Chicago, and Engine Advocacy and Electronic Frontier Foundation.

In addition to these arguments, we highlight below several specific arguments from the briefs that may be of particular interest.  

Brief of Administrative, Constitutional & Intellectual Property Law Professors

This brief, filed by professors Robert L. Glicksman, Dmitry Karshtedt, Mark A. Lemley, Alan B. Morrison, and Joshua D. Sarnoff, presents a two-part argument of why patent judges are inferior officers.  

First, the brief argues that since Congress would previously advise and consent on the assignment of patent judges, the fact that it chose to not continue this practice in the America Invents Act (AIA) is evidence of Congress’ intention that patent judges be inferior officers under the AIA.  “There is no reason to suppose that Congress would have agreed to an alternative means of appointment here or in other similar situations unless it concluded that the duties of the office at issue were such that it could confidently leave their appointment to one of the three alterative appointing authorities provided in the Appointments Clause.”7  This, the brief argues, creates a presumption that Congress considers patent judges to be inferior officers under the AIA, a presumption to which the Court should defer. 

Second, the brief notes that in Lucia, the Court said that deference to Congress is not dispositive or absolute, but that deference should only be withdrawn when the officer in question wields significant policy-making duties.8  The brief points out that patent judges have limited enforcement power, have no policy-making power, and have to follow the policy of the Director. Therefore, the Court should have no reason not to defer to the intent of Congress and should declare patent judges to be inferior officers.   

Brief of Unified Patents

Like the other briefs, Unified Patents urges the Court to determine that patent judges are not principal officers. Unified Patents offers alternative remedies to the Federal Circuit’s remedy striking down the for-cause removal protections, and provides three different, narrower changes to the statute.9  

First, Unified Patents argues that the Court should consider severing the language from 35 U.S.C. § 318(b) that forces the Director to act in the face of a final decision by a panel.10  This would, in Unified Patents’ estimation, solve the constitutional issue by providing the Director with the tacit discretion to review the decisions of a patent judge before the decision can take effect.

Second, Unified Patents suggests severing the requirement of three panelists in a proceeding, an idea that was originally supported by the United States in its appeal to the lower court.11   This would open the possibility of the Director assigning himself alone to a problematic case and issuing a solo decision, which would “preserve the transparency that is far more important to the patent community—the knowledge that APJs will not face secret campaigns by patent owners or unhappy petitioners.”12

Finally, Unified Patents suggests the Court could sever the removal protections only from the Deputy Director, or alternatively, from the Deputy and the Commissioner of Patents.13  This would create a three-judge panel composed of a presidential appointee and employees at will (namely, the Director, the Deputy, and the Commissioner) that could rehear any decision by the patent judges.14 Since any decision by the judges would be reviewable, this would alleviate the concerns that patent judges are not subject to sufficient supervision and control. 

Brief of Jason V. Morgan

Mr. Morgan is an APJ himself, which lends an interesting air to his argument.  He argues similarly to Smith & Nephew and the United States, but then also notes that the removal protections are important for fostering trust in the PTAB.15  By having the protections from capricious dismissal in place, the public can trust that the patent judges applied the law to the facts and didn’t simply do what the Director required them to do.  Or as Mr. Morgan puts it: “Maintaining removal protections for APJs provides assurance that APJs are making decisions based on their understanding of the law and the facts, not based on fear for the loss of livelihood.”16 

Next Steps

Arthrex’s opening brief is due December 23 and amicus briefs in support of Arthrex are due December 30. 


1 See generally Brief amicus curiae of Professor John Harrison

2 See generally Brief amicus curiae of Niskanen Center

3 See generally Brief amicus curiae of Professor Andrew Michaels

See, for example, Brief amicus curiae of Association for Accessible Medicines, Brief amicus curiae of eComp Consultants, and Brief amicus curiae of Askeladden L.L.C.

5 Brief amicus curiae of Intel Corp., at 2-3. 

6 Brief amicus curiae of Cross-Industry Groups, at 18-19, 27. 

7 Brief amicus curiae of Administrative, Constitutional & Intellectual Property Law Professors at 6-7.

8 Brief amicus curiae of Administrative, Constitutional & Intellectual Property Law Professors at 18.

9 See generally Brief amicus curiae of Unified Patents. 

10 Brief amicus curiae of Unified Patents at 21-23.

11 Brief amicus curiae of Unified Patents at 23-25.

12 Brief amicus curiae of Unified Patents at 24-25.

13 Brief amicus curiae of Unified Patents at 25-26 (suggesting that removal protection be stripped from PTO Commissioners).

14 Brief amicus curiae of Unified Patents at 26.

15 Brief amicus curiae of Jason V. Morgan at 19-22.

16 Brief amicus curiae of Jason V. Morgan at 21.

© 2020 Foley & Lardner LLPNational Law Review, Volume X, Number 350



About this Author


Randy (Rand) Pummill is an associate in the Intellectual Property department with Foley & Lardner LLP. He is a member of the firm’s Mechanical & Electromechanical Technology Practice.

Prior to joining Foley, Rand worked as a senior engineer at an internationally recognized consulting firm. In this position, Rand collaborated with other engineers to provide research proposals and technical reports to commercial clients, academic bodies and government entities. Rand developed computational modeling tools to predict the flow back of hydraulic fracturing fluid after a...

Daniel R. Shelton, Foley Lardner, Patent Reexamination Attorney, IP, Pharmaceuticals Lawyer
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Daniel R. Shelton is an associate and intellectual property lawyer with Foley & Lardner LLP, where his practice includes the procurement of patents and related counseling in matters in the chemical arts. In addition, Mr. Shelton assists clients on reexamination and interference matters before the U.S. Patent Office, and advises clients on patent validity and freedom to operate inquiries. He is a member of the Chemical, Biotechnology & Pharmaceutical Practice.

Mr. Shelton assists clients on a technologically diverse range of matters,...

George Quillen, Patent interference litigator, appeals, prosecution, Foley and Lardner

George E. Quillin is a partner and intellectual property lawyer with Foley & Lardner LLP. Mr. Quillin litigates patent interferences and patent appeals, and counsels clients in patent prosecution. He is a member of the firm’s IP Litigation, Mechanical & Electromechanical Technologies and Appellate Practices.